United States Court of Appeals 

for the Federal Circuit ______________________ 

SUNOCO PARTNERS MARKETING & TERMINALS 

L.P.,

Plaintiff-Cross-Appellant

v.

U.S. VENTURE, INC., U.S. OIL CO., INC.,

Defendants-Appellants

______________________ 

2020-1640, 2020-1641

______________________ 

Appeals from the United States District Court for the 

Northern District of Illinois in No. 1:15-cv-08178, Judge 

Rebecca R. Pallmeyer.

______________________ 

Decided: April 29, 2022

______________________ 

JOHN R. KEVILLE, Sheppard, Mullin, Richter & Hampton LLP, Houston, TX, argued for plaintiff-cross-appellant. 

Also represented by MICHAEL C. KRILL, MICHELLE 

REPLOGLE; RICHARD L. STANLEY, Law Office of Richard L. 

Stanley, Houston, TX. 

 WILLIAM M. JAY, Goodwin Procter LLP, Washington, 

DC, argued for defendants-appellants. Also represented by 

GERARD JUSTIN CEDRONE, BRIAN DRUMMOND, SRIKANTH K.

REDDY, Boston, MA; JEFFREY COSTAKOS, KIMBERLY KRISTIN 

DODD, Foley & Lardner LLP, Milwaukee, WI.

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2 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

 ______________________ 

Before PROST, REYNA, and STOLL, Circuit Judges. 

PROST, Circuit Judge. 

U.S. Venture, Inc. and U.S. Oil Co., Inc. (collectively, 

“Venture”) appeal the judgment of the Northern District of 

Illinois that Venture infringed patents owned by Sunoco 

Partners Marketing & Terminals L.P. (“Sunoco”). Sunoco 

cross-appeals. As to Venture’s appeal, we first reverse the 

district court’s determination that the experimental-use 

doctrine insulates a subset of asserted patent claims from 

the on-sale bar, vacate the infringement judgment as to 

those claims, and remand for the district court to analyze 

the second prong of the on-sale bar. Second, we vacate the 

infringement judgment with respect to patent claims that

we affirmed are invalid in a separate appeal. Third, we 

adopt the district court’s claim constructions and affirm its 

infringement judgment regarding two patent claims. 

Fourth, we vacate the district court’s decision to treble the 

damages award, remanding for further proceedings. On

the cross-appeal, we affirm the district court’s decisions to 

deny lost-profits damages and to award a $2 million reasonable royalty. 

BACKGROUND

I. Butane Blending

Gasoline producers blend butane into gasoline before 

selling it. They do that for at least two reasons: (1) butane

makes gasoline more volatile, helping vehicles start more 

readily in colder temperatures, and (2) butane is cheaper 

than gasoline, so adding butane increases profitability. Efforts to achieve these benefits, however, are complicated by 

the need to comply with environmental regulations. Because butane contributes to air pollution in warmer temperatures, the U.S. Environmental Protection Agency 

(“EPA”) regulates the volatility of gasoline. Sunoco’s patented technology seeks to maximize butane content while 

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SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 3

complying with these regulations, which vary depending on 

season and location. 

Gasoline distribution is a multi-stage process. At a refinery, crude oil is refined into gasoline. After that, it goes 

through a pipeline to a storage facility called a tank farm, 

or terminal. There, it is dispensed from a “rack” into 

trucks, which deliver it to gas stations. While butane 

blending can be done anywhere along the line, doing it at 

the last possible point—the tank farm—lets producers 

maximize butane content based on the time of year and the 

gasoline’s destination. If, by contrast, producers blend “at 

refineries and in pipelines that serve several regions with 

varying [volatility] limits,” they “can add only the amount 

of butane permissible in the region with the strictest butane regulations.” Sunoco Partners Mktg. & Terminals 

L.P. v. U.S. Venture, Inc., No. 15 C 8178, 2017 WL 1550188, 

at *2 (N.D. Ill. Apr. 28, 2017) (“Claim Construction Op.”). 

Sunoco’s patents, accordingly, “describe a system and 

method for blending butane with the gasoline at a point 

close to the end of the distribution process: immediately before being distributed to the tanker trucks that take gasoline to consumer gas stations.” Id. That way, producers 

can “blend the maximum allowable butane into each batch 

based on where the truck is going and what month it is.” 

Id. at *1. 

II. Procedural History

Sunoco sued Venture, alleging that its operation of butane-blending systems infringed claims of U.S. Patent 

Nos. 7,032,629 (“the ’629 patent”), 6,679,302 (“the ’302 patent”), 9,494,948 (“the ’948 patent”), and 9,606,548 (“the 

’548 patent”). Venture counterclaimed that the asserted

patents are not infringed, are invalid, and are unenforceable. After construing the claims, the district court ruled on 

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4 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

various summary judgment motions1 and held a bench 

trial—ultimately awarding Sunoco $2 million in damages, 

which it trebled to $6 million. Sunoco P’ship Mktg. & Terminals L.P. v. U.S. Venture, Inc., 436 F. Supp. 3d 1099, 

1107 (N.D. Ill. 2020) (“Post-Trial Op.”). Venture appeals. 

Sunoco cross-appeals. We have jurisdiction under 

28 U.S.C. § 1295(a)(1). 

DISCUSSION

On appeal, Venture challenges the district court’s 

(I) rejection of its on-sale-bar defense, (II) determination 

that it infringed two patents we have since held invalid, 

(III) construction of two claim terms, and (IV) decision to 

enhance damages. On cross-appeal, Sunoco challenges the 

district court’s decision not to grant lost-profits damages

and its reasonable-royalty award. We address each issue 

in turn. 

I. On-Sale Bar

We first address Venture’s on-sale-bar defense. If successful, this defense would render invalid claim 2 of the 

’629 patent and claims 2, 3, and 16 of the ’302 patent under 

the principle that “no person is entitled to patent an ‘invention’ that has been ‘on sale’ more than one year before filing 

a patent application” (i.e., before the critical date). Pfaff v. 

Wells Elecs., Inc., 525 U.S. 55, 57 (1998) (quoting 35 U.S.C. 

