Trials@uspto.gov
`Tel: 571-272-7822
`
` Paper No. 98
` Originally Entered: March 27, 2017
` Redacted Version: May 18, 2017
`
`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.
`
`Cases
`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Finding No Claims Unpatentable
`Granting-In-Part Patent Owner’s Motions to Seal without Prejudice
`Denying Petitioner’s Motion to Seal without Prejudice
`Denying Petitioner’s Motion to Exclude Evidence as Moot
`Ordering Parties to Provide Redacted Copies of Papers and Evidence
`35 U.S.C. § 318(a); 37 C.F.R. §§ 42.54, 42.64, 42.73
`
`PUBLIC VERSION WITH REDACTIONS
`
`

`

`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
`
`I. INTRODUCTION
`
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We also
`address herein the parties’ Motions to Seal and Petitioner’s Motion to
`Exclude Evidence. Lastly, we order the parties to provide redacted copies of
`certain papers and evidence.
`This Final Written Decision is for three proceedings. IPR2015-01929
`addresses U.S. Patent No. 6,047,781 (Ex. 1001, “the ’781 patent”). Upon
`consideration of Petitioner’s Petition (Paper 5, “Pet.”) in that proceeding, we
`instituted inter partes review on all claims challenged by Petitioner: claims
`10–13 and 30. Paper 14 (“Dec. on Inst.”). We focus our analysis on the
`arguments and evidence of this proceeding because it is representative of the
`three proceedings;1 our citations herein are exclusively to papers and
`evidence in IPR2015-01929, except as otherwise noted. We also instituted
`an inter partes review of claim 10 of U.S. Patent No. 6,085,851 (“the ’851
`patent”) in IPR2015-01989,2 and of claims 17–19 of U.S. Patent No.
`6,068,069 (“the ’069 patent”) in IPR2015-01990,3 which represent all claims
`challenged by Petitioner in those proceedings.
`After our Decision on Institution, Patent Owner filed a Response
`(Paper 44) and a Redacted Response (Paper 69, “PO Resp.”). We cite to the
`
`
`
`1 Specifically, although the claims are slightly different in each proceeding,
`the grounds and arguments are effectively the same, and the evidence of
`obviousness and non-obviousness is the same.
`2 Paper 8 in IPR2015-01989.
`3 Paper 8 in IPR2015-01990.
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`Redacted Response herein. Petitioner then filed its Reply (Paper 72, “Pet.
`Reply”) but not a Redacted Reply. An oral hearing was held February 13,
`2017.
`
`With respect to the grounds asserted in these trial, we have considered
`the papers submitted by the parties and the evidence cited therein. For the
`reasons discussed below, we determine that Petitioner has not shown, by a
`preponderance of the evidence, that any claims of the ’781, ’851, or ’069
`patents (together, the “challenged patents”) are unpatentable.
`
`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., 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, Civil Action No. 4:13-cv-1088, filed on April 16, 2013, in the U.S.
`District Court for the Southern District of Texas. Pet. 1–2; Paper 7, 1.
`Patent Owner indicates that the challenged patents have been asserted
`against other parties in other lawsuits, some of which we address next.
`Paper 9 (“Prelim. Resp.”), 2.
`
`B. Partial Prior Litigation History
`
`Although Petitioner was not a party, the challenged patents have been
`involved in prior litigation including Transocean Offshore Deepwater
`Drilling, Inc. v. Pacific Drilling SA, Civil Action No. 4:13-cv-1088 (S.D.
`Tex.) (hereinafter the “Pacific Lawsuit”), Transocean Offshore Deepwater
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`Drilling, Inc. v. GlobalSantaFe Corp., Civil Action No. 4:03-cv-02910 (S.D.
`Tex.) (hereinafter the “GlobalSantaFe Lawsuit”), Transocean Offshore
`Deepwater Drilling, Inc. v. Stena Drilling Ltd., 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”).
`Pet. 4, 49; Prelim. Resp. 2–3. The Maersk Lawsuit included two successive
`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 Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) (hereinafter
`“Transocean II”). Prelim. Resp. 3–4.
`The District Court in the Pacific Lawsuit held a Markman hearing and
`construed several limitations of the challenged patents. 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
`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
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`consider only the first three [Graham] factors” and determining that “the
`district court ignored . . . objective evidence of nonobviousness”).4 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 Challenged Patents
`
`The ’781 patent is directed to a multi-activity offshore drilling
`apparatus, such as a drillship. Ex. 1001, Abstract. 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 ¶¶ 17–34; Prelim.
