United States Court of Appeals
for the Federal Circuit
______________________
PROMEGA CORPORATION,
Plaintiff-Cross-Appellant
MAX-PLANCK-GESELLSCHAFT ZUR
FOERDERUNG DER WISSENSCHAFTEN E.V.,
Plaintiff
v.
LIFE TECHNOLOGIES CORPORATION,
INVITROGEN IP HOLDINGS, INC., APPLIED
BIOSYSTEMS, LLC,
Defendants-Appellants
______________________
2013-1011, 2013-1029, 2013-1376
______________________
Appeals from the United States District Court for the
Western District of Wisconsin in No. 10-CV-0281, Judge
Barbara B. Crabb.
______________________
Decided: November 13, 2017
______________________
SETH P. WAXMAN, Wilmer Cutler Pickering Hale and
Dorr, LLP, Washington, DC, for plaintiff-cross-appellant.
Also represented by KEVIN LAMB, THOMAS SAUNDERS;
MARK CHRISTOPHER FLEMING, ERIC FLETCHER, JANINE
MARIE LOPEZ, Boston, MA; PROSHANTO MUKHERJI, Fish &
2 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
Richardson, PC, Boston, MA; SUSAN REBECCA PODOLSKY,
Law Offices of Susan R. Podolsky, Alexandria, VA.
EDWARD R. REINES, Weil, Gotshal & Manges LLP,
Redwood Shores, CA, for defendants-appellants. Also
represented by MARION MCLANE READ, DEREK C. WALTER;
CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Washing-
ton, DC.
DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, for amicus curiae The Internet Association. Also
represented by PAUL ALESSIO MEZZINA; ADAM M. CONRAD,
North Carolina Business Court, Charlotte, NC.
PETER J. BRANN, Brann & Isaacson, Lewiston, ME, for
amici curiae Newegg, Inc., Acushnet Company, Limelight
Networks, Inc., QVC, Inc., SAS Institute, Inc. Also repre-
sented by STACY O. STITHAM, DAVID SWETNAM-BURLAND.
______________________
Before PROST, MAYER, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
This case returns to us on remand from the Supreme
Court. See Life Techs. Corp. v. Promega Corp., 137 S. Ct.
734, 741 (2017) (Promega II). Defendants-Appellants
(collectively, Life) sought review of our decision in
Promega Corp. v. Life Technologies Corp., 773 F.3d 1338
(Fed. Cir. 2014) (Promega I), arguing, inter alia, that we
erred in holding that a multicomponent product assem-
bled overseas could infringe a United States patent under
35 U.S.C. § 271(f)(1) 1 when only a single component of the
1 Section 271(f)(1) states:
Whoever without authority supplies or causes
to be supplied in or from the United States all or a
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 3
product is supplied from the United States. The Supreme
Court granted Life’s petition for a writ of certiorari,
reversed our judgment, and remanded for further pro-
ceedings consistent with its holding that Ҥ 271(f)(1) does
not cover the supply of a single component of a multicom-
ponent invention.” Promega II, 137 S. Ct. at 743.
The Supreme Court’s opinion did not affect several of
our prior holdings. First, we held that the asserted claims
of four patents owned by Promega Corporation (Promega)
were invalid for failure to comply with the enablement
requirement in 35 U.S.C. § 112, ¶ 1. Promega I, 773 F.3d
at 1346–50. Second, we held that certain of Life’s alleged
acts of infringement were not licensed under a 2006
license agreement between Life and Promega. 2 Id. at
1357–58. Finally, we held that Life was not required to
“actively induce” a third party to combine the components
of the accused products to be liable under § 271(f)(1). Id.
at 1351–53. Rather, the active inducement requirement
could be met if Life had the specific intent to combine the
components itself. Id. We reaffirm our holdings on the
enablement, licensing, and active inducement issues.
substantial portion of the components of a patent-
ed invention, where such components are uncom-
bined in whole or in part, in such manner as to
actively induce the combination of such compo-
nents outside of the United States in a manner
that would infringe the patent if such combination
occurred within the United States, shall be liable
as an infringer.
2 The 2006 license agreement was originally be-
tween Promega and Applied Biosystems, LLC, which is
now a wholly-owned subsidiary of Life. See Promega I,
773 F.3d at 1344 & n.3.
4 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
The Supreme Court’s opinion, however, requires us to
reconsider two of our prior holdings. First, we must
reexamine our reversal of the district court’s grant of
Life’s motion for judgment as a matter of law (JMOL) that
Promega failed to prove its infringement case under 35
U.S.C. § 271(a) 3 and § 271(f)(1). 4 See id. at 1358. Second,
we must reconsider our vacatur of the district court’s
denial of Promega’s motion for a new trial on damages
and infringement. Id. For the reasons below, we now
affirm the district court’s decisions on these motions.
BACKGROUND
In our prior opinion, we described the asserted pa-
tents, accused products, and procedural history before the
district court. See id. at 1341–45. We recite below only
the facts relevant to our analyses of the district court’s
rulings on Life’s JMOL motion and Promega’s motion for
a new trial.
I. Factual Background
From 2006 through 2012, Life sold genetic testing kits
designed to detect the presence of “short tandem repeats”
(STR), which are repeating sequences of DNA that are
analyzed when profiling an individual’s DNA. Id. at
1341–42, 1344. Life’s kits, referred to as “STR kits,” were
3 Section 271(a) states:
Except as otherwise provided in this title,
whoever without authority makes, uses, offers to
sell, or sells any patented invention, within the
United States or imports into the United States
any patented invention during the term of the pa-
tent therefor, infringes the patent.
