United States Court of Appeals
for the Federal Circuit
______________________
SUMMIT 6, LLC,
Plaintiff-Cross Appellant
v.
SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC,
Defendants-Appellants
______________________
2013-1648, -1651
______________________
Appeals from the United States District Court for the
Northern District of Texas in No. 11-CV-0367, Judge Reed
O'Connor.
______________________
Decided: September 21, 2015
______________________
THEODORE STEVENSON, III, McKool Smith, P.C., Dal-
las, TX, argued for plaintiff-cross appellant. Also repre-
sented by DOUGLAS AARON CAWLEY, PHILLIP AURENTZ,
RICHARD ALAN KAMPRATH; JOEL LANCE THOLLANDER,
JOHN BRUCE CAMPBELL, GRETCHEN CURRAN, KATHY
HSINJUNG LI, Austin, TX; BRADLEY WAYNE CALDWELL,
Caldwell, Cassady & Curry, Dallas, TX.
2 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Wash-
ington, DC, argued for defendants-appellants. Also repre-
sented by JOSEPH GUERRA, RACHEL HEATHER TOWNSEND.
______________________
Before PROST, Chief Judge, REYNA, and HUGHES, Circuit
Judges.
REYNA, Circuit Judge.
This appeal is from a final judgment entered on a jury
verdict in a patent case. The jury found the asserted
claims of U.S. Patent No. 7,765,482 (“the ’482 patent”) not
invalid and infringed. The jury awarded Appellee-Cross
Appellant Summit 6, LLC (“Summit”) $15 million in
damages. The parties raise various issues relating to the
proper legal framework for evaluating reasonable royalty
damages in the patent infringement context. Also before
us are questions regarding claim construction, infringe-
ment, invalidity, and the admissibility of expert testimo-
ny. For the reasons explained below, we affirm.
I. BACKGROUND
A. The ’482 Patent
Summit is the owner by assignment of the ’482 pa-
tent, entitled “Web-based Media Submission Tool.” The
’482 patent relates to the processing of digital content,
such as digital photos. ’482 patent at col. 1 ll. 11-14. The
invention “provides an improved web-based media sub-
mission tool” that includes “several unique and valuable
functions.” Id. at col. 2 ll. 7-8. The embodiment described
in the specification focuses on a tool used to submit photos
to a website. Id. at col. 2 ll. 44-60, col. 3 ll. 55-64. This
embodiment is described as software that allows a user to
place the photo into a website form either by dragging and
dropping the photo from the user’s computer or by using a
mouse click within the website. Id. at col. 3 ll. 20-48.
Among other things, the ’482 patent teaches a web-based
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 3
media submission tool with “a variable amount of intelli-
gent pre-processing on media objects prior to upload.” Id.
at col. 2 ll. 16-17.
The “intelligent preprocessing” taught by the ’482 pa-
tent includes the “ability to control the width and height
of the media object identifier and the ability to preprocess
the media objects in any number of ways prior to trans-
porting to a second location.” Id. at col. 4 ll. 53-56. The
patent describes this process in detail:
[T]he [invention] may resize the image, (i.e., in-
crease or decrease its size as defined by either
physical dimensions, pixel count, or kilobytes).
Compression, for example, is a type of sizing. The
[invention] may also change the image’s file for-
mat, . . . change the quality setting of the image,
crop the image or change the aspect ratio, add text
or annotations, encode or combine . . . the media
object, or enhance the media object by changing
image values, for example, relating to contrast or
saturation.
Id. at col. 4 ll. 57-67.
Summit asserted independent claim 38 and depend-
ent claims 40, 44-46, and 49 at trial. Claim 38 recites:
38. A computer implemented method for pre-
processing digital content in a client device for
subsequent electronic distribution, comprising:
a. initiating, by said client device, a transfer of
digital content from said client device to a server
device, said digital content including one or more
of image content, video content, and audio con-
tent;
b. pre-processing said digital content at said client
device in accordance with one or more pre-
processing parameters, said one or more pre-
4 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
processing parameters being provided to said cli-
ent device from a device separate from said client
device, said one or more pre-processing parame-
ters controlling said client device in a placement
of said digital content into a specified form in
preparation for publication to one or more devices
that are remote from a server device and said cli-
ent device; and
c. transmitting a message from said client device
to said server device for subsequent distribution
to said one or more devices that are remote from
said server device and said client device, said
transmitted message including said pre-processed
digital content.
Id. at col. 13 l. 56-col. 14 l. 14 (emphases added to rele-
vant terms).
B. Procedural History
On February 23, 2011, Summit sued Samsung Elec-
tronics Co., Ltd., Samsung Telecommunications America
LLC (collectively, “Samsung”), Research in Motion Lim-
ited, Research in Motion Corp. (collectively, “RIM”),
Facebook, Inc. (“Facebook”), and other defendants assert-
ing infringement of the ’482 patent. Summit asserted
that the process of sending photographs via the multime-
dia messaging service (“MMS”) as used by smartphones
and tablets designed, manufactured, and sold by Samsung
infringes the ’482 patent.
In the district court, the parties disputed the proper
meaning of fourteen claim terms. As relevant to this
appeal, the parties disputed the proper meaning of “publi-
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 5
cation/publishing” and “receiving”/“provided to.” 1 Sam-
sung contended that “publication” should be construed to
mean “making the digital content publicly available (e.g.
posting the digital content on a web page)” in order to
differentiate the term from “transmitting” and “distribu-
tion.” Summit argued that publication requires no con-
struction and, if it does, it should be “sharing.” Regarding
the “receiving”/“provided to” terms, Samsung argued that
claim 38 required the active receipt of the pre-processing
parameters during the operation of the claimed method.
