Transocean v. Maersk: Speeding Up Deepsea Drilling

By Jason Rantanen

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc. (Fed. Cir. 2010)
Panel: Gajarsa, Mayer, Moore (author)

Drilling rigTransocean brought suit against Maersk for infringement of three patents relating to an improved apparatus for offshore drilling.  Offshore drilling involves lowering a variety of equipment, including the drill bit, a series of long pipes, and a blow-out-preventor, to the ocean floor in order to drill and stabilize a borehole that reaches a subterranean oil reservoir.  These components are moved by a derrick (the tower on the picture to the right), which is equipped with a station that raises and lowers them to the ocean floor.  To begin the drilling process, the rig lowers the drill bit to the ocean floor, adding sections of pipe until the bit reaches the floor.  Periodically as the drill descends into the seabed, it must be brought back up to the surface so that casings can be inserted into the borehole.  Conventional rigs utilized a derrick with only a single station for performing these steps, thus requiring that they be performed sequentially – a time consuming process. 

The patents-in-suit describe a derrick that includes two stations – a main advancing station and an auxiliary advancing station – that can each assemble the strings of drilling materials and lower them to the ocean floor.  According to the patent, this "dual-activity" rig can significantly decrease the time required to complete a borehole.  The accused infringer, Maersk, contracted with a U.S. company to build a rig with two stations for use in the Gulf of Mexico.  However, prior to delivery of the rig, Maersk implemented a modification that, it argued, precluded Transocean from claiming infringement.  It also argued that the claims were invalid.

The district court granted summary judgment in favor of Maersk, holding that the asserted claims were obvious and not enabled.  The court further ruled that Maersk's activities did not constitute either an offer for sale or a sale within the United States.  Transocean appealed these rulings, along with the district court's grant of summary judgment of collateral estoppel and no willful infringement.

Obviousness
The Federal Circuit's obviousness ruling is notable because, although it found that the references cited by Maersk created a prima facie case of obviousness, it concluded that the district court had erred by ignoring Transocean's significant objective evidence of nonobviousness.  This included evidence of industry skepticism about a dual drill string approach, industry praise for its dual activity rig, copying, and commercial success, in that its dual activity rigs commanded a higher licensing premium then standard rigs.  Although Maersk presented counter evidence, the Federal Circuit concluded that it was improper to resolve these disputes on summary judgment. 

Enablement
The Federal Circuit also reversed the grant of summary judgment of lack of enablement, finding that factual issues precluded such a ruling.  In particular, it noted that while the patent must enable one of ordinary skill in the art to practice the claimed invention without undue experimentation, it does not need to enable the most optimized configuration (unless it is an explicit part of the claims). 

Infringement
The district court's noninfringement ruling did not rest on a comparison of the accused device to the claim, but rather on a conclusion that there was no offer for sale or sale within the United States.  Although the contract at issue was between two U.S. companies, and specified an "Operating Area" for the rig that was in U.S. territorial waters, it was negotiated and signed outside of the United States.

The Federal Circuit disagreed that these activities fell outside the scope of 35 U.S.C. 271(a).  With respect to the "offer for sale" provision, after reviewing the legislative history of this language, analyzing its literal text, and considering the policy implications, the court concluded that it covered a contract between two U.S. companies for performance in the U.S., regardless of whether it was negotiated or signed within the U.S.  Likewise, the court concluded that, because the contract was for the sale of a patented invention with delivery and performance in the U.S., it constituted a sale for purposes of 271(a) as  a matter of law.

Note: Although the court used the term "patented invention," it was careful to note that there remained a dispute over whether the rig described in the contract actually infringed the patents-in-suit.

The Federal Circuit did, however, affirm the district court's ruling that Transocean was collaterally estopped from arguing that the rig Maersk ultimately delivered infringed the patents.  In another litigation, Transocean had obtained by an injunction requiring the defendant GlobalStantaFe Corp. ("GSF") to make a particular modification to its rig in order to avoid infringing the patents-in-suit.  Prior to delivering the rig to the United States, Maersk had learned about this injunction and made the relevant modification.  The Federal Circuit concluded that the ruling in the GSF litigation estopped Transocean from arguing that rigs with the modification infringed its patents.

The panel also affirmed the district court's ruling of no willful infringement, concluding that Maersk's activities were insufficient to create an objectively high risk of infringement.

