Whitserve, LLC v. Computer Packages, Inc.

WHITSERVE, LLC, Plaintiff/Counter- Appellant,

claim Defendant-Cross

Wesley Whitmyer, Jr., Party W. Third Appellant,

Defendant-Cross INC., PACKAGES,

COMPUTER

Defendant/Counterclaim

Plaintiff-Appellant. 2011-1206,

Nos. 2011-1261. States of Appeals,

United Court

Federal Circuit.

Aug. 2012. En

Rehearing Banc Oct. Denied Woelker, Kosma,

were Erin R. Michael J. Stephen Ball. Krause, Fitzpatrick, Celia, John A. Har- York, per & Scinto of New New York argued for plain- defendant/counterclaim tiff-appellant. himWith on the brief were Douglas Sharrott, Marc J. Pensabene and Czarnecki, Robert J. Jr. Of counsel was Robert H. Fischer. PROST,

Before MAYER and O’MALLEY, Judges. Circuit Opinion for the court filed Circuit Judge O’MALLEY. filed

Dissenting opinion Circuit Judge MAYER.

O’MALLEY, Judge. Circuit case, This patent presenting myriad is- sues, includes an from a appeal jury’s find- ing infringement of willful patents, four cross-appeal trial of the court’s denial of motions, various post-trial and a separate cross-appeal of a denial sanctions and attorneys’ appeal, fees. On the we affirm jury’s finding infringement, affirm finding anticipation no most, all, claims, but not and we vacate the jury’s damages award and remand for a new trial on damages. On the cross-ap- peal, proper we remand for determina- tion post-trial of the motions at issue. As separate cross-appeal, to the we affirm the denial of fees and sanctions.

Background 'WhitServe, This case is between LLC (“WhitServe”), company owned Wes- ley Whitmyer, Jr., and Computer Pack- (“CPi”). ages, Inc. Whitmyer Mr. is Whit- Winter, Onge Gene S. St. Steward John- Serve’s sole and principal employee, and is Reens, LLC, ston Stamford, CT, & of ar- both an inventor and a practicing patent gued for plaintifficounterclaim attorney. defendant- CPi is in the helping business of appellant party cross Third and patent defendant- other their pay businesses mainte- cross appellant. him on With nance CPi, brief fees on time. WhitServe sued fendant,” ego is the alter asserting that he of infringe four systems that CPi’s alleging WhitServe, he is the true owner of .Whitmyer as list all of which patents, personal that he patents, and to the asserted assigned have been and their inventor conduct in the engaged inequitable ly WhitServe. those patents.1 prosecution No. Patent at issue arfe U.S. patents The dispute factual at trial con primary The (the Patent), “On- entitled '007 6,981,007 and products operated, cerned how CPi’s Data Pro- Internet-Based Backup for site Family '468 they fell within the whether Family” patents: the “'468 cessing,” and There (the of “automatic.” claims’ definition 5,895,468 '468 Pat- No. Patent U.S. the '007 dispute over whether was also Automating Deliv- ent), “System entitled prior art. anticipated was Services”; Patent Patent U.S. ery of Professional prove that CPi failed to (the Patent), found entitled 6,182,078 '078 No. invalid, systems in that CPi’s any claims Ser- Delivering Professional “System for in patents, the four CPi’s Internet”; fringed Patent and U.S. Over vices willful, and that WhitServe (the Patent), was fringement 6,049,801 entitled '801 No. $8,378,145 in damages.2 was entitled Ser- Providing Professional “Web Site Family is directed The '468 vices.” trial, all of the trial court denied After delivery professional automating the requested post-trial relief. WhitServe’s Patent covers tech- the '007 while services First, re- the court denied Whit-Serve’s trial, At backing up client data. nology for injunction on the permanent for a quest products— that CPi’s asserted merits, request did not address a and Online, TERMS, EARS, CPi Desktop requests license. WhitServe’s compulsory EARS, infringe Hosted and Hosted PMS — attorneys’ fees, damages and for enhanced EARS and patents. four Whit-Serve’s interest, reme- prejudgment prejudgment programs computer software TERMS are then dismissed as and disclosure were dy, customer, as a law such by a CPi operated court’s order light of the trial “moot”.in to its firm, and send reminders generate it stated that entering judgment, which patent or trademark upcoming clients ... concludes that court “[t]he fee deadlines. annuity or maintenance fair, just, ... and reasonable verdict EARS, Online, and Hosted Hosted CPi legal equita- addresses all adequately purpose, but serve the same PMS motion WhitServe’s ble considerations.” “host- annuity database are software as accounting was denied post-trial servers, on rather than stored ed” on CPi’s The district explanation. without “moot” computers. the client’s WhitServe’s later reconsidered court this time denied motions and complaint “mooted” answered WhitServe’s CPi stating after that the them on the merits affirmative a counter defenses and with plaintiff of the awarded in favor “damages seeking a declara against claim WhitServe with complete compensation ... constitute inval non-infringement, of tory judgment The court entered to this matter.” respect also unenforceability. CPi and idity Whitmyer the of on judgment favor de Whitmyer as a “counterclaim named appealed. not been See 2. Willfulness has plaintiff to the Whitmyer was not a Because 36:47-37:00, http:// at Arg. at available Oral action, realigned aas original he was later www.cafc.uscourts.gov/oral-argument- defendant, though it is unclear third-party (“The only we recordings/2011-1206/all reason it was done and whether when that occurred many are so appeal it is because there didn't stipulation. by or court order already.”). in the case issues 18 with complaint jury’s finding “consistent the that 10 of the '007 party

third Claim verdict,” is not jury’s anticipated. but denied a motion Patent We remand for seeking fees and sanctions from a new trial on Whitmyer damages because The damages unsupported by CPi for the assertion that claim. verdict Whitmyer’s its denial of and the explained court record trial court abused its dis- stating that when motion he had “failed to set cretion it failed to order a new dam- warranting ages such The trial. forth facts relief.” as court “moot” a also denied series post- This court reviews denial of seeking judgment filed as a motions CPi law, trial motions under circuit regional (JMOL) trial, a new matter of law and/or Circuit case. the Second in this See Revo again verdict grounds on the Eyewear, Aspex Eyewear, lution Inc. v. “fair, just

was and reasonable.” (Fed.Cir.2009). Inc., 1358, F.3d and appealed CPi WhitServe and Whit- The Second Circuit reviews a denial of juris- myer cross-appealed. each haveWe novo. Testing, JMOL de AMW Materials 1295(a)(1). § diction U.S.C. under 28 Babylon, Inc. v. Town 584 F.3d CPi the trial erred in (2d Cir.2009). claims that court Similar the frequently denying post-trial its motions for JMOL standard, applied substantial evidence (1) argues a new trial. It and/or may a district court the [jury’s] set aside products infringe Family do not the '468 pursuant 50 only verdict to Rule where “automatically”; because do not work there is “such a complete absence of (2) is anticipated the '007 Patent supporting evidence the verdict that the (3) art; prior award damages jury’s findings only have could been the should or be reduced vacated for new conjecture, result sheer surmise trial.3 cross-appeals on or there is such overwhelming an grounds granted that it should have been amount evidence favor of the mov permanent injunction compulsory li ant that fair reasonable and minded men against cense and that it was entitled could arrive at a verdict against interest, to prejudgment dam enhanced him.” fees, ages, attorneys’ and a ac post-trial Auth., (quoting Id. Cross v. N.Y.C. Transit Whitmyer counting. re cross-appeals (2d Cir.2005)). questing expenses. his fees and Second Circuit considers evidence in most light favorable the non-moving Discussion party gives party the benefit of Appeal I. CPi’s all reasonable inferences that might have drawn in the fa- non-movant’s arguments We first address CPi’s Auth., vor. noted, Caceres Port on appeal. As we affirm the trial (2d Cir.2011). court’s infringement denial of JMOL on because supports substantial evidence A. Infringement jury’s verdict. We also affirm denial claims, anticipation JMOL on on most 1 representative Claim of '468 Patent is but reverse-in-part because find that we of the claims in Family. the '468 Patent It substantial does support evidence not recites: patents

3. CPi’s claim ship" appeal. that are unenforcea- are at issue in this request ble and its for a "correction of owner-

19 may per- A machine still automatically delivering tervention. for A device automatically, process the claimed com- form to a client services professional manually human though might a even prising: interrupt process. initiate or computer; a the term reaching the conclusion that plurality a containing database 1 as used claim does not “automatic” reminders, the client each of client intervention, human possible exclude all hav- a date field comprising reminders decision in trial court relied on our thereto; attributed ing a value Inc., ApplyYourself, Inc. v. CollegeNet, for computer on said executing software (Fed.Cir.2005), we where F.3d database automatically querying said autopilots explained that dishwashers client attributed to each the values by though be automatic even could still a client date field to retrieve reminder human, started or their must be reminder; a human. may interrupted by be operation for executing computer on said software CollegeNet, we did in the trial court As re- automatically generating a client “compris- on the use of the term focused on the retrieved form based sponse in the claim to find that unrecited ing” reminder; client manual, elements of human actions were com- link between said a communication scope. from its See id. at not excluded Internet; puter that, (stating claim does not “[w]hile computer for executing on said software intervention, expressly provide for human the client automatically transmitting ‘comprising’ suggests that addi- use through form to the client response tional, elements are not exclud- unrecited and, link; communication said human ed. Such elements could include computer for executing on said software expressly actions to initiate the automatic to the automatically receiving reply transmitting, or re- [querying, generating, through from the client response form functions.”). ceiving], interrupt or to such link. said communication explained why then it be- The trial court lieved this construction of automatic was (em- to col. 7 1. 8 Patent col. 6 1. 56 ’468 patent’s specifica- supported both added). phases prosecution history. its tion and “automat- interpreted The district court in the claims as: ic” challenge the trial CPi does not In that, initiated, appeal.4 construction on per- court’s claim once process that, stead, allowing for argues even by a without the need

