Transocean Offshore Deepwater Drilling Inc. v. Noble Corporation plc et al

Filing 68

MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION (Signed by Judge Nancy F Atlas) Parties notified.(sashabranner, 4)

United States District Court
Southern District of Texas

ENTERED
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
§
§
§
§
v.
§
§
NOBLE CORPORATION PLC, et al., §
Defendants.
§

June 19, 2018
David J. Bradley, Clerk

TRANSOCEAN OFFSHORE
DEEPWATER DRILLING INC.,
Plaintiff,

CIVIL ACTION NO. 4-17-0123

MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
This patent case is before the Court for construction of the disputed claim terms
in United States Patents No. 6,047,781 (“the ’781 Patent”), No. 6,056,071 (“the ’071
Patent”), No. 6,068,069 (“the ’069 Patent”), and No. 6,058,851 (“the ’851 Patent”)
(collectively, the “Patents-in-Suit”).

Plaintiff Transocean Offshore Deepwater

Drilling Inc. (“Transocean”) owns the Patents-in-Suit. Transocean alleges that
Defendant Noble Corporation and related corporate Defendants1 (“Noble”) are
infringing the Patents-in-Suit.
The Court conducted a hearing pursuant to Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996) (“Markman hearing”), on May 22, 2018. Based on the
evidence before the Court, the arguments presented by counsel, and the governing
1

Noble Corporation, Noble Drilling Americas LLC, Noble Drilling Exploration
Company, Noble Drilling Holding LLC, Noble Drilling Services Inc., Noble Drilling (U.S.)
LLC, and Noble Drilling (U.S.) Inc.
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legal authorities, the Court issues this Memorandum and Order construing those
disputed claim terms that require construction.
I.

BACKGROUND2
The ’781 Patent was issued in April 2000 for an invention entitled Multi-

Activity Offshore Exploration and/or Development Drilling Method and Apparatus.
Claims 1-14, 25-28, and 30 of the ’781 Patent are apparatus claims, and Claims 15-24
and 29 are method claims. The related patents, the ’071 Patent and the ’069 Patent,
were issued in May 2000. Claims 1-22, 27-36, and 38-42 of the ’071 Patent are
apparatus claims, and Claims 23-26 and 37 are method claims. Claims 1-8 and 17-21
of the ’069 Patent are apparatus claims, and Claims 9-16 and 22-26 are method claims.
The ’851 Patent was issued in July 2000. All thirteen claims of the ’851 Patent are
apparatus claims. Transocean is the owner by assignment of the Patents-in-Suit,
which relate to dual-activity drilling rigs or “drillships.”
Drilling an offshore well requires constructing a hole, or “wellbore,” in the
seabed. To construct the wellbore, the driller on the drilling rig alternates between
drilling the actual hole in the seabed, and lining that hole with pipe. The drill bit used
to drill the hole is suspended on a “drill string,” which is comprised of sections of drill
2

In addition to the Patents-in-Suit and the parties’ claim construction briefing, the Court
bases the “Background” section on its review of the Complaint [Doc. # 1], Transocean’s Tutorial
[Doc. # 45], Noble’s Tutorial [Doc. # 46], and prior claim construction opinions involving the
Patents-in-Suit.
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2

pipe called “tubular members,” “tubular assemblies, “tubular strings,” or “tubular
stands.” The tubular members are connected to each other on the drilling rig and then
lowered, or “advanced,” into the sea. Hoisting equipment is used to lower and raise
the tubular members. Specialized hoists are used on free-floating drilling structures
to prevent damage to the drill strings or to the drillship.
Multiple (generally three) tubular members can be connected and made into
“stands” which are added to the drill string as a unit. The stands are preassembled and
stored in areas referred to as “setback envelopes.”3 The stands are retrieved by pipe
handlers that travel on tracks to and from the setback envelopes. The pipe handlers
are the equipment that move tubular members between tubular advancing stations and
setback envelopes.
After the initial wellbore is drilled, the drill string is raised back to the surface.
“Casing pipe” then is lowered on the drill string to the seabed to line the wellbore and
provide structural stability. On conventional drillships, the lowering of tubular
members and casing pipe to the seabed must be interrupted frequently as additional
tubular members or joints of casing are added to the drill string.

3

Setback envelopes are areas on or near the drill floor where tubular stands may be
positioned until they are needed. See Transocean’s Tutorial, p. 15 n. 12.
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3

After the casing is in place, the “blow-out preventer” (“BOP”) is lowered onto
the top of the wellbore generally by the same process used to lower a string of tubular
members. The BOP is comprised of one or more valves installed at the well-head to
prevent pressure, or oil and gas, from escaping from the well. For the BOP, the
tubular members have a large diameter and are very heavy. As a result, lowering the
BOP is more time-consuming than lowering the drill bit or the casing. Indeed,
lowering the BOP may take three days or more.
The term “critical path” in this case refers to the specific sequence of tasks that
must be performed to construct the well, and it is used to calculate the length of time
well construction is expected to take. Any operation required to construct the well
will be included in the “critical path.” To calculate the expected time for well
construction, the times anticipated for each step in the critical path are added together.
The Patents-in-Suit describe several different operations that are required to construct
the well, including making up and breaking down tubular strings (“handling”),
transferring those tubular strings or stands, and advancing the tubular members to (and
sometimes into) the seabed.
The Patents-in-Suit describe an improved method and apparatus that reduces
the amount of time required to construct the well. The addition of a second tubular
station on the drill floor allows certain activities to be removed from the critical path,