§ 102(b) (2006)2). To prevail, however, Venture needed to

show that, before the critical date, Sunoco’s patented invention was both (1) “the subject of a commercial offer for 

1 Sunoco Partners Mktg. & Terminals L.P. v. U.S. 

Venture, Inc., 339 F. Supp. 3d 803, 822 (N.D. Ill. 2018)

(“Summary Judgment Op.”); Sunoco Partners Mktg. & Terminals L.P. v. U.S. Venture, Inc., No. 15 C 8178, 2017 WL 

4283946, at *10 (N.D. Ill. Sept. 27, 2017). 2 This version of § 102 also applies here. Summary 

Judgment Op., 339 F. Supp. 3d at 816. 

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SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 5

sale” and (2) “ready for patenting.” Helsinn Healthcare 

S.A. v. Teva Pharms. USA, Inc., 139 S. Ct. 628, 630 (2019)

(quoting Pfaff, 525 U.S. at 67). And Venture had to “prove 

the facts underlying both prongs . . . by clear and convincing evidence.” Allen Eng’g Corp. v. Bartell Indus., Inc., 

299 F.3d 1336, 1352 (Fed. Cir. 2002). 

A patent owner like Sunoco can negate an on-sale bar 

by demonstrating that the sale occurred “primarily for purposes of experimentation.” Id. This experimental-use doctrine draws a “distinction between inventions put to 

experimental use and products sold commercially,” in the 

interest of protecting both “the public’s right to retain 

knowledge already in the public domain and the inventor’s 

right to control whether and when he may patent his invention.” Pfaff, 525 U.S. at 64. As the Supreme Court 

explained long ago, inventors may delay patenting to engage in “bona fide effort[s] to bring his invention to perfection, or to ascertain whether it will answer the purpose 

intended.” City of Elizabeth v. Am. Nicholson Pavement 

Co., 97 U.S. 126, 137 (1877). At the same time, “[a]ny attempt to use [the invention] for a profit[] and not by way of 

experiment” before the critical date will “deprive the inventor of his right to a patent.” Id. Otherwise, patent owners 

could “acquire[] an undue advantage over the public” by 

“preserv[ing] the[ir] monopoly . . . for a longer period than 

is allowed.” Id. 

From this framework, it follows that “[i]f there is adequate proof that a device was sold primarily for experimentation, the first prong of Pfaff would not be met and it 

would be unnecessary to consider” Pfaff’s second prong. Allen, 299 F.3d at 1353. That is how the district court proceeded here. It denied summary judgment of invalidity 

because, in its view, Sunoco “demonstrated the requisite 

experimental intent.” Summary Judgment Op., 

339 F. Supp. 3d at 817. And it did so “on [that] basis alone, 

even though the parties also dispute[d] whether the invention was ready for patenting.” Id. After trial, the district 

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6 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

court “adhere[d] to its previous analysis,” again rejecting

the defense. Post-Trial Op., 436 F. Supp. 3d at 1120. 

“Application of the on-sale bar . . . is ultimately a question of law that we review de novo.” Helsinn Healthcare 

S.A. v. Teva Pharms. USA, Inc., 855 F.3d 1356, 1363 

(Fed. Cir. 2017), aff’d, 139 S. Ct. 628 (2019). “The factual 

findings underlying the district court’s conclusion are reviewed for clear error.” Id. For the reasons below, we 

(A) reverse the district court’s determination that Venture’s on-sale-bar defense is negated by the experimentaluse doctrine and (B) remand for the district court to evaluate the ready-for-patenting prong of the on-sale bar. 

A. Commercial Sale

Two days before February 9, 2000, the critical date, the 

inventors’ company, MCE Blending (“MCE”), offered to sell 

an automated butane-blending system to a company called 

Equilon Enterprise LLC (“Equilon”) and install it at Equilon’s terminal in Detroit. Summary Judgment Op., 

339 F. Supp. 3d at 816. MCE offered this system “in consideration for” Equilon’s commitment to purchase at least 

500,000 barrels of butane from MCE over roughly five 

years. J.A. 9049. The district court decided that this transaction occurred primarily for experimental, rather than 

commercial, purposes. Post-Trial Op., 436 F. Supp. 3d 

at 1120. We disagree. 

Whether the Equilon transaction was for primarily experimental or commercial purposes “is a question of law to 

be analyzed based on the totality of the surrounding circumstances.” Petrolite Corp. v. Baker Hughes Inc., 96 F.3d 

1423, 1426 (Fed. Cir. 1996). We assess the Equilon sale 

“under the law of contracts as generally understood,” focusing on “those activities that would be understood to be commercial sales and offers for sale ‘in the commercial 

community.’” Meds. Co. v. Hospira, Inc., 827 F.3d 1363, 

1373 (Fed. Cir. 2016) (en banc) (quoting Grp. One, Ltd. v. 

Hallmark Cards, Inc., 254 F.3d 1041, 1046 (Fed. Cir. 

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SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 7

2001)). Accordingly, we begin by analyzing the Equilon 

agreement. The agreement begins by expressly describing

the transaction as a sale, without reference to any experimental purpose. And as “consideration,” it identifies “the 

purchase” of butane: 

MCE agrees to sell to Equilon, and Equilon agrees 

to purchase, the Equipment (as hereinafter defined) along with a license to use certain technology 

and software owned by MCE pertaining to the computerized blending of Butane and gasoline stocks, 

in consideration for the purchase and sale of Butane

as set forth herein.

J.A. 9049 (emphases added). As the agreement later specifies, Equilon “agree[d] to purchase a minimum of 500,000 

barrels of Butane.” J.A. 9060. 

The recitals section of the agreement reinforces the 

sale’s commercial character. It states that MCE already 

“developed” the relevant technology and equipment, that 

Equilon wanted to purchase it, and that MCE was willing 

to sell it, install it, and supply butane for it:

Whereas MCE has developed certain technology

and Equipment for the blending of butane and similar components into gasolines in refined product 

terminals utilizing butane to maximize the Reid 

Vapor Pressure of the gasolines;

Whereas Equilon desires to utilize such blending 

technology and have installed and purchase such 

Equipment for blending butane in the refined petroleum products terminal facility owned and operated by Equilon in Detroit, Michigan (the 

“Terminal”); and 

Whereas MCE is willing to install or cause to have 

installed said blending Equipment and to supply 

the butane to Equilon required for such blending at 

the Terminal. 