Samsung contended that the receipt of the pre-processing
parameters must occur during the operation of the meth-
od. Summit argued that the receipt of pre-processing
parameters required ongoing activity, but could also
encompass the receipt of the pre-processing parameters
prior to the commencement of the claimed method.
On May 21, 2012, the district court issued an order
construing the disputed claim terms. Regarding “publica-
tion,” the district court agreed with Samsung and con-
strued the term to mean “making publicly available.” The
district court declined to construe the “receiv-
ing”/“provided to” terms, finding that the terms required
no construction. RIM settled thereafter.
On October 22, 2012, Samsung filed a motion for
summary judgment of non-infringement. The district
court denied Samsung’s motion as to literal infringement,
finding that a genuine issue of material fact existed as to
whether Samsung’s products perform the recited pre-
processing step. The court granted other aspects of Sam-
sung’s motion, finding that prosecution history estoppel
1 The “receiving”/“provided to” terms include “re-
ceiving . . . from a remote device,” “received from a device
separate from a client device,” and “provided to said client
device by a device separate from said client device.”
6 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
bars application of the doctrine of equivalents to the pre-
processing step. Soon thereafter, Facebook settled. 2
Samsung was then the only remaining defendant.
Beginning on March 29, 2013, the district court held a
six-day jury trial. During trial the parties presented
competing evidence regarding the provision of pre-
processing parameters to the client device. Summit
contended that receipt of the pre-processing parameters
during the operation of the method was not required.
Summit’s expert, Dr. Mark Jones, testified that even if
active receipt during the operation of the method is re-
quired, Samsung phones receive parameters when phones
are reflashed or when software updates are provided.
Samsung’s expert, Dr. Earl Sacerdoti, explained that
active receipt of the parameters is required and the pre-
processing parameters are not provided to any accused
Samsung device during any pre-processing operations.
On the “publication” limitation, Summit contended
that Samsung’s accused devices prepare the images for
“publication.” Summit’s expert, Dr. Jones, explained that
when an image is resized in Samsung phones, the digital
content is placed in a form in preparation for both trans-
mission and publication. Samsung’s expert,
Dr. Sacerdoti, explained that any alterations to the image
during the MMS process are done to meet carrier trans-
mission requirements for message size limits, not to
prepare the message for publication.
Summit then presented evidence of damages through
its expert Mr. Paul Benoit. Mr. Benoit explained that
Samsung would have agreed in a hypothetical negotiation
2 Facebook was also accused of infringing U.S. Pa-
tent No. 6,895,557 (“the ’557 patent”). The ’482 patent is
a continuation of the ’557 patent.
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 7
to pay Summit $0.28 per phone to provide the infringing
features on their phones over the life of the patent.
Mr. Benoit acknowledged that he relied on a methodology
not previously used or published in peer-reviewed jour-
nals. Samsung’s expert, Mr. Christopher Martinez,
testified that because infringement takes place at the
software level, no company would agree to pay a running
royalty on a phone. He testified that a proper royalty
would be a $1.5 million lump sum. He based this conclu-
sion on two license agreements.
After the close of Summit’s case-in-chief, Samsung
presented evidence that it asserted showed that the ’482
patent is invalid over U.S. Patent No. 6,038,295
(“Mattes”). At trial, the parties agreed that the basic
operation of the system disclosed in Mattes included
taking a picture, pre-processing the picture, and transmit-
ting the picture to a server over a wireless network.
Summit’s expert, Dr. Jones, testified that Mattes fails to
disclose the pre-processing step of claim 38 because the
imaging device does not “know” that a photo has met the
server’s specification when the photo is transmitted.
Dr. Jones further testified that the limitations of claims
40 and 46 were similarly not disclosed by Mattes.
The jury returned a verdict on April 5, 2013, finding
the five asserted claims of the ’482 patent not invalid and
infringed. The jury awarded Summit $15 million in
damages. The jury indicated on the verdict form that this
was a lump sum award.
The parties filed post-trial motions. The district court
granted Samsung’s pre-verdict motion for judgment as a
matter of law (“JMOL”) of no direct infringement and
denied all other pre-verdict motions. The district court
denied all of Samsung’s post-verdict motions except its
motion to reduce prejudgment interest.
The parties timely appealed. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
8 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
II. DISCUSSION
A. Claim Construction
On appeal, the parties dispute whether the asserted
claims of the ’482 patent require that pre-processing
parameters be provided to the client device during the
computer-implemented method for pre-processing digital
content or whether it can occur prior to operation of the
method. Samsung argues that the district court erred in
declining to construe the term “being provided to” as used
in claim 38 because this term requires the provision of the
pre-processing parameters during the operation of the
method. Samsung contends that this ongoing activity is
compelled not only by the language of the claim, but also
by the language of other claims and the prosecution
history.
Summit asks that we conclude Samsung waived the
argument that “being provided to” requires that the pre-
processing parameters be provided to the device during
the operation of the method. In the alternative, Summit
argues that there is no evidence to support Samsung’s
proposed limitation on the claim language. Summit
contends that “being provided to” is not a verb requiring
ongoing activity, but instead a phrase functioning as an
adjective that describes a characteristic of “said . . . pa-
rameters.”
We first address the issue of waiver. To avoid waiver,
a party’s argument at trial and the appellate level should
be consistent. Finnigan Corp. v. Int’l Trade Comm’n, 180
F.3d 1354, 1363 (Fed. Cir. 1999). We find that Samsung
has argued throughout this action that the claimed provi-
sion of pre-processing parameters must be performed as
an active step of the claimed method. Samsung’s argu-
ment on this issue has been sufficiently consistent to
negate a finding of waiver. For these reasons, we con-
clude that Samsung has not waived its argument. We
now turn to the merits of the claim construction dispute.
