Pavo Solutions LLC v. Kingston Technology Company, Inc. ( 2022 )

Case: 21-1834 Document: 57 Page: 1 Filed: 06/03/2022
United States Court of Appeals
for the Federal Circuit
______________________
PAVO SOLUTIONS LLC,
Plaintiff-Appellee
v.
KINGSTON TECHNOLOGY COMPANY, INC.,
Defendant-Appellant
______________________
2021-1834
______________________
Appeal from the United States District Court for the
Central District of California in No. 8:14-cv-01352-JLS-
KES, Judge Josephine L. Staton.
______________________
Decided: June 3, 2022
______________________
BENJAMIN T. WANG, Russ August & Kabat, Los Ange-
les, CA, argued for plaintiff-appellee. Also represented by
JACOB BUCZKO, MINNA CHAN, MARC A. FENSTER, ADAM
HOFFMAN, ANDREW D. WEISS.
MICHAEL JOHN BALLANCO, Fish & Richardson PC,
Washington, DC, argued for defendant-appellant. Also
represented by BRIANNA LEE CHAMBERLIN, Minneapolis,
MN; DAVID M. HOFFMAN, Austin, TX.
______________________
Before LOURIE, PROST, and CHEN, Circuit Judges.
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PROST, Circuit Judge.
Kingston Technology Company, Inc. (“Kingston”) ap-
peals the U.S. District Court for the Central District of Cal-
ifornia’s judgment that Kingston willfully infringed claims
1, 4, and 24 of U.S. Patent No. 6,926,544 (“the ’544 patent”)
and awarding $7,515,327.40 in compensatory damages, en-
hanced by 50 percent. We affirm.
BACKGROUND
I
The ’544 patent is generally directed to “[a] flash
memory apparatus having a single body type rotary cover.”
’544 patent Abstract. According to the patent, flash
memory devices use covers to protect USB ports from dam-
age and foreign substances. Because prior-art covers were
separable from the flash memory apparatus, they could of-
ten be lost, or the joint between the cover and the device
could loosen and damage the USB port. The ’544 patent
purports to solve these problems using a “cover [that] is not
completely separated from the main body during use.” Id.at col. 2 ll. 23–27. The patent describes a device in which
a flash memory apparatus “includes a flash memory main
body.” Id. at col. 3 ll. 11–14. The flash memory main body
has a case with a “hinge protuberance.” Id. at col. 3 ll. 20–
23. A cover is formed as a U-shaped cavity with a circular
hinge hole on one end for receiving the hinge protuberance
on the case. Open sides in the cover allow “the flash
memory main body . . . to go in and out of the cover.” Id. at
col. 3 ll. 55–58. Figure 2 of the ’544 patent most clearly il-
lustrates these features and the cooperation between the
flash memory main body 30 and the cover 40:
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Claim 1 is illustrative of the issues on appeal and re-
cites:
A flash memory apparatus comprising:
a flash memory main body including a rectangular
shaped case within which a memory element is
mounted, a[] USB (Universal Serial Bus) terminal
piece electrically connected with the memory ele-
ment and installed at a front end of the case in a
projecting manner, and a hinge protuberance
formed on at least one side of the case; and
a cover including [a] pair of parallel plate members
facing each other and spaced by an interval corre-
sponding to the thickness of the case, the cover hav-
ing an open front end and a closed rear end with a
pair of lateral side openings; the parallel plate
members having at least one hinge hole receiving
the hinge protuberance on the case for pivoting the
case with respect to the flash memory main body,
whereby the USB terminal piece is received in an
inner space of the cover or exposed outside the
cover.
’544 patent claim 1 (emphasis added); see also J.A. 116
(Certificate of Correction).
II
On August 22, 2014, CATR Co. (“CATR”) 1 sued King-
ston in the Central District of California, alleging infringe-
ment of the ’544 patent. Kingston sought inter partes
review (“IPR”) of the patent, and the district court stayed
the litigation pending the outcome of that proceeding. A
1 Pavo Solutions, LLC (“Pavo”) was substituted for
CATR on October 3, 2016.
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subset of the ’544 patent’s claims survived IPR, the district
court lifted the stay, and the case continued.
In its claim-construction order, the district court
agreed with Pavo that the claim phrase “pivoting the case
with respect to the flash memory main body” included a
clerical error, and it judicially corrected the language by
replacing the word “case” with the word “cover” so that the
claim read “pivoting the cover with respect to the flash
memory main body.” Pavo Sols., LLC v. Kingston Tech.
Co., Case No. SACV 14-1352, 2018 WL 5099486, at *4 (C.D.