`Resp. 5–12 (providing background information on conventional and multi-
`activity drilling).
`The ’781 patent states that it is a continuation of the application that
`issued as the ’851 patent. Ex. 1001, at [63]; Case IPR2015-01989, Ex. 1001,
`at [21]. The ’069 patent states that it is a continuation of the application that
`issued as the ’781 patent. Case IPR2015-01990, Ex. 1001, at [63]. Thus,
`
`4 The references referred to by the Federal Circuit as demonstrating a prima
`facie case of obviousness are also asserted in this proceeding.
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`the challenged patents “share a common specification.” Transocean I, 617
`F.3d at 1300.
`
`D. Challenged Claims
`
`Petitioner challenges claims 10–13 and 30 of the ’781 patent, claim 10
`of the ’851 patent, and claims 17–19 of the ’069 patent. Claims 10 and 30 of
`the ’781 patent are reproduced below.
`10. A multi-activity drilling assembly operable to be mounted upon
`a drilling deck of a drillship, semi-submersible, tension leg
`platform, jack-up-platform, or offshore tower and positioned
`above the surface of a body of water for supporting drilling
`operations through the drilling deck, to the seabed and into the
`bed of the body of water, said multi-activity drilling assembly
`including:
`a derrick operable to be positioned above a drilling deck and
`extending over an opening in the drilling deck for simultaneously
`supporting drilling operations and operations auxiliary to drilling
`operations through the drilling deck;
`a first top drive positioned within the periphery of said derrick;
`a first drawworks positioned adjacent to said derrick and operably
`connected to a first traveling block positioned within said derrick
`adjacent to said top drive for conducting drilling operations on a
`well through the drilling deck;
`a second top drive positioned within the periphery of said derrick;
`a second drawworks positioned adjacent to said derrick and
`operably connected to a second traveling block positioned within
`said derrick adjacent to said second top drive for conducting
`drilling operations or operations auxiliary to said drilling
`operations extending to the seabed for the well; and
`means positioned within said drilling derrick for transferring tubular
`assemblies between a first top drive station and a second top
`drive station to facilitate simultaneous drilling operations and
`operations to the seabed auxiliary to said drilling operations,
`wherein drilling activity can be conducted within said derrick
`with said first or second top drive, said first or second drawworks
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`and said first or second traveling block and auxiliary drilling
`activity extending to the seabed can be simultaneously conducted
`within said derrick with the other of said first or second top drive,
`the other of said first or second drawworks and the other of said
`first or second traveling block.
`
`30. A multi-activity drilling assembly operable to be supported from
`a position above the surface of a body of water for conducting
`drilling operations 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;
`first means connected to said drilling superstructure for advancing
`tubular members into the bed of body of water, wherein said first
`means includes a first means for hoisting tubular members;
`second means connected
`to said drilling superstructure for
`advancing tubular members simultaneously with said first means
`into the body of water to the seabed, wherein said second means
`includes a second means for hoisting tubular members; and
`means positioned adjacent to said first and second means for
`advancing tubular members for transferring tubular assemblies
`between said first means for advancing tubular members and said
`second means for advancing tubular members 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 means for
`advancing tubular members and auxiliary drilling activity can be
`simultaneously conducted for the well from said drilling
`superstructure by said second means for advancing tubular
`members.
`
`Claim 10 is the sole challenged claim of the ’851 patent, and is
`independent. It is generally similar to claim 30 of the ’781 patent
`reproduced above except that it does not recite that first and second “means
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`for hoisting tubular members” are included in the first and second “means
`. . . for advancing tubular members.”
`Claim 17 is the sole independent claim challenged of the ’069 patent.
`It is similar to claim 10 of the ’781 patent reproduced above, but recites first
`and second “tubular advancing station[s]” instead of separately listing top
`drives and drawworks, and claims “an assembly . . . operable to transfer
`tubular assemblies between said first tubular advancing station and said
`second” rather than the “means . . . for transferring” in claim 10 of the ’781
`patent.
