United States Court of Appeals 

for the Federal Circuit ______________________ 

PAVO SOLUTIONS LLC,

Plaintiff-Appellee

v.

KINGSTON TECHNOLOGY COMPANY, INC.,

Defendant-Appellant

______________________ 

2021-1834

______________________ 

Appeal from the United States District Court for the 

Central District of California in No. 8:14-cv-01352-JLSKES, Judge Josephine L. Staton.

______________________ 

Decided: June 3, 2022

______________________ 

BENJAMIN T. WANG, Russ August & Kabat, Los Angeles, CA, argued for plaintiff-appellee. Also represented by 

JACOB BUCZKO, MINNA CHAN, MARC A. FENSTER, ADAM 

HOFFMAN, ANDREW D. WEISS. 

 MICHAEL JOHN BALLANCO, Fish & Richardson PC, 

Washington, DC, argued for defendant-appellant. Also 

represented by BRIANNA LEE CHAMBERLIN, Minneapolis, 

MN; DAVID M. HOFFMAN, Austin, TX. 

 ______________________ 

Before LOURIE, PROST, and CHEN, Circuit Judges.

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PROST, Circuit Judge. 

Kingston Technology Company, Inc. (“Kingston”) appeals the U.S. District Court for the Central District of California’s judgment that Kingston willfully infringed claims 

1, 4, and 24 of U.S. Patent No. 6,926,544 (“the ’544 patent”) 

and awarding $7,515,327.40 in compensatory damages, enhanced by 50 percent. We affirm.

BACKGROUND

I 

The ’544 patent is generally directed to “[a] flash 

memory apparatus having a single body type rotary cover.” 

’544 patent Abstract. According to the patent, flash 

memory devices use covers to protect USB ports from damage and foreign substances. Because prior-art covers were 

separable from the flash memory apparatus, they could often be lost, or the joint between the cover and the device 

could loosen and damage the USB port. The ’544 patent 

purports to solve these problems using a “cover [that] is not 

completely separated from the main body during use.” Id.

at col. 2 ll. 23–27. The patent describes a device in which 

a flash memory apparatus “includes a flash memory main 

body.” Id. at col. 3 ll. 11–14. The flash memory main body 

has a case with a “hinge protuberance.” Id. at col. 3 ll. 20–

23. A cover is formed as a U-shaped cavity with a circular 

hinge hole on one end for receiving the hinge protuberance

on the case. Open sides in the cover allow “the flash 

memory main body . . . to go in and out of the cover.” Id. at 

col. 3 ll. 55–58. Figure 2 of the ’544 patent most clearly illustrates these features and the cooperation between the 

flash memory main body 30 and the cover 40:

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Claim 1 is illustrative of the issues on appeal and recites:

A flash memory apparatus comprising:

a flash memory main body including a rectangular 

shaped case within which a memory element is 

mounted, a[] USB (Universal Serial Bus) terminal 

piece electrically connected with the memory element and installed at a front end of the case in a 

projecting manner, and a hinge protuberance 

formed on at least one side of the case; and

a cover including [a] pair of parallel plate members

facing each other and spaced by an interval corresponding to the thickness of the case, the cover having an open front end and a closed rear end with a 

pair of lateral side openings; the parallel plate 

members having at least one hinge hole receiving 

the hinge protuberance on the case for pivoting the 

case with respect to the flash memory main body, 

whereby the USB terminal piece is received in an 

inner space of the cover or exposed outside the 

cover.

’544 patent claim 1 (emphasis added); see also J.A. 116 

(Certificate of Correction). 

II

On August 22, 2014, CATR Co. (“CATR”)1 sued Kingston in the Central District of California, alleging infringement of the ’544 patent. Kingston sought inter partes

review (“IPR”) of the patent, and the district court stayed 

the litigation pending the outcome of that proceeding. A 

1 Pavo Solutions, LLC (“Pavo”) was substituted for 

CATR on October 3, 2016.

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subset of the ’544 patent’s claims survived IPR, the district 

court lifted the stay, and the case continued.

In its claim-construction order, the district court 

agreed with Pavo that the claim phrase “pivoting the case 

with respect to the flash memory main body” included a 

clerical error, and it judicially corrected the language by 

replacing the word “case” with the word “cover” so that the 

claim read “pivoting the cover with respect to the flash 

memory main body.” Pavo Sols., LLC v. Kingston Tech. 