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8 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

J.A. 9049 (emphases added). 

This agreement in some respects resembles a contract 

we analyzed in Helsinn, in which a distributor “agreed to 

purchase exclusively from Helsinn, and Helsinn agreed to 

supply [its] requirements” of certain drugs. 855 F.3d 

at 1361. Similarly here, the Equilon agreement bears “all 

the hallmarks of a commercial contract for sale.” Id.

at 1364. As in Helsinn, it represents “a ‘contract between 

parties to give and to pass rights of property for consideration which the buyer pays or promises to pay the seller for 

the thing bought or sold.’” Id. (quoting Trading Techs. Int’l, 

Inc. v. eSpeed, Inc., 595 F.3d 1340, 1361 (Fed. Cir. 2010)). 

Specifically, the Equilon agreement obligated Equilon “to

purchase a minimum of 500,000 barrels of butane from

MCE at set prices over roughly five years” in exchange for

MCE providing and installing the butane-blending system. 

Summary Judgment Op., 339 F. Supp. 3d at 816. 

Additionally, as in Helsinn, there is here “no suggestion” that the agreement “did not involve transfer of title.” 

855 F.3d at 1364. Rather “it expressly contemplate[s] it.” 

Id. Ownership of MCE’s system would pass to Equilon via 

a bill of sale attached to the agreement:

The ownership and title to the Equipment shall be 

conveyed to Equilon by MCE upon completion of the 

Equipment installation and training, as verified by 

written confirmation to Equilon, and subject to the 

provisions below. At such time, MCE shall execute 

a bill of sale in the form attach[ed] hereto as Schedule 1.04 to effectuate the conveyance of ownership of 

the Equipment to Equilon. 

J.A. 9051 (emphases added); see also J.A. 9076 (bill of sale). 

The district court saw things differently. In its view,

“the contract did not require Equilon to pay MCE anything 

in exchange for the system in the normal course of events.” 

Summary Judgment Op., 339 F. Supp. 3d at 818; see also

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Cross-Appellant’s Br. 26 (asserting that “Equilon paid 

nothing for” the system). But while it is true that the 

agreement allocated the cost of installation to MCE (up to 

$450,000), Summary Judgment Op., 339 F. Supp. 3d 

at 818, that does not mean Equilon “exchanged no value for 

the equipment it received,” Appellants’ Br. 34. Rather, 

Equilon purchased MCE’s equipment by committing to buy 

MCE’s butane. That’s a sale. See Netscape Commc’ns 

Corp. v. Konrad, 295 F.3d 1315, 1324–25 (Fed. Cir. 2002)

(concluding that an offer to make a “remote database object 

. . . in exchange for four months full time employment or no 

more than $48,000” was a “commercial offer for sale”). 

The district court discounted Equilon’s butane-buying 

commitment because “butane is not the invention.” Summary Judgment Op., 339 F. Supp. 3d. at 820. According to 

the district court, the Equilon agreement had “two distinct 

sections,” one for “the installation of the butane blending 

system” and another that was a “butane supply agreement.” Id. at 821. But the provisions quoted above intertwine the sale of the equipment with the butane-supply 

commitment. Indeed, without Equilon’s agreement to buy 

butane in exchange for the equipment, it could hardly be 

called a “sale”—but that is how the agreement describes 

itself. Moreover, other provisions expressly interrelate the 

cost of the blending system with Equilon’s purchase of butane. Under one scenario, if there is a “change in applicable laws and regulations” resulting in “the inability to 

lawfully blend Butane into gasoline at the Terminal using 

the Equipment” but Equilon “has not purchased” a “minimum [of] 450,000 barrels” of butane, the agreement provides Equilon the option to “(1) purchase the balance of 

450,000 barrels of Butane minus the Butane theretofore 

purchased . . . , or (2) pay a termination fee (representing 

the balance of the purchase price of the Equipment) to be 

invoiced by MCE, based on a percentage of the contract Butane quantities not lifted.” J.A. 9065–66. 

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10 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

Sunoco’s principal hook for asserting a primarily experimental purpose is a section of the agreement entitled 

“Equipment Testing.” J.A. 9056–57. That section describes two sets of testing: pre-installation testing and 

post-installation testing. But neither persuades us that 

this sale was primarily experimental, rather than commercial. First, the contract describes the pre-installation testing as follows: 

Prior to commencing installation of the Equipment, 

MCE shall conduct such testing of the Equipment 

as is necessary to determine whether the Equipment satisfies minimum operating standards established by MCE. In the event that MCE 

determines, as a result of such testing, for whatever reason, that the Equipment does not satisfy 

minimum operating standards established by 

MCE, then MCE shall have the right to unilaterally terminate this Agreement without any further 

obligation whatsoever, except that MCE shall be 

obligated to remove at its cost and expense any 

Equipment theretofore installed at the Terminal. 

J.A. 9056. This provision does not necessarily evidence intent to experiment with the system’s design. Rather, it

states MCE’s obligation to ensure that “the Equipment satisfies minimum operating standards,” J.A. 9056—which indicates merely that the sale was conditioned upon testing 

to ensure satisfactory operation. Accordingly, this provision standing alone is inconclusive and insufficient to show 

a primarily experimental purpose. 

The testing that actually happened pursuant to this 

provision, however, bears out that this pre-installation 

testing does not indicate a primarily experimental purpose. 

While Sunoco argues that MCE wanted “to experiment at 

an actual tank farm and determine whether their idea was 

capable of performing its intended purpose in its intended 

environment,” Summary Judgment Op., 339 F. Supp. 3d 

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at 817, and that it therefore entered the agreement “for access to Equilon’s facility to test under actual conditions,” 

Cross-Appellant’s Br. 28, the pre-installation testing that 

occurred did not need to be done at Equilon. Oral Arg. 

at 31:02–10, No. 20-1640, https://oralarguments.cafc.uscourts.gov/default.aspx?fl=20-1640_070920

21.mp3 (Sunoco’s Counsel: “[W]hen you’re talking about 

software and whether two pieces of equipment will communicate, there’s no reason that has to be done at Equilon.”). Indeed, the testing was not done at Equilon. Rather, 

the only pre-installation testing that occurred (which was 

done to determine whether the system could communicate 

with a component called a Grabner analyzer) was done by 

a third party, Wheatland Systems, in Kansas. Summary 

Judgment Op., 339 F. Supp. 3d at 819. On top of that, it 

could have been done before or without the agreement. 