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thereby shortening well construction time. Unlike prior dual-activity vessels in which
there was a drilling station and a separate station for other tasks such as offline stand
building, the Patents-in-Suit describe a dual-activity vessel with two tubular stations,
each capable of performing drilling activity. See, e.g., Claim 32 of the ’071 Patent.
Transocean alleges that Noble constructed various dual-activity drillships for
offshore oil drilling operations that infringe the Patents-in-Suit. Transocean filed its
Opening Claim Construction Brief [Doc. # 50], Noble filed its Claim Construction
Brief [Doc. # 53], and Transocean filed its Reply Brief [Doc. # 54].4 The following
terms or groups of terms are in dispute and require construction by the Court: (1)
derrick, and related terms, (2) “means for advancing” terms, (3) tubular advancing
station, and related terms, (4) to the seabed, (5) drilling operations, drilling activity,
and related terms, (6) “or” in the wherein clauses, (7) “means for handling” and
related terms, and (8) Method Claim 37.5
4

Following the Markman hearing, the parties filed their exhibits electronically. See
Noble’s Exhibits and Combined Evidentiary Appendix [Docs. # 56 and # 57]; Transocean’s
Exhibits [Doc. # 59]. Additionally, Noble filed a Post-Hearing Submission of Citation to
Referenced Transocean Acknowledgment [Doc. # 58], Transocean filed a Post Hearing
Submission and Reply to Noble’s New Claim Construction Position [Doc. # 62], Noble filed a
Response to Transocean’s Post-Hearing Submission [Doc. # 63], and Transocean filed a Reply to
Noble’s Response [Doc. # 64].
5

The parties identified additional terms as disputed, but those terms were not fully
addressed in the parties’ briefing or during the Markman hearing and, as a result, are not
construed at this time. These terms include: “means for transferring,” “assembly operable to
transfer,” “means for hoisting,” “first tubular member,” and “second tubular member.” If the
(continued...)
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The Court conducted a Markman hearing at which the parties presented
evidence and argument regarding the proper construction of these terms. The Court
found the parties’ oral argument to be extremely helpful. Based on the parties’
briefing, the full factual record, and the parties’ presentations and argument at the
Markman hearing, the Court construes the disputed claim terms.
II.

GENERAL LEGAL STANDARDS FOR CLAIM CONSTRUCTION
“It is a bedrock principle of patent law that the claims of a patent define the

invention to which the patentee is entitled the right to exclude.” Aventis Pharm., Inc.
v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (quoting Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The patent claims in issue
must be construed as a matter of law to determine their scope and meaning. See, e.g.,
Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), aff’g, 52 F.3d 967,
976 (Fed. Cir.) (en banc); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1317 (Fed. Cir. 2007).
“There is a heavy presumption that claim terms are to be given their ordinary
and customary meaning.” Aventis, 715 F.3d at 1373 (citing Phillips, 415 F.3d at
1312-13; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

5

(...continued)
parties need a construction of any of these terms, they may request by July 10, 2018, another
Markman hearing and submit additional briefing on a schedule to be determined at that time.
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Therefore, Courts must “look to the words of the claims themselves . . . to define the
scope of the patented invention.” Id. (citations omitted); see also Summit 6, LLC v.
Samsung Elec. Co., Ltd., 802 F.3d 1283, 1290 (Fed. Cir. 2015). The “ordinary and
customary meaning of a claim term is the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips, 415 F.3d at 1313; see also
ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed. Cir. 2009). This
“person of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the context
of the entire patent, including the specification.” Phillips, 415 F.3d at 1313; ICU, 558
F.3d at 1374.
Intrinsic evidence is the primary resource for claim construction. See PowerOne, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing
Phillips, 415 F.3d at 1312). For certain claim terms, “the ordinary meaning of claim
language as understood by a person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves little more than the
application of the widely accepted meaning of commonly understood words.”
Phillips, 415 F.3d at 1314. For other claim terms, however, the meaning of the claim
language may be less apparent. To construe those terms, the Court considers “those

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7

sources available to the public that show what a person of skill in the art would have
understood disputed claim language to mean . . . [including] the words of the claims
themselves, the remainder of the specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the meaning of technical terms, and
the state of the art.” Id.
The claims “provide substantial guidance as to the meaning of particular claim
terms.” Id. The Court may consider the context in which the terms are used and the
differences among the claims. See id. “Because claim terms are normally used
consistently throughout the patent, the usage of a term in one claim can often
illuminate the meaning of the same term in other claims.” Id. Because the claims “are
part of a fully integrated written instrument,” the Court may also consider the
specification and the patent’s prosecution history. Id. at 1315, 1317. When the claims
use separate terms, “each term is presumed to have a distinct meaning.” Primos, Inc.
v. Hunter’s Specialties, Inc., 451 F.3d 841, 847 (Fed. Cir. 2006).
The parties agree that certain disputed terms are means-plus-function limitations
under 35 U.S.C. § 112(f).6 “In enacting this provision, Congress struck a balance in
6

Title 35, United States Code, § 112(f) provides:
An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
(continued...)

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allowing patentees to express a claim limitation by reciting a function to be performed
rather than by reciting structure for performing that function, while placing specific
constraints on how such a limitation is to be construed, namely, by restricting the
scope of coverage to only the structure, materials, or acts described in the specification
as corresponding to the claimed function and equivalents thereof.” Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1347-48 (Fed. Cir. 2015) (citing Northrop
Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003)).
Construing means-plus-function claim terms follows a two-step process. First,
the Court must identify the claimed function. Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1351 (Fed. Cir. 2015). Second, the Court must identify the corresponding
structure in the patent specification that performs the function. See id.; Noah Sys., Inc.
v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012); Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1330 (Fed. Cir. 2003). The corresponding structure must be
“capable of performing the claimed function.” Univ. of Pittsburgh of Commonwealth
Sys. of Higher Educ. v. Varian Med. Sys., Inc., 561 F. App’x 934, 951 (Fed. Cir. 2014)
(citing Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d
1291, 1298 (Fed. Cir. 2005); Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379

6

(...continued)
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.

