Brumfield v. Ibg LLC

Case: 22-1630 Document: 92 Page: 1 Filed: 03/27/2024

United States Court of Appeals
for the Federal Circuit
______________________

HARRIS BRUMFIELD, TRUSTEE FOR ASCENT
TRUST,
Plaintiff-Appellant

v.

IBG LLC, INTERACTIVE BROKERS LLC,
Defendants-Appellees
______________________

2022-1630
______________________

Appeal from the United States District Court for the
Northern District of Illinois in No. 1:10-cv-00715, Judge
Virginia M. Kendall.
______________________

Decided: March 27, 2024
______________________

MICHAEL DAVID GANNON, Baker & Hostetler LLP, Chi-
cago, IL, argued for plaintiff-appellant. Also represented
by JENNIFER KURCZ, LEIF R. SIGMOND, JR.; ALAINA
LAKAWICZ, Philadelphia, PA.

STEFFEN NATHANAEL JOHNSON, Wilson, Sonsini,
Goodrich & Rosati, PC, Washington, DC, argued for de-
fendants-appellees. Also represented by KELSEY CURTIS;
GRANVILLE CLAYTON KAUFMAN, NATALIE J. MORGAN, San
Diego, CA; MICHAEL BRETT LEVIN, Palo Alto, CA; MICHAEL
S. SOMMER, New York, NY; NAOYA SON, Los Angeles, CA.
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2 BRUMFIELD v. IBG LLC

______________________

Before PROST, TARANTO, and HUGHES, Circuit Judges.
TARANTO, Circuit Judge.
Trading Technologies International, Inc. (TT)—whose
successor is the plaintiff-appellant named in the caption—
brought this action against IBG LLC and its subsidiary In-
teractive Brokers LLC (together, IBG) in 2010 in the
Northern District of Illinois, alleging infringement of sev-
eral TT-owned patents. 1 Four of TT’s patents are at issue
in this appeal: U.S. Patent Nos. 6,766,304 (issued July 20,
2004); 6,772,132 (issued August 3, 2004); 7,676,411 (issued
March 9, 2010); and 7,813,996 (issued October 12, 2010).
The district court held the asserted claims of the ’411 and
’996 patents invalid, and a jury found the asserted claims
of the ’304 and ’132 patents infringed (and not proved in-
valid for obviousness) and awarded $6,610,985 in damages,
resulting in the final judgment now before us.
Only TT, not IBG, appeals. TT challenges three rulings
of the district court. First, on cross-motions for summary
judgment, the district court held that the asserted claims
of the ’411 and ’996 patents were invalid under 35 U.S.C.
§ 101, while rejecting the § 101 challenge to the asserted
claims of the ’304 and ’132 patents (with the resulting trial
limited to a subset of such claims). Trading Technologies
International, Inc. v. IBG, LLC, No. 10 C 715, 2021 WL

1 Plaintiff-Appellant Harris Brumfield was the pri-
mary investor in and majority shareholder of TT, which
was sold in December 2021, with the rights to the patents
here at issue assigned to a trust, Ascent Trust. Mr. Brum-
field, as the sole trustee for Ascent Trust, was then substi-
tuted for TT as the plaintiff in this action. Like the parties
and the district court, we refer throughout to plaintiff-ap-
pellant as Trading Technologies (TT).
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BRUMFIELD v. IBG LLC 3

2473809, at *5, *7 (N.D. Ill. June 17, 2021) (101 Opinion).
Second, the district court, acting under Federal Rule of Ev-
idence 702, excluded one of the damages theories, concern-
ing foreign activities, proposed by TT’s damages expert.
Trading Technologies International, Inc. v. IBG LLC, No.
10 C 715, 2021 WL 5038754, at *2 (N.D. Ill. July 23, 2021)
(FRE 702 Opinion). Third, the district court denied TT’s
post-verdict motion for a new trial on damages, a motion in
which TT alleged that IBG had misrepresented, by state-
ment or omission, how it was calculating the damages fig-
ures it presented to the jury. Brumfield, Trustee for Ascent
Trust v. IB LLC, 586 F. Supp. 3d 827, 830–31 (N.D. Ill.
2022) (Post-Trial Opinion)
We reject TT’s challenges. We therefore affirm.
I
A
The four patents before us have materially the same
specification: The application that issued as the ’132 patent
is the ancestor of the other three patents (so we cite only
the specification of the ’132 patent). The specification de-
scribes assertedly improved graphical user interfaces for
commodity trading and methods for placing trade orders
using those interfaces. ’132 patent, col. 3, lines 11–20. The
specification asserts that the improved interfaces allow
traders to place orders “quickly and efficiently” in volatile
markets where speed is important. Id., col. 3, line 10; see
id., col. 2, lines 1–41.
The claims of the patents differ somewhat, including in
a respect that plays a role in the analysis of patent eligibil-
ity under § 101 as that issue is presented to us. The as-
serted claims of the two patents from 2004 involve an
interface that, in the words of the ’304 patent, has a “com-
mon static price axis” along which (changing) bids and asks
are displayed. ’304 patent, col. 12, lines 41–54 (emphasis
added). The language of the asserted claims of the ’132
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4 BRUMFIELD v. IBG LLC

patent is similar, requiring a “dynamic display of a plural-
ity of bids and a plurality of asks” in a commodity market,
“the dynamic display being aligned with a static display of
prices corresponding thereto, wherein the static display of
prices does not move in response to a change in the inside
market,” ’132 patent, col. 12, lines 8–15 (emphases added),
where “the ‘inside market’ is the highest bid price and the
lowest ask price,” id., col. 4, lines 58–60.
The two patents from 2010 are different. The ’411 pa-
tent, in its claims, requires simply a “price axis,” with no
requirement that it be static. ’411 patent, col. 12, lines 30–
39. The same is true, based on claim construction, for the
’996 patent. Although that patent’s claims use the phrase
“static price axis,” the district court, at TT’s urging, con-
strued that phrase in the ’996 patent to include price axes
that can be moved in response to “a re-centering or re-posi-
tioning” command, which can be issued automatically ra-
ther than by the user. Trading Technologies International,
Inc. v. IBG LLC, No. 10 C 715, 2019 WL 6609428, at *2–4
(N.D. Ill. Dec. 5, 2019). In doing so, the district court noted,
based on the ’996 patent’s prosecution history, that “‘static’
in the ’996 [p]atent was to be understood in a broader sense
than the ’132 and ’304 [p]atents.” Id. at *3; see TT’s Open-
ing Br. at 5–6.
The following claims are representative for purposes of
the present appeal—two claims to a method, two to a com-
puter readable medium hosting code for execution:
’304 patent, claim 27. A computer readable me-
dium having program code recorded thereon for ex-
ecution on a computer for displaying market
information relating to and facilitating trading of a
commodity being traded in an electronic exchange
having an inside market with a highest bid price
and a lowest ask price on a graphical user inter-
face, the program code causing a machine to per-
form the following steps:
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BRUMFIELD v. IBG LLC 5

dynamically displaying a first indicator in
one of a plurality of locations in a bid dis-
play region, each location in the bid display
region corresponding to a price level along
a common static price axis, the first indica-
tor representing quantity associated with
at least one order to buy the commodity at
the highest bid price currently available in
the market;
dynamically displaying a second indicator
in one of a plurality of locations in an ask
display region, each location in the ask dis-
play region corresponding to a price level
along the common static price axis, the sec-
ond indicator representing quantity associ-
ated with at least one order to sell the
commodity at the lowest ask price cur-
rently available in the market;
displaying the bid and ask display regions
in relation to fixed price levels positioned
along the common static price axis such
that when the inside market changes, the
price levels along the common static price
axis do not move and at least one of the first
and second indicators moves in the bid or
ask display regions relative to the common
static price axis;
displaying an order entry region compris-
ing a plurality of locations for receiving
commands to send trade orders, each loca-
tion corresponding to a price level along the
common static price axis; and
in response to a selection of a particular lo-
cation of the order entry region by a single
action of a user input device, setting a plu-
rality of parameters for a trade order
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6 BRUMFIELD v. IBG LLC

relating to the commodity and sending the
trade order to the electronic exchange.
ʼ304 patent, col. 14, line 47, through col. 15, line 17.
’132 patent, claim 1. A method for placing a trade
order for a commodity on an electronic exchange
having an inside market with a highest bid price
and a lowest ask price, using a graphical user in-
terface and a user input device, said method com-
prising:
setting a preset parameter for the trade or-
der[;]
displaying market depth of the commodity,
through a dynamic display of a plurality of
bids and a plurality of asks in the market
for the commodity, including at least a por-
tion of the bid and ask quantities of the
commodity, the dynamic display being
aligned with a static display of prices cor-
responding thereto, wherein the static dis-
play of prices does not move in response to
a change in the inside market;
displaying an order entry region aligned
with the static display prices comprising a
plurality of areas for receiving commands
from the user input devices to send trade
orders, each area corresponding to a price
of the static display of prices; and
selecting a particular area in the order en-
try region through single action of the user
input device with a pointer of the user in-
put device positioned over the particular
area to set a plurality of additional param-
eters for the trade order and send the trade
order to the electronic exchange.
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BRUMFIELD v. IBG LLC 7