Co., Case No. SACV 14-1352, 2018 WL 5099486, at *4 (C.D. 

Cal. Sept. 10, 2018) (“Claim Construction Order”) (emphasis added). The district court determined that the error 

was “evident from the face of the patent” because “[t]he 

case is described as a part of the main body, so it is not 

possible for it to rotate with respect to the body.” Id. (emphasis in original). The correction was not subject to reasonable debate, in the district court’s view, because 

Kingston’s proposed alternative construction—replacing 

“flash memory main body” with “cover” so that the claim 

reads “pivoting the case with respect to the cover”—resulted in the same claim scope. Id. at *3. Finally, the district court noted that the prosecution history was 

consistent with the correction. Id. at *4. Though Kingston 

had submitted and relied on expert testimony in support of 

its arguments that the correction was not appropriate, the 

court discounted the testimony because it was not consistent with the intrinsic record. Id.

The case proceeded to trial, where Pavo’s damages expert, Mr. Jim Bergman, presented a profit-based model of 

reasonable-royalty damages. He relied on an earlier settlement agreement between CATR and IPMedia, a USBdrive manufacturer, in which IPMedia agreed to pay a 1-

cent royalty for future sales of its product and represented 

that 1 cent was “approximately Twenty-Five Percent (25%) 

of the profits recognized by IPMedia from sales” of its product. J.A. 1649, 1652. Accounting for differences between 

IPMedia and Kingston—the former a smaller enterprise 

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with lower profitability—Mr. Bergman concluded that 

Pavo and Kingston would have agreed to a profit split of 

18.75 percent, which amounted to 40 cents per unit.

Before trial, Kingston sought to exclude Mr. Bergman’s 

testimony, arguing that his reliance on the 25-percent representation was incorrect and speculative. The district 

court denied the motion, observing that Mr. Bergman relied only on express terms in the IPMedia license, so his 

analysis did not involve any impermissible speculation. 

See Pavo Sols. LLC v. Kingston Tech. Co., Case No. SACV 

14-1352, 2019 WL 8138163, at *18 (C.D. Cal. Nov. 20, 

2019).

At the conclusion of trial, the jury returned a verdict 

that Kingston had willfully infringed claims 1, 4, and 24 of 

the ’544 patent and awarded Pavo a 20-cent reasonable 

royalty. Following trial, Kingston moved for judgment as 

a matter of law, which the district court denied. Kingston 

appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1).

DISCUSSION

Kingston makes five arguments on appeal, three of 

which we substantively address. First, Kingston argues 

that the district court should not have judicially corrected 

the phrase “pivoting the case with respect to the flash 

memory main body” because the language does not contain 

an error and, even if it does, the error is neither minor nor 

obvious. Second, Kingston argues that it could not have 

formed the intent to infringe necessary to support a willfulinfringement verdict because it reasonably relied on the 

fact that it does not infringe the ’544 patent’s claims as 

originally written. Third, Kingston argues that the district 

court should not have permitted Mr. Bergman to rely on 

the 25-percent-profit representation in the IPMedia license

because that provision is a non-payment term unrelated to 

the royalties CATR received. We address each of these arguments in turn, but we do not address Kingston’s other 

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two arguments—(1) that the district court issued a curative jury instruction that contradicted the parties’ agreed 

construction for “pair of parallel plate members,” and

(2) that the district court permitted Pavo to prejudice the 

jury by referring to Kingston’s total revenue for sales of the 

accused products—because, for the reasons discussed below, we conclude that Kingston forfeited them. 

I 

We first address Kingston’s argument that the district 

court should not have judicially corrected “pivoting the case 

with respect to the flash memory main body.” We review a 

district court’s claim construction de novo, Apple Inc. v. WiLAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022), and any subsidiary fact findings about extrinsic evidence for clear error, Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 

F.3d 928, 932–33 (Fed. Cir. 2019). We conclude that the 

district court appropriately corrected an obvious minor 

clerical error in the claims. 

A district court may correct “obvious minor typographical and clerical errors in patents.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). 

Correction is appropriate “only if (1) the correction is not 

subject to reasonable debate based on consideration of the 

claim language and the specification and (2) the prosecution history does not suggest a different interpretation of 

the claims.” Id. at 1354. The error must be “evident from 

the face of the patent,” Grp. One, Ltd. v. Hallmark Cards, 

Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005), and the determination “must be made from the point of view of one skilled 

in the art,” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. 

Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009). In deciding 

whether a particular correction is appropriate, the court 

“must consider how a potential correction would impact the 

scope of a claim and if the inventor is entitled to the resulting claim scope based on the written description of the 

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patent.” CBT Flint Partners, LLC v. Return Path, Inc., 

654 F.3d 1353, 1359 (Fed. Cir. 2011).

A 

We begin by addressing whether the claim language 

contains an obvious minor typographical or clerical error. 

It does. The reference to “case” in the phrase “pivoting the 

case with respect to the flash memory main body” in both 

claims 1 and 24 is a mistake. The error is clear from the 

full context of the claim language. A first clause describes 

the physical structure of the device, including the “for pivoting” language, and a second clause describes the pivoting 

motion itself: 

the parallel plate members [of the cover] having at 

least one hinge hole receiving the hinge protuberance on the case for pivoting the case with respect 

to the flash memory main body, whereby the USB

terminal piece is received in an inner space of the 

cover or exposed outside the cover. 

See ’544 patent claim 1 (emphasis added). In other words, 

claim 1 recites structural elements—hinge holes on the 

cover receiving hinge protuberances on the case—that result in a configuration in which the cover pivots with respect to the case. Claim 24 includes virtually identical 

language. See id. at claim 24 (“the parallel plate members 

having at least one hinge element which cooperates with 

the hinge element on the case for pivoting the case with 

respect to the flash memory main body, whereby the USB 

terminal piece is received in an inner space of the cover or 

exposed outside the cover”). The “for pivoting” term immediately follows the language requiring structure resulting 

in a pivoting cooperation between the cover and the case, 

confirming that the reference to the “case” pivoting with 

respect to the “flash memory main body” (which includes 

the case) is a clerical error. The “whereby” clause that follows and elaborates on the “for pivoting” term in both 

claims forecloses any argument to the contrary: by 

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explaining that “the USB terminal piece is received in an 

inner space of the cover or exposed outside the cover,” the 

claims describe a movement that is only possible if the 

cover pivots with respect to the flash memory main body. 

That both claim 1 and claim 24 require that the flash 

memory main body “includ[e]” a case also confirms the clerical error. ’544 patent col. 4 ll. 43–44, col. 6 l. 49. This language suggests—if not requires—that the two structural 

components be fixed with respect to each other. Because 

the claim language alone shows that the reference to the 

case in the “for pivoting” language should have been to the 

cover, we agree with the district court that claims 1 and 24 

of the ’544 patent contain an obvious minor clerical error.

Kingston suggests that the error cannot be minor because replacing one structural element with another is “a 

substantial alteration of the claimed structure.” Appellant’s Br. 19. First, this argument ignores the language in 

each claim that, even without the “for pivoting” term, requires a structure in which the cover pivots with respect to 

the flash memory main body. Rather than describe a different structure, the language as written doesn’t make 

sense. Second, even if Kingston were right that the correction changes the structure described in the corrected claim,

nothing in our case law precludes district courts from correcting obvious minor errors that alter the claimed structure. In Ultimax, for example, we altered a chemical 

formula by inserting a comma because a skilled artisan 

would have known that the omission of the comma was a 

mistake. 587 F.3d at 1352–53. And in Lemelson v. General 

Mills, Inc., we inserted the word “toy” into a preamble reciting a “trackway” so that it read “trackway toy.” See

968 F.2d 1202, 1203 (Fed. Cir. 1992). The Supreme Court 

has likewise permitted structural alterations via judicial 

correction: in I.T.S. Rubber Co. v. Essex Rubber Co., the 

Court corrected “upper edge” to “rear upper edge.” See

272 U.S. 429, 441–43 (1926). These cases confirm that judicial correction may result in structural alterations. They

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also undermine another of Kingston’s arguments: that the 

error is not evident on the face of the patent because the 

claim is linguistically correct. As this case law suggests,

courts are not limited to correcting errors that result in linguistic incorrectness. 

Kingston also argues that the correction cannot be minor because it broadens the claims. That is incorrect. The 

structural elements recited in each claim already require 

that the cover pivot with respect to the flash memory main 

body. 

