PV Law LLP

No Apportionment, No Damages: Delaware Court Vacates $13.6 Million Patent Award

2026-10-03T18:35:23Z

Fundamental Innovations Systems International, LLC v. Anker Innovations Ltd. and Fantasia Trading LLC d/b/a Ankerdirect, No. 21-339 (D. Del. Sept. 29, 2026) Fundamental Innovations Systems International, LLC (“Fundamental”) sued Anker Innovations Ltd. and Fantasia Trading LLC d/b/a Ankerdirect (collectively, “Anker”) in the District of Delaware in March 2021, alleging infringement of the following four patents concerning USB charging technology: U.S. Patent Nos. 7,239,111, 8,624,550, 7,453,233, and 6,936,936. Following a four-day trial in March 2025, the jury found that Anker infringed the patents and awarded damages of $13,638,219. Fundamental’s damages case relied in part on its licensing practice of beginning negotiations at $0.50 per unit and on evidence that Anker allegedly realized approximately $2.68 per unit in cost savings by using the patented technology rather than a noninfringing alternative. Id. at 17–20. Anker argued that the $0.50 rate was merely an opening offer set by Fundamental’s internal policy, which cannot alone establish the rate the parties would have agreed to in a hypothetical negotiation under Omega Pats., LLC v. CalAmp Corp., 13 F.4th 1361, 1379 (Fed. Cir. 2021). Id. at 17. The Court disagreed, finding that evidence showed more than a bare internal policy: Fundamental would begin licensing negotiations at $0.50 per unit, discussed cost savings with prospective licensees, and could adjust the opening rate based on various considerations. Id. at 17–20. Anker also argued that Fundamental’s $2.68-per-unit cost-savings theory failed because enumeration was not a commercially acceptable noninfringing alternative, contending instead that the savings were about a penny per unit. Anker’s own interrogatory response and expert testimony, however, supported that enumeration was acceptable. Id. at 19–20. Because the $0.50 rate fell within the range the parties advocated, the Court deemed the jury’s choice was permissible. Id. at 21. The problem, however, was apportionment. The Court found that Fundamental had not presented sufficient evidence separating the value of the patented technology from the value of features unrelated to the patents. Fundamental’s damages expert acknowledged that the accused USB adapters had conventional features unrelated to the patents and that he had not performed an analysis apportioning between patented and unpatented features. Id. at 22. Fundamental argued that the $0.50 rate nevertheless reflected “built-in-apportionment” because it was “already specific to the patents-in-suit.” Id. The Court disagreed, noting that the $0.50 was “merely an opening offer” and that Fundamental had not shown that comparable licensees actually accepted that rate or paid a similar amount for comparable licenses. Id. at 23. The Court also rejected Fundamental’s argument that its “cost-savings” approach obviated the need for apportionment as a matter of law. Discussing Prism Techs. LLC v. Sprint Spectrum L.P., 849 F.3d 1360 (Fed. Cir. 2017), the Court explained that cost-savings damages evidence can be relevant to valuing the patented technology, however, that does not mean “evidence of cost savings makes the concept of apportionment moot.” Id. at 26–27. Because the record did not provide a sufficient evidentiary basis for determining the incremental value attributable to the patented technology, the Court granted Anker Innovations’ motion for judgment as a matter of law and reduced the $13.6 million damages award to zero. In doing so, the Court cited the Federal Circuit’s recent decision in Rex Medical, L.P. v. Intuitive Surgical, Inc., 156 F.4th 1289, 1299 (Fed. Cir. 2025), which stated that “the patent damages statute, 35 U.S.C. § 284, does not require an award of damages if none are proven that adequately tie a dollar amount to the infringing acts.” Id. at 28. (See prior post on Rex Medical.) The Court also declined to order a new damages trial. Because the jury had been instructed to award only damages proved by Fundamental, the Court reasoned that if the Federal Circuit were to disagree with its ruling on the damages verdict and find substantial evidence supporting the verdict, there would be no reason to retry damages. Id. at 27–29. The decision reinforces Rex Medical’s warning that inadequate apportionment can be fatal to a damages award—there, resulting in nominal damages, and here, no damages at all. It also underscores that evidence relevant to a hypothetical negotiation, such as licensing practices, cost savings, and noninfringing alternatives, must still be tied to the incremental value of the patented technology.