formed machine of some manual intervention process, presence manually performing claims, products of the its is, human in- in the elements without the need for (Fed.Cir.2006) (stating possibility 973 n. to the 4. While CPi alluded contrary was court’s claim construction to set forth substantive discussion trial that failure prosecution patent’s specification and to the of the of claim construction in the statement brief, opening history it did not at times presented, summary argument, of the issues in the "Statement of the Is- raise the issue itself, any argument constitutes waiver of sues,” legal support claim for its cited no construction). finding alternative claim This "arguments,” not even and did construction motion, WhitServe’s filed after renders moot claim con- of review for recite the standard brief, asking prohibit opening that we CPi's has, accordingly, waived the It struction. requesting de novo review of CPi from later con- ability argue an alternative claim the court’s claim constructions. U.S.,Inc., Corp. v. Unilever struction. SeeKao element, how, they require example, do not a infringe type because CPi’s Host- not ed contemplated product of manual intervention EARS worked and infringed claim of Regarding or consistent the asserted claims. the '468 Patent. with element, that, “automatically querying” all CPi contends of the asserted he ex- while that, plained Family “enter[ing] after a require claims of the date '468 “soft range,” “press[es] the user the search computer ware but- executing on said for auto ton.” pressing “After the search matically button querying said database values what happens under the scene is that the attributed client to each reminder date database of client reminders are reminder,” searched field to client retrieve a “the produced and then a is display which require, minimum, products accused all at shows the results of search.” “So entry of a due range manual date after the law firm enters information during querying pro the execution button, and clicks the search Hosted (original cess.” Appellant’s empha Br. 30 automatically queries EARS at that time.” deleted).5 Essentially, that, sis argues CPi Thus, Sayward Dr. testified that “entering person using because a their products range” date happens before the querying must manually choose due date range to begins in Hosted EARS and the querying view, queried, and, be in its choosing the process (checking itself the database en- range during date occurs the querying against tries date range) hap- desired process, infringement there is no because pens automatically. Sayward Dr. testified that manual neither action initiates nor similarly Desktop EARS/TERMS, about interrupts process. querying Whit- and CPi Online. Serve argument counters that this illogi is cal “querying process because the does not When CPi’s counsel cross-examined Dr. start until the user range enter[s] date Sayward, he asked whether the querying and process.” starts Cross-Appel process could start due before dates were Br. agree lant’s 59. with We WhitServe. manually by the user. Say- entered Dr. We find that there is substantial evidence rejected ward that proposition and stated support jury’s implicit finding that that entering range the date can not be choosing a range separate due date is from part of the querying process prior because CPi’s querying process automated and that entering range “you the date haven’t all other manual operations required by formed a proper question.” To be a products CPi’s are outside the automated query, “you range, need a date you so that required tasks by the claims. know what you’re searching for.” jury was explanation entitled to credit this Sayward Dr. was WhitServe’s expert on reject theory CPi’s that querying in- science, the fields of computer docketing volves choosing date range to be systems, management, database and Inter- searched. net and applications. network He testified products analyzing CPi’s in- argument CPi’s products that their re- fringement, spent he quire “hundreds hours” entry” “date and other steps manual looking at products’ that, source code does negate fact when the manuals, user experimenting with evidence light test is viewed in the most favor- accounts. Sayward explained, Dr. WhitServe, element able to there was substantial footnote, In a (Fed.Cir.2006) raises another reason F.3d (''[Argu- why it infring- believes the '801 Patent is not ments raised pre- in footnotes are not Appellant’s ed. argument Br. n.4. This served.”). Apotex waived. Coip., SmithKline Beecham v.

21 fact question of reviewed substantial finding to the con support a evidence IP, jury. when tried to a Orion Thus, the trial court’s evidence we affirm trary. Am., Hyundai of noninf LLC v. Motor motion for JMOL of CPi’s denial (Fed.Cir.2010). Because the 974 ringement.6 invalid, patents found that were not Anticipation B. JMOL stan- under the Second Circuit’s dard, to see if we the evidence review two of CPi’s jury found that The “overwhelming amount of is such an there PMS, Hosted EARS and Hosted products, in favor of that reasonable [CPi] evidence Patent. claims of the '007 all 15 infringed could not arrive at a and fair minded men Ears Desktop found that CPi’s It also AMAN, F.3d at against 584 [it].” verdict 10 of the '007 Pat infringed claim product high This is a burden. 456. infringes concedes ent. CPi valid, Patent, argues that the if but '007 '007 Patent is entitled “Onsite The under 35 U.S.C. Patent is invalid '007 Backup from Internet-Based Data Pro- by Patent No. anticipated § as U.S. 102 cessing.” recognizes many compa- It Patent”). (“the 5,903,881 We Schrader processing sys- have moved their data nies is of the '007 Patent that claim 10 conclude private from their networks to the tems that substantial anticipated, but invalid as and now allow their customers to Internet finding of no jury’s supports evidence data via a manipulate access and their web claims. as to the other anticipation '007 Patent col. 1 11. 21-24. interface. Patent to allow object if The of the '007 is anticipated claim is “[A] backup computer limitation clients to to their own every is found either each data, which, copy of their Internet-based inherently single prior in a expressly Techs., data specification, appears from the be Ltd. art reference.” Celeritas resulting data-processing from outsourced Corp., Int’l Rockwell (Fed.Cir.1998). computer sepa- must be that is stored on central The “elements from the client’s network way in the same as rated arranged or combined 21-24, 2 11. claim,” Internet. Id. col. 111. col. 6-24. “the reference need not in the but objective opposite of traditional In re This satisfy ipsissimis an verbis test.” (Fed.Cir.2009) Cleave, allow the client to backup systems, which F.3d (internal computer own onto copy marks data from their quotation citations omitted). or server. Id. col. Also, computer an external must “enable reference copy saving In addition to in the art to make the 49-56. ordinary one of skill data, claims dependent the Internet-based experimentation.” undue invention without Inc., 3, 6, Labs., go on to claim “software execut- Pharm. and 9 Inc. v. Aventis Impax, (Fed.Cir.2008). retrieving 1312, 1314 ing computer central Pat on said F.3d 48-50, backup.” Id. col. 311. col. invalidi said data presumed are to be valid and ents 12-15, Essentially, 4 11. col. 4 11.49-51. convincing clear and ty proven must be computer’s recite the central Corp. v. Ltd. those claims evidence. i4i Microsoft — U.S.-, 2238, 2242, any restore lost data retriev- ability to P’ship, 131 S.Ct. (2011). personal computer. ing it from the client’s Anticipation is 180 L.Ed.2d 131 evidence, products only that its do jury reasonably pealed on the basis also 6. From this is, accordingly, literally infringe. products There in- could have concluded that CPi’s upon which to conclude equivalents. more than one basis fringed under the doctrine supports evidence that substantial could find was instructed doctrine, infringement verdict. ap- infringement under the but CPi 11-15, depend case on well as claims which anticipation focused its rs 10) It from claim does not Internet- 10. recites: recite claim data, which from based is differentiated system storage of data for local A by data the fact that it must general client through comprising: the Internet by and modifiable be accessible the client’s to the In- computer a central connected Inter- processing act of the data over the ternet; 21-24, '007 col. 2 net. Patent col. 1 11. See computer to the In- a client connected 11.6-24. ternet; plurality of storage having at least one a only The Patent is the piece Schrader records, at data said least one client upon art which for its prior CPi relied central storage accessible said defense. It elec anticipation discloses an computer, each client data record hav- system tronic checkbook that reconciles ing an identifier that relates client against pending financial transactions client; to a data record Among cleared transactions.7 other client from request, a data sent said system a things, computer-based it claims: computer via Internet to client that allows user to send transactions computer; central said and computer from his to a financial institu data said corresponding client client system computer processing; tion’s a request, central data sent from said display showing an account of all balance computer via the to said Internet transactions; showing a display cleared an computer client and saved on said account balance of both cleared un computer. client transactions; cleared the ability to receive added). (emphases 411.52-64 Id. col. from the financial institution a list of trans they actions cleared since the last time The Court construed data” to “client checked; were and then two updating “a complete partial backup mean or or account balances. Schrader col. 19 of data Patent copy corresponding records to a 1. 20 1.25. In client.” 48 to col. the section of the particular interpreted It “data re- Statement,” specification quest” backup request.” “Update to mean “a data entitled that, party appeals explains Neither claim con- it once a an requests these user Thus, requires: update, “personal structions. claim application finance and central computer, client each connect- com connects to financial institution Internet; copies backups puter system” ed to or over the col. Internet. Id. corresponding particular data records col. 17 16 1. 63 to 1. 5. Then the software request client are client identifiable “creates a file that a re includes by the computer; accessible central data cleared quest all transactions since the backup request comput- sent the client last update” date of the to the is sent 6-9, the central computer; complete er to financial institution. Id. col: 17 11. 11. backup partial copy response, or of data records 15-19. the financial institu corresponding to that computer system client sent from the tion’s a re “creates computer computer central sponse the client file contains the set transac Basically, are then where saved. tions that have been last cleared” since the clients to copy update. allows access and their own Id. col. 17 11. The re 22-25. or files sponse files associated with them from is then sent back applica file to the face, across the Internet. On claim 10 “ex processed, tion and which includes Quicken®. mark Schrader Patent is sold under the trade- despite ent these asserted cleared transactions differences. tracting each First, clearly Schrader discloses a central storing file and them.” response from computer the form of financial insti- 1711.26-38. Id. col. computer. Additionally, claim tution’s 10 Alexander, Dr. testified expert, CPi’s recites neither Internet-based data nor that, in 10 and stated Schrad- claim about fact, In only data conversion. rebut- er, from the financial “retriev[e] the users ting testimony by spe- offered WhitServe records, just as the '007 institution these cifically regarding expert’s claim 10 was its downloading to a client.” requires Patent conclusory testimony that limita- claim 10’s that the download is “to He also stated taught by tions “aren’t Schrader.” from personal computer or your business main- computer.” brief, banks “[T]he the bank’s In that argues WhitServe your checkbook rec- tain the database with claim anticipate Schrader does not 10: spe- that are ord” and “these are records system “Schrader does not relate to a ” you.” request. “So there’s backing up cific to client data because “the art, Quicken prior Schrader the case of not a request request Schrader file is for a computer, your at you’re personal data, at a backup existing data but rather is home, you request or at and request relating business for new data to cleared essentially of records that are downloading client transactions since the was last on pro- that the bank has unposted records Br. Cross-Appellant’s (emphases line.” 70 Then, according added). to Dr. Alexan- “arguments cessed.” of counsel can Such der, you the giv[es] response the “the bank place lacking not take the of evidence in file, specific L’Oreal, is the records that are which record.” Estee Lauder Inc. ID, (Fed.Cir.1997) (in your your S.A., on client ac- you, based “And these records are count number.” quotation ternal citations and marks omit ted). your computer Moreover, in the case of saved on claim does not distin are Quicken, patent, they the Schrader guish “existing” between data that is or your computer, “new,” on business only saved and recites “client instead and/or testimony data,” His tracks all of computer.” “a or complete which was defined as that, argues claim 10’s elements. partial backup copy data records therefore, Patent, which de- the Schrader corresponding particular to a client.” computer downloading spe- files corresponding scribes Data to a user’s cleared fi computer, cific to the user from a central clearly nancial satisfies the transactions in contains all of the limitations claimed “copy definition of a of data records corre the '007 Patent. sponding particular to a client.” argues points is miss- to no other elements Schrader WhitServe distinguish certain claimed the '007 that claim from Schrad ing elements Say- er argue Patent. WhitServe states “Dr. Patent and does enabling. at trial that Schrader was Schrader Patent is not See Am ward testified (1) Roussel, Inc., key gen claim elements: Inc. v. Hoechst Marion missing additional (Fed.Cir.2003) (ex computer transmitting a central client 314 F.3d by pre all that there is “a computer (required plaining [rebuttable] data to a client (2) (re- 1-15); ... that both the claimed and sumption claims Internet-based data (3) 1-9); prior patent in a art quired by claims data conver- unclaimed disclosures 12-15).” enabled.”). Thus, case, even 7-9 and are this (required sion claims in a most favor viewing light that claim 10 of the '007 the evidence We conclude WhitServe, juror Pat- no reasonable anticipated Patent is the Schrader able ” Instead, could have found that claim 10 was not claims.... the defendant’s ex- pert prior testified about four art anticipated patents Schrader Patent. Therefore, simultaneously and stated: the trial court’s denial CPi’s regarding motion for claim 10 JMOL prior patents All these art provide for anticipated by reversed because claim 10 is ways products making products Contrary the Schrader Patent. to CPi’s with thick and thin gate sections. The however, arguments, shown, the fact that claim 10 locations are all have is invalid does not cause all of the other inherently crossing flows in sections of product, claims of the '007 Patent to fail. sometimes substantial sec- products, tions of these they such that not We do invalidate the rest all would have a cross-laminated section of the claims because contain addi Key as Turn applying that term to the tional elements that CPi has not estab accused lenses. anticipated lished were either or obvious. Id. at 1152. that “[gjeneral We held such The law states: conclusory testimony and ... does not suf- (whether patent Each claim of a in inde- fice as substantial evidence of invalidity.” pendent, dependent, multiple or depen- general conclusory Id. Because and testi- form) presumed dent shall be valid inde- mony enough is not to be even substantial claims; pendently validity of the of other verdict, support evidence in aof it is cer- dependent multiple dependent or claims tainly enough require us to overturn presumed shall be though valid even jury’s finding invalidity. of no dependent upon an invalid claim.... case, In expert, this CPi’s Dr. Al of establishing invalidity burden exander, explained part what a patent any claim thereof shall rest Schrader Patent anticipated each element party on the asserting invalidity. in claim 10. if encryption When asked § “Typically, 35 U.S.C. 282. testimony data format conversion were well known at concerning anticipation testimony must be filed, the time the '007 Patent was he from one skilled in the art and must identi- answered affirmatively. attorney CPi’s fy element, each claim state the witnesses’ asked, you then “Do have an opinion on interpretation element, of the claim 1, 2, 7, validity 3, 8, 9, 10, 11, of Claims explain in detail how each claim element is 12, 13, 14 and 15 of the '007 Patent?”8 disclosed in prior art reference.” “Yes, Dr. replied, they’re Alexander all Inc., Schumer v. Lab. Computer Sys., 308 invalid prior Finally, because of art.” 1304, (Fed.Cir.2002) F.3d (emphasis asked, attorney CPi’s “And are all the added). elements those claims disclosed in the Manufacturing Koito Co. v. patent?” stated, Schrader Dr. Alexander LLC, Turn-Key-Tech, 1151 “Yes, they are.” find generalized We this (Fed.Cir.2004), the defendant entered an exchange, which failed to articulate how patent other into evidence anticipatory as anticipated Schrader Patent the other art, prior “but otherwise provide failed to elements, specific claims’ cry to be a far any testimony or other evidence that from “overwhelming amount of evi would demonstrate to the how that require dence” needed to us to overturn reference met the limitations of verdict. See Id. why It is unclear change Dr. Alexander did not if result he had. through mention claims 4 but it would not that elements CPi also states the '007 are several additional