Cal. Sept. 10, 2018) (“Claim Construction Order”) (empha-
sis added). The district court determined that the error
was “evident from the face of the patent” because “[t]he
case is described as a part of the main body, so it is not
possible for it to rotate with respect to the body.” Id. (em-
phasis in original). The correction was not subject to rea-
sonable debate, in the district court’s view, because
Kingston’s proposed alternative construction—replacing
“flash memory main body” with “cover” so that the claim
reads “pivoting the case with respect to the cover”—re-
sulted in the same claim scope. Id. at *3. Finally, the dis-
trict court noted that the prosecution history was
consistent with the correction. Id. at *4. Though Kingston
had submitted and relied on expert testimony in support of
its arguments that the correction was not appropriate, the
court discounted the testimony because it was not con-
sistent with the intrinsic record. Id.The case proceeded to trial, where Pavo’s damages ex-
pert, Mr. Jim Bergman, presented a profit-based model of
reasonable-royalty damages. He relied on an earlier set-
tlement agreement between CATR and IPMedia, a USB-
drive manufacturer, in which IPMedia agreed to pay a 1-
cent royalty for future sales of its product and represented
that 1 cent was “approximately Twenty-Five Percent (25%)
of the profits recognized by IPMedia from sales” of its prod-
uct. J.A. 1649, 1652. Accounting for differences between
IPMedia and Kingston—the former a smaller enterprise
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with lower profitability—Mr. Bergman concluded that
Pavo and Kingston would have agreed to a profit split of
18.75 percent, which amounted to 40 cents per unit.
Before trial, Kingston sought to exclude Mr. Bergman’s
testimony, arguing that his reliance on the 25-percent rep-
resentation was incorrect and speculative. The district
court denied the motion, observing that Mr. Bergman re-
lied only on express terms in the IPMedia license, so his
analysis did not involve any impermissible speculation.
See Pavo Sols. LLC v. Kingston Tech. Co., Case No. SACV
14-1352, 2019 WL 8138163, at *18 (C.D. Cal. Nov. 20,
2019).
At the conclusion of trial, the jury returned a verdict
that Kingston had willfully infringed claims 1, 4, and 24 of
the ’544 patent and awarded Pavo a 20-cent reasonable
royalty. Following trial, Kingston moved for judgment as
a matter of law, which the district court denied. Kingston
appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
Kingston makes five arguments on appeal, three of
which we substantively address. First, Kingston argues
that the district court should not have judicially corrected
the phrase “pivoting the case with respect to the flash
memory main body” because the language does not contain
an error and, even if it does, the error is neither minor nor
obvious. Second, Kingston argues that it could not have
formed the intent to infringe necessary to support a willful-
infringement verdict because it reasonably relied on the
fact that it does not infringe the ’544 patent’s claims as
originally written. Third, Kingston argues that the district
court should not have permitted Mr. Bergman to rely on
the 25-percent-profit representation in the IPMedia license
because that provision is a non-payment term unrelated to
the royalties CATR received. We address each of these ar-
guments in turn, but we do not address Kingston’s other
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two arguments—(1) that the district court issued a cura-
tive jury instruction that contradicted the parties’ agreed
construction for “pair of parallel plate members,” and
(2) that the district court permitted Pavo to prejudice the
jury by referring to Kingston’s total revenue for sales of the
accused products—because, for the reasons discussed be-
low, we conclude that Kingston forfeited them.
I
We first address Kingston’s argument that the district
court should not have judicially corrected “pivoting the case
with respect to the flash memory main body.” We review a
district court’s claim construction de novo, Apple Inc. v. Wi-
LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022), and any sub-
sidiary fact findings about extrinsic evidence for clear er-
ror, Forest Labs., LLC v. Sigmapharm Labs., LLC, 918
F.3d 928, 932–33 (Fed. Cir. 2019). We conclude that the
district court appropriately corrected an obvious minor
clerical error in the claims.
A district court may correct “obvious minor typograph-
ical and clerical errors in patents.” Novo Indus., L.P. v. Mi-
cro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
Correction is appropriate “only if (1) the correction is not
subject to reasonable debate based on consideration of the
claim language and the specification and (2) the prosecu-
tion history does not suggest a different interpretation of
the claims.” Id. at 1354. The error must be “evident from
the face of the patent,” Grp. One, Ltd. v. Hallmark Cards,
Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005), and the determi-
nation “must be made from the point of view of one skilled
in the art,” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg.
Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009). In deciding
whether a particular correction is appropriate, the court
“must consider how a potential correction would impact the
scope of a claim and if the inventor is entitled to the result-
ing claim scope based on the written description of the
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patent.” CBT Flint Partners, LLC v. Return Path, Inc.,
654 F.3d 1353, 1359 (Fed. Cir. 2011).
A
We begin by addressing whether the claim language
contains an obvious minor typographical or clerical error.
It does. The reference to “case” in the phrase “pivoting the
case with respect to the flash memory main body” in both
claims 1 and 24 is a mistake. The error is clear from the
full context of the claim language. A first clause describes
the physical structure of the device, including the “for piv-
oting” language, and a second clause describes the pivoting
motion itself:
the parallel plate members [of the cover] having at
least one hinge hole receiving the hinge protuber-
ance on the case for pivoting the case with respect
to the flash memory main body, whereby the USB
terminal piece is received in an inner space of the
cover or exposed outside the cover.
