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 designed to increase operational efficiency. The invention features a single drilling superstructure that supports two separate means for advancing tubular members, allowing for primary drilling operations and auxiliary operations (e.g., assembling pipe stands) to be performed simultaneously.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 10 by the "Double Up" Article

• Prior Art Relied Upon: "Double Up" (an article in 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 drilling superstructure supporting two distinct towers designed for independent drilling operations (the first and second "means for advancing"). It also discloses overhead gantry cranes accessible to tubular storage racks for moving tubulars between the drilling centers, which constitutes the claimed "means for transferring." The stated purpose of the rig's design was to enable simultaneous operations to increase efficiency.

Ground 2: Anticipation of Claim 10 by the ME 5500 Brochure

• Prior Art Relied Upon: ME 5500 Brochure (a marketing document from Maritime Engineering titled "ME 5500 Dual Rig system," dated Feb. 8, 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that the ME 5500 brochure, publicly distributed and allegedly provided to the ’851 patent's inventors before the critical date, anticipates claim 10. The brochure describes a dual-drilling rig with a single, unitary superstructure supporting a main drill center and a second, auxiliary drill center on a semisubmersible hull. Petitioner asserted this structure meets the limitations for the superstructure and the two means for advancing tubulars. The brochure further describes a rail-mounted pipe handling system (gantry crane) covering the deck to transfer tubulars between storage and the drilling centers, satisfying the "means for transferring" limitation.

Ground 3: Obviousness of Claim 10 over Lund and Horn

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that a prima facie case of obviousness was already established by the Federal Circuit in prior litigation (Transocean I). Lund was asserted to teach a single derrick with a primary drilling hoist and a secondary "preparation" hoist for auxiliary tasks, along with a rail-mounted system to transfer tubulars between the hoists. Petitioner contended that if Lund's preparation hoist was considered deficient because it did not explicitly teach advancing tubulars "to the seabed," Horn remedied this by disclosing a dual-derrick system where the second hoist is fully capable of advancing tubulars to the seabed.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would have been motivated to combine the teachings of Lund and Horn to improve the efficiency of Lund's dual-hoist system. A POSA would modify Lund's secondary hoist to have the full "to the seabed" capability taught by Horn to achieve predictable benefits, such as increased operational flexibility and time savings, without requiring any new or unconventional technology.
  • Expectation of Success: Combining the known elements would have been straightforward. A POSA would have had a high expectation of success in upgrading Lund's secondary hoist to be fully functional, as this involved routine engineering and sizing of a conventional drawworks system, a well-understood technology.

• Additional Grounds: Petitioner asserted numerous additional grounds of unpatentability. These included multiple anticipation challenges against claim 10 based on the ME 5500 drawings (Jan. 1996), various documents related to the MH Twin RamRig system (including a fax to the inventors, drawings, and a technical bulletin), the Stancal Multi-Well article (Oct. 1957), and the Chevron S-55 drilling rig (Mar. 1968). Further obviousness grounds were asserted combining Lund with the "Double Up" article or the MH Twin RamRig documents.

4. Key Claim Construction Positions

• Petitioner stated that for the purposes of the inter partes review (IPR), it agreed with the constructions adopted by the Board in a prior IPR involving the ’851 patent (Seadrill, IPR2015-01989).
• Two means-plus-function terms were central:
  • "second means . . . for advancing tubular members" was construed to have the function of advancing tubulars simultaneously with the first means to the seabed, with the corresponding structure being a drawworks and its equivalents.
  • "means . . . for transferring tubular assemblies" was construed to have the function of transferring tubular assemblies, with the corresponding structure being a rail-supported pipe handling system, a rugged overhead crane, or equivalents.
• Petitioner argued that Transocean was precluded from challenging these constructions as it did not do so in the Seadrill appeal.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion under 35 U.S.C. §314(a) to deny institution, despite a prior IPR filed by Seadrill. Petitioner presented arguments based on the General Plastic factors.
• The core arguments were that Diamond is not the same party as the petitioner in Seadrill and that this petition presents significant new evidence and arguments not previously considered by the Board. This new evidence included several anticipatory prior art references and extensive evidence of simultaneous invention by other companies (e.g., Smedvig), which Petitioner argued refutes the secondary considerations of non-obviousness that were persuasive in the Seadrill proceeding.

6. Relief Requested

• Petitioner requested that the Board institute an IPR and cancel claim 10 of the ’851 patent as unpatentable under 35 U.S.C. §§ 102 and 103.