There patent is rendered obvious the Schrad moreover, claims, in the other contained However, patent. “an obviousness er de jury could find absent a reasonable which ... underlying termination is based on example, Patent. For the Schrader from (1) inquiries including: factual the scope 3, 6, require and 9 that dependent claims (2) art; prior and content of the level cen executing on said there be “software (3) art; ordinary in the skill the differ retrieving said data computer tral ences between the claimed invention and Patent has not backup.” The Schrader (4) art; objective prior evidence of institu to allow the financial been shown Lilly nonobviousness.” Eli & Co. v. Teva sent to previously tion to retrieve the data Inc., Pharm. USA Also, Inter require claims 1-9 the user. (Fed.Cir.2010). Other than the cursory data,9 clearly dis which is not net-based statement data conversion and en by the Schrader Patent. While closed cryption were “well known” at the time of expert conceded argues WhitServe’s patenting expert, CPi’s CPi has not disclosed Internet-based Schrader pointed necessary to facts for us to con data, actually was that the what he said jury clude no reasonable could have get[s] the data from the computer “client of found the rest the '007 Patent’s claims system ‘over computer financial institution Therefore, to be nonobvious. while we ” jury reasonably A could have a network.’ conclude that claim 10 of the '007 Patent is fact that data is trans concluded that the anticipated, invalid as we find that sub over the Internet does not automat ferred supports jury’s stantial evidence ver it data” be ically make “Internet-based invalidity remaining dict of no as to the cause, Patent, '007 as disclosed '007 Patent’s claims. ability modify to cen requires

element Damages C. Internet, from trally stored data across simply sending rather than across trial appeals court’s post-trial denial of its motions for JMOL Internet.10 added). example, (emphases the '007 Patent '007 Patent col. 3 11.30-44 9. For claim 1 of recites: an Internet- 10. The '007 Patent describes system backup A for onsite of internet-based processing system based data in which a comprising: data 20, computer "client executes resid- computer; a central software 15, computer; ing system processing a client the data for dis- on link between said communications central updating, deleting playing, data 12 stored Internet; computer and the processing system on the central data 15.” a communications link between said client (emphases '007 Patent col. 2 11. 50-53 add- Internet; computer and the ed). expert accurately WhitServe's described containing plurality at least one database you Internet-based data as have data that "[i]f of data records accessible said central you you constructed and send it to central containing computer, each data record computer processing, for further Internet number; client identification your- you data that data that created based executing comput- central software on said self, gets plus the data that created as a conse- receiving backup request er for a data doing quence processing on a server computer; client from said agreed good computer.” He also that a defi- executing comput- central software on said nition is: "information that could be created transmitting backup said data er for application an on the other side of the on backup computer said client for onsite computerf.]” Internet from a client comput- data client internet-based on said er. tions, damages ‘grounds including or a new trial on on the regarding CPi’s motion $8,378,145 jury’s damages damages. that the award supported by is not substantial evidence have We said that “[m]ost is, fact, against weight the clear damages appeal awards reviewed on have reviewing damages the evidence. “When supported by been held to be substantial cases, in patent apply regional we circuit Techs., evidence.” Lucent Inc. v. Gate procedural law to issues and Federal Cir- Inc., (Fed.Cir. way, 580 F.3d procedural cuit law substantive is- 2009). “Nonetheless, post-trial on JMOL pertaining patent law.” sues Wordtech motions, judges district court must scruti Sys., Integrated Inc. v. Networks Solu- carefully nize the evidence to ensure that tions, Inc., (Fed.Cir. the ‘substantial evidence’ standard is satis 2010) (internal quotation citations and fied, keeping while in mind that a reason omitted). Circuit, In the marks Second “a royalty analysis ‘necessarily able involves may grant pursu- district court a new trial approximation an element of and uncer ” ant to [Federal Rules Civil Procedure] tainty.’ Id. (quoting Unisplay, S.A. Rule 59 even when there is evidence to Co., (Fed. Am. Elec. Sign verdict, support long so as the Cir.1995)). The requiring same rule that, court ‘determines in its independent trial court to ap scrutinize the evidence judgment, has a seriously reached plies to motions for new trials. In this erroneous result or its verdict ais miscar- case, that, we believe had the trial court ” AMW, riage justice.’ 584 F.3d at 456 scrutinized the damages properly, evidence York, (quoting Nimely City New of it would have concluded that the evidence (2d Cir.2005)). F.3d Denial of a support did not the award. Because the motion for new trial is reviewed for jury’s evidentiary verdict lacked support, abuse of discretion. Id. “The standard for we that conclude the trial court abused its ordering a new trial is therefore somewhat discretion when it denied the motion for a less stern than that entering judgment new trial. law, aas matter of but our review of a a patent infringed, When is the disposition district court’s aof Rule motion patentee is entitled to “damages adequate is more deferential.” “AId. district court compensate infringement, for the but abuses its discretion when its decision is no event less than royalty a reasonable clearly fact,