ʼ132 patent, col. 12, lines 2–26.
’411 patent, claim 1. A method of displaying mar-
ket information relating to and facilitating trading
of a commodity being traded on an electronic ex-
change, the method comprising:
receiving, by a computing device, market
information for a commodity from an elec-
tronic exchange, the market information
comprising an inside market with a current
highest bid price and a current lowest ask
price;
displaying, via the computing device, a bid
display region comprising a plurality of
graphical locations, each graphical location
in the bid display region corresponding to a
different price level of a plurality of price
levels along a price axis;
displaying, via the computing device, an
ask display region comprising a plurality of
graphical locations, each graphical location
in the ask display region corresponding to
a different price level of the plurality of
price levels along the price axis;
dynamically displaying, via the computing
device, a first indicator representing quan-
tity associated with at least one trade order
to buy the commodity at the current high-
est bid price in a first graphical location of
the plurality of graphical locations in the
bid display region, the first graphical loca-
tion in the bid display region corresponding
to a price level associated with the current
highest bid price;
upon receipt of market information com-
prising a new highest bid price, moving the
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8 BRUMFIELD v. IBG LLC

first indicator relative to the price axis to a
second graphical location of the plurality of
graphical locations in the bid display re-
gion, the second graphical location corre-
sponding to a price level of the plurality of
price levels associated with the new high-
est bid price, wherein the second graphical
location is different from the first graphical
location in the bid display region;
dynamically displaying, via the computing
device, a second indicator representing
quantity associated with at least one trade
order to sell the commodity at the current
lowest ask price in a first graphical location
of the plurality of graphical locations in the
ask display region, the first graphical loca-
tion in the ask display region correspond-
ing to a price level associated with the
current lowest ask price;
upon receipt of market information com-
prising a new lowest ask price, moving the
second indicator relative to the price axis to
a second graphical location of the plurality
of graphical locations in the ask display re-
gion, the second graphical location corre-
sponding to a price level of the plurality of
price levels associated with the new lowest
ask price, wherein the second graphical lo-
cation is different from the first graphical
location in the ask display region;
displaying, via the computing device, an or-
der entry region comprising a plurality of
graphical areas for receiving single action
commands to set trade order prices and
send trade orders, each graphical area
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BRUMFIELD v. IBG LLC 9

corresponding to a different price level
along the price axis; and
selecting a particular graphical area in the
order entry region through a single action
of the user input device to both set a price
for the trade order and send the trade order
having a default quantity to the electronic
exchange.
’411 patent, col. 12, line 23, through col. 13, line 16.
’996 patent, claim 1. A computer readable me-
dium having program code recorded thereon for ex-
ecution on a computer having a graphical user
interface and a user input device, the program code
causing a machine to perform the following method
steps:
receiving market information for a com-
modity from an electronic exchange, the
market information comprising an inside
market with a current highest bid price
and a current lowest ask price;
receiving an input from a user that desig-
nates a default quantity to be used for a
plurality of trade orders;
dynamically displaying a first indicator in
one of a plurality of locations in a bid dis-
play region, each location in the bid display
region corresponding to a price level along
a static price axis, the first indicator repre-
senting quantity associated with at least
one order to buy the commodity at the cur-
rent highest bid price;
dynamically displaying a second indicator
in one of a plurality of locations in an ask
display region, each location in the ask
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10 BRUMFIELD v. IBG LLC

display region corresponding to a price
level along the static price axis, the second
indicator representing quantity associated
with at least one order to sell the commod-
ity at the current lowest ask price;
displaying the bid and ask display regions
in relation to a plurality of price levels ar-
ranged along the static price axis such that
when the inside market changes, the price
levels along the static price axis do not
change positions and at least one of the
first and second indicators moves in the bid
or ask display regions relative to the static
price axis;
displaying an order entry region aligned
with the static price axis comprising a plu-
rality of areas for receiving commands from
the user input device to send trade orders,
each area corresponding to a price level of
the static price axis; and
receiving a plurality of commands from a
user, each command sending a trade order
to the electronic exchange, each trade order
having an order quantity based on the de-
fault quantity without the user designating
the default quantity between commands,
wherein each command results from select-
ing a particular area in the order entry re-
gion corresponding to a desired price level
as part of a single action of the user input
device with a pointer of the user input de-
vice positioned over the particular area to
both set an order price parameter for the
trade order based on the desired price level
and send the trade order to the electronic
exchange.
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BRUMFIELD v. IBG LLC 11

’996 patent, col. 11, line 45, through col. 12, line 24.
B
TT sued IBG for infringement of the four patents we
have identified, asserting various claims—some claiming a
method, some a system, and some “a computer readable
medium having program code recorded thereon for execu-
tion on a computer” (e.g., ’304 patent, claim 27, quoted su-
pra). As relevant for present purposes, the instrument of
the alleged infringement was the BookTrader module
(trading tool) that is part of IBG’s Trader Workstation Plat-
form (TWS), software that traders load onto their comput-
ers and use for buying and selling on exchanges, such as
commodities exchanges. IBG released TWS BookTrader a
few months before the ’304 patent issued in July 2004 (the
’132 patent issued the next month and the ’411 and ’996
patents in 2010). TT alleged that IBG infringed the ’304
and ’132 patents via TWS BookTrader starting as soon as
those patents issued, and those allegations went to trial.
The BookTrader tool also was part of a different IBG prod-
uct called WebTrader (for use on the world wide web), but
WebTrader was involved only in the claims that IBG in-
fringed claims of the ’411 and ’996 patents—which, as will
be described, were held invalid.
We describe the three rulings of the district court that
are at issue on appeal, though not in chronological order.
1
In June 2021, on cross-motions for summary judgment
on the § 101 eligibility of the four patents’ asserted claims,
the district court conducted the two-step analysis described
in Alice Corp. v. CLS Bank International, 573 U.S. 208
(2014), and ruled partly for TT and partly for IBG. 101
Opinion, 2021 WL 2473809, at *1, *6–7. The court first
rejected IBG’s § 101 challenge to the ’304 and ’132 patents’
claims. Id. at *5. The court discussed our nonprecedential
decision in Trading Technologies International, Inc. v.
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12 BRUMFIELD v. IBG LLC

CQG, Inc., in which we upheld claims of the ’304 and ’132
patents against a § 101 challenge (asserted by CQG), rea-
soning that the claims are “‘directed to a specific implemen-
tation of a solution to a problem in the software arts.’” 675
F. App’x 1001, 1006 (Fed. Cir. 2017) (CQG) (quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016)). The district court saw no persuasive reason to draw
a different conclusion here, though the record is somewhat
different. 101 Opinion, 2021 WL 2473809, at *5. IBG does
not appeal the district court’s rejection of its § 101 chal-
lenge to the asserted claims of the ’304 and ’132 patents.
Moving to the ’411 and ’996 patents, the district court
held the asserted claims of those patents to be invalid be-
cause they claim subject matter that is ineligible for pa-
tenting under § 101. Id. at *5–7. The court stressed that
those claims are broader than those of the ’304 and ’132
patents (in that they do not preclude automatic movement
of the price axis) and reasoned that TT had failed to explain
how these broader claims provide a specific solution to the
problem solved by the ’304 and ’132 patents. Id. at *6.
Given the difference, the court concluded that the ’411 and
’996 patents’ claims amount to nothing more than “the ab-
stract idea of placing orders on an electronic exchange.”
101 Opinion, 2021 WL 2473809, at *6. In so ruling, the
court pointed to our non-precedential decision in another
case between TT and IBG, Trading Technologies Interna-
tional, Inc. v. IBG LLC, 767 F. App’x 1006 (Fed. Cir. 2019),
in which we agreed with a § 101 challenge to claims of U.S.
Patent No. 7,693,768, which is a descendant of the ’132 pa-
tent and whose claims call simply for a price axis, not a
static price axis.
The court also rejected TT’s contention that another
nonprecedential decision of this court, IBG LLC v. Trading
Technologies International, Inc., 757 F. App’x 1004 (Fed.
Cir. 2019) (IBG I), justified rejecting the § 101 challenge
here. In IBG I, we held that the four patents at issue in
the present case did not qualify for Covered Business
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BRUMFIELD v. IBG LLC 13

Method (CBM) review under § 18 of the Leahy-Smith
America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
329–31 (2011) (AIA), so we did not reach the § 101 merits.
IBG I, 757 F. App’x at 1007–08. We reasoned that our ear-
lier holding of eligibility as to the ’304 and ’132 patents in
CQG implied that those patents did not qualify for CBM
review. Id. We then stated, with no elaboration, that we
saw “no meaningful difference” on the CBM-qualification
issue for the ’411 and ’996 patents, though there was no
predicate decision of eligibility for those patents, and that
we were not reaching the § 101 issue. Id. at 1008. In the
present case, the district court concluded that, although
“the inquiries under CBM review and § 101 eligibility are
related,” the CBM determination did “not dictate a finding
of § 101 eligibility here.” 101 Opinion, 2021 WL 2473809,
at *7.
TT’s case on infringement of the ’304 and ’132 patents
eventually went to trial, and that trial involved only
method and “computer readable medium” (CRM) claims:
five method claims (1, 12, 15, 17, and 22) and one CRM
claim (27) of the ’304 patent, and three method claims (1,
7, and 25) and two CRM claims (8 and 51) of the ’132 pa-
tent. Earlier in the case, TT had asserted a larger set of
claims, including some system claims, but we need not con-
sider any system claims in addressing the two issues pre-
sented on appeal concerning the ’304 and ’132 patents
because TT does not seek to revive any system claims. See
TT’s Opening Br. at 48, 66 (seeking new trial only on dam-
ages for these patents).
2
In 2020, before the § 101 ruling, IBG moved to exclude
certain proposed testimony of TT’s damages expert, Cath-
erine Lawton, under Federal Rule of Evidence 702. In July
2021, not long before the trial, the district court ruled on
the motion. The court allowed much of Ms. Lawton’s pro-
posed testimony, but it excluded proposed testimony
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14 BRUMFIELD v. IBG LLC

advancing one particular basis for Ms. Lawton’s proposed
amount of damages, a basis tied to activities of foreign us-
ers of TWS BookTrader. FRE 702 Opinion, 2021 WL
5038754, at *2.
Before describing that ruling, we describe another rul-
ing (issued during briefing on the Rule 702 motion and ul-
timately relied on in the FRE 702 Opinion) on a related
IBG motion—in which IBG sought summary judgment of
no direct or indirect infringement of the asserted claims (of
all four patents, at the time) based on activities of foreign
users of the TWS BookTrader trading tool. 2 Trading Tech-
nologies International, Inc. v. IBG LLC, No. 10 C 715, 2020
WL 7408745 (N.D. Ill. Dec. 17, 2020) (Partial SJ Opinion).
The district court, in the Partial SJ Opinion, explained
what it deemed a materially undisputed fact about foreign
users of TWS BookTrader: “a user located in a different
country downloads the TWS software platform to her com-
puter located in that country and uses a mouse and a mon-
itor located in that country to place orders and send them
to the exchange” where the trades occur. Id. at *1. The
district court then ruled on whether there was a triable is-
sue of fact as to whether IBG, or its foreign users through
their activities involving TWS BookTrader, met the domes-
tic-act requirement of 35 U.S.C. § 271(a), producing direct
or indirect infringement. At the time, TT was asserting
method claims, system claims, and CRM claims.
In answering that question, the court treated together
the method and system claims of the patents, as to which
IBG’s motion was unopposed by TT, and granted “summary
judgment related to infringement of the method and

