Halo Electronics, Inc. v. Pulse Electronics, Inc. , 769 F.3d 1371 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
HALO ELECTRONICS, INC.,
Plaintiff-Appellant,
v.
PULSE ELECTRONICS, INC. AND
PULSE ELECTRONICS CORPORATION,
Defendants-Cross Appellants.
______________________
2013-1472, -1656
______________________
Appeals from the United States District Court for the
District of Nevada in No. 07-CV-0331, Judge Philip M.
Pro.
______________________
Decided: October 22, 2014
______________________
WILLIAM R. WOODFORD, Fish & Richardson P.C., of
Minneapolis, Minnesota, argued for plaintiff-appellant.
With him on the brief were MICHAEL J. KANE of Minneap-
olis, Minnesota, and CRAIG E. COUNTRYMAN, of San Diego,
California.
MARK L. HOGGE, Dentons US LLP, of Washington,
DC, argued for defendants-cross appellants. With him on
the brief were SHAILENDRA K. MAHESHWARI, CHARLES R.
BRUTON, and RAJESH C. NORONHA.
______________________
2 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
Before LOURIE, O’MALLEY, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE.
Concurring opinion filed by Circuit Judge O’MALLEY, with
whom Circuit Judge HUGHES joins.
LOURIE, Circuit Judge.
Halo Electronics, Inc. (“Halo”) appeals from the deci-
sions of the United States District Court for the District of
Nevada (1) granting summary judgment that Pulse
Electronics, Inc. and Pulse Electronics Corp. (collectively
“Pulse”) did not sell or offer to sell within the United
States the accused products that Pulse manufactured,
shipped, and delivered to buyers outside the United
States, and thus that Pulse did not directly infringe
Halo’s U.S. Patents 5,656,985 (the “’985 patent”),
6,297,720 (the “’720 patent”), and 6,344,785 (the “’785
patent”) (collectively “the Halo patents”); and (2) holding
that Pulse’s infringement of the Halo patents with respect
to certain accused products that Pulse sold and delivered
in the United States was not willful. See Halo Elecs., Inc.
v. Pulse Eng’g, Inc., 810 F. Supp. 2d 1173, 1205–08 (D.
Nev. 2011) (sale and offer for sale); Halo Elecs., Inc. v.
Pulse Elecs., Inc., No. 2:07-CV-00331, 2013 WL 2319145,
at *14–16 (D. Nev. May 28, 2013) (willfulness).
Pulse cross-appeals from the court’s decisions (1) con-
struing the claim limitation “electronic surface mount
package” in the Halo patents; (2) construing the claim
limitation “contour element” in Pulse’s U.S. Patent
6,116,963 (the “’963 patent”) that Pulse asserted in its
counterclaim; and (3) holding that the asserted claims of
the Halo patents were not invalid for obviousness. See
Halo Elecs., Inc. v. Pulse Elecs., Inc., 721 F. Supp. 2d 989,
998–1001 (D. Nev. 2010) (claim construction); Halo, 2013
WL 2319145, at *1–7 (obviousness); Halo Elecs., Inc. v.
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 3
Pulse Elecs., Inc., No. 2:07-CV-00331, 2013 WL 4458754,
at *1–3 (D. Nev. Aug. 16, 2013) (obviousness).
Because we conclude that Pulse did not sell or offer to
sell within the United States those accused products that
Pulse manufactured, shipped, and delivered outside the
United States, we affirm the summary judgment of no
direct infringement of the Halo patents by those products.
In addition, we find Halo’s argument on appeal concern-
ing the issue of willfulness unpersuasive and accordingly
affirm the judgment of no willful infringement of the Halo
patents with respect to products that were delivered in
the United States. On the cross-appeal, because we find
no reversible error in the contested claim constructions,
we affirm the judgment of direct infringement of the Halo
patents with respect to products that Pulse delivered in
the United States and the judgment of inducement with
respect to products that Pulse delivered outside the
United States but were ultimately imported into the
United States by others, as well as the judgment of nonin-
fringement of Pulse’s ’963 patent. We also affirm the
judgment that the asserted claims of the Halo patents
were not invalid for obviousness.
BACKGROUND
Halo is a supplier of electronic components and owns
the ’985, ’720, and ’785 patents directed to surface mount
electronic packages containing transformers for mounting
on a printed circuit board inside electronic devices such as
computers and internet routers. The Halo patents are all
derived from an application filed on August 10, 1995. At
issue here are claims 6–8 and 16 of the ’985 patent, claims
1 and 6 of the ’720 patent, and claims 40 and 48 of the
’785 patent (collectively “the asserted claims”). Claim 6 of
the ’985 patent is representative and reads as follows:
6. An electronic surface mount package for
mounting on a printed circuit board in an elec-
4 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
tronic device, said electronic surface mount
package comprising:
a one piece construction package having a side
wall and an open bottom,
a plurality of toroid transformers carried with-
in said package by a soft silicone material, said
toroid transformers each having wires wrapped
thereon,
a plurality of terminal pins molded within and
extending from the bottom of said package,
each of said pins extending through a bottom of
said side wall and having a notched post upon
which said wires from said transformers are
wrapped and soldered thereon, respectively.
’985 patent col. 4 ll. 19–33.