J.A. 6447–48 (Q: “[Y]ou could have done it at any time prior 

to you entering into the deal with Equilon in January of 

2000, right?” A: “Right.”). The need to perform this testing, 

therefore, cannot have been the primary purpose for the 

Equilon sale. 

And that is why Sunoco’s analogy to the Supreme 

Court’s seminal City of Elizabeth case falls flat. While “the 

nature of a street pavement,” the invention in that case, “is 

such that it cannot be experimented upon satisfactorily except on a highway, which is always public,” City of Elizabeth, 97 U.S. at 134, Sunoco does not dispute that MCE’s

pre-installation testing was conducted at Wheatland, and 

could have been performed before offering to sell the system, Oral Arg. at 30:28–50 (Q: “Why was that testing necessary to a contract for sale? . . . Why couldn’t it be done 

before there was any kind of offer for sale? A: “There’s no 

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12 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

reason, I guess, that it couldn’t have been—it was just part 

of the experimentation.”).3 

The district court recognized that the pre-installation 

testing did not take place at Equilon, but it reasoned nonetheless that this testing “reflect[ed] the inventors’ need to 

experiment with their invention to determine whether it 

would work as intended as of the moment they offered the 

system to Equilon.” Summary Judgment Op., 339 F. Supp. 

3d at 819. If the district court was reasoning that this testing sufficiently showed a primarily experimental purpose, 

we disagree, for the reasons articulated above. If the district court was instead considering “whether the invention

was under development, subject to testing, or otherwise 

still in its experimental stage at the time of the asserted

sale,” that is not the question Pfaff prong 1 asks. Allen, 

299 F.3d at 1354. “Instead,” it is “whether the primary

purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Id. 

Although we have “recogniz[ed] an overlap of the experimental use negation” and the prong 2 “ready for patenting 

standard,” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 

1374, 1379–80 (Fed. Cir. 2005) (citing EZ Dock, Inc. v. 

Schafer Sys., Inc., 276 F.3d 1347, 1352 (Fed. Cir. 2002)), 

here we think the district court’s “still under development” 

observation regarding the Wheatland testing is better considered at prong 2. 

3 For similar reasons, this testing is distinguishable 

from Honeywell International Inc. v. Universal Avionics 

Systems Corp., in which “Honeywell entered into . . . negotiations to facilitate its programs to test” its terrain warning system with “human pilots in a genuine cockpit 

setting.” 488 F.3d 982, 996 (Fed. Cir. 2007). 

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The post-installation testing provision fares no better 

than the pre-installation testing provision. It states: 

Upon completion of installation of the Equipment, 

MCE shall provide Equilon with written notice of 

such completion. Within three (3) days of said notice, Equilon shall (i) make all necessary arrangements within the Terminal to enable MCE to test 

the Equipment to determine whether the Equipment is properly blending butane, and (ii) provide 

notification to MCE that said arrangements have 

been made. MCE shall test the Equipment according to parameters set forth in Schedule 1.10. MCE 

shall proceed with testing in a timely manner and 

have a period not to exceed ninety (90) days from 

the date of said notification by Equilon to complete 

its testing. 

J.A. 9057. These tests are not experiments, but are acceptance tests to confirm that the equipment “is properly 

blending butane”—that is, that it is working as promised. 

E.g., J.A. 9051 (“MCE represents and warrants that upon 

transfer of title to the Equipment, the Equipment . . . will 

at such time be fit for the purpose of blending Butane into 

gasoline products in compliance with all applicable laws.”). 

That is borne out by Schedule 1.10, the cross-referenced portion of the agreement that contains the testing 

“parameters.” J.A. 9057. Starting from the top, Schedule 1.10 is entitled “System Site Acceptance Test (‘SAT’) – 

Equipment Testing Parameters.” J.A. 9078 (capitalization 

normalized). It then states: “MCE shall test the Equipment according to the following parameters and confirm 

the Equipment is performing in accordance with MCE’s 

representations, warranties, and guarantees.” J.A. 9078

(emphases added). Next, it lists various parameters for 

MCE to “[v]erify” (e.g., “[v]erify communication cables are 

properly installed and functioning”), subdivided by headings like “Installation of Hardware,” “Electrical Wiring,” 

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14 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

and “Hardware Functionality.” J.A. 9078. At the end, 

Schedule 1.10 says: “Once verified, [the] system must run 

twelve consecutive loads with an accuracy within +/- 2% of 

the desired [Reid Vapor Pressure] with no system-related 

alarm conditions.” J.A. 9078. As Venture points out, MCE 

and Sunoco used the same set of tests in later commercial 

contracts.4 Compare J.A. 9057, with J.A. 8392, and

J.A. 11396. Simply put, these are “acceptance tests” to 

“[v]erify” and “confirm” that the installed system functioned as MCE warranted. J.A. 9057. They are not “experiments” in the way the experimental-use doctrine 

contemplates. Thus, neither of the agreement’s two “equipment testing” provisions undermines our conclusion that 

the Equilon agreement, on its face, memorializes a commercial, bargained-for sale. 

Although Sunoco also relies on the inventors’ testimony 

that their intent was experimental, the district court 

properly recognized that “the inventors’ subjective intent is 

of minimal importance,” pivoting to “the objective evidence” of the contract. Summary Judgment Op., 

339 F. Supp. 3d at 818 (citing Petrolite, 96 F.3d at 1427). 

We, too, think this testimony carries little weight. See

Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. 

of Gen. Elec. Co., 417 F.3d 1203, 1212 (Fed. Cir. 2005)

(“Certain things are settled. Significantly, an inventor’s 

subjective intent to experiment cannot establish that his 

activities are, in fact, experimental.”). Rather, we “have 

generally looked to objective evidence to show that a precritical date sale was primarily for experimentation.”5 Id. 

4 This point was not among the “key differences” the

district court noted between the Equilon agreement and 

these later agreements. See Post-Trial Op., 436 F. Supp. 

3d at 1119–20. 5 For example, we previously have set forth a list of 

objective factors relevant to deciding whether a public use 

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Here, particularly in view of the agreement’s provisions 

discussed above, the record contains little to no objective 

evidence indicating such a purpose. 

