Transocean Offshore Deepwater Drilling Inc v. Maersk Contractors USA. Inc

• Decision Date: 30 November 2010
• Docket Number: No. 2009-1556.,2009-1556.
• Citation: 617 F.3d 1296
• Parties: TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC., Plaintiff-Appellant,v.MAERSK CONTRACTORS USA, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

617 F.3d 1296

TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC., Plaintiff-Appellant,v.MAERSK CONTRACTORS USA, INC., Defendant-Appellee.

No. 2009-1556.

United States Court of Appeals Federal Circuit.

Aug. 18, 2010.

Rehearing Denied Oct. 29, 2010.

Rehearing and Rehearing En Banc Denied Nov. 30, 2010.

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Gregory A. Castanias, Jones Day, of Washington, DC, argued for plaintiff-appellant. With him on the brief was Thomas J. Davis. Of counsel was Karla R. Goldman. Of counsel on the brief were Charles B. Walker, Jr., Michael S. McCoy and Warren S. Huang, Fulbright & Jaworski L.L.P., of Houston, TX.

William H. Frankel, Brinks Hofer Gilson & Lione, of Chicago, IL, argued for defendant-appellee. With him on the brief were Glen P. Belvis, Mark H. Remus and David P. Lindner. Of counsel on the brief was Lee L. Kaplan, Smyser Kaplan & Veselka, L.L.P., of Houston, TX.

Before, GAJARSA, MAYER, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

Transocean Offshore Deepwater Drilling, Inc. (Transocean) appeals from a final judgment of the U.S. District Court for the Southern District of Texas. The district court, on summary judgment, held that the asserted claims of the patents-in-suit are invalid, not infringed, and that defendant Maersk Contractors USA, Inc. (Maersk USA) did not act willfully. For the reasons set forth below, we reverse-in-part, vacate-in-part, affirm-in-part, and remand.

Background

Transocean asserted claims 10-13 and 30 of U.S. Patent No. 6,047,781 ('781 patent), claim 17 of U.S. Patent No. 6,068,069 ('069 patent), and claim 10 of U.S. Patent No. 6,085,851 ('851 patent) against Maersk USA. The patents-in-suit share a common specification. The patents relate to an improved apparatus for conducting offshore drilling. In order to exploit oil and other resources below the sea floor, the disclosed rig must lower several components to the seabed including the drill bit, casings (metal tubes that create the wall of the borehole), and a blow-out preventer (BOP) that sits atop the well to prevent rupture during extended drilling. Id. col.8 l.40-col.9 l.30. The structure for lowering these elements and rotating the drill is called the derrick. Id. col.4 l.66-col.5 l.3. The derrick includes a top drive to rotate the drill and drawworks to move components (such as the drill, casing, and BOP) to and from the sea floor. Id. col.6 ll.52-61; col.7 ll.65-67.

The derrick lowers and raises the drill bit and other components on the drill string. The drill string is a series of pipe sections, or “joints,” that the rig assembles on the surface. To begin the drilling process, the rig lowers the drill bit into the water toward the sea floor, adding more and more pipe sections or “joints” to the top of the drill string. For example, if the joints are each 30' long, the drawworks would lower the drill 30' and then pause to attach a new 30' joint of pipe before proceeding. Once the drill reaches the seabed, the top drive turns the drill string to create the borehole. Again, when the drill bit moves 30' into the seabed, the rig must add a new joint of pipe at the surface in order to continue drilling. Once the drill bit creates a portion of the borehole, the derrick retracts it to the surface. This means that the rig must remove each joint of pipe it added during the drill's descent. This is a time-consuming process.

Once the drill bit is back on the surface, the derrick lowers a casing on another drill string, adding joints of pipe in the same manner. The casing is a metal tube that creates the wall of the borehole. Once the casing is in place, cement is pumped down through the drill string through and around the casing to hold it in place; the rig then retracts the drill string. This casing forms the first section of the borehole; the rig must drill through this casing to greater depth to reach the oil reservoir. Before the next round of drilling, the rig lowers a BOP on a large diameter drill string called a riser. The BOP prevents oil and gas from escaping from the borehole. The rig then drills through the riser, BOP, and first casing to create a new portion of the borehole that is smaller in diameter than the first portion. The casing process occurs for this new section and this entire process continues until the borehole resembles a telescope of several sections of decreasing diameter.

