Digest of Halo Elecs., Inc. v. Pulse Elecs., Inc., et al., Nos. 2013-1472, -1656 (Fed. Cir. Oct. 22, 2014) (precedential). On appeal from D. Nev. Before Lourie, O’Malley, and Hughes.

Procedural Posture: Appellant-patentee Halo appealed from the district court’s summary judgment of non-infringement based on Pulse not having sold or offered for sale the accused products within the United States, and from the district court’s holding that the infringement of certain patents was not willful. Cross-appellant-defendant Pulse appealed the construction of two claim terms, and the district court’s decision that the asserted claims were not invalid as obvious. The Federal Circuit affirmed.

  • Infringement: The district properly held that Pulse’s sales through foreign contract manufacturers to customers outside the United States did not constitute a sale or offer for sale in the United States, even though Pulse’s negotiations and contracting activities related to such sales took place in the United States.
  • Willfulness: The district court correctly held that Pulse’s obviousness argument, although ultimately unsuccessful, raised a substantial question as to obviousness and therefore did not satisfy the “objectively baseless” prong of willfulness.
  • Waiver: The district court correctly held that Pulse’s failure to file a pre-verdict Rule 50(a) motion seeking JMOL on obviousness resulted in Pulse waiving its right to challenge the jury’s implicit factual findings underlying the nonobviousness general verdict. The district court therefore 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.

O’Malley and Hughes, concurring:

  • En Banc Review/Willfulness: In light of the Supreme Court’s decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), and Highmark Inc. v. Allcare Health Management Systems, Inc., 134 S. Ct. 1744 (2014), the full court should reconsider the standard for willfulness. Willfulness has a two-prong, objective/subjective test that is analogous to the Federal Circuit’s test used for the award of attorneys’ fees that was overruled by the Supreme Court. Because the two standards closely mirror each other, the test for willfulness should be reconsidered en banc.