See ’544 patent claim 1 (emphasis added). In other words,
claim 1 recites structural elements—hinge holes on the
cover receiving hinge protuberances on the case—that re-
sult in a configuration in which the cover pivots with re-
spect to the case. Claim 24 includes virtually identical
language. See id. at claim 24 (“the parallel plate members
having at least one hinge element which cooperates with
the hinge element on the case for pivoting the case with
respect to the flash memory main body, whereby the USB
terminal piece is received in an inner space of the cover or
exposed outside the cover”). The “for pivoting” term imme-
diately follows the language requiring structure resulting
in a pivoting cooperation between the cover and the case,
confirming that the reference to the “case” pivoting with
respect to the “flash memory main body” (which includes
the case) is a clerical error. The “whereby” clause that fol-
lows and elaborates on the “for pivoting” term in both
claims forecloses any argument to the contrary: by
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explaining that “the USB terminal piece is received in an
inner space of the cover or exposed outside the cover,” the
claims describe a movement that is only possible if the
cover pivots with respect to the flash memory main body.
That both claim 1 and claim 24 require that the flash
memory main body “includ[e]” a case also confirms the cler-
ical error. ’544 patent col. 4 ll. 43–44, col. 6 l. 49. This lan-
guage suggests—if not requires—that the two structural
components be fixed with respect to each other. Because
the claim language alone shows that the reference to the
case in the “for pivoting” language should have been to the
cover, we agree with the district court that claims 1 and 24
of the ’544 patent contain an obvious minor clerical error.
Kingston suggests that the error cannot be minor be-
cause replacing one structural element with another is “a
substantial alteration of the claimed structure.” Appel-
lant’s Br. 19. First, this argument ignores the language in
each claim that, even without the “for pivoting” term, re-
quires a structure in which the cover pivots with respect to
the flash memory main body. Rather than describe a dif-
ferent structure, the language as written doesn’t make
sense. Second, even if Kingston were right that the correc-
tion changes the structure described in the corrected claim,
nothing in our case law precludes district courts from cor-
recting obvious minor errors that alter the claimed struc-
ture. In Ultimax, for example, we altered a chemical
formula by inserting a comma because a skilled artisan
would have known that the omission of the comma was a
mistake. 587 F.3d at 1352–53. And in Lemelson v. General
Mills, Inc., we inserted the word “toy” into a preamble re-
citing a “trackway” so that it read “trackway toy.” See
968 F.2d 1202, 1203 (Fed. Cir. 1992). The Supreme Court
has likewise permitted structural alterations via judicial
correction: in I.T.S. Rubber Co. v. Essex Rubber Co., the
Court corrected “upper edge” to “rear upper edge.” See
272 U.S. 429, 441–43 (1926). These cases confirm that ju-
dicial correction may result in structural alterations. They
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also undermine another of Kingston’s arguments: that the
error is not evident on the face of the patent because the
claim is linguistically correct. As this case law suggests,
courts are not limited to correcting errors that result in lin-
guistic incorrectness.
Kingston also argues that the correction cannot be mi-
nor because it broadens the claims. That is incorrect. The
structural elements recited in each claim already require
that the cover pivot with respect to the flash memory main
body.
Finally, Kingston suggests that our decision in Chef
America, Inc. v. Lamb-Weston, Inc. precludes judicial cor-
rection here. Appellant’s Br. 24 (citing 358 F.3d 1371, 1374
(Fed. Cir. 2004)). In Chef America, we considered a patent
directed to a process for making dough products. 358 F.3d
at 1372. Both independent claims at issue included the
step of “heating the resulting batter-coated dough to a tem-
perature in the range of about 400° F. to 850° F.” Id. The
patent owner sought to interpret this language as if it read
“heating the . . . dough at a temperature in the range of”
about 400° F to 850° F because it was undisputed that, if
one performed the steps of the claim as written and heated
the dough to 400° F or higher, the dough “would be burned
to a crisp.” Id. at 1373–74 (emphasis added). We declined
to construe the claim contrary to its plain language, observ-
ing that the language was clear and unmistakable and that
we “may not redraft claims, whether to make them opera-
ble or to sustain their validity.” Id. at 1374. Here, King-
ston argues that, if the district court correctly concluded
that the language of the ’544 patent’s claims precluded the
case from pivoting with respect to the flash memory main
body, that structural impossibility is not sufficient to jus-
tify judicial correction. But this case is unlike Chef Amer-
ica for several reasons. First, as discussed, the structural
limitations of the claims show that the reference to “case”
was an error because they describe a cover that necessarily
pivots with respect to the flash memory main body, so it is
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not structural impossibility alone that justifies correction.
