## Facts

- Transocean owned three related patents directed to dual-activity offshore drilling rigs that use a derrick with two stations to perform different operations at the same time.
- Transocean asserted multiple claims from the three patents against Maersk based on an allegedly infringing dual-activity rig.
- Maersk’s corporate affiliates contracted to have the rig built overseas and entered into a drilling contract that defined an operating area including the U.S. Gulf of Mexico.
- Maersk argued there was no U.S. “sale” or “offer to sell” because negotiation and execution occurred abroad and the contract contemplated potential modification of the rig.
- The district court granted summary judgment for Maersk, holding the asserted claims invalid for obviousness and lack of enablement, not infringed under § 271(a), and not willfully infringed.

## Issues

1. Whether a contract negotiated and executed abroad can constitute an infringing “offer to sell” within the United States under 35 U.S.C. § 271(a) when it contemplates performance in U.S. territory.
2. Whether summary judgment of obviousness was proper where the patentee offered objective evidence of nonobviousness.
3. Whether summary judgment of lack of enablement was proper given disputed facts, including conflicting expert evidence.
4. Whether the record could support willful infringement under the then-governing standard.

## Decision

- The Federal Circuit reversed summary judgment of noninfringement, holding that a contract between U.S. companies contemplating performance in the United States may qualify as an “offer to sell” within the United States under § 271(a), even if negotiated or signed abroad.
- The court reversed summary judgment of invalidity for obviousness because the district court failed to consider objective indicia of nonobviousness and factual disputes remained.
- The court reversed summary judgment of invalidity for lack of enablement because genuine disputes of material fact precluded judgment as a matter of law.
- The court affirmed the determination of no willful infringement.
- The case was remanded for further proceedings on infringement and validity, with the no-willfulness ruling left intact.

## Legal Principles

- For § 271(a) “offer to sell,” the place of contemplated performance can establish a domestic offer even when contract formation occurred outside the United States.
- Contract terms identifying U.S. territory as a potential or defined operating area can support an inference of an offer to sell for use in the United States.
- An option or ability to modify an accused product does not, by itself, negate an otherwise actionable offer to sell at the summary-judgment stage when the agreement contemplates an accused configuration and U.S. performance.
- Obviousness analysis must consider objective indicia of nonobviousness as part of the overall determination; ignoring such evidence can make summary judgment improper.
- Enablement is a legal conclusion resting on underlying fact findings; conflicting evidence on undue experimentation can preclude summary judgment.
- Under the then-applicable willfulness framework, substantial, nonfrivolous defenses on infringement and validity can defeat willfulness as a matter of law.

## Conclusion

The Federal Circuit held that a contract contemplating U.S. performance may constitute an infringing “offer to sell” under § 271(a) despite overseas negotiation or execution, and it required further fact-finding on obviousness and enablement while leaving intact the summary judgment of no willfulness.


Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010)