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(Fed. Cir. 2001)). The court must not, however, import “structural limitations from
the written description that are unnecessary to perform the claimed function” or that
do not actually perform the recited function. See Welker Bering Co. v. PHD, Inc., 550
F.3d 1090, 1097 (Fed. Cir. 2008) (quoting Wenger Mfg., Inc. v. Coating Mach. Sys.,
Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001)); Asyst Techs., Inc. v. Empak, Inc., 268
F.3d 1364, 1370 (Fed. Cir. 2001).
III.

CONSTRUCTION OF DISPUTED CLAIM TERMS
A.

Derrick and Related Terms

The parties dispute the proper construction of the terms “derrick” and “within
the derrick” as used in Claim 1 of the ’851 Patent, the ’781 Patent, and the ’069
Patent. Additionally, the parties dispute whether the term “derrick” has the same
meaning as the terms “drilling superstructure” and “interconnected superstructure” as
used in Claims 10 and 32 of the ’851 Patent, Claim 30 of the ’781 Patent, Claim 17
of the ’069 Patent, and Claim 32 of the ’071 Patent.

1.

Derrick, Drilling
Superstructure

Superstructure,

and

Interconnected

Transocean proposes that the terms “derrick,” “interconnected superstructure,”
and “drilling superstructure” be given the same construction, specifically, “a single
structure that supports the loads of drilling operations.” Noble disputes that the three
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terms have the same meaning. Noble argues that a “derrick” is a “framework that
supports the loads of drilling operations.”7 Although Noble appears to agree that a
derrick is a drilling superstructure, Noble argues that “interconnected superstructure”
should be construed to require two separate structures that are connected to each other.
The specification of the ’851 Patent provides that the preferred embodiment has
a traditional four-sided derrick. The specification further provides that the invention
includes other structures such as “tripod assemblies or even two adjacent upright but
interconnected frames.” The example of a “derrick” comprised of two adjacent but
interconnected frames demonstrates that the “derrick” is a single unit, even when the
frames are separate but interconnected. Consequently, the terms “derrick,” “drilling
superstructure,” and “interconnected superstructure” each identify a single unit.8
In addition to the preferred embodiment, each illustrated embodiment and each
of the examples identified in the specifications of the ’851 Patent, includes a
framework. Transocean’s argument that the derrick does not require a framework,
including its reliance on the invention described in U.S. Patent No. 2,503,516 (“the

7

Dictionaries define a “framework” as “a structure that forms a support or frame for
something,” see www.collinsdictionary.com, and as “an essential supporting structure of a
building, vehicle, or object,” see www.oxforddictionaries.com. It is unclear from the parties’
briefing and argument what they perceive as the distinction between a “framework” and a
“structure,” and whether that distinction is material.
8

In its Reply Brief, Transocean, while maintaining that an “interconnected
superstructure” is a single structure, agrees that it is made up of a plurality of connected
elements. See Reply Brief, p. 6.
11
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Shrewsbury Patent”), is unpersuasive.9 The “shell” in the Shrewsbury Patent, which
Transocean argues is a “derrick,” had an identifiable structure, i.e., a framework.10
Indeed, it had a wall that was firm and thick enough to make the shell water-tight. See
Shrewsbury Patent, Exh. 13, Col. 3, lines 20-22.
Based on the foregoing, the Court construes the terms “derrick,” “drilling
superstructure,” and “interconnected superstructure” to mean “a single framework that
supports the load of drilling operations.”

2.

Within the Derrick

Claim 1 in the ’851 Patent, the ’781 Patent, and the ’069 Patent includes the
limitation that something be “within the derrick.”11 For example, Claim 1 of the ’851
Patent requires that the means for transferring tubular assemblies be positioned
“within the derrick.” Transocean originally argued that “within the derrick” should
be construed to mean “a location within the operational area supported by the

9

In an Office Action dated May 8, 1997, the Patent and Trademark Office stated that
Shrewsbury discloses an underwater drilling method that includes “a shell or derrick.” See
Office Action, Exh. 6 to Transocean’s Opening Claim Construction Brief, ¶ 4.
10

The Oxford Dictionary identifies “structure” and “shell” as synonyms of “framework.”
See www.oxforddictionaries.com.
11

Claim 1 of the ’069 Patent states that the first means for handling tubular members is
located “within and connected to” the derrick. The parties do not appear to dispute that
“connected to” means “attached to” the derrick.
12
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derrick.” The Court finds no support for Transocean’s original proposed construction
that “within” means inside some vague “operational area” rather than in a defined
space. Transocean later changed its proposed construction to “connected to and/or
inside the derrick.” See Transocean’s Post Hearing Submission, Exhibit 1A [Doc.
# 62-1], p. 15. Noble argues that the term should be construed to mean “inside the
derrick.”
It is uncontested that the ordinary meaning of “within” is “inside.” Transocean
argued during the Markman hearing, however, that other claims in the Patents-in-Suit
require that equipment or activity is “within the periphery of the derrick” and,
therefore, “within the derrick” must have a different meaning. The Court finds this
argument unpersuasive. The “periphery” can mean the surrounding area lying beyond
the body’s strict limits. See www.merriam-webster.com. It can also mean “the
external surface of a body.” See The Random House Dictionary of the English
Language (1966); see also www.ahdictionary.com (“the outside surface of an object”).
Therefore, construing the term “within the derrick” as meaning inside the derrick
adequately differentiates that term from the claim term “within the periphery of the
derrick.”
Transocean argues also that “within the derrick” cannot mean “inside the
derrick” because the motion compensation system is located within the derrick despite

