SEB (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.