Pulse, another supplier of electronic components, de-
signs and sells surface mount electronic packages and
manufactures those products in Asia. Some of Pulse’s
products were delivered by Pulse to customers in the
United States, but the majority of them were delivered
outside the United States, for example, to contract manu-
facturers for companies such as Cisco. Those contract
manufacturers incorporated the electronic packages
supplied by Pulse into end products overseas, including
internet routers manufactured for Cisco, which were then
sold and shipped to consumers around the world.
For those products that Pulse delivered abroad, all
purchase orders were received at Pulse’s sales offices
abroad. Halo, 810 F. Supp. 2d at 1207. However, Pulse
engaged in pricing negotiations in the United States with
companies such as Cisco, and Pulse’s employees in the
United States approved prices that its agents quoted to
foreign customers when the quoted prices fell below
certain thresholds. Pulse also engaged in other activities
in the United States, including meeting regularly with
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 5
Cisco design engineers, sending product samples to Cisco
for pre-approval, attending sales meetings with its cus-
tomers, and providing post-sale support for its products.
Although Cisco outsourced its manufacturing activi-
ties to foreign contract manufacturers, Cisco negotiated
with its component suppliers the prices that its contract
manufacturers would pay when purchasing component
parts. As one of Cisco’s component suppliers, Pulse
executed a general agreement with Cisco that set forth
manufacturing capacity, low price warranty, and lead
time terms. J.A. 15135–37. However, that general
agreement did not refer to any specific Pulse product or
price. Cisco typically sent a request for quote to its com-
ponent suppliers and Pulse responded with the proposed
price and minimum quantity for each product as identi-
fied by its part number. After further negotiation, Cisco
issued the agreed-upon price, projected demand, and
percentage allocation to Pulse for each product for the
upcoming quarter. The percentage allocation divided
Cisco’s projected quarterly demand among its suppliers.
Cisco then communicated the price and allocation to its
contract manufacturers in Asia, and the contract manu-
facturers were expected to apply the Cisco price and
allocation when ordering components from Pulse and
other suppliers.
Upon receipt of purchase orders abroad, Pulse deliv-
ered the electronic package products from its manufactur-
ing facility in Asia to Cisco contract manufacturers, also
located in Asia, which then paid Pulse. After assembling
the end products, the contract manufacturers submitted
invoices to Cisco that itemized the cost of Pulse products
and other components that were incorporated into the
Cisco end products. Cisco then paid the contract manu-
facturers for the end products.
Pulse allegedly knew of the Halo patents as early as
1998. In 2002, Halo sent Pulse two letters offering licens-
6 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
es to its patents, but did not accuse Pulse of infringement
in those letters. J.A. 5953–54. The president of Pulse
contacted a Pulse engineer, who spent about two hours
reviewing the Halo patents and concluded that they were
invalid in view of prior Pulse products. Pulse did not seek
an opinion of counsel on the validity of the Halo patents
at that time and continued to sell its surface mount
electronic package products. A Pulse witness later testi-
fied that she was “not aware of anyone in the company . . .
that made a conscious decision” that “it was permissible
to continue selling” those products. J.A. 2245.
In 2007, Halo sued Pulse for patent infringement.
Pulse denied infringement and challenged the validity of
the Halo patents based on obviousness and other grounds.
Pulse also counterclaimed that Halo infringed Pulse’s ’963
patent directed to microelectronic connectors.
The district court first construed the disputed claim
limitations in the Halo patents and Pulse’s ’963 patent.
Relevant to this appeal, the court construed “electronic
surface mount package” in the preamble of the Halo
patent claims as non-limiting. Halo, 721 F. Supp. 2d at999–1001. The court then further construed the term to
mean “an electronic device configured to attach to the
surface of a DC voltage only printed circuit board.” Id. In
addition, the court construed “contour element” in the
’963 patent claims to mean “a raised or recessed feature
that physically contacts the bend of an electrical lead both
before and after the modular plug is inserted into the
cavity.” Id. at 998–99. In view of that latter construction,
the parties stipulated to a judgment of noninfringement of
the Pulse ’963 patent. Halo Elecs., Inc. v. Pulse Elecs.,
Inc., No. 2:07-CV-00331, ECF No. 215 (D. Nev. Sept. 2,
2010).
Pulse moved for summary judgment that it did not di-
rectly infringe the Halo patents by selling or offering to
sell products that Pulse manufactured, shipped, and
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 7
delivered outside the United States. The district court
granted the motion, holding that those products were sold
and offered for sale outside the United States and beyond
the scope of § 271(a). Halo, 810 F. Supp. 2d at 1206–08.
The parties next proceeded to trial on Halo’s claims of
(1) direct infringement by products that Pulse shipped
into the United States and (2) inducement of infringement
by products that Pulse shipped outside the United States
but were incorporated into end products that were ulti-
mately imported into the United States. The jury found
that: (1) Pulse directly infringed the Halo patents with
products that it shipped into the United States; (2) it
induced others to infringe the Halo patents with products
that it delivered outside the United States but ultimately
were imported into the United States in finished end
products; (3) it was highly probable that Pulse’s infringe-
ment was willful; and (4) the asserted claims of the Halo
patents were not invalid for obviousness. Halo, 2013 WL
2319145, at *1; Halo Elecs., Inc. v. Pulse Elecs., Inc., No.
