Diamond Offshore Drilling Inc v. Transocean Offshore Deepwater Drilling Inc

1. Case Identification

• Case #: IPR2018-01176
• Patent #: 6,085,851
• Filed: June 1, 2018
• Petitioner(s): Diamond Offshore Drilling, Inc., and Diamond Offshore Company
• Patent Owner(s): Transocean Offshore Deepwater Drilling Inc.
• Challenged Claims: 10

2. Patent Overview

• Title: Multi-Activity Offshore Exploration and/or Development Drill Method and Apparatus
• Brief Description: The ’851 patent discloses a "multi-activity" offshore drilling apparatus with a single superstructure supporting two means for advancing tubulars (e.g., hoists). This configuration is designed to allow primary drilling operations and auxiliary operations to be performed simultaneously, thereby increasing efficiency and reducing the time required to drill a well.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claim 10 is anticipated by the "Double Up" article.

• Prior Art Relied Upon: Double Up (Ocean Industry, Sept. 1988).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Double Up article, which describes the Sedco Forex DDS semisubmersible rig, discloses every element of claim 10. The article depicts a single superstructure mounted on a drilling deck with two distinct towers designed for "two totally independent drilling operations." This structure meets the limitations for a superstructure supporting first and second means for advancing tubular members simultaneously to the seabed. The article also discloses overhead gantry cranes and adjacent setback racks for storing and moving tubulars, which satisfies the "means for transferring tubular assemblies" between the two advancing means.
  • Key Aspects: Petitioner contended that a Person of Ordinary Skill in the Art (POSA) would understand that the described gantry cranes could transfer various tubular assemblies between the two drilling centers, facilitating the simultaneous operations claimed in the ’851 patent.

Ground 2: Anticipation - Claim 10 is anticipated by the ME 5500 marketing brochure.

• Prior Art Relied Upon: ME 5500 (Maritime Engineering "ME 5500 Dual Rig system" marketing brochure, Feb. 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the ME 5500 brochure, widely distributed before the patent's priority date, discloses a multi-activity drilling assembly on a semisubmersible rig that anticipates claim 10. The brochure shows a single, unitary superstructure connecting a main drilling center and a second, lighter drilling center, both capable of lowering tubulars to the seabed to support simultaneous main and auxiliary drilling operations. For the transfer means, the brochure discloses a rail-mounted gantry crane system covering the upper deck, which a POSA would understand could transfer tubular assemblies and other equipment between the setback areas and the two drilling centers.
  • Key Aspects: Petitioner presented evidence that the inventors of the ’851 patent had actual knowledge of the ME 5500 brochure and its corresponding drawings before the patent's filing date, having received them during marketing meetings.

Ground 3: Obviousness - Claim 10 is obvious over Lund in view of Horn.

• Prior Art Relied Upon: Lund (Patent 4,850,439) and Horn (UK Application GB 2 041 836).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of Lund and Horn renders claim 10 obvious under 35 U.S.C. §103. Lund discloses a single derrick with a primary "drilling hoist" and a secondary "preparation hoist" for assembling tubular stands while drilling is ongoing, teaching nearly every element. Petitioner asserted that the only potential deficiency in Lund is whether the preparation hoist is explicitly taught as capable of advancing tubulars all the way "to the seabed." Horn was cited to cure this alleged deficiency, as it expressly discloses a derrick with two independent hoisting systems, both capable of performing operations to the seabed.
  • Motivation to Combine: A POSA would combine Lund and Horn to gain the efficiency of Lund's simultaneous preparation activities with the full operational capability of Horn's second hoist. This would improve safety, comply with industry mandates for pipe handling, and save significant drilling time.
  • Key Aspects: Petitioner emphasized that the Federal Circuit in prior litigation (Transocean I) had already found that this combination established a prima facie case of obviousness. The central argument in this IPR is that new evidence of widespread, simultaneous invention by competitors refutes the secondary considerations of nonobviousness that the Patent Owner previously relied upon to overcome this prima facie case.

• Additional Grounds: Petitioner asserted numerous other anticipation challenges against claim 10 based on the ME 5500 Drawings (Jan. 1996), the MH Twin RamRig system (faxed to the inventors in Mar. 1996), the Stancal Multi-Well platform article (1957), and the Chevron S-55 drilling rig (1968). Additional obviousness grounds were asserted combining Lund with the Double Up article and the MH Twin RamRig system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) would be improper. It stressed that it was not a party to the prior Seadrill IPR and that this petition presents significant new prior art and arguments not previously considered by the Board. This new evidence includes multiple anticipatory drilling rig designs and extensive proof of simultaneous invention by competitors, which Petitioner contended directly refutes the findings on secondary considerations made in the Seadrill proceeding.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claim 10 of Patent 6,085,851 as unpatentable under 35 U.S.C. §§ 102 and 103.