by Dennis Crouch
Halo has petitioned the Federal Circuit to rehear its electronics patent case against Pulse with two questions presented:
- Willfulness: Whether an infringer who subjectively knew pre-suit that it was infringing a valid patent (after being given notice of the patent, and failing to design around, seek a license, or stop infringing) can use an unsuccessful defense developed post-suit as a per se bar to liability for pre-suit willful infringement, despite the flexible text of 35 U.S.C. § 284.
- Sale/Offer for Sale: Whether a requirements contract for a patented product that is negotiated and executed in the U.S., subject to California law, and includes binding pricing and quantity terms constitutes a “sale” and “offer for sale” under 35 U.S.C. § 271(a).
The petition is well designed and holds a strong possibility of review. In the original panel decision, Judge O’Malley (joined by Judge Hughes) called for en banc review of the court’s willfulness jurisprudence. Jason Rantanen wrote more here. The case also has interesting links with Commil v. Cisco that is now pending before the Supreme Court.
Regarding the Sale issue, I see less merit. As Lucas Osborne writes, although the contract was negotiated and signed within the US, the actual performance was to be done outside of the US. In the litigation, the patentee was able to capture royalties for all of the products imported into the U.S., but here is seeking damages for worldwide sales.
I think the question could better have phrased,
“Whether an infringer who subjectively knew pre-suit that it was infringing a presumptively valid patent (after being given notice of the patent, and failing to design around, seek a license, or stop infringing) can use an unsuccessful invalidity defense first developed post-suit as a per se bar to liability for pre-suit willful infringement, despite the flexible text of 35 U.S.C. § 284.”
I think the answer is clearly no. You have to have more than that or there is no such thing as willful under the law. The only way you could be held to be willful would be if there were no argument for invalidity that you could make that wouldn’t be sanctioned or dismissed under SJ.
NWPA You have to have more than that or there is no such thing as willful under the law. The only way you could be held to be willful would be if there were no argument for invalidity that you could make that wouldn’t be sanctioned or dismissed under SJ.
The two sentences you wrote are in direct contradiction to one another, i.e., you first say there “would be no such thing as willful”, and then you describe a circumstance where willfulness could still be found.
I think I understand where your coming from. However, I also think Ned’s “question presented” is way too loaded and misrepresents the facts in the case.
But your comment does highlight a strange tension that has been noted for many years in our patent system. Specifically, there have been numerous objections raised with respect to ostensibly “pro-defendant” rulings that concern mens rea. Quite often (as here) those objections are intertwined with the reluctance of the patent judiciary to issue sanctions to attorneys and/or their clients (on either side of the fence) who “believe” in legal theories that could easily be sanctioned, without anyone batting an eye, but typically aren’t.
“Quite often… who ‘believe’ in legal theories that could easily be sanctioned” (emphasis added)
While noting the high degree of subjectivity (read that as ‘opinion’) and not making any derision about “white horse riding,” what are some examples of these “often” legal theories that appear to deserve sanctions?
I am left wondering with such a nebulous, yet ominous, pronouncement, seeing as sanctions of counsel is a rather serious issue.
first developed post-suit
Ned, do you know if the specific timing you cite here was an admitted or decided fact in this particular case?
For #1 is this right? I don’t see how this cannot be willful. Also for the defense it seems like there is some tension between “subjectively knew pre-suit that it was infringing a valid patent” and being able to come up with a defense. Did they really subjectively know that they were infringing, but felt that there were probably invalidity arguments that could be made that were non-trivial. So, did they believe it was a valid patent?
Night, I have to read the case again, but there is a difference between notifying one of a patent and a charge of infringement.
Night, from the case:
“…Halo did not accuse Pulse of infringement in the
2002 letters and, upon receipt of those letters, Pulse
asked its engineer to review the Halo patents, who concluded
that the patents were invalid in view of prior Pulse
products.”
The court does not determine whether the obviousness defense had anything to do with those Pulse products, or whether the engineer’s view were at all reliable.
In my own practice, I have warned engineers that I do not want them telling me that we don’t need a license because in their view the patents are invalid. I want them to tell me whether we use the claimed invention or need to use it for future products.
This case should develop THIS point and clarify it. What if the company does rely on an engineer’s opinion on obviousness? He is one of ordinary skill in the art, after all. Is that sufficient?
The potential infringing employee is NOT PHOSITA.
He may share the technical capability, but seriously Ned, you cannot see the problem with bias?
anon, bias, of course. But why do you consider an engineer in the art not one of ordinary skill. I certainly think he or she qualifies.
So the better question is whether such a reliance on the opinion is reasonable. I take it, anon, that you would say not because of the bias question.
“of course, but” translates to “I hear your valid point but I’m going to ignore it.”
Stop.
Don’t ignore it.
PHOSITA is a legal entity charged with FULL knowledge of ALL prior art and containing no bias. Look to ALL the words of my post and ignore NONE of the words of my post.
What do you have against experts in their field?
If patents are not for them, then don’t complain that they are advised to not read patents.
I have nothing against experts.
You have misread my post.
(You do know that the level of expert is not necessarily synonymous with the level of ordinary skill, right?)
Even ordinary.
What you specifically said is not a POSITA.
Person of Ordinary Skill In The Art.
So what ART are you talking about? Engineering?
or law?
Squint as hard as I might, I do not see the point that you are trying to make in your reply jesse.
I was discussing the difference between “expert” and “ordinary” and you seem to want to move the goalpost to focusing on “in the art.”