Second, the claim as written facially did not make sense
(i.e., the case pivoting with respect to a component of which
it forms a part) rather than describe a realistic but perhaps
undesirable result, i.e., cooking dough to 400° F and burn-
ing it. Third, the specification of the ’544 patent confirms
the error in the claims by exclusively describing a flash
memory device with a pivoting cover, whereas in Chef
America, nothing in the specification or the prosecution
history suggested that the patentee meant for the dough to
be cooked “at” 400° F rather than “to” 400° F. See id. at
1374–75. Fourth, in Chef America we pointed out that the
“patentees made no attempt to have . . . an error corrected,
. . . by action of the district court.” Id. at 1375. Accordingly,
Chef America does not preclude the result we reach here.
Finally, throughout its briefing on appeal and in the
district court, Kingston relied on the unrebutted testimony
of an expert, Timothy Fletcher, who opined that the error
in the claims was not minor or obvious. The district court
summarily dismissed Mr. Fletcher’s testimony. See Claim
Construction Order, 2018 WL 5099486, at *4 (characteriz-
ing Mr. Fletcher’s testimony as “inconsistent with the
drawings presented in the patent and the other language
of the patent”). The district court was correct to do so: Mr.
Fletcher admitted that he had considered the “for pivoting”
language in isolation, not in context as he should have. See
J.A. 7465–66; CBT Flint, 654 F.3d at 1359. Accordingly,
none of Mr. Fletcher’s opinions alter our analysis.
We therefore conclude that “pivoting the case with re-
spect to the flash memory main body” in claims 1 and 24 of
the ’544 patent contains an obvious minor clerical error.
B
Our next step in the judicial-correction analysis is to
determine whether the correction is “subject to reasonable
debate based on consideration of the claim language and
the specification.” Novo Indus., 350 F.3d at 1354. The
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district court concluded that the correction was not subject
to reasonable debate because both proposed corrections
would result in the same claim scope. Claim Construction
Order, 2018 WL 5099486, at *3. We agree.
Our decision in CBT Flint is instructive. 654 F.3d
at 1355. There, we considered a claim that included the
limitation “a computer in communication with a network,
the computer being programmed to detect analyze the elec-
tronic mail communication sent by the sending party to de-
termine whether or not the sending party is an authorized
sending party or an unauthorized sending party.” Id. (em-
phasis added). We identified three possible corrections:
(1) delete the word “detect,” (2) delete the word “analyze,”
or (3) insert “and” between “detect” and “analyze.” Id. at
1359. “Because each of the three proposed reasonable in-
terpretations would result in the same claim scope,” we
concluded that “a person of skill in the art would readily
know that the meaning of the claim requires insertion of
the word ‘and’ between the words ‘detect’ and ‘analyze.’” Id.One “was not required to guess which meaning was in-
tended in order to make sense out of the patent claim.” Id.
at 1360.
The same principles apply here. Kingston suggests
that an alternative correction would be to replace “flash
memory main body” with “cover” so that the phrase reads
“pivoting the case with respect to the cover.” See Appel-
lant’s Br. 26–27. But the case is a part of the flash memory
main body. See ’544 patent claim 1 (“a flash memory main
body including a rectangular shaped case”), see also id. at
claim 24. So anything that pivots with respect to the case
also pivots with respect to the flash memory main body.
Functionally speaking, then, Kingston’s alternative correc-
tion would just reverse the order in which the structural
components appear in the claim: “pivoting the cover with
respect to the flash memory main body” versus “pivoting
the flash memory main body with respect to the cover.” In
either case, the flash memory main body and the cover
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pivot with respect to each other, so the two proposed cor-
rections describe the same action. Judicial correction is
“not in any real sense, a re-making of the claim; but is
merely giving to it the meaning which was intended by the
applicant and understood by the examiner.” Essex,
272 U.S. at 443. Here, because both corrections result in
the same action, the meaning intended by the applicant is
clear. It was, therefore, appropriate for the district court
to conclude that the correction was not subject to reasona-
ble debate.
Kingston argues that the two corrections do not result
in identical claim scope because the case and the flash
memory main body are different components that need not
be affixed together, meaning that pivoting the cover with
respect to one does not necessarily mean that it pivots with
respect to the other. We disagree. “Any correction of a
claim has to be consistent with the invention ‘described in
the specification and drawings of the original patent.’”
CBT Flint, 654 F.3d at 1359 (quoting Essex, 272 U.S.
at 444). The specification of the ’544 patent describes “a
flash memory main body including a rectangular shaped
case.” ’544 patent col. 2 ll. 31–32 (emphasis added). The
patent then explains that “[a] hinge protuberance 33 for
functioning as a rotation shaft of a cover 40 is provided on
an appropriate position of a front side and a rear side of the
case 31,” id. at col. 3 ll. 20–23 (emphasis added), before
later stating that “the cover has a circular hinge hole 41 for
receiving the hinge protuberance 33 formed on the flash
memory main body 30,” id. at col. 3 ll. 33–36 (emphasis
added). In other words, the specification equates the case
to the flash memory main body for purposes of describing
the hinge protuberance 33. And the drawings consistently
depict a case and a flash memory main body that are inte-
grated with one another, meaning that they cannot pivot
or otherwise move with respect to each other. See, e.g., id.at Figs. 2–4. Because the specification consistently and ex-
clusively depicts embodiments in which the case and the
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flash memory main body are integrated, Kingston is wrong
to suggest otherwise. Kingston’s alternative correction
does not result in different claim scope.