45 thoughts on “Transocean v. Maersk: Speeding Up Deepsea Drilling

  1. My grandfather invented the dual head drilling rig in 1976. I have the paper work for the patent and a model that has the dual head workings in it. Its typical to read about two mega companies fight over a patent they never invented.

  2. Ping: Ai – now you be catchin on how most all feel about your nonsense
    _____

    And who would “most” be? And since when did you speak for “most”?

    You have gone from being a boring ineffectual troll to just delusional.

  3. AI: a) First of all commercial success is the purpose of all patents and the reason all Inventors file patents.

    INANE: You disagree with that statement.

    AI: No, I do not.

    INANE: Remember eBay?

    AI: No I do not.

    INANE: Why would a non-practicing inventor ever want an injunction”

    AI: A) What is a non-practicing inventor?
    B) What does it or an injunction have to do with the fact that commercial success is the purpose of all patents and the reason all Inventors file patents?

    INANE: If his sole purpose is commercial success, and he’s not selling the invention himself,….

    AI: Who? Your so called “non-practicing inventor”? And again, WTH is that????

    INANE: his greatest desire in the world should be for someone else to sell as much of the invention as possible and pay him a per-unit royalty. In other words, the opposite of an injunction.

    AI: WTH? What does an injunction have to do with the FACT that commercial success is the purpose of all patents and the reason all Inventors file patents?

    AI: b) So, Actual Inventors do NOT go through the time and expense of reducing an idea to practice if they see no chance of commercial success.

    INANE: It is well known that the vast, vast, vast majority of patents never have any commercial success at all.

    AI: No patent has commercial success. Actual Inventors have commercial success. Patents can’t do or have anything. A patent is just a piece of paper.

    INANE: Therefore, inventors who spend a lot of money on patent applications are remarkably bad at assessing chances of commercial success, even though their own money is at stake.

    AI: Says who?

    INANE: Therefore, actual commercial success is completely uncorrelated with anything that might motivate an inventor to design a particular product.

    AI: Commercial success is the only motivation for me and every other Actual Inventor I know that files patent applications.

    INANE: And it’s their job. Why would an inventor with no business qualifications at all have any idea in advance that his invention will turn a profit?

    AI: Irregardless of business qualifications Actual Inventors invent and file patents on ideas that meet a pressing need in the marketplace. And since licensing fees and royalties, the primary income of Actual Inventors, require virtually zero overhead. Actual Inventors can enjoy instant profit.

    AI: c) Therefore, when an Actual Inventor succeeds at reducing an idea to practice and actually makes it a commercial success, its proof positive the invention was not obvious to other PHOSITAS.

    INANE: It’s proof positive that inventors fail at business.

    AI: Who said? And so what? Everyone and anyone can fail at business.

  4. Why would a non-practicing inventor ever want an injunction? If his sole purpose is commercial success, and he’s not selling the invention himself, his greatest desire in the world should be for someone else to sell as much of the invention as possible and pay him a per-unit royalty. In other words, the opposite of an injunction.

    no wonder this “middle-earth” type question escaped my notice – it’s completely asinine and ignorant of real world business-sense.

    Iza told ya IANAE, ya really should stick to making comments about things ya know about. Real world business aint one of them.

    I just don’t care.

    Ai – now you be catchin on how most all feel about your nonsense. Some, like me, only care enough to taunt you. But feel free to exclaim your “Win” any time. I’ll put it in my collection of interwebz nonsense like 6′s reading comprehension.

  5. a) First of all commercial success is the purpose of all patents and the reason all Inventors file patents.

    You disagree with that statement.

    Remember eBay? Why would a non-practicing inventor ever want an injunction? If his sole purpose is commercial success, and he’s not selling the invention himself, his greatest desire in the world should be for someone else to sell as much of the invention as possible and pay him a per-unit royalty. In other words, the opposite of an injunction.

    b) So, Actual Inventors do NOT go through the time and expense of reducing an idea to practice if they see no chance of commercial success.

    It is well known that the vast, vast, vast majority of patents never have any commercial success at all. Therefore, inventors who spend a lot of money on patent applications are remarkably bad at assessing chances of commercial success, even though their own money is at stake. Therefore, actual commercial success is completely uncorrelated with anything that might motivate an inventor to design a particular product.