Finally, Kingston suggests that our decision in Chef 

America, Inc. v. Lamb-Weston, Inc. precludes judicial correction here. Appellant’s Br. 24 (citing 358 F.3d 1371, 1374 

(Fed. Cir. 2004)). In Chef America, we considered a patent 

directed to a process for making dough products. 358 F.3d 

at 1372. Both independent claims at issue included the 

step of “heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.” Id. The 

patent owner sought to interpret this language as if it read 

“heating the . . . dough at a temperature in the range of” 

about 400° F to 850° F because it was undisputed that, if 

one performed the steps of the claim as written and heated 

the dough to 400° F or higher, the dough “would be burned 

to a crisp.” Id. at 1373–74 (emphasis added). We declined

to construe the claim contrary to its plain language, observing that the language was clear and unmistakable and that

we “may not redraft claims, whether to make them operable or to sustain their validity.” Id. at 1374. Here, Kingston argues that, if the district court correctly concluded 

that the language of the ’544 patent’s claims precluded the 

case from pivoting with respect to the flash memory main 

body, that structural impossibility is not sufficient to justify judicial correction. But this case is unlike Chef America for several reasons. First, as discussed, the structural 

limitations of the claims show that the reference to “case” 

was an error because they describe a cover that necessarily 

pivots with respect to the flash memory main body, so it is 

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not structural impossibility alone that justifies correction. 

Second, the claim as written facially did not make sense

(i.e., the case pivoting with respect to a component of which 

it forms a part) rather than describe a realistic but perhaps 

undesirable result, i.e., cooking dough to 400° F and burning it. Third, the specification of the ’544 patent confirms 

the error in the claims by exclusively describing a flash 

memory device with a pivoting cover, whereas in Chef 

America, nothing in the specification or the prosecution 

history suggested that the patentee meant for the dough to 

be cooked “at” 400° F rather than “to” 400° F. See id. at 

1374–75. Fourth, in Chef America we pointed out that the 

“patentees made no attempt to have . . . an error corrected, 

. . . by action of the district court.” Id. at 1375. Accordingly, 

Chef America does not preclude the result we reach here.

Finally, throughout its briefing on appeal and in the 

district court, Kingston relied on the unrebutted testimony 

of an expert, Timothy Fletcher, who opined that the error 

in the claims was not minor or obvious. The district court 

summarily dismissed Mr. Fletcher’s testimony. See Claim 

Construction Order, 2018 WL 5099486, at *4 (characterizing Mr. Fletcher’s testimony as “inconsistent with the 

drawings presented in the patent and the other language 

of the patent”). The district court was correct to do so: Mr. 

Fletcher admitted that he had considered the “for pivoting” 

language in isolation, not in context as he should have. See

J.A. 7465–66; CBT Flint, 654 F.3d at 1359. Accordingly, 

none of Mr. Fletcher’s opinions alter our analysis.

We therefore conclude that “pivoting the case with respect to the flash memory main body” in claims 1 and 24 of 

the ’544 patent contains an obvious minor clerical error.

B 

Our next step in the judicial-correction analysis is to 

determine whether the correction is “subject to reasonable 

debate based on consideration of the claim language and 

the specification.” Novo Indus., 350 F.3d at 1354. The 

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district court concluded that the correction was not subject 

to reasonable debate because both proposed corrections 

would result in the same claim scope. Claim Construction 

Order, 2018 WL 5099486, at *3. We agree. 

Our decision in CBT Flint is instructive. 654 F.3d 

at 1355. There, we considered a claim that included the 

limitation “a computer in communication with a network, 

the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized 

sending party or an unauthorized sending party.” Id. (emphasis added). We identified three possible corrections: 

(1) delete the word “detect,” (2) delete the word “analyze,” 

or (3) insert “and” between “detect” and “analyze.” Id. at 

1359. “Because each of the three proposed reasonable interpretations would result in the same claim scope,” we 

concluded that “a person of skill in the art would readily 

know that the meaning of the claim requires insertion of 

the word ‘and’ between the words ‘detect’ and ‘analyze.’” Id. 

One “was not required to guess which meaning was intended in order to make sense out of the patent claim.” Id.

at 1360.