based on findings erroneous of the use made of by the invention in the is based on interpretations erroneous fringer.” § patentee U.S.C. 284. The law, clearly unreasonable, the or is arbi- bears the burden proving damages. trary or Cybor fanciful.” Corp. v. FAS Lucent, 580 F.3d at 1324. “Two alterna Techs., Inc., (Fed.Cir. tive categories infringement compensa 1998) (en banc). tion are patentee’s profits the lost and the After post-trial CPi made its initial mo- royalty reasonable he would have received case, tions in this the trial court through issued an arms-length bargaining.” If Id. order upholding the only issue, verdict. The profits lost are not at the reasonable “ analysis it provided was that royalty ‘[t]he court damages. is the floor for Id. The $8,378,145.00 that concludes the jury jury’s ver- verdict form does not indicate how 25, 2010, fair, dict May entered on just, calculated, is the award was whether it is a and reasonable and adequately lump addresses sum or running royalty, or whether it legal equitable all It considerations.” includes damages addition to a reason then post trial, dismissed as moot all trial royalty. mo- able At parties both based prevent on the 15 ments were insufficient primarily theories damage their factors, Georgia-Pa see being by from tainted mis- Georgia-Pacific WhitServe’s Plywood Corp., 318 Corp. v. U.S. and fact. statements law cific (S.D.N.Y.1970),11 1116, 1120 which F.Supp. response, proffers WhitServe two a reasoned economic provide meant to are in support main theories of the verdict. negotiation, “hypothetical for a framework First, argues lump it that the sum licenses roy to ascertain the attempts ... [which] presented along it at trial with the Geor- parties would have upon which the alty support Shapiro’s factors Dr. gia-Pacific successfully negotiated an agreed had 16-19%, which, royalty ap- rate of when infringement be just before agreement infringing million in plied to reve- $42-43 Lucent, at gan.” yields royalty nue of about million. $8 the ver- arguments against main CPi’s Second, argues jury may have testimony by concern the WhitServe’s dict royalty a reasonable of about awarded $3 expert, Shapiro, Dr. and the clos- damages damages million and then increased the by coun- argument made WhitServe’s ing damages” award based on “other it felt argues improperly It sel. WhitServe suffered. We find that neither damages theo- relied on a “business-wide” theory supports verdict. non-infringing revenue ry included upon by relied royalty and caused the base It inflated several times. to be Royalty i. Reasonable damages ex- argues that WhitServe’s also hypothetical negotiation When testimony support can not the ver- pert’s yielded running royalty, would have royalty, upon rate which dict because way classic to determine the reasonable royalty calculation he based his reasonable royalty amount to multiply royalty is as is merely speculative, WhitServe’s base, represents gener which the revenue damages” theory based on the cost

“other royalty infringement, ated systems. Finally, it ar- develop CPi’s rate, represents percentage which closing arguments gues that WhitServe’s See, patentee. e.g., revenue owed to the prejudicial require and a new trial were correcting Finjan, Computing Corp., the trial court’s state- Inc. v. Secure because popu- commercial success and current 11. We have stated that the factors include: its (9) larity; utility advantages the the of (1) royalties patentee the has for received devices; patent property over old modes or others; (2) licensing patent paid the rates (10) patented the the nature of invention comparable by the licensee the use of and the benefits to those who have used the (3) patents; scope the nature and of the invention; (11) the extent to which in- the nonexclusive, (exclusive license or restrict- fringer has used the invention and the value by territory product ed or nonrestricted or use; (12) portion profit of that the of of or (4) policies type); any or mar- established selling price may customary the that be in keting by programs the licensor to maintain particular that to allow business for use patent monopoly by licensing others inventions; (13) analogous the invention or granting the or licenses to use invention portion profit the of the realizable that special under conditions to maintain the op- should be credited to the invention as (5) relationship monopoly; the commercial elements; (14) licensee, posed non-patented to its between the licensor and such as (6) opinion testimony qualified experts; the competitors; whether are the effect (15) hypothetical negoti- results of a promot- the selling patented specialty the licensee; ation between the licensor and licensee. ing products of the sales of other (7) P'ship Corp., i4i Ltd. patent and license the duration of Microsoft term; (Fed.Cir.2010), (8) aff'd, 853 n. 3 -U.S. profitability of the the established -, (2011). patent, including 131 S.Ct. 180 L.Ed.2d 131 product made under the (Fed.Cir.2010). product-specific, instead of gross profits.” case, 626 F.3d at expert expert “explained this CPi’s stated that there 1209. The 1,036,877 jury to the that gross he found that the infringing were accused transac- profit margin products for the [accused] adopted tions. WhitServe that number at was company-wide similar to the Thus, margin appeal. royalty- trial on (both 70%), roughly so ‘the [accused] equivalent generat- base is to the revenue products gross ... profit margin have transactions, equals ed those which ” ... that’s close.’ at Id. 1209-10. We 1,036,877 average times the transaction fee concluded that substantial evidence sup- in- charged CPi transactions that ported the profit award based on that mar- fringe patents. WhitServe’s There was gin expert “provided because the more dispute average factual over whether the just than conclusory opinion, on which infringing charged by service fee CPi was rely.” was entitled to Id. at 1210. expert, WhitServe’s Dr. $15.69 $41. Shapiro, original had based his calculations in Finjan, As we do not find reversible on figure provided by Dr. CPi. error in Shapiro’s $15.69 Dr. calculation of the Shapiro changed opinion incorporate his average service fee explained because he that, figure trial, on the eve of as CPi $41 however. automated more and more transactions, By multiplying average little more than 1 service fee re- $41 mained transactions, million the same over infringing time. See J.A. 15667-68 (explaining that “one would argues the ex- infringing revenue base was pect average a lower service fee when the million. $42-43 proportion electronic in- transactions argues high that number is far too CPi creased”). use, Non-infringing which com- Shapiro because Dr. up came with the higher CPi, mands a according fee ac- by dividing number gross CPi’s revenues counted for 97% of all transactions by the total number all transactions— but dropped to 60% in 2009 as CPi moved including non-infringing transactions. It away from manual transactions and start- argues including non-infringing trans- ed conducting more automated transac- actions in average fee calculation tions, using computers and the Internet. makes the unsupported by revenue base Shapiro Dr. explained that average fee the evidence it sweeps because in non- remained the during same peri- whole infringing use, for which says od, Thus, however. J.A. 15667. charges higher expert fees. CPi’s testified was free to average reason that fee that the correct revenue base was about would have allegedly decreased as the million. argues WhitServe that $18 CPi cheaper infringing progres- transactions stipulated to supporting evidence the sively up larger made proportion of total jury’s verdict in past the form of its finan- transactions. Because that hap- did not cial data and that Dr. Shapiro properly pen, it was reasonable to conclude that the used that information to determine that infringing not, fact, transactions were average CPi’s infringing service fee was cheaper and that average the transaction about jury We find that the was $41. fee is a fair approximation of the fee entitled to that accurately find repre- $41 charged in the infringing transactions. sented the average service charged fee Bank, See Bluebonnet Sav. F.S.B. v. Unit- infringing products. States, (Fed.Cir. 1348, ed 266 F.3d Finjan, 2001) patentee’s the expert calcu- (explaining damage that calculations infringer’s lated the profit margin on ac- are not an exact science and “it is enough products cused by using “company-wide, if the evidence adduced is sufficient to CPi, however, agree with that multi- make a fair and We jury to a court enable Shapiro’s royalty in Dr. rate ple errors (internal quota- approximation” reasonable opinion calculation cause his ultimate re- omitted)). citations marks and tion royalty to garding a reasonable rate be Shapiro Dr. concluded that speculative. pref it have Although would been royalty rate that have resulted would the data down to have broken erable hypothetical negotiation from a between do not find type, transaction we specific CPi and WhitServe was 16-19% of reve- reasoning point on this Shapiro’s Dr. rate, upheld, nue. A 19% of revenue if Instead, speculation. impermissible was jury’s support would verdict because cross-examination, presentation “vigorous roughly million is million. 19% $42^13 $8 evidence, instruc contrary and careful attempts justify royalty to this proof are the tradi tion on the burden points rate several of evidence. with attacking means of appropriate tional and First, it argues was Ltd. evidence.” shaky but admissible i4i royalty presented high with rate as as Corp., 598 F.3d P’ship v. Microsoft 831, during Shapiro’s testimony. 31.8% Dr. (Fed.Cir.2010) (citing Daubert v. Mer proposed, That rate was based on a but Inc., Pharm., 579, 596, rell Dow 509 U.S. unaccepted, greater license based on the (1993)), 2786, 125 L.Ed.2d 469 113 S.Ct. transaction. Dr. per Shapiro or 7% $5 — aff'd, -, U.S. 131 S.Ct. stated that divided CPi’s asserted $5- (2011). Here, CPi cross-ex L.Ed.2d 131 average equals service fee of 31.8%. $15.69 Shapiro pre Dr. on the issue and amined can support This evidence was contrary evidence.12 sented verdict because it is based on fiction and average to believe that the fee entitled Dr. Shapiro’s testimony. contradicts other infringing transactions was about $41. Basically, Shapiro Dr. took WhitServe’s Thus, support to if there was evidence hypothetical applied value of it to a $5 rate that would corresponding royalty already opined value that he had $15.69 verdict, yielded an million we have acknowledge pro $8.3 was incorrect. We may posed licenses have some value for could affirm. complains Shapiro up came evidence under the standard of the law of the 12. that Dr. circuit, Chemical, higher average fee the with his transaction pertinent Micro Inc. v. Lex- presented night he testified and tron, Inc., (Fed.Cir. before 1390-91 conclusory expert report court with a trial 2003), in this which is abuse discretion analysis to data. with no and no citations Roberts, case. United States v. report court after CPi The trial excluded (2d Cir.2011). It is difficult to tell if the objected Shapiro testify but allowed Dr. as Certainly, trial court abused its discretion. permitted WhitServe to to his conclusion warning Shapi- had CPi had more about Dr. including publish a chart information proposed testimony, may it ro’s have more jury during closing. infor- CPi states this hand, effectively countered it. On the other inadmissible, prejudicial, and re- mation was position the trial court was in the best reviewing quires Upon the trial a new trial. prejudice, any, evaluate the threat of if from transcript, is unclear whether the trial disclosure, and he chose to allow the late ruling prohibited Dr. Sha- court's should have Ultimately, aspects of it. we do not some piro testifying higher amount. from as to the the trial court's admission of decide whether judge point, the said that “whatever At one testimony we this was erroneous because going to to be exclud- [CPi] was furnished a new trial is warranted on have determined ed, that the material that's on includes grounds. again on other If it is admitted slide, got How- and it’s to be excluded.” that remand, ever, have CPi will time to formulate its permitted testify Shapiro was to Dr. objections. We the admission of rebuttal. over review parties compa- in cer- counters that must use determining royalty a reasonable evidentiary patent determining value is when tain situations. Their rable licenses however, alia, limited, by, fact royalty damages inter reasonable and that these artificially inflate the patentees comparable could were not to what WhitServe Lucent, royalty by making outrageous rate offers. sought at trial. In we said that Co., 710 Deere & Co. v. Int’l Harvester jury running-royalty See to use “[f]or (Fed.Cir.1983) (upholding F.2d agreement lump as a basis to sum award give proba- court’s decision to little district ... damages comparison some basis for license). to an offer to tive value presented must exist in the evidence to the case, jury.” 580 F.3d at 1330. case, proposed In this offer and running royalties did not constitute sub- probative rate have no value be- 31.8% in-support stantial evidence of the verdict Shapiro cause Dr. used the lower $15.69 testimony no because “the had almost transaction fee amount to determine that meaningful with which to recalculate in a an represents 31.8% of the fee. Such $5 way any running royal- the value of of the directly contrary argu- assertion is to his ty agreements to arrive at the lump-sum in ment favor transaction fee. Dr. $41 damages award.” Id. The converse of that Shapiro ways. can not have it both He applies lump pay- rule here because sum royalty can not use to boost the base $41 similarly ments should not royalty support then use to run- boost the $15.69 ning royalty testimony rates without juror rate. No reasonable could ex- have plaining how apply credited both values. The 31.8% value is to the facts of the and, pure conjecture therefore based on case. thumb, like the 25% rule is irrelevant. case, In this Dr. Shapiro cited to the two USA, Corp., See Uniloc Inc. v. Microsoft lump payments sum as support evidence to (Fed.Cir.2011) (“Gemi- an royalty Georgia- increased rate under starting point percent royalty ni’s of a 25 Pacific, any but did not testimony offer case, had no relation to the facts explain how payments those could be con such, unreliable, arbitrary, as was and ir- royalty verted to a rate. He is correct to relevant.”) high- Had he divided $5 payments support state that those a “high urged, er fee he the result would have $41 rate, er” but' explanation he offered no 12%, been significantly about lower than how much the rate should inc have been roughly upon 19% which WhitServe Lucent, in reased.13 As “we therefore argues the verdict is based. can not understand how the could adequately have probative evaluated the

