Transocean prevails in Federal Circuit patent dispute over offshore drilling technology
Client(s) Transocean Offshore Deepwater Drilling, Inc.
Jones Day represented Transocean Offshore Deepwater Drilling, Inc. on appeal from a district court decision holding Transocean's patents for dual-activity offshore oil-well-drilling rigs obvious, not enabled, and not infringed. The district court found the patent invalid for obviousness and non-enablement despite evidence showing that the patented invention was a radical, and commercially successful, departure from existing systems that had earned significant industry praise, and evidence that it would have been "trivial" for a person skilled in the art to enable the challenged portion of the patents' claims. The district court also found lack of infringement because the offer, and sale, of the infringing rig occurred in Norway, despite the fact that the contract was made between two U.S. corporations for delivery and use of the infringing rig in U.S. waters.
On appeal, the Federal Circuit reversed the summary judgment of obviousness, holding that the district court erred in ignoring secondary considerations of non-obviousness, and clarifying that "a district court must always consider any objective evidence of non-obviousness presented in a case." The Court likewise reversed the summary judgment of no enablement, holding that the record evidence was sufficient to show that a person skilled in the art could enable the patents without undue experimentation. It also held that the district court erred by requiring enablement of "the most efficient commercial embodiment, rather than the claims" of the patent.
The Federal Circuit also held, in a key ruling defining the territorial scope of infringement liability for offers to sell and sales, that that the relevant inquiry is not where the offer or sale was made, but rather whether the offer was for delivery or use of the patented article in the United States. Likewise, the Court held that offer-to-sell and sale infringement would be based on the design of the article described in the offer and actually sold, not on the design of a rig that had been modified, post-sale, in an attempt to avoid infringement liability. As a result, the Federal Circuit reinstated Transocean's infringement claims based on Maersk's offer-to-sell and sale of a rig that infringed Transocean's patents.
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., Appeal No. 2009-1556, ___ F.3d ___ (Fed. Cir. Aug. 18, 2010)
