dissenting in part.
I respectfully dissent from two of our damages rulings today.
I.
First, contrary to the majority’s opinion, the district court most assuredly made factual findings concerning price erosion:
[Vulcan’s expert witness] Stewart assumed that had [the accused infringer] Fata not bid, Vulcan could have obtained the General Motors business at a higher price and therefore should be compensated for the erosion of its prices caused by Fata’s infringement. There is no evidence in the record to support Stewart’s [i.e., Vulcan’s] assumption that Vulcan computed its bid in response to Fata. Vulcan did not know Fata was bidding an infringing system. * * * Vulcan lost the bid to Fata because its bid was almost a third higher. There is no credible evidence to support Vulcan’s assertion that its bid price to General Motors was shaped to respond to a bid for an infringing system. There is no credible evidence to support a claim for price erosion.
(J.A. 58.24-58.25) (emphasis added). In other words, the district court found that Vulcan had failed to satisfy its burden of showing that, indeed, Vulcan had “computed [or shaped] its bid in response to Fata.”
I agree that portions of the above-quoted language could suggest that the district court may have inadvertently (and imper-missibly) required Vulcan to also show that it knew Fata was bidding with an infringing system, though that does not seem immediately clear to me either. Regardless, even assuming the district court did require this showing, that requirement would amount to nothing more than harmless error, see Fed.R.Civ.P. 61, given again that no “credible evidence” shows that Vulcan had in any event shaped its bid to GM in response to Fata’s competing bid. In my view, then, it would seem a waste of judicial resources, not to mention client fees, to remand this particular issue to the district court so the court, again, could simply reiterate what it had said before; that no “credible evidence” supports a claim that Vulcan had shaped its bid in response to Fata’s.
The majority cites to testimony from Vulcan’s president, Bruce McMellon, suggesting that this testimony further justifies its decision to remand on this price-erosion *1381point. But again, the district court as-sumedly rejected this evidence as “incredible,” a fair assumption given that the testimony came from a witness as putatively biased as the president of Plaintiff Vulcan itself. Moreover, Vulcan itself does not decry the district court’s findings in this regard as insufficient or “clearly erroneous,” see Fed.R.Civ.P. 52(a), the high standard it would have to meet in order to obtain a reversal on a factual determination. And yet, the majority appears to do just that, noting that some evidence, e.g., McMellon’s testimony, supports Vulcan’s price-erosion claim and, at the same time, narrowly reading the district court’s opinion so that it squarely “hold[s]” that Vulcan had to know that the system Fata was offering was an infringing system. I do not read the district court’s opinion so narrowly, and would not substitute my view of the evidence for the facts found by the district court, especially since Vulcan itself does not challenge these factual findings as clearly erroneous.
II.
Second, however, I do believe the district court and the majority have erred by determining that the license agreement between Vulcan and GM — a nonparty — precluded Vulcan from recovering damages from Fata for infringing lines 2-5. As I understand it, the district court’s decision in this regard actually rested on two reasons: first, that allowing Vulcan to benefit from both the license agreement it had with GM and from the damages that Vulcan tried to recover for these infringing lines would constitute a double recovery or “windfall”; and second, that damages for infringing “offers to sell” under 35 U.S.C. § 271 and damages for actual sales “qualitatively” differ, meaning the evidence needed to prove an entitlement to each must also differ. Vulcan, reasoned the district court, had simply and mistakenly relied on the same type of evidence to prove damages for the infringing “offers to sell” as it had to prove damages for the completed infringing sale.
Both of these asserted rationales have facial appeal. But on closer scrutiny, neither holds up as applied to the facts of this case. First, the license agreement neither absolves Fata of damages for infringing lines 2-5 nor gave Vulcan a “windfall.” It bears emphasizing that the language of the agreement took pains to make clear that Vulcan and the only other party to the agreement (GM) did not in any way intend to foreclose Vulcan’s right to recover damages against Fata:
This [Vulcan-GM] Agreement does not waive, release, compromise or discharge any claim that Vulcan may have against Fata with respect to the first casting line delivered by Fata to the GM Saginaw, Michigan facility or any claim Vulcan may have against Fata for Vulcan failing to obtain the business of supplying the five casting lines for the GM Saginaw facility.
(J.A. 58.15) (emphasis added). By any reasonable interpretation, the language above does not in any way limit the damages that Vulcan could receive for “failing to obtain the business,” ie., the lost sales for supplying casting lines 2-5. Remember, too, that GM and Vulcan had signed this license after the liability phase of the trial but before the damages phase of the trial had begun. So one would hardly expect Vulcan to agree to a contract that would in turn forego its rights to receive the full amount of damages that otherwise seemed destined to come its way. After all, the district court indicated in May 1999, ie., before GM and Vulcan signed this license agreement, that it had already found Fata liable for infringing all nine casting lines.