2:07-CV-00331, ECF No. 482 (D. Nev. Nov. 26, 2012). The
jury awarded Halo $1.5 million in reasonable royalty
damages. Id.In response to Pulse’s post-trial motion, the district
court concluded that the objective component of a willful-
ness inquiry was not satisfied because Pulse “reasonably
relied on at least its obviousness defense” and Pulse’s
unsuccessful obviousness defense was not “objectively
baseless.” Halo, 2013 WL 2319145, at *15. The court
therefore held that Pulse’s infringement was not willful.
Id. at *16.
Pulse also moved for JMOL of invalidity for alleged
obviousness of the Halo patent claims, which the district
court denied. Halo, 2013 WL 2319145, at *1–7; Halo,
2013 WL 4458754, at *1–3. The court reasoned that,
because Pulse did not file a pre-verdict motion under Fed.
R. Civ. P. 50(a) on the issue of obviousness, Pulse had
8 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
waived its right to challenge the jury’s implicit factual
findings underlying the nonobviousness general verdict.
Id. While noting that “each of the elements present in the
asserted patent claims also were present in the prior art,
except the standoff element” in two of the asserted claims,
Halo, 2013 WL 2319145, at *3, the court presumed that
the jury resolved all factual disputes relating to the scope
and content of the prior art and secondary considerations
in Halo’s favor and concluded that the asserted claims
were not invalid for obviousness based upon those pre-
sumed factual findings, id. at *3–7.
Halo timely appealed and Pulse timely cross-
appealed. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
I. Sale and Offer for Sale
We review the district court’s grant or denial of sum-
mary judgment under the law of the regional circuit, here
the Ninth Circuit. Lexion Med., LLC v. Northgate Techs.,
Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011). Applying the
law of the Ninth Circuit, we review the grant or denial of
summary judgment de novo. Humane Soc’y of the U.S. v.
Locke, 626 F.3d 1040, 1047 (9th Cir. 2010). Summary
judgment is appropriate when, drawing all justifiable
inferences in the nonmovant’s favor, “there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
Halo argues that the district court erred in granting
summary judgment of no direct infringement with respect
to products that Pulse delivered abroad. Halo contends
that those products were sold and offered for sale within
the United States because negotiations and contracting
activities occurred within the United States, which re-
sulted in binding contracts that set specific terms for price
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 9
and quantity. Halo argues that the location of the sale or
offer for sale should not be limited to the location of
delivery. Halo also argues that it suffered economic harm
in the United States as a result of Pulse’s sales.
Pulse responds that the products at issue were sold or
offered for sale outside the United States because those
products were manufactured, ordered, invoiced, shipped,
and delivered abroad. Pulse maintains that its pricing
discussions with Cisco in the United States were merely
forecasts and were not a guarantee that Pulse would
receive any actual order from any of Cisco’s contract
manufacturers. Pulse also responds that the district
court’s holding is consistent with our case law and the
presumption against extraterritorial application of United
States laws. Pulse contends that Halo improperly sought
to expand the geographical scope of § 271(a) to reach
activities outside the United States.
We agree with Pulse that the district court did not err
in granting summary judgment of no direct infringement
with respect to those products that Pulse manufactured,
shipped, and delivered outside the United States because
those products were neither sold nor offered for sale by
Pulse within the United States.
A. Sale
Section 271(a) of the patent statute provides in rele-
vant part that “whoever without authority makes, uses,
offers to sell, or sells any patented invention, within the
United States . . . infringes the patent.” 35 U.S.C.
§ 271(a) (emphases added); Microsoft Corp. v. AT&T
Corp., 550 U.S. 437, 441 (2007) (“It is the general rule
under United States patent law that no infringement
occurs when a patented product is made and sold in
another country.”). We first consider whether the prod-
ucts that Pulse manufactured, shipped, and delivered to
buyers abroad were sold within the United States for
purposes of § 271(a).
10 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
Our earlier cases addressing the issue of the location
of a sale arose in the context of personal jurisdiction. In
North American Philips Corp. v. American Vending Sales,
Inc., 35 F.3d 1576 (Fed. Cir. 1994), a case involving do-
mestic sales by defendants who shipped products from
Texas and California free on board (f.o.b.) to buyers in
Illinois, and concerning whether a trial court in Illinois
had personal jurisdiction over the defendants, we held
that patent infringement occurs where the infringing
sales are made. Id. at 1577–79 (citing Beverly Hills Fan
Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1570–71 (Fed.
Cir. 1994)). We stated that:
[T]he “selling” of an infringing article has both a
physical and a conceptual dimension to it. That is
to say, it is possible to define the situs of the tort
of infringement-by-sale either in real terms as in-
cluding the location of the seller and the buyer
and perhaps the points along the shipment route
in between, or in formal terms as the single point
at which some legally operative act took place,
such as the place where the sales transaction
would be deemed to have occurred as a matter of
commercial law.
Id. at 1579. We rejected the defendants’ argument that
the location of the sale was limited to “the place where
legal title passe[d] rather than the more familiar places of
contracting and performance.” Id. (citing Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 478–79 (1985)). And we
held that the sale in that case occurred in Illinois where
the buyer was located, but “not necessarily only there.”
