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Transocean Offshore Deepwater Drilling Inc. v. Noble Corp. PLC

United States District Court, S.D. Texas, Houston Division

May 15, 2019

NOBLE CORPORATION PLC, et al., Defendants.



         This 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[1] (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.

         I. BACKGROUND

         Transocean 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.

         On July 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.

         Significantly, 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 Licensed Patents.

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.

         In 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 Boudreaux.

         Following 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.


         Issues 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.

         In the 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).

         III. ...

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