2 When IBG moved for partial summary judgment re-
garding foreign users, the WebTrader product, involved in
the allegations of infringement of the ’411 and ’996 patents,
was still in the case, but IBG’s motion addressed only the
TWS product.
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BRUMFIELD v. IBG LLC 15

system claims caused by the activities of foreign users.” Id.
at *2. But the court denied the motion with respect to the
CRM claims of the patents. See ’304 patent, col. 14, lines
47–48 (claim 27; all other claims are method claims); ’132
patent, col. 12, lines 52–53 (claims 8–13, 30–39, 51; all
other claims are either method or system claims). Based
on the allegations about foreign users’ downloading of TWS
from U.S. servers and entry into a “Customer Agreement,”
the court concluded that the parties genuinely disputed
facts that might establish domestic infringement—i.e., con-
cerning whether IBG was selling (or offering to sell) its
BookTrader product to foreign users and, if so, whether it
was doing so domestically. Id. at *2–4. That summary
judgment ruling has not been appealed.
The district court relied on that ruling in addressing
IBG’s damages-evidence motion. Ms. Lawton proposed as
damages not an award of lost profits suffered by TT, but a
reasonable royalty for IBG’s infringing activities, J.A.
87413—based on a hypothetical negotiation on July 20,
2004, the day the ’304 patent issued (to be followed two
weeks later by issuance of the ’132 patent), J.A. 87658.
Specifically, she proposed a royalty structured as a per-
user, per-month royalty—for each month, starting from the
July 20, 2004 issuance of the earliest patent, TT would re-
ceive a fixed amount per active user of IBG’s accused prod-
uct. J.A. 87414–15, 87942, 87963. In her proposed
damages calculation, Ms. Lawton included foreign active
users of TWS, identifying four bases (of different scope) for
such inclusion. FRE 702 Opinion, 2021 WL 5038754, at *2;
J.A. 87843–44.
The district court allowed the proposed testimony as to
two of the asserted bases: “making a copy of the accused
products via a server located in the United States”; and
“sale of the accused products in the United States via the
user’s entry into a Customer Agreement.” FRE 702 Opin-
ion, 2021 WL 5038754, at *2. The court explained that it
had already concluded, in its Partial SJ Opinion, that
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16 BRUMFIELD v. IBG LLC

those two bases, if the allegations of fact were proved, could
establish domestic infringement. FRE 702 Opinion, 2021
WL 5038754, at *2. The district court disallowed the two
other asserted bases, one that is not at issue on appeal and
one that is. Id. at *2–3. 3
The currently disputed disallowed basis was, in Ms.
Lawton’s words, IBG’s “‘making’ the accused products in
the United States with foreign damages.” J.A. 87844,
87851 (capitalization removed); see FRE 702 Opinion, 2021
WL 5038754, at *2. Regarding the “making the accused
product” phrase, Ms. Lawton stated that the TWS software
was “designed and made” and “developed” in the United
States, J.A. 87851–52, having previously stated that
“BookTrader is the Accused Product and is included in
every version of TWS and WebTrader,” J.A. 87793. Re-
garding the “foreign damages” phrase, she opined, as rele-
vant here, that TT should receive compensation (damages)
for the foreign users’ use of copies of TWS. J.A. 87851–52.
She proposed inclusion, in the per-user, per-month royalty,
of all foreign active users in a given month (from July 20,
2004), with no refinement to narrow the pool to any identi-
fied subgroups of such foreign active users, J.A. 87837, be-
cause, she opined, IBG deliberately markets the TWS
software worldwide. J.A. 87853–54. She rested that pro-
posal on her “understand[ing] that TT is entitled to world-
wide patent damages for harm that is the foreseeable and
but-for result of infringement in the United States.” J.A.
87851.

3 The disallowed basis that is not on appeal involved
foreign users’ “use of the accused products in the United
States.” FRE 702 Opinion, 2021 WL 5038754, at *2. The
district court disallowed that basis for want of evidence
that “foreign users” engaged in such use. Id. at *3 (empha-
sis added). TT does not challenge that ruling on appeal.
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BRUMFIELD v. IBG LLC 17

IBG moved to exclude that damages basis as impermis-
sibly resting on an incorrect view of the governing law. IBG
argued that “Ms. Lawton’s worldwide damages opinion im-
properly includes foreign users with no link to any alleged
US infringing activities” (capitalization removed), invoking
the principle that “‘[i]t is axiomatic that U.S. patent law
does not operate extraterritorially to prohibit patent in-
fringement abroad[,]’ and it ‘do[es] not thereby provide
compensation for a defendant’s foreign exploitation of a pa-
tented invention, which is not infringement at all.’” J.A.
85143 (second and third alteration in original) (quoting
Power Integrations, Inc. v. Fairchild Semiconductor Inter-
national, Inc., 711 F.3d 1348, 1370–71 (Fed. Cir. 2013)).
Ms. Lawton’s reliance on a foreseeability-plus-but-for-
cause standard, IBG contended, was contrary to law. J.A.
85146, 85148. TT responded that the proposal was legally
permissible based on WesternGeco LLC v. ION Geophysical
Corp., 585 U.S. 407 (2018), though WesternGeco involved
lost-profits, not reasonable-royalty, damages, and involved
infringement under 35 U.S.C. § 271(f)(2), not under
§ 271(a). J.A. 88406–11; see J.A. 87851 (Ms. Lawton’s ex-
pert report invoking WesternGeco). TT, like Ms. Lawton,
focused on IBG’s domestic designing and programming of
TWS BookTrader when discussing the “making” identified
in this basis for damages, and on the assertion that IBG
“markets and distributes/licenses its BookTrader tool to a
worldwide audience.” J.A. 88411–12.
The district court agreed with IBG, excluding the evi-
dence as “premised on a misapplication of controlling law.”
FRE 702 Opinion, 2021 WL 5038754, at *2. The district
court understood WesternGeco to hold that “a patent owner
claiming infringement under 35 U.S.C. § 271(f)(2) may re-
cover lost foreign profits proximately caused by domestic
infringement.” Id. (quoting 585 U.S. at 417). The district
court reasoned, however, that it was unclear what Western-
Geco implies about “the present case involving infringe-
ment under § 271(a) and reasonable royalty damages.” Id.
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18 BRUMFIELD v. IBG LLC

The district court therefore concluded that the controlling
law for this case continued to be found in Power Integra-
tions, which involved damages for § 271(a) infringement
(though, like WesternGeco, it involved an issue about lost
profits, not reasonable royalties). Id. (citing Power Integra-
tions, 711 F.3d at 1371, for the proposition that “[g]ener-
ally, even after establishing one or more acts of
infringement in the United States, a patentee may not re-
cover damages for worldwide sales of the patented inven-
tion on the theory that ‘those foreign sales were the direct
foreseeable result of [the infringer’s] domestic infringe-
ment’” (second alteration in original)).
The “making the accused product” basis of damages
was therefore excluded at trial, but TT was permitted to
present its evidence based on the making of a copy for the
foreign user via a domestic server and the making of a do-
mestic sale via a Customer Agreement between the foreign
user and IBG. The jury found infringement, rejected the
remaining validity challenges, and awarded damages of
$6,610,985. In its post-trial opinion, the district court reit-
erated its exclusion of the disputed damages basis. Post-
Trial Opinion, 586 F. Supp. 3d at 839–40.
3
The third ruling before us on appeal is the post-trial
ruling concerning the damages evidence and argument
submitted by IBG (not TT). At trial in 2021, TT argued
that IBG had directly infringed, or induced others to in-
fringe, method claims and CRM claims of the ’132 and ’304
patents based on the TWS BookTrader trading tool. Of sig-
nificance for purposes of the third ruling on appeal to us,
not all users of TWS use the BookTrader feature, which
was the only accused feature of TWS. For present pur-
poses, we accept that the jury award of $6,610,985 corre-
sponds to the total put forth by IBG at a royalty rate
measured by domestic usage, rather than global monthly
users: 10 cents per commodity-futures unit sold by users in
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BRUMFIELD v. IBG LLC 19

the United States via the accused BookTrader module only.
By contrast, TT’s global monthly user royalty, which in-
cluded all TWS users regardless of whether they used
BookTrader, summed to $962,440,850 over the period of in-
fringement.
After the trial, TT moved for a new trial on damages
and post-trial damages discovery under Federal Rules of
Civil Procedure 59(a)(1)(A) and 60(b)(3), alleging that IBG
had withheld information during discovery and presented
false testimony at trial on how, in IBG’s own calculation of
damages, it was counting units sold via BookTrader. J.A.
93233; Post-Trial Opinion, 586 F. Supp. 3d at 833–34. TT
argued essentially that IBG was undercounting the num-
ber of units traded using BookTrader by not counting units
traded using a combination of BookTrader and another
TWS feature, despite representing otherwise to TT and to
the jury. J.A. 93233–34, 93239, 103633–34. The district
court denied the motion.
The district court stated that such misrepresentation,
if it had occurred, could form the basis for a new trial under
either Rule 59 or Rule 60. Post-Trial Opinion, 586 F. Supp.
3d at 833–34. The district court determined, however, that
TT had not justified the granting of the new-trial or discov-
ery relief it sought. The court ruled that TT had not shown
that IBG had either withheld information during discovery
or presented false testimony on how it was counting units
traded. Id. at 837–38. The court also rejected TT’s claim
for relief based on TT’s assertion that it reached its new
understanding of IBG’s damages calculation only because
of information newly presented at trial, explaining that TT
had access even before trial to the information necessary to
reach that new understanding. Id.
4
The district court denied TT’s motion for a new trial on
February 22, 2022. TT timely filed a notice of appeal. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
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20 BRUMFIELD v. IBG LLC