4 Sections 271(f)(1) and 271(a) were the only in-
fringement theories pursued by Promega at trial, since it
abandoned other theories it had pled. See J.A. 2296.
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 5
assembled in the United Kingdom. Id. at 1350. Each of
the kits was comprised of five components. At least one of
the five components in each kit—Taq polymerase—was
supplied from the United States. Id. at 1344.
Promega was the exclusive licensee of United States
Reissue Patent No. 37,984 (Tautz patent), which expired
in 2015. The Tautz patent claimed methods and kits for
analyzing DNA to determine the identity and kinship of
organisms. See, e.g., Tautz patent, J.A. 406, col. 11 l. 51–
col. 12 l. 64; J.A. 407, col. 13 ll. 28–47.
II. Proceedings in District Court
A. Pretrial Proceedings
Promega sued Life for infringement of the Tautz pa-
tent by Life’s STR kits, seeking damages for infringement
occurring between 2006 and 2012.
At summary judgment, Promega moved for a ruling
that Life’s accused products meet all of the elements of
the asserted claims of the Tautz patent. See generally
J.A. 688–703. Life did not challenge this assertion.
Therefore, the district court granted Promega’s motion.
Promega did not request a ruling on Life’s liability under
any particular subsection of § 271 or any ruling quantify-
ing Life’s infringing acts. Therefore, the district court’s
summary judgment ruling did not resolve the ultimate
issue of Life’s liability for infringement—that is, the
district court did not decide how many of Life’s kits, all
assembled abroad, were sold, offered for sale, or imported
into the United States (§ 271(a)) or included a substantial
portion of their respective components that were supplied
from the United States (§ 271(f)(1)). 5 The district court
5 Promega’s brief in support of its motion for sum-
mary judgment cited evidence of infringing sales in the
United States but did not quantify such sales.
6 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
explained, in a later opinion resolving the parties’ various
motions in limine, that, at summary judgment, it “did not
enter judgment in favor of plaintiff on liability generally.”
J.A. 36.
B. Trial
The case proceeded to a jury trial. On the first day of
trial, the parties stipulated that Life’s total worldwide
sales of the accused products during the pertinent time
period amounted to $707,618,247. J.A. 189. Later, dur-
ing Life’s case-in-chief, a dispute arose as to the effect of
the parties’ stipulation. During Life’s direct examination
of Mr. Guido Sandulli, one of Life’s employees, counsel for
Life asked Mr. Sandulli to quantify the amount of United
States sales of Life’s accused products since 2006. J.A.
6126. Promega objected to the question on the basis that
the amount of United States sales was irrelevant to any
issue in dispute at trial. The district court overruled the
objection. Promega then requested a sidebar at which it
argued that “[t]he whole purpose of [the stipulation] was
to remove from this case the need for the plaintiff to go
into [a] series of witnesses to prove up sales of infringing
kits.” J.A. 6127. Life countered that there was still a live
issue as to whether Promega was entitled to “damages on
worldwide sales or simply on U.S. sales.” J.A. 6130.
Promega responded that prior statements by Life had
created the impression that Promega was not required to
prove anything at trial regarding the amount of domestic
versus foreign sales, in view of the stipulation.
The district court expressed its own confusion regard-
ing whether the parties had agreed that Promega did not
need to separately quantify domestic and foreign sales.
This confusion arose from prior statements by Life indi-
cating that the only disputed issues for trial related to
licensing, damages, and willfulness. For example, when
Promega attempted to introduce sales evidence during its
case-in-chief, Life objected, stating that the evidence was
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 7
irrelevant to any issue at trial and that “[t]he reason for
[the] stipulation was so the plaintiffs would not need to
use underlying sales data to prove some overall sales
number.” J.A. 5571–73. After acknowledging that nei-
ther party had gotten to the “nub of the problem” until the
above-described dispute arose, the district court indicated
to the parties that Promega still needed to prove the
amount of damages attributable to infringement under
§ 271(a) and the amount of damages attributable to
infringement under § 271(f)(1). J.A. 6190; see also id.
(“[P]laintiff thought that it didn’t have to put in any more
than it already had, and that’s not correct.”). In other
words, the fact that Life’s accused kits met all the limita-
tions of the asserted claims did not automatically mean
that Promega had proven it was entitled to a damages
amount based on Life’s total worldwide sales. But in view
of Life’s statements, which Promega apparently under-
stood as conceding the issue of liability entirely, and in
view of the district court’s “miscommunication” on this
issue, the district court proposed that Promega be given a
second chance to meet its burden by presenting evidence
of infringing sales in its rebuttal case. Id. The parties
agreed to this proposal.
In its rebuttal case, Promega presented additional
evidence of infringement. For example, Promega submit-
ted financial spreadsheets generated by Life showing
sales of the accused products to certain law enforcement
agencies in the United States. Promega elicited testimo-
ny from Mr. Sandulli indicating that, although all of the
accused kits were assembled in the United Kingdom, the
Taq polymerase component used in all of the accused kits
originated from the United States. In addition,
Promega introduced evidence that three of the accused
products—the “Identifiler” kits—included primer compo-
nents that were supplied from the United States. Howev-
er, Promega did not proffer evidence or elicit testimony
intended to prove a specific amount of domestic, foreign,
8 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
or any other subset of total sales. Instead, Promega relied
only on the stipulated worldwide sales figure as a poten-
tial damages base. See, e.g., J.A. 6416–19 (counsel for
Promega identifying, at closing argument, only Life’s total
worldwide sales as a potential damages base).
