Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: March 28, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SEADRILL AMERICAS, INC.,
`SEADRILL GULF OPERATIONS AURIGA, LLC,
`SEADRILL GULF OPERATIONS VELA, LLC,
`SEADRILL GULF OPERATIONS NEPTUNE, LLC,
`Petitioner,
`
`v.
`
`TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01990
`Patent 6,068,069
`_______________
`
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: March 28, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SEADRILL AMERICAS, INC.,
`SEADRILL GULF OPERATIONS AURIGA, LLC,
`SEADRILL GULF OPERATIONS VELA, LLC,
`SEADRILL GULF OPERATIONS NEPTUNE, LLC,
`Petitioner,
`
`v.
`
`TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01990
`Patent 6,068,069
`_______________
`
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`
`I. INTRODUCTION
`Petitioner requests an inter partes review of claims 17–19 of U.S.
`Patent No. 6,068,069 (Ex. 1001, “the ’069 patent”). Paper 1 (“Pet.”). Patent
`Owner filed a Preliminary Response to the Petition. Paper 7 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon consideration of the Petition and
`Patent Owner’s Preliminary Response, we institute an inter partes review on
`all challenged claims of the ’069 patent.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
`
`A. Related Matters
`Petitioner represents that the following matters would affect, or be
`affected by, a decision in this proceeding: Transocean Offshore Deepwater
`Drilling, Inc., v. Seadrill Americas, Inc., et al., Civil Action No. 4:15-cv-
`00144 filed on January 16, 2015, in the U.S. District Court for the Southern
`District of Texas; Transocean Offshore Deepwater Drilling, Inc. v. Pacific
`Drilling SA et al., Civil Action No. 4:13-cv-1088, filed on April 16, 2013, in
`the U.S. District Court for the Southern District of Texas; and Inter Partes
`Review Nos. IPR2015-01929 and IPR2015-01989. Pet. 1–2; Paper 5, 1.
`
` 2
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`Patent Owner indicates that the ’069 patent has been asserted against
`other parties in other lawsuits, some of which we address next. Prelim.
`Resp. 2–3.
`
`B. Prior Litigation History
`Although Petitioner was not a party, the ’069 patent has been involved
`
`in prior litigation including Transocean Offshore Deepwater Drilling, Inc. v.
`Pacific Drilling SA et al., Civil Action No. 4:13-cv-1088 (S.D. Tex)
`(hereinafter the “Pacific Lawsuit”), Transocean Offshore Deepwater
`Drilling, Inc. v. GlobalSantaFe Corp. et al., Civil Action No. 4:03-cv-02910
`(S.D. Tex) (hereinafter the “GlobalSantaFe Lawsuit”), Transocean Offshore
`Deepwater Drilling, Inc. v. Stena Drilling Ltd. et al., Civil Action No. 4:08-
`cv-03287 (S.D. Tex) (hereinafter the “Stena Lawsuit”), and Transocean
`Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA Inc., Civil
`Action No. 4:07-cv-02392 (S.D. Tex) (hereinafter the “Maersk Lawsuit”).
`The Maersk Lawsuit had subsequent appeals Transocean Offshore
`Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296
`(Fed. Cir. 2010) (hereinafter “Transocean I”) and Transocean Offshore
`Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 699 F.3d 1340
`(Fed. Cir. 2012) (hereinafter “Transocean II”). Pet. 1–2, 44; Prelim. Resp.
`2–4.