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sitting on top of it. See Power Point Slide in “Within the Derrick” section [Doc. # 592], ECF pp. 17-18. Transocean’s position that the motion compensation system sits
on top of the derrick is not supported by the intrinsic record. Instead, the Patents-inSuit place the motion compensation system “at the top” of the derrick, not “on top”
of the derrick. See, e.g., ’851 Patent Col. 6, line 41. The Patents-in-Suit provide that
only the mini-derricks are located on top of the derrick. For example, the ’851 Patent
states that the “derrick top serves to carry a first and second mini-derrick which guide
a sheave and hydraulic motion compensation system.” See ’851 Patent Col. 6, lines
35-36. The mini-derricks “guide” the motion compensation system, which is itself
located “within a single, multi-purpose derrick.” See ’851 Patent Col. 8, line 5. The
language does not suggest that the motion compensation system is located inside the
mini-derricks. Indeed, as noted above, the ’851 Patent provides that the “motion
compensated sheaves” are located “at the top of the derrick.” See ’851 Patent Col. 6,
line 41. Transocean’s argument regarding the placement of the motion compensation
system does not support its opposition to construction of “within the derrick” as
“inside the derrick.”
Further, Transocean’s replacement of its original proposed construction of
“within the derrick” with the proposed construction “connected to and/or inside the
derrick” is unavailing. The words “connected to” in the newly-proposed construction

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are not supported by anything in the specification or other intrinsic evidence.
Additionally, the new proposed construction fails to distinguish the claim term “within
the derrick” from the distinct claim term “within and connected to said unitary
derrick,” used in separate elements of Claim 1 of the ’069 Patent. The claim term
“within the derrick” thus does not contain a limitation that the item also be connected
to the derrick.
Accordingly, the Court construes the term “within the derrick” to mean “inside
the derrick.”
B.

“Means for Advancing” Terms

Claims 1 and 10 of the ’851 Patent, Claims 1 and 30 of the ’781 Patent, and
Claim 1 of the ’071 Patent and the ’069 Patent include the disputed term “means for
advancing.” The parties agree that these terms are means-plus-function limitations
subject to § 112(f).
1.

Specified Function

“[A] court may not construe a means-plus-function limitation by adopting a
function different from that explicitly recited in the claims.” JVW Enters., Inc. v.
Interact Assocs., Inc., 424 F.3d 1324, 1330 (Fed. Cir. 2005) (internal quotations and
citation omitted). Claims 1 and 10 of the ’851 Patent, and Claim 30 of the ’781 Patent
describe a means for “advancing tubular members [through the drilling deck; through

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the moon pool] into the bed of the body of water.”12 Claim 1 of the ’781 Patent, the
’071 Patent, and the ’069 Patent each include a means for “advancing tubular
members [through the drilling deck; through the moon pool] to the seabed and into the
bed of the body of water.” The specified function of each of these claims is
“advancing tubular members [through the drilling deck; through the moon pool] into
the seabed.”
Claims 1 and 10 of the ’851 Patent, Claim 1 of the ’071 Patent, and Claim 30
of the ’781 Patent include a means for “advancing tubular members [through the
drilling deck; simultaneously with said first means] into the body of water to the
seabed.”13 The specified function of each of these claims is “advancing tubular
members [through the drilling deck; simultaneously with said first means] to the
seabed.”
2.

Corresponding Structure

Noble contends that the corresponding structure should be defined specifically
to require that the identified structure be “capable of performing the specified

12

Various claim limitations in the Patents-in-Suit require that tubular members are
advanced “to the seabed,” while other claim limitations require that the tubular members are
advanced “into the seabed” or “into the bed of the body of water.” The latter two terms require
that the tubular members actually go into the seabed, but, as explained in Section D hereafter, the
former does not.
13

Unlike the other related claims, Claim 1 of the ’851 Patent states “into a body of water”
rather than “into the body of water.” See ’851 Patent, col. 13, lines 8-10.
16
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function.”

Transocean disagrees and proposes a list of the equipment as the

corresponding structure.

The parties agree that, in addition to the identified

corresponding structure, equivalent structures are included. The parties agree also that
the corresponding structure for “means for advancing” both to the seabed and into the
seabed includes “[h]oisting equipment, including drawworks, cable, sheaves, and a
traveling block.”14 Transocean argues that the corresponding structure also includes
equipment for making-up and breaking-down tubular strings, including iron
roughneck, pipe tong, spinning chain, Kelly and/or rotary swivel,15 as well as
“optionally[,] equipment for rotating tubular strings (top drives or rotary table).”16
First, the Court declines to include optional equipment as corresponding
structure. “A disclosed structure is corresponding ‘only if the specification or the
prosecution history clearly links or associates that structure to the function recited in
the claim.’” Omega Eng’g, Inc., v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir.
2003) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.