    This shouldn’t really be a surprise. Even entrepreneurs and venture capitalists are pretty bad at predicting commercial success. And it’s their job. Why would an inventor with no business qualifications at all have any idea in advance that his invention will turn a profit?

    c) Therefore, when an Actual Inventor succeeds at reducing an idea to practice and actually makes it a commercial success, its proof positive the invention was not obvious to other PHOSITAS.

    It’s proof positive that inventors fail at business. But we already knew that, because so many expensive patents lie fallow for their entire term, and never have any commercial success at all.

  6. INANE WROTE: The Census Bureau is also part of the Department of Commerce. What was your point again?
    __________________________________

    I originally made several points at Aug 24, 2010 at 04:53 AM and at your request have reposted them again. So as you can plainly see in regards to the following points your above statement is completely irrelevant. Therefore each point remains valid and factual.

    a) First of all commercial success is the purpose of all patents and the reason all Inventors file patents.

    b) So, Actual Inventors do NOT go through the time and expense of reducing an idea to practice if they see no chance of commercial success.

    c) Therefore, when an Actual Inventor succeeds at reducing an idea to practice and actually makes it a commercial success, its proof positive the invention was not obvious to other PHOSITAS.

    Inventors Win

    You Lose.

    As usual.

  7. Posted by: ping | Aug 26, 2010 at 05:59 AM: “Well then, according to your logic, “Whether you agree or disagree the burden is on you to first demonstrate you can comprehend the fundamental premise of my post”"

    But I do not agree or disagree. I just don’t care.

    Ping

    Pong

    SLAM!

    ::GAME OVER::

  8. I certainly do not

    Well then, according to your logic, “Whether you agree or disagree the burden is on you to first demonstrate you can comprehend the fundamental premise of my post

    C’mon AI – you got the burden.

    Am I hard enough
    Am I rough enough
    Am I rich enough
    I’m not too blind to see

  9. Posted by: ping | Aug 25, 2010 at 05:24 AM: “Ya can say it, but it don’t make it so. I’m sure that readers will be laughing atcha and comparing your posts to a certain world’s greatest inventor whose incomprehensibilities dispose of any such baldly asserted burdens”

    Actually I dont think anyone knows what you are referring to or talking about. I certainly do not. I think you should just stick to calling me Daft or some other childish insult. That you do very well and its clear.

  10. Whether you agree or disagree the burden is on you to first demonstrate you can comprehend the fundamental premise of my post

    Ya can say it, but it don’t make it so. I’m sure that readers will be laughing atcha and comparing your posts to a certain world’s greatest inventor whose incomprehensibilities dispose of any such baldly asserted burdens.

    In other words – we are not responsible for reading your mind and figuring out what you wanted to say – weza can only go by what ya actually say. If it takes IANAE seven times pointing out why what you say don’t make sense, how can you expect people to comprehend the fundamental premises of your posts?

  11. Posted by: Actual Inventor | Aug 24, 2010 at 04:53 AM:What relevance does your original post in this thread have to the real world…..”

    Whether you agree or disagree the burden is on you to first demonstrate you can comprehend the fundamental premise of my post and recognize the following conclusions therein. All you have down now is evade the question by asking me the same question I asked of Ping. Of course you can take Dear Pings route and start with juvenile insults in a boring attempt at troll baiting.

  12. What relevance does your above statement have in regards to the original post I made in this thread?

    What relevance does your original post in this thread have to the real world, where the vast majority of patents do not experience anything that could be considered “commercial success” even using a broadest reasonable interpretation?

  13. Dear Ping wrote: ” where the USPTO is situated under has no impact on the aim of the patent system,”

    What relevance does your above statement have in regards to the original post I made in this thread???

    :: troll silence::

  14. “Not if the claimed invention has clear teaching away references, criticism from Phositas, and commercial success. Then you have a powerhouse combination for non obviousness that even KSR can’t take down.”

    l
    o
    l

  15. The USPTO is situated under the Department of “Commerce”

    The Census Bureau is also part of the Department of Commerce.

    What was your point again?

  16. AI,

    Your daftness continues.

    Not sure who taught you the principles of logic or how to debate, but where the USPTO is situated under has no impact on the aim of the patent system, much less a CASE CLOSING impact.

    Ya might be more effective iin your arguments if ya included meaningful substance in your arguments and simply left the ALL CAP proclamations be, like, supported with that substance. Otherwise, it appears that you believe that you win arguments by arguing LOUDER.