`
`E. Prior Art and Instituted Grounds
`
`We instituted inter partes review on the following grounds asserted by
`Petitioner:
`Reference(s)
`Lund,5 Horn,6 Rike,7 Baker,8 and
`Chevron S-559
`
`Basis Claim(s) Challenged
`§ 103
`’781 patent: 10–13 and 30
`’851 patent: 10
`’069 patent: 17–19
`’781 patent: 10–13 and 30
`’851 patent: 10
`’069 patent: 17–19
`’781 patent: 30
`
`Lund, Horn, Moore,10 Baker, and
`Varco11
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`Lund
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`§ 103
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`§ 102
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`5 U.S. Patent No. 4,850,439, issued July 25, 1989 (Ex. 1002).
`6 U.K. Patent App. GB 2,041,836 A, published Sept. 17, 1980 (Ex. 1004).
`7 J. L. Rike and R. G. McGlamery, Recent Innovations in Offshore
`Completion and Workover Systems, Offshore Technology Conference
`(1969) (Ex. 1014).
`8 R. Baker, A Primer of Oilwell Drilling, (5th ed. 1994) (Ex. 1010).
`9 C.V. Norton, 3:3 Ocean Industry 1–3 (1968) (excerpt) (Ex. 1015)
`10 U.S. Patent No. 3,658,298, issued Apr. 25, 1972 (Ex. 1003).
`11 Varco®BJ™ General Catalog 1992–1993 (Ex. 1011).
`
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`Reference(s)
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`Basis Claim(s) Challenged
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`’851 patent: 10
`’069 patent: 17 and 18
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`II. MOTIONS
`
`A. Motions to Seal
`
`1. Petitioner’s Motion to Seal
`
`Petitioner moves to seal 90 exhibits listed in a table in its motion.
`Paper 71, 1–6. Petitioner also submitted its Reply under seal, but does not
`list the Reply in its Motion to Seal. Petitioner does not explain why the
`exhibits (or its Reply) contain confidential information, instead making a
`global allegation that they “contain mostly information that has been
`designated confidential in this proceeding or in a related district court
`proceeding,” and that “[s]ome may also include confidential trade secret,
`research, or development information.” Paper 71, 1. Petitioner makes no
`effort to identify why each document should be designated confidential,
`however. Some appear to be publicly-disseminated documents, such as
`Exhibit 1146, which includes a published article from “Maritime Reporter
`and Engineering News.” However, a number of documents appear to be
`truly confidential information. Accordingly, we deny Petitioner’s Motion to
`Seal (Paper 71), with leave to refile. The Reply and subject exhibits will
`remain under seal provisionally until we have ruled on any refiled motion, or
`if no motion is refiled, until at least 45 days after final judgment (including
`resolution of any appeal).
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`2. Patent Owner’s Motions to Seal
`
`Patent Owner filed a First Motion to Seal Exhibits 2066 and 2067.
`Paper 23. Patent Owner later filed a Supplement to its Motions to Seal that
`indicated it no longer sought to seal these exhibits. Paper 73, 3.
`Accordingly, Patent Owner’s First Motion to Seal is dismissed as moot.
`Patent Owner filed a Second Motion to Seal Exhibits 2077, 2080,
`2083, 2093–2103, 2107–2112, 2114–2119, 2130–2132, 2137, 2141, 2142,
`2148, 2149, 2152, 2165, 2174, 2188, 2193, 2194, 2200, and 2201. Paper 46.
`Patent Owner later filed a Supplement to its Motions to Seal that indicated it
`no longer sought to seal Exhibits 2083, 2093, 2095, 2096, 2098, 2100, 2137,
`2141, 2142, and 2188 (Paper 73, 3–4); the Motion is dismissed as moot as to
`these exhibits. Patent Owner’s Supplement to its Motion to Seal also
`indicated that much of the confidential information was of third parties, and
`that it has submitted as Exhibits 2218 and 2219 the arguments of those third
`parties in support of Patent Owner’s Motions to Seal. Id. at 2.
`Third party Pacific Drilling, Inc. provides arguments in support of
`Patent Owner’s Motion to Seal Exhibits 2077, 2099, 2102, 2107, 2110,
`2111, 2112, 2115, 2118, 2131, 2132, 2152, and 2165, as well as certain
`portions of Patent Owner’s Response. Exhibit 2218. Pacific’s arguments
`contain a detailed explanation for why each exhibit contains sensitive,
`confidential business information. Id. We have reviewed these documents
`and Pacific’s explanation and grant Patent Owner’s Motion to Seal Exhibits
`2077, 2099, 2102, 2107, 2110, 2111, 2112, 2115, 2118, 2131, 2132, 2152,
`and 2165, as well as certain portions of Patent Owner’s Response. Pacific
`also notes that Patent Owner moved to seal Exhibits 2114, 2116, 2117, 2119,
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`2148, and 2149, but that Pacific no longer requests these documents to
`remain under seal. Ex. 2218, 11. Accordingly, Patent Owner’s Motion to
`Seal Exhibits 2114, 2116, 2117, 2119, 2148, and 2149 is denied.
