Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling Usa, Inc.
699 F.3d 1340
Fed. Cir.2012Background
- Transocean appeals JMOL rulings: invalidity for obviousness and lack of enablement, noninfringement, and damages denial.
- Patents share a common specification on an improved dual-activity offshore drilling apparatus with two advancing stations and a pipe transfer assembly.
- Horn discloses a dual-station rig; Lund discloses a pipe transfer assembly between stations; the court previously held a prima facie obviousness case.
- On remand, a jury found nonobviousness based on seven objective factors and that Maersk infringed, awarding $15M in damages.
- District court JMOLs reversed, and the court conditionally granted a new trial; the Federal Circuit reverses on all grounds.
- The reviewing court considers the record de novo for obviousness, while affirming substantial evidence for enablement, infringement, and damages.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness prima facie and law of the case | Maersk: Horn+Lund establish law of the case for all limitations. | Transocean: jury must decide all factual questions, including prior art disclosure, with objective evidence. | Law of the case; but objective evidence can rebut prima facie |
| Enablement validity | Maersk: skilled artisan would require undue experimentation; no enabling disclosure. | Transocean: two disclosed transfer systems enable practice with trivial modification. | Enablement properly found by jury; reversal of JMOL |
| Infringement showing | Maersk did not sell an infringing drill; contract allowed design modification, avoiding infringement. | Transocean: sale of schematics and final design supports literal infringement. | Substantial evidence supports literal infringement |
| Damages - reasonable royalty | Transocean licenses reflect value; royalty should approximate licensing practice and not rely solely on litigation. | Maersk: royalty should reflect non-infringing use; not necessarily full scope of licenses. | Substantial evidence supports $15 million upfront with 5% running royalty |
| New trial conditional grant | No error in denying new trial; evidence supports verdict on obviousness and others. | District court properly conditioned new trial due to weight of the evidence. | Reversed conditional grant; no need for new trial |
Key Cases Cited
- Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010) (law of the case and prior holdings; reversed/ remanded decisions)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (Sup. Ct. 1966) (obviousness framework and Graham factors)
- KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (Sup. Ct. 2007) (flexible approach to obviousness and motivation to combine)
- Microsoft Corp. v. i4i Ltd., 131 S. Ct. 2238 (Sup. Ct. 2011) (clear and convincing standard for invalidity)
- Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) (secondary considerations important in obviousness analysis)
- Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) (secondary considerations rebut prima facie obviousness)
- Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004) (commercial success nexus requirement in obviousness)
- Lucent Technologies v. Gateway, 580 F.3d 1301 (Fed. Cir. 2009) (damages and reasonable royalty framework)
- Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190 (Fed. Cir. 1999) (enablement standard and undue experimentation considerations)