Brumfield in Practice: Delaware Court Addresses Foreign Conduct in Patent-Damages Analysis

2026-09-22T18:45:36Z

Two years after Brumfield v. IBG LLC extended WesternGeco’s extraterritoriality framework to § 271(a) and reasonable-royalty damages, a recent District of Delaware decision shows that the issue remains active. In Corteva Agriscience LLC v. Inari Agriculture, Inc., the court rejected an effort to confine damages to the immediate domestic acts of infringement and partially excluded a damages expert for taking too restrictive a view of WesternGeco and Brumfield. 2026 WL 2644045, No. 1:23-cv-01059, D.I. 648 (D. Del. Sept. 8, 2026). Corteva alleged that Inari wrongfully used Corteva’s patented seed technology to accelerate its entry into the market. Corteva asserted, among other claims, direct, contributory, and induced infringement of U.S. Patent No. 8,575,434 which concerns corn seeds, plants, and tissues containing a genetic event that confers insect resistance. Corteva alleged that Inari obtained patented seeds from a public depository, transferred them outside the United States, and used them to develop its own seed varieties. Both parties filed Daubert motions directed to their respective patent-damages experts.

Inari’s Challenge to Corteva’s Damages Expert, Dr. Vellturo

Dr. Vellturo opined that the parties would have negotiated a substantial lump-sum reasonable royalty in May 2020. His analysis considered the value to Inari of accelerating development and commercialization of products derived from Corteva’s patented technology, as well as the expected competitive harm to Corteva. Among other things, he relied on Inari’s own internal projections from 2022-2023 and applied the Georgia-Pacific factors. Inari argued that Dr. Vellturo’s opinion should be precluded because the alleged growing, editing, copying and development activities occurred abroad, and because Dr. Vellturo relied on projections prepared after the hypothetical negotiation. The Court rejected both arguments. First, the Court found Inari’s premise that foreign use of a patented invention cannot give rise to damages under § 284 was no longer tenable after WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407 (2018). Following the Federal Circuit’s decision in Brumfield v. IBG LLC, 97 F.4th 854 (Fed. Cir. 2024), the Court noted that “the analysis must start from an act of infringement (cognizable under § 271) and then make a causal connection to the harm experienced, even if quantifying the harm sweeps in foreign conduct.” Id. at *3. Whether Dr. Vellturo successfully established that connection, on the record presented, was a question for the jury rather than a basis for exclusion. The court also rejected Inari’s challenge to Dr. Vellturo’s use of Inari’s 2022 and 2023 projections, even though those projections were post-hypothetical negotiation and the projected sales ultimately did not occur. The Court noted that “evidence from after the hypothetical negotiation can be insightful, so long as it is not treated as limiting or a substitute for the required hypothetical negotiation analysis.” Id. at *4 (citing Aqua Shield v. Inter Pool Cover Team, 774 F.3d 766, 770 (Fed. Cir. 2014). The fact that the projections were Inari’s own, coupled with other evidence supporting their reliability, further supported admissibility. The court therefore denied Inari’s motion to exclude Dr. Vellturo’s patent-damages opinions.

Corteva’s Challenge to Inari’s Damages Expert, Dr. Goodwin

Corteva, in turn, moved to exclude portions of the rebuttal opinions of Inari’s damages expert, Dr. Goodwin, who criticized Dr. Vellturo’s analysis on several grounds, including hindsight, economic feasibility, the structure of the hypothetical negotiation, and the treatment of financial data. The court declined to exclude Dr. Goodwin merely because he did not offer his own reasonable-royalty calculation. As a rebuttal expert, Dr. Goodwin was permitted to offer selected critiques of Dr. Vellturo without independently performing every step necessary to reach an affirmative royalty opinion. Id. at *5. But the court drew the line where Goodwin’s criticisms rested on an incorrect legal premise. For example, Dr. Goodwin stated that “Inari's long-term commercial outcomes, such as its foreign development work or projected U.S. or foreign sales years later (including between 2024 and 2032), occur well outside the temporal and geographic boundaries that I understand WesternGeco and related authority permit” and that “[t]he appropriate measure of damages would therefore be limited to the tangible, realized cost savings, if any, directly attributable to Inari's accused testing and export activity, rather than the speculative value of its future sales.” Id. The Court characterized that position as “a sweeping and incorrect judgment of how the law works.” Id. In the Court’s view, Dr. Goodwin’s reading of WesternGeco and Brumfield effectively treated damages tied to Inari’s export activity as categorically unavailable, which was incorrect. The Court therefore granted Corteva’s motion to the extent Dr. Goodwin offered an incorrect statement of law or opinions flowing from that incorrect premise.

