The World in U.S. Courts: Winter 2016 - Intellectual Property – Patent
Marine Travelift manufactures “gantry cranes” used for moving large ships around shipyards. It sued an Italian competitor, ASCOM, for patent infringement. One transaction at issue was a sale by ASCOM to General Motors which was negotiated in part in Michigan and was initiated by a purchase order issued by GM in Michigan and governed by Michigan law, but which led to a delivery in Canada.
The Court stated that a “sale” by ASCOM in Canada could not infringe a US patent, but addressed the difficult question of identifying the location (or locations) of a “sale” where parts of the transaction occurred both within and without the US. It noted that “the most salient activity” for determining the location of the sale in the case at bar was the manufacture and delivery of the product, both of which occurred outside the US. It added that “substantial activities of the sales transactions at issue” also occurred outside the US, noting that in such case the mere presence of some negotiating and contracting activity in the US would not cause the sale to be deemed a US sale for purposes of a patent infringement claim.