14

A drawworks is a large winch that reels in and lets out cable known as drilling line.
Sheaves are grooved pulleys. The traveling block is an arrangement of pulleys through which
the drilling line is reeved that moves up and down the derrick. [These definitions and those in
footnotes 14 and 15 are taken from the parties’ Tutorials.]
15

An iron roughneck is a machine that makes up and breaks out connections of pipe by
spinning the pipes and applying torque. A Kelly and a rotary swivel can each be used to rotate
the drill string.
16

A top drive is the motor that rotates the drill string. A rotary table supports the drill
string when the drill string is not connected to the top drive.
17
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1997)). “In other words, the structure must be necessary to perform the claimed
function.” Id. (citing Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352
(Fed. Cir. 2003)). Therefore, the Court does not adopt Transocean’s proposal to
include optional equipment for rotating tubular strings (top drives or rotary table) as
part of the corresponding structure for the means for advancing tubular members
limitation.
Additionally, the Court is not persuaded that the corresponding structure for
“advancing tubular members” includes equipment for making-up and breaking-down
tubular strings. Transocean does not identify language in the Patents-in-Suit to
support its suggestion. And the Final Decision of the Patent Trial and Appeal Board
on inter partes review identified the corresponding structure for the “means for
advancing tubular structures” as simply “drawworks and equivalent structures.” See
Final Written Decision, Exh. 24 to Transocean’s Opening Claim Construction Brief,
pp. 16-17. The ’851 Patent identifies equipment for making-up and breaking-down
tubulars as structures for “handling,” not for “advancing,” tubular members. See, e.g.,
’851 Patent, col. 7, lines 26-49. Therefore, the Court does not include equipment for
making-up and breaking-down tubular strings (iron roughneck, pipe tong, spinning
chain, Kelly and/or rotary swivel) as corresponding structure for the means for
advancing tubular members limitation.

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Based on the foregoing, the Court identifies the corresponding structure for the
claims with the specified function of “advancing tubular members into the seabed” as
“hoisting equipment including drawworks, sheaves, a traveling block and structural
equivalents capable of advancing tubular members [through the drilling deck; through
the moon pool] into the seabed.” Similarly, the Court identifies the corresponding
structure for the claims with the specified function of “advancing tubular members to
the seabed” as “hoisting equipment including drawworks, sheaves, a traveling block
and structural equivalents capable of advancing tubular members [through the drilling
deck; simultaneously with said first means] to the seabed.”
In its claim construction briefing and during the Markman hearing, Transocean
argued that including the “capable of . . .” language as part of the corresponding
structure “implies the structure in the written description is incomplete or inadequate
for performing the specified function.”

See Transocean’s Opening Claim

Construction Brief, p. 12. The Court’s inclusion of the “capable of . . .” language does
not create such an implication but, instead, recognizes the clear legal requirement that
the corresponding structure must be able to perform the specified function. See Univ.
of Pittsburgh of Commonwealth Sys. of Higher Educ. v. Varian Med. Sys., Inc., 561
F. App’x 934, 951 (Fed. Cir. 2014) (citing Default Proof Credit Card Sys., Inc. v.

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Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005); Budde v. HarleyDavidson, Inc., 250 F.3d 1369, 1379 (Fed. Cir. 2001)).
In the Reply Brief and during the Markman hearing, Transocean expressed its
concern that Noble wants to argue to a jury that additional structures are required. See
Reply, p. 7. Specifically, Transocean is concerned that Noble will argue that “means
for advancing” requires “the unrelated function of motion compensation.” See id. at
8-9. Free-floating drilling structures often use specialized hoisting equipment that
compensates for the vertical motion of the vessel caused by rising and falling ocean
conditions. The “motion compensation” equipment helps prevent damage to the drill
strings or to the drillship.
Noble denies that it intends to assert the motion compensation arguments
described by Transocean and will, instead, argue consistently with well-established
law that the corresponding structure must be capable of performing the specified
function. Transocean’s concerns, therefore, appear unfounded, and there is no reason
at this time for the Court to address them.
C.

“Tubular Advancing Station” and Related Terms
1.

First and Second Tubular Advancing Stations

Claim 17 of the ’069 Patent describes a first “tubular advancing station” for
advancing tubular members to the seabed and into the bed of the body of water.

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20

Claim 17 also describes a second “tubular advancing station” for “advancing tubular
members simultaneously with said first tubular advancing station to the seabed and
into the body of water to the seabed.”
The clear language of Claim 17 provides that the “first tubular advancing
station” is an assembly of equipment capable of advancing tubular members “to the
seabed and into the bed of the body of water.” Consequently, this first tubular
advancing station must contain equipment capable of advancing tubular members “to
the seabed” as construed in Section D hereafter, and “into the bed of the body of
water,” which means into the seabed.
The second “tubular advancing station,” however, requires that the assembly
of equipment at that station be capable of advancing the tubular members “to the
seabed and into the body of water to the seabed.” Noble argues that this is a
typographical error and should read “into the bed of the body of water.” Although the
Court agrees that the phrase “to the seabed and into the body of water to the seabed”
is redundant, a Court cannot correct a patent unless “the error is evident from the face
of the patent.” See H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1333 (Fed.
Cir. 2014).

The Court does not find that the questioned language, although

duplicative, is an erroneous statement of the patent drafter’s intent. Therefore, the
Court construes the language as written. Further, there is insufficient indication that

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21

Noble’s proposed construction is warranted. As a result, the Court concludes that the
“second tubular advancing station” is an assembly of equipment that is capable of
advancing tubular members to the seabed.
Transocean argues that the first and second tubular advancing stations should
be construed identically. The language in each is different, however, and must be
construed as written. Therefore, the Court construes the term “first tubular advancing
station” in Claim 17 of the ’069 Patent as “an assembly of equipment capable of
advancing tubular members to the seabed and into the seabed” and construes the term
“second tubular advancing station” in that same claim as “an assembly of equipment
capable of advancing tubular members to the seabed.” There is no requirement that
the second tubular advancing station in Claim 17 of the ’069 Patent have the
capability of advancing tubular members “into” the seabed.
2.

