The remedies for patent infringement varies depending on whether willful infringement is found. If the infringement is found to be willful, the Courts are allowed treble (i.e., multiple by three) any damage award. In order to reduce the potential for finding willfull infringement, opinion of counsel as to the non-infringement of an accused infringer’s product or method is obtained. The following case illustrates a situation in which no opinion of counsel was relied upon to find that infringement was not willful.
Transocean holds various patents on off shore drilling rigs. Maersk utilzies drilling rigs in its business. Maersk entered into a contract with Statoil to deliver and provide Statoil’s use a drilling rig. In that contract, Maersk identified Transocean’s patents regarding off shore drilling rigs and provided a clause that allowed Maersk to modify the drilling rig in response to any court proceeding relating to the Transocean patents. Before delivery of the drilling rig at issue to Statoil, Maersk learned of an injunction obtained by Transocean against a competitor for patent infringement on Transocean’s drilling rig patents. The court enjoined the competitor and required the competitor to modify the drilling rig to avoid infringement of Transocean’s patents. Maersk made the same modification to its drilling rig and delivered the rig to Statoil.
In order to prove willful infringement, the patent owner must show that the infringer acted despite an objectively high likelihood that its actions constituted patent infringement and that the infringer knew or should have known of that objectively high risk. Here, the Court held that although Maersk knew of Transocean’s patents, the contract with Statoil evidences an intent to avoid infringement. Maersk reserved the right to modify the rig in response to any court proceeding in relation to Transocean’s patents and did modify its rig when it learned of the injunction in related litigation of Transocean’s drill rig patents. Hence, Maersk’s actions were not objectively reckless, and thus not willful. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 2009-1556 (Fed. Cir. 8/18/2010).
The clause in the sales contract at issue helped Maersk appear as one that did not want to willfully infringe on Transocean’s patents. Maersk also took remedial action upon having actionable information regarding Transocean’s litigation. It is relatively simple to monitor progress on litigation through computerized monitoring. Most court documents are filed electronically and retrievable within a day or two after filing. As such, the clause used in this case and computer monitoring should be considered by most when drafting up sales contracts and other documents such as licenses especially when relevant litigation is known.
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