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.