TT challenges three rulings: the district court’s grant
of summary judgment of invalidity of the asserted claims
of the ’411 and ’996 patents, the district court’s exclusion
of one basis for recovering “foreign damages,” and the dis-
trict court’s denial of TT’s motion for a new damages trial.
We address those challenges in turn.
II
We agree with the district court that the asserted
claims of the ’411 and ’996 patents claim ineligible subject
matter. In this case, where we see no legally material facts
in dispute, we decide the § 101 issue de novo. See Interna-
tional Business Machines Corp. v. Zillow Group, Inc., 50
F.4th 1371, 1376–77 (Fed. Cir. 2022).
A
The asserted claims of the ’411 and ’996 patents are di-
rected to abstract ideas, and they add nothing (no inventive
concept) that transforms them into claims to eligible sub-
ject matter. Under the two-step analysis of Alice, the
claims are therefore invalid under § 101. We drew the
same conclusion in two precedential decisions in cases in-
volving four other TT patents, one of them (U.S. Patent No.
7,904,374) a child of the ’996 patent. Trading Technologies
International, Inc. v. IBG LLC, 921 F.3d 1084 (Fed. Cir.
2019) (IBG II); Trading Technologies International, Inc. v.
IBG LLC, 921 F.3d 1378 (Fed. Cir. 2019) (IBG III). We see
no material distinction between those cases and this one.
We consider “the focus of the claimed advance over the
prior art” at the first step of Alice. IBG II, 921 F.3d at 1092
(internal quotation marks omitted where quoting Intellec-
tual Ventures I LLC v. Capital One Financial Corp., 850
F.3d 1332, 1338 (Fed. Cir. 2017)). Here, the claims focus
on the receipt and display of certain market information
(bids and offers) in a manner that newly helps users see the
information for use in making trades. But the combination
of receipt and display of information, even of a particular
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BRUMFIELD v. IBG LLC 21

type, and use of the information to engage in the funda-
mental economic practice of placing an order, are abstract
ideas. See id. at 1092–93 (collecting cases).
Nothing in the claims, understood in light of the speci-
fication, calls for anything but preexisting computers and
displays, programmed using techniques known to skilled
artisans, to present the new arrangement of information.
See, e.g., ’132 patent, col. 4, line 61, through col. 5, line 3;
’411 patent, col. 4, line 63, through col. 5, line 4; ’996 patent,
col. 4, lines 57–65. In that circumstance, a claim to “a pur-
portedly new arrangement of generic information that as-
sists traders in processing information more quickly” is a
claim “directed to the abstract idea of graphing bids and
offers to assist a trader to make an order.” IBG II, 921 F.3d
at 1093; see also id. at 1093–95. The focus is not on im-
proving computers, as “mere automation of manual pro-
cesses using generic computers” does not constitute such
an improvement. IBG III, 921 F.3d at 1384 (internal quo-
tation marks omitted where quoting Credit Acceptance
Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir.
2017)); id. at 1385 (“[A]rranging information along an axis
does not improve the functioning of the computer, make it
operate more efficiently, or solve any technological prob-
lem.”).
TT also cannot succeed at the second step of Alice, re-
quiring an inventive concept to avoid ineligibility of a claim
held at the first step to be directed to an abstract idea. “The
abstract idea itself cannot supply the inventive concept, no
matter how groundbreaking the advance.” IBG II, 921
F.3d at 1093 (internal quotation marks omitted where
quoting SAP America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1171 (Fed. Cir. 2018)); IBG III, 921 F.3d at 1385
(same). We have held that “receiving market information
is simply routine data gathering, and displaying infor-
mation as indicators along a scaled price axis is well-un-
derstood, routine, conventional activity that does not add
something significantly more to the abstract idea.” IBG II,
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22 BRUMFIELD v. IBG LLC

921 F.3d at 1093. Given the absence of an improvement in
computer functionality, we conclude that the specific claim
elements, “individually and as an ordered combination,”
id., even if they make particular choices among abstract
ideas involving information and ordering, do not add an in-
ventive concept needed for eligibility.
We have presented the foregoing analysis with specific
reference to the analysis set forth in the two cited IBG
cases, applied to the similar claims at issue here. But that
is only because the claims here are so similar to the claims
in those cases. The principles that control here are amply
supported by numerous other precedents, cited in or post-
dating those decisions, as well. See, e.g., Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); OIP Tech-
nologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016); Intellectual Ventures
I LLC, 850 F.3d at 1338; Credit Acceptance Corp., 859 F.3d
at 1055; Interval Licensing LLC v. AOL, Inc., 896 F.3d
1335, 1345 (Fed. Cir. 2018); SAP America, Inc., 898 F.3d at
1167; Data Engine Technologies LLC v. Google LLC, 906
F.3d 999, 1007–08 (Fed. Cir. 2018); Ericsson Inc. v. TCL
Communication Technology Holdings Ltd., 955 F.3d 1317,
1327 (Fed. Cir. 2020); IBM, 50 F.4th at 1378.
B
TT argues that we should reject IBG’s § 101 challenge
to the asserted claims of the ’411 and ’996 patents because,
as noted above, we rejected a § 101 challenge to claims of
the ’304 and ’132 patents in our decision in CQG. But that
decision is not precedential, and “[w]e are not bound by
non-precedential decisions at all, much less ones to differ-
ent patents, different specifications, or different claims.”
IBG II, 921 F.3d at 1095 (emphasis added). The lack of
precedential force is reason enough to reject TT’s reliance
on CQG, and the difference in the claims reinforces that
conclusion.
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BRUMFIELD v. IBG LLC 23

The claims of the ’304 and ’132 patents at issue in CQG
require a “static price axis,” 675 F. App’x at 1003 (quoting
’304 patent, col. 12, line 36, through col. 13, line 3), whereas
the claims of the ’411 and ’996 patents at issue here are
broader, allowing some automatic movement of the price
axis (by construction, in the case of the ’996 patent, Trad-
ing Technologies, 2019 WL 6609428, at *3). IBG has not
appealed the § 101 ruling regarding the ’304 and ’132 pa-
tents, so we have no occasion here to question that the
static price axis can be characterized as providing “a spe-
cific solution to [a] then-existing technological problem[],”
Data Engine, 906 F.3d at 1007–08—in particular, to the
problem described by TT, namely, that a trader might click
a location on the screen in an attempt to execute a transac-
tion at a particular price but the attempt might fail if the
price axis moved automatically, see TT’s Opening Brief at
7–8. Even if the static price axis provides a specific solu-
tion to an existing problem, however, it does not follow that
the claims at issue here, which cover displays with auto-
matic movement of the price axis, provide such a specific
solution. And TT suggests no other problem for which the
’411 and ’996 patents claim a “specific” solution. Accord-
ingly, we conclude that CQG does not support alteration of
our direct application of the § 101 standards reflected in
our precedential decisions to hold that the asserted claims
of the ’411 and ’996 patents are invalid for claiming the
above-identified abstract ideas concerning the display of
market information to facilitate trading in commodities
markets.
TT also argues that a conclusion of eligibility of the as-
serted claims of the ’411 and ’996 patents is compelled by
our holding in IBG I. In that decision, however, we did not
hold that any claims of the ’411 and ’996 patents were in-
eligible under § 101—an issue we did not reach—but, ra-
ther, that those patents did not qualify for CBM review.
757 F. App’x at 1007–08. We reject TT’s argument based
on IBG I.
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24 BRUMFIELD v. IBG LLC

TT does not invoke claim preclusion or issue preclusion
based on the IBG I decision. And the IBG I decision is not
precedential, so that decision is not binding: “We are not
bound by non-precedential decisions at all . . . .” IBG II,
921 F.3d at 1095. In addition, the only rationale given in
the IBG I decision was that an earlier eligibility conclusion
(as to the ’132 and ’304 patents in CQG) implied nonquali-
fication for CBM review under the requirement that a pa-
tent, to qualify, must not be “for [a] technological
invention[],” AIA § 18(d)(1). See IBG I, 757 F. App’x at
1007–08. That rationale did not apply to the ’411 and ’996
patents, for which no eligibility holding existed.
Moreover, what TT now urges is not what IBG I con-
cluded for two patents—that eligibility implied nonqualifi-
cation for CBM review—but the logical converse of that
rationale (in generalized form), namely, that nonqualifica-
tion for CBM review implies eligibility. That converse prin-
ciple, however, is not found in IBG I or in any other
authority cited by TT. And we see no good reason to adopt
it. The “for technological inventions” language used in AIA
§ 18(d)(1) with respect to the expired CBM program served
merely to curtail access to a special, temporary avenue for
patentability review, not to loosen or otherwise alter the
substantive standards governing the merits determination
of patentability, including § 101 eligibility. That language
has not defined what is sufficient for eligibility under the
§ 101 standards we have developed in an extensive body of
case law applying the principles of Alice in a variety of set-
tings. We therefore reject TT’s argument that the ’411 and
’996 patents’ failure to qualify for CBM review implies that
their claims are eligible under § 101.
III
TT argues that the district court erred in excluding one
basis for damages proposed by TT’s damages expert, Ms.
Lawton—specifically, that TT should recover “foreign dam-
ages” flowing from “‘[m]aking’ the Accused Products in the
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BRUMFIELD v. IBG LLC 25