The same principles apply here. Kingston suggests 

that an alternative correction would be to replace “flash 

memory main body” with “cover” so that the phrase reads 

“pivoting the case with respect to the cover.” See Appellant’s Br. 26–27. But the case is a part of the flash memory 

main body. See ’544 patent claim 1 (“a flash memory main 

body including a rectangular shaped case”), see also id. at 

claim 24. So anything that pivots with respect to the case 

also pivots with respect to the flash memory main body. 

Functionally speaking, then, Kingston’s alternative correction would just reverse the order in which the structural 

components appear in the claim: “pivoting the cover with 

respect to the flash memory main body” versus “pivoting 

the flash memory main body with respect to the cover.” In 

either case, the flash memory main body and the cover 

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pivot with respect to each other, so the two proposed corrections describe the same action. Judicial correction is 

“not in any real sense, a re-making of the claim; but is 

merely giving to it the meaning which was intended by the 

applicant and understood by the examiner.” Essex, 

272 U.S. at 443. Here, because both corrections result in 

the same action, the meaning intended by the applicant is 

clear. It was, therefore, appropriate for the district court 

to conclude that the correction was not subject to reasonable debate.

Kingston argues that the two corrections do not result 

in identical claim scope because the case and the flash 

memory main body are different components that need not 

be affixed together, meaning that pivoting the cover with 

respect to one does not necessarily mean that it pivots with 

respect to the other. We disagree. “Any correction of a 

claim has to be consistent with the invention ‘described in 

the specification and drawings of the original patent.’” 

CBT Flint, 654 F.3d at 1359 (quoting Essex, 272 U.S. 

at 444). The specification of the ’544 patent describes “a 

flash memory main body including a rectangular shaped 

case.” ’544 patent col. 2 ll. 31–32 (emphasis added). The 

patent then explains that “[a] hinge protuberance 33 for 

functioning as a rotation shaft of a cover 40 is provided on 

an appropriate position of a front side and a rear side of the 

case 31,” id. at col. 3 ll. 20–23 (emphasis added), before 

later stating that “the cover has a circular hinge hole 41 for 

receiving the hinge protuberance 33 formed on the flash 

memory main body 30,” id. at col. 3 ll. 33–36 (emphasis 

added). In other words, the specification equates the case 

to the flash memory main body for purposes of describing 

the hinge protuberance 33. And the drawings consistently 

depict a case and a flash memory main body that are integrated with one another, meaning that they cannot pivot 

or otherwise move with respect to each other. See, e.g., id.

at Figs. 2–4. Because the specification consistently and exclusively depicts embodiments in which the case and the 

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flash memory main body are integrated, Kingston is wrong 

to suggest otherwise. Kingston’s alternative correction 

does not result in different claim scope.

We therefore conclude that the correction is not subject 

to reasonable debate.

C 

We finally consider whether the prosecution history 

“suggest[s] a different interpretation of the claims.” Novo 

Indus., 350 F.3d at 1354. The district court concluded that 

it does not, and we agree. See Claim Construction Order, 

2018 WL 5099486, at *4. Despite the error’s introduction 

early in prosecution, both the applicant and the examiner 

consistently characterized the claims as describing “pivoting the case [] within the cover,” J.A. 8133, “allowing the 

cover to pivot,” J.A. 7143, and “a cover . . . having a hinge 

element functioning with the case,” J.A. 7159. In describing the reasons for allowance, the examiner stated that 

“[t]he prior art does not show a hinge element of the parallel plate members cooperating with a hinge element on the 

case.” J.A. 7048. Similarly, the Patent Trial and Appeal

Board (“Board”) and this court both recognized the pivoting-cover nature of the invention. The Board described the 

’544 patent as “directed to a cover that rotates with respect 

to a case.” J.A. 7057–58. And, in reviewing the Board’s 

final written decision, we described the claimed invention 

as having a “rotating cover that is not separated from the 

memory device body when its USB port is in use.” Pavo 

Sols. LLC v. Kingston Tech. Co., 711 F. App’x 1020, 1022 

(Fed. Cir. 2017). These descriptions confirm that each reviewing body—the examiner, the Board, and this court—

understood the nature and scope of the invention consistently with correcting “case” to “cover.” No other reasonable 

interpretation reveals itself from the prosecution history.