Id. Thus, under North American Philips, a sale may occur
at multiple locations, including the location of the buyer,
for purposes of personal jurisdiction.
In subsequent cases in which we addressed the issue
of liability under § 271(a) rather than personal jurisdic-
tion, we applied similar analyses to determine where a
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 11
sale occurred based on factors that included places of
contracting and performance. Litecubes, LLC v. N. Light
Prods., Inc., 523 F.3d 1353, 1370 (Fed. Cir. 2008); MEMC
Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp.,
420 F.3d 1369, 1377 (Fed. Cir. 2005). Although the place
of contracting may be one of several possible locations of a
sale to confer personal jurisdiction, we have not deemed a
sale to have occurred within the United States for purpos-
es of liability under § 271(a) based solely on negotiation
and contracting activities in the United States when the
vast majority of activities underlying the sales transac-
tion occurred wholly outside the United States. For such
a sale, one must examine whether the activities in the
United States are sufficient to constitute a “sale” under
§ 271(a), recognizing that a strong policy against extrater-
ritorial liability exists in the patent law. See Microsoft,
550 U.S. at 455 (“The traditional understanding that our
patent law operate[s] only domestically and do[es] not
extend to foreign activities is embedded in the Patent Act
itself.” (alterations in original) (citation and quotation
marks omitted)); MEMC, 420 F.3d at 1375–76 (“[T]he
reach of section 271(a) is limited to infringing activities
that occur within the United States.”).
The patent statute does not define the meaning of a
“sale” within the United States for purposes of § 271(a).
We have stated that “the ordinary meaning of a sale
includes the concept of a transfer of title or property.”
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
1319 (Fed. Cir. 2005). Indeed, Article 2 of the Uniform
Commercial Code, which is recognized as a persuasive
authority on the sale of goods, provides that “[a] ‘sale’
consists in the passing of title from the seller to the buyer
for a price.” U.C.C. § 2-106; see also Black’s Law Diction-
ary 1364 (8th ed. 2004) (defining “sales” as “[t]he transfer
of property or title for a price”). Section 2-106 separately
defines a “contract for sale” as including “both a present
sale of goods and a contract to sell goods at a future time.”
12 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
While we have held that a sale is “not limited to the
transfer of tangible property” but may also be determined
by “the agreement by which such a transfer takes place,”
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1311 (Fed. Cir.
2010) (citing NTP, 418 F.3d at 1319), the location of
actual or anticipated performance under a “contract for
sale” remains pertinent to the transfer of title or property
from a seller to a buyer, see id. at 1310 (considering the
location of delivery and performance under a contract).
Consistent with all of our precedent, we conclude that,
when substantial activities of a sales transaction, includ-
ing the final formation of a contract for sale encompassing
all essential terms as well as the delivery and perfor-
mance under that sales contract, occur entirely outside
the United States, pricing and contracting negotiations in
the United States alone do not constitute or transform
those extraterritorial activities into a sale within the
United States for purposes of § 271(a).
On undisputed facts, the products under discussion
here were manufactured, shipped, and delivered to buyers
abroad. Halo, 810 F. Supp. 2d at 1207 (“All accused
products [at issue] were at no point, in transit or other-
wise, in the United States.”). In addition, Pulse received
the actual purchase orders for those products abroad.
Although Pulse and Cisco had a general business agree-
ment, that agreement did not refer to, and was not a
contract to sell, any specific product. J.A. 15135–37.
While Pulse and Cisco engaged in quarterly pricing
negotiations for specific products, the negotiated price and
projected demand did not constitute a firm agreement to
buy and sell, binding on both Cisco and Pulse. Instead,
Pulse received purchase orders from Cisco’s foreign con-
tract manufacturers, which then firmly established the
essential terms including price and quantity of binding
contracts to buy and sell. Moreover, Pulse was paid
abroad by those contract manufacturers, not by Cisco,
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 13
upon fulfillment of the purchase orders. Thus, substan-
tial activities of the sales transactions at issue, in addi-
tion to manufacturing and delivery, occurred outside the
United States. Although Halo did present evidence that
pricing negotiations and certain contracting and market-
ing activities took place in the United States, which
purportedly resulted in the purchase orders and sales
overseas, as indicated, such pricing and contracting
negotiations alone are insufficient to constitute a “sale”
within the United States. 1
Any doubt as to whether Pulse’s contracting activities
in the United States constituted a sale within the United
States under § 271(a) is resolved by the presumption
against extraterritorial application of United States laws.
“The presumption that United States law governs domes-
tically but does not rule the world applies with particular
force in patent law.” Microsoft, 550 U.S. at 454–55. As
the Supreme Court has stated on multiple occasions,
“[o]ur patent system makes no claim to extraterritorial
effect; these acts of Congress do not, and were not intend-
ed to, operate beyond the limits of the United States, and
we correspondingly reject the claims of others to such
control over our markets.” Id. at 444 (quoting Deepsouth
Packing Co. v. Laitram Corp., 406 U.S. 518, 531 (1972)
(quoting Brown v. Duchesne, 60 U.S. (19 How.) 183, 195
(1857))) (internal citation and quotation marks omitted).
