## Facts

- Transocean owned three related patents directed to a dual-activity offshore drilling rig with a derrick having two stations that can perform operations simultaneously to reduce drilling time.
- Transocean accused Maersk of infringing by contracting to build, and offering for use, a dual-activity deepwater rig for a customer’s operations in the U.S. Gulf of Mexico.
- The rig was to be built pursuant to a contract between Maersk’s corporate affiliate and a shipyard outside the United States.
- Maersk entered into a separate contract with a customer giving the customer rights to use the rig in an operating area defined to include, non-exclusively, the U.S. Gulf of Mexico.
- The district court granted summary judgment for Maersk on invalidity (obviousness and lack of enablement) and noninfringement.
- On remand after an initial appeal, a jury found the claims not invalid, found infringement, and awarded $15 million in damages; the district court then entered post-verdict JMOL for Maersk on invalidity, noninfringement, and damages and conditionally granted a new trial.

## Issues

1. Whether a contract negotiated and executed abroad can constitute an “offer to sell” or “sale” “within the United States” under 35 U.S.C. § 271(a) when the contemplated performance is in the United States.
2. Whether the asserted claims were invalid as obvious under 35 U.S.C. § 103, including how objective evidence of nonobviousness affects an otherwise supported prima facie case.
3. Whether the asserted claims were invalid for lack of enablement under 35 U.S.C. § 112 based on alleged undue experimentation.
4. Whether substantial evidence supported the jury’s findings of infringement and reasonable-royalty damages, and whether JMOL and a conditional new trial were proper.

## Decision

- The Federal Circuit rejected the district court’s narrow territoriality approach and held that a contract for performance in the United States may qualify as an “offer to sell” within the United States under § 271(a) even if negotiated and/or signed abroad.
- The Federal Circuit reversed the district court’s post-verdict JMOL and reinstated the jury’s verdict that the asserted claims were not invalid for obviousness or lack of enablement.
- The court held that, although prior art could establish a prima facie case of obviousness, the ultimate obviousness determination must account for objective evidence of nonobviousness, which the jury could reasonably credit.
- The court held that substantial evidence supported the jury’s infringement finding based on the offered rig meeting the claim limitations.
- The court reinstated the $15 million reasonable-royalty award and reversed the district court’s conditional grant of a new trial.

## Legal Principles

- Under 35 U.S.C. § 271(a), an “offer to sell” can occur “within the United States” where the commercial offer is for performance in the United States, even if the contracting formalities occur abroad.
- A prima facie showing of obviousness based on prior art does not resolve the ultimate § 103 question; objective indicia of nonobviousness must be considered as part of the full evidentiary record when present.
- Objective indicia (including commercial success, industry praise, unexpected results, copying, skepticism, licensing, and long-felt need) can, if credited, rebut a prima facie case and support a verdict of nonobviousness.
- Enablement turns on whether the specification permits a person of ordinary skill to make and use the invention without undue experimentation; a jury’s supported finding of enablement cannot be set aside through judicial reweighing of evidence.
- Post-verdict JMOL is improper where substantial evidence supports the jury’s resolution of fact-bound disputes underlying validity, infringement, and damages.

## Conclusion

The Federal Circuit held that U.S. patent infringement may be predicated on an offer for U.S. performance despite foreign negotiation or execution, and it reinstated a jury verdict upholding validity, finding infringement, and awarding $15 million, emphasizing that objective indicia can defeat an otherwise supported prima facie obviousness case and that JMOL cannot displace supported jury findings.


Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012)