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 9
Claim construction is generally a matter of law that
we review de novo, but it may have underlying factual
determinations that are reviewed for clear error. Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837
(2015). The process of construing a claim term begins
with the words of the claims. Phillips v. AWH Corp., 415
F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc); Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). However, the claims “must be read in view of the
specification, of which they are a part.” Phillips, 415 F.3d
at 1315 (quoting Markman v. Westview Instruments, Inc.,
52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S.
370 (1996)). Additionally, the doctrine of claim differenti-
ation disfavors reading a limitation from a dependent
claim into an independent claim. See InterDigital
Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318,
1324 (Fed. Cir. 2012). Although courts are permitted to
consider extrinsic evidence, like expert testimony, dic-
tionaries, and treatises, such evidence is generally of less
significance than the intrinsic record. Phillips, 415 F.3d
at 1317 (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 862 (Fed. Cir. 2004)). Extrinsic evidence may
not be used “to contradict claim meaning that is unam-
biguous in light of the intrinsic evidence.” Id. at 1324.
While the parties focus on the words “being provided
to,” the surrounding language of the claim is instructive.
The relevant limitation of claim 38 requires:
b. pre-processing said digital content at said client
device in accordance with one or more pre-
processing parameters, said one or more pre-
processing parameters being provided to said cli-
ent device from a device separate from said client
device, . . . ;
’482 patent at col. 14 ll. 1-5 (emphasis added). We find
that “being provided to” is not used as a verb in claim 38,
but instead is a part of a phrase that conveys information
10 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
about the “pre-processing parameters.” In this claim, the
pre-processing parameters are “being provided to” the
client device from a second device. Id. This is not a step
in the claimed method. It is, instead, a phrase that
characterizes the claimed pre-processing parameters. The
use of the term “said” indicates that this portion of the
claim limitation is a reference back to the previously
claimed “pre-processing parameters.” See Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1343
(Fed. Cir. 2008) (noting that claims using the term “said”
are “anaphoric phrases, referring to the initial antecedent
phrase”). That the pre-processing parameters come from
a second device is merely a characteristic of the parame-
ters. It is not a step of the method, nor does it require
current or ongoing activity.
Further, the district court did not err in declining to
construe the term. While the court must resolve actual
disputes regarding the proper scope of a claim term, O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1360 (Fed. Cir. 2008), restating a settled argument
does not create an actual dispute within the meaning of
O2 Micro, Finjan, Inc. v. Secure Computing Corp.,
626 F.3d 1197, 1207 (Fed. Cir. 2010). At the claim con-
struction stage, the district court rejected Samsung’s
argument that ongoing activity is required—the heart of
the parties’ disagreement—and declined to further con-
strue the term because it was a “straightforward term”
that required no construction. J.A. 45. “Being provided
to” is comprised of commonly used terms; each is used in
common parlance and has no special meaning in the art.
Because the plain and ordinary meaning of the disputed
claim language is clear, the district court did not err by
declining to construe the claim term.
Samsung contends that the district court read a limi-
tation out of claim 38 by refusing to construe this term.
Samsung argues that by failing to limit the claim to active
receipt of the pre-processing parameters, the district court
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 11
effectively read the “being provided to” language out of
the claim. We disagree. That the pre-processing parame-
ters are on the client device and that they have come from
a second device must be proved, just like any other limita-
tion. The claim term “being provided to,” however, does
not limit the claim to the provision of pre-processing
parameters only during the operation of the method.
Samsung argues that other claims use language that
clearly indicates temporal activity and concludes that the
“being provided to” term must indicate present and ongo-
ing activity. Samsung suggests that claims 36, 37, and
51, use language that indicates a past activity. ’482
patent at col. 13 ll. 21-22 (“pre-processing parameters that
were provided to said client device . . .”), col. 13 ll. 45-46
(“pre-processing parameters that were provided to said
client device . . . ”), col. 14 ll. 49-50 (“pre-processing pa-
rameters that have been provided to . . .”). Yet, other
claims use language indicating that the provision must
occur during the operation of the claimed method. Id. at
claim 26, col. 9 ll. 23-24 (“receiving pre-processing param-
eters from a remote device . . . ”), claim 12, col. 10 ll. 43-44
(“receiving pre-processing parameters from a remote
device . . . . ”). Neither of these sets of claims, however,
provides an indication of what the applicants intended
when they chose the phrase “being provided to,” and the
plain meaning of this term does not clearly delineate the
temporal limitation Samsung suggests.
Samsung points to the prosecution history to support
its position, arguing that amendments to other claims
show that claim 38 requires ongoing activity during
operation of the method. This argument misinterprets
the prosecution history. During prosecution, the appli-
cant presented claims reciting “previously received pre-
processing parameters” in the third limitation of each
claim. J.A. 25153-56 (claims 16, 23, and 26). The exam-
iner rejected these claims as indefinite under 35 U.S.C.
§ 112 para. 2. The examiner stated:
12 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
The step of “pre-processing” in claims 16, 23, and
26 recite “previously received pre-processing pa-
rameter.” [sic] Since the claims are not shown
[sic] any previously received parameter prior to
the “pre-processing” step, such language is indefi-
nite.
J.A. 25179. In response, the applicant amended the first
limitation of these claims to recite “receiving pre-
processing parameters . . . ,” thus showing the receipt of
the parameters referenced in the third limitation and
creating the proper basis for receipt of the “previously
received parameters.” This does not preclude prior re-
ceipt as to either these claims, or to claim 38, which was
subsequently added.