Thwarting “an inventor’s attempt to commercialize his

invention beyond the statutory term” is the “overriding 

concern of the on-sale bar.” Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008). 

Here, the testing described in the Equilon agreement occurred to effectuate the sale, rather than the sale occurring

to occasion the testing. Therefore, we conclude that the 

Equilon agreement was an offer for sale made to commercially exploit the invention rather than primarily for experimental purposes. On that basis, we reverse the district 

court’s experimental-use determination and vacate its infringement determination with respect to ’629 patent 

claim 2 and ’302 patent claims 2, 3, and 16. 

or sale was “primarily experimental and not commercial”: 

(1) “the necessity for public testing,” (2) “the amount of control over the experiment retained by the inventor,” (3) “the 

nature of the invention,” (4) “the length of the test period,” 

(5) “whether payment was made,” (6) “whether there was a 

secrecy obligation,” (7) “whether records of the experiment 

were kept,” (8) “who conducted the experiment,” (9) “the 

degree of commercial exploitation during testing,” 

(10) “whether the invention reasonably requires evaluation 

under actual conditions of use,” (11) “whether testing was 

systematically performed,” (12) “whether the inventor continually monitored the invention during testing,” and 

(13) “the nature of the contacts made with potential customers.” Electromotive, 417 F.3d at 1213. “This list is not 

exhaustive, and all of the experimentation factors may not 

apply in a particular case.” Id. 

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16 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

B. Ready for Patenting

As prefaced above, our conclusion on experimental use 

does not necessarily render any asserted claims invalid. 

Venture still must show that the system sold anticipated 

or rendered obvious the claimed invention and that it was 

ready for patenting. Allen, 299 F.3d at 1352. The latter 

showing can be made in “at least two ways: by proof of reduction to practice before the critical date[,] or by proof that 

prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to 

practice the invention.” Pfaff, 525 U.S. at 67–68. Accordingly, we remand for the district court to assess these disputed questions in the first instance. 

II. Invalid Patent Claims

The district court also held that Venture infringed 

’948 patent claim 7 and ’548 patent claims 1–3 and 6. PostTrial Op., 436 F. Supp. 3d at 1121–24. But the Patent Trial 

and Appeal Board subsequently determined that those 

claims (indeed, all claims of those patents) were unpatentable—a decision we later affirmed. Sunoco Partners Mktg. 

& Terminals L.P. v. Magellan Midstream Partners L.P., 

853 F. App’x 668 (Fed. Cir. 2021). Given that Sunoco was 

“afforded the opportunity to exhaust [its] remedy of appeal,” Venture “should not have to continue defending a 

suit for infringement of an adjudged invalid patent.” See

XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 

(Fed. Cir. 2018) (cleaned up). Therefore, we vacate the infringement judgment as to those invalid claims. 

III. Claim Construction

We now consider Venture’s claim-construction challenges for ’302 patent claims 16–17 and ’629 patent 

claim 31. Although we vacate the infringement judgment 

with respect to ’302 patent claim 16 based on the on-salebar issue, Venture represents that ’302 patent claim 17 

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SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 17

and ’629 patent claim 31 are “unaffected” by that issue. 

Appellants’ Br. 43. We therefore turn to Venture’s arguments that the district court’s infringement determinations regarding those claims rest on claim-construction 

errors. “Claim terms are generally accorded their ordinary 

meaning—that is, their meaning to a skilled artisan at the 

time of the invention.” Intel Corp. v. Qualcomm Inc., 

21 F.4th 784, 791 (Fed. Cir. 2021). “This approach ‘provides an objective baseline’ for our inquiry.” Id. (quoting 

Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)

(en banc)). “We review claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic evidence for clear error.” SpeedTrack, Inc. v. 

Amazon.com, Inc., 998 F.3d 1373, 1378 (Fed. Cir. 2021) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 

331–32 (2015)). For the reasons set forth below, we affirm

with respect to both patent claims. 

A. ’302 Patent Claim 17

The disputed claim phrase of the ’302 patent appears in 

claim 14, on which claim 17 depends. We reproduce the 

relevant claim language below, including claims 12 and 13 

for context. Independent claim 12 recites:

12. A method for blending gasoline and butane at a 

tank farm comprising:

a) drawing a gasoline stream from a tank of gasoline;

b) drawing a butane stream from a tank of butane;

c) blending the butane and gasoline streams, at the 

tank farm, to form a blend; and

d) dispensing the blend to gasoline transport vehicles using a dispensing unit located at a rack.

Dependent claim 13, in turn, adds that this method further 

comprises the following two steps:

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18 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

a) determining a blend ratio of butane and gasoline 

in the butane and gasoline streams that will yield 

a desired vapor pressure, and

b) blending the gasoline and butane streams at the 

blend ratio.

Claim 14 then adds the disputed phrase (emphasis added): 

14. The method of claim 13, wherein the blend ratio is determined from a vapor pressure of the gasoline stream and a vapor pressure of the butane 

stream. 

Claims 16 and 17 add further limitations. 

During Markman proceedings, Venture argued that 

the phrase “a vapor pressure of the butane stream” means

“vapor pressure determined by a measurement taken from 

the butane stream.” Claim Construction Op., 2017 WL 

1550188, at *16. Sunoco, for its part, argued that the 

phrase did not need construction—proposing instead that 

it be construed according to its plain and ordinary meaning. Id. At the time, Venture focused on arguing that various “vapor pressure” measurements of the gasoline and 

butane streams must be taken at particular locations in the 

process. Id. at *16–17. The district court concluded that 

the phrase needed no construction and observed that “the 

parties do not appear to dispute the meaning of ‘a vapor 

pressure’ as a property of the stream.” Id. at *17. 

Later, at summary judgment, Venture argued that certain of the accused systems did not infringe claim 16 “because they used only an ‘assumed’ butane vapor pressure 

rather than ‘an actual butane vapor pressure.’” Summary 

Judgment Op., 339 F. Supp. 3d at 832. The district court 

disagreed, concluding that “[c]laim 16 does not expressly 

require the determination of such an ‘actual’ butane vapor 

pressure.” Id. The court added also that Venture’s construction “makes little sense in light of claim 15, which recites steps for determining butane vapor pressure by 

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SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 19

‘drawing a sample of butane from the butane stream’ and 

‘measuring the vapor pressure of the sample of butane.’” 