A conventional rig utilized a derrick with a single top drive and drawworks. Because it could only lower one element at a time, the rig performed the many steps involved in drilling a well in series. Transocean attempted to improve the efficiency of this time-consuming process with the system described in the patents-in-suit. The patents describe a derrick that includes two stations-a main advancing station and an auxiliary advancing station-that can each assemble drill strings and lower components to the seabed. '781 patent fig.2; col.3 ll.58-66. Each advancing station includes a top drive for rotating the drill string and drawworks for raising and lowering the drill string. The auxiliary advancing station performs the initial drilling and casing. Id. col.9 l.66-col. 10 l.2. While the auxiliary advancing station cases the first portion of the borehole, the main advancing station lowers the BOP. Id. col.9 ll.21-23. Once the casing is complete, the auxiliary advancing station retracts the drill string and begins supporting the main advancing station by preparing lengths of the drill string in advance. See id. col.9 ll.25-30. For example, the auxiliary advancing station may take three or four joints of pipe, assemble them, and set them aside so that while the main advancing station is lowering a drill bit or casing, it does not have to connect every joint. Id. While the auxiliary advancing station is performing this function, the main advancing station is drilling and casing additional portions of the well. Id. col.9 ll.35-40. This “dual-activity” rig can significantly decrease the time required to complete a borehole. Id. col.11 ll.56-67.

Transocean appeals the district court's grant of summary judgment of (1) invalidity of all asserted claims based on obviousness and lack of enablement, (2) noninfringement, and (3) no willfulness. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

We review a district court's grant of summary judgment de novo. ICU Med., Inc. v. Alaris Med. Sys. Inc., 558 F.3d 1368, 1374 (Fed.Cir.2009). Summary judgment is appropriate when, drawing all justifiable inferences in the nonmovant's favor, there exists no genuine issue of material fact and the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

I. Invalidity

The district court held that all asserted claims are invalid. Claim 17 of the '069 patent is an example of the independent claims at issue:

A multi-activity drilling assembly operable to be supported from a position above the surface of a body of water for conducting drilling operations to the seabed and into the bed of the body of water, said multi-activity drilling assembly including:

a drilling superstructure operable to be mounted upon a drilling deck for simultaneously supporting drilling operations for a well and operations auxiliary to drilling operations for the well;

a first tubular advancing station connected to said drilling superstructure for advancing tubular members to the seabed and into the bed of body of water;

a second tubular advancing station connected to said drilling superstructure for advancing tubular members simultaneously with said first tubular advancing station to the seabed and into the body of water to the seabed; and

an assembly positioned adjacent to said first and second tubular advancing stations operable to transfer tubular assemblies between said first tubular advancing station and said second tubular advancing station to facilitate simultaneous drilling operations auxiliary to said drilling operations, wherein drilling activity can be conducted for the well from said drilling superstructure by said first or second tubular advancing stations and auxiliary drilling activity can be simultaneously conducted for the well from said drilling superstructure by the other of said first or second tubular advancing stations.

The district court found the claims obvious under 35 U.S.C. § 103(a) and not enabled under 35 U.S.C. § 112 ¶ 1.

A. Obviousness

A patent shall not issue “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Obviousness is a question of law with underlying fact issues. Id. at 427, 127 S.Ct. 1727; Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811, 106 S.Ct. 1578, 89 L.Ed.2d 817 (1986). What a particular reference discloses is a question of fact see Para-Ordnance Manufacturing, Inc. v. SGS Importers International, Inc., 73 F.3d 1085, 1088 (Fed.Cir.1995), as is the question of whether there was a reason to combine certain references see McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1352 (Fed.Cir.2001). Under the four part test for obviousness detailed in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the court must consider (1) the scope and content of the prior art; (2) the difference between the prior art and the claimed invention; (3) the level of ordinary skill in the art; and (4) any objective evidence of nonobviousness. The objective evidence relevant to this appeal includes industry skepticism, long-felt industry need, commercial success, and copying. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337,...