Finally, Samsung argues that the preamble is limiting
because it “provides context essential to understanding
the corresponding steps in the body of the claim” because
it is the only part of the claim that refers to the advance
over the prior art. Appellants’ Opening Br. at 41. Sam-
sung concludes that because the preamble is limiting,
provision of the parameters must happen during the pre-
processing step. We disagree that the preamble here is
limiting. Generally, a preamble is not limiting. Symantec
Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288
(Fed. Cir. 2008). For example, “[p]reamble language that
merely states the purpose or intended use of an invention
is generally not treated as limiting the scope of the claim.”
Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021,
1023-24 (Fed. Cir. 2015) (quoting Bicon, Inc. v. Strau-
mann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)). Samsung
does not contend that the preamble to claim 38 is neces-
sary to provide antecedent basis or that the applicant
placed clear reliance on the preamble during prosecution.
See Pacing, 778 F.3d at 1024 (“Because the preamble
terms . . . provide antecedent basis for and are necessary
to understand positive limitations in the body of claims
. . . , we hold that the preamble to claim 25 is limiting.”).
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 13
Moreover, the preamble to claim 38 is duplicative of the
limitations in the body of the claim and merely provides
context for the limitations. See Symantec, 522 F.3d at
1288-89.
In sum, the district court properly rejected Samsung’s
argument that the “being provided to” language of claim
38 requires that the pre-processing parameters are pro-
vided to the client device during operation of the claimed
method. We affirm the district court’s denial of the mo-
tion for new trial based on claim construction.
B. Infringement
After the jury returned its verdict finding the five as-
serted claims of the ’482 patent not invalid and infringed,
the district court denied Samsung’s pre-verdict JMOL of
no indirect infringement.
Samsung argues that the jury’s verdict on indirect in-
fringement is not supported by substantial evidence
because Samsung’s accused phones do not pre-process “in
preparation for publication.” Samsung argues that under
the district court’s constructions, Summit was required to
show that Samsung’s accused phones modify a digital
image in preparation for making the image publicly
available. Samsung argues that Summit failed to make
such a showing. We disagree.
A denial of a motion for JMOL is not unique to patent
law, and thus, we apply the law of the regional circuit,
here the Fifth Circuit. Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340,
1346-47 (Fed. Cir. 2012). Under Fifth Circuit law, a
district court’s decision on a motion for JMOL is reviewed
de novo, reapplying the JMOL standard. Ford v. Cimar-
ron Ins. Co., Inc., 230 F.3d 828, 830 (5th Cir. 2000) (citing
Omnitech Int’l, Inc. v. Clorox Co., 11 F.3d 1316, 1322-23
(5th Cir. 1994)). JMOL is appropriate when a party has
been fully heard on an issue and there is no legally suffi-
14 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
cient evidentiary basis for a reasonable jury to find for
that party on that issue. Fed. R. Civ. P. 50(a)(1).
The jury heard evidence from Summit’s expert,
Dr. Jones, that Samsung’s accused devices perform the
methods of the asserted claims. Dr. Jones explained that
the carriers dictate image height and width resolution
parameters to maintain image quality in preparation for
publication. J.A. 6128-29, 7282-83. Dr. Jones also ex-
plained that the pre-processing performed by Samsung’s
phones is in preparation for publication. J.A. 7283.
Dr. Jones outlined the difference between preparing for
transmission and preparing for publication. J.A. 6149-50.
Dr. Jones noted that if the pre-processing were only for
transmission, Samsung could use an “extremely low
JPEG quality parameter” that “would likely look terrible
at the end but it would be quite small.’’ J.A. 7283.
Samsung’s expert, Dr. Sacerdoti, admitted that the
source code contained in each of the phones has a configu-
rable maximum file size as dictated by the carriers.
J.A. 7001. Dr. Sacerdoti agreed with Dr. Jones that the
carrier requirements for image resolution were related to
how an image is viewed on the screen. J.A. 7000. He also
agreed that the carrier requirements for image resolution
were not transmission requirements. Id.
Both parties were fully heard on this issue, and there
exists legally sufficient evidentiary basis for a reasonable
jury to find for Summit on this issue. This evidence
supports the jury’s verdict finding that Samsung’s ac-
cused devices perform the methods of the asserted claims.
Thus, the district court did not err in denying Sam-
sung’s JMOL with respect to infringement.
C. Invalidity
At trial, Samsung argued that the ’482 patent was in-
valid as anticipated by the prior art reference Mattes.
After the jury returned its verdict finding the five assert-
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 15
ed claims of the ’482 patent not invalid and infringed, the
district court denied Samsung’s pre-verdict JMOL of
invalidity.
Samsung argues that the evidence does not support
the jury’s verdict that the ’482 patent is not invalid.
Samsung argues that it presented clear and convincing
evidence of invalidity. We disagree.
A party challenging the validity of a patent must es-
tablish invalidity by clear and convincing evidence. See
Microsoft Corp. v. i4i Ltd. ––– U.S. ––––, 131 S. Ct. 2238,
2242 (2011). Anticipation is a factual question that we
review for substantial evidence when appealed from a
jury verdict. SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d
1365, 1373 (Fed. Cir. 2013). A claim is anticipated only if
each and every element is found within a single prior art
reference, arranged as claimed. See NetMoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
The jury heard evidence from Summit’s expert,
Dr. Jones, that at least one element of each asserted claim
was missing from that reference. At trial, Dr. Jones
focused his testimony regarding the prior art Mattes
patent on the pre-processing requirements of the ’482
patent. Specifically, Dr. Jones testified that Mattes fails
to disclose limitation (b) of claim 38: “one or more pre-
processing parameters controlling said client device in a
placement of said digital content into a specified form.”
