Products sold “Free on Board” or “f.o.b.” Hong Kong found "sold in US" under 271(a) where intended for retail sale within US.
Section 271(a) makes it an act of infringement to “without authority make[], use[],
offer[] to sell, or sell[] any patented invention, within the United States.” Op. p. 20.
Pentalapha (accused infringer) “sold these deep fryers to its three customers free on board Hong Kong or mainland China. “Free on board,” or “f.o.b.,” is a “method of shipment whereby goods are delivered at a designated location, usually a transportation depot, at which legal title and thus the risk of loss passes from seller to buyer.” Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1358 n.1 (Fed. Cir. 2008).” Op. p. 4.
Pentalpha argued that the sale occurred overseas because the products were delivered to the buyers f.o.b. Hong Kong or China.
This court has “rejected the notion that simply because goods were shipped f.o.b., the location of the ‘sale’ for the purposes of § 271 must be the location from which the goods were shipped.” Lightcubes, 523 F.3d at 1370. Op. p. 21.The court ruled that the affixing of US trademarks, US electrical fittings, US destination, and intended US retail destinations were sufficient for the jury to find that the sales were within the US.
Other than the f.o.b. terms in the invoices presented to the jury, the record shows that Pentalpha intended to sell its deep fryers directly into the United States. Pentalpha itself affixed the American trademarks of Sunbeam, Montgomery Ward, and Fingerhut to the deep fryers, and it manufactured the deep fryers with North American electrical fittings. Moreover, the invoices between Pentalpha and the three U.S. companies all In sum, this court does not perceive any fundamental error with the jury instructions in light of the record evidence. Op. p. 21.Case involves many other interesting issues
US 4,995,312 Patent at issue: http://www.google.com/patents/about?id=XN0pAAAAEBAJ&dq=4,995,312
Opinion: http://www.cafc.uscourts.gov/opinions/09-1099.pdf
