Goods sold f.o.b. China considered sold “within the United States” for infringement purposes

PatentLawPic922SEB (T-Fal) v. Montgomery Ward & Co. (Fed. Cir. 2010)

The French company SEB sued Montgomery Ward, Pentalpha and others for infringement of its patent covering deep-fat-fryer. Patent No. 4,995,312. SEB won a jury verdict verdict of willful infringement and was awarded $4.6 million in damages, but the district court reduced the damage award to $2 million and refused to award enhanced damages for willfulness citing Seagate.

f.o.b. sales: Pentalphia shipped its products f.o.b. China and argued that it therefore could not be liable for sales in the US.  The Federal Circuit rejected that argument — holding instead that the US shipment destination and the intended US retail location were sufficient for a jury to find that the sales were within the US for the purposes of 35 U.S.C. 271. This decision follows the precedent of the 2008 Litecubes decision. In Litecubes, the court held that a foreign company’s “sale” may properly be considered within the US if the seller deals directly with US customers and then ships to the US — regardless of whether title to the goods was legally transferred in another country. 

Patent Attorney Expert: Noted patent attorney Charles Van Horn testified at the trial as expert witness explaining the infringement. Although he is not an expert on deep-fat-fryers, the Federal Circuit held that the lower court did not err in allowing his testimony:

District courts enjoy “wide latitude” to determine admissibility and “the mode and order” of evidentiary presentations. In this case, the district court was in the best place to judge that Mr. Van Horn had the “knowledge, skill, experience, training, [and] education” of a “specialized” nature that was likely to “assist the trier of fact to understand the evidence or to determine” infringement. Fed. R. Evid. 702.

In its decision, the appellate panel looked specifically at Van Horn’s 31 years at the patent office examining material-science related patents as well as his undergraduate chemistry degree.

The decision also discusses claim construction; infringement; prosecution history estoppel; and willfulness.

8 thoughts on “Goods sold f.o.b. China considered sold “within the United States” for infringement purposes

  1. 8

    The title of this post is misleading. The court did not hold that “goods sold f.o.b. China [are] considered sold ‘within the United States.'” Instead, the court followed Litecubes and held that the fact that goods were sold f.o.b. China did not preclude infringement under Section 271 for sales in the U.S., and that for determining whether a sale occurs in the U.S. for Section 271 one should consider “the more familiar places of contracting and performance,” regardless of whether the sales were f.o.b. outside the U.S.

  2. 6

    Although he is not an expert on deep-fat-fryers

    Hard to find such experts. They tend to die young.

  3. 4

    “In its decision, the appellate panel looked specifically at Van Horn’s 31 years at the patent office examining material-science related patents as well as his undergraduate chemistry degree.”

    Hey 6, in another 28 years, you can earn some extra cash as an expert witness!

  4. 3

    Willful blindness = knowledge. That’s not new law.

    Read the facts of the case, specifically pages 22-26. It’s not “oh, I didn’t check if there were any patents in the field”, it’s a pretty egregious case of copying and actively not looking for patents.

    Also, Pentalpha’s president is named “John Sham”, which I think is pretty convincing.

  5. 1

    The post misses probably the most important aspect of this decision, which is that the “knowledge of the patent” requirement for purposes of showing inducement can be demonstrated by showing “deliberate indifference,” i.e., that the accused infringer “deliberately ignored the risk that [the patentee] had a patent that covered its [accused product].”

Comments are closed.