{"id":1111,"date":"2016-08-05T19:25:48","date_gmt":"2016-08-05T23:25:48","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1111"},"modified":"2016-08-14T20:29:40","modified_gmt":"2016-08-15T00:29:40","slug":"sale-and-offer-for-sale-determined-by-where-substantial-activities-of-the-sales-transactions-occur","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1111","title":{"rendered":"Sale and Offer for Sale Determined by Where “Substantial Activities of the Sales Transactions” Occur"},"content":{"rendered":"

In Halo Electronics, Inc. v. Pulse Electronics, Inc.<\/em>, [2013-1472, 2013-1656](August 5, 2016), on remand from the Supreme Court, which held that 35 USC\u00a0284 gives district courts the discretion to award\u00a0enhanced damages in egregious cases of misconduct\u00a0beyond typical infringement, the Federal Circuit vacated the district court’s unenhanced damages award with\u00a0respect to products that were delivered in the United\u00a0States, and remand for further proceedings consistent\u00a0with the Supreme Court\u2019s opinion on enhanced damages. The Federal Circuit otherwise adopted its prior opinion on all other issues in the appeal.<\/p>\n

In particular the\u00a0Federal Circuit again agreed that\u00a0the district court did not err\u00a0in granting summary judgment of no direct infringement\u00a0with respect to those products that Pulse manufactured,\u00a0shipped, and delivered outside the United States because\u00a0those products were neither sold nor offered for sale by\u00a0Pulse within the United States.<\/p>\n

The Federal Circuit said that although the place\u00a0of contracting may be one of several possible locations of a\u00a0sale to confer personal jurisdiction, it has not deemed a\u00a0sale to have occurred within the United States for purposes\u00a0of liability under \u00a7271(a) based solely on negotiation\u00a0and contracting activities in the United States when the\u00a0vast majority of activities underlying the sales transaction
\noccurred wholly outside the United States. For such\u00a0a sale, one must examine whether the activities in the\u00a0United States are sufficient to constitute a \u201csale\u201d under\u00a0\u00a7271(a), recognizing that a strong policy against extraterritorial
\nliability exists in the patent law.<\/p>\n

The Federal Circuit noted that the patent statute does not define “sale” for purposes of\u00a0\u00a7271(a). \u00a0The Federal Circuit pointed out that the ordinary meaning of a sale includes the concept of a transfer or title or property, and that\u00a0Article 2 of the Uniform\u00a0Commercial Code, which is recognized as persuasive\u00a0authority on the sale of goods, provides that a sale\u00a0consists in the passing of title from the seller to the buyer\u00a0for a price.<\/p>\n

The Federal Circuit found that\u00a0substantial\u00a0activities of the sales transactions at issue, in addition\u00a0to manufacturing and delivery, occurred outside the\u00a0United States. While Halo did present evidence that\u00a0pricing negotiations and certain contracting and marketing\u00a0activities took place in the United States, which
\npurportedly resulted in the purchase orders and sales\u00a0overseas, such pricing and contracting\u00a0negotiations alone are insufficient to constitute a \u201csale\u201d\u00a0within the United States. \u00a0Any doubt as to whether Pulse\u2019s contracting activities\u00a0in the United States constituted a sale within the United\u00a0States under \u00a7 271(a) was resolved by the presumption\u00a0against extraterritorial application of United States laws.<\/p>\n

The Federal Circuit also affirmed there was no offer for sale, noting that in order for an offer to sell to\u00a0constitute infringement, the offer must be to sell a patented
\ninvention within the United States.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Halo Electronics, Inc. v. Pulse Electronics, Inc., [2013-1472, 2013-1656](August 5, 2016), on remand from the Supreme Court, which held that 35 USC\u00a0284 gives district courts the discretion to award\u00a0enhanced damages in egregious cases of misconduct\u00a0beyond typical infringement, the Federal … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[16],"tags":[],"class_list":["post-1111","post","type-post","status-publish","format-standard","hentry","category-infringement"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1111","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1111"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1111\/revisions"}],"predecessor-version":[{"id":1112,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1111\/revisions\/1112"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1111"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1111"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1111"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}