Operable to Selectively Advance Tubular Members

Claim 32 of the ’071 Patent provides for a second tubular advancing structure
that is “operable to selectively advance tubular members . . . to the seabed and into the
bed of the body of water . . ..” During the Markman hearing, the parties were at a loss
to provide a viable construction of this claim term. Noble in its Claim Construction
Chart proposes the construction “an assembly of equipment capable of advancing
tubular members to the seabed and into the bed of the body of water.” Transocean in

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its Claim Construction Chart similarly proposed “an assembly of equipment capable
of advancing tubular members to and into the seabed.” These proposed constructions
both ignore the word “selectively.” Transocean later, in its Markman presentation,
proposed the construction “an assembly of equipment capable of advancing tubular
members, where the tubular members are accessible to both stations.” This proposed
construction ignores the requirement that the tubular advancing structure be capable
of advancing the tubular members into the seabed, and there is no language in
Claim 32 that suggests that the tubular members must be accessible to both stations.
Therefore, the Court does not adopt either party’s proposed construction.
The Court renders its own proposed construction of the term “operable to
selectively advance tubular members . . . to the seabed and into the bed of the body
of water . . ..” First, the term language suggests that the second tubular advancing
structure is an assembly of equipment capable of advancing tubular members to the
seabed and into the seabed. Second, grammatically, the placement of “selectively”
within the infinitive “to advance” indicates that the advancing is being performed
selectively, not that certain tubular members are being selected over others. Language
such as “operable to advance selected tubular members” would have indicated that the
operator could select which tubular members to advance. The drafter of the ’071
Patent, however, did not use that phrasing. Therefore, the Court proposes the term

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means “an assembly of equipment capable of advancing at the equipment operator’s
election tubular members to the seabed and into the seabed.” The equipment operator
would select when, how, and indeed, whether to advance tubular members to the
seabed and into the seabed.
The Court recognizes that this construction has not been suggested by or
discussed with counsel. Therefore, the Court issues this construction tentatively, and
will allow the parties to file objections by July 10, 2018. Alternatively, by that date,
the parties may agree on a different claim construction or may withdraw the request
that the Court construe this claim term.
D.

“To the Seabed”

Various claims in the Patents-in-Suit state that a tubular member is advanced
“to the seabed.” During the Markman hearing, the parties agreed that a tubular
member is advanced “to the seabed” when “it reaches the point where it can engage
in operations at the seabed.” The parties further agreed that the term “to the seabed”
does not necessarily require touching the seabed. The Court accepts the parties’
agreed construction of the term “to the seabed.”
E.

Drilling Operations, Drilling Activity, and Related Terms
1.

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The terms “drilling operations” and “drilling activity” are used throughout the
Patents-in-Suit. The parties agree that the two terms have the same meaning.
Transocean proposes that the terms mean “operations required to construct a well,”
and Noble proposes the construction “operations required to drill a well.” The dispute
focuses on whether the terms are limited to actual drilling into the seabed.
The clear language of the Patents-in-Suit establishes that the terms “drilling
operations” and “drilling activity” refer to more than actual drilling into the seabed.
For example, Claim 1 of the ’851 Patent refers to “drilling activity” being conducted
by the means for advancing tubular members. Claim 1 of the ’781 Patent refers to
“drilling operations” being conducted through the moon pool. Because the language
in the Patents-in-Suit does not support limiting the terms “drilling activity” and
“drilling operations” to only drilling into the seabed, the Court construes the terms to
mean “operations required to construct a well.”17
2.

Auxiliary Drilling Activity and Related Terms

The term “auxiliary drilling activity” is used in Claims 1 and 10 of the ’851
Patent, Claims 1, 15, 20, and 30 of the ’781 Patent, Claims 1 and 32 of the ’071
Patent, and Claims 1 and 17 of the ’069 Patent. Related term “drilling operations

17

The critical path includes all of the different operations that must be performed to
construct the well, such as handling, transferring, and advancing tubular members. As a result,
these “drilling operations” and “drilling activity” – defined as operations required to construct a
well – would be included on the critical path.
25
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auxiliary to said drilling operations” is used in Claim 10 of the ’851 Patent. Claim
term “operations auxiliary to [said] drilling operations” is used in Claims 1 and 10 of
the ’851 Patent, Claims 1 and 30 of the ’781 Patent, Claims 1, 32 and 35 of the ’071
Patent, and Claim 17 of the ’069 Patent. Disputed claim term “operations auxiliary
to drilling the well” is used in Claim 15 of the ’781 Patent, and term “activity auxiliary
to drilling activity” is used in Claim 20 of that Patent. Transocean proposes that these
claim terms all be construed to mean “operations removed from the critical path.”
Noble proposes that these claim terms all be construed to mean “drilling operations
removed from the critical path.”
The Court construes these disputed claim terms to mean “drilling operations
removed from the critical path.” The Court has construed the terms “drilling
operations” and “drilling activity” broadly to mean “operations required to construct
a well.” Because the “critical path” identifies the operations that must be performed
to construct the well, operations that can be removed from the critical path are those
operations required to construct a well – or drilling operations. Indeed, Transocean
stated in this case that its “point is that auxiliary drilling activity does not require
actual drilling.” See Transocean’s Reply Brief, p. 18. This “point” that drilling
activity and auxiliary drilling activity do not require actual drilling has been accepted
by the Court in its construction of the claim terms “drilling activity” and “drilling

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26

operations.” Therefore, the Court construes these related claim terms to mean
“drilling operations removed from the critical path.”
F.

“Or” in the Wherein Clauses

Claim 1 of the ’781 Patent, the ’071 Patent, and the ’069 Patent contain a
“wherein” clause providing that drilling activity can be conducted “by said first or
second means for advancing” and auxiliary drilling activities can be simultaneously
conducted “by the other of said first or second means for advancing . . ..” Claim 32
of the ’071 Patent contains a wherein clause providing that drilling activity can be
conducted “by said first or second tubular advancing structure” and auxiliary drilling
activity can be simultaneously conducted “by the other of said first or second tubular
advancing structure.” Claim 17 of the ’069 Patent contains a wherein clause
providing that drilling activity can be conducted “by said first or second tubular
advancing stations” and auxiliary drilling activity can be simultaneously conducted
“by the other of said first or second tubular advancing stations.” The fundamental
dispute between the parties is whether, as Transocean argues, only one of the recited
means/structures/stations must be capable of performing drilling activities or, as Noble
argues, both means/structures/stations must be capable of performing drilling
operations.