Id. (quoting ’302 patent claim 15). In the district court’s 

view, Venture’s construction “would make claim 15 redundant.” Id. 

After trial, the district court determined that Venture 

infringed the disputed claim phrase because it “used a 

value for butane vapor pressure—either determined from 

a sampling of the butane stream or through the use of an 

assumed value.” Post-Trial Op., 436 F. Supp. 3d at 1124. 

The court acknowledged Venture’s contention that the accused systems “did not infringe if they used only a butane 

vapor pressure value that was assumed or added to the programs by a human operator.” Id. at 1125. But it again 

reasoned that “[t]he plain language . . . does not require 

that butane vapor pressure be determined by sampling the 

butane stream, as Venture’s own invalidity expert interpreted the claim.” Id. (citing J.A. 7881). It also reiterated 

that “such an interpretation would render other claims superfluous.” Id. 

Now, on appeal, the parties once again disagree 

whether the phrase “vapor pressure of the butane stream” 

requires an actual vapor-pressure measurement, as Venture argued, or also covers an assumed vapor-pressure 

value, as Sunoco contends. We agree with the district 

court. The plain language of “a vapor pressure of the butane stream” does not expressly require an actual measurement. Thus, the plain claim language strongly suggests 

that there is no measurement requirement. This is bolstered by the construction of Venture’s invalidity expert. 

Indeed, as the district court observed, that is how Venture’s 

invalidity expert interpreted the phrase. J.A. 7881 (Q: “So 

in your invalidity analysis, determining a blend ratio from 

a vapor pressure of the gasoline stream and a vapor pressure of the butane stream can be done using known or assumed vapor pressure for the gasoline and the butane?” 

A: “Yes, that could be done.”). 

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20 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

Venture argues that actual measurement is required 

because of the following passage in the patent specification:

To calculate the blend ratio one must first have 

knowledge of the respective vapor pressures of the 

gasoline and butane streams. Therefore, the vapor 

pressures of the gasoline and butane streams are 

preferably measured in order to generate the data 

used in the blending ratio calculation. The measurement can be carried out in a number of ways. 

Because of the variability in[ ]vapor pressure of 

gasoline (due to the varying composition of gasoline 

delivered through pipelines) and butane (due to the 

difference in vapor pressure of n-butane and isobutane), the vapor pressure is preferably measured 

directly, by a unit specifically designed to make 

such measurements from samples of gasoline and 

butane.

’302 patent col. 7 ll. 19–30. But this passage says merely 

that the vapor pressures “are preferably measured,” expressing a preference but not a mandatory requirement for 

how to obtain “knowledge of the respective vapor pressures.” Id. at col. 7 ll. 19–20 (emphasis added). Ultimately, 

we see nothing in this specification passage (or anywhere 

else) that justifies limiting the claim to actual measurements. We therefore adopt the district court’s claim construction and affirm its judgment that Venture infringed 

’302 patent claim 17. 

B. ’629 Patent Claim 31

The parties also dispute the proper construction of

’629 patent claim 31, which recites (emphasis added): 

31. A computer-implemented method for blending 

a butane stream and a gasoline stream comprising 

the steps of:

receiving a first measurement indicating a vapor 

pressure of the gasoline stream;

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calculating a blend rate at which the butane stream 

can be blended with the gasoline stream; 

transmitting an instruction to a programmable 

logic controller for adjusting the butane stream to 

the calculated blend rate for blending with the gasoline stream and distributing at a rack; and

receiving a second measurement indicating a vapor 

pressure of the blended gasoline stream and butane stream. 

Specifically, the parties disagree on whether the received “first measurement” must be used in “calculating” 

the blend rate. Venture maintained that certain of its systems do not infringe because “they collected the vapor pressure of unblended gasoline only for recordkeeping 

purposes” rather than using the measurement in the step 

of calculating a blend rate. Post-Trial Op., 436 F. Supp. 3d 

at 1126. The district court, however, concluded that 

“claim 31 does not require that the measurement actually 

be used to calculate the ratio.” Id. And although Venture 

argued that interpreting the preamble as limiting, as the 

district court did, “requires the court to conclude that the 

measurement must be used as part of the blending,” the 

court observed that “merely using the value for recordkeeping purposes is consistent with” the limiting preamble. Id. 

We agree with the district court’s ultimate conclusion. 

First, the plain language of the “receiving” step does not 

state that the first measurement must be used in the blendrate calculation. Rather, it just requires “receiving a first 

measurement indicating a vapor pressure of the gasoline 

stream” without specifying the measurement’s ultimate 

purpose. Similarly, the “calculating” step does not specify 

that the calculation is based on the received first measurement. Simply put, the claim language does not tie these 

two steps together. Although it is true, as Venture notes, 

that the claim recites “no other means to calculate how 

much butane to add,” Appellants’ Br. 48, Sunoco correctly

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22 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

notes that this is a “comprising” claim and therefore may 

cover unclaimed elements, e.g., Invitrogen Corp. v. Biocrest 

Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). Additionally, even if the preamble is limiting, it does not require a 

different result because using the measurement for recordkeeping purposes can, in the context of this patent, be considered part of the method described in the preamble. As 

the district court noted, this follows from dependent 

claims 32 and 33, which incorporate the preamble and 

specify a recordkeeping step: “generating a report that includes the ‘first measurement.’” Post-Trial Op., 

436 F. Supp. 3d at 1126 (quoting ’629 patent claims 32

& 33). Accordingly, we adopt the district court’s claim construction and affirm its judgment that Venture infringed 

’629 patent claim 31. 

IV. Enhanced Damages

Venture also challenges the district court’s decision to 

enhance damages. District courts enjoy discretion to “increase the damages up to three times the amount found or 

assessed.” 35 U.S.C. § 284. As the Supreme Court explained, “[t]he sort of conduct warranting enhanced damages has been variously described . . . as willful, wanton, 

malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate.” Halo Elecs., 

Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103–04 (2016). Stated 

differently, “such damages are generally reserved for egregious cases of culpable behavior.” Id. at 104. 