  17. Posted by: MaxDrei | Aug 24, 2010 at 06:48 AM: AI, so your machine turns out to be profitable? What does that tell us about the validity of a wide claim which covers not only your machine but a great deal else besides.”

    AI: Umm what machine are you talking about? And just so you know a process/method, business or otherwise can have commercial success and that too is evidence of non obviousness.

    Maxwell: Just for the sake of discussion here, suppose that claim survives 101, 102 and 112 attacks. Ought it to be theoretically possible that a 103 attack could bring the claim down?”

    Not if the claimed invention has clear teaching away references, criticism from Phositas, and commercial success. Then you have a powerhouse combination for non obviousness that even KSR can’t take down.

  18. Dear Ping wrote: While profitability is obviously the aim of the inventor, the patent system nowhere has this as an aim.

    ________

    The USPTO is situated under the Department of “Commerce”

    CASE CLOSED

  19. AI: So, Actual Inventors do NOT go through the time and expense of reducing an idea to practice if they see no chance of commercial success.

    Posted by: IANAE | Aug 24, 2010 at 10:06 AM Seven million patents issued, and even more pending or abandoned. Still more inventions reduced to practice but not filed at the PTO.

    How many of those would you say have seen much commercial success?

    Hint: Your next line is that the ones without commercial success weren’t invented by “Actual Inventors”.

    _________

    No, I am simply wondering, what is the relevance ??????

  20. MM: “Just had an incredible idea: a TRIPLE-activity rig.”

    Posted by: Sweat of the Brow | Aug 19, 2010 at 09:29 PM: Malcolm, get that to work, and claim the details that got it to work, and there’s no problem with a patent on that. Of course, a bare idea thrown out without any workable explanation will not pass muster, much like most of your comments.

    _________

    MM is obviously not an Actual Inventor, he has neither the talent or skill to reduce an idea to practice, let alone come up with a brilliant one to start with. Further more he would not make a very good patent prosecutor as he does not understand the importance of the difference between a concept and the application of the concept in patent law and prosecution.

  21. So, Actual Inventors do NOT go through the time and expense of reducing an idea to practice if they see no chance of commercial success.

    Seven million patents issued, and even more pending or abandoned. Still more inventions reduced to practice but not filed at the PTO.

    How many of those would you say have seen much commercial success?

    Hint: Your next line is that the ones without commercial success weren’t invented by “Actual Inventors”.

  22. AI,

    You are daft and confusing the aim of the inventor with the aim of the patent system.

    While profitability is obviously the aim of the inventor, the patent system nowhere has this as an aim. While some of your combatants love to advance policy arguments which are blind to the fact that the patent right is a negative right, you seem equally blind to this and equally miss the mark.

  23. AI, so your machine turns out to be profitable? What does that tell us about the validity of a wide claim which covers not only your machine but a great deal else besides.

    Just for the sake of discussion here, suppose that claim survives 101, 102 and 112 attacks. Ought it to be theoretically possible that a 103 attack could bring the claim down?

  24. Posted by: Malcolm Mooney | Aug 20, 2010 at 07:52 PM: In most cases, commercial success explains only why there is a lawsuit. People don’t buy patented products because they are non-obvious.”

    First of all commercial success is the purpose of all patents and the reason all Inventors file patents.

    So, Actual Inventors do NOT go through the time and expense of reducing an idea to practice if they see no chance of commercial success.

    Therefore, when an Actual Inventor succeeds at reducing an idea to practice and actually makes it a commercial success, its proof positive the invention was not obvious to other PHOSITAS.

    Oh and just so you know for future reference, when someone says something can’t/shouldn’t be done and an AI suceeds in doing it, that is considered teaching away and is clear evidence for non obviousness, and in no way shape or form anticipates an invention.

    And one last thing, Malcolm, you are no Actual Inventor.

  25. Paul Cole: I read a paper by Giles Rich in which he said the circumstantial evidence, how the invention was received, commercial success etc. was what he found most illuminating and helpful.

    It can be. But as you said, there’s nothing technical in that circumstantial evidence, and quite often even the best circumstantial evidence demonstrates some property of the invention other than non-obviousness. Even if you can get as far as “ten million people bought my product, and they all said it was because they liked how it worked”, that’s still not evidence of non-obviousness. Circumstantial evidence is still circumstantial, and we have to be very careful when we draw inferences from it that are contrary to the technical analysis we’ve already conducted.