1 On these facts, we need not reach Halo’s argument
that the place where a contract for sale is legally formed
can itself be determinative as to whether a sale has
occurred in the United States because we agree with the
district court here that the pricing negotiations and
contracting activities in the United States to which Halo
points did not constitute the final formation of a defini-
tive, binding contract for sale.
14 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
“Foreign conduct is [generally] the domain of foreign
law,” and in patent cases, foreign law “may embody
different policy judgments about the relative rights of
inventors, competitors, and the public in patented inven-
tions.” Id. at 455 (alteration in original) (quoting Brief for
United States as Amicus Curiae 28). As the Supreme
Court has stated, if one desires to prevent the selling of
its patented invention in foreign countries, its proper
remedy lies in obtaining and enforcing foreign patents.
See Deepsouth, 406 U.S. at 531 (“To the degree that the
inventor needs protection in markets other than those of
this country, the wording of 35 U.S.C. §§ 154 and 271
reveals a congressional intent to have him seek it abroad
through patents secured in countries where his goods are
being used.”).
We also reject Halo’s argument that the sales at issue
occurred in the United States simply because Halo suf-
fered economic harm as a result of those sales. The
incurring of harm alone does not control the infringement
inquiry. As indicated, Pulse’s activities in the United
States were insufficient to constitute a sale within the
United States to support direct infringement. See N. Am.
Philips, 35 F.3d at 1579 (“[T]he statute on its face clearly
suggests the conception that the ‘tort’ of patent infringe-
ment occurs where the offending act is committed and not
where the injury is felt.”). Moreover, Halo recovered
damages for products that Pulse delivered outside the
United States but were ultimately imported into the
United States in finished end products based on a theory
of inducement.
Following Halo’s logic, a foreign sale of goods covered
by a U.S. patent that harms the business interest of a
U.S. patent holder would incur infringement liability
under § 271(a). Such an extension of the geographical
scope of § 271(a) in effect would confer a worldwide exclu-
sive right to a U.S. patent holder, which is contrary to the
statute and case law. See, e.g., Power Integrations, Inc. v.
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 15
Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371–
72 (Fed. Cir. 2013) (“[T]he entirely extraterritorial pro-
duction, use, or sale of an invention patented in the
United States is an independent, intervening act that,
under almost all circumstances, cuts off the chain of
causation initiated by an act of domestic infringement.”)
(citing Morrison v. Nat’l Austl. Bank Ltd., 561 U.S. 247,
266 (2010) (“But the presumption against extraterritorial
application would be a craven watchdog indeed if it re-
treated to its kennel whenever some domestic activity is
involved in the case.” (emphasis in original))).
We therefore hold that the district court did not err in
granting summary judgment that Pulse did not sell
within the United States those products that Pulse manu-
factured, shipped, and delivered abroad.
B. Offer for Sale
We next consider whether Pulse offered to sell within
the United States those products that Pulse manufac-
tured, shipped, and delivered abroad. An “offer to sell”
generally occurs when one “communicate[s] a manifesta-
tion of willingness to enter into a bargain, so made as to
justify another person in understanding that his assent to
that bargain is invited and will conclude it.” MEMC, 420
F.3d at 1376 (internal quotation marks omitted). We
have held that “a description of the allegedly infringing
merchandise and the price at which it can be purchased”
may constitute an offer to sell. 3D Sys., Inc. v. Aarotech
Labs., Inc., 160 F.3d 1373, 1379 (Fed. Cir. 1998). 3D
Systems did not, however, involve international transac-
tions and in that case this court considered the issue of
offer to sell in a personal jurisdiction context.
More importantly, we have held that “the location of
the contemplated sale controls whether there is an offer to
sell within the United States.” Transocean, 617 F.3d at
1309 (emphasis added). “In order for an offer to sell to
constitute infringement, the offer must be to sell a pa-
16 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
tented invention within the United States.” Id. In
Transocean, contract negotiations occurred outside the
United States for delivery and performance in the United
States. This court held that the location of the contem-
plated sale controlled and that the offer to sell infringed
the patent at issue.
The case now before us involves the opposite situa-
tion, where the negotiations occurred in the United
States, but the contemplated sale occurred outside the
United States. We adopt the reasoning of Transocean and
conclude here that Pulse did not directly infringe the Halo
patents under the “offer to sell” provision by offering to
sell in the United States the products at issue, because
the locations of the contemplated sales were outside the
United States. Cisco outsourced all of its manufacturing
activities to foreign countries, and it is undisputed that
the locations of the contemplated sales were outside the
United States. Likewise, with respect to other Pulse
customers, there is no evidence that the products at issue
were contemplated to be sold within the United States.
An offer to sell, in order to be an infringement, must
be an offer contemplating sale in the United States.
Otherwise, the presumption against extraterritoriality
would be breached. If a sale outside the United States is
not an infringement of a U.S. patent, an offer to sell, even
if made in the United States, when the sale would occur
outside the United States, similarly would not be an
infringement of a U.S. patent. We therefore hold that
Pulse did not offer to sell the products at issue within the
United States for purposes of § 271(a).
For the foregoing reasons, we affirm the summary
judgment of no direct infringement with respect to those
products that Pulse manufactured, shipped, and delivered
abroad.