`The court in the Pacific Lawsuit held a Markman hearing and
`
`construed several limitations of the ’069 patent. Ex. 1009. Markman
`hearings were also conducted in the Stena Lawsuit (Ex. 2005), the
`GlobalSantaFe Lawsuit (Ex. 2007), and the Maersk Lawsuit (Ex. 2006). In
`the Maersk Lawsuit, the district court granted summary judgment for
`defendant, inter alia, on invalidity of all asserted claims based on
`
` 3
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`obviousness. Transocean I, 617 F.3d at 1302. On appeal, the Federal
`Circuit held “that the teachings of the references as well as th[e] reason to
`combine support a prima facie case that the claims would have been obvious
`to one of ordinary skill in the art,” id. at 1304, but reversed the grant of
`summary judgment in part “[b]ecause there remain genuine issues of
`material fact regarding objective evidence of nonobviousness.” Id. at 1313;
`see also id. at 1304–05 (disagreeing that the district court “is required to
`consider only the first three [Graham] factors” and determining that “the
`district court ignored . . . objective evidence of nonobviousness”).1 On
`remand, after review of the evidence of nonobviousness, a jury found that
`the defendant had not established by clear and convincing evidence that the
`claims were obvious, but the district court granted a motion for judgment as
`a matter of law (JMOL) that the claims were invalid as obvious. Transocean
`II, 669 F.3d at 1346. On appeal, the Federal Circuit reversed the district
`court’s grant of JMOL, finding that the jury’s findings regarding objective
`evidence of nonobviousness were supported by substantial evidence. Id. at
`1349–55.
`
`C. The ’069 Patent
`The ’069 patent is directed to a multi-activity offshore drilling
`
`apparatus, such as a drillship. Ex. 1001, Abstr. The apparatus has a single
`derrick but multiple tubular activity stations, such that primary drilling
`activity and auxiliary drilling activity may be conducted from the same
`derrick at the same time. Id.; see also Ex. 1007 ¶¶ 18–35; Prelim. Resp. 5–
`
`
`1 The references referred to by the Federal Circuit as demonstrating a prima
`facie case of obviousness are also asserted in this proceeding.
`
` 4
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`12 (providing background information on conventional and multi-activity
`drilling).
`
`D. Challenged Claims
`Petitioner challenges claims 17–19, of which claim 17 is independent.
`Claim 17 is reproduced below.
`17. 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.
`
` 5
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 17–19 of the ’069 patent are
`unpatentable under 35 U.S.C. § 103 on the following grounds:
`Reference(s)
`Basis Claim(s)
`Challenged
`§ 102 17 and 18
`Lund2
`§ 103 17–19
`Lund, Horn,3 Rike,4 and Chevron S-555
`Lund, Horn, Moore,6 Baker,7 and Varco8 § 103 17–19
`Petitioner also relies on the declarations of Robert Schaaf (Ex. 1007)
`and Mark Childers (Ex. 1012).
`
`II. ANALYSIS
`A. Claim Construction
`
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b). We interpret the claims of an expired patent, however, using
`the claim construction standards used in district court, i.e., those outlined in
`Phillips. See In re Rambus, Inc., 753 F.3d 1253, 1255–56 (Fed. Cir. 2014)
`
`
`2 U.S. Patent No. 4,850,439, issued July 25, 1989 (Ex. 1002).
`3 U.K. Patent App. GB 2,041,836 A, published Sept. 17, 1980 (Ex. 1004).
`4 J. L. Rike and R. G. McGlamery, “Recent Innovations in Offshore
`Completion and Workover Systems,” Offshore Technology Conference
`(1969) (Ex. 1014).
`5 “Ocean Industry,” Vol. 3, No. 3 (Mar. 1968) (excerpt) (Ex. 1015)
`6 U.S. Patent No. 3,658,298, issued Apr. 25, 1972 (Ex. 1003).
`7 R. Baker, “A Primer of Oilwell Drilling,” (5th ed. 1994) (Ex. 1010).
`8 Varco/BJ General Catalog 1992-1993 (Ex. 1011).
`
` 6
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`(“If, as is the case here, a reexamination involves claims of an expired
`patent, a patentee is unable to make claim amendments and the PTO applies
`the claim construction principles outlined by this court in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005)” (en banc).).
`Petitioner asserts that claims of the ’069 patent should be given their
`broadest reasonable interpretation. Pet. 4. Petitioner acknowledges the prior
`district court constructions in the Pacific Lawsuit, addresses some
`differences it believes exist, but argues that “the obviousness analysis would
`not change under the Pacific court’s narrower constructions.” Id. at 4–5.