    As Malcolm points out, patent litigation creates a strong selection bias for commercial success. Relying on commercial success alone, even linked to technical features of the invention, is about as reliable as relying on the defendant’s infringement as evidence of non-obviousness. Oh wait, that’s a secondary consideration too, isn’t it?

    Malcolm: People don’t buy patented products because they are non-obvious.

    They buy them because they have utility. And not even the same kind of utility required by the statute.

    Of course, some would have us believe that people buy patented products because they’re patented. That kind of throws a wrench into the whole commercial success machinery.

  26. On secondary considerations, we have an opinion today, Martin v. Alliance, /media/docs/2010/08/09-1132.pdf,

    where an anticipatory reference was overcome by proof of prior invention, but was used by the District Court to support its conclusion that the claimed invention was obvious as a matter of law based upon “contemporaneous” “independent” invention — the opposite of long felt need.

  27. In most cases, commercial success explains only why there is a lawsuit. People don’t buy patented products because they are non-obvious.

  28. Aside: I’m reminded of the following quote of Canada’s Federal Court of Appeal (2007 FCA 217):

    “Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, ‘I could have done that’; before the assertion can be given any weight, one must have a satisfactory answer to the question, ‘Why didn’t you?’”

    Uh, no.

  29. INANE: We seem to have come full circle. I read a paper by Giles Rich in which he said the circumstantial evidence, how the invention was received, commercial success etc. was what he found most illuminating and helpful. If thre is an identifiable result which supports the invention, then in my view motivation to combine remains a good test and the surrounding circumstances may be helpful in tipping a difficult-to-decide case one way or the other. But on the whole I feel uneasy about the present decision because it makes, apparently, such a strong prima facie case, does not identify anything technical to rebut it and then goes into the circumstantial evidence. Hence the remarks in my earlier post.

  30. IANAE: Now, I can certainly imagine contexts where that is the case (e.g. people pay top dollar for an imperfect solution to a problem, so a perfect solution is bound to be a big seller), but it’s not generally true of every product that achieves commercial success. Sometimes the commercial success is the surprise, but the invention itself is not obvious from a technical perspective.

    Agreed; commercial success alone is not a sufficient indicator, but it can be a relevant factor in certain circumstances.

  31. The question of obviousness is of course extremely fact specific, and while in many cases commercial success will have little to no bearing, in others it may in fact be highly relevant – e.g. in combination with long felt need, other approaches tried and failed, copy-cats once introduced…

    Sure, in the right context, it might be relevant. But it should be recognized for what it is.

    Suppose that we are asking “why didn’t you, eh?”, and the secondary considerations strengthen that question to “why didn’t you, if it was so profitable to do so, eh?”

    Do you see the problem with that question? It presupposes that the profitability of a particular solution was known in advance, and the only thing stopping competitors from getting there first was that they didn’t know how to modify the prior art device. If it had been technically obvious, surely someone would have done it by now to cash in on that profit.

    Now, I can certainly imagine contexts where that is the case (e.g. people pay top dollar for an imperfect solution to a problem, so a perfect solution is bound to be a big seller), but it’s not generally true of every product that achieves commercial success. Sometimes the commercial success is the surprise, but the invention itself is not obvious from a technical perspective.

    On some facts, you might claim that you could have done that, and when asked why you didn’t, you can answer “I didn’t think it would sell”. And that’s why unexpected commercial success isn’t highly probative of inventiveness.

  32. “Can anyone tell me what the standard of inventive step is in the US nowadays?”

    Paul,

    A good question after KSR International and its “mushy” standard for obviousness. The Federal Circuit is still sorting out what that standard now is.

    Your comment about the impact of “avoiding hindsight” evidence (that’s what I call “secondary considerations” like “commercial success”) is also on point. This case, like other Federal Circuit cases, says this evidence must be considered or the obviousness ruling will be overturned. But the Federal Circuit, at least panel-to-panel, isn’t always consistent in that regard. Some that can be attributed to the failure of the patentee to show a “nexus” between the claimed invention and the “avoiding hindsight” evidence.