`Third Party Stena Drilling, Ltd. provides arguments in support of
`Patent Owner’s Motion to Seal Exhibits 2077, 2080, 2094, 2101, 2200, and
`2201. Ex. 2219. Stena’s arguments contain a detailed explanation for why
`each exhibit contains sensitive, confidential business information. We have
`reviewed these documents and Stena’s explanation and grant Patent Owner’s
`Motion to Seal Exhibits 2077, 2080, 2094, 2101, 2200, and 2201.
`Patent Owner offers its arguments for the remaining exhibits.
`Exhibits 2193 and 2194 contain the IHS Petrodata database information, and
`is thus information owned by that company. Paper 46, 6. Patent Owner
`provided a redacted version that indicates the fields of the report along with
`some information about various timeframes and filters used. Ex. 2193.
`Given our treatment of this information below, the redacted version provides
`sufficient notice of the information contained in the exhibit upon which we
`relied to make our decision. We grant Patent Owner’s Motion to Seal
`Exhibits 2193 and 2194.
`Patent Owner moves to seal Exhibits 2094, 2097, and 2174. Paper 46,
`7–8. Exhibit 2094 is a license agreement with Stena. Exhibit 2097 is a
`spreadsheet showing revenue received by Patent Owner from licensing its
`patents. Exhibit 2174 is a contract with one of the inventors regarding
`royalty payments. These exhibits each discuss sensitive, confidential
`business information. The Motion to Seal Exhibits 2094, 2097, and 2174 is
`granted.
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`Patent Owner moves to seal Exhibits 2103, 2108, and 2109, which it
`asserts are third party Stena’s confidential information. Paper 46, 6. These
`exhibits were not discussed in Stena’s arguments in support of Patent
`Owner’s motion. See Ex. 2219. Accordingly, no arguments have been
`presented in favor of maintaining the confidentiality of these documents and
`the Motion to Seal Exhibits 2103, 2108, and 2109 is denied, with leave to
`refile. The exhibits will remain under seal provisionally until we have ruled
`on any refiled motion, or if no motion is refiled, until at least 45 days after
`final judgment (including resolution of any appeal).
`Patent Owner moves to seal Exhibit 2130, which it alleges is
`Petitioner’s confidential information. Paper 46, 3, 5. Because we did not
`rely on this information in our Decision, we grant the Motion to Seal Exhibit
`2130.
`
`We also grant Patent Owner’s motion to seal the Patent Owner
`Response, which discusses information contained in the exhibits discussed
`above. Although we do not grant the motion as to some of the material, for
`the reasons expressed above, we nevertheless grant the motion. To the
`extent the Response includes redactions regarding exhibits for which the
`motion is denied, reference of the unsealed documents will provide
`disclosure of the material originally redacted.
`Finally, Patent Owner moves to seal Paper 88, which contain Patent
`Owner’s demonstratives presented during oral hearing. Paper 90. The
`demonstratives merely serve as a visual aid to the presentation and are
`limited to evidence and argument already made. Accordingly, the material
`that is allegedly confidential is the same information discussed above. We
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`grant Patent Owner’s Motion to Seal Paper 88 for the reasons set forth
`above. For those exhibits cited in the demonstratives where the motion was
`denied, we nevertheless grant the motion as the public has little interest in
`the content therein because our Decision cannot be based upon it, and the
`redacted version of the demonstratives (Paper 89) provides sufficient public
`notice of the content of the slides.
`
`3. Motions to Seal in IPR2015-01989 and IPR2015-01990
`
`We note that IPR2015-01989 and IPR2015-01990 contain nearly
`identical motions and exhibits. In IPR2015-01989, Patent Owner’s motions
`are found in Papers 18, 41, 70, and 87, and the exhibits sought to be sealed
`are the same as in IPR2015-01929. Petitioner’s motion is found in Paper 68,
`and the exhibits sought to be sealed are the same as in IPR2015-01929. In
`IPR2015-01990, Patent Owner’s motions are found in Papers 18, 41, 69, and
`85, and the exhibits sought to be sealed are the same as in IPR2015-01929.