We have set forth the following factors to guide the enhancement analysis: (1) whether the infringer deliberately 

copied the ideas or design of another, (2) whether the infringer investigated the scope of the patent and formed a 

good-faith belief that it was invalid or that it was not infringed, (3) the infringer’s behavior as a party to the litigation, (4) the defendant’s size and financial condition, (5) the 

closeness of the case, (6) the duration of defendant’s misconduct, (7) remedial action by the defendant, (8) the 

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SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 23

defendant’s motivation for harm, and (9) whether the defendant attempted to conceal its misconduct. Read Corp. 

v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992), abrogated 

in part on other grounds by Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). These factors are nonexclusive, and district courts are not required to discuss 

them. Presidio Components, Inc. v. Am. Tech. Ceramics 

Corp., 875 F.3d 1369, 1382–83 (Fed. Cir. 2017). Rather,

they must “consider the particular circumstances of the 

case.” Id. at 1383. We review “whether enhanced damages 

are appropriate” for abuse of discretion. Halo, 579 U.S. 

at 107. 

Although the district court noted that “several” of the

factors “weigh in Venture’s favor,” Post-Trial Op., 

436 F. Supp. 3d at 1131, it nonetheless enhanced damages—for four reasons. First, the court noted “it appears 

that Venture effectively copied the [patented] system.” Id. 

at 1132. Second, the court concluded that an “opinion letter provided to Venture by attorney John Manion [‘Manion 

Opinion’],” on which Venture relied, “does not show that 

Venture had a good-faith belief that it was not infringing 

the patents.” Id. at 1133. Third, the court determined that 

“Venture’s litigation conduct,” which it described as “lessthan-ideal,” “favors enhanced damages.” Id. at 1134–35. 

Last, the court expressed that “Venture’s expansion of its 

butane[-]blending business after this litigation began is 

troublesome.” Id. at 1135. We conclude that the district 

court abused its discretion in enhancing damages, based on 

a clear factual error in the district court’s treatment of the 

Manion Opinion—a ground that impacts its other enhancement grounds. 

“[A]n accused infringer’s reliance on an opinion of counsel regarding noninfringement or invalidity of the asserted 

patent remains relevant to the infringer’s state of mind 

post-Halo.” Omega Pats., LLC v. CalAmp Corp., 920 F.3d 

1337, 1353 (Fed. Cir. 2019). But an opinion of counsel like 

the Manion Opinion “must be competent or it is of little 

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24 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

value in showing the good faith belief of the infringer.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1191 

(Fed. Cir. 1998) (internal quotation marks omitted). Thus, 

before considering “the exculpatory value of an opinion of 

counsel, the legal advice contained therein must be found 

on the totality of the circumstances to be competent such 

that the client was reasonable in relying upon it.” Id. 

Here, although the district court concluded that the Manion Opinion “does not show that Venture had a good-faith 

belief that it was not infringing the patents” and that 

Sunoco “established that critical premises of the [opinion] 

letter were flawed,” Post-Trial Op., 436 F. Supp. 3d 

at 1133, the court made a clear factual error along the way, 

as explained below. 

Manion’s noninfringement opinion relied on the fact 

that Venture’s system inserted an intermediate tank between the blending unit and the rack (i.e., the location 

where gas is dispensed to trucks). Id. Noting that the patent examiner described the patented invention as “blending and dispensing . . . at a rack,” Manion opined that 

“[b]ecause the unblended gasoline in [Venture’s] system 

does not come from a tank and because the blended gasoline is dispensed to a tank, these claims are not infringed.” 

J.A. 8273. A key reason the court discounted that opinion 

was its view that Manion did not know the blended gasoline in Venture’s system could still flow immediately from 

the intermediate tank to the rack where it would be dispensed. Post-Trial Op., 436 F. Supp. 3d at 1133 (“At trial, 

Manion testified that he was unaware of Venture’s design 

for the blend to flow immediately from a tank to a truck 

rack.”). But as Venture demonstrates, Manion’s testimony 

makes clear that he did indeed understand this point. E.g., 

J.A. 7467 (“As an engineer, I realized that there was product flowing in to the tank and there’s product flowing out 

of the tank, and it’s conceivable that that could be happening simultaneously.”); J.A. 7473 (“[A]gain, the proposed 

system was blending to a tank; and as we talked about 

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before, you know, it’s very common for you to be filling a 

tank and emptying a tank at the same time. There’s nothing that says you can’t drain a tank while you’re filling a 

tank. . . . So, it’s very normal to be filling and dispensing 

at the same time.”). The district court disregarded that testimony because of other testimony that it saw as indicating 

that Manion “had never heard of the type of tank that Venture used between the blending instrument and rack.” 

Post-Trial Op., 436 F. Supp. 3d at 1134. But the record 

shows that Manion was merely confused by an unfamiliar 

term—“online rack tank”—that Sunoco’s attorney was using. E.g., J.A. 7459 (“I’m sorry, you said an online rack 

tank? . . . . I don’t know what an online rack tank is. . . . I 

would have to figure out what that means.”); J.A. 7468 

(“Like I said previously, I’d never heard of an online rack 

tank.”). 

This error also undermines other grounds the district 

court relied on for enhancement. Specifically, Venture’s 

culpability (if any) for copying, as well as for its business 

expansion, depends in part on whether it had a good-faith 

belief that it was not infringing, which relates to the competence of the Manion Opinion. And although the district 

court’s finding regarding litigation conduct is not similarly 

tied to its Manion-Opinion findings, acts of litigation misconduct standing alone “are not sufficient for an increased

damages award . . . because they are not related to the underlying act of infringement and say nothing about the culpability of the infringer.” Jurgens v. CBK, Ltd., 80 F.3d 

1566, 1570–71 (Fed. Cir. 1996) (“Only a culpable infringer 

can be held liable for increased damages, not an innocent 

one.”); see also i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 

831, 859 (Fed. Cir. 2010) (“[I]t would have been improper 

to enhance damages based solely on litigation misconduct . . . .”), aff’d, 564 U.S. 91 (2011). As the Supreme 

Court explained in Halo, “[a]wards of enhanced damages 

. . . are not to be meted out in a typical infringement case, 

but are instead designed as a ‘punitive’ or ‘vindictive’ 

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26 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

sanction for egregious infringement behavior.” 579 U.S. 

at 103 (emphasis added). Accordingly, because the district 

court’s enhancement “is based on clearly erroneous findings of fact,” it amounts to an abuse of discretion. Cybor 

Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 

1998) (en banc), abrogated on other grounds by Teva 

Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 

2015). We therefore vacate the district court’s enhancement determination and remand for the district court to 

reassess enhancement. 