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 17
II. Willfulness
Establishing willful infringement of a valid patent re-
quires a two-prong analysis entailing an objective and a
subjective inquiry. First, “a patentee must show by clear
and convincing evidence that the infringer acted despite
an objectively high likelihood that its actions constituted
infringement of a valid patent.” In re Seagate Tech., LLC,
497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). “The state
of mind of the accused infringer is not relevant to this
objective inquiry.” Id. Second, if the “threshold objective
standard is satisfied, the patentee must also demonstrate
that this objectively-defined risk (determined by the
record developed in the infringement proceeding) was
either known or so obvious that it should have been
known to the accused infringer.” Id. The objective prong
is subject to de novo review. Bard Peripheral Vascular,
Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1005
(Fed. Cir. 2012).
The district court held here that the objective prong
was not met because it concluded that the obviousness
defense that Pulse presented at trial was not objectively
baseless. Halo challenges that holding mainly by arguing
that Pulse did not actually rely on any invalidity defense
pre-suit when selling the accused products because
Pulse’s obviousness defense was developed after the
lawsuit was filed in 2007. Halo also contends that after
Pulse received Halo’s notice letters in 2002, the Pulse
engineer only performed a cursory review of the Halo
patents and Pulse did not rely on that analysis to assess
whether it was infringing a valid patent. Halo asserts
that the court erred in holding that the objective prong
was not met simply because Pulse raised a non-frivolous
obviousness defense.
Pulse responds that the district court properly consid-
ered Pulse’s post-suit obviousness defense to evaluate the
objective risk of infringement of a valid patent. Pulse also
18 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
responds that Pulse did not act recklessly pre-suit be-
cause 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 con-
cluded that the patents were invalid in view of prior Pulse
products. Pulse also maintains that its obviousness
defense presented at trial raised a substantial question of
invalidity and thus was objectively reasonable.
We agree with Pulse that the district court did not err
in holding that the objective prong of the willfulness
inquiry was not satisfied. “Seagate’s first prong is objec-
tive, and ‘[t]he state of mind of the accused infringer is
not relevant to this objective inquiry.’” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336
(Fed. Cir. 2009) (alteration in original) (quoting Seagate,
497 F.3d at 1371). The court properly considered the
totality of the record evidence, including the obviousness
defense that Pulse developed during the litigation, to
determine whether there was an objectively-defined risk
of infringement of a valid patent.
The record shows that although Pulse was ultimately
unsuccessful in challenging the validity of the Halo pa-
tents, Pulse did raise a substantial question as to the
obviousness of the Halo patents. Spine Solutions, Inc. v.
Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319
(Fed. Cir. 2010) (reversing the trial court’s denial of
JMOL of no willfulness because the infringer raised a
substantial question as to the obviousness of the asserted
patent). Pulse presented evidence that the prior art
disclosed each element of the asserted claims, that it
would have been predictable to combine and modify the
prior art to create the claimed electronic packages, and
that there were differences between the prior art consid-
ered by the PTO and the prior art introduced at trial. See
Halo, 2013 WL 2319145, at *15 (summarizing evidence
presented by Pulse on obviousness). Pulse also chal-
lenged Halo’s evidence of secondary considerations. Id.HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 19
In light of the record as a whole, we agree with the dis-
trict court that Pulse’s obviousness defense was not
objectively unreasonable.
Accordingly, having considered all of Halo’s argu-
ments on appeal concerning willfulness and found them
unpersuasive, we affirm the district court’s judgment that
Pulse’s infringement of the Halo patents was not willful.
III. Cross-Appeal
Pulse cross-appeals from the district court’s construc-
tion of the claim limitations “electronic surface mount
package” in the Halo patents and “contour element” in
Pulse’s ’963 patent and the resulting judgments of in-
fringement of the Halo patents and noninfringement of
Pulse’s ’963 patent. We have considered Pulse’s argu-
ments but find no reversible error in those judgments.
We therefore affirm the judgment of direct infringement
with respect to products that Pulse delivered in the Unit-
ed States and the judgment of inducement with respect to
products that Pulse delivered outside the United States
but ultimately were imported into the United States in
finished end products, as well as the judgment of nonin-
fringement of Pulse’s ’963 patent.
In addition, Pulse cross-appeals from the judgment
that the asserted claims of the Halo patents were not
invalid for obviousness. It is true that the record evidence
indisputably shows that almost all the limitations in the
asserted claims were known elements of electronic pack-
ages that existed in the prior art. However, Pulse did not
file a motion during trial under Fed. R. Civ. P. 50(a) on
the issue of obviousness before that issue was submitted
to the jury and thus waived its right to challenge the
jury’s implicit factual findings underlying the nonobvi-
ousness general verdict. The district court thus correctly
presumed that the jury resolved all factual disputes
relating to the scope and content of the prior art and
secondary considerations in Halo’s favor. Based upon
20 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
those presumed factual findings, the court did not err in
reaching the ultimate legal conclusion that the asserted
claims were not invalid for obviousness. We therefore
affirm the judgment that the asserted claims of the Halo
patents were not invalid for obviousness.