Promega continued to rely solely on the worldwide
sales figure when it submitted a proposed special verdict
form to the district court that asked the jury to determine
a single amount for sales falling under either, or both, of
§ 271(a) and § 271(f)(1). Life objected to Promega’s pro-
posal because, inter alia, “it [did] not make clear that
Promega [bore] the burden of proof of establishing the
quantum of kits that were made, used, sold in the United
States, or imported into the United States.” J.A. 2441.
The district court adopted Promega’s proposal, over Life’s
objection, and incorporated it into Question No. 2 of the
special verdict form: “What is the total dollar amount of
defendants’ sales of STR kits that were United States
sales as that term has been defined for you in the instruc-
tions?” J.A. 202. In turn, the jury instructions used
Promega’s proposed definition of “United States sales” to
include “all kits made, used, offered for sale, sold within
the United States or imported into the United States, as
well as kits made outside the United States where a
substantial portion of the components are supplied from
the United States.” J.A. 189. Promega, in effect, sought
to prevent the jury from calculating separate damages
numbers under § 271(a) and § 271(f)(1), proposing instead
that the jury calculate a single damages amount. This
strategy succeeded when the district court adopted
Promega’s proposed Question No. 2 in the special verdict
form and Promega’s definition of “United States sales.”
The jury found that all of Life’s $708 million in
worldwide sales qualified as “United States sales,” and
also found that a substantial portion of these sales, ap-
proximately $637 million, were for permitted uses under
the 2006 license agreement. J.A. 202. The jury found
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 9
that all of Life’s unlicensed sales infringed Promega’s five
asserted patents under § 271(a) and/or § 271(f)(1) and
awarded Promega $52 million in lost profits damages.
The district court entered judgment on the verdict.
C. Post-Trial Proceedings
1. Life’s JMOL Motion
Life filed a renewed motion for JMOL pursuant to
Federal Rule of Civil Procedure 50(b), arguing that
Promega “failed to prove the applicable damages for
patent infringement” and was therefore entitled to no
damages. J.A. 2296. 6 Life contended that Promega was
not entitled to any damages award because, inter alia,
(1) the damages verdict could not stand because it was
premised on a misinterpretation of § 271(f)(1), and
(2) Promega had failed to present adequate evidence of an
amount of infringing sales under either § 271(a) or
§ 271(f)(1). Life’s briefing in support of the motion em-
phasized Promega’s failure to quantify and categorize the
accused acts of infringement. See Life Open. JMOL Br.,
No. 10-CV-281 (W.D. Wis. Mar. 22, 2012), ECF No. 581 at
11 (“[W]ith only an aggregate sales number for all kits
combined, the jury had no evidence upon which it could
partition that sales number up among any smaller collec-
tion of kits to award damages for any infringement proven
for any such lesser group of kits.”). Promega’s response
focused on preserving the entirety of the damages verdict,
arguing, inter alia, (1) that all of the accused products
infringed under § 271(f)(1) because all of the products
included the Taq polymerase component, which qualified
as a “substantial portion” of each of the accused products’
6 There is no dispute that Life timely moved under
Rule 50(a) at trial for the same relief under the same
basic reasoning raised in its Rule 50(b) motion. See Trial
Transcript, J.A. 2150–51.
10 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
components, and (2) that all of the accused products
infringed under § 271(a). Importantly, Promega did not
dispute Life’s separate argument that Promega presented
insufficient evidence to support a lesser damages award.
The district court granted Life’s JMOL motion, hold-
ing that no reasonable jury could have found, based on
the trial record, that all of the accused products infringed
under § 271(a) or § 271(f)(1), in light of the district court’s
interpretation of “substantial portion.” It further found
that Promega had waived any argument that the trial
record could support a damages calculation based on an
amount other than worldwide sales by failing to contest
Life’s argument in its opening JMOL brief that the record
contained no evidence that a jury could use to perform
such a calculation. Therefore, in order to defeat Life’s
JMOL motion, trial evidence and all reasonable infer-
ences drawn in Promega’s favor had to support a finding
that all of the accused products infringed.
Regarding infringement under § 271(f)(1), the district
court held as a matter of law that a single component
could not qualify as a “substantial portion” of the compo-
nents of the accused products under the district court’s
reading of the statute. The district court then concluded
that Promega’s evidence was insufficient to support a
finding that all of the accused kits assembled in the
United Kingdom contained two or more components
originating from the United States. Therefore, the dis-
trict court held that no reasonable jury could have found
that all of the accused products infringed under
§ 271(f)(1).
The district court further held that no reasonable jury
could have found infringement under § 271(a) for all of
the accused products that did not infringe under
§ 271(f)(1). The district court determined, moreover, that
Promega’s cited evidence on § 271(a) infringement—
consisting of deposition testimony from a single Life
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 11
employee—could not support a finding that all of the
accused products were sold or imported into the United
States, even when all reasonable inferences were drawn
in Promega’s favor from such testimony. Because
Promega had waived any argument that the evidence at
trial could support a damages calculation based on any
subset of total sales, and because no reasonable jury could
have found that all of the accused products infringed
under § 271(a) and/or § 271(f)(1), the district court grant-
ed Life’s JMOL motion.
2. Promega’s Motion for a New Trial
After the district court issued its JMOL decision,
Promega obtained new counsel and moved for reconsider-
ation or a new trial, arguing for the first time that the
evidence could support a damages award based on a
subset of worldwide sales. The district court denied
Promega’s motion. The district court reiterated that
Promega had waived any argument based on a subset of
worldwide sales by failing to respond to Life’s argument
on this issue in its JMOL briefing:
In response to defendants’ [JMOL] motion,
plaintiff argued that the motion should be denied
because the evidence was sufficient to support the
jury’s finding that all of defendants’ sales of the
accused products violated § 271(f)(1) or § 271(a).