`Petitioner’s motion is found in Paper 66, and the exhibits sought to be sealed
`are the same as in IPR2015-01929. Thus, our ruling with respect to
`IPR2015-01929 on these motions directly applies to the exhibits in
`IPR2015-01989 and IPR2015-01990, and to the appropriate paper number
`for Patent Owner’s Response and demonstratives in those proceedings.
`
`4. Confidential Information Cited in This Decision
`
`We also remind the parties that, although we have granted one or
`more motions to seal documents, we may unseal portions of those
`documents, notwithstanding, to allow for sufficient disclosure to the public
`of the factual bases of our Decision. For example, if we cite to a portion of
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`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`an exhibit, and that portion of the exhibit is redacted, we may look to unseal
`that portion of the exhibit. As set forth in our Order below, the parties are
`required to suggest redactions to this Decision, with input from the affected
`third parties, as applicable, and provide a motion to seal this Decision. This
`Decision will be entered under seal provisionally until we rule on any such
`motion. If our ruling denies or denies-in-part any such motion, the parties
`will be given at least one opportunity to refile.
`
`B. Motion to Exclude
`
`Petitioner filed a Motion to Exclude Evidence (Paper 80), to which
`Patent Owner filed a Response (Paper 84) and Petitioner filed a Reply
`(Paper 85). Petitioner moves to exclude the testimony of Claude E. Cooke,
`Jr., Ph.D., in Exhibit 2077. Paper 80, 17. Patent Owner relies on the
`testimony of Dr. Cooke for purposes of analysis of its secondary
`considerations evidence, specifically as to the nexus. Paper 84, 2. In our
`Decision below, we do not rely on Dr. Cooke’s testimony except in one
`instance in which we find his testimony not credible. Accordingly, we deny
`Petitioner’s Motion to Exclude as moot, as we do not rely on it.
`
`III. PATENTABILITY 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. Id.; see In re Rambus, Inc., 753 F.3d 1253, 1255–56 (Fed. Cir.
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
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`2014) (“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).). According to Patent
`Owner, the challenged patents expired on May 3, 2016. Prelim. Resp. 20;
`see, e.g., Ex. 1006, 161 (terminal disclaimer limiting the ’781 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 construed the claims using a
`Phillips-type analysis in our Decision on Institution, and will do so here.
`
`1. Terms in IPR2015-01929
`
`In our Decision on Institution, we construed the terms “second means
`. . . for advancing tubular members,” of claim 30, and “means . . . for
`transferring tubular assemblies,” of claims 10 and 30. Dec. on Inst. 9–10.
`Neither party alleges an error in those constructions or advocates different
`constructions. Upon re-consideration of our constructions in view of the
`record at this time, we adopt those prior constructions for purposes of this
`Decision (reproduced below). Further, no remaining terms are at issue in
`this Decision,12 such that 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).
`
`
`
`12 We recognize that Patent Owner argues that claims 10 and 30 refer to a
`single well. PO Resp. 2. We need not reach this issue in our analysis
`because our Decision does not turn on the construction of this term.
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
`
`Our prior constructions are as follows. A “second means . . . for
`advancing tubular members” performs the function of “advancing tubular
`members simultaneously with said first means into the body of water to the
`seabed” and a structure of “drawworks, or structural equivalents.” Dec. on
`Inst. 9–10 (citing Pet. 7–8 (citing Ex. 1001, 6:62–7:20, 7:35–40, 18:19–27));
`Ex. 1001, 6:62–67 (“drawworks and other functionally equivalent systems
`. . . provide a means for . . . advancing and retrieving tubular members”). A
`“means . . . for transferring tubular assemblies” performs the function of
`transferring tubular assemblies and has a corresponding structure of a “rail
`supported pipe handling system,” “a rugged overhead crane structure within
`the derrick,” or structural equivalents. Dec. on Inst. 10 (citing Pet. 6–7;
`Prelim. Resp. 25); accord Ex. 1009, 3; Ex. 2005, 2; Ex. 2007, 17; Ex. 2006,
`18–19 (district court constructions of this term).