CONCLUSION
We have considered the parties’ remaining arguments
and conclude that they are without merit. For the forego-
ing reasons, we affirm the judgment that Pulse did not
directly infringe the Halo patents by selling or offering to
sell within the United States those accused products that
Pulse manufactured, shipped, and delivered outside the
United States. We also affirm the judgment that Pulse’s
infringement was not willful. On the cross-appeal, be-
cause we discern no reversible error in the contested
claim constructions, we affirm the judgment of direct
infringement with respect to products that Pulse deliv-
ered in the United States and the judgment of induce-
ment with respect to products that Pulse delivered
outside the United States but were imported into the
United States by others, as well as the judgment of nonin-
fringement of Pulse’s ’963 patent. We also affirm the
judgment that the asserted claims of the Halo patents
were not shown to be invalid for obviousness.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
HALO ELECTRONICS, INC.,
Plaintiff-Appellant,
v.
PULSE ELECTRONICS, INC. AND
PULSE ELECTRONICS CORPORATION,
Defendants-Cross Appellants.
______________________
2013-1472, -1656
______________________
Appeals from the United States District Court for the
District of Nevada in No. 07-CV-0331, Judge Philip M.
Pro.
______________________
O’MALLEY, Circuit Judge, concurring, with whom
HUGHES, Circuit Judge, joins.
I agree with the majority’s thoughtful conclusion that
we should affirm all aspects of the district court’s decision
in this case. I write separately because, although we are
bound by our precedent at the panel stage, I believe it is
time for the full court to reevaluate our standard for the
imposition of enhanced damages in light of the Supreme
Court’s recent decisions in Highmark Inc. v. Allcare
Health Management Systems, Inc., 134 S. Ct. 1744 (2014)
and Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
134 S. Ct. 1749 (2014), and the terms of the governing
statutory provision, 35 U.S.C. § 284 (2012).
2 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
Our current two-prong, objective/subjective test for
willful infringement set out in In re Seagate Technology,
LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) is analo-
gous to the test this court prescribed for the award of
attorneys’ fees under § 285 in Brooks Furniture Manufac-
turing, Inc. v. Dutailier International, Inc., 393 F.3d 1378,
1381–82 (Fed. Cir. 2005), overruled by Octane Fitness, 134
S. Ct. at 1757–58. The parallel between our tests for
these two issues is not surprising. Both enhanced dam-
ages and attorneys’ fees are authorized under similar
provisions in title 35 of the United States Code (the
Patent Act of 1952). Compare 35 U.S.C. § 284 (“[T]he
court may increase the damages up to three times the
amount found or assessed.”) with 35 U.S.C. § 285 (“The
court in exceptional cases may award reasonable attorney
fees to the prevailing party.”). Although § 284 does not
limit enhanced damages to “exceptional cases” as does
§ 285 for attorneys’ fees, the Supreme Court has ex-
plained that increased damages are only available “in a
case of willful or bad-faith infringement.” Aro Mfg. Co. v.
Convertible Top Replacement Co., 377 U.S. 476, 508
(1964).
As such, our standard for the award of enhanced
damages under § 284 has closely mirrored our standard
for the award of attorneys’ fees under § 285. See, e.g.,
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,
Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012) (“Our holding is
consistent with similar holdings in other parallel areas of
law. Our precedent regarding objectively baseless claims,
which allow courts to award enhanced damages and
attorneys’ fees under 35 U.S.C. § 285, and the Supreme
Court’s precedent on ‘sham’ litigation are instructive.”);
iLOR, LLC v. Google, Inc., 631 F.3d 1372, 1377 (Fed. Cir.
2011) (“The objective baselessness standard for enhanced
damages and attorneys’ fees against a non-prevailing
plaintiff under Brooks Furniture is identical to the objec-
tive recklessness standard for enhanced damages and
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 3
attorneys’ fees against an accused infringer for § 284
willful infringement actions under [Seagate].”). Indeed,
our willfulness test, as described in Seagate and Bard,
and our old § 285 test, under Brooks Furniture, both were
predicated on our interpretation of the Supreme Court’s
decision in Professional Real Estate Investors, Inc. v.
Columbia Pictures Industries, Inc. (“PRE”), 508 U.S. 49(1993), which we believed required a two-step objec-
tive/subjective inquiry before either enhanced damages or
attorneys’ fees could be awarded.
The Supreme Court has now told us that our reading
of PRE was wrong. In Octane Fitness, the Court ex-
plained that the PRE standard was crafted as a very
narrow exception for “sham” litigation to avoid chilling
the exercise of the First Amendment right to petition the
government for redress of grievances with the threat of
antitrust liability. This narrow test required that a
“sham” litigation be “objectively baseless” and “brought in
an attempt to thwart the competition.” Octane Fitness,
134 S. Ct. at 1757 (citing PRE, 508 U.S. at 60–61). In
rejecting Brooks Furniture’s reliance on PRE in the § 285
context, the Supreme Court stated that the narrow PRE
standard “finds no roots in the text of § 285” and the
chilling effect of shifting attorney’s fees is not as great as
the threat of antitrust liability. Id. at 1757–58.