Kingston, however, argues that the prosecution history 

suggests correction is inappropriate because, during the 

IPR, Pavo asked the Board to make the same correction, 

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and the Board denied that request. But first, that denial 

does not suggest that a different correction is appropriate, 

which is the question at issue here. Second, the Board denied Pavo’s correction request on procedural grounds: Pavo 

had already filed preliminary responses in both IPRs, and 

the oral hearing was less than two months away. Under 

those circumstances, the Board concluded that “[p]otential 

changes to the claims at this stage could lead to a moving 

target that is unfair to [Kingston].” J.A. 1199. Kingston 

seizes upon this “moving target” language to argue that the 

Board recognized that Pavo’s requested correction would 

substantively change the claims. But the Board’s language 

does not support that conclusion. Rather, the Board’s observation that “[p]otential” changes “could” result in a moving target shows that the Board did not consider the 

substance of Pavo’s request. See id. Any attempt to infer 

the Board’s views on the correction is conjecture.

Accordingly, we conclude that the prosecution history 

does not suggest a different interpretation of the claims.

D 

Having determined that the claim language contains 

an obvious clerical error, that the correction is not subject 

to reasonable debate, and that the prosecution history does 

not suggest a different interpretation, we affirm the district court’s construction that “pivoting the case with respect to the flash memory main body” means “pivoting the 

cover with respect to the flash memory main body.”

II

Kingston next argues that the jury’s willful-infringement verdict must be set aside. Kingston submits that it 

could not have formed the requisite intent to support a willfulness finding because it did not infringe the claims as 

originally written and because it could not have anticipated 

that a court would later correct the claims. We hold, 

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however, that reliance on an obvious minor clerical error in 

the claim language is not a defense to willful infringement. 

Kingston’s argument appears to hinge on its belief that 

the district court “change[d] the metes and bounds of the 

patent,” Appellant’s Br. 35, and “enacted a major change to 

the claim language,” Reply Br. 16. But judicial correction 

does not re-make the claim; rather, it gives effect to its obvious meaning. See Essex, 272 U.S. at 443. An obvious 

minor clerical error, by definition, does not mask that 

meaning, so Kingston cannot hide behind the error to escape the jury’s verdict. 

Kingston suggests that upholding the willful-infringement verdict amounts to calling Kingston reckless for relying on the Board’s rejection of Pavo’s correction request 

during the IPR. But, as we explained above, the Board did 

not consider the substance of Pavo’s correction request, so 

there was nothing for Kingston to rely on. More importantly, “culpability is generally measured against the 

knowledge of the actor at the time of the challenged conduct.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 

105 (2016). The Board’s inaction, which came later, is irrelevant to the issue of Kingston’s intent to infringe the 

’544 patent. See Odetics, Inc. v. Storage Tech. Corp., 

185 F.3d 1259, 1276 (Fed. Cir. 1999) (“The proper time to 

assess willfulness is at the time the infringer received notice . . ., making the relevance of later developments . . . 

questionable at best.”). 

We affirm the district court’s judgment that Kingston 

willfully infringed the ’544 patent.

III

Kingston lastly argues that the district court should 

have excluded Mr. Bergman’s damages testimony because 

he relied on a non-payment term in the IPMedia license. 

We conclude, however, that the district court did not abuse 

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its discretion when it declined to exclude Mr. Bergman’s 

testimony. 

We review a district court’s denial of judgment as a 

matter of law (“JMOL”) under the law of the regional circuit. Apple Inc., 25 F.4th at 969. The Ninth Circuit reviews 

denial of JMOL de novo. Est. of Diaz v. City of Anaheim, 

840 F.3d 592, 604 (9th Cir. 2016). A district court’s decision 

concerning the methodology for calculating damages is one 

we review for an abuse of discretion. Lucent Techs., Inc. v. 

Gateway, Inc., 580 F.3d 1301, 1310 (Fed. Cir. 2009). We 

review a jury’s determination of the amount of damages for 

substantial evidence. Id. “A jury’s damages award must 

be upheld unless the amount is grossly excessive or monstrous, clearly not supported by the evidence, or based only 

on speculation or guesswork.” Bio-Rad Labs., Inc. v. 10X 

Genomics Inc., 967 F.3d 1353, 1373 (Fed. Cir. 2020) 

(cleaned up).