United States.” J.A. 87851. Exclusion of evidence under
Federal Rule of Evidence 702 is generally reviewed under
the standards prescribed by the pertinent regional circuit.
Power Integrations, 711 F.3d at 1356. Seventh Circuit law,
applicable here, provides for review for an abuse of discre-
tion, which exists when the exclusion rests on a legal error,
as determined de novo on appeal. See Downing v. Abbott
Laboratories, 48 F.4th 793, 804 (7th Cir. 2022); United
States v. Dingwall, 6 F.4th 744, 750 (7th Cir. 2021). Where
an exclusion rests on an interpretation of patent law, we
apply our own law and review the interpretation without
deference. BASF Plant Science, LP v. Commonwealth Sci-
entific & Industrial Research Organisation, 28 F.4th 1247,
1275 (Fed. Cir. 2022) (quoting Sulzer Textil A.G. v. Picanol
N.V., 358 F.3d 1356, 1363 (Fed. Cir. 2004)).
TT argues that the district court should have applied
the extraterritoriality analysis articulated by the Supreme
Court in WesternGeco, rather than more restrictive princi-
ples the district court drew from Power Integrations. The
district court was reluctant to conclude, on its own, that
WesternGeco displaces Power Integrations as the required
framework of analysis for this case, involving 35 U.S.C.
§ 271(a) and a reasonable royalty. We now draw that con-
clusion, in agreement with TT. Nevertheless, we conclude
that, even under the WesternGeco framework, the evidence
offered by TT’s expert was properly excluded.
A
1
For a determination whether patent damages are
properly awarded in a particular case based partly on con-
duct abroad, the decision in WesternGeco established a
framework of analysis that necessarily supersedes the
analysis set forth in our earlier decision Power Integra-
tions. Not only is the structure of analysis different, but
we also had relied on the Power Integrations analysis in our
decision in the WesternGeco case on review in the Supreme
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26 BRUMFIELD v. IBG LLC

Court, see WesternGeco L.L.C. v. ION Geophysical Corp.,
791 F.3d 1340, 1350–51 (Fed. Cir. 2015), and the Supreme
Court reversed our decision, noting the reliance on Power
Integrations, 585 U.S. at 411–12. In these circumstances,
we must follow the Supreme Court’s analysis, which now
governs in place of the analysis of Power Integrations. See
Ideker Farms, Inc. v. United States, 71 F.4th 964, 988 n.11
(Fed. Cir. 2023); California Institute of Technology v.
Broadcom Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022); SIPCO,
LLC v. Emerson Electric Co., 980 F.3d 865, 870 n.1 (Fed.
Cir. 2020); Troy v. Samson Manufacturing Co., 758 F.3d
1322, 1326 (Fed. Cir. 2014); Doe v. United States, 372 F.3d
1347, 1354–57 (Fed. Cir. 2004).
We do not parse Power Integrations to identify which
particular sentences are now superseded by WesternGeco.
Nor do we have occasion to determine whether the West-
ernGeco analysis would ultimately have supported a recov-
ery by Power Integrations of damages based on foreign
conduct given the facts of its case. Here, and in future
cases, analysis of the issue should simply proceed under
the WesternGeco framework. 4

4 After the Supreme Court decided WesternGeco,
(which involved 35 U.S.C. § 271(f)(2)), the district court in
the Power Integrations case (which involved 35 U.S.C.
§ 271(a)) concluded that WesternGeco “implicitly over-
ruled” our 2013 Power Integrations decision. Power Inte-
grations, Inc. v. Fairchild Semiconductor International,
Inc., No. 04-1371-LPS, 2018 WL 4804685, at *1 (D. Del.
Oct. 4, 2018) (Stark, J.). On that basis, the court, acting
under Federal Rule of Civil Procedure 60(b)(6), granted
Power Integrations relief from the earlier judgment and
newly allowed it “to seek recovery of worldwide damages,”
and the court certified the ruling for interlocutory review
by this court under 28 U.S.C. § 1292(b). Id. at *2. But the
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BRUMFIELD v. IBG LLC 27

We proceed with a detailed description of the Western-
Geco analysis, enabling us then to address the doctrinal is-
sues flagged by TT and by the district court, before, in
subsection III.B infra, applying the analysis to this case.
2
WesternGeco was the owner of several patents cover-
ing systems for surveying the ocean floor by use of sound-
sending-and-receiving devices on long streamers towed by
ships, where relevant claims required particular features
for steering the streamers. See WesternGeco, 585 U.S. at
411; WesternGeco, 791 F.3d at 1343, vacated, 579 U.S. 915
(2016), reinstated in relevant part, 837 F.3d 1358 (Fed. Cir.
2016), reversed, 585 U.S. at 417. As relevant to the Su-
preme Court decision, a jury found the defendant ION Ge-
ophysical liable for infringement of the patent claims under
35 U.S.C. § 271(f)(2), 5 where the infringement consisted of
ION Geophysical’s domestic manufacturing of components

appeal was dismissed before appellate review occurred,
and the case settled, producing a dismissal in the district
court, before a new trial occurred, No. 04-1371-LPS (D. Del.
Oct. 25, 2019), ECF No. 995.
5 Whoever without authority supplies or causes
to be supplied in or from the United States any
component of a patented invention that is espe-
cially made or especially adapted for use in the in-
vention and not a staple article or commodity of
commerce suitable for substantial noninfringing
use, where such component is uncombined in
whole or in part, knowing that such component is
so made or adapted and intending that such com-
ponent will be combined 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.
35 U.S.C. § 271(f)(2).
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28 BRUMFIELD v. IBG LLC

of patent-claimed systems and its sending of the compo-
nents abroad to companies that would use them in assem-
bling the overall systems and then use the systems to
compete with WesternGeco in selling surveying services (to
oil companies looking for undersea oil). WesternGeco, 585
U.S. at 411. The jury awarded lost-profits damages to
WesternGeco, under the patent statute’s damages provi-
sion, 35 U.S.C. § 284, 6 for the foreign survey-services sales
WesternGeco lost to its survey-services competitors that
had been supplied by ION Geophysical. Id. This court, re-
lying on Power Integrations, held that award to be an im-
permissible extraterritorial application of § 284.
WesternGeco, 791 F.3d at 1350–51.
The Supreme Court reversed, concluding that the lost-
profits award for the § 271(f)(2) infringement was not im-
permissibly extraterritorial. 585 U.S. at 412–17. Specifi-
cally, the Court concluded that § 284 permits “the patent
owner to recover for lost foreign profits,” id. at 417, when
such recovery is justified under § 284’s directive to provide

6 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 inven-
tion by the infringer, together with interest and
costs as fixed by the court.
When the damages are not found by a jury, the
court shall assess them. In either event the court
may increase the damages up to three times the
amount found or assessed. Increased damages un-
der this paragraph shall not apply to provisional
rights under [35 U.S.C. § 154(d)].
The court may receive expert testimony as an
aid to the determination of damages or of what roy-
alty would be reasonable under the circumstances.
35 U.S.C. § 284.
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BRUMFIELD v. IBG LLC 29

“‘complete compensation’ for infringements,” applied to the
infringing (making-and-supplying) actions specified in
§ 271(f)(2), which the Court held to be domestic conduct.
Id. at 408 (quoting General Motors Corp. v. Devex Corp.,
461 U.S. 648, 655 (1983)).
The Supreme Court reached that conclusion by apply-
ing to the relevant patent-law statutes its two-step frame-
work for deciding when an application of a statute is
impermissibly extraterritorial. Under that framework,
which starts with a presumption that a statute lacks extra-
territorial reach, a court ordinarily asks, first, “whether the
presumption against extraterritoriality has been rebutted”
(by clear enough congressional action) and, second (if the
presumption has not been rebutted), “whether the case in-
volves a domestic application of the statute” (rather than
an extraterritorial application). Id. at 413 (internal quota-
tion marks omitted where quoting RJR Nabisco, Inc. v. Eu-
ropean Community, 579 U.S. 325, 337 (2016)). The Court
decided that the case should be decided by skipping the
first step and proceeding immediately to the second step.
Id. In conducting the second-step inquiry—into whether
the statutory application at issue is a “domestic applica-
tion”—courts are to identify “the statute’s focus,” id. (inter-
nal quotation marks omitted where quoting RJR Nabisco,
579 U.S. at 337), where the statute’s “focus is the object of
its solicitude, which can include the conduct it seeks to reg-
ulate, as well as the parties and interests it seeks to protect
or vindicate,” id. at 414 (cleaned up, internal quotation
marks omitted where quoting Morrison v. National Aus-
tralia Bank Ltd., 561 U.S. 247, 267 (2010), and an earlier
decision).
When initially describing the relevant statutory provi-
sions, the Court started by quoting the cause-of-action pro-
vision, 35 U.S.C. § 281 (“A patentee shall have remedy by
civil action for infringement of his patent.”), before quoting
provisions of § 271 on infringement and § 284 on damages.
WesternGeco, 585 U.S. at 409–11; see also Dowling v.
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30 BRUMFIELD v. IBG LLC

United States, 473 U.S. 207, 227 n.19 (1985) (referring to
§ 281 as providing a “cause of action”). But when determin-
ing the “statutory focus” for its extraterritoriality analysis,
the Court “beg[a]n with § 284,” the damages provision.
WesternGeco, 585 U.S. at 414. It reasoned that “[t]he por-
tion of § 284 at issue” was the portion stating that “‘the
court shall award the claimant damages adequate to com-
pensate for the infringement,’” and it noted its precedents’
explanations that § 284’s “overriding purpose . . . is to af-
ford patent owners complete compensation for infringe-
ments,” id. (cleaned up, internal quotation marks omitted
where quoting General Motors, 461 U.S. at 655), and that
the § 284 “question . . . is how much . . . the Patent Holder
suffered by the infringement,” id. at 414–15 (cleaned up,
internal quotation marks omitted where quoting Aro Man-
ufacturing Co. v. Convertible Top Replacement Co., 377
U.S. 476, 507 (1964) (“Aro II,” a common shorthand)).
Based on the “the infringement” language of § 284 and its
precedents, the Court concluded: “Accordingly, the in-
fringement is plainly the focus of § 284.” Id. at 415.
Having identified “the infringement” as the focus of
§ 284, the Court, to complete its determination whether
“the conduct relevant to the statutory focus in this case is
domestic,” then discussed the statutory provision defining
“the infringement” at issue in the case. Id. at 414. That
provision was § 271(f)(2), which, the Court concluded, “fo-
cuses on domestic conduct.” Id. at 415. The Court ex-
plained: “The conduct that § 271(f)(2) regulates—i.e., its
focus—is the domestic act of ‘supply[ing] in or from the
United States.’” Id. (alteration in original) (quoting
§ 271(f)(2)); see also id. (concluding that § 271(f) “vindicates
domestic interests” because it reaches domestically made
components; and that the focus is on “the act of exporting
components from the United States,” which is “domestic in-
fringement”). Therefore, the Court concluded, “the lost-
profits damages that were awarded to WesternGeco were a
domestic application of § 284.” Id. at 415–16.
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BRUMFIELD v. IBG LLC 31