Because we now know that we were reading PRE too
broadly, and have been told to focus on the governing
statutory authorization to determine what standards
should govern an award of attorneys’ fees, we should
reconsider whether those same interpretative errors have
led us astray in our application of the authority granted
to district courts under § 284. Just as “the PRE standard
finds no roots in the text of § 285,” id., there is nothing in
the text of § 284 that justifies the use of the PRE narrow
standard. In rejecting the rigid two-prong, subjec-
tive/objective test for § 285 under Brooks Furniture, the
Supreme Court told us to employ a flexible totality of the
4 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
circumstances test. Id. at 1756. We should now assess
whether a similar flexible test is appropriate for an award
of enhanced damages.
The substantive test is not the only part of our will-
fulness jurisprudence that requires our attention. In
Octane Fitness, the Supreme Court also rejected the
requirement that patent litigants establish their entitle-
ment to attorneys’ fees under § 285 by “clear and convinc-
ing evidence.” Id. at 1758. As we used to do for attorneys’
fees, we currently require patentees to prove willfulness
by clear and convincing evidence. See Seagate, 497 F.3d
at 1371. As the Supreme Court explained in Octane
Fitness, however, the ordinary rule in civil cases, and
specifically patent infringement cases, is proof by a pre-
ponderance of the evidence. Herman & Mclean v. Hud-
dleston, 459 U.S. 375, 390 (1983); see also Octane Fitness,
134 S. Ct. at 1758 (citing Bene v. Jeantet, 129 U.S. 683,
688 (1889)). In fact, other courts only require proof of
willfulness by a preponderance of the evidence in similar
contexts. E.g., Fishman Transducers, Inc. v. Paul, 685
F.3d 187, 193 (1st Cir. 2012) (holding that a preponder-
ance of the evidence standard was appropriate to prove
willfulness in a trademark infringement case); Columbia
Pictures Indus., Inc. v. Liberty Cable, Inc., 919 F. Supp.
985 (S.D.N.Y. 1996) (explaining that plaintiff must prove
willful copyright infringement by a preponderance of the
evidence). As with § 285, moreover, § 284 has no lan-
guage that would justify a higher standard of proof; it just
demands a simple discretionary inquiry and imposes no
specific evidentiary burden. See Octane Fitness, 134 S.
Ct. 1758. This court should evaluate whether there are
any reasons to maintain a standard that is at odds with
the ordinary standard in civil cases for a finding of will-
fulness where nothing in the statutory text even hints
that we do so.
The Supreme Court also rejected de novo review of a
fee award under § 285. Highmark, 134 S. Ct. at 1748.
HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC. 5
According to the Supreme Court, “whether a case is
‘exceptional’ under § 285 is a matter of discretion,” which
“is to be reviewed only for abuse of discretion.” Id. Sec-
tion 284 also leaves the issue of enhanced damages to the
discretion of the court. Compare 35 U.S.C. § 284 (“[T]he
court may increase the damages . . . .” (emphasis added))
with 35 U.S.C. § 285 (“The court in exceptional cases may
award reasonable attorney fees to the prevailing party.”
(emphasis added)). Indeed, other appellate courts review
similar willfulness findings with more deference. E.g.,
Dolman v. Agee, 157 F.3d 708, 714–15 (9th Cir. 1998)
(reviewing a finding of willful copyright infringement for
clear error). As such, we must also consider whether a
district court’s finding of willfulness should be subject to
de novo review.
Finally, under the plain language of §§ 284 and 285,
“the court” is the entity that decides whether the remedy
is appropriate. 35 U.S.C. § 284 (“[T]he court may increase
the damages . . . .” (emphasis added)); 35 U.S.C. § 285(“The court in exceptional cases may award reasonable
attorney fees to the prevailing party.” (emphasis added)).
While we allowed the court to determine whether to
award attorneys’ fees under Brooks Furniture, we have
long held that a willfulness determination contains issues
of fact that should be submitted to a jury. See Bard, 682
F.3d at 1005 (holding that the objective prong under
Seagate was ultimately a question of law for the court, but
leaving the subjective prong as a question of fact for the
jury); see also Nat’l Presto Indus., Inc. v. West Bend Co.,
76 F.3d 1185, 1193 (Fed. Cir. 1996) (“The issue of willful
infringement remains with the trier of fact.”); Braun Inc.
v. Dynamics Corp. of Am., 975 F.2d 815, 822 (Fed. Cir.
1992) (“Whether infringement is willful is a question of
fact and the jury’s determination as to willfulness is
therefore reviewable under the substantial evidence
standard.” (citation omitted)). Although not directly
addressed by the Supreme Court, when we reevaluate the
6 HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC.
proper test for an award of enhanced damages, this court
should also consider whether § 284 requires a decision on
enhanced damages to be made by the court. The mere
presence of factual components in a discretionary inquiry
does not remove that inquiry from the court to whom
congress reposed it. See Markman v. Westview Instru-
ments, Inc., 52 F.3d 967, 992 (Fed. Cir. 1995), aff’d, 517
U.S. 370 (1996) (“Even within the realm of factual ques-
tions, whether a particular question must always go to a
jury depends ‘on whether the jury must shoulder this
responsibility as necessary to preserve the substance of
common law right of trial by jury.’” (quoting Tull v. Unit-
ed States, 481 U.S. 412, 417 (1987))).
For the following reasons, although we are bound by
Seagate and Bard as a panel, I urge the full court to
reevaluate our willfulness jurisprudence in light of the
Supreme Court’s decisions in Highmark and Octane
Fitness.