Dr. Jones testified that in Mattes it is the server—not the
client device—that contains the software for pre-
processing the image and that Mattes does not disclose
performing the image analysis on the client device.
J.A. 7271, 7273.
The jury heard expert testimony from both sides. The
jury verdict is supported by substantial evidence, and we
have no cause to disturb it. Thus, the district court did
not err in denying Samsung’s JMOL with respect to
invalidity.
16 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
D. Expert Testimony
Samsung appeals the district court’s denial of Sam-
sung’s JMOL motion to exclude Mr. Benoit’s testimony.
Samsung contends that Mr. Benoit’s analysis fails the
standards set forth by Daubert v. Merrell Dow Pharma-
ceuticals, Inc., 509 U.S. 579 (1993). First, Samsung
argues that Mr. Benoit’s methodology was unpublished,
created specifically for this litigation, and never before
employed by Mr. Benoit or by another expert. Second,
Samsung argues that Mr. Benoit’s “premise . . . that a
feature’s use is proportional to its value” was incorrect
and contradicted by other expert testimony. Defendant-
Appellant’s Opening Br. at 6. Third, Samsung questions
the reliability of Mr. Benoit’s use of surveys because
Mr. Benoit is not a survey expert and failed to take the
basic steps required of a secondary expert who purports to
give an opinion based on a third party’s survey.
Summit responds that Mr. Benoit’s analysis was not
“novel and untested” because it was within the framework
of Georgia–Pacific Corp. v. U.S. Plywood Corp., 318 F.
Supp. 1116 (S.D.N.Y. 1970). Summit contends that
Mr. Benoit was not a secondary expert, but a primary
expert, because he “simply used Samsung’s surveys in his
Georgia-Pacific analysis.” Plaintiff-Cross-Appellant’s Br.
at 51.
Whether proffered evidence is admissible at trial is a
procedural issue not unique to patent law, and we there-
fore review the district court’s decision to admit expert
testimony under the law of the regional circuit, here the
Fifth Circuit. Micro Chem., Inc. v. Lextron, Inc., 317 F.3d
1387, 1390-91 (Fed. Cir. 2003) (citing Bose Corp. v. JBL,
Inc., 274 F.3d 1354, 1360 (Fed. Cir. 2001)). The Fifth
Circuit reviews the admissibility of expert testimony for
abuse of discretion. Primrose Operating Co. v. Nat’l Am.
Ins. Co., 382 F.3d 546, 561 (5th Cir. 2004) (citing Vogler v.
Blackmore, 352 F.3d 150, 154 (5th Cir. 2003)). The ques-
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 17
tion here, therefore, is whether the district court abused
its discretion in deciding that Summit’s expert testimony
was admissible. We conclude that it did not.
In Daubert, the Supreme Court set out the require-
ments for admissibility of expert testimony. 509 U.S. 579
(1993). The Supreme Court stated that the trial judge
plays a “gatekeeping role,” id. at 597, which “entails a
preliminary assessment of whether the reasoning or
methodology underlying the testimony is scientifically
valid and of whether that reasoning or methodology
properly can be applied to the facts in issue.” Id. at 592–
93. The Court emphasized that the focus “must be solely
on principles and methodology, not on the conclusions
that they generate.” Id. at 595. This admissibility as-
sessment, while a flexible one, may consider the following
factors: (1) whether the methodology is scientific
knowledge that will assist the trier of fact; (2) whether the
methodology has been tested; (3) whether the methodolo-
gy has been published in peer-reviewed journals; (4)
whether there is a known, potential rate of error; and (5)
whether the methodology is generally accepted. Id. at
591-95.
The admissibility of expert evidence is also governed
by Rules 702 and 703 of the Federal Rules of Evidence.
“Rule 702 was amended in response to Daubert and cases
applying it, including Kumho Tire.” Micro Chem., 317
F.3d at 1391 (citing Kumho Tire Co. v. Carmichael, 526
U.S. 137, 150 (1999)). Rule 702 states:
A witness who is qualified as an expert by
knowledge, skill, experience, training, or educa-
tion may testify in the form of an opinion or oth-
erwise if:
(a) the expert’s scientific, technical, or other spe-
cialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in
issue;
18 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
(b) the testimony is based on sufficient facts or da-
ta;
(c) the testimony is the product of reliable princi-
ples and methods; and
(d) the expert has reliably applied the principles
and methods to the facts of the case.
Fed. R. Evid. 702. Rule 703 states:
An expert may base an opinion on facts or data in
the case that the expert has been made aware of
or personally observed. If experts in the particular
field would reasonably rely on those kinds of facts
or data in forming an opinion on the subject, they
need not be admissible for the opinion to be ad-
mitted. But if the facts or data would otherwise be
inadmissible, the proponent of the opinion may
disclose them to the jury only if their probative
value in helping the jury evaluate the opinion
substantially outweighs their prejudicial effect.
Fed. R. Evid. 703.
Under these rules, a district court may exclude evi-
dence that is based upon unreliable principles or methods,
legally insufficient facts and data, or where the reasoning
or methodology is not sufficiently tied to the facts of the
case. See, e.g., Kumho Tire, 526 U.S. at 150 (the gate-
keeping inquiry must be tied to the particular facts of the
case); i4i Ltd. v. Microsoft Corp., 598 F.3d 831, 854 (Fed.