Next, WhitServe cites the two value of agreements.” those 580 F.3d at lump royalties successfully negotiat sum Thus, to the extent WhitServe ar competitors. ed with CPi WhitServe ar gues the award gues running is based on a royalty the 19% rate is sup royalty, lump-sum ported by agreements the fact that are not it secured two limited, licenses, substantial lump-sum support both evidence of the approxi mately jury’s if range. Additionally, million verdict. even Whit- $2-3 sum, states award is a lump Serve those licenses were limited meant to be which it and, be, infringement, appear and based on little to no does not we note the thus, justify royalty an increased rate. verdict of million was over 3 times the $8.3 contrast, Tate, expert, royalty by dividing 13. In CPi's Mr. ex- rate of 1.3% license fee plained lump- generated by how he infring- converted one of the the revenue accused payments ing sum into what he called an effective sales.

31 justified a present- pact, and none decreased rate. lump sum licenses average of the Lucent, the award was a type superficial where This of recitation of the ed. As average license amounts factors, of the multiple Georgiar-Pacific followed con- here, evidentiary is “little there presented, remarks, clusory can not support the Factor Georgia-Pacific under basis jury’s verdict. three to four times the awarding roughly require We do not that witnesses lump-sum agree- in the average amount any Georgictr-Pacific all of the fac use 580 F.3d at 1332.

ments in evidence.” testifying damages pat tors when about argues Georgia- that the WhitServe also them, they If choose to use ent cases. support the 19% rate. As factors Pacific however, reciting making each factor and a Dr. starting point analysis, of his Sha conclusory impact remark about its on the the now discarded rule of thumb piro used damages moving calculation before on does patentee get that assumes the would about no more than tell the a what factors profit infringer’s expected 25% of the had damages analysis could take into consider before in agreement reached an (ex Lucent, ation. See 580 F.3d at 1329 Uniloc, fringement began.14 See plaining “damages that a award cannot (“Evidence relying per on the 25 at 1315 solely stand on evidence which amounts to thumb is ... inadmissible cent rule of more a royalty little than recitation of and the Federal Rules of under Daubert jurors rely numbers” and cannot on “su Evidence, because fails to tie reason perficial testimony” analysis”). with “no royalty to the facts of the case at able base Expert witnesses should concentrate on issue.”). that, starting at the He testified factors, fully analyzing applicable adjust figure, appropriate 25% it is And, cursorily reciting all fifteen. while Georgia-Pacific up using rate or down precision required, mathematical is not how much explain factors. He did not explanation why general some of both and rate,15 however, each factor affected the ly particular to what extent factor he that almost all factors testified rate, impacts royalty calculation is needed. applicable an increase in the justified im- Shapiro’s testimony neutral in terms of their We believe that Dr. a few were rule, example, we note the 14. We do not reverse based on the For entire discussion 25% 13, which we have held to be inadmissible under representative which is of factors Daubert, rule because we announced that new . Shapiro’s testimony, all of Dr. was: Landgraf of evidence after trial. See v. USI Q: you showing And here have slide 29, Prods., Film 511 U.S. 275 n. factors, analysis of the ninth and thirteenth (1994) (assuming L.Ed.2d S.Ct. you please explain and if could what those that "a new rule of evidence would not re- you applied factors are about and how trial”). quire appellate for a new an remand them in this case? ally, party objected neither to its use Addition A: Yes. The ninth factor refers to the ad- at trial and the trial court was under no vantages patented product obligation of a over the old to exclude the use of the rule. 25% Lucent, (explaining portion See 580 F.3d at 1325 method. 13 refers to the of the party objected when neither to the evidence profit Basically due to the invention. judge independent had man- and the trial "no docu- there’s whole host CPi internal accept date to exclude” the evidence we must disadvantages ments that discuss the fact, properly jury). that it was before the paper-based process prior old Uniloc, challenged unlike in where Microsoft royalty support higher that would also use, parties rule in this both used 25% rate. remand, F.3d at 1312. use case. See 632 On light be rule should revisited in 25% Uniloc. adjusted “up.” that rate profit thereon en- 25% of arguments premised and the appropriate announced that the purely specu- a He then jury the to reach couraged in case is of reve- royalty rate this 16-19% judgment. lative The record contains no evidence re- nue. of the generalized After his discussion expected profit margins that garding CPi’s factors, Shapiro Dr. con- Georgior-Pacific explain Shapiro how Dr. converted a would testimony by opining on the cluded his royalty percent profit ap- rate into one negotiation be- hypothetical of a results percent to a of revenue. Without plied parties. the He testified: tween guideposts, determining the task of some royal- in steps There’s two a reasonable § royalty reasonable under 35 U.S.C. ty calculation. One is to determine impossible. require “The law does not is base, royalty which are the revenues convey knowledge to expert an all his royalty applied. rate is upon which the Lucent, jury....” 580 F.3d at 1329. royalty rate it- step The second is the “superficial But we have also said that royalty rate multiplying self. And testimony” simple and the recitation of in rea- royalty the ... base results royalty happen numbers that to be damages. And in this royalty sonable ballpark jury’s sup- of the award will not matter, royalty rate what I used as analysis when no is port award ... percent any was 16 for revenues jury offered to the which would allow them percent to 2008 a 19 prior [and] earned probative to evaluate the value of those royalty any up revenues from 2008 numbers. See id. present. during argument oral When asked actually roy- Dr. state the Shapiro did where in the record we could find an ex alty base he used or the final reasonable planation Shapiro’s for Dr. shift from a reasonable, thought royalty amount he was percentage profits percentage attorney directed the but WhitServe’s revenue, responded WhitServe’s counsel jury’s attention to a demonstrative: that he not recall the number his could Q: you, Shapiro oh, Thank Dr. Pm— up own witness came with but “the record sorry. Shapiro, Dr. this is a chart that complete analysis with of what the his summarizes CPi’s overall revenue and Arg. is.” at 27:18- profit margin Oral gross profits years from the 2005 to be, may 27:40. It but we could not find you that the and do believe dam- expert testify profit it.16 to CPi’s CPi’s did ages you’ve associated with CPi are margins, profit that the asserting margin reasonable view these numbers? was 21.9% for all transactions between A: Yes. infringing 2002 and 2007 and 26.3% reviewing testimony, After are transactions conducted between 2002 and his we accurate, left with the unmistakable conclusion that If these numbers are Shapiro royalty represents that Dr. started at 19% of revenue be heard testimony Shapiro's 16. Much Dr. consists record and briefs are silent on which charts of his references to demonstrative charts jury. were excluded and which went to the jury, explanation shown to the but without rely pres- parties demonstratives to When on presented even recitation of numbers calculations to ent evidence or mathematical possible therein. It is that useful information jury, it is their burden to assure that the charts, was on the but are not before us captures of the data so record the substance or even WhitServe. Additional- referenced guess presented. We can not at what the ly, judge we are aware that the trial excluded saw. Shapiro's damages report. The much of Dr.