`Patent Owner asserts that the ’069 patent, which is subject to a terminal
`disclaimer, Ex. 1001 at [*], expires May 3, 2016 and that the claims of the
`’069 patent should be construed under the Phillips standard. Prelim. Resp.
`19; Ex. 1025, 140 (terminal disclaimer limiting ’069 patent to the term of the
`patent issued from application 08/642,417, i.e., U.S. Pat. No. 6,085,851,
`filed May 3, 1996).
`We will construe the claims of the ’069 patent using the Phillips
`standard of claim construction because the ’069 patent will expire prior to
`the issuance of a final decision, rendering absent any viable opportunity to
`amend the claims. See Amendments to the Rules of Practice for Trials
`Before the Patent Trial and Appeals Board, 80 Fed. Reg. 50720, 50722
`(Aug. 20, 2015) (Response to Comment 3, proposing an amendment to 37
`C.F.R. § 42.100(b) that entails a Phillips-type claim construction when the
`patent will expire prior to the issuance of a final decision).
`
`1. “tubular advancing station”
`Claim 17 recites first and second “tubular advancing station[s] . . . for
`advancing tubular members [. . .] to the seabed.” Petitioner asserts that the
`
` 7
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`term should be construed as in the Pacific Lawsuit, where the court
`construed the limitation as “an assembly of equipment capable of advancing
`tubular members to the seabed.” Pet. 7 (citing Ex. 1009, 2). Patent Owner
`agrees with Petitioner. Prelim. Resp. 25. We adopt Petitioner’s proposed
`construction for purposes of this Decision.
`
`2. “assembly . . . operable to transfer tubular assemblies”
`
`Claim 17 recites “an assembly . . . operable to transfer tubular
`assemblies between [the tubular advancing stations].” Petitioner asserts that
`the limitation invokes means-plus-function, with the corresponding function
`being “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” and the
`corresponding structure being “‘rail supported pipe handling systems’ shown
`in Fig. 7, and alternatively ‘a rugged overhead crane structure within the
`derrick.’” Pet. 6–7 (citing Ex. 1001, 7:50–53; Ex. 1007 ¶ 50).
`Patent Owner disagrees that the limitation should be construed as
`means-plus-function. Prelim. Resp. 24. Patent Owner argues the limitation
`would be understood to have sufficiently definite meaning, viz, “pipe
`handling equipment for transporting tubular members, such as overhead
`derrick cranes or rail supported handlers.” Id. Patent Owner argues, in the
`alternative, that if the limitation is means-plus-function then the
`corresponding function is “transferring tubular assemblies directly between
`advancing stations or indirectly through a setback envelope” and the
`corresponding structure is “overhead derrick cranes, rail supported pipe
`
` 8
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`handlers, or equivalent structure.” Id. Patent Owner does not explain
`whether or why it considers Petitioner’s proposed construction inaccurate.9
`In the Pacific Lawsuit, the district court construed this limitation as a
`means-plus-function limitation. Ex. 1009, 3, 53–56. The district court
`construed the limitation to have the function and structure identified by
`Patent Owner above. See id. Petitioner does not address why we should not
`adopt its construction over the district court’s construction. Instead, it offers
`its own construction but provides no meaningful explanation or analysis.
`We have reviewed the district court’s analysis and adopt it (and
`consequently, Patent Owner’s proposed construction) as our own for
`purposes of this Decision.
`
`3. Other Limitations
`All remaining terms are not at issue in this Decision, and we do not
`construe them explicitly at this time. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms or phrases
`that are in controversy need to be construed, and only to the extent necessary
`to resolve the controversy).
`
`
`9 Patent Owner does state that Petitioner’s construction “improperly omits
`equivalent structures,” but there is no substantive argument against
`Petitioner’s construction. Prelim. Resp. 24; see Pet. 7.