Plaintiff did not argue in the alternative that de-
fendants’ Rule 50 motion should be denied be-
cause the trial record was sufficient to support a
lesser damages award and it did not respond in
any way to defendants’ contention that plaintiff’s
evidence at trial was limited to defendants’ total
worldwide sales. As a result, I concluded that
plaintiff had conceded this issue.
12 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
J.A. 2365–66.
Promega appealed the district court’s rulings on Life’s
JMOL motion and Promega’s motion for a new trial.
III. Promega I
We reversed the district court’s decisions on both mo-
tions. See Promega I, 773 F.3d at 1341. Regarding
§ 271(f)(1), we held that a single component supplied from
the United States could qualify as a “substantial portion”
of a multicomponent product, depending on the circum-
stances in a given case. Id. at 1356. We then held that,
in this case, substantial evidence supported the jury’s
finding that Life was liable for infringement under
§ 271(f)(1), because a reasonable jury could conclude that
the Taq polymerase component supplied from the United
States qualified as a “substantial portion” of the compo-
nents of each of the accused products. Id. We also held
that, based on Life’s “own admissions, which are support-
ed by evidence in the record,” some unquantified number
of Life’s kits that were “made, used, or sold in the United
States” infringed the Tautz patent under § 271(a). Id. at
1357. 7 Finally, we vacated the district court’s denial of
Promega’s motion for a new trial and remanded with
instructions to conduct a new damages trial in light of our
holding that the asserted claims of four of Promega’s
patents found to have been infringed were invalid for lack
of enablement. Id. at 1358.
7 It is undisputed that Life admitted to at least
some infringement. See, e.g., J.A. 5127 (Life admitting at
trial that there had been “an infringement” and that
Promega was “entitled to be compensated for that in-
fringement”).
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 13
IV. Promega II
The Supreme Court reversed our judgment and re-
manded for further proceedings consistent with the
Court’s opinion that “a single component does not consti-
tute a substantial portion of the components that can give
rise to liability under § 271(f)(1).” Promega II, 137 S. Ct.
at 737. This holding nullified our conclusion in Promega I
that all of the accused products Life made in the United
Kingdom infringed under § 271(f)(1).
V. Post-Remand Submissions by the Parties
The parties submitted statements on how we should
proceed post-remand. See Case No. 13-1011 ECF No. 108
(Life’s Statement), ECF No. 112 (Promega’s Statement).
Life argues that we should affirm the district court’s post-
trial decisions, contending that “[t]he trial judge with her
‘first-hand knowledge of witnesses, testimony, and issues’
simply held Promega to its own considered strategic
litigation decisions, and appropriately denied Promega’s
retrial request.” Life’s Statement at 3 (quoting Unitherm
Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 401
n.3 (2006) (internal quotes and citations omitted)).
Promega counters that we should reaffirm our prior
holdings, reinstating the judgment of infringement under
§ 271(a) and ordering a new trial on damages, because
“[t]he Seventh Amendment, the Patent Act, and precedent
all require a new trial on damages under § 271(a)—not a
windfall judgment of noninfringement,” given Life’s
admissions that it committed infringing acts in the Unit-
ed States. Promega’s Statement at 2, 9.
STANDARDS OF REVIEW
We review a district court’s rulings on post-trial mo-
tions for JMOL and a new trial under regional circuit law.
Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197,
1202 (Fed. Cir. 2010). In the Seventh Circuit, a JMOL
grant is reviewed “without deference, while viewing all
14 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
the evidence in the light most favorable to the nonmoving
party.” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d
1340, 1357 (Fed. Cir. 2010) (citing Harper v. Albert, 400
F.3d 1052, 1061 (7th Cir. 2005)). JMOL is proper when a
party has been fully heard on an issue and there is no
legally sufficient evidentiary basis for a reasonable jury to
find for that party on that issue. Fed. R. Civ. P. 50(a).
“The ruling on a motion for a new trial is a matter
committed to the district court’s discretion,” which the
Seventh Circuit reviews “for abuse of discretion.” Galvan
v. Norberg, 678 F.3d 581, 588 (7th Cir. 2012). In the
Seventh Circuit, appellate review of a decision denying a
new trial is “extremely deferential.” Id.
DISCUSSION
Under 35 U.S.C. § 284, 8 a finding of infringement “es-
tablishes the fact of damage because the patentee’s right
to exclude has been violated.” Lindemann Maschinenfab-
rik GmbH v. Am. Hoist & Derrick Co., 895 F.2d 1403,
1406 (Fed. Cir. 1990). “The statute is unequivocal that
the district court must award damages in an amount no
less than a reasonable royalty” when infringement is
found. Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370,
1381 (Fed. Cir. 2003). However, in this case Promega
expressly waived its right to any award based on a rea-
sonable royalty. See, e.g., Trial Transcript, J.A. 6482
(Counsel for Promega: “Royalties? Don’t want them.
8 Section 284 states, in pertinent part:
Upon finding for the claimant the court shall
award the claimant damages adequate to compen-
sate for the infringement, but in no event less
than a reasonable royalty for the use made of the
invention by the infringer, together with interest
and costs as fixed by the court.
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 15
Wouldn’t have taken them. Don’t expect them.”).
Promega only sought damages in the form of lost profits.
See id. Accordingly, we confine our decision to a consider-
ation of whether Promega is entitled to some award of its
lost profits as “damages adequate to compensate for the
infringement” under the facts of this case. 35 U.S.C.