*1382Further, nothing in the license contract suggests that any party besides GM and Vulcan had rights under it. Thus, we can hardly say that Vulcan had licensed or “permitted” Fata to do anything without incurring damages for it; to the contrary, the license merely gave GM the right to timely receive these four infringing lines without having Vulcan stand in the way, e.g., by seeking an injunction enjoining Fata’s delivery of these lines. And neither party suggests that Fata somehow qualified as a third-party beneficiary to this license agreement, notwithstanding the clear language used to preserve Vulcan’s right to recover damages against Fata.
The district court’s reasoning about Vulcan receiving a “windfall” also does not persuade me. Again, the license agreement was between GM and Vulcan, not Vulcan and Fata. And GM and Vulcan each received valuable consideration under their bargain, thereby making their agreement a binding one. For its part, GM received the right to have Fata provide the four infringing systems that Fata had already finished manufacturing without Vulcan exercising its right to thwart Fata’s delivery. In other words, GM received assurances that Vulcan would not deter the timely delivery of the systems that Fata was ready to produce by seeking, e.g., an injunction that would prohibit this delivery. (As Vulcan’s counsel indicated at oral argument, Vulcan did not have any ready-made casting lines that it could immediately deliver in Fata’s stead, at least not for the infringing lines 2-5.)
In exchange, GM gave Vulcan the right to some of the “business” it had otherwise lost — the business of providing the other lines (lines 6-9) that Fata had not yet made (and that GM, presumably, did not immediately need), along with opportunities to bid on other GM contracts. This consideration does not amount to a “windfall”; it simply constitutes the consideration that GM gave in exchange for Vulcan forfeiting its right to seek relief that would enjoin the delivery of lines 2-5. Vulcan never received any damages (or any other remedy, for that matter) for the four acts of infringement relating to lines 2-5. Put differently, Vulcan received nothing to make it “whole” for profits lost to Fata as a result of the four infringing devices that GM accepted, contrary to the very purpose of awarding damages in the first place.
Last, the district court should have considered the evidence that Vulcan used to prove damages for the four infringing “offers to sell,” even though Vulcan presented the same type of evidence for these “offers to sell” as it did for the completed sale of an infringing line. In this case, GM could have lawfully offered the Saginaw agreement (including lines 2-5) to Vulcan only. This is so because GM’s contract specifications set forth the exact requirements that Vulcan’s '787 patent already covered. In addition, GM approached only two companies about providing the nine casting lines that it needed for its Saginaw foundry— Vulcan and Fata. And only two companies thereafter sought this business with GM— Vulcan and Fata. So unless GM suddenly changed its contract specifications and opened up the bidding to other companies or unless Vulcan simply decided not to enforce its patent rights at all, no one besides Vulcan — one of only two parties approached by GM — could have supplied all the requested casting lines. (The record, by the way, does not bear out any of these hypothetical situations.)
In these circumstances, then, Vulcan correctly asserts that a “but for” test should determine the damages it can recover for an infringing offer for sale, given again that only two suppliers (Vulcan and Fata) competed in the relevant market:
*1383The question to be asked [is] primarily: had the Infringer not infringed, what would Patent Holder * * * have made? In determining such damages, the profits lost by the patent owner in a two-swpplier market is a proper ground for granting relief. Lost profits may be in the form of diverted sales, eroded prices, or increased expenses. The patent holder must establish a causation between his lost profits and the infringement. A factual basis for the causation is that ‘but for’ the infringement, the patent owner would have made the sales that the infringer made, charged higher prices, or incurred lower expenses.
Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1064-65 (Fed.Cir.1983) (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964)) (citations omitted) (emphasis added). Applying the “but for” test, therefore, Vulcan would indeed have obtained the GM business: “But for” Fata’s four infringing offers, Vulcan — the only party whose patented casting line “read on” to GM’s contract specifications— would have received these four contracts to build casting lines 2-5. Accordingly, the “offer-to-sell” damages (and the type of evidence needed to show them) here are indeed the same as the damages (and the type of evidence needed to show them) that Vulcan would have received for any other infringing sale, i.e., lost profits resulting from these four lost sales. Again, however, Vulcan received nothing for the loss of these four contracts, in derogation of the principle that damages should make aggrieved parties whole. The benefits that Vulcan received in its license agreement with GM merely constituted the consideration that Vulcan received for giving away its right to obtain another remedy; namely, an injunction against Fata’s imminent and infringing delivery of lines 2-5.
Nevertheless, the district court failed to more closely construe the plain language of the GM-Vulcan license, and it failed to consider that this agreement gave rights to GM only. In addition, the court failed to apply the “but for” test for a two-supplier market. Accordingly, I would vacate and remand this portion of the court’s judgment for additional findings about the damages owed to Vulcan for the four infringing offers to sell. The district court could have calculated these damages by examining the same type of evidence that Vulcan had presented for any other completed-but-infringing sale.
III.
For the reasons stated above, I would affirm the express findings made by the district court about no price erosion. But I would vacate and remand the court’s determination about the damages for the infringing offers to sell lines 2-5. I therefore respectfully dissent, in part, from the majority’s decision.