When Does "Offer for Sale" Made Outside U.S. Result in Infringement of Patent?

When Does "Offer for Sale" Made Outside U.S. Result in Infringement of Patent?

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contrs. USA, Inc., 2010 U.S. App. LEXIS 17181 (Fed. Cir. Aug. 18, 2010) involved a non-infringing product that had never entered the United States. Nonetheless, the court ruled that infringement of United States patents may have occurred. How could this be? In this Analysis, Thomas C. Carey analyzes the issue. He writes:

     The product was commissioned by a Danish company, manufactured by a contractor in Singapore, leased (while being made) to a subsidiary of a Norwegian company, and modified while in Singapore specifically to avoid infringing U.S. patents. While the lawsuit unfolded, the product was still in Singapore.

     The trial court found that no infringement could arise under these facts and granted summary judgment to the defendant shipping company. On appeal, the Federal Circuit established a precedent in finding that these facts could support a claim of infringement.

     . . . .

     Transocean, unlike earlier cases, clearly involved an offer for sale. The key issue presented was the statutory limitation "within the United States." Does this limitation apply to the offer or to the sale? In other words, must the offer be made in the United States, or does the statute cover offers made anywhere in the world as long as the sale would result in the product being delivered to the United States?

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