The Court added several points in response to objec-
tions to its analysis. It indicated that infringement was not
the same as injury and did not encompass all the conduct
that contributed to producing the injury. In particular, the
Court reasoned that the infringement remained domestic
even though foreign conduct (e.g., ION Geophysical’s cus-
tomers’ system assembly and sale of survey services) con-
tributed to WesternGeco’s loss of sales abroad; such
“overseas events were merely incidental to the infringe-
ment”; and those events “do not have ‘primacy’ for purposes
of the extraterritoriality analysis.” Id. at 416 (quoting Mor-
rison, 561 U.S. at 267). The Court also indicated that dam-
ages are not the same as injury. Id. at 417 (stating that
the dissent’s “position wrongly conflates legal injury with
the damages arising from that injury”). Relatedly, the
Court explained that WesternGeco was critically different
from RJR Nabisco, whose pertinent provision was a civil-
cause-of-action provision, 18 U.S.C. § 1964(c), that con-
tained language expressly referring to injury, language
that the Court in RJR Nabisco held to be limited to “‘a do-
mestic injury.’” WesternGeco, 585 U.S. at 416 (quoting RJR
Nabisco, 579 U.S. at 346)). Whereas RJR Nabisco involved
“a substantive element of a cause of action,” the Court in
WesternGeco said, 35 U.S.C. § 284 is a “remedial damages
provision,” not a cause-of-action provision, let alone one
with an express injury element. Id. 7

7 Although the Court had earlier referred to the cause-
of-action provision for the patent statute, 35 U.S.C. § 281,
the Court in WesternGeco did not refer to § 281 in this RJR
Nabisco discussion—perhaps reflecting the fact that there
was no dispute that the cause of action was available to
WesternGeco (which was awarded some damages not sub-
ject to challenge for extraterritoriality). The Court thus did
not mention that § 281 itself contains no specific reference
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32 BRUMFIELD v. IBG LLC

Importantly for the present case, it is clear that the
Court in WesternGeco effectively recognized that a causa-
tion requirement is part of the § 284 standard, which au-
thorizes an award “adequate to compensate for” the
infringement. The Court quoted formulations inherently
acknowledging a causation requirement that demands at
least but-for causation. It quoted the Aro II description of
§ 284 as asking “how much . . . the Patent Holder . . . suf-
fered by the infringement” and also the Aro II statement
that the patentee is entitled to recover “the difference be-
tween [its] pecuniary condition after the infringement, and
what [its] condition would have been if the infringement
had not occurred.” WesternGeco, 585 U.S. at 414–15, 417
(alterations in original) (emphasis added) (internal quota-
tion marks omitted where quoting Aro II, 377 U.S. at 507).
And it quoted the statement in General Motors that com-
pensation for infringement is “adequate” when it places the
patentee “in as good a position as he would have been in if
the patent had not been infringed.” Id. at 417 (quoting 461
U.S. at 655); see also General Motors, 461 U.S. at 654–55
(describing § 284 as providing for “full compensation for
‘any damages’ he suffered as a result of the infringement”
(emphasis added) (internal quotation marks omitted where
quoting legislative history)). Finally, the Court in Western-
Geco concluded by calling out the unaddressed issue of the
scope of the causation requirement: “In reaching this hold-
ing, we do not address the extent to which other doctrines,
such as proximate cause, could limit or preclude damages
in particular cases.” 585 U.S. at 417 n.3.

to injury, making it unlike 18 U.S.C. § 1964(c). The United
States pointed out this difference in distinguishing RJR
Nabisco in its amicus brief in WesternGeco. Brief for the
United States as Amicus Curiae Supporting Petitioner, at
29–30, WesternGeco, 585 U.S. 407, 2018 WL 1168813.
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BRUMFIELD v. IBG LLC 33

3
The first doctrinal issue before us is whether the West-
ernGeco framework applies when the direct infringement
in question (either itself or as a component of indirect in-
fringement) is one of the acts at issue here accused of in-
fringing under § 271(a). We readily conclude that it does.
Nothing about the WesternGeco analysis of § 284, the
damages provision, or about § 281, the cause-of-action pro-
vision, is altered when “the infringement” at issue is in-
fringement under § 271(a) rather than § 271(f). Under
WesternGeco we must examine the particular acts alleged
to constitute infringement under particular statutory pro-
visions to determine if the allegations focus on domestic
conduct. Section 271(a) provides that “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 patent therefor, infringes the patent.” 35 U.S.C.
§ 271(a) (emphases added). At least the making, using, of-
fering to sell, and selling provisions are expressly limited
to domestic acts. 8

8 The remaining act, importing into the United States,
might also be properly characterized as a domestic act. Cf.
Carnegie Mellon University v. Marvell Technology Group,
Ltd., 807 F.3d 1283, 1308 (Fed. Cir. 2015) (Regarding “im-
port[ing] into the United States for use in the United
States,” the court stated: “Section 271(a) makes clear that
Congress meant to reach such ‘import[ation]’ and ‘use[]’ as
domestic conduct.”). In any event, Congress clearly author-
ized coverage of importing as an infringing act, so if import-
ing is characterized as extraterritorial, the statute provides
a “clear indication of an extraterritorial application,” thus
rebutting the presumption against extraterritoriality at
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34 BRUMFIELD v. IBG LLC

If the exporting covered by § 271(f)(2) is a domestic act
for purposes of the extraterritoriality analysis, as Western-
Geco held, so too are the § 271(a)-covered acts at issue in
this case. The WesternGeco extraterritoriality framework
for damages under § 284 therefore applies to the infringe-
ment under § 271(a) here.
4
We also conclude that the WesternGeco framework ap-
plies to a reasonable-royalty award, not just a lost-profits
award, under § 284, though its application must reflect the
established differences in standards for the two types of
awards.
Although the damages at issue in WesternGeco were
lost-profits damages, 585 U.S. at 411, 417, the Court’s stat-
utory analysis did not distinguish the forms of damages. In
discussing § 284, the Court described it as providing “a gen-
eral damages remedy,” and its essential point about § 284
was that damages were for “the infringement.” Id. at 414–
15. In describing the basic principle governing damages
under § 284, the Court relied on two precedents that in-
volved reasonable royalties. Id. (relying on General Motors
and Aro II). The Supreme Court in Aro II construed the
language of § 284 as treating the reasonable royalty au-
thorized by the provision as a form of damages rather than
as a substitute for damages, 377 U.S. at 504–08, notwith-
standing the difference in conceptual foundation of lost
profits and a reasonable royalty (at least when not meas-
ured by an established royalty); and we have consistently
followed that treatment, see, e.g., Rite-Hite Corp. v. Kelley
Co., 56 F.3d 1538, 1544–45 (Fed. Cir. 1995) (en banc); Laser
Dynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 66
(Fed. Cir. 2012); Pavo Solutions LLC v. Kingston Technol-
ogy Co., 35 F.4th 1367, 1379 (Fed. Cir. 2022); VLSI

the first step of the two-step analysis. WesternGeco, 585
U.S. at 413 (internal quotation marks omitted).
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BRUMFIELD v. IBG LLC 35

Technology LLC v. Intel Corp., 87 F.4th 1332, 1345 (Fed.
Cir. 2023). We hold, therefore, that the Court’s framework
in WesternGeco, and its conclusions about what is a domes-
tic rather than extraterritorial application of § 284, must
apply to a reasonable-royalty case.
That conclusion hardly means that the analysis of a
reasonable-royalty case may ignore the well-recognized dif-
ferences between lost-profits and reasonable-royalty dam-
ages, conceptually and in the formulations governing their
availability and calculation. An award of lost profits gen-
erally depends on showing the existence and magnitude of
profits lost to the patentee on sales the patentee did not
make, or made at lower prices, as a result, under proper
causation standards, of the infringement. See, e.g., Mentor
Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1283–90
(Fed. Cir. 2017); Ericsson, Inc. v. Harris Corp., 352 F.3d
1369, 1376–79 (Fed. Cir. 2003); Rite-Hite, 56 F.3d at 1544–
49; see also Dowagiac Manufacturing Co. v. Minnesota Mo-
line Plow Co., 235 U.S. 641, 648 (1915). “The reasonable
royalty theory of damages, however, seeks to compensate
the patentee not for lost sales caused by the infringement,
but for its lost opportunity to obtain a reasonable royalty
that the infringer would have been willing to pay if it had
been barred from infringing.” AstraZeneca AB v. Apotex
Corp., 782 F.3d 1324, 1334 (Fed. Cir. 2015). “As the exclu-
sive right conferred by the patent was property, and the
infringement was a tortious taking of a part of that prop-
erty, the normal measures of damages was the value of
what was taken,” and it is “permissible to show the value
by proving what would have been a reasonable royalty, con-
sidering the nature of the invention, its utility and ad-
vantages, and the extent of the use involved.” Dowagiac,
235 U.S. at 648.
This case involves a reasonable royalty, and repeatedly
articulated standards frame how the particular issue pre-
sented here is properly formulated. “There is no dispute
here about the propriety of using the common hypothetical-
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36 BRUMFIELD v. IBG LLC