33 customers,” profit.17 points but to no evidence to and 72.24% of CPi’s tween 86.75% Thus, Shapiro quantify assume Dr. started inertia has harmed we must how Whit- at a and somehow arrived profit Finally, at 25% of argues Serve. WhitServe that the that accounted for about royalty amount jury roy could have awarded a reasonable After re quarters profits. of CPi’s three alty of an unknown amount and added Georgio viewing Shapiro’s Dr. bare-bones in accordance damages “other” with Max ap do not analysis, .these amounts Baker, Inc., F.3d well J. 1108 Pacific anywhere the evi pear supported to be (Fed.Cir.1996), and various district court Therefore, not the we do believe dence. upheld jury cases that have awards made have been able to determine jurors would royalty up plus of a reasonable other dam such an amount is whether “reasonable.” agree jury that the ages. is entitled to We Lucent, (explaining F.3d at 1330 See compensatory damages award in addition per amount of past royalty that a $2.00 royalty to a reasonable because reason “difficult, if to evalu impossible, unit is not royalty “merely able the floor below testimony price of any without on the ate” damages shall not fall.” Bandag, which Thus, royalty sug rate product). the Co., Inc. v. Gerrard Tire 704 F.2d support not by Shapiro Dr. does gested (Fed.Cir.1983). bear Patentees testimony his is con the verdict because proving damages, burden of such however and, frankly, out of clusory, speculative and, here, no support there is evidence to reality. line with economic higher award. argues perhaps next WhitServe Maxwell, upheld we award royalty jury awarded a lower reasonable expressly per pair which included $.05 million dollars of and added in several plus damages amounting other shoes find that the “other damages.” “other We per pair, sup- because it was about $.10 have damages” to which WhitServe refers by per pair royal- evidence of a ported $.10 harm caused relationship no to the (“Thus, ty. 86 F.3d at 1110 did verdict. support and also can not arbitrarily not increase the award of dam- Damages” ii. “Other Instead, ages. verdict reflects damages the actual sustained Max- that, argues first be WhitServe ”). .... well WhitServe has demonstrat- developing spent cause CPi million $5-10 sales, rates, royalty ed lost diminished million infringing systems, could $5-10 Therefore, damages. compensable other help be added to the award to any damages specula- additional would be mar competitive “overcome the harm and not fall “within damages tive and the do infringe distortion caused ket CPi’s range encompassed by the record as a Cross-Appellant’s ment.” Br. 45. While at Unisplay, whole.” 519. development might costs be relevant CPi’s licensing negotiation, a hypothetical jury’s damages We find that the justification an award that there is no characterized as a award —whether rea royal top running adds those costs on of a royalty damages” or “other sonable ty requires § based verdict. 35 U.S.C. 284 —must conjec the result of sheer surmise and in be patentees compensated be for the ture, proof of economic entry into “divorced from fringement, not that their harm to the claimed invention and industry fully financed. See 35 U.S.C. linked be juris “sticky damages § next ... inconsistent with sound 284. WhitServe mentions = = 72.24%. 86.75% 19/21.9 19/26.3 Lansa, ResQNet.com, moot, prudence” gued Inc. v. that its motions were not (Fed.Cir.2010). Inc., We court post-trial denied the motions on the find, therefore, that the trial court abused Again, premised merits. the court rul grant its discretion when it failed to CPi a ing solely on that “damages its view on, AMW, damages. new trial See 584 awarded in of plaintiff May favor on (stating F.3d at 456 a new trial can be 2011(sic) 25, complete compen constituted granted seriously when the verdict is erro respect sation to with this matter.” Whit- neous). vacate the We award and remand Inc., Computer Serve LLC v. Packages, for a trial on damages.18 new (D.Conn. 06-CV-01935, slip op. No. at 1 2011) (“WhitServe’s 5,May Motion for Re Cross-Appeal II. WhitServe’s consideration as to Motions Denied as cross-appealed, asserting WhitServe has Moot”) (ECF 488). No. that the district court improperly denied The trial court’s treatment of chal- requests permanent injunction, its for a lenged post-trial inadequate. motions was license, compulsory interest, prejudgment The trial denying court’s order those mo- fees, damages, attorneys’ enhanced and a tions is vacated and the motions are re- above, post-trial accounting. As noted for light gov- manded consideration in trial court only addressed each motion erning legal principles and briefly. trial consideration of court denied Whit- request charge upon permanent injunction jury Serve’s for a which the verdict in that, in page stating one favor plaintiff premised. because Whit- of the was — Serve had failed to irreparable establish harm ongoing from in- infringement, no A. Relief for Ongoing Infringement

junction should issue. WhitServe’s motion cross-appeals WhitServe first accounting for an was denied as moot with- trial provide any court’s refusal to relief out explanation. WhitServe’s other mo- ongoing for CPi’s infringement pat of its tions were all originally denied as “moot” Specifically, ents. argues WhitServe it light of the court’s finding order that was an abuse of “adequately award discretion for the trial addressed all equitable legal court deny request considerations.” its a per When either sought WhitServe injunction reconsideration and ar- manent ongoing royalty or an urged 18. CPi expenses also a new trial top royalty); because Whit- tion on of a reasonable impermissible Serve plea made an Inc., emotional Corp. Separations, Pall v. Micron 66 F.3d jury during closing arguments to the that was 1211, (Fed.Cir.1995) ("[T]he purpose sufficiently not corrected the trial court. compensatory damages punish is not to Cos., Transp. See Marcic v. Reinauer infringer, patentee but to make the whole.” (2d Cir.2005) ("A party generally (citing Mfg. Top Aro Co. v. Convertible Re- entitled to a new trial if the district court Co., 476, 507, placement 377 U.S. 84 S.Ct. committed errors that were a clear abuse of (1964))). 12 L.Ed.2d 457 Because clearly prejudicial discretion that were to the remand, separate grounds there are we do (internal outcome of the trial.” citations and correcting not decide whether the trial court's quotation omitted)). During closing, marks statements, clearly which did not indicate that law,” WhitServe "according stated that to the "compensa- WhitServe was not entitled to $5-10 could add to the million award hell,” years tion” for "four were sufficient "compensation years as for the four of hell” prevent prejudice undue to CPi from this resulting litigation. beyond from the It is remand, impermissible argument. On we juries may debate litigation that not award trust the trial court will ensure such punish infringers. costs or See Mahurkar v. blatantly improper statements are not re- Bard, Inc., (Fed.Cir. C.R. peated. 1996) (forbidding heavy litiga- a "kicker” for uncompensated setting it for future acts abused its discretion in the ongoing and leave rate.”). infringement by except royalty via resort Even under highly this responds review, litigation. CPi deferential standard of serial we find the enjoin refused to properly trial court trial questions court’s treatment of the failed to infringement because WhitServe prospective relief inadequate. According- irreparable harm establish would suffer ly, we remand for further consideration of effectively grant- was pro- WhitServe’s alternative motions for a prospective paid- relief the form of ed remedy. spective forward-looking relief was up license so no Preliminarily, can accept we CPi’s necessary. suggestion that a paid-up license was Although awarded. the heard evi- types There are several of relief lump-sum dence of two licenses infringement that a court can WhitServe ongoing for (1) previously granted, injunction; parties had the grant consider: it can an limited (2) damages their parties attempt arguments past infringe- it can order the to to to in ment rather than negotiate projected terms for future use of the future in- (3) vention; an grant ongoing royal fringement. it can was instructed to (4) ty; “damages,” or it can exercise its discretion to award which definition cov- forward-looking that no relief is only past jury’s conclude ers harm. The verdict did in appropriate the circumstances. See Tel not indicate that the award was meant to Inc., Techs., Sys., 612 cordia Inc. v. Cisco cover future patents, use of WhitServe’s (Fed.Cir.2010) (“If 1365, the dis F.3d 1379 the trial interpret court did not permanent trict court determines that a Telcordia, award as such. See 612 at F.3d warranted, injunction is not the district (Fed.Cir.2010) 1377-78 (explaining trial encouraged, may, court and is to allow the courts have discretion to interpret verdict license.”); parties negotiate Paice forms). We, accordingly, decline to find 1293, Toyota Corp., v. Motor LLC that post-trial properly relief was denied (Fed.Cir.2007) (“[AJwarding an 1314-15 paid-up because a license was awarded. ongoing royalty ‘necessary’ where to effec Labs., Innogenetics, N.V. Abbott Cf. remedy justify tuate a ... does not (Fed.Cir.2008) 1363, F.3d 1380-81 (holding of such relief as a matter of provision injunctive relief was unwarranted permanent injunction course whenever a already when the award included imposed.”). relief). prospective injunction, All of these decisions are reviewed As for the while trial See, e.g., eBay for abuse of discretion. court stated that had failed to WhitServe L.L.C., harm, MercExchange, Inc. v. irreparable 547 U.S. establish it did not ex- 388, 391, plain why 126 S.Ct. 164 L.Ed.2d 641 it reached that conclusion. For (2006) (“The instance, grant deny decision the trial court did not address permanent injunctive relief is an act of WhitServe’s contention that was a direct court, equitable discretion competitor district the market via its subsid- NetDocket, iary, reviewable on for appeal abuse of discre nor discuss whether Telcordia, (“[T]he tion.”); monetary 612 F.3d at damages alternatively were adequate district court did not abuse its discretion available and to address the for- harm, by directing parties negotiate ward-looking any, if WhitServe Paice, record, appropriate royalty.”); might terms of the suffer. From such a it is (“[T]his impossible 504 F.3d at 1315 court is unable to to conclude that the trial court properly court discretion to determine whether district exercised its assess appropriate. prejudgment interest. “This court reviews injunctive relief is whether injunctive may very relief well not prejudgment a district court’s denial of While facts, simply on these we appropriate be an Crys interest for abuse of discretion.” tell on this record.19 can not Corp. tal v. TriTech Semiconductor Micro Int’l, Inc., electronics regarding the trial The record (Fed.Cir.2001). rule, “prejudgment As a li compulsory court’s refusal to award a interest should be awarded under [35 the trial court sparse;' cense is even more § justification U.S.C. absent some 284] may it. this never even addressed While withholding such an award.” Gen. Motors apparently be first re because 648, 657, Corp. Corp., v. Devex 461 U.S. quested reply support this relief in its (1983). An 103 S.Ct. 76 L.Ed.2d injunction, permanent its motion for interest prejudgment award carries out record, again, does not allow us to draw Congress’s “overriding purpose of afford Paice, explained we that conclusion. ing patent complete compensation” owners a trial explain court’s failure to patentee’s damages since a also include the ongoing royalty precludes basis rate between, reviewing “forgone money this court from the decision for use of the discretion, thus, an abuse of that re infringement judg time of and the date of appropriate mand was so the trial court 655-56, 103 at ment.” Id. S.Ct. 2058. give why could some “indication as to that appropriate.”

