Objective Evidence Of Nonobviousness Overcomes Prima Facie Case Of Obviousness

In Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., No. 11-1555 (Fed. Cir. Nov. 15, 2012), the Federal Circuit reversed the district court's JMOL and held that (1) the asserted claims of U.S. Patent Nos. 6,047,781 ("the '781 patent"), 6,085,851 ("the '851 patent"), and 6,068,069 ("the '069 patent") were not invalid for obviousness and lack of enablement; (2) Maersk Drilling USA, Inc. ("Maersk") infringed the asserted claims; and (3) Transocean Offshore Deepwater Drilling, Inc. ("Transocean") was entitled to damages.

The '781, '851, and '069 patents are directed to a "dual-activity" drilling apparatus for improving the efficiency of offshore drilling. Transocean alleged that Maersk infringed claims 10-13 and 30 of the '781 patent, claim 10 of the '851 patent, and claim 17 of the '069 patent by entering into a contract with Statoil Gulf of Mexico LLC ("Statoil") that granted Statoil the right to use an allegedly infringing drilling rig.

The district court granted SJ of obviousness, lack of enablement, and noninfringement in favor of Maersk. After the Federal Circuit vacated the SJ of infringement and reversed the SJ of obviousness and lack of enablement on appeal, a jury trial was held. The jury found that Maersk failed to prove obviousness or lack of enablement. Its specific findings included that each of seven objective factors indicated nonobviousness. The jury also found that Maersk infringed and awarded $15 million in compensatory damages. However, the district court granted JMOL of invalidity and noninfringement, and held that Transocean was not entitled to damages.

"This . . . is precisely the sort of case where the objective evidence 'establish[es] that an invention appearing to have been obvious in light of the prior art was not.'" Slip op. at 21 (second alteration in original) (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)).

On appeal for the second time, the Court stated that under Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966), obviousness has "several underlying factual inquiries: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the field of the invention; and (4) objective considerations such as commercial success, long felt but unsolved need, and the failure of others." Slip op. at 6. During the initial appeal, the Court had concluded that the combination of two...