`
`2. Terms in IPR2015-01989
`
`In our Decision on Institution of this proceeding (IPR2015-01989,
`Paper 8), we construed the terms “second means . . . for advancing tubular
`members” and “means . . . for transferring tubular assemblies.”
`IPR2015-01989, Paper 8, 7–10. We also construed these terms under
`Phillips. Id. at 7. Patent Owner’s Redacted Response in IPR2015-01989
`does not address our construction of these terms and instead proposes a
`construction that claim 10 requires one well. IPR2015-01989, Paper 39, 2.13
`
`
`
`13 Patent Owner attempted to file its redacted version of the Response as
`Paper 66, but Paper 66 is a redacted version of the Response in
`IPR2015-01929. Per our Order below, Patent Owner shall file a redacted
`version of Paper 39 of IPR2015-01989.
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
`
`Petitioner’s Reply in IPR2015-01989 does not address our construction of
`these terms and instead addresses Patent Owner’s proposed construction
`regarding one well. IPR2015-01989, Paper 69, 6–8. A construction
`regarding one well does not affect our analysis, as is explained in our
`analysis of Petitioner’s obviousness ground below. As such, we do not
`construe any further terms and, upon reconsideration of our prior construed
`terms, adopt our prior constructions.
`Specifically, we construe “second means . . . for advancing tubular
`members” as a means-plus-function limitation with the function of
`advancing tubular members simultaneously with said first means into the
`body of water to the seabed and with a corresponding structure as a
`drawworks and equivalent structures. IPR2015-01989, Paper 8, 7–9. We
`construe “means . . . for transferring tubular assemblies” as a means-plus-
`function limitation with the function of transferring tubular assemblies and
`with a corresponding structure of a rail supported pipe handling system, a
`rugged overhead crane structure within the derrick, or structural equivalents.
`Id. at 9–10.
`
`3. Terms in IPR2015-01990
`
`In our Decision on Institution of this proceeding (IPR2015-01990,
`Paper 8), we construed the terms “tubular advancing station” and “assembly
`. . . operable to transfer tubular assemblies.” IPR2015-01990, Paper 8, 7–9.
`We also construed these terms under Phillips. Id. at 6–7. Patent Owner’s
`Redacted Response in IPR2015-01990 does not address our construction of
`these terms and instead proposes a construction that claim 17 requires one
`well. IPR2015-01990, Paper 65, 2. Petitioner’s Reply in IPR2015-01990
`
`17
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
`
`does not address our construction of these terms and instead addresses Patent
`Owner’s proposed construction regarding one well. IPR2015-01990, Paper
`68, 6–7. A construction regarding one well does not affect our analysis, as is
`explained in our analysis of Petitioner’s obviousness ground below. As
`such, we do not construe any further terms and, upon reconsideration of our
`prior construed terms, adopt our prior constructions.
`Specifically, we construe “tubular advancing station” as “an assembly
`of equipment capable of advancing tubular members to the seabed.”
`IPR2015-01990, Paper 8, 7–8. We construe “assembly . . . operable to
`transfer tubular assemblies” as a means-plus-function limitation with a
`function of “transferring tubular assemblies directly between advancing
`stations or indirectly through a setback envelope” and a corresponding
`structure of “overhead derrick cranes, rail supported pipe handlers, or
`equivalent structure.” Id. at 8–9.
`
`B. Overview of the Prior Art and Asserted Grounds
`
`1. The Level of Ordinary Skill in the Art
`
`Petitioner proposes that a person of ordinary skill in the art typically
`had a bachelor’s degree in mechanical, chemical, or related engineering plus
`5 years of experience in the oil production industry. Pet. 4 (citing Ex. 1007
`¶ 15). Patent Owner does not explicitly offer a level of ordinary skill in the
`art, but states in some of its briefing that the parties do not generally disagree
`on the level of ordinary skill. Paper 84 (Patent Owner’s Opposition to
`Motion to Exclude the testimony of Dr. Cooke), 3 (“[t]he parties also agree
`generally as to the level of ordinary skill”). Based on the testimony of Mr.
`Schaff (Ex. 1007 ¶ 15) and the disclosures of the prior art, we adopt
`
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`IPR2015-01929 (Patent 6,047,781)
`IPR2015-01989 (Patent 6,085,851)
`IPR2015-01990 (Patent 6,068,069)
`
`Petitioner’s proposed definition of the level of ordinary skill in the art.
`
`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
`par