Conclusion

The decision reinforces that patent damages law does not impose a geographic cutoff on damages simply because part of the resulting economic activity occurs abroad. Instead, Courts may permit damages theories that account for foreign conduct where the claimed harm is sufficiently tied to a domestic act of infringement, while excluding expert opinions that treat such downstream consequences as categorically unavailable.

PV Law Attorneys Named Again to Lawdragon’s List of 500 Leading Litigators in America – 2027

2026-09-16T21:59:33Z

PV Law Attorneys Named Again to Lawdragon’s List of 500 Leading Litigators in America – 2027 We congratulate Bradford Cangro and Jacob Snodgrass for this prestigious recognition which honors the top 500 litigators the U.S. has to offer. This ranking acknowledges their combination of technical aptitude, trial instincts and dedication that leads to continued success for their clients.

Roger Taylor Named to the 2027 edition of Best Lawyers in America, Washington, DC

2026-09-16T22:00:48Z

Roger Taylor, PV Law Intellectual Property Partner, Named to the 2027 edition of Best Lawyers® in America, Washington, DC Roger has been recognized by Best Lawyers® in America since 2008. Congratulations Roger!

Federal Circuit Extends Dynamic Drinkware’s Written-Description Requirement for AIA Prior Art: Dental Monitoring v. Align Technology

2026-08-11T20:52:40Z

Introduction

On August 10, 2026, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) decision that had invalidated all challenged claims of Dental Monitoring SAS’s U.S. Patent No. 10,755,409 (“the ‘409 patent”) in an inter partes review brought by Align Technology, Inc. It held that a reference patent or published application cannot claim the benefit of an earlier provisional filing date for prior art purposes under AIA 35 U.S.C. § 102(d)(2) unless the provisional application actually satisfies the written description requirement of § 112(a) for at least one claim of the later-filed application. In doing so, the court rejected the PTAB’s position, following in its own precedent, that only “ministerial” compliance with the priority-claiming formalities of §§ 119 and 120 is required. The case effectively extends the pre-AIA rule of Dynamic Drinkware, LLC v. National Graphics, Inc. into the AIA framework.

Background

Align Technology challenged claims 1–15 of Dental Monitoring’s ‘409 patent in an inter partes review. The PTAB found the claims obvious over a combination of three references, including a patent publication referred to as “Carrier.” Carrier’s status as prior art depended on whether it could receive the filing date of its provisional application, because that provisional was filed before the effective filing date of the ‘409 patent, while Carrier’s non-provisional application was filed afterward. Dental Monitoring argued that, under Dynamic Drinkware, Carrier could receive the benefit of its provisional filing date only if the provisional provided written-description support for at least one claim of Carrier. Align argued that Dynamic Drinkware was limited to pre-AIA law and that, under the PTAB’s precedential decision in Penumbra Inc. v. RapidPulse, Inc., the provisional need only disclose the subject matter relied upon as prior art and satisfy the applicable “ministerial” priority requirements. The PTAB agreed with Align and treated Carrier as prior art as of the provisional filing date.

Federal Circuit's Decision

The Federal Circuit reviewed the PTAB’s legal conclusions de novo and vacated. The Federal Circuit grounded its decision in the statutory text of § 102(d)(2), which provides a reference with an earlier effective filing date only if the reference “is entitled to claim a right of priority under [§] 119.” Section 119(e)(1) in turn requires that the invention be “disclosed in the manner provided by [§] 112(a).” Reading these provisions together, the court held that § 102(d)(2) incorporates § 112(a)’s written description requirement, and that the phrase “entitled to claim a right of priority” denotes substantive entitlement, not the mere procedural act of claiming priority. The panel rejected both of Align’s arguments for the PTAB’s contrary reading. First, it characterized Dynamic Drinkware’s footnote reserving the AIA § 102(d) question as a reservation of decision, not a determination that the AIA abandoned the written description requirement. In addition, the Federal Circuit noted that the policy concern Dynamic Drinkware addressed, namely preventing a challenger from manufacturing an artificially early prior art date, remains equally valid under the AIA. Second, the court held that the AIA’s structural distinction between a claimed invention’s effective filing date (§ 100(i)) and a reference’s effective prior art date (§ 102(d)) says nothing about what substantive showing “entitled to claim” priority requires, rather it merely identifies which inquiry is being performed. The court also declined to credit legislative statements suggesting a “ministerial” standard, reiterating that unambiguous statutory text controls over extrinsic legislative history. Notably, the court observed in a footnote that the PTAB’s own Penumbra decision, the precedent underlying its “ministerial” standard, had been affirmed by the Federal Circuit only under Rule 36, without opinion, and therefore carries no precedential weight of its own. A Rule 36 affirmance only establishes that the judgment was correct. It does not endorse or reject the underlying reasoning for the judgment. Because the PTAB had not made factual findings on whether Carrier’s provisional application actually provides § 112(a) written description support for any claim of Carrier, the court vacated and remanded the decision for the PTAB to make that determination in the first instance.

