Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., No. 2009-1556 (Fed. Cir. Aug. 18, 2010).
The patents-in-suit concerned an apparatus for conducting offshore drilling, and the accused invention was a drilling rig. The accused infringer, a U.S. company, contracted with another U.S. company for use of the rig in the U.S. Gulf of Mexico. The contract was negotiated and executed outside the U.S. The district court found the patents-in-suit to be invalid based on obviousness and lack of enablement. Moreover, if valid, the patents-in-suit were found to not be infringed because the contract at issue did not constitute a sale or offer to sell under 35 U.S.C. § 271(a). Section 271(a) limits infringing conduct to acts occurring within the U.S.
On appeal, the Federal Circuit reversed the district court’s grant of summary judgment on the issues of obviousness and enablement. It held that a district court must always consider objective evidence of nonobviousness offered to rebut a prima facie case of obviousness, and that the Court below erred by failing to do so. With respect to the issue of enablement, the Court held that the district court erred by requiring the patentee “to enable the most efficient commercial embodiment” of the claimed invention.
The Court then vacated the district court’s grant of summary judgment on the issue of infringement. It held that “a contract between two U.S. companies for the sale of [a] patented invention with delivery and performance in the U.S. constitutes a sale under § 271(a) as a matter of law.” A sale does not necessarily occur at the location of negotiation and contracting. Rather, a court may also consider the “place of performance.” Similarly, the Court held that an offer made in connection with such a contract constitutes an offer to sell under § 271(a). The accused infringer argued that in order for an offer to sell to occur within the U.S., it must be made within the U.S. According to the Court, the controlling factor is not “the location of the offer, but rather the location of the future sale that would occur pursuant to the offer.”
A copy of the opinion can be found here.