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Transocean argued during the Markman hearing that Noble’s request for
construction of “or” in the wherein clauses should have been raised in a different
manner, such as in connection with other disputed claims terms rather than separately.
The Court is unpersuaded. Noble has adequately presented the issue, and the Court
will construe this disputed claim term in the Patents-in-Suit.
The cited clauses provide that the drilling activity “can be conducted . . . by said
first or second means [or advancing structure or advancing stations] for advancing”
tubular members. The word “or” can be used inclusively to mean “first or second or
both,” or exclusively to mean “first or second but not both.” See Shaw v. Nat’l Union
Fire Ins. Co. of Pittsburgh, Pa., 605 F.3d 1250, 1254 n.8 (11th Cir. 2010); Allstate
Ins. Co. v. Plambeck, 66 F. Supp. 3d 782, 788 (N.D. Tex. 2014); Gonzalez v.
Infostream Group, Inc., 2015 WL 5604448, *18 (E.D. Tex. Sept. 21, 2015). In this
case, the Patents-in-Suit provide expressly that drilling activity “can be conducted .
. . by said first or second means [or advancing structure or advancing stations] for
advancing” tubular members, and auxiliary drilling activity can be simultaneously
conducted from “the other of said first or second means for advancing . . ..” The
Court construes this language to mean that drilling activity can be conducted from
either

means/structure/station

and

the

operator

can

select

which

means/structure/station – the first or the second – will be used for drilling operations.

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Thus, the “other of said first or second” means/structure/station will be used
simultaneously for auxiliary drilling activity. Unless both means/structures/stations
are capable of performing drilling activity, drilling activity cannot be conducted from
the first or second means/structure/station, but only from the one with drilling activity
capability. Based on the plain meaning of the term “or” in the wherein clauses of the
Patents-in-Suit, the Court construes the term inclusively to mean that both
means/structures/stations must be capable of – but not necessarily in fact used at all
times for – conducting drilling activities.
The Court’s construction of the term “or” in the wherein clauses is supported
by the prosecution history of the Patents-in-Suit. The claims of the ’851 Patent, as
originally allowed, stated “wherein said drilling activity can be conducted . . . by said
first means for advancing.” Subsequently, U.S. Patent No. 4,850,439 (the “Lund
Patent”) was discovered. The Lund Patent covered a station for assembling and
disassembling tubular members separate from the station for conducting drilling
operations. See Lund Patent, Noble Exh. C, Combined Exhibits at CC000728. At that
point, the application was amended “to clearly define over this newly cited Lund
patent.” See Amendment, Combined Exhibits at CC000704. One of the amendments
to “define over this newly cited Lund patent” was to change the requirement that the
“drilling activity can be conducted . . . by said first means for advancing” to the

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current requirement that “drilling activity can be conducted . . . by said first or second
means for advancing.” See id. at CC000694. To overcome the prior art in the Lund
Patent, the application for the ’851 Patent was amended to clarify that, unlike in Lund
where only one of the stations was capable of performing drilling operations, the
Patents-in-Suit require that drilling operations can be conducted by either the first or
the second means/structures/stations for advancing.
Based on the clear language of the claim term and on the prosecution history,
the Court construes the term “or” in the wherein clauses to mean that “both
means/structures/stations must be capable of conducting drilling activities.”
G.

“Means for Handling” and Related Terms

Claim 1 of each of the Patents-in-Suit includes a “means for handling tubular
members as said tubular members are advanced [through the drilling deck; through
the moon pool] . . ..” The parties agree that these terms are means-plus-function
limitations subject to § 112(f).
As mentioned above in connection with the “means for advancing” claim terms,
the “means for handling” includes making-up and breaking down the tubular strings
or stands. The specified function is “handling tubular members as said tubular
members are advanced [through the drilling deck; through the moon pool].”

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The parties agree, though in connection with their proposed construction for
different claim terms,18 that the equipment for “handling” tubular members as they are
advanced through the drilling deck or through the moon pool includes an iron
roughneck, a pipe tong, a spinning chain, a kelly, and a rotary swivel.19 Transocean
argues that the corresponding structure also includes overhead cranes within the
derrick and pipe handlers. Noble disagrees.
In the Final Decision on inter partes review and in a prior claim construction
of claims in the Patents-in-Suit, the overhead derrick cranes and rail supported pipe
handlers were identified as corresponding structure for the “means . . . for transferring
tubular assemblies” limitation, with the specified function of “transferring tubular
assemblies directly between advancing stations or indirectly through a setback
envelope.” See Final Written Decision, pp. 16-17 (corresponding structure of a “rail
supported pipe handling system” and a “rugged overhead crane structure within the

18

In connection with its proposed construction of the “means for advancing” claim term,
Transocean identifies the equipment for “making-up and breaking-down tubular strings” as “iron
roughneck, pipe tong, spinning chain, Kelly and/or rotary swivel.” See Transocean’s Claim
Construction Chart, p. 2. Noble identifies these pieces of equipment as the corresponding
structure for the “means for handling tubular members.” See Noble Claim Construction Chart, p.
8.
19