§ 284.
I. Promega’s Burden to Prove the Amount of Damages
In patent cases, “[t]he burden of proving damages
falls on the patentee,” Lucent Technologies, Inc. v. Gate-
way, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009), and “[t]he
[patentee] must show his damages by evidence,” Philp v.
Nock, 84 U.S. 460, 462 (1873). Damages “must not be left
to conjecture by the jury. They must be proved, and not
guessed at.” Id.
When a patentee seeks lost profits as the measure of
damages, “the patent holder bears the burden of proving
the amount of the award.” Minco, Inc. v. Combustion
Eng’g, Inc., 95 F.3d 1109, 1118 (Fed. Cir. 1996) (emphasis
added). “[T]he amount of a prevailing party’s damages is
a finding of fact on which the plaintiff bears the burden of
proof by a preponderance of the evidence.” SmithKline
Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161,
1164 (Fed. Cir. 1991). “[T]he amount is normally provable
by the facts in evidence or as a factual inference from the
evidence.” Lindemann, 895 F.2d at 1406.
II. Promega’s Waiver of Alternative Damages Arguments
The linchpin of the district court’s rulings on Life’s
JMOL motion and Promega’s motion for a new trial is its
finding that Promega waived any argument that the trial
record supports a damages calculation based on a subset
of Life’s total worldwide sales. In Promega I, we held that
all of the accused products infringed under § 271(f)(1) and
that the jury’s damages verdict—based on total sales—
was supported by substantial evidence. 773 F.3d at 1358.
16 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
It was therefore unnecessary for us to address the district
court’s waiver finding. However, now that it is undisput-
ed that certain of the accused kits did not infringe under
the Supreme Court’s interpretation of § 271(f)(1)—
specifically, kits containing only one component supplied
from the United States that were assembled and sold
overseas to foreign buyers without ever passing through
the United States—we must address the district court’s
waiver finding. 9
We review the district court’s waiver finding using the
same standard applied by the regional circuit. Riverwood
Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1352 (Fed.
Cir. 2003). The Seventh Circuit reviews the ultimate
legal conclusion of waiver de novo and predicate factual
findings for clear error. Baker v. Lindgren, 856 F.3d 498,
506 (7th Cir. 2017).
Under Seventh Circuit precedent, a party may waive
an argument by not raising it in opposition to a Rule 50(b)
motion. See Wallace v. McGlothan, 606 F.3d 410, 418–19
(7th Cir. 2010) (holding that party waived an argument
by failing to raise it in opposition to Rule 50(b) motion).
In its opening JMOL brief, Life argued that, “with only an
aggregate sales number for all kits combined, the jury had
no evidence upon which it could partition that sales
number up among any smaller collection of kits to award
damages for any infringement proven for any such lesser
9 Promega argues that the accused Identifiler kits
contained multiple components supplied from the United
States. See Promega’s Statement at 2. However, in its
post-remand submission Promega does not argue that any
of the other fourteen accused products contained two or
more components supplied from the United States. Nor
does Promega maintain in its post-remand submission
that all of Life’s accused kits infringe under § 271(a) or
§ 271(f)(1).
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 17
group of kits.” Life Open. JMOL Br., No. 10-CV-281
(W.D. Wis. Mar. 22, 2012), ECF No. 581 at 11. The dis-
trict court rephrased Life’s argument as claiming that
Promega “adduced evidence only as to defendants’ total
worldwide sales” and, therefore, that “defendants are
entitled to judgment as a matter of law unless all of those
sales fall under § 271(a) or § 271(f)(1).” J.A. 2340–41.
The district court then found that Promega did not dis-
pute this argument in its responsive JMOL brief and,
therefore, that Promega had “conceded” the point. 10 See
id.
Having reviewed Promega’s responsive JMOL brief,
we agree with the district court that Promega waived any
argument that the trial record could support a damages
award based on a subset of total sales by wholly failing to
address Life’s argument on this point.
Promega’s position at JMOL was completely con-
sistent with Promega’s all-or-nothing damages strategy
that Promega pursued throughout the litigation. At trial,
the district court corrected Promega’s misconceptions
about the import of the parties’ stipulation regarding the
amount of Life’s total worldwide sales and informed
Promega that it needed to put forward evidence separate-
ly proving the amount of infringing acts under § 271(a)
10 In its JMOL opposition brief, Promega argued
that: (1) Life’s JMOL motion raised untimely arguments
that were not raised in Life’s Rule 50(a) motion; (2) Life’s
reading of § 271(f)(1) was improperly narrow; (3) even
under Life’s reading of § 271(f)(1), the evidence supported
a jury’s finding that all of the accused products infringed
under § 271(f)(1); and (4) the evidence supported a jury’s
finding that all of the accused products infringed under
§ 271(a). Promega does not press the first, third, and
fourth arguments in its post-remand statement. The
Supreme Court rejected Promega’s second argument.
18 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
and § 271(f)(1). Promega did not object to the district
court’s characterization of its burden of proof on infringe-
ment, nor did it move the district court for a continuance
of the trial in order to reopen discovery and develop the
evidence necessary to quantify domestic and foreign sales.
Rather, Promega elected to make what appears to be a
cursory attempt at further proving the fact of damages
during its rebuttal case (by showing that some sales were
made to United States customers)—as opposed to any
particular amount of damages. Lindemann, 895 F.2d at
1406 (“In patent law, the fact of infringement establishes
the fact of damage because the patentee’s right to exclude
has been violated. . . . The patentee must then prove the
amount of damage.”).
