MENTOR GRAPHICS CORPORATION, AN OREGON CORPORATION, Plaintiff-Cross-Appellant
EVE-USA, INC., A DELAWARE CORPORATION, SYNOPSYS EMULATION AND VERIFICATION S.A.S., FORMED UNDER THE LAWS OF FRANCE, SYNOPSYS, INC., A DELAWARE CORPORATION, Defendants-Appellants
from the United States District Court for the District of
Oregon in Nos. 3:10-cv-00954-MO, 3:12-cv-01500-MO,
3:13-cv-00579-MO, Judge Michael W. Mosman.
PETITION FOR REHEARING EN BANC
Miller, O'Melveny & Myers LLP, San Francisco, CA,
filed a response to the petition for
plaintiff-cross-appellant. Also represented by Anne E.
Huefsmith, LUANN LORAINE SIMMONS.
JOSHUA Rosenkranz, Orrick, Herrington & Sutcliffe LLP,
New York, NY, filed a petition for rehearing en banc for
defendants-appellants. Also represented by Daniel A. Rubens,
Andrew D. Silverman; Robert M. Loeb, Eric Shumsky,
Washington, DC; Vicki L. Feeman, Travis Jensen, Scott T.
Lonardo, Menlo Park, CA; William H. Wright, Los Angeles, CA;
Indra Neel Chatterjee, Goodwin Procter LLP, Menlo Park, CA.
E. Bensen, Garden City, NY, as amicus curiae.
Phillip R. Malone, Stanford Law School, Stanford, CA, for
amici curiae Public Knowledge and Jeremy W. Bock, et al. Also
represented by JEFFREY THEODORE Pearlman.
Prost, Chief Judge, NEWMAN, LOURIE, Dyk, Moore, O'Malley,
Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit
EVE-USA, Inc., Synopsys Emulation and Verification S.A.S.,
and Synopsys, Inc. filed a petition for rehearing en banc. A
response to the petition was invited by the court and filed
by the cross-appellant Mentor Graphics Corporation. Two
motions for leave to file amici curiae briefs were also filed
and granted by the court.
petition, response, and briefs of amici curiae were referred
to the panel that heard the appeal, and thereafter were
referred to the circuit judges who are in regular active
service. A poll was requested, taken, and failed.
consideration thereof, It Is Ordered That:
petition for panel rehearing is denied.
petition for rehearing en banc is denied. The mandate of the
court will be issued on September 8, 2017.
Circuit Judge, with whom NEWMAN, MOORE, O'MALLEY, Reyna,
and WALLACH, Circuit Judges, join, concurring in the denial
of rehearing en banc.
the panel's decision is consistent with longstanding
patent law damages principles,  I concur in the denial of
rehearing en banc.
consistently held that where an infringing product is a
multi-component product with patented and unpatented
components, apportionment is required. See VirnetX, Inc.
v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir.
2014) ("No matter what the form of the royalty, a
patentee must take care to seek only those damages
attributable to the infringing features.");
Commonwealth Sci. & Indus. Research Org. v. Cisco
Sys., Inc., 809 F.3d 1295, 1301 (Fed. Cir. 2015)
("[D]amages awarded for patent infringement 'must
reflect the value attributable to the infringing features of
the product, and no more.'") (quoting Ericsson,
Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed.
Cir. 2014)); Ericsson, 773 F.3d at 1226
("[Apportionment is required even for non-royalty forms
of damages."). The apportionment requirement dates back
to Garretson v. Clark, 111 U.S. 120 (1884), where
the Supreme Court held that "[t]he patentee . . . must
in every case give evidence tending to separate or apportion
the defendant's profits and the patentee's damages
between the patented feature and the unpatented
features." Garretson, 111 U.S. at 121.
however, also holds that damages for patent infringement may
be based on the value of the entire infringing product if the
patentee can show that "the entire value of the whole
machine ... is properly and legally attributable to the
patented feature." Id. In other words,
"[i]f it can be shown that the patented feature drives
the demand for an entire multi-component product, a patentee
may be awarded damages as a percentage of revenues or profits
attributable to the entire product." LaserDynamics,
Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir.
case, on the question of lost profits, the jury was
instructed to consider the Panduit factors,
including "demand for the patented product" (factor
one) and an "absence of acceptable noninfringing
substitutes" (factor two). See Panduit Corp. v.
Stahlin Bros. Fibre Works, Inc.,575 F.2d 1152, 1156
(6th Cir. 1978). As the panel recognized, these two factors
together "consider demand for the patented product as
a whole" and "consider demand for particular
limitations or features of the claimed invention."
Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d
1275, 1285 (Fed. Cir. 2017) (citing DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc.,567 F.3d 1314, 1330-31
(Fed. Cir. 2009)). As the panel noted, the jury found that
"Intel would not have purchased the [infringing]
Synopsys emulator system without the two patented features
and that there were no other alternatives available."
Id. at 1287. This undisputed fact finding
established that Mentor proved that the patented features
were what imbued the combined features that made up the
emulator with marketable value. Under these circumstances,
further apportionment is unnecessary. See Ericsson,
773 F.3d at 1227 ("[W]here the entire value of a machine
as a marketable article is 'properly and legally
attributable to the patented feature, ' the damages owed
to the patentee may be calculated by reference to [the entire
value of ...