Cir. 2010) (stating that “Daubert and Rule 702 are safe-
guards against unreliable or irrelevant opinions, not
guarantees of correctness”). But the question of whether
the expert is credible or the opinion is correct is generally
a question for the fact finder, not the court. Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1314 (Fed. Cir. 2014),
overruled en banc in part not relevant here, Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
Indeed, “[v]igorous cross-examination, presentation of
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 19
contrary evidence, and careful instruction on the burden
of proof are the traditional and appropriate means of
attacking shaky but admissible evidence.” Daubert, 509
U.S. at 596.
This court has recognized that estimating a reasona-
ble royalty is not an exact science. The record may sup-
port a range of reasonable royalties, rather than a single
value. Likewise, there may be more than one reliable
method for estimating a reasonable royalty. Apple, 757
F.3d at 1315. A party may use the royalty rate from
sufficiently comparable licenses, value the infringed
features based upon comparable features in the market-
place, or value the infringed features by comparing the
accused product to non-infringing alternatives. Id. A
party may also use what this court has referred to as “the
analytical method,” focusing on the infringer’s projections
of profit for the infringing product. Lucent Techs., 580
F.3d at 1324.
All approaches have certain strengths and weakness-
es, and, depending upon the facts, one or all may produce
admissible testimony in a particular case. Because each
case presents unique circumstances and facts, it is com-
mon for parties to choose different, reliable approaches in
a single case and, when they do, the relative strengths
and weaknesses of each approach may be exposed at trial
or attacked during cross-examination. That one approach
may better account for one aspect of a royalty estimation
does not make other approaches inadmissible.
In sum, while all approximations involve some degree
of uncertainty, the admissibility inquiry centers on
whether the methodology employed is reliable. Daubert,
509 U.S. at 589-595. A distinct but integral part of that
inquiry is whether the data utilized in the methodology is
sufficiently tied to the facts of the case. Kumho Tire, 526
U.S. at 150. Hence, a reasonable or scientifically valid
methodology is nonetheless unreliable where the data
20 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
used is not sufficiently tied to the facts of the case. See,
e.g., LaserDynamics, Inc. v. Quanta Computer, Inc., 694
F.3d 51, 78-81 (Fed. Cir. 2012) (granting a new trial
because damages testimony relied upon licenses that were
not comparable and therefore not relevant). Likewise,
ideal input data cannot save a methodology that is
plagued by logical deficiencies or is otherwise unreasona-
ble. See Daubert, 509 U.S. at 592-93 (the court must
make “a preliminary assessment of whether the reasoning
or methodology underlying the testimony is scientifically
valid and of whether that reasoning or methodology
properly can be applied to the facts in issue) (emphasis
added). But where the methodology is reasonable and its
data or evidence are sufficiently tied to the facts of the
case, the gatekeeping role of the court is satisfied, and the
inquiry on the correctness of the methodology and of the
results produced thereunder belongs to the factfinder.
To estimate a reasonable royalty rate in this case,
Mr. Benoit started by estimating that the carriers pay
Samsung $14.15 to include a camera component in Sam-
sung’s phones. J.A. 6372. To arrive at this estimate,
Mr. Benoit used Samsung’s annual reports, internal cost
and revenue spreadsheets, and interrogatory responses to
determine that the camera component accounted for 6.2%
of the phone’s overall production cost. J.A. 6374. Accord-
ingly, he attributed 6.2% of Samsung’s revenue from
selling each phone—i.e., $14.15—to the camera’s func-
tionality. J.A. 6374.
To apportion the camera-related revenue further,
Mr. Benoit estimated the percentage of camera users who
used the camera to perform the infringing methods rather
than for other purposes. To do this, he relied on surveys
commissioned by Samsung in the ordinary course of its
business and on another survey he found on his own. J.A.
6374-75. The surveys were conducted by J.D. Power and
Associates, Pugh Research, Forrester, and ComScore.
J.A. 6375. Using the surveys, Mr. Benoit estimated that
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 21
at least 65.3% of camera users used the camera regularly
to capture only photos rather than video. J.A. 6377-79.
He calculated that at least 77.3% of those users who
captured only photos shared the photos, and that at least
41.2% of those users who shared the photos did so by
MMS rather than by email or web storage. J.A. 6379-84.
Lastly, Mr. Benoit observed that 100% of those photos
shared by MMS were resized. J.A. 6384. Multiplying
these percentages together, Mr. Benoit thus estimated
that at least 20.8% of camera users utilized the camera
for the infringing features rather than for other camera-
related features.
Based on these usage statistics, Mr. Benoit concluded
that 20.8% of Samsung’s $14.15 revenue for including the
camera component in each phone—i.e., $2.93—was due to
the infringing features. J.A. 6386. Using Samsung’s
annual reports to estimate its profit margins and capital
asset contributions, Mr. Benoit concluded that $0.56 of
the $2.93 revenue was profit attributable to the infringe-
ment. J.A. 6386-89.
Mr. Benoit testified that to determine a reasonable
royalty at a hypothetical negotiation, the parties would
focus on allocating the $0.56 benefit Samsung gained by
utilizing the patented features. Mr. Benoit testified that
the negotiation would concern the entire $0.56 benefit
because Samsung had no non-infringing alternatives, and
the entire benefit was therefore incremental profit from
using the patent. J.A. 6390. Mr. Benoit testified that
because neither party had a stronger negotiating position,
the parties would have split the $0.56 evenly to derive a
reasonable royalty of $0.28 per device. J.A. 6389-91,
6395. Mr. Benoit cited three academic articles and the
Nash Bargaining Solution to support his theory of an even
22 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
split. 3 Based on the per-device royalty and on the number
of infringing devices sold by Samsung, Mr. Benoit esti-
mated that a hypothetical negotiation would have result-
ed in a reasonable royalty of $29 million. J.A. 6398.