negotiation approach to calculating a reasonable royalty,
under which the finder of fact ‘attempts to ascertain the
royalty upon which the parties would have agreed had they
successfully negotiated an agreement just before infringe-
ment began.’” Asetek Danmark A/S v. CMI USA Inc., 852
F.3d 1352, 1362 (Fed. Cir. 2017) (quoting Lucent Technolo-
gies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir.
2009)); see Jury Instructions at 51–56, Trading Technolo-
gies International, Inc. v. IBG LLC, No. 10 C 715 (N.D. Ill.
Sept. 2, 2021), ECF No. 2130. Many authorities address
issues concerning the hypothetical negotiation, which, op-
erating under certain assumptions, at its core is a process
for identifying the incremental value of the claimed tech-
nology over noninfringing alternatives and determining
how that gain would be shared. See, e.g., VLSI, 87 F.4th at
1345–46; Asetek Danmark, 852 F.3d at 1362–63; Carnegie
Mellon, 807 F.3d at 1304–05; AstraZeneca, 782 F.3d at
1334–44; Aqua Shield v. Inter Pool Cover Team, 774 F.3d
766, 770 (Fed. Cir. 2014); Lucent, 580 F.3d at 1324–25.
The foundational principle is that “the royalty due for
patent infringement should be the value of what was
taken—the value of the use of the patented technology.”
AstraZeneca, 782 F.3d at 1344 (emphasis added) (internal
quotation marks omitted); see VLSI, 87 F.4th at 1345; Aqua
Shield, 774 F.3d at 770. One aspect of that principle is that
“[t]he royalty base for reasonable royalty damages cannot
include activities that do not constitute patent infringe-
ment, as patent damages are limited to those ‘adequate to
compensate for the infringement.’” AstraZeneca, 782 F.3d
at 1343 (quoting 35 U.S.C. § 284). For example, a patentee
“may of course obtain damages only for acts of infringe-
ment after the issuance of the . . . patent.” Hoover Group,
Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 304 (Fed. Cir.
1995) (quoted with approval in AstraZeneca, 782 F.3d at
1343). Relatedly, the bottom-line royalty “must be ‘appor-
tion[ed] to [the value of the patented technology]—by sep-
arating out and excluding other value in economic products
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BRUMFIELD v. IBG LLC 37

or practices.” VLSI, 87 F.4th at 1345 (citing numerous
cases). In other words, the incremental value to be allo-
cated, in the hypothetical negotiation, is the value of the
claimed technology (not, e.g., of unclaimed product im-
provements) over that of noninfringing alternatives.
Those principles point to a minimum requirement for a
patentee seeking reasonable-royalty damages based on for-
eign conduct that is not independently infringing. Under
the foregoing principles, the hypothetical negotiation must
turn on the amount the hypothetical infringer would agree
to pay to be permitted to engage in the domestic acts con-
stituting “the infringement.” 35 U.S.C. § 284. If the pa-
tentee seeks to increase that amount by pointing to foreign
conduct that is not itself infringing, the patentee must, at
the least, show why that foreign conduct increases the
value of the domestic infringement itself—because, e.g., the
domestic infringement enables and is needed to enable oth-
erwise-unavailable profits from conduct abroad—while re-
specting the apportionment limit that excludes values
beyond that of practicing the patent. This kind of causal
connection, framed in terms of the agreement-to-pay aspect
of a hypothetical negotiation, is a necessary beginning—we
need not here say it is sufficient—for a foreign-conduct
analysis in a reasonable-royalty case. Cf. Carnegie Mellon,
807 F.3d at 1307 (noting that defendant’s sales abroad
were “strongly enough tied to its domestic infringement as
a causation matter to have been part of the hypothetical-
negotiation agreement,” before moving on to apply extra-
territoriality standards based on Power Integrations, now
superseded by WesternGeco).
5
Finally, and relatedly, because WesternGeco estab-
lishes a new framework, of which causation is a necessary
part, a few observations on causation are warranted based
on the Supreme Court’s note that it was not ruling on “the
extent to which other doctrines, such as proximate cause,
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38 BRUMFIELD v. IBG LLC

could limit or preclude damages in particular cases.” 585
U.S. at 417 n.3.
We have recognized that “proximate” causation is re-
quired and that proximate causation requires but-for cau-
sation plus more, including the absence of remoteness.
Rite-Hite, 56 F.3d at 1546 (“the ‘test’ for compensability . . .
under § 284 is not solely a ‘but for’ test”; additional limits,
including limits on remoteness, apply, labeled “proximate
cause”). We have said, too, in the lost-profits setting, that
“reasonable, objective foreseeability” is “generally” suffi-
cient for proximate causation, while indicating that a dif-
ferent conclusion might be justified if there is “a persuasive
reason to the contrary.” Id.
The Supreme Court, for its part, has noted that proxi-
mate causation is more than but-for causation, see, e.g.,
Anza v. Ideal Steel Supply Corp., 547 U.S. 451, 456–57
(2006), containing a directness requirement, id. at 457–58,
and described the proximate-cause requirement as the
“traditional requirement,” Bank of America Corp. v. City of
Miami, 581 U.S. 189, 201 (2017). More specifically, the
Court has explained that “[i]t is a well established principle
of [the common] law that in all cases of loss, we are to at-
tribute it to the proximate cause, and not to any remote
cause” and that the Court “assume[s] Congress is familiar
with the common-law rule and does not mean to displace it
sub silentio.” Id. (internal quotation marks omitted where
quoting Lexmark International, Inc. v. Static Control Com-
ponents, Inc., 572 U.S. 118, 132 (2014)). And, based on that
logic, the Court held the proximate-cause requirement ap-
plicable to a statutory claim that was “akin to a tort action,”
id. (internal quotation marks omitted)—a characterization
that fits patent infringement, described by the Court as “a
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BRUMFIELD v. IBG LLC 39

tortious taking,” Dowagiac, 235 U.S. at 648. 9 At the same
time, the Supreme Court explained that, for some statutes,
“foreseeability alone is not sufficient to establish proximate
cause,” Bank of America, 581 U.S. at 201, and that the
“[p]roximate-cause analysis is controlled by the nature of
the statutory cause of action,” id. (internal quotation
marks omitted where quoting Lexmark, 572 U.S. at 133).
In finding foreseeability insufficient under the statute at
issue in Bank of America, the Court considered the conse-
quences of the contrary view in the context of that statute.
Id. at 202–03.
The foregoing authorities raise questions about the
proper approach to determining, based on “other doctrines,
such as proximate cause,” WesternGeco, 585 U.S. at 417
n.3, when foreign conduct can properly play a role in calcu-
lating patent damages. One such question is whether the
“reasonable, objective foreseeability” presumptive stand-
ard for lost profits, Rite-Hite, 56 F.3d at 1546, is applicable
where the damages are for a (non-established) reasonable
royalty, whose conceptual foundation is notably different
from that of lost profits. Another question concerns the
long-recognized general avoidance of extraterritorial reach
that is an aspect of the statutory context. Microsoft Corp.
v. AT & T Corp., 550 U.S. 437, 455–56 (2007); Deepsouth
Packing Co. v. Laitram Corp., 406 U.S. 518, 531 (1972);
Carnegie Mellon, 807 F.3d at 1306; Power Integrations, 711
F.3d at 1371. What, if any, room is there to take that

9 See also Carbice Corp. of America v. American Pa-
tents Development Corp., 283 U.S. 27, 33 (1931); Belknap v.
Schild, 161 U.S. 10, 17 (1896); Schillinger v. United States,
155 U.S. 163, 169 (1894); Wordtech Systems, Inc. v. Inte-
grated Network Solutions, Inc., 609 F.3d 1308, 1313 (Fed.
Cir. 2010); Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359,
1365 (Fed. Cir. 2008); cf. Mentor Graphics, 851 F.3d at 1284
(analogizing to tort law).
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40 BRUMFIELD v. IBG LLC

consideration into account in applying the proximate-cause
requirement, itself not addressed in WesternGeco, without
contradicting the Supreme Court’s ruling in WesternGeco?
We need not and do not here suggest answers to, or further
explore, those or other questions.
B
The requirement of the foregoing framework that is
dispositive here is that “the infringement”—the focus of
§ 284, as the Court in WesternGeco repeatedly stressed—
have the needed causal relationship to the foreign conduct
for which recovery is sought. Ms. Lawton’s “Making the
Accused Product with Foreign Damages” basis for claimed
damages did not meet this fundamental requirement—at
least because Ms. Lawton did not focus on “the infringe-
ment.” That failure called for its exclusion.
1
Infringement under § 271(a) is one of the specified acts
involving the “patented invention”—making, using, offer-
ing to sell, selling, or importing it. 35 U.S.C. § 271(a).
“[T]he claims measure the invention,” Continental Paper
Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908);
“[e]ach element contained in a patent claim is deemed ma-
terial to defining the scope of the patent invention, . . . and
a patentee’s rights extend only to the claimed combination
of elements, and no further,” Limelight Networks, Inc. v.
Akamai Technologies, Inc., 572 U.S. 915, 921 (2014) (inter-
nal quotation marks omitted where quoting Warner-Jen-
kinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17,
29 (1997)); and “infringement must be decided with respect
to each asserted claim as a separate entity,” W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1559 (Fed.
Cir. 1983). See also, e.g., Teva Pharmaceuticals USA, Inc.
v. Sandoz, Inc., 574 U.S. 318, 321, 332 (2015); Altoona Pub-
lix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 487
(1935); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc); Pall Corp. v. Micron Separations, Inc.,
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BRUMFIELD v. IBG LLC 41

66 F.3d 1211, 1220 (Fed. Cir. 1995); In re Vogel, 422 F.2d
438, 441 (CCPA 1970).
Here, there are two groups of claims at issue: claims to
a method; and claims to a computer readable medium
(CRM) containing computer code. Infringement therefore
is limited to making, using, offering to sell, selling, or im-
porting a method or a CRM. Ms. Lawton’s at-issue pro-
posal, however, does not focus on one of those acts.
In that proposal, the asserted infringement is “Making
the Accused Product.” This language cannot reasonably be
read to refer to the method claims. TT has not argued that
it refers to making the claimed methods. And any such
reading of the language would have to overcome at least
two related obstacles: There is no established recognition
in patent law of direct infringement by “making” a
“method”; and, indeed, we have indicated that direct in-
fringement is limited to using the method, stating that “[a]
method claim is directly infringed only by one practicing
the patented method,” Joy Technologies, Inc. v. Flakt, Inc.,
6 F.3d 770, 775 (Fed. Cir. 1993). See NTP, Inc. v. Research
in Motion, Ltd., 418 F.3d 1282, 1319–21 (Fed. Cir. 2005)
(explaining similar recognition in congressional reports as-
sociated with the Process Patent Amendments Act of 1988,
Pub. L. No. 100-418, Title IX, § 9003, 102 Stat. 1563–67;
ultimately reserving novel issue whether methods can be
sold or offered for sale); Timothy R. Holbrook, Method Pa-
tent Exceptionalism, 102 Iowa L. Rev. 1001, 1014 (2017)
(“Generally, process patents are infringed only when the
steps of the process are performed.”).
For Ms. Lawton’s proposal to suffice even to begin a
showing of causation based on domestic “infringement,”
therefore, it would have to refer to the CRM claims. But
Ms. Lawton in proposing the theory, and TT in explaining
it, have pointedly not focused on making an individual
memory-device unit, whether freestanding (like a memory
stick) or a part of a larger physical unit (like a hard drive
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42 BRUMFIELD v. IBG LLC