We therefore conclude that the correction is not subject
to reasonable debate.
C
We finally consider whether the prosecution history
“suggest[s] a different interpretation of the claims.” Novo
Indus., 350 F.3d at 1354. The district court concluded that
it does not, and we agree. See Claim Construction Order,
2018 WL 5099486, at *4. Despite the error’s introduction
early in prosecution, both the applicant and the examiner
consistently characterized the claims as describing “pivot-
ing the case [] within the cover,” J.A. 8133, “allowing the
cover to pivot,” J.A. 7143, and “a cover . . . having a hinge
element functioning with the case,” J.A. 7159. In describ-
ing the reasons for allowance, the examiner stated that
“[t]he prior art does not show a hinge element of the paral-
lel plate members cooperating with a hinge element on the
case.” J.A. 7048. Similarly, the Patent Trial and Appeal
Board (“Board”) and this court both recognized the pivot-
ing-cover nature of the invention. The Board described the
’544 patent as “directed to a cover that rotates with respect
to a case.” J.A. 7057–58. And, in reviewing the Board’s
final written decision, we described the claimed invention
as having a “rotating cover that is not separated from the
memory device body when its USB port is in use.” Pavo
Sols. LLC v. Kingston Tech. Co., 711 F. App’x 1020, 1022
(Fed. Cir. 2017). These descriptions confirm that each re-
viewing body—the examiner, the Board, and this court—
understood the nature and scope of the invention consist-
ently with correcting “case” to “cover.” No other reasonable
interpretation reveals itself from the prosecution history.
Kingston, however, argues that the prosecution history
suggests correction is inappropriate because, during the
IPR, Pavo asked the Board to make the same correction,
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and the Board denied that request. But first, that denial
does not suggest that a different correction is appropriate,
which is the question at issue here. Second, the Board de-
nied Pavo’s correction request on procedural grounds: Pavo
had already filed preliminary responses in both IPRs, and
the oral hearing was less than two months away. Under
those circumstances, the Board concluded that “[p]otential
changes to the claims at this stage could lead to a moving
target that is unfair to [Kingston].” J.A. 1199. Kingston
seizes upon this “moving target” language to argue that the
Board recognized that Pavo’s requested correction would
substantively change the claims. But the Board’s language
does not support that conclusion. Rather, the Board’s ob-
servation that “[p]otential” changes “could” result in a mov-
ing target shows that the Board did not consider the
substance of Pavo’s request. See id. Any attempt to infer
the Board’s views on the correction is conjecture.
Accordingly, we conclude that the prosecution history
does not suggest a different interpretation of the claims.
D
Having determined that the claim language contains
an obvious clerical error, that the correction is not subject
to reasonable debate, and that the prosecution history does
not suggest a different interpretation, we affirm the dis-
trict court’s construction that “pivoting the case with re-
spect to the flash memory main body” means “pivoting the
cover with respect to the flash memory main body.”
II
Kingston next argues that the jury’s willful-infringe-
ment verdict must be set aside. Kingston submits that it
could not have formed the requisite intent to support a will-
fulness finding because it did not infringe the claims as
originally written and because it could not have anticipated
that a court would later correct the claims. We hold,
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however, that reliance on an obvious minor clerical error in
the claim language is not a defense to willful infringement.
Kingston’s argument appears to hinge on its belief that
the district court “change[d] the metes and bounds of the
patent,” Appellant’s Br. 35, and “enacted a major change to
the claim language,” Reply Br. 16. But judicial correction
does not re-make the claim; rather, it gives effect to its ob-
vious meaning. See Essex, 272 U.S. at 443. An obvious
minor clerical error, by definition, does not mask that
meaning, so Kingston cannot hide behind the error to es-
cape the jury’s verdict.
Kingston suggests that upholding the willful-infringe-
ment verdict amounts to calling Kingston reckless for rely-
ing on the Board’s rejection of Pavo’s correction request
during the IPR. But, as we explained above, the Board did
not consider the substance of Pavo’s correction request, so
there was nothing for Kingston to rely on. More im-
portantly, “culpability is generally measured against the
knowledge of the actor at the time of the challenged con-
duct.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93,
105 (2016). The Board’s inaction, which came later, is ir-
relevant to the issue of Kingston’s intent to infringe the
’544 patent. See Odetics, Inc. v. Storage Tech. Corp.,
185 F.3d 1259, 1276 (Fed. Cir. 1999) (“The proper time to
assess willfulness is at the time the infringer received no-
tice . . ., making the relevance of later developments . . .
questionable at best.”).
We affirm the district court’s judgment that Kingston
willfully infringed the ’544 patent.
III
Kingston lastly argues that the district court should
have excluded Mr. Bergman’s damages testimony because
he relied on a non-payment term in the IPMedia license.