rate is See 504 F.3d at 1315 the trial court When denied the (trial explain failure to court’s reasons for interest, request prejudgment it stated royalty its decision regarding ongoing pre that “an award of prejudgment interest is review). meaningful appellate vents While necessary $8,378,145.00 jury’s not as the a trial court required grant is not to a adequate compensate award is for the compulsory injunc license even when an infringement defendant’s on the plaintiffs denied, tion is the court adequately must patents.” given District are courts broad explain why deny it chooses this alter interpret discretion to verdict forms. See native relief when it does so. Telcordia, at 1377-78. this case, however, judge specifically the in

We, therefore, vacate and remand jury they may structed the “not this matter and direct the trial court to any any award damages.” interest on The propriety address the of prospective relief not, jury’s accordingly, award could consti explain any and to it decision with makes compensation tute for interest and the trial course, respect thereto. Of this decision denying pre court abused its discretion in light any must be made in of both new damages judgment analysis award and all relevant interest without further equitable Devex, justification. considerations. or See at U.S. (explaining prejudg 103 S.Ct. 2058 B. Prejudgment Interest “necessary ment interest is to ensure that patent WhitServe owner is cross-appeals placed good also as the trial court’s denial of position its motion for as he would have been in had the note, moreover, test”). instance, 19. We that the trial court did four-factor For as WhitServe any argues, not address of the other relevant factors while there was considerable evidence equitable analysis generally to the non-infringing prod- is to that CPi had substantial employ assessing propriety portfolio, when of in- ucts in its court did not trial junction eBay, possible relief. See 547 U.S. at consider whether absence of (explaining plaintiff might weigh 126 S.Ct. 1837 that "a harm to CPi in favor anof in- seeking permanent injunction satisfy junction. must Ltd., BP royalty Corp. Hoechst Celanese Chems. into a reasonable infringer entered (Fed.Cir.1996)). is vacated and 78 F.3d 1575 The denial agreement”). for a of whether

remanded determination infringe found CPi’s in light is warranted interest prejudgment willful, appeal ment to be and CPi has not and, if deemed any damages new award finding. “Upon finding ed that of willful warranted, as to explanation for a full infringement, a trial court should provide why. increasing reasons for not a damages finding a exceptional award or for not case Damages C. Enhanced awarding attorneys for the purpose of case, only fees.” at 1572. In this Id. cross-appeals next provided increasing reason for not court’s denial of enhanced the district jury’s award was that the verdict constitut attorneys’ despite fees damages and “complete compensation.” ed Enhanced finding infringement. of willful As however, damages, punitive, are not com consider, other motions we now with the only can be pensatory, and awarded court denied as “moot” Whit- the district 1570; Odetics, at judge’s discretion. Id. and, damages, motion for enhanced Serve’s Storage Corp., Inc. v. Tech. reconsideration, them on denied on (Fed.Cir.1999). Additionally, “com that the verdict constituted grounds judge told the explicitly compensation.” “The district court’s plete “may anything not add to the amount of damages is on to enhance decision whether damages punish infringer accused discretion, is, for abuse of reviewed Thus, to set an example.” jury’s ver clearly the decision was based on whether not, not, dict and properly did can include fact, an findings erroneous incorrect find, therefore, damages. enhanced We law, of judg conclusion of or clear error that the trial court abused in its discretion Spectralytics, Corp., ment.” Inc. v. Cordis denying damages the motion for enhanced (Fed.Cir.2011). 1336, 1347 justification; without independent we re mand the issue for a determination of grant The decision whether to en damages whether enhanced are warranted under damages hanced as allowed 35 explanation grounds and an of the for that requires two-step process. § U.S.C. 284 determination. CBK, Ltd., v. F.3d Jurgens 80 1570 (Fed.Cir.1996). “First, the fact-finder Attorneys’ D. Fees infringer determine whether an is must cross-appeals the trial WhitServe guilty upon of conduct which increased attorneys’ “The court’s denial of its fees. so, damages may based. If the court be exceptional may court in cases rea award determines, exercising its sound dis then attorney prevailing sonable fees to the extent, cretion, whether, to what to and “Although § an at party.” 35 U.S.C. 285. damages given increase the award the to torney mandatory is not when fee award tality of the circumstances.” Id. “An act found, infringement prece willful has been infringement culpa th[e] of willful satisfies that the court should ex dent establishes is, doubt, bility requirement and without not to plain attorney its decision award requirement sufficient to meet the first 649 F.3d at 1349. As Spectralytics, fees.” compensatory damages increase a award.” Spectralytics, in Portec, Inc., (citing Corp. Id. Read (Fed.Cir.1992), separately court did not ana- supersed F.2d 826-27 district issue, lyze attorney fee but denied grounds recognized on other as ed 31, 2010, conjunction up on financial data to March attorney fees in with denial Indeed, compensatory therefore does not include damages. similar of enhanced damages infringement for after CPi’s this may be relevant to both considerations argues jury’s date.” that the award damages attorney fees. enhanced paid-up accounting was a license and no However, § in the situations which necessary. may § be invoked are not iden- attorney example, tical. For misconduct “District courts have broad discretion to aggravation litigation of the or other form, interpret ambiguous an verdict be may heavily respect with process weigh partici cause district courts witness and fees, not for enhance- attorney but pate directly process.” trial damages. ment of Telcordia, Here, 612 F.3d at 1378. howev (internal omitted). er, Therefore, only trial did the court not exercise Id. citations its discretion under Telcordia and find that the trial court abused its discretion a paid-up award included license why attorneys’ fees were failing explain conduct, post-verdict but we have al and the issue is remanded for unwarranted ready nothing found the record a proper determination. support would such conclusion. Much E. Accounting Post-Trial interest, therefore, prejudgment like Finally, appeals trial court abused its discretion when it post-trial accounting. denial of a “[W]hen award, explain failed to its reasons for damages by jury, are not found the court denying, damages period for the between (em § shall assess them.” 35 U.S.C'. 284 judgment. verdict and Accord added). phasis District courts have discre ingly, we vacate ruling. and remand this damages tion to in periods award normally While we would direct an ac fringement jury. not considered counting of damages flowing post- from USA, Int’l, See Fresenius Inc. v. Baxter pre-judgment infringement, verdict and Inc., (Fed.Cir.2009) damages our decision to vacate the award (holding that “the district court was within and order a trial new would make such an impose royalty its discretion to [post- remand, on accounting premature. On the jury] verdict sales not in considered the trial give court shall due consideration to fully compensate” order to patentee); any request for an accounting following a Finjan, 626 F.3d at new (explaining damages 1212-13 verdict.20 that the trial court erred when it did not Whitmyer’s Cross-Appeal III. damages entry

award for the time between judgment entry injunction of and of an separate cross-appeal, his because patentee otherwise the would not Whitmyer claims the court erred in not Ecolab, fully compensated); be awarding § Inc. v. fees under 35 U.S.C. 285 or (Fed. 1335, Corp., FMC n. 1353 5 sanctions under Federal Rule of Pro Civil Cir.2009), Ecolab, part by in Inc. A cedure 11. district court’s Rule 11 de modified 154, v. FMC Corp., Fed.Appx. 366 155 termination an is reviewed for abuse of (Fed.Cir.2009) (stating that an accounting Spalding discretion. v. Antonious & Ev Cos., Inc., (Fed. adequately 1066, should be ordered in order to 1072 enflo Cir.2002). compensate plaintiff). WhitServe A fee award under 35 U.S.C. jury’s § states that the verdict requires finding “was based 285 first that the case damages light 20. WhitServe request asks court to fix 2010 and trial. in This is moot period damages of time between March of remand for a new trial. Labs., in part. Forest Inc. v. Ab- Schrader Patent is exceptional. affirmed was (Fed.Cir. Labs., 1324, 1327 F.3d The claim regarding bott verdict 2003). asked for sanctions and the '007 Whitmyer is reversed because that allegedly CPi because CPi against claim is as anticipated fees invalid tri- engaged litigation. in “vexatious” The Schrader Patent. court motion because Whit- al denied 3) jury’s damages The award is vacated warranting