Conclusion

Dental Monitoring v. Align Technology supplies precedential clarity on a question the PTAB had answered inconsistently in the years since the AIA: a reference cannot borrow an earlier provisional filing date for prior art purposes under § 102(d)(2) without satisfying § 112(a)’s written description requirement for at least one claim of the reference. Practitioners should take note of several practical implications:

IPR petitioners relying on a reference’s provisional priority date to establish an earlier effective filing date should be prepared to show that the provisional application provides written description support for at least one claim of the reference patent or application.
Patent owners facing prior art references that depend on an earlier provisional filing date now have a clearer, precedential basis to challenge that date by attacking the provisional’s written description sufficiency, mirroring pre-AIA Dynamic Drinkware practice.
The decision also serves as a reminder that Rule 36 affirmances carry no precedential force. The PTAB’s reliance on Penumbra as settled law was itself vulnerable, and parties should scrutinize whether PTAB precedent rests on non-precedential appellate outcomes before treating it as settled.

Brad Cangro Named to Lawdragon’s List of 500 Leading Global IP Lawyers 2026

2026-06-23T21:05:26Z

The PV Law team congratulates Brad Cangro, PV Law Managing Partner and Senior Trial Lawyer, for this prestigious recognition which honors the top global IP lawyers protecting innovation, defending brand integrity and leveraging the assets at the heart of their clients' businesses.

Verdict Form Must Seek Infringement Findings for Each Patent Separately

2026-06-16T15:38:25Z

The Federal Circuit recently reaffirmed the requirement that, where multiple patents are asserted, the jury must be asked to answer the infringement question on a patent-by-patent basis. In Ollnova Techs. Ltd. v. ecobee Techs. ULC, Appeal Nos. 2025-1045, -1046 (Fed. Cir. June 4, 2026), the court found fault with the district court’s verdict form, which simply asked only one question regarding infringement, specifically whether the defendant had infringed “any” of the asserted claims of the asserted patents.

Procedural Background

The Ollnova appeal arrived at the Federal Circuit after a trial in the United States District Court for the Eastern District of Texas. In relevant part, both sides had proposed that the jury verdict include at least one separate question for each asserted patent. The plaintiff proposed only one question per patent, and the defendant proposed a separate question for each asserted claim. The district court nevertheless adopted a verdict form with only a single question: “Did Ollnova, the Plaintiff, prove by a preponderance of the evidence that ecobee, the Defendant, infringed ANY of the Asserted Claims of the Asserted Patents?” The jury returned a verdict that, in relevant part, answered this question in the affirmative.

