United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
F. ATLAS, SENIOR UNITED STATES DISTRICT JUDGE.
patent case is before the Court on the Motion to Dismiss
Breach of Contract Claim (“Motion”) [Doc. # 103]
filed by Defendant Noble Corporation PLC and related
corporate Defendants (collectively, “Noble”).
Plaintiff Transocean Offshore Deepwater Drilling Inc.
(“Transocean”) filed a Response [Doc. # 108], and
Noble filed a Reply [Doc. # 109]. Having reviewed the record
and applied binding and persuasive legal authorities, the
Court denies the Motion.
is the owner of 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”) (the “Transocean
Patents”). In 2007, Transocean filed a patent
infringement lawsuit, Civil Action No. 4:07cv0618 (“the
2007 Lawsuit”), against Noble. In the 2007 Lawsuit,
Transocean alleged that Noble's semisubmersible drilling
unit, the Clyde Boudreaux, infringed the Transocean
Patents. Shortly after the 2007 Lawsuit was filed, Noble
conceded that the Clyde Boudreaux infringed specific
claims of two of the Transocean Patents.
23, 2007, Transocean and Noble entered into a settlement
agreement that included a licensing agreement and provided
for entry of an agreed judgment against Noble in the 2007
Lawsuit. See Settlement and License Agreement
(“2007 Settlement Agreement”), Exh. 1 to
Response. On July 31, 2007, this Court entered Final Judgment
in the 2007 Lawsuit as contemplated and required by the 2007
Settlement Agreement. The Final Judgment in the 2007 Lawsuit
provided that the Court “adjudges, orders, and
decrees” that Noble's Clyde Boudreaux
“infringes at least claim 11 of the '781 patent and
claim 17 of the '069 patent.” See Final
Judgment, Exh. 2 to Response, ¶ 3. The Final Judgment
provided further that it would “have claim and issue
preclusion on all future litigation between the parties and
those in privity with them.” Id., ¶ 8.
the 2007 Settlement Agreement included a “No-Challenge
Provision.” This provision states:
Noble Licensee covenants that it will not participate as a
party or financially support a third party in any
administrative or court proceeding or effort in the world to
invalidate, oppose, nullify, reexamine, reissue or
otherwise challenge the validity,
enforceability, or scope of any claim of the
2007 Settlement Agreement, ¶ 4.3 (emphasis added). The
No-Challenge Provision provides that any breach would be
“considered a material breach which may not be cured .
. ..” Id.
January 2017, Transocean filed the current lawsuit, alleging
that Noble owns and leases various drillships for offshore
oil drilling operations that infringe the Transocean Patents.
The current lawsuit relates to Noble's drillship known as
the Globetrotter and four other drillships built by
Hyundai Heavy Industries. The patent infringement allegations
in the current lawsuit do not involve the Clyde
the claim construction proceedings in the current lawsuit,
and the briefing on Noble's Motion for Summary Judgment
of Non-Infringement, Transocean sought and obtained leave to
file an amended complaint. In the First Amended Complaint
[Doc. # 94], Transocean alleges that Noble breached the
No-Challenge Provision of the 2007 Settlement Agreement in
the current lawsuit. Specifically, Transocean alleges that
Noble improperly argued in this case that the scope of
certain claims of the Transocean Patents is more limited than
the scope as construed by this and other courts. Noble filed
a Motion to Dismiss, which has been fully briefed and is now
ripe for decision.
STANDARD FOR MOTION TO DISMISS
regarding the breach of a settlement agreement are not
“unique to patent law, even if arising in the context
of a patent infringement suit.” See Panduit Corp.
v. HellermannTyton Corp., 451 F.3d 819, 825 (Fed. Cir.
2006) (citing Novamedix, Ltd. v. NDM Acquisition
Corp., 166 F.3d 1177, 1180 (Fed. Cir. 1999)). Therefore,
the Fifth Circuit legal standard for motions to dismiss
applies to the pending Motion. See Panduit Corp.,
451 F.3d at 825.
Fifth Circuit, a motion to dismiss under Rule 12(b)(6) of the
Federal Rules of Civil Procedure is viewed with disfavor and
is rarely granted. See Turner v. Pleasant, 663 F.3d
770, 775 (5th Cir. 2011) (citing Harrington v. State Farm
Fire & Cas. Co., 563 F.3d 141, 147 (5th Cir. 2009)).
The complaint must be liberally construed in favor of the
plaintiff, and all facts pleaded in the complaint must be
taken as true. Harrington, 563 F.3d at 147. The
complaint must, however, contain sufficient factual
allegations to state a claim for relief that is
“plausible on its face.” See Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009); Patrick v.
Wal-Mart, Inc., 681 F.3d 614, 617 (5th Cir. 2012). When
there are well-pleaded factual allegations, a court should
presume they are true, even if doubtful, and then determine
whether they plausibly give rise to an entitlement to relief.
Iqbal, 556 U.S. at 679. Rule 8 “generally
requires only a plausible ‘short and plain'
statement of the plaintiff's claim, not an exposition of
his legal argument.” Skinner v. Switzer, 562
U.S. 521, 530 (2011).