myer to set forth facts “failed and remanded for new trial. relief.” such 4) The trial holdings regarding court’s Whitmyer complains On appeal, post-trial for a WhitServe’s motions declaratory judgment against filed a CPi permanent injunction, li- compulsory capacity and personal deposed him his cense, interest, prejudgment en- a total him 5 times for hours. CPi fees, hanced damages, attorneys’ and Whitmyer deposed in his was states a post-trial accounting vacated are personal capacity principal as the sole and remanded. and and NetDocket as a mem- 5) trial Whitmyer’s denial court’s firm, Onge of the law which is Net- ber St. request for sanctions and fees is af- representing Docket’s client and is sole firmed. Whitmyer in also argues this matter. CPi AFFIRMED-IN-PART, REVERSED- that, only because WhitServe’s assets are IN-PART, VACATED-IN-PART, AND justified in patents, it was counter- REMANDED. him claiming against personally order to corporate veil and recover its

pierce Costs points It out that Whitmyer fees. also filed, withdrew, No costs. any never motions that

argued plead failed to sufficient MAYER, Judge, dissenting. Circuit against Whitmyer, thereby

claims con- acting vexatiously. ceded that CPi was not I respectfully dissent. There be can no against Whitmyer CPi’s claims are While infringement 5,895,468, Patent U.S. Nos. certainly questionable, including origi- 6,049,801 6,182,078 (collectively designation of him nal as a “counterclaim patents”) “WhitServe because are in- defendant,” reviewing after Whitmyer’s patents valid. The WhitServe are “barred sanctions, motion for fees as well as 101,” § at the threshold [35 U.S.C.] issue, briefing his truncated on the we Diehr, Diamond 450 U.S. decline to find an abuse of discretion in the 1048, (1981), S.Ct. 67 L.Ed.2d 155 because of court’s denial sanctions. We also find they are directed to the idea abstract that did in concluding the court not err it provide people is useful to with remind- that the case not exceptional. was There- ers of approaching due dates and dead- fore, the trial of Whitmyer’s court’s denial Mayo lines. See Collaborative Servs. v. request for fees and sanctions is affirmed. — Labs., Inc., U.S.-, Prometheus 132 1289, (2012) 1303, S.Ct. 182 L.Ed.2d 321 Summary (explaining that performs section 101 a 1) infringement The verdict of is function”); “screening Kap- vital v. Bilski — regard with to affirmed the valid -, 3218, 3225, pos, U.S. 130 S.Ct. claims. (2010) 177 L.Ed.2d 792 (noting that wheth- 2) finding the pat- subject verdict '007 er claims are to statutory directed test”).

ent to be not a anticipated matter is “threshold 40 patents simply Because WhitServe

I. widely-understood a basic and describe Bilski, rejected Court Supreme In provide people to concept it-is useful —that it not “add” because did application an and important of due dates with reminders idea of the otherwise abstract anything to concept us apply then deadlines—and risk. 130 S.Ct. at minimizing economic technology and ing computer conventional to method failed The claimed meet 3231. Internet, they fail to meet section 101’s requirements be- eligibility section 101’s subject requirements. matter eligibility hedg- of idea simply cause it described process on a running a particular “While applied it risk and ing economic against efficiency computer undeniably improves and using approaches” “familiar statistical ab accuracy, cloaking an otherwise and analysis techniques.” “well-known random computer- of a guise stract idea likewise, 3224, Mayo, pro- Id. at bring claim insufficient to implemented is section were invalidated under cess claims MySpace, Inc. v. it within section 101.” a law" they merely described 101 because (Fed. 1250, Corp., 672 F.3d 1267 Graphon “well-under- applied using and nature (footnote Cir.2012) J., (Mayer, dissenting) routine, stood, conventional” means. [and] Servs., omitted); v. Bancorp LLC Sun see at 1294. S.Ct. (Fed. Co., F.3d 1266 Assurance Life Prior analysis applies here. to A similar Cir.2012) (concluding that claims directed in the disclosed WhitServe “invention” managing a a computerized to method attorneys professionals other patents, policy life insurance protected stable value docketing systems keep to used manual Dealertrack, 101); Inc. fell outside section deadlines for their upcoming track of (Fed.Cir. Huber, v. 674 F.3d 5,895,468 Patent No. col. clients. See U.S. 2012) to (holding that claims drawn docketing sys- 1 11. manual 10-57. These satis applying for credit did not method of time-consuming tems were inefficient the fact fy notwithstanding section they attorney an or other required because they requiring contained a limitation peri- to calendar professional “examin[e] aided”); “computer the invention be deadlines,” upcoming to notice odically Inc. Am. Lease Props., Fort Master multiple if reminders [a client] “send (Fed.Cir.2012) LLC, 1317, 1323 1 II. “Another necessary.” Id. col. 38^1. that claims which recited “us (concluding systems disadvantage” docketing these an other ing computer” implementing “not modern employ was that did patent- idea were wise abstract investment media, such computer communications as ineligible); CyberSource Corp. v. Retail col. II. 54-56. The the Internet.” Id. (Fed. Decisions, Inc., patents purport to solve these Cir.2011) (emphasizing “that the basic general problems disclosing use to an process claim drawn character of computers and Internet purpose changed by claiming abstract idea keep deadlines upcoming track client computers, byor only performance that such generate and to client reminders process program embodied in claiming id. col. 2 approaching. deadlines are See medi computer on a readable instructions sys- claimed (explaining 11.21-22 the um”). prepares reminders “automatically tem dates”); an to one “[L]imiting abstract idea field ... client see also id. col. for due compo- adding postsolution 2 the of use or token (stating system 11.24-25 “trans- patenta- concept not make the mits nents [does] reminders” of client due dates “over Internet”). at Accord- 130 S.Ct. 3231. the ble.” Bilski

41 the system the fact that claimed is II. ingly, limited to communications be- arguably may court an “[A] consider issue ante attorneys professionals and other tween ... cedent and ultimately dispositive bring their insufficient to it and clients is it, the before an dispute even issue the Likewise, 101. the ambit of section within parties identify fail and brief.” See U.S. con- patents fact that the WhitServe Indep. Nat’l v. Agents, Bank Ins. 508 U.S. apparatus is tain both method and claims 439, 447, 2173, 113 S.Ct. 124 L.Ed.2d 402 them patent-eligible. to render insufficient (“[T]he (1993) (citations at Bancorp, quotation F.3d 1277 and See 687 internal omitted). correctly court treated the district assert- It appropriate marks to take system claims ed and medium as no differ- up an not specifically issue raised ent from the asserted method claims parties significant where there have been eligibility patent purposes.”); CLS Bank applicable changes in law since the trial 1341, v. Corp., Int’l Alice 1353 court’s decision. See v. Hormel Helvering, (Fed.Cir.2012) (“Because mere computer 552, 558, 719, 312 U.S. 61 S.Ct. 85 L.Ed. implementation cannot render an other- (1941); 1037 see also v. Kemper Kamen eligible, abstract patent wise idea the anal- Servs., Inc., 90, 99, Fin. 500 U.S. 111 S.Ct. ... ysis must consider whether the assert- 1711, (1991) (“When 114 L.Ed.2d 152 an media) (method, system, claims and are ed issue or claim is properly court, before the substantively nothing directed to more is not particular court limited to the truth than fundamental or disembodied legal parties, theories advanced but (citations omitted)). concept....” When rather retains the independent power to assessing apparatus whether method or identify apply the proper construction requirements claims meet the of section law.”). governing 101, patent eligibility “depend does not simply on the art.” draftsman’s Parker court, was When it before the trial Com- Flook, 593, 584, 2522, 437 98 57 U.S. S.Ct. (“CPi”) puter Packages, Inc. unsuccessful- (1978). 451 L.Ed.2d ly sought declaratory to obtain a judgment patent system Because the is designed that were patents invalid promote public “the disclosure of new under 101. App’x 136, section See Joint in technology,” useful advances Pfaff Although CPi did not include a dis- Elecs., Inc., 55, 63, v. Wells 525 U.S. 119 cussion of section 101 it when filed its 304, (1998), 142 261 sec S.Ct. L.Ed.2d here, appeal it up briefs we can take be- analysis on tion turns whether Supreme Mayo decision, cause the Court’s claims disclose “ new or technology some filed, which issued after CPi’s briefs were ” Mayo, ‘inventive at concept,’ 132 S.Ct. makes clear patents WhiWServe applying an abstract idea or law “ ” disclose no ‘inventive concept,’ S.Ct. can prerequisites of nature. Section 101’s arguably at that would even confer where, here, be patentee not satisfied as patent eligibility. Forshey See v. Principi, simply describes a concept well-known (Fed.Cir.2002) (en it applies using computer conventional banc) (“[Djecision of an issue decided technology Mayo, and the Internet. See or permitted raised below is when there is at (concluding 132 S.Ct. that a pro a change jurisprudence in the of the re- calibrating proper cess for dosage viewing Supreme court Court after thiopurine outside drugs fell section nothing consideration the case the lower significance” because “add[ed] nature). court.”). application majority to the of a law of in refusing errs the Whit- whether question address eligibility 101’s meet section patents

Serve to re- requiring

requirements relitigate the the trial court

turn to damages measure of

appropriate invalid infringement plainly

alleged Sch. Bd. Rich- Bradley See claims.

mond, 696, 711, 94 S.Ct. 416 U.S. (1974) (“[A] apply court is to

L.Ed.2d time it renders its law in effect at the

decision, would result doing unless so statutory injustice or there is di-

manifest legislative history to con-

rection Hormel, 557, 61 at S.Ct.

trary.”); 312 U.S. (“Rules practice procedure are justice, promote the ends of

devised undeviating rigid them. A

to defeat under which

judicially practice declared invariably and un- review

courts of would decline to consider all circumstances

der previously which had not questions

all would be out of specifically urged

been

harmony policy.”). with this

In re INC. RAMBUS

No. 2011-1247. 90/010,420.

Reexamination No. Appeals,

United States Court of

Federal Circuit.

Aug.

Case Details

Case Name: Whitserve, LLC v. Computer Packages, Inc.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Aug 20, 2012

Citation: 694 F.3d 10

Docket Number: 2011-1206, 2011-1261

Court Abbreviation: Fed. Cir.