At trial, Pavo presented a reasonable-royalty theory of 

damages under a hypothetical-negotiation framework and

proposed a 40-cent-per-unit royalty rate. Mr. Bergman 

used the negotiations and agreement between CATR and 

IPMedia as his starting point; both parties’ experts agreed 

that the IPMedia license was a comparable license. See

J.A. 20605, 21043. That license included a 1-cent running 

royalty for sales of the licensed product. See J.A. 1649. The 

license also included a representation from IPMedia to 

CATR that “the amount of One U.S. Cent ($0.01 USD) per 

unit is approximately equal to Twenty Five Percent (25%) 

of IPMedia’s profits recognized from the sale of a Covered 

Product, excluding profits attributable to any upgrades or 

value-added features or services (i.e., higher memory capacity, custom printing, software preloads, etc.).” 

J.A. 1652. Based on those two provisions, Mr. Bergman 

opined that a profit-split model was appropriate to use as 

a factor to determine damages; differences in profitability 

and business models between IPMedia and Kingston led 

Mr. Bergman to reduce the profit split from 25 percent to 

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18.75 percent. He applied that figure to Kingston’s profits 

from the sale of the accused USB device and concluded that 

the appropriate royalty rate was 40 cents per unit.

Kingston first argues that Mr. Bergman’s methodology 

is unsound because it relies not on what CATR actually received but, instead, on what Kingston characterizes as a 

non-binding non-payment term, i.e., the 25-percent-ofprofit representation. But the IPMedia agreement itself 

says that the 1-cent royalty that CATR received represented 25 percent of IPMedia’s profit for sales of its product, so that representation provided context for the royalty

and was not a separate payment provision. Under the circumstances, Mr. Bergman’s testimony is not unduly speculative, and the district court did not abuse its discretion 

in declining to exclude it. Mr. Bergman’s analysis then accounted for the differences in the economic circumstances 

of the contracting parties, which is exactly what our case 

law requires. See VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 

1308, 1330 (Fed. Cir. 2014). The jury also heard testimony 

from Russel Chatskis, IPMedia’s president, explaining the 

structure of the IPMedia license. Based on that context, 

“[t]he jury was entitled to hear the expert testimony and 

decide for itself what to accept or reject,” and that is exactly 

what it did. See i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 

831, 856 (Fed. Cir. 2010). Kingston relies on Wordtech Systems, Inc. v. Integrated Network Solutions, Inc., 609 F.3d 

1308 (Fed. Cir. 2010), for the proposition that we do not 

permit the use of non-payment terms in comparable licenses, but that case is inapplicable. There, we rejected the 

use of a punitive-damages provision to support a damages 

award. 609 F.3d at 1320. Here, however, the provision 

that Kingston objects to contains a representation about 

and provides greater context for the royalty; it is not a separate term triggered only under certain circumstances like 

the one at issue in Wordtech. 

Kingston next suggests that Mr. Bergman failed to apportion for non-infringing features. Kingston argues that, 

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because the undisputed evidence at trial shows that it paid

just 35 cents in casing costs for the accused products, which 

is less than the 40-cent royalty Mr. Bergman proposed,

Mr. Bergman necessarily failed to account for the value of 

the infringing features. We disagree. First, the costs to 

Kingston for the materials are not the same as the value of 

the patented feature, so Kingston’s argument compares apples to oranges. Second, Mr. Bergman’s analysis correctly 

apportioned for non-infringing features.

“[T]he patentee must in every case give evidence tending to separate or apportion . . . the patentee’s damages between the patented feature and the unpatented features

. . . .” LaserDynamics, Inc. v. Quanta Comput., Inc., 694 

F.3d 51, 67 (Fed. Cir. 2012) (cleaned up). “[W]here multicomponent products are involved, the governing rule is 

that the ultimate combination of royalty base and royalty 

rate must reflect the value attributable to the infringing 

features of the product, and no more.” Ericsson, Inc. v. DLink Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). But 

“when a sufficiently comparable license is used as the basis 

for determining the appropriate royalty, further apportionment may not necessarily be required.” Vectura Ltd. v. 

GlaxoSmithKline LLC, 981 F.3d 1030, 1040 (Fed. Cir. 

2020). “That is because a damages theory that is dependent on a comparable license (or a comparable negotiation) 

may in some cases have ‘built-in apportionment.’” Id. 

“Built-in apportionment effectively assumes that the negotiators of a comparable license settled on a royalty rate and 

royalty base combination embodying the value of the asserted patent.” Id. at 1041.

