Patent Law Practice Center

Secondary Considerations to the Rescue

Last week, the United States Court of Appeals for the Federal Circuit once again had the opportunity to address the matter of Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. This second appeal by Transocean challenged the decision of the district court to grant judgment as a  matter of law (JMOL). Specifically, Transocean challenged the district court ruling that (1) the asserted claims of U.S. Patent Nos. 6,047,781 (’781 patent), 6,085,851 (’851  patent), and 6,068,069 (’069 patent) are invalid for obviousness and lack of enablement; (2) Maersk Drilling USA,  Inc. (Maersk) did not infringe the asserted claims; and (3)  Transocean was not entitled to damages. Transocean also appealed from the district court’s conditional grant of a  new trial. The Federal Circuit ultimately agreed with Transocean and reversed the district court. See Federal Circuit decision in Transocean II.

Previously,  the Federal Circuit vacated the district court’s grant of  summary judgment of noninfringement and reversed its grant of summary judgment of invalidity for obviousness  and lack of enablement. See  Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1301 (Fed. Cir. 2010) (Transocean I). On remand, a jury found that Maersk failed to prove that the asserted claims would have been obvious or that they were not enabled. The jury made specific findings that the prior art failed to disclose every element of the asserted claims and that each of seven objective factors indicated nonobviousness. The jury also found that Maersk infringed and awarded $15 million in compensatory damages.

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