We conclude, however, that the district court did not abuse
Case: 21-1834 Document: 57 Page: 17 Filed: 06/03/2022
PAVO SOLUTIONS LLC v. 17
KINGSTON TECHNOLOGY COMPANY, INC.
its discretion when it declined to exclude Mr. Bergman’s
testimony.
We review a district court’s denial of judgment as a
matter of law (“JMOL”) under the law of the regional cir-
cuit. Apple Inc., 25 F.4th at 969. The Ninth Circuit reviews
denial of JMOL de novo. Est. of Diaz v. City of Anaheim,
840 F.3d 592, 604 (9th Cir. 2016). A district court’s decision
concerning the methodology for calculating damages is one
we review for an abuse of discretion. Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1310 (Fed. Cir. 2009). We
review a jury’s determination of the amount of damages for
substantial evidence. Id. “A jury’s damages award must
be upheld unless the amount is grossly excessive or mon-
strous, clearly not supported by the evidence, or based only
on speculation or guesswork.” Bio-Rad Labs., Inc. v. 10X
Genomics Inc., 967 F.3d 1353, 1373 (Fed. Cir. 2020)
(cleaned up).
At trial, Pavo presented a reasonable-royalty theory of
damages under a hypothetical-negotiation framework and
proposed a 40-cent-per-unit royalty rate. Mr. Bergman
used the negotiations and agreement between CATR and
IPMedia as his starting point; both parties’ experts agreed
that the IPMedia license was a comparable license. See
J.A. 20605, 21043. That license included a 1-cent running
royalty for sales of the licensed product. See J.A. 1649. The
license also included a representation from IPMedia to
CATR that “the amount of One U.S. Cent ($0.01 USD) per
unit is approximately equal to Twenty Five Percent (25%)
of IPMedia’s profits recognized from the sale of a Covered
Product, excluding profits attributable to any upgrades or
value-added features or services (i.e., higher memory ca-
pacity, custom printing, software preloads, etc.).”
J.A. 1652. Based on those two provisions, Mr. Bergman
opined that a profit-split model was appropriate to use as
a factor to determine damages; differences in profitability
and business models between IPMedia and Kingston led
Mr. Bergman to reduce the profit split from 25 percent to
Case: 21-1834 Document: 57 Page: 18 Filed: 06/03/2022
18 PAVO SOLUTIONS LLC v.
KINGSTON TECHNOLOGY COMPANY, INC.
18.75 percent. He applied that figure to Kingston’s profits
from the sale of the accused USB device and concluded that
the appropriate royalty rate was 40 cents per unit.
Kingston first argues that Mr. Bergman’s methodology
is unsound because it relies not on what CATR actually re-
ceived but, instead, on what Kingston characterizes as a
non-binding non-payment term, i.e., the 25-percent-of-
profit representation. But the IPMedia agreement itself
says that the 1-cent royalty that CATR received repre-
sented 25 percent of IPMedia’s profit for sales of its prod-
uct, so that representation provided context for the royalty
and was not a separate payment provision. Under the cir-
cumstances, Mr. Bergman’s testimony is not unduly spec-
ulative, and the district court did not abuse its discretion
in declining to exclude it. Mr. Bergman’s analysis then ac-
counted for the differences in the economic circumstances
of the contracting parties, which is exactly what our case
law requires. See VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d
1308, 1330 (Fed. Cir. 2014). The jury also heard testimony
from Russel Chatskis, IPMedia’s president, explaining the
structure of the IPMedia license. Based on that context,
“[t]he jury was entitled to hear the expert testimony and
decide for itself what to accept or reject,” and that is exactly
what it did. See i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d
831, 856 (Fed. Cir. 2010). Kingston relies on Wordtech Sys-
tems, Inc. v. Integrated Network Solutions, Inc., 609 F.3d
1308 (Fed. Cir. 2010), for the proposition that we do not
permit the use of non-payment terms in comparable li-
censes, but that case is inapplicable. There, we rejected the
use of a punitive-damages provision to support a damages
award. 609 F.3d at 1320. Here, however, the provision
that Kingston objects to contains a representation about
and provides greater context for the royalty; it is not a sep-
arate term triggered only under certain circumstances like
the one at issue in Wordtech.
Kingston next suggests that Mr. Bergman failed to ap-
portion for non-infringing features. Kingston argues that,
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PAVO SOLUTIONS LLC v. 19
KINGSTON TECHNOLOGY COMPANY, INC.
because the undisputed evidence at trial shows that it paid
just 35 cents in casing costs for the accused products, which
is less than the 40-cent royalty Mr. Bergman proposed,
Mr. Bergman necessarily failed to account for the value of
the infringing features. We disagree. First, the costs to
Kingston for the materials are not the same as the value of
the patented feature, so Kingston’s argument compares ap-
ples to oranges. Second, Mr. Bergman’s analysis correctly
apportioned for non-infringing features.
