Transocean v. Maersk

“Rare[ ]” Patentee Nonobviousness Victory based Objective (Secondary) Indicia

Today in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., __ F.3d __ (Fed. Cir. 2012)(Moore, J.), earlier proceedings, 617 F.3d 1296, 1307 (Fed.Cir.2010)(Moore, J.), the court reversed a trial court judgment as a matter of law that the invention was obvious in a rare case where the result of nonobviousness reached by the appellate was based upon several of the “secondary” indica of nonobviousness.

The court itself recognized that “we have rarely held that objective evidence is sufficient to overcome a prima facie case of obviousness.” (citation omitted; emphasis added). A colleague has said that it might be better to qualify this statement to say that the court has rarely reversed failure to grant JNOV in a situation like this, applying a substantial evidence standard, by finding that the strength of the objective evidence was so strong that no reasonable jury could have found the claims obvious.

A further necessary qualification is that it is important to understand that the reference to “objective” evidence refers to what Graham v. John Deere speaks of as “secondary” evidence. This is in contrast to objective evidence of a difference in properties such as involved in the Papesch line of case law. In re Dillon, 919 F.2d 688 (Fed.Cir.1990)(en banc), following In re Papesch, 315 F.2d 381 (CCPA 1963).

The opinion is available at the Court’s website,

About Harold Wegner (756 Articles)



Foley & Lardner LLP


Harold C. Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.