In Daubert, The Supreme Court has delineated cer-
tain factors to assist courts in evaluating the foundation
of a given expert’s testimony, while carefully emphasizing
the non-exhaustive nature of these factors. Suggested
considerations include whether the theory or technique
the expert employs is generally accepted, whether the
theory has been subjected to peer review and publication,
whether the theory can and has been tested, whether the
known or potential rate of error is acceptable, and wheth-
er there are standards controlling the technique’s opera-
tion. As the Fifth Circuit has noted, “[t]here is no
formula, and the court must judge admissibility based on
the particular facts of the case.” Wells v. SmithKline
Beecham Corp., 601 F.3d 375, 378-79 (5th Cir. 2010).
The Supreme Court has called the inquiry envisioned
by Rule 702 a “flexible one” and indicated that these
factors may be considered, but are not exhaustive. Daub-
ert, 509 U.S. at 594. The Fifth Circuit has held expert
testimony admissible even though multiple Daubert
factors were not satisfied. See, e.g., United States v.
Norris, 217 F.3d 262, 269-71 (5th Cir. 2000). Still, the
Supreme Court has warned that we must not “deny the
importance of Daubert’s gatekeeping requirement. The
objective of that requirement is to ensure the reliability
and relevancy of expert testimony.” Kumho Tire, 526 U.S.
at 152.
3 On appeal, Samsung does not challenge
Mr. Benoit’s use of Nash Bargaining.
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 23
In this case, Mr. Benoit’s damages methodology was
based on reliable principles and was sufficiently tied to
the facts of the case. Mr. Benoit first estimated Sam-
sung’s economic benefit from infringement by specifically
focusing on the infringing features and by valuing those
infringing features based on Samsung’s own data regard-
ing use and on its own financial reports outlining produc-
tion costs and profits. Mr. Benoit then envisioned a
hypothetical negotiation in which the parties would have
bargained for respective shares of the economic benefit,
given their respective bargaining positions and alterna-
tives to a negotiated agreement. Mr. Benoit’s methodolo-
gy was structurally sound and tied to the facts of the case.
That Mr. Benoit’s methodology was not peer-reviewed
or published does not necessitate its exclusion. We recog-
nize that the fact-based nature of Mr. Benoit’s damages
testimony made it impractical, if not impossible, to sub-
ject the methods to peer review and publication. But
“[p]ublication . . . is not a sine qua non of admissibility,”
and “in some instances well-grounded but innovative
theories will not have been published.” Daubert, 509 U.S.
at 593. Consequently, “[w]here an expert otherwise
reliably utilizes scientific methods to reach a conclusion,
lack of textual support may go to the weight, not the
admissibility of the expert’s testimony.” Knight v. Kirby
Inland Marine Inc., 482 F.3d 347, 354 (5th Cir. 2007)
(internal quotation marks omitted).
Samsung argues that Mr. Benoit’s “premise . . . that a
feature’s use is proportional to its value” was incorrect
and contradicted by expert testimony. Defendant-
Appellant’s Opening Br. at 6. But as we noted in Lucent,
“an invention used more frequently is generally more
valuable than a comparable invention used infrequently”
and “frequency of expected use and predicted value are
related.” 580 F.3d at 1333. There is no dispute that use
of the claimed invention is relevant under Georgia-Pacific:
24 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
Georgia-Pacific factor 11 looks at use of the invention and
at evidence probative of the value of that use. Here, the
district court did not abuse its discretion in determining
that Mr. Benoit’s methodology, involving the correlation
of use with value, was not unreliable.
Samsung’s argument that Mr. Benoit was unqualified
to rely on survey data compiled by third parties is also not
persuasive. As the district court held, Mr. Benoit need
not be a survey expert to testify about the information
compiled by third-party surveys, so long as the infor-
mation is of a type reasonably relied upon by experts in
the field to form opinions upon the subject.
To the extent Mr. Benoit’s credibility, data, or factual
assumptions have flaws, these flaws go to the weight of
the evidence, not to its admissibility. Once an expert has
been qualified, the trial court’s gatekeeping inquiry
focuses on the expert’s methodology and on whether the
methodology is sufficiently tied to the facts of the case.
Where the methodology is sound and the evidence relied
upon is sufficiently related to the case, disputes over the
expert’s credibility or over the accuracy of the underlying
facts are for the jury. See i4i, 598 F.3d at 852. Here,
Samsung cross-examined Mr. Benoit and, ultimately, the
jury evaluated Mr. Benoit’s opinions.
In sum, Samsung has not shown that the district
court abused its discretion in allowing Mr. Benoit to
testify regarding his apportionment methodology.
E. Damages
In its JMOL motion, Samsung argued that the jury’s
damages award of $15 million is not supported by sub-
stantial evidence. Samsung now argues that Mr. Benoit’s
analysis was flawed and that it should not have been
admitted, and therefore cannot support the damages
verdict. Samsung also argues that the Facebook and RIM
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 25
settlement agreements cannot support the damages
award because they are not sufficiently comparable.
Samsung argues there was no testimony at trial indicat-
ing that the Facebook license was comparable or relevant
in any way to what a reasonable royalty would have been
in this case. Further, Samsung argues that the RIM
license, alone, is insufficient to support the jury’s damages
award. Thus, Samsung concludes that substantial evi-
dence does not support the jury’s damages award. We
disagree.