Here, both parties agree that the IPMedia license was 

comparable. That license granted rights in the ’544 patent, 

and it plainly reflected the value that the contracting parties settled on for the patent. As the starting point for 

Mr. Bergman’s analysis, it provided sufficient evidence of 

“already built[-]in apportionment.” See Commonwealth 

Sci. & Indus. Rsch. Org. v. Cisco Sys., Inc., 809 F.3d 1295, 

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1303 (Fed. Cir. 2015); see also J.A. 1612–13. Mr. Bergman’s analysis correctly apportioned for non-infringing 

features, and the district court did not abuse its discretion 

by declining to exclude it. 

We therefore reject Kingston’s challenges to Mr. Bergman’s damages testimony and affirm the jury’s damages 

award. 

IV

We conclude that Kingston has forfeited its two remaining arguments: that the district court improperly reconstrued the term “pair of parallel plate members” by issuing a curative instruction to the jury during trial and

that Kingston was prejudiced by Pavo’s disclosure to the 

jury of Kingston’s total revenue for sales of the accused 

product. 

“[F]orfeiture is the failure to make the timely assertion 

of a right.” United States v. Olano, 507 U.S. 725, 733 

(1993). This court has “regularly stated and applied the 

important principle that a position not presented in the tribunal under review will not be considered on appeal in the 

absence of exceptional circumstances.” In re Google Tech. 

Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020); see also 

Singleton v. Wulff, 428 U.S. 106, 120 (1976) (“It is the general rule . . . that a federal appellate court does not consider 

an issue not passed upon below.”). 

As we explain below, Kingston failed to raise either argument to the district court in post-trial motions, so it 

failed to preserve the issues for appeal.

A 

Because Kingston never sought JMOL or a new trial on 

the grounds that the district court’s curative instruction 

improperly reconstrued a claim limitation, it forfeited the 

right to seek a new trial on that basis on appeal.

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Before the parties presented opening statements to the 

jury at trial, the district court barred a Kingston non-infringement argument as late-disclosed. Specifically, Kingston asserted that the accused product did not include a 

“pair of parallel plate members” because its cover was a 

single piece of metal, but it had not disclosed that position 

during discovery. During its cross-examination of Pavo’s 

infringement expert, however, Kingston asked the expert 

questions directed to the single-piece-of-metal argument. 

Finding that Kingston had violated its exclusionary order, 

the district court issued the following curative instruction 

to the jury:

There is no contention in this litigation that the 

limitation of a pair of parallel plate members is not 

met if the pair of parallel plate members is formed 

by a single piece of metal. You should, therefore, 

disregard any evidence or argument suggesting 

that a single piece of metal cannot form a pair of 

parallel plate members.

J.A. 21151. After the district court informed the parties 

that it would issue the instruction, Kingston’s trial counsel 

suggested that Pavo’s proposed language “would take out 

the entire limitation including the parallel.” J.A. 20555. 

The district court disagreed and suggested that the confusion arose because of a comma that the district court would 

remove from the instruction. J.A. 20555–56. In response, 

Kingston’s counsel said only “we maintain all of our objections to that instruction.” J.A. 20556.

Kingston did not move for a new trial, nor did it raise 

the curative-instruction issue in its motion for JMOL. Instead, Kingston “reserve[d] its right to move for [JMOL] on 

various limitations that the [c]ourt relieved Pavo of its burden of proof on, including” the pair of parallel plate members limitations. See J.A. 1474. Kingston did not elaborate 

on its arguments, nor did it file a subsequent motion for 

JMOL or a motion for a new trial that raised the district 

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court’s curative instruction or suggested that the district 

court had improperly reconstrued the term.

Kingston argues that it preserved the argument for appeal by objecting to the instruction at trial and reserving

its rights to challenge the court’s construction in its JMOL

motion. But, first, Kingston failed to substantively object 

to the jury instruction—it said only “we maintain all of our 

objections to that instruction” without elaborating on what 

those objections were. See J.A. 20556. Such a generalized 

statement, standing alone, fails to preserve any specific objection, particularly when the record before us indicates 

that the extent of Kingston’s argument against the instruction was that it was unnecessary in the first instance.2 See

J.A. 1435 (Kingston maintaining that its excluded non-infringement argument was based upon the words of the parties’ agreed construction for “pair of parallel plate 

members”); see also Reply