“[T]he patentee must in every case give evidence tend-
ing to separate or apportion . . . the patentee’s damages be-
tween the patented feature and the unpatented features
. . . .” LaserDynamics, Inc. v. Quanta Comput., Inc., 694
F.3d 51, 67 (Fed. Cir. 2012) (cleaned up). “[W]here multi-
component products are involved, the governing rule is
that the ultimate combination of royalty base and royalty
rate must reflect the value attributable to the infringing
features of the product, and no more.” Ericsson, Inc. v. D-
Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). But
“when a sufficiently comparable license is used as the basis
for determining the appropriate royalty, further apportion-
ment may not necessarily be required.” Vectura Ltd. v.
GlaxoSmithKline LLC, 981 F.3d 1030, 1040 (Fed. Cir.
2020). “That is because a damages theory that is depend-
ent on a comparable license (or a comparable negotiation)
may in some cases have ‘built-in apportionment.’” Id.“Built-in apportionment effectively assumes that the nego-
tiators of a comparable license settled on a royalty rate and
royalty base combination embodying the value of the as-
serted patent.” Id. at 1041.
Here, both parties agree that the IPMedia license was
comparable. That license granted rights in the ’544 patent,
and it plainly reflected the value that the contracting par-
ties settled on for the patent. As the starting point for
Mr. Bergman’s analysis, it provided sufficient evidence of
“already built[-]in apportionment.” See Commonwealth
Sci. & Indus. Rsch. Org. v. Cisco Sys., Inc., 809 F.3d 1295,
Case: 21-1834 Document: 57 Page: 20 Filed: 06/03/2022
20 PAVO SOLUTIONS LLC v.
KINGSTON TECHNOLOGY COMPANY, INC.
1303 (Fed. Cir. 2015); see also J.A. 1612–13. Mr. Berg-
man’s analysis correctly apportioned for non-infringing
features, and the district court did not abuse its discretion
by declining to exclude it.
We therefore reject Kingston’s challenges to Mr. Berg-
man’s damages testimony and affirm the jury’s damages
award.
IV
We conclude that Kingston has forfeited its two re-
maining arguments: that the district court improperly re-
construed the term “pair of parallel plate members” by is-
suing a curative instruction to the jury during trial and
that Kingston was prejudiced by Pavo’s disclosure to the
jury of Kingston’s total revenue for sales of the accused
product.
“[F]orfeiture is the failure to make the timely assertion
of a right.” United States v. Olano, 507 U.S. 725, 733
(1993). This court has “regularly stated and applied the
important principle that a position not presented in the tri-
bunal under review will not be considered on appeal in the
absence of exceptional circumstances.” In re Google Tech.
Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020); see also
Singleton v. Wulff, 428 U.S. 106, 120 (1976) (“It is the gen-
eral rule . . . that a federal appellate court does not consider
an issue not passed upon below.”).
As we explain below, Kingston failed to raise either ar-
gument to the district court in post-trial motions, so it
failed to preserve the issues for appeal.
A
Because Kingston never sought JMOL or a new trial on
the grounds that the district court’s curative instruction
improperly reconstrued a claim limitation, it forfeited the
right to seek a new trial on that basis on appeal.
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PAVO SOLUTIONS LLC v. 21
KINGSTON TECHNOLOGY COMPANY, INC.
Before the parties presented opening statements to the
jury at trial, the district court barred a Kingston non-in-
fringement argument as late-disclosed. Specifically, King-
ston asserted that the accused product did not include a
“pair of parallel plate members” because its cover was a
single piece of metal, but it had not disclosed that position
during discovery. During its cross-examination of Pavo’s
infringement expert, however, Kingston asked the expert
questions directed to the single-piece-of-metal argument.
Finding that Kingston had violated its exclusionary order,
the district court issued the following curative instruction
to the jury:
There is no contention in this litigation that the
limitation of a pair of parallel plate members is not
met if the pair of parallel plate members is formed
by a single piece of metal. You should, therefore,
disregard any evidence or argument suggesting
that a single piece of metal cannot form a pair of
parallel plate members.
J.A. 21151. After the district court informed the parties
that it would issue the instruction, Kingston’s trial counsel
suggested that Pavo’s proposed language “would take out
the entire limitation including the parallel.” J.A. 20555.
The district court disagreed and suggested that the confu-
sion arose because of a comma that the district court would
remove from the instruction. J.A. 20555–56. In response,
Kingston’s counsel said only “we maintain all of our objec-
tions to that instruction.” J.A. 20556.
Kingston did not move for a new trial, nor did it raise
the curative-instruction issue in its motion for JMOL. In-
stead, Kingston “reserve[d] its right to move for [JMOL] on
various limitations that the [c]ourt relieved Pavo of its bur-
den of proof on, including” the pair of parallel plate mem-
bers limitations. See J.A. 1474. Kingston did not elaborate
on its arguments, nor did it file a subsequent motion for
JMOL or a motion for a new trial that raised the district
Case: 21-1834 Document: 57 Page: 22 Filed: 06/03/2022
22 PAVO SOLUTIONS LLC v.
KINGSTON TECHNOLOGY COMPANY, INC.
court’s curative instruction or suggested that the district
court had improperly reconstrued the term.