Promega presented no expert testimony on damages
at trial. Instead, in its rebuttal case, Promega relied on
exhibits and lay testimony, including testimony from Mr.
Sandulli regarding financial spreadsheets showing sales
of the accused products, without using any of this evi-
dence to arrive at any numerical value that could have
been used by a reasonable jury to calculate an award of
lost profits damages. We agree with Life that Promega
did not “produce a witness who could make sense of the
documents” it presented in such a way that could have
enabled a reasonable jury to calculate a damages award.
Life Reply Br. at 50.
Promega later confirmed its adherence to its all-or-
nothing approach by submitting a proposed special ver-
dict form that asked the jury to determine a single “Unit-
ed States sales” figure for sales falling under both § 271(a)
and § 271(f)(1). Promega knew that it needed to prove the
ultimate issue of liability under § 271, as evidenced by its
attempts to put in evidence and elicit testimony regarding
sales in the United States and components supplied from
the United States. These efforts clearly indicate
Promega’s recognition of its burden to separately prove
infringement under § 271(a) and § 271(f)(1), respectively.
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 19
Yet it exclusively argued liability for all, rather than any
subset(s), of the accused kits. 11
Promega’s deliberate strategy to adhere to a single
damages theory had the effect of winnowing out from the
case any argument about damages based on a figure other
than worldwide sales. Cf. Tronzo v. Biomet, Inc., 236 F.3d
1342, 1347 (Fed. Cir. 2001) (affirming the district court’s
refusal to consider a new damages theory presented for
the first time post-remand, because the plaintiff “made
strategic decisions in the initial trial concerning what
evidence and arguments to advance in support of his
theory of damages”). The Supreme Court has explained
that “waiver and forfeiture rules” exist to “ensure that
parties can determine when an issue is out of the case,
and that litigation remains, to the extent possible, an
orderly progression.” Exxon Shipping Co. v. Baker, 554
U.S. 471, 487 n.6 (2008).
11 Promega cites statements by the district court
that, according to Promega, indicate that the district
court determined at summary judgment that Life was
liable for infringement by all of its accused kits. Promega
Open. Br. at 4 (citing J.A. 2287, 6310). This assertion is
belied by the district court’s indication at trial that the
ultimate issue of Life’s liability was unresolved, because
Promega needed to prove the amount of damages at-
tributable to infringement under § 271(a) and the amount
of damages attributable to infringement under § 271(f)(1).
J.A. 6190. Moreover, after the Supreme Court’s decision,
it is now indisputable that Life is not liable for infringe-
ment by all of the accused products, given that kits con-
taining only one component supplied from the United
States that were assembled and sold overseas to foreign
buyers without ever passing through the United States
cannot infringe under § 271(a) or § 271(f)(1).
20 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
The reason for the rules is not that litigation is a
game, like golf, with arbitrary rules to test the
skill of the players. Rather, litigation is a “win-
nowing process,” and the procedures for preserv-
ing or waiving issues are part of the machinery by
which courts narrow what remains to be decided.
Id. (quoting Poliquin v. Garden Way, Inc., 989 F.2d 527,
531 (1st Cir. 1993)). In the instant case, the district court
could properly conclude that Promega abandoned any
alternative damages base when it failed to rebut Life’s
argument in its Rule 50(b) motion that Promega did not
present evidence that a reasonable jury could have relied
on to award damages based on any subset of total world-
wide sales. The district court’s decision was all the more
reasonable given that it warned Promega during trial that
it bore the burden to separately prove infringement under
§ 271(a) and § 271(f)(1). As in Exxon, the district court’s
waiver finding was part of its “sensible efforts to impose
order upon the issues in play and the progress of the
trial.” 554 U.S. at 487 n.6. Such a finding “deserve[s] our
respect.” Id.
III. Life’s JMOL Motion
Promega argues, and Life does not dispute, that the
record contains evidence of admitted infringement by Life
under § 271(a). It further argues that we should reaffirm
our prior decision on § 271(a) infringement and order a
new trial on damages. Promega’s Statement at 9. In
Promega I, we held that an unspecified number of Life’s
accused products infringed the Tautz patent under
§ 271(a). 773 F.3d at 1356–57. We made no finding
regarding the quantity of infringing acts under § 271(a),
because such a finding was unnecessary in light of our
holding that all of the accused products infringed under
§ 271(f)(1). Now that our holding under § 271(f)(1) has
been reversed by the Supreme Court, and in view of the
waiver finding discussed, supra, the only way Promega
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 21
could preserve the jury’s damages verdict is by showing
that the record supports a finding that all of Life’s ac-
cused products that did not infringe under § 271(f)(1)
infringed under § 271(a). Promega has failed to make this
showing.
Before the district court, Promega’s only argument re-
garding § 271(a) infringement that could have saved its
damages award was that all of the accused products
infringed under § 271(a). Promega cited only the testimo-
ny of Michelle Shepherd, one of Life’s employees, in
support of this argument. J.A. 2352–53. Promega aban-
doned this argument on appeal. In any event, we agree
with the district court that Ms. Shepherd’s testimony does
not support the proposition that all of the accused prod-
ucts infringed under § 271(a). Id. (district court noting
that Ms. Shepherd “did not know where all the kits were
made” and “did not know whether foreign orders came
through the United States”). Even when viewing the trial
record in a light most favorable to Promega, Promega’s
arguments and the record do not support a finding that
all of the accused products that did not infringe under
§ 271(f)(1) infringed under § 271(a).