  33. IANAE, I think you’re too quick to dismiss commercial success generally. The question of obviousness is of course extremely fact specific, and while in many cases commercial success will have little to no bearing, in others it may in fact be highly relevant – e.g. in combination with long felt need, other approaches tried and failed, copy-cats once introduced…

    Aside: I’m reminded of the following quote of Canada’s Federal Court of Appeal (2007 FCA 217):

    “Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, ‘I could have done that’; before the assertion can be given any weight, one must have a satisfactory answer to the question, ‘Why didn’t you?’”

  34. Can obvious subject matter become unobvious when it is commercialised, makes $ billions and everyone says what a good idea it was? So now perhaps we have time-dependent inventive step.

    Paul, what did you think about my comments on secondary considerations in the TheraSense briefs thread? Specifically, that secondary considerations should avail the applicant to rebut an “everybody knows to combine those two things” motivation to combine, but should not otherwise support a general argument of non-obviousness.

    Commercial success is barely a tertiary consideration, if it is anything at all. It’s evidence that people recognized it was a good product, but unless the commercial success was itself expected (which is different from the invention being expected) what does it really prove? Maybe it was obvious to combine those two references, and maybe the person skilled in the art would immediately know it would work, but nobody did it because they didn’t think people would buy it. Since when does the person skilled in the art care about commercial success? I mean, other than when he’s separating enantiomers.

  35. Just had an incredible idea: a TRIPLE-activity rig.

    Is there a patent prosecutor in the house?!?!?

    Oh wait …

    I had this one before you posted it. I’m pretty sure that we’re either going to have to be more specific about how we do it or its going to be obvious.

  36. “Just had an incredible idea: a TRIPLE-activity rig.”

    Malcolm, get that to work, and claim the details that got it to work, and there’s no problem with a patent on that.

    Of course, a bare idea thrown out without any workable explanation will not pass muster, much like most of your comments.

  37. Malcolm, the reason I ask the question I ask is that damages for “sales” are suppose to include the right for the buyer to use the infringing product. If the product has been modified to be non infringing, I cannot for the life of me understand whether the patentee has been damaged at all.

    This is all very interesting and confusing at the same time. I would contend that if the plaintiff is fully compensated via a reasonable royalty for the sale, then the buyer could again modify his platform to be infringing.

  38. Just had an incredible idea: a TRIPLE-activity rig.

    Is there a patent prosecutor in the house?!?!?

    Oh wait …

  39. This included evidence of industry skepticism about a dual drill string approach, industry praise for its dual activity rig, copying, and commercial success, in that its dual activity rigs command a higher licensing premium then standard rigs.

    Other than skepticism in the prior art about the approach (and it had better be more than skepticism about the ability of the approach to make money or compete with existing approaches), this evidence is utterly irrelevant to the issue of obviousness. And come to think of it, if there was skepticism about the approach in the prior art, then the approach is anticipated …

  40. This is an interesting decision on secondary evidence of inventive step.

    Can anyone tell me what the standard of inventive step is in the US nowadays?

    Can obvious subject matter become unobvious when it is commercialised, makes $ billions and everyone says what a good idea it was? So now perhaps we have time-dependent inventive step.

    So for all those tortured examiners with their piles of prior art, don’t worry – just issue the patent. If it is a big success and makes $$$, then it must be valid. If not and nobody buys it, then there will be no cash to go out and sue competitors, so validity does not matter, does it? Like the Mediocrity Poster of Despair, Inc (if you have not already visited that site, it is indeed worth a visit) “It takes a lot less time, and most people won’t notice the difference until it is too late”. And the USPTO will get all those nice issue fees so Dave Kappos will be happy too.

  41. Ned,

    Try that question again with a single noun in the subject and predicate.

    If I understand what you are asking, you want to know what the damages are for something not included, which would probalbly be the same as the damages found, as the something not included was obviously, well, not included.

  42. I wonder what the damages are for “offers for sale” where the compensation does not include compensation for use, as the use in this case is non infringing due to the design change?

  43. “In particular, it noted that while the patent must enable one of ordinary skill in the art to practice the claimed invention without undue experimentation, it does not need to enable the most optimized configuration (unless it is an explicit part of the claims).

    That seems a bit odd, doesn’t the whole breadth of the claim have to be enabled? Breadth which would include the most optimized configuration?

    That isn’t really a question I have spent a lot of time thinking about or looking over the caselaw about, but that was my understanding.

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