The Federal Circuit recently reviewed what it means to “sell” or “offer to sell” a product in the United States. InHalo Elec., Inc. v. Pulse Elec., Inc., the Federal Circuit affirmed the district court’s grant of summary judgment that the accused infringer, Pulse, did not sell or offer to sell the allegedly infringing goods in the United States, when such goods were manufactured, shipped, and delivered outside the United States. First, the court addressed what constitutes a “sale” in the United States under 35 U.S.C. 271(a). It analyzed and balanced the activities underlying the sales transaction and found that although Pulse performed pricing and contract negotiations in the United States, all other sales activities (i.e., final formation of the contract for sale, and delivery and performance under the sales contract) occurred entirely outside the United States. Under this set of facts, the court concluded that a sale had not taken place in the United States.
Second, the court addressed whether Pulse offered to sell within the United States the accused products that were manufactured, shipped, and delivered abroad. The court reviewed prior case law holding that “the location of the contemplated sale controls whether there is an offer to sell within the United States,” adding that “for an offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States.” Here, since the location of the contemplated sales was outside the United States, there was no infringement.
Halo Elec., Inc. v. Pulse Elec., Inc., 2013-1472, -1656 (Fed. Cir. Oct. 22, 2014) [Lourie (opinion), O’Malley (concurring), Hughes (concurring)].