in a personal computer or server). They have referred, in-
stead, to the TWS BookTrader software itself—“the in-
structions themselves detached from any medium” (rather
than a “tangible ‘copy’”), “software in the abstract,” soft-
ware “[a]bstracted from a usable copy.” Microsoft, 550 U.S.
at 447–448, 449 n.10, 451, 451 n.12. Ms. Lawton stated,
using the singular when discussing what was “made,” that
“BookTrader is the Accused Product and is included in
every version and every download of TWS and WebTrader,”
J.A. 87793, and it was “designed and made” and “devel-
oped” and “upgrade[d]” in the United States before being
“provided . . . to customers around the world,” J.A. 87851–
53. TT, explaining Ms. Lawton’s proposal in the district
court, focused on domestic designing and programming of
TWS BookTrader. J.A. 88411–12; see also Oral Arg. at
14:07–14:20 (same).
The Supreme Court has recognized the important dis-
tinction between software and a particular copy of it on a
CRM, as just noted. See Microsoft, 550 U.S. at 447–448,
449 n.10, 451, 451 n.12. Even if the BookTrader software
as such could be claimed (without violating statutory re-
quirements such as 35 U.S.C. § 101)—which we need not
decide—the software itself is not claimed in the ’304 and
’132 patent claims at issue. Thus, Ms. Lawton’s proposal
is legally insufficient, even under the WesternGeco frame-
work, for the simple reason that, though it claims a “mak-
ing,” it does not start from an act of “infringement”—
making a claimed CRM (or method)—in asserting the re-
quired causal connection to the foreign conduct for which
the proposal seeks royalty damages. We will not rewrite
Ms. Lawton’s proposal to say something it does not.
2
That deficiency suffices for affirmance of the evidence-
exclusion ruling, but it is worth noting at least one other
seeming deficiency in Ms. Lawton’s proposal, which rein-
forces our unwillingness to rewrite Ms. Lawton’s proposal.
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BRUMFIELD v. IBG LLC 43

Although they expressly invoked WesternGeco, Ms. Lawton
and TT presented no focused, coherent explanation of the
required causal connection to domestic infringement, even
putting aside the mismatch between the proposal and the
claims.
Notable in this respect is a fact about timing. We may
assume (without deciding) that IBG had to make early
CRMs domestically (or practice the claimed method) as
part of its process of developing its software and that the
value of such development work to IBG might reflect pro-
spective foreign-earned revenue for the resulting product.
Cf. Carnegie Mellon, 807 F.3d at 1294, 1297, 1307 (refer-
ring to payment for domestic infringement that is part of
development work that, when completed, would produce
large foreign revenues). In this case, however, according to
TT and Ms. Lawton, IBG’s development of its BookTrader
product meeting all claim limitations occurred before TT’s
patents issued: TT accused IBG of marketing its Book-
Trader product before July 20, 2004, which caused in-
fringement to begin precisely when the ’304 patent issued.
On that premise, IBG’s making of CRMs in the initial cre-
ation of a BookTrader product meeting all claim limitations
was not infringing under § 271(a), and IBG therefore did
not need to pay TT anything for that work, which could not
properly be included in the calculation in the hypothetical
negotiation held “just before” July 20, 2004. See Asetek
Danmark, 852 F.3d at 1362; Lucent, 580 F.3d at 1324.
Later domestic making of BookTrader-containing
CRMs (or practicing of the claimed methods) could be in-
fringing, of course, and properly be subject to a royalty.
But TT was permitted to introduce evidence that some for-
eign users of BookTrader obtained their copies from domes-
tic acts of making a copy or selling. FRE 702 Opinion, 2021
WL 5038754, at *2. The only disallowed proposal therefore
had to involve making of copies abroad for foreign users
(and foreign sales).
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44 BRUMFIELD v. IBG LLC

On TT’s and Ms. Lawton’s premise that pre-July 20,
2004 versions of TWS BookTrader met the limitations of
the ’304 and ’132 patents’ claims, TT has not offered a con-
crete, coherent account of why, in the hypothetical negoti-
ation, the royalty for new domestic acts of making claimed
CRMs (or practicing claimed methods), starting July 20,
2004, would have properly been increased to reflect the pro-
spective making and sale of CRMs abroad for use abroad.
On the noted premise, IBG, even before the patents issued,
already had CRMs containing TWS BookTrader that met
the patents’ limitations. “[N]either export from the United
States nor use in a foreign country of a product covered by
a United States patent constitutes infringement.” Johns
Hopkins University v. CellPro, Inc., 152 F.3d 1342, 1366
(Fed. Cir. 1998). And TT has not argued that the making
of CRMs abroad would be infringing, even if the software
installed abroad came from the United States, either under
§ 271(a), see Centillion Data Systems, LLC v. Qwest Com-
munications International, Inc., 631 F.3d 1279, 1288 (Fed.
Cir. 2011); Deepsouth, 406 U.S. at 527, or under § 271(f),
see Microsoft, 550 U.S. at 449–50 (software itself is not a
“component” under § 271(f)). 10
IBG might of course infringe by domestically making
new CRMs containing upgraded versions of TWS Book-
Trader. But TT has not shown how value added by the up-
grades would be properly added to the royalty in light of
the apportionment requirement to avoid charging for value
not attributable to the claimed invention. In particular, TT
has not explained how such upgrade value would be

10Congress responded to Deepsouth in 1984, but it did
not change § 271(a) or, therefore, redefine when “making”
occurs under that provision. Rather, Congress added a new
subsection (f) defining new infringing acts. See Microsoft,
550 U.S. at 442–45; see also Life Technologies Corp. v.
Promega Corp., 580 U.S. 140, 151–52 (2017).
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BRUMFIELD v. IBG LLC 45

anything but the value of features beyond what is required
by the patent claims, on TT’s and Ms. Lawton’s premise
about pre-July 20, 2004 versions of TWS Book Trader com-
ing within the claims.
There is, in short, an apparent deficiency over and
above the fundamental infringement-identifying one previ-
ously discussed. We need not, however, definitively draw
a conclusion about the presence of this additional defi-
ciency. The fundamental deficiency discussed above suf-
fices for affirmance of the district court’s Rule 702
exclusion ruling.
IV
In its final challenge in this appeal, TT asserts that the
district court “abused its discretion” when it denied TT’s
motion for a new damages trial and new discovery on dam-
ages, a motion in which TT asserted that IBG committed
fraud regarding its own calculation of damages. TT’s
Opening Br. at 52. As the district court noted in denying
the motion, the substance of TT’s request is materially the
same whether it is considered under Rule 59 or under Rule
60(b)(3), Post-Trial Opinion, 586 F. Supp. 3d at 833–34,
and TT has not distinguished the two Rules in its argu-
ments on appeal, TT’s Opening Br. at 52–67. TT itself en-
dorses an “abuse of discretion” standard for our review of
the district court’s denial, id. at 33, 52, reflecting the Sev-
enth Circuit’s precedents. See Abellan v. Lavelo Property
Management, LLC, 948 F.3d 820, 830 (7th Cir. 1994) (Rule
59); Philos Technologies, Inc. v. Philos & D, Inc., 802 F.3d
905, 917 (7th Cir. 2015) (Rule 60(b)(3)); see also Cap Export,
LLC v. Zinus, Inc., 996 F.3d 1332, 1338 (Fed. Cir. 2021)
(following regional-circuit law). The Seventh Circuit has
stated that relief under 60(b)(3) is “‘an extraordinary rem-
edy and is granted only in exceptional circumstances.’”
Wickens v. Shell Oil Co., 620 F.3d 747, 759 (7th Cir. 2010)
(quoting Dickerson v. Board of Education, 32 F.3d 1114,
1116 (7th Cir. 1994)).
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46 BRUMFIELD v. IBG LLC

TT’s argument on appeal reduces to the assertion that
IBG, whose damages calculation was based on counting
particular accused trades made by users of IBG’s Trader
Workstation Platform (TWS), failed to give TT enough in-
formation about how IBG was counting the trades—more
particularly, what role the BookTrader feature of TWS had
to play in a trade (e.g., as originator or as submitter) for the
trade to be counted. See TT’s Opening Br. at 59–60. We
see no clear error, based on the record, in the district court’s
careful evaluation of the evidence available to TT through
discovery and its determination that IBG did disclose the
key information that TT alleged was withheld, including
the list of various TWS tools (features). Post-Trial Opinion,
586 F. Supp. 3d at 835–36. 11 On the basis of its supported
findings, the court could properly conclude, as it did, that
TT had ample reason and opportunity before trial to un-
cover the now-asserted problems with IBG’s evidence that
TT says it uncovered only through its post-trial investiga-
tion. Id. at 837–38.
It is institutionally important that parties generally be
held to the duty to conduct needed investigations of facts
before trial. See, e.g., Rutledge v. United States, 230 F.3d
1041, 1052 (7th Cir. 2000) (stating that “Rule 60(b) motions
cannot be used to present evidence that with due diligence
could have been introduced before judgment”). We see no
abuse of discretion in the district court’s denial of TT’s post-
trial motion.
V
We have considered TT’s other arguments, and we find
them unpersuasive. For the foregoing reasons, we affirm

11 Nor do we see clear error in the district court’s re-
jection of TT’s assertion that IBG sponsored false testi-
mony, id. at 837, a ruling to which TT presents no
meaningful challenge on appeal.
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BRUMFIELD v. IBG LLC 47

the district court’s judgment, including its grant of sum-
mary judgment of ineligibility of the asserted claims of the
’411 and ’996 patents, exclusion of Ms. Lawton’s testimony
on the “domestic making with foreign damages” theory,
and denial of TT’s motion for a new trial.
The parties shall bear their own costs.
AFFIRMED