Promega argues that the trial record could support a
jury’s decision to use a damages base other than the total
sales figure. Promega’s Statement at 10. As we discussed
in our prior decision, we agree with Promega that there is
evidence in the record to support some unspecified
amount of § 271(a) infringement. For example, we identi-
fied Mr. Sandulli’s testimony as “testimony explaining the
sales records” that could have been relied on by the jury.
Promega I, 773 F.3d at 1357 (citing Sandulli testimony at
J.A. 6249–68). We also acknowledge that Life has admit-
ted to some unquantified amount of infringement. See
Promega’s Statement at 13. In view of the foregoing, we
concluded in Promega I that some unquantified number of
Life’s kits infringed under § 271(a). 773 F.3d at 1357.
Promega requests that we “reinstate” this decision.
22 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
Promega’s Statement at 10. Because the expiration of the
Tautz patent precludes injunctive relief, and because
Promega waived any argument for a damages calculation
based on anything other than worldwide sales, any rein-
statement of our prior decision on § 271(a) infringement
would be moot. 12
This is not, as Promega argues, a case involving a
“general” damages verdict in which “one of multiple bases
of liability” has “drop[ped] away after trial.” Promega’s
Statement at 2. This is a case where there was a finding
of waiver that carried forward as law of the case to subse-
quent proceedings in the litigation, as discussed in more
detail in § IV, infra. The nature of the waiver under the
circumstances of this case had the effect of limiting the
trial evidence on damages to only the parties’ stipulated
worldwide sales figure. Because there was insufficient
evidence to show that all worldwide sales infringed under
§ 271(a) or § 271(f)(1) (under its proper interpretation),
there was no evidence to support a lost profits damages
calculation under the narrow damages theory Promega
crafted over the course of litigation.
For the foregoing reasons, we affirm the district
court’s decision granting Life’s JMOL motion.
IV. Promega’s Motion for a New Trial
Promega argues that Life’s admitted infringement,
the Seventh Amendment, 13 § 284, and case law from
12For the same reasons, we decline to grant
Promega’s request for a new trial on infringement for kits
comprising at least two components supplied from the
United States, including the Identifiler kits. See
Promega’s Statement at 16–20.
13 The Seventh Amendment recites:
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 23
various circuits require a new trial on damages or a grant
of remittitur. See Promega’s Statement at 14. Promega
further argues that “general verdicts” on damages do not
forfeit the right to damages under each theory individual-
ly underpinning the general verdict. Id. at 16 (citing
Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
Inc., 711 F.3d 1348, 1376–77 (Fed. Cir. 2013)). Therefore,
Promega argues that it should have the opportunity to
prove damages for Life’s admitted infringement under
§ 271(a) and that it should be given an opportunity to
prove infringement under § 271(f)(1) as to the accused
Identifiler kits that, according to Promega, each contained
multiple components supplied from the United States. Id.
at 9, 16. Promega also argues that the district court
improperly held that arguments in support of a motion for
a new trial “must be raised in a JMOL opposition to
preserve them,” arguing that this holding “directly con-
flicts with Rule 50(d).” 14 Id. at 11, 13. Promega cites the
Advisory Committee’s guidance on Rule 50(d) that, “even
after entry of judgment n.o.v. against him,” a verdict-
winner may “move for a new trial in the usual course.”
Id. at 11 (citing Fed. R. Civ. P. 50 advisory committee’s
note (1963)).
In suits at common law, where the value in
controversy shall exceed twenty dollars, the right
of trial by jury shall be preserved, and no fact
tried by a jury, shall be otherwise reexamined in
any court of the United States, than according to
the rules of the common law.
14 Federal Rule of Civil Procedure 50(d) states: “Any
motion for a new trial under Rule 59 by a party against
whom judgment as a matter of law is rendered must be
filed no later than 28 days after the entry of the judg-
ment.”
24 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
Life argues that retrial should not be granted on a
waived theory presented for the first time post-judgment.
Life’s Statement at 16; see also id. at n.4 (citing, e.g.,
Anderson v. Flexel, Inc., 47 F.3d 243, 247 (7th Cir. 1995)
(rejecting new theory urged for the first time post-
judgment)). In addition, Life argues that “Promega’s
reliance on Rule 50(d) is off base,” because Rule 50(d) is
merely a “procedural mechanism” that “allows a party to
file a new trial motion within 30 days after JMOL is
entered” but “does not mean such a motion substantively
erases the losing party’s prior litigation positions.” Life’s
Statement at 10. That a motion for a new trial is proce-
durally permitted by Rule 50 after a grant of JMOL
against a verdict winner does not, in Life’s view, permit
retrial as a matter of course on theories not pursued in
the original trial. See Id. at 16 n.4 (collecting cases).
We agree with Life. Under the law of the case doc-
trine, the district court properly exercised its discretion by
relying on its waiver finding from its JMOL ruling to
support its decision to deny Promega’s motion for a new
trial. J.A. 2369. The district court also permissibly relied
on the Seventh Circuit’s holding that “[a] party may not
introduce evidence or make arguments in a Rule 59
motion that could or should have been presented to the
court prior to judgment.” J.A. 2366 (quoting United
States v. 47 West 644 Route 38, Maple Park, Ill., 190 F.3d
781, 783 (7th Cir. 1999)). If Promega wanted to argue
that the evidence at trial supported a damages calculation
based on anything other than worldwide sales, it should
have raised such an argument at trial and in response to
Life’s Rule 50(b) motion, which specifically attacked
Promega’s damages case on that very ground. Promega
did not, choosing instead to continue to solely pursue an
all-or-nothing damages strategy. Moreover, the district
court afforded Promega a second opportunity to supple-
ment the record and present evidence broken out by
statutory subsection and quantity. See Life’s Statement
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 25
at 2–3. Yet Promega declined to use this opportunity to
prove any lesser damages amount. The district court
acted within its discretion when it concluded that Life and
the judicial system should not suffer the consequences of
Promega’s deliberate choice.
