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Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contrs. USA, Inc.

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contrs. USA, Inc.

United States Court of Appeals for the Federal Circuit

August 18, 2010, Decided

2009-1556

Opinion

 [***1106]  [*1300]   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  [**2] 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  [*1301]  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  [**3] 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.

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617 F.3d 1296 *; 2010 U.S. App. LEXIS 17181 **; 96 U.S.P.Q.2D (BNA) 1104 ***

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

Subsequent History: Rehearing denied by Transocean Offshore Deepwater Drilling v. Maersk Contrs. USA, Inc., 2010 U.S. App. LEXIS 26551 (Fed. Cir., Oct. 29, 2010)

Judgment entered by Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contrs. USA, Inc., 2011 U.S. Dist. LEXIS 70774 (S.D. Tex., June 30, 2011)

Prior History:  [**1] Appeal from the United States District Court for the Southern District of Texas in case No. 07-CV-2392, Judge Kenneth M. Hoyt.

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contrs. USA Inc., 2009 U.S. Dist. LEXIS 130590 (S.D. Tex., July 28, 2009)

Disposition: REVERSED-IN-PART, VACATED-IN-PART, AFFIRMED-IN-PART, and REMANDED.

CORE TERMS

infringement, rig, drill, advancing, station, argues, district court, offer to sell, casing, invention, tubular, patent, summary judgment, assembly, injunction, string, seabed, objective evidence, modified, auxiliary, willfulness, dual, experimentation, nonobviousness, negotiated, borehole, pipe, asserted claim, ordinary skill, matter of law

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, General Overview, Appeals, Summary Judgment Review, Standards of Review, Patent Law, Nonobviousness, Evidence, Fact & Law Issues, Elements & Tests, Infringement Actions, Appeals, Jurisdiction & Review, Standards of Review, De Novo Review, Specifications, Enablement Requirement, Proof of Enablement, Standards & Tests, Business & Corporate Compliance, Infringing Acts, Offers to Sell & Sales, Preclusion of Judgments, Estoppel, Collateral Estoppel, Remedies, Damages, Increased Damages