The Federal Circuit Decision

The Federal Circuit found that the jury verdict was “materially identical” to that in a case from last year—Optis Cellular Tech., LLC v. Apple Inc., 139 F.4th 1363 (Fed. Cir. 2025)—in which the court articulated the requirement for infringement determinations to be indicated patent-by-patent. In Optis, the objectionable verdict form asked, “Did [plaintiff] prove by a preponderance of the evidence that [defendant] infringed ANY of the [a]sserted [c]laims?” The high degree of similarity between the verdict form in Optis and that at issue on appeal was essentially the end of the matter. The Federal Circuit had already established in Optis that an infringement question covering multiple patents violates a defendant’s Seventh Amendment right to a unanimous verdict. Specifically, it allows a jury to answer “Yes” even though not all jurors believe that the defendant infringed any one patent. For example, some jurors may believe that one patent was infringed but not others, while the remaining jurors may believe that only another patent was infringed. The Federal Circuit rejected the plaintiff’s argument that the jury verdict became acceptable when viewed alongside the jury instructions. Those instructions, the plaintiff argued, made clear the requirement of unanimity. The Federal Circuit noted that the same argument was raised in Optis, and responded that “the jury could have followed those instructions yet understood that it only needed to be unanimous as to the question presented on the verdict form—whether defendant infringed ‘ANY’ of the asserted claims—not whether defendant infringed the same patent.” Accordingly, just as it had done in Optis, the Federal Circuit determined that the district court abused its discretion in adopting the single-infringement-question verdict form. The court vacated the infringement judgment and remanded. The Federal Circuit did not—because it was not asked to—resolve whether a proper verdict form needs to break out each patent claim separately. Instead, it only raised the issue in a footnote, stating that “[w]e need not reach the issue . . . because ecobee [defendant] argues only that the verdict form should have broken up the infringement question on a patent-by-patent basis.” This is consistent with the Optis case, in which the Federal Circuit volunteered that the parties had not presented it with that issue. Accordingly, it remains open whether a verdict form is sufficient if it asks only one infringement question per patent when multiple claims per patent are asserted.

Conclusion

Under Ollnova, accused infringers should ensure that they propose verdict forms that seek infringement determinations on at least a patent-by-patent basis (and potentially a claim-by-claim basis). A verdict form with a single infringement question is not likely to pass scrutiny absent waiver.

Technology Spotlight: Ford’s Lithium and Manganese Rich Positive Active Material

2026-06-12T15:05:40Z

On April 7, 2026, Ford Global Technologies, LLC obtained U.S. Patent No. 12,597,602 titled “Lithium and Manganese Rich Positive Active Material Compositions” (“the ’602 patent”). The patent describes positive electrode active materials for lithium-ion batteries that provide increased capability, improved cell performance, and greater volumetric energy density. The ’602 patent, 1:21-28. Specifically, the ’602 patent describes a positive electrode active material represented by the formula Li_1.10Mn_0.52Ni_0.38-xM_xO₂ (“Formula 1”). In Formula 1, M is cobalt (Co) or chromium (Cr), the average oxidation state of the nickel ion is between 2 and 2.15, and the substituent amount x is between 0 and 0.06. The ’602 patent, 1:30-38. The ’602 patent also describes an exemplary battery cell 20 that incorporates the positive electrode material of Formula 1: The ’602 patent, Fig. 3 (annotated). As shown above, battery cell 20 is immersed in electrolyte 30 and enclosed in battery cell case 32. Battery cell 20 includes positive electrode 10, negative electrode 22, and separator 24. Negative electrode 22 includes negative electrode current collector 26 and negative active material layer 28. The ’602 patent, 6:16-30. Positive electrode 10 includes positive electrode active material layer 12 and positive electrode current collector 14. The positive electrode active material layer 12 uses the active material represented by Formula 1. The ’602 patent, 5:2-15. According to the ’602 patent, the positive electrode material of Formula 1 shows higher capacity, higher average voltage, higher rate capacity, and lower voltage decay than the commercial sample, while also demonstrating good cycle performance. The ’602 patent, 9:18-34. The ’602 patent, 9:35-49 (Table 3). The ’602 patent, 9:50-67 (Table 4). Claim 1 of the ’602 patent recites:

A positive electrode active material comprising a compound represented by formula 1: Li₁.₁₀Mn₀.₅₂Ni_0.38-xM_xO₂ wherein: M is Co or Cr; 2 < average oxidation state of Ni ion < 2.15; and 0 < x < 0.06.

The ‘602 patent, 10:29-39.

Ghee Lee Named Again to Lawdragon’s List of 500 Next-Generation Lawyers

2026-06-09T19:44:15Z

Ghee Lee, PV Law Attorney, Named Again to Lawdragon’s List of 500 Next-Generation Lawyers 2026. "We congratulate Ghee and the entire Lawdragon Next Generation class for this prestigious recognition which honors the brightest future leaders in law.” - Brad Cangro, Managing Partner

PV Law Named by Chambers AND PARTNERS USA as a Top Ranked PTAB Firm

2026-06-09T19:44:49Z

PV Law LLP named by Chambers AND PARTNERS USA again as a top ranked PTAB firm in it’s PTAB ranking guide 2026. This is a tremendous accomplishment and recognizes the value and success PV Law continually brings to clients before the PTAB. Congratulations to the entire PV Law Team.