Promega improperly conflates what is procedurally
permitted under Rule 50(d) with what is permitted under
the district court’s waiver finding as carried forward to
subsequent stages of the litigation under the doctrine of
law of the case. Under that doctrine, the district court did
not abuse its discretion in finding that the waiver “con-
tinue[d] to govern the same issue[] in subsequent stages”
of the litigation. Christianson v. Colt Indus. Operating
Corp., 486 U.S. 800, 816 (1988) (quoting Arizona v. Cali-
fornia, 460 U.S. 605, 618 (1983)); Morris v. Am. Nat. Can
Corp., 988 F.2d 50, 52 (8th Cir. 1993) (“The law of the
case as a result of waiver is no different than a matter
that becomes the law of the case as a result of argu-
ment.”). Moreover, this is not a case where a change in
law provides an exception to the law of the case doctrine.
Cf. Dow Chem. Co. v. Nova Chems. Corp. (Can.), 803 F.3d
620, 629–30 (Fed. Cir. 2015) (discussing change in law
exception to law of the case doctrine). The only relevant
law affecting the outcome in this case that was addressed
by the Supreme Court was the “substantial portion”
provision of § 271(f)(1). No law stood in the way of
Promega’s proving liability and damages separately under
§ 271(a), and Promega’s reading of § 271(f)(1) was untest-
ed. Indeed, the district court itself ultimately rejected
Promega’s interpretation of § 271(f)(1), and so did the
Supreme Court. And, from the time the district court
gave Promega a second chance to put in evidence at trial
to prove liability separately under § 271(a) and § 271(f)(1),
Promega was on notice that its untested interpretation of
§ 271(f)(1) might not prevail. But Promega nonetheless
declined to use its opportunity to establish entitlement to
an alternative, smaller damages award.
26 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
Promega’s arguments regarding the Seventh Amend-
ment, § 284, remittitur, and its cited cases—including
Power Integrations—are unavailing because a party’s
rights under the Seventh Amendment and § 284 and a
party’s right to remittitur may be waived. See Seaboard
Lumber Co. v. United States, 903 F.2d 1560, 1563 (Fed.
Cir. 1990) (“The Supreme Court has long recognized that
a private litigant may waive its right to a jury and to an
Article III court in civil cases. Waiver can be either
express or implied.”); Energy Transp. Grp., Inc. v. William
Demant Holding A/S, 697 F.3d 1342, 1357 (Fed. Cir.
2012) (holding that party waived argument for remittitur
by not raising it in post-trial briefing); Devex Corp. v. Gen.
Motors Corp., 667 F.2d 347, 363 (3d Cir. 1981) (“[35
U.S.C. § 284] requires the award of a reasonable royalty,
but to argue that this requirement exists even in the
absence of any evidence from which a court may derive a
reasonable royalty goes beyond the possible meaning of
the statute.”). Promega cites no authority in support of
the idea that a party is entitled to a new trial on argu-
ments and theories that were waived in prior proceed-
ings. 15
This is an unusual case. Patent owners who prove in-
fringement are typically awarded at least some amount of
damages. See Lindemann, 895 F.2d at 1406. But, as
explained above, a patent owner may waive its right to a
15 Promega cites several cases in support of its ar-
gument that it is entitled to a new trial on damages or a
remittitur. See generally Promega Open. Br. at 36–40
(citing, e.g., Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d
1292, 1312 (Fed. Cir. 2011)). Uniloc and Promega’s other
cited cases are distinguishable from the instant case
because none of them suggest that a district court is
required to grant a new trial or a remittitur on an argu-
ment that a party has waived.
PROMEGA CORP. v. LIFE TECHNOLOGIES CORP. 27
damages award when it deliberately abandons valid
theories of recovery in a singular pursuit of an ultimately
invalid damages theory. When a plaintiff deliberately
takes a risk by relying at trial exclusively on a damages
theory that ultimately proves unsuccessful, and, when
challenged, does not dispute that it failed to present an
alternative case for damages, a district court does not
abuse its discretion by declining to give that plaintiff
multiple chances to correct deficiencies in its arguments
or the record. We affirm the district court’s decision on
Promega’s motion for a new trial and hold that the dis-
trict court did not abuse its discretion in denying the
motion.
Because we hold that Promega is not entitled to any
damages, we affirm the district court’s denial of
Promega’s motion for enhanced damages under § 284. We
also affirm the district court’s denial of Promega’s motion
for a permanent injunction, given that the Tautz patent
has expired. Promega cannot be the “prevailing party” in
this litigation under 35 U.S.C. § 285, and we therefore
affirm the district court’s denial of Promega’s motion for
an exceptional case finding. Finally, to the extent
Promega asks us to exercise our own discretion to order a
new trial, we deny such a request for the same reasons
discussed herein for why the district court did not abuse
its discretion in denying Promega’s motion for a new trial.
See Fed. R. Civ. P. 50(c) advisory committee’s note (1963)
(noting appellate courts’ inherent authority to order a new
trial).
CONCLUSION
For the reasons above, we affirm the district court’s
grant of Life’s motion for judgment as a matter of law and
denial of Promega’s motion for a new trial.
AFFIRMED
28 PROMEGA CORP. v. LIFE TECHNOLOGIES CORP.
COSTS
No costs.