Kingston argues that it preserved the argument for ap-
peal by objecting to the instruction at trial and reserving
its rights to challenge the court’s construction in its JMOL
motion. But, first, Kingston failed to substantively object
to the jury instruction—it said only “we maintain all of our
objections to that instruction” without elaborating on what
those objections were. See J.A. 20556. Such a generalized
statement, standing alone, fails to preserve any specific ob-
jection, particularly when the record before us indicates
that the extent of Kingston’s argument against the instruc-
tion was that it was unnecessary in the first instance. 2 See
J.A. 1435 (Kingston maintaining that its excluded non-in-
fringement argument was based upon the words of the par-
ties’ agreed construction for “pair of parallel plate
members”); see also Reply Br. 17. Nothing in the record
indicates that Kingston ever objected to the final language
of the curative instruction, suggested that it amounted to
an affirmative reconstruction of the claim term, or offered
alternative language for the instruction, nor does Kingston
argue that it did.
Second, Kingston’s attempt in its JMOL motion to “re-
serve[] its rights” to challenge the instruction at some un-
known later date is insufficient to preserve the argument
for an appeal. See J.A. 1474. When a party fails to seek a
2 Kingston’s statement at trial that the instruction
“would take out the entire limitation including the paral-
lel” was directed to Pavo’s proposal that included what the
district court characterized as a confusing comma. See
J.A. 20555–56. By failing to reiterate the argument in re-
sponse to the district court’s version of the instruction,
Kingston forfeited it. In any event, Kingston does not now
argue that this statement preserved any specific objection
to the language of the instruction.
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PAVO SOLUTIONS LLC v. 23
KINGSTON TECHNOLOGY COMPANY, INC.
new trial before the district court, it forfeits its right to do
so on appeal. Unitherm Food Sys., Inc. v. Swift-Eckrich,
Inc., 546 U.S. 394, 404 (2006). That is what Kingston did
here. The Federal Rules of Civil Procedure limit the time
for parties to file post-judgment motions. See Fed. R. Civ.
P. 50(b), (d); Fed. R. Civ. P. 59(b). A party cannot unilater-
ally extend that time by “reserving its rights,” nor does
such a reservation avoid the Unitherm rule. Kingston
never moved for a new trial at all, let alone on the basis
that the district court’s curative jury instruction recon-
strued the “pair of parallel plate members” claim term. Its
failure to move for a new trial forfeits the argument on ap-
peal. Unitherm, 546 U.S. at 404.
B
Similarly, Kingston never sought a new trial on the
grounds that Pavo prejudiced the jury by disclosing King-
ston’s total revenue. It therefore forfeited its right to make
that same argument on appeal.
Before jury selection, Kingston objected to Pavo’s use
of an opening demonstrative slide that depicted Kingston’s
total product revenue. Kingston argued that Pavo should
be precluded from disclosing total product revenue to the
jury because it violated the entire market value rule and
was inherently unduly prejudicial. Pavo argued that prod-
uct revenue was relevant to the commercial success of the
accused product as compared to alleged non-infringing al-
ternatives. The district court precluded Pavo from using
the slide in its opening statement but stated that it was
“not limiting [Pavo] from making statements about the to-
tal accused product revenue at this point, but [was] going
to take a look at it.” J.A. 20085. The parties later submit-
ted competing trial briefs on the issue and reiterated their
respective positions. The district court ultimately excluded
an underlying exhibit but permitted Mr. Bergman to testify
generally to total product revenue. All told, Pavo refer-
enced Kingston’s total sales revenue to the jury three
Case: 21-1834 Document: 57 Page: 24 Filed: 06/03/2022
24 PAVO SOLUTIONS LLC v.
KINGSTON TECHNOLOGY COMPANY, INC.
times: once in its opening statement, once during Mr. Berg-
man’s direct examination, and once during its cross-exam-
ination of Kingston’s damages expert. Kingston never
sought a new trial on the grounds that Pavo used total
product revenue for an improper purpose and thereby un-
duly prejudiced the jury.
Kingston’s failure to move the district court for a new
trial on this ground, by itself, forfeits the argument on ap-
peal. Unitherm, 546 U.S. at 404. Kingston’s arguments on
appeal demonstrate why. Kingston asserts that Pavo did
not use its sales revenue for a proper purpose and contests
Pavo’s assertion that Pavo relied on total product revenue
to refute Kingston’s arguments regarding non-infringing
alternatives. See, e.g., Reply Br. 21. We, as an appellate
body, cannot properly evaluate those arguments in the first
instance. The trial court, having just presided over several
days of testimony, would have been better suited to deter-
mine whether Kingston’s assertions of prejudice have
merit, and it would have had the benefit of the full trial
record, which we lack, to do so. Since Kingston did not
make those arguments to the district court, we will not now
consider them.
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the above reasons, we af-
firm the judgment of the district court.
AFFIRMED