V. Cross-Appeal

On cross-appeal, Sunoco challenges (A) the district 

court’s decision to deny lost-profits damages and (B) its 

reasonable-royalty award. We review the damages award, 

including the decision whether to grant lost profits, for 

clear error. Golden Blount, Inc. v. Robert H. Peterson Co., 

438 F.3d 1354, 1372 (Fed. Cir. 2006). Because we discern 

no clear error in the district court’s decision to deny lost 

profits or its reasonable-royalty calculation, we affirm 

those aspects of the judgment. 

A. Lost-Profits Damages

First, we address Sunoco’s argument that the district 

court should have granted lost-profits damages. “When a 

patentee proves it would have made additional sales but 

for a defendant’s infringement, the patentee is entitled to 

be made whole for the profits it proves it lost.” Mentor 

Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1284 

(Fed. Cir. 2017). More specifically, “a patentee is entitled 

to lost[-]profit damages if it can establish four things: 

(1) demand for the patented product; (2) absence of acceptable non-infringing alternatives; (3) manufacturing 

and marketing capability to exploit the demand; and 

(4) the amount of profit it would have made.” Id. at 1285 

(citing Panduit Corp. v. Stahlin Bros. Fibre Works, 

575 F.2d 1152, 1156 (6th Cir. 1978)). 

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At the district court, the parties focused on factor (2), 

contesting whether Venture’s accused system, if modified 

to be manually operated, was an available and acceptable 

non-infringing alternative. Post-Trial Op., 436 F. Supp. 3d 

at 1127–28. Although the court answered in the negative, 

it nonetheless declined to award lost profits—concluding 

that Sunoco had failed to prove factor (4), the amount of 

profit it would have made. On this factor, Sunoco had argued it was entitled to $31.585 million, “the amount that 

Sunoco would have received, had Venture signed a butane[-]supply agreement with Sunoco and the two parties 

split the resulting profits fifty-fifty.” Id. at 1128. The district court rejected this theory on the ground that butanesupply agreements do not accurately reflect the value of the 

patented invention—since “neither butane nor blended 

gasoline is the patented invention.” Id. 

That was not clear error. As Venture points out, the 

butane-supply agreements reflect a bundle of goods and 

services beyond just the patented invention—e.g., the purchase and sale of butane, equipment maintenance and 

monitoring, and a license to more than just the patented 

technology. Appellants’ Reply Br. 11–13 (discussing the 

particulars of agreements appearing at J.A. 11217–500). 

This means Sunoco’s “$31.585 million figure represents 

more than just the damage Sunoco incurred from Venture’s 

infringement” and “do[es] not translate into the value of 

the patent.” Post-Trial Op., 436 F. Supp. 3d at 1128. None 

of Sunoco’s arguments to the contrary leave us with “the 

definite and firm conviction that a mistake has been committed.” United States v. U.S. Gypsum Co., 333 U.S. 364, 

395 (1948). Rather, the reasons articulated by the district 

court satisfy us that it did not clearly err in denying lost 

profits. Accordingly, we decline to disturb the court’s decision to deny lost-profits damages. 

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28 SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. 

B. Reasonable Royalty

Last, we turn to Sunoco’s challenge to the district 

court’s reasonable-royalty calculation. “The amount of 

damages determined by a district court is a question of fact 

that is reviewed for clear error on appeal, while the method 

used by a district court in reaching that determination is 

reviewed for an abuse of discretion.” Cybor, 138 F.3d 

at 1461. We discern no clear error or abuse of discretion in 

the reasonable-royalty award, as the district court rejected 

Sunoco’s reasonable-royalty analysis because it “suffers 

from the same flaw as [Sunoco’s] lost profits analysis: it relies in large part on a comparison with Sunoco’s butane 

supply agreements, which cover services beyond simply the 

value of the patents.” Post-Trial Op., 436 F. Supp. 3d 

at 1129. Venture’s reasonable-royalty analysis, in contrast, was based on the difference between using a manual 

blending system and using Sunoco’s automated system to 

blend butane—calculating a $5.6 million royalty as the 

maximum royalty the parties would have hypothetically 

agreed upon. Id. The district court then credited the opinion of Venture’s expert that a more likely royalty would be 

a $2 million lump sum, and it checked that figure against 

a $1.714 million figure calculated from a prior license 

Sunoco granted to the previous owner of its patents, Texon, 

after buying Texon’s blending business. Id. at 1129–30. 

Because we see no clear error or abuse of discretion, we affirm the reasonable-royalty award.6 

6 Venture represents that damages would not need 

to be recalculated if we reject Sunoco’s arguments on crossappeal (we do) and if Venture does not prevail on every appealed issue regarding infringement and invalidity (it 

doesn’t). Oral Arg. at 1:40–2:53. 

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CONCLUSION

We have considered the parties’ remaining arguments 

but find them unpersuasive. We vacate the district court’s

infringement judgment with respect to ’629 patent claim 2 

and ’302 patent claims 2, 3, and 16, vacate its infringement 

judgment with respect to the ’948 and ’548 patents, adopt

its claim constructions and affirm its infringement judgment with respect to ’302 patent claim 17 and ’629 patent 

claim 31, affirm its denial of lost-profits damages, and affirm its reasonable-royalty analysis. Since we here affirm 

the judgment of infringement as to ’302 patent claim 17 

and ’629 patent claim 31, we affirm the $2 million royalty. 

The $2 million royalty is not subject to increase if the district court finds infringement of other claims. We remand 

for the district court to assess the ready-for-patenting 

prong of the on-sale-bar analysis and reassess enhancement for the reasons stated above and in light of the now 

restricted scope of infringement. The permanent injunction entered by the district court is now expired due to the 

expiration of the patents and in any event should be vacated except as to ’302 patent claim 17 and ’629 patent 

claim 31. 

AFFIRMED-IN-PART, REVERSED-IN-PART, 

VACATED-IN-PART, AND REMANDED

COSTS

The parties shall bear their own costs. 

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