There now appears to be a dispute regarding whether every element of the
corresponding structure for “means for handling” must be present. See Transocean’s Post
Hearing Submission [Doc. # 62], p. 2. The Patents-in-Suit demonstrate that the listed equipment
can be used in various combinations, often using some but not all of the listed items. Indeed, the
preferred embodiment lists only the iron roughneck. See ’851 Patent, Fig. 7. As noted
repeatedly herein, however, the combination of equipment must be capable of performing the
specified function at issue.
31
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derrick”); Transocean Offshore Deepwater Drilling, Inc. v. Pacific Drilling, Inc., et
al., Civil Action No. H-13-1088, p. 73 (corresponding structure of “overhead derrick
cranes, rail supported pipe handlers, or equivalent structures”). This Court concludes
that the overhead cranes within the derrick and the rail supported pipe handlers are
equipment for transferring tubular assemblies, not for handling members as they are
advanced through the drilling deck or through the moon pool. Consequently, the
Court identifies the corresponding structure for the “means for handling” limitation
as “the combination of an iron roughneck, a pipe tong, a spinning chain, a kelly and
a rotary swivel (or equivalent structures) capable of handling tubular members as said
tubular members are advanced [through the drilling deck; through the moon pool].”
H.

Method Claim 37

The preamble to Method Claim 37 in the ’071 Patent describes a method for
conducting offshore drilling operations into the seabed conducted “at least partially,
from a first station for advancing tubular members and at least partially from a second
station for advancing tubular members.” Transocean states that no construction is
required, but asserts that the first or second station does not have to perform any
particular step “or even a complete step.” Noble proposes that the language be
construed as “a method in which drilling operations into the seabed are performed
from both the first station for advancing and the second station for advancing.”

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The Court has held previously in this Memorandum and Order that “advancing”
does not include making up and breaking down tubular strings.

With that

understanding, it is unclear how any of the four steps listed in Method Claim 37 could
be separated into discrete parts. Therefore, the Court construes the preamble to
require that each of the two stations for advancing must perform at least one step of
the “method for conducting offshore drilling operations into the seabed.” The
preamble does not, however, require that either the first or the second “station for
advancing” perform any particular step(s) listed in Claim 37.20
IV.

CONCLUSION
The Court has considered the intrinsic evidence in the record, as well as limited

extrinsic evidence as cited herein. The Court also has considered the parties’ oral
arguments and explanations during the Markman hearing, which the Court found very
helpful and informative. Based on this consideration of the evidence and the parties’
arguments, as well as the application of governing claim construction principles, the
Court construes the disputed terms in the Patents-in-Suit as set forth above and in the
chart below.
Claim Term

20

Court’s Construction

In connection with Claim 37, Transocean states in its Opening Claim Construction Brief
that Noble attempts to define the tubular members by which station advances them. Noble does
not make that argument in either its Claim Construction Brief or its Claim Construction Chart.
33
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Derrick
Drilling Superstructure
Interconnected Superstructure

A single framework that supports the loan
of drilling operations

Within the Derrick

Inside the derrick

Means for Advancing Tubular
Members [Through the Drilling
Deck; Through the Moon Pool]
Into the Bed of the Body of Water

Specified Function: Advancing tubular
members [through the drilling deck;
through the moon pool] into the seabed

Means for Advancing Tubular
Members [Through the Drilling
Deck; Through the Moon Pool]
To the Seabed and Into the Bed of
the Body of Water
Means for Advancing Tubular
Members [Through the Drilling
Deck; Simultaneously With Said
First Means] Into the Body of
Water to the Seabed

Corresponding Structure: Hoisting
equipment including drawworks, sheaves, a
traveling block and structural equivalents
capable of advancing tubular members
[through the drilling deck; through the
moon pool] into the seabed
Specified Function: Advancing tubular
members [through the drilling deck;
simultaneously with said first means] to the
seabed
Corresponding Structure: Hoisting
equipment including drawworks, sheaves, a
traveling block and structural equivalents
capable of advancing tubular members
[through the drilling deck; simultaneously
with said first means] to the seabed

First Tubular Advancing Station
in Claim 17 of the ’069 Patent

An assembly of equipment capable of
advancing tubular members to the seabed
and into the seabed

Second Tubular Advancing
Station in Claim 17 of the ’069
Patent

An assembly of equipment capable of
advancing tubular members to the seabed

Operable to Selectively Advance
Tubular Members

An assembly of equipment capable of
advancing at the equipment operator’s
election tubular members to the seabed and
into the seabed

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To the Seabed

To the point where the item can engage in
operations at the seabed. There is no
requirement that the item touch the seabed.

Drilling Operations
Drilling Activity

Operations required to construct a well

Auxiliary Drilling Activity and
related terms

Drilling operations removed from the
critical path

“Or” in the “Wherein” Clauses

Both means/structures/stations must be
capable of conducting drilling activities

Means for Handling Tubular
Members As Said Tubular
Members Are Advanced [Through
the Drilling Deck; Through the
Moon Pool]

Specified Function: Handling tubular
members as said tubular members are
advanced [through the drilling deck;
through the moon pool]
Corresponding Structure: The combination
of an iron roughneck, a pipe tong, a
spinning chain, a kelly and a rotary swivel
(or equivalent structures) capable of
handling tubular members as said tubular
members are advanced [through the drilling
deck; through the moon pool]

Preamble to Method Claim 37

Each of the two stations for advancing must
perform at least one step of the “method for
conducting offshore drilling operations into
the seabed,” there is no requirement that the
“first station for advancing” perform certain
steps listed in Claim 37 and the “second
station for advancing” perform the other
steps

It is SO ORDERED.
SIGNED at Houston, Texas, this 19th day of June, 2018.

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NAN Y F. ATLAS
SENIOR UNI
STATES DISTRICT JUDGE