35 U.S.C. § 284 provides that upon a finding of in-
fringement, “the court shall award the claimant damages
adequate to compensate for the infringement, but in no
event less than a reasonable royalty for the use made of
the invention by the infringer.” This court has held that a
reasonable method for determining a reasonable royalty is
the hypothetical negotiation approach, which “attempts to
ascertain the royalty upon which the parties would have
agreed had they successfully negotiated an agreement
just before infringement began.” Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009).
Samsung is correct that Summit failed to present evi-
dence that the Facebook license was comparable or rele-
vant to calculating a reasonable royalty in this case.
Because neither Summit’s brief nor our independent
review of Mr. Benoit’s testimony shows otherwise, we do
not address the Facebook license further.
The damages evidence presented by Summit at trial
included Mr. Benoit’s testimony regarding the apportion-
ment methodology and the RIM license agreement. In its
brief, Samsung conflates the issue of whether the RIM
license should have been excluded with whether the
license supported the jury’s damages verdict. See Appel-
lants’ Op. Br. at 65-67. Samsung does not challenge the
admission of the RIM license, and we therefore consider
only the issue of whether substantial evidence supports
26 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
the jury’s verdict, in view of the RIM license and
Mr. Benoit’s testimony.
Mr. Benoit’s testimony and the RIM license supported
the jury’s damages verdict. Mr. Benoit testified that the
RIM license conveys rights to the ’482 patent and that
both RIM and Samsung are similarly situated because
both sell camera phones containing the accused MMS
functionality. J.A. 6394, 6482-83. The jury also heard
evidence regarding the royalty amount in the RIM license
and about Samsung’s sales volume in comparison to
RIM’s. J.A. 6394-95. The RIM license was therefore
sufficiently relevant to a hypothetical negotiation, and in
conjunction with Mr. Benoit’s testimony, it provided
substantial evidence supporting the jury’s damages
verdict.
We agree with the district court that the jury verdict
was supported by sufficient evidence and tied to the facts
of this case. We therefore affirm the district court’s denial
of Samsung’s motion for judgment as a matter of law of no
damages.
F. Lump Sum
Summit cross-appeals, challenging the district court’s
determination that the jury verdict represents an amount
of a lump-sum license through the life of the patent and
compensates Summit for both past and future infringe-
ment. Summit argues that the jury’s award cannot be a
lump sum through the life of the patent because the
relevant evidence, arguments, and instructions, and the
verdict form were all limited to damages for past in-
fringement. Summit also argues that its equitable claim
for future damages is not an issue for the jury. Thus,
Summit concludes that it is entitled to recover damages
for future infringement. We disagree.
This court has not directly addressed whether a jury
can award lump-sum damages through the life of the
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. 27
patent. We have, however, permitted such relief. In
Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365,
1378 (Fed. Cir. 2010), the district court rejected the
defendant’s argument that the jury’s damages award was
necessarily a lump-sum award intended to compensate
the patentee for past and future infringement, reasoning
that the evidence at trial provided no way of knowing
what the jury actually did. Telcordia, 592 F. Supp. 2d
727, 747 n.8 (D. Del. 2009), aff’d in part, vacated in part,
612 F.3d 1365 (Fed. Cir. 2010). When the defendant
appealed the district court’s order granting the patentee
equitable relief in the form of an ongoing royalty, this
court affirmed, reasoning that the court did not abuse its
“broad discretion” in interpreting the verdict form because
the verdict form was ambiguous, neither party had pro-
posed the jury’s exact $6.5 million award, and it was
“unclear whether the jury based its award on a lump-sum,
paid-up license, running royalty, some variation or com-
bination of the two, or some other theory.” Telcordia, 612
F.3d at 1378.
Similarly, in Whitserve, LLC v. Computer Packages,
Inc., 694 F.3d 10, 35-38 (Fed. Cir. 2012), this court vacat-
ed and remanded the district court’s denial of supple-
mental damages for infringement after the verdict but
before final judgment was entered because the court had
failed to explain its reasons for denying such damages.
This court rejected the defendant’s argument that the
patentee’s supplemental damages request was properly
denied because the jury had necessarily awarded a lump-
sum license for all past and future infringement. Id. at
38. This court noted that “nothing in the record would
support” that conclusion because “the parties limited their
damages arguments to past infringement rather than
projected future infringement” and the “jury’s verdict did
not indicate that the award was meant to cover future use
of [plaintiff’s] patents[.]” Id. at 35.
28 SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD.
In this case, the district court properly denied Sum-
mit’s request for an ongoing royalty because the jury
award compensated Summit for both past and future
infringement through the life of the patent. Samsung’s
expert, Mr. Martinez, testified that a lump-sum award
was appropriate. J.A. 7089-90. He also testified regard-
ing the weight the jury should give the license agreements
introduced into evidence, all of which were lump-sum
licenses. Moreover, Summit’s expert, Mr. Benoit, admit-
ted that a lump-sum award would compensate Summit
through the life of the patent. J.A. 6452, 6479-80. When
the jury returned its verdict, it indicated on the verdict
form that the award was a lump sum by writing “lump
sum” on the verdict form. We see no basis to disturb the
district court’s determination and hold that the district
court did not abuse its discretion in denying Summit’s
request for an ongoing royalty.
III. CONCLUSION
For each of the reasons stated above, we affirm the
district court’s claim construction of “being provided to,”
affirm the infringement and invalidity verdicts, affirm the
district court’s determination regarding the admissibility
of Summit’s damages expert’s testimony, affirm the
district court’s determination regarding the damages
award, and affirm the determination of the district court
that Summit is not entitled to a running royalty.
AFFIRMED