`
` 9
`
`
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`
`B. Petitioner’s Asserted Grounds
`4. Lund, Horn, Rike, and Chevron S-55
`(Claims 17–19)
`a. Prior Art
`(1) Horn
`Horn discloses a drilling vessel having a derrick with the ability to
`drill using two drill strings at the same time. Ex. 1004, 1:72–76. Horn
`describes rotary tables rather than top drives. Id. at 2:44–45. Further, Horn
`describes the derrick to be configured to have two drill strings so that it can
`drill two neighboring wells at the same time. See id. at 1:87–90. Horn
`describes an advantage of having the two drill strings under the same derrick
`and close to each other is that it allows “the possibility of concentrating
`common auxiliary equipment and permitting better surveying and
`coordination” and “to place the appurtenant equipment for the drill strings
`close to the vertical centre line of the vessel.” Id. at 1:119–125.
`(2) Lund
`Lund discloses a drilling vessel with a derrick having a drilling hoist
`and a preparation hoist. Ex. 1002, 6:56–65. The drilling hoist has a top
`drive and is used to carry heavy loads, such as a complete drill string. Id. at
`6:56, 6:65–67. The preparation hoist is weaker and “should normally only
`be able to carry a drill string or well casing stand or a bottomhole assembly
`part, having a length in the order of 20 m.” Id. at 6:67–7:2. In general, the
`drilling hoist drills using a drill string while the preparation hoist assembles
`drill tube sections that later will be added to the drill string. See id. at 7:47–
`9:65.
`
`
`10
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`
`(3) Rike and Chevron
`Rike discloses a “piggy-back” rig that uses two drawworks, one for
`
`drilling and one for “completion operations.” Ex. 1014, I-191. The piggy-
`back rig allows “concurrent drilling and completion operations and to
`eliminate production delays.” Id. The Ocean Industry publication includes a
`description of the Chevron S-55 rig,10 which included a single derrick but
`lists as features two drawworks, two rotaries, and two hooks. Ex. 1015.
`b. The Proposed Combination
`Claim 17 requires a multi-activity drilling assembly including two
`
`tubular advancing stations and an assembly adjacent those stations to
`transfer tubular assemblies between the two. Claim 17 requires that drilling
`activity can be conducted with one of the stations and that auxiliary drilling
`activity can be simultaneously conducted with the other station.
`
`Petitioner asserts that Lund and Horn disclose a first tubular
`advancing station. Pet. 19 (discussing Lund); id. at 25–27 (discussing Lund
`and Horn). Petitioner asserts that Horn discloses a second tubular advancing
`station (id. at 28), as well as Lund (id. at 19–20). Petitioner asserts that, in
`the event that Lund does not disclose a first tubular advancing station, that it
`would have been obvious to do so in view of Horn’s disclosure of two
`tubular advancing stations. Id. at 28; 39–43 (explaining the purported
`rationale for this modification). Petitioner also points to Rike and Chevron
`S-55 as examples of single derricks having two tubular stations. Id. at 29–
`30. Lastly, Petitioner asserts that Lund discloses an assembly operable to
`
`
`10 The parties refer to this publication as “Chevron S-55” rather than “Ocean
`Industry”; for consistency, we likewise refer to the publication as “Chevron”
`or “Chevron S-55.”
`
`
`11
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`transfer tubular assemblies between stations, via its rail mechanism for
`transporting tubular body lengths between the storage area and the drilling
`and preparation openings. Id. at 20–22, 29–30.
`
`Claim 18 further requires two setback stations adjacent the tubular
`advancing stations. Petitioner asserts that these limitations read on the two
`storage areas in Lund. Pet. 24. Petitioner asserts that Horn also describes
`these limitations. Id. at 31.
`
`Claim 19 further requires two top drives. Petitioner asserts that Lund
`discloses one top drive and that Horn discloses two rotary tables. Pet. 31–
`33. Petitioner asserts that it would have been obvious to use two top drives,
`as Horn teaches two rotating features and that it was known to use top drives
`instead of rotary tables. Id. at 32–33.