I also have no problem with a focus of “in the art,” as long as you recognize that the entire phrase is a notation of legal meaning and that patents are legal documents as opposed to being engineering documents.
Deal?
Yes.
You are saying that patents are not for engineers.
Once again jesse, your inability to recognize the terrain about you causes you to post in error.
Patents are legal documents. Try to understand that.
These legal documents are published for everyone (and yes, that does include engineers). So you are simply NOT correct to say that I am saying that patents are not for engineers, as I have said no such thing.
The potential infringing employee is NOT PHOSITA.
Either that is false, or patents are not for engineers.
Sun Tzu jesse – you do know that the person in PHOSITA is not a real life person, right?
Patents are supposed to reveal the workings to others to engineer, or take a license to.
What you are saying is that they are worthless for that purpose.
Thus the only thing they are good for is generating lawsuits.
Patents are not supposed to be engineering specifications but instead are meant to be legal documents.
I do not know who told you otherwise are why you seem to Belieb so fervently, but you really do need to open your eyes and look at the terrain that you are standing in.
(And yes, generating lawsuits IS one of their purposes / the system is set up such that is the proper mechanism for enforcement.
Patents are not supposed to be engineering specifications but instead are meant to be legal documents.
So you are saying they don’t necessarily disclose the information required to be able to reproduce the “invention”.
That is all I thought you were saying, and that is what makes such patents worthless.
jesse,
Are you familiar with the phrase “without undue experimentation?”
You keep on making judgments without understanding the context of that which you are judging.
Where is the logic in that?
Where is the logic in saying there is no such person as a “person of ordinary skill in the art”?
And without the information to replicate the invention, it is also impossible to know if the due research didn’t come up with something NOT in the patent.
And that means the patent was unduly vague in the first place.
The logic in asking that you understand a legal term of art when discussing law…?
You are kidding, right?
Maybe the moderators want to help jesse out here.
Anon, perhaps you should explain why a patent is not useful to those in field the patent is supposed to be in?
Your statements appear to be full of inconsistencies.
Read again my 3:01 post from yesterday jesse.
Try to understand the terrain you are standing in.
Read again the question.
Your statements, even from before, are still illogical.
Quite the contrary jesse, as ALL of my comments have been solidly accurate in the domain of the law.
That sense of ‘illogic’ only stems from your attempts to operate in a domain that you clearly do not understand.
“anon”: The potential infringing employee is NOT PHOSITA.
That depends on whether one believes that the “legal fiction” called PHOSITA in section 103, who has complete knowledge of the prior art, is identical to the “any person skilled in the art” recited in 112.
This is far from a cut-and-dry issue and there’s every reason for jesse — and everyone else, for that matter — to question whether (or more imporantly, why) we have a system in which an ordinary engineer in a given field can (1) read a patent claim (that by statute is required to be written in a manner clear enough for that individual to understand) and (2) possess actual knowledge of prior art invalidating that claim, but still be deemed unable to reasonably rely on his/her own expertise to conclude that the patent is invalid.
At (1) you just assumed your own conclusion.
Someone (who obviously enjoys being) off topic remains while a friendly reminder to return to the actual topic of discussion is deleted…
Back to the ‘fun’ I see.
I guess that eight years and running of that pain just wasn’t enough.
Whether one believes…?
The legal term of art is what it is.
That term of art does not change depending on the use of a leading indefinite article “a” (as in 35 USC 103) or the use of an indeterminate amount descriptor “any” (as in 35 USC 112).
Now, if you have more than just your mere opinion on this matter, I would love to see you offer such in a substantive post.
Otherwise, it is extremely unhelpful for you to kick up dust on legal terms of art in discussions with the likes of jesse, who plainly has little grasp of the law to begin with. Doing so only perpetuates misunderstanding.
Well, in all cases, I think the point is what exactly was their subjective belief and how was it formed.
Hi Ned. Your practice is interesting, I can understand why you do that. I have told engineers that I am interested in receiving their views regarding validity, particularly if they have a background that is at least of an “ordinary level of skill” in the art in question. That said, I strongly encourage them to share facts first, rather than opinions. If they think a patent is invalid, what prior art do they cite as the basis for that opinion? And exactly how does that prior art apply to the claims, element by element?
Oftentimes engineers are not versant in reading patent claims, and so tend to focus on general aspects of the described invention rather than specific elements of the claimed invention. Also, engineers tend to not read claim terms within the four corners of the patent document first. My experience is their view of “ordinary meaning” may not comply with the use of the term in the spec. Also, engineers typically don’t consider prosecution issues.
To me, if an engineer has the right background, and has done at least some level of homework (at least focusing on the claim elements), why wouldn’t their conclusions have a bearing on willfulness? Conversely, if the analysis starts and stops with “this patentee previously sold a product that embodies this invention,” why should their opinion count?
I have to laugh at the kneejerk deletions – my post responding to Mark was actually affirming his post.
The good prof has some serious whiplash going on.
Re Question 1, doesn’t “..and failing to seek any competent invalidity or non-infringement legal opinion even after an actual suit is threatened” also need to be added as another qualifier? If left as presently written, would it not make everyone not expensively reacting to thousands of mere mass-mailed patent license offers a willful infringer? Also, did they mean “objectively” rather than “subjectively?” Or did they really mean the infringer already had a professional opinion that they infringed?
I had a similar question when I read this passage regarding “defense developed post-suit”.
Was that an admitted fact in this case? That the defense relied on for showing lack of willfulness was first developed only after the lawsuit was actually filed?
[…] Halo v. Pulse: Escaping Willfulness with Ex Post Reasoning […]
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