`c. Discussion; Secondary Considerations
`As mentioned above, our reviewing court has held that the subject
`matter of claim 17 of the ’069 patent would have been prima facie obvious
`in view of Horn and Lund. Transocean I, 617 F. 3d at 1303; Transocean II,
`699 F.3d at 1348 (“Transocean I thus establishes as law of the case that
`Horn and Lund teach every limitation of the asserted claims and provide a
`motivation to combine their respective teachings”). Although Patent Owner
`argues that individual references do not teach certain limitations, Patent
`Owner’s arguments do not address the references in the combinations
`proposed. See Prelim. Resp. 26–39. Considering the record before us, and
`consistent with the holding of our reviewing court, we determine that
`Petitioner has adequately shown that Horn, Lund, Rike, and Chevron S-55,
`
`
`12
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`teach every limitation of claims 17–19 and provide a reason to combine their
`respective teachings in the manner claimed.11
`
`As our reviewing court has made clear, the obviousness analysis does
`not end there because secondary considerations, when present, must “be
`considered en route to a determination of obviousness.” Transocean II, 699
`F.3d at 1349 (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
`1538 (Fed. Cir. 1983)). A Decision on Institution is not a “determination of
`obviousness” in the same meaning as the Federal Circuit wrote in
`Transocean II, however; a Decision on Institution decides whether a
`“reasonable likelihood” exists for such a determination to be made at a later
`time. Compare 35 U.S.C. § 314(a) (authorizing inter partes review only if
`“there is a reasonable likelihood that the petitioner would prevail”), with id.
`§ 316(e) (placing the burden on petitioner of “proving a proposition of
`unpatentability by a preponderance of the evidence”). Accordingly, our
`analysis in this Decision focuses on whether Petitioner has established a
`reasonable likelihood of success in view of “the information presented in the
`petition” and the Preliminary Response. Id. § 314(a).
`Petitioner acknowledges the body of secondary considerations
`evidence but argues that 1) we should not consider secondary considerations
`evidence at a preliminary stage (Pet. 44); 2) Petitioner’s standard for
`showing obviousness is less than in the Maersk Litigation and Transocean I
`
`
`11 Petitioner styles its ground as “Lund alone or in View of any of Horn,
`Rike or Chevron S-55.” Pet. 24. We will not parse out the various potential
`permutations and instead consider the ground to be Horn, Lund, Rike, and
`Chevron S-55 because the analytical portion of Petitioner’s ground discusses
`all of these references and this ground would subsume all other grounds.
`See Pet. 24–33.
`
`
`13
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`and II (id.); 3) Petitioner was not a party to the Maersk Litigation (id.); 4)
`Petitioner has introduced additional evidence of obviousness (id. at 45); and
`5) Petitioner has introduced additional evidence rebutting the secondary
`considerations evidence in the Maersk Lawsuit (id.12). Petitioner then
`argues Patent Owner’s lack of nexus (id. at 46–48) and several of the
`individual factors (id. at 48–53). We consider this in view of the
`information presented by Patent Owner. Patent Owner presents its own
`analysis on nexus (Prelim. Resp. 41–47), commercial success (id. at 47–52),
`unexpected results and industry praise (id. at 53–54), copying (id. at 54–56),
`industry skepticism (id. at 56–57), licensing (id. at 57–58), and long-felt but
`unresolved need (id. at 58).
`Reviewing the Petition and the Preliminary Response, we consider
`Petitioner to have addressed the issue of secondary considerations
`sufficiently for us to conclude that it has a reasonable likelihood of success.
`First, as explained above, Petitioner has shown a reasonable likelihood of
`prevailing absent evidence of secondary considerations. Second, Petitioner
`has offered new evidence regarding secondary considerations. And third,
`Petitioner has addressed the secondary considerations previously raised by
`Patent Owner and made a reasoned explanation why we would come to a
`different conclusion if an inter partes review were instituted. It would be
`premature, at this stage, to do a complete weighing of all the evidence of
`
`
`12 For example, Petitioner has offered the testimony of Mark A. Childers
`(Ex. 1012), who has extensive industry experience (Ex. 1012 ¶¶ 1–6) and
`who has reviewed the evidence of secondary considerations from the Maersk
`Lawsuit but concludes “the evidence does not indicate these claims are
`nonobvious” (id. ¶ 11). See also id. ¶¶ 12–48 (explaining the basis of his
`opinion).
`
`
`14
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`obviousness and non-obviousness using the preponderance of the evidence
`standard, when our task here is to determine if Petitioner has shown a
`reasonable likelihood of success of meeting that standard.
`We acknowledge that Patent Owner has tendered a substantial body of
`evidence that it alleges demonstrates non-obviousness. We also
`acknowledge that a jury has weighed different but similar evidence of
`obviousness and non-obviousness and found that it failed to show
`obviousness by clear and convincing evidence. Critically, however, the
`evidence in this proceeding is different, the parties in this proceeding are
`different, and the burden of proof in this proceeding (preponderance of the
`evidence) is different.
`In view of the record before us, we determine that Petitioner has
`shown a reasonable likelihood of demonstrating that the subject matter of
`claims 17–19 would have been obvious to a person of ordinary skill in the
`art in view of Lund, Horn, Baker, Rike, and Chevron.
`
`5. Lund, Horn, Moore, Baker, and Varco
`(Claims 17–19)
`
`This proposed combination is substantially similar to the one above.
`Petitioner cites to Moore for a derrick having a rotary table and multiple
`hoists to simultaneously performing drilling operations and operations
`auxiliary to drilling operations (Pet. 34), Baker for top drives and a pipe
`handling system (id.), and Varco also for a pipe handling system (id.). This
`ground involves Lund and Horn, which we have discussed above and which
`the Federal Circuit has held establishes a prima facie case of obviousness,
`such that we likewise conclude that this ground establishes a reasonable
`likelihood that the subject matter of claims 17–19 would have been obvious
`
`
`15
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`to a person of ordinary skill in the art in view of Lund, Horn, Moore, Baker,
`and Varco.
`
`6. Anticipation by Lund
`(Claims 17 and 18)
`
`Petitioner’s anticipation ground is substantially similar to the Lund,
`Horn, Rike, and Chevron ground above, but relying only on Lund. See Pet.
`16–24. Patent Owner first argues that “both the Patent Office and
`Transocean viewed claim 10 as being patentable over Lund during
`prosecution.” Prelim. Resp. 26–27 (citing Ex. 1006, 139–141, 151).13
`During prosecution, Patent Owner (then, applicants) became aware of Lund
`and attempted to distinguish over it by amending the claims. Applicants
`stated that Lund “does not suggest use of the second hoist . . . to advance
`tubular members to the seabed or into the wellhole.” Ex. 1006, 140–141. In
`response, the Examiner stated that “both advancing means are not used to
`advance tubular members to the seabed [in Lund].” Id. at 151. The
`Examiner did not offer a claim construction or detailed analysis to explain
`his position. On the other hand, Petitioner now offers evidence that a person
`of ordinary skill in the art would have considered the Examiner’s
`understanding of Lund to have been incorrect, at least in certain foreseeable
`scenarios. Ex. 1007 ¶ 9 (“at least in shallow waters, the tubular string could
`reach the seabed”), ¶ 40 (describing a particular operation on the seabed that
`the preparation hoist would have been configured to do). As such, on the
`
`
`13 Patent Owner’s discussion here is of the prosecution history for a different
`patent from the ’069 patent. Exhibit 1006 is the prosecution history for U.S.
`Patent No. 6,047,781, from which the ’069 patent claims priority. See Ex.
`1001, [63].
`
`
`16
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`record before us, Petitioner has established sufficient facts indicating that
`Lund discloses the claim limitation.
`Patent Owner next argues that Lund’s preparation hoist is not capable
`of performing operations at the seabed. Prelim. Resp. 27–34. In view of the
`record at this stage of the proceeding, however, we are persuaded that Lund
`discloses this limitation. Petitioner’s declarant, Mr. Schaff, testifies that the
`drawworks of the preparation hoist would allow for advancing tubular
`members into the body of water to the seabed, at least in shallow water
`operations. Ex. 1007 ¶¶ 9, 40; see also Bell Commc’ns Research, Inc. v.
`Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an
`accused product that sometimes, but not always, embodies a claimed method
`nonetheless infringes”). In contrast, Patent Owner has not offered a
`construction of the second tubular advancing station that would limit it to
`certain weight capacities or spool lengths and has not offered sufficient
`evidence in support of its attorney arguments that Lund’s preparation hoist is
`incapable of operations at the seabed.
`Patent Owner next argues that Lund does not disclose tubular transfers
`between the drill stations. Prelim. Resp. 34–35. Claim 17 does not require
`two drill stations, however, such that Patent Owner’s argument is not
`commensurate in scope with the claim. Patent Owner similarly argues that
`“Lund does not disclose or suggest the broad concept of moving tubular
`assemblies to any point on the drill floor.” Id. at 34. Instead, according to
`Patent Owner, Lund discloses “the pipe handling equipment is only able to
`move tubular assemblies between specific locations on the drill floor.” Id.
`Petitioner asserts that Lund describes a tubular handling system that
`uses a rail. Pet. 20–23 (citing Ex. 1002, 6:9–17, 7:3–24, Figs. 1, 2; Ex. 1007
`
`
`17
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`¶¶ 72–73, 79). The cited portions of Lund describe a “tube handling and
`transporting mechanism,” which is described as transporting tubes to and
`from storage areas. Ex. 1002, 7:3–5, 9:21–26. This would serve to transfer
`tubes between the two hoists, as Mr. Schaff testifies. Ex. 1007 ¶¶ 72–73.
`This understanding of the claim term is in accordance with the prior
`constructions of the district court, which we have adopted, and which
`rejected the notion that the claim precluded indirect transfers. See Ex. 1009,
`46 (holding that a “means . . . for transferring tubular assemblies” included
`direct and indirect transfers); see also Ex. 2005, 44; Ex. 2006, 19; Ex. 2007,
`17 (similar or same). Accordingly, on the record before us, we are not
`persuaded by Patent Owner’s argument that Lund fails to disclose this
`limitation.
`Claim 18 further requires two setback stations adjacent the tubular
`advancing stations. Petitioner asserts that these limitations read on the two
`storage areas in Lund. Pet. 24. Reviewing the record before us, we
`determine that Petitioner has established a reasonable likelihood that claims
`17 and 18 are anticipated by Lund.
`
`III. ORDER
`
`
`
`In view of the foregoing, it is hereby:
`ORDERED that inter partes review of the ’069 patent is instituted on
`the following grounds:
`Whether claims 17–19 would have been obvious in view of
`Lund, Horn, Rike, and Chevron S-55;
`Whether claims 17–19 would have been obvious in view of
`Lund, Horn, Moore, Baker, and Varco;
`Whether claims 17 and 18 are anticipated by Lund;
`
`18
`
`
`
`
`
`Case IPR2015-01990
`Patent 6,068,069
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ʼ069 patent shall commence on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
`FURTHER ORDERED that no ground other than those specifically
`provided above is authorized.
`
`
`
`PETITIONER:
`
`Matthew G. Reeves
`Locke Lord LLP
`mreeves@lockelord.com
`
`
`
`PATENT OWNER:
`
`Mark T. Garrett
`Charles B. Walker, Jr.
`W. Andrew Liddell
`Norton Rose Fulbright US LLP
`mark.garrett@nortonrosefulbright.com
`charles.walker@nortonrosefulbright.com
`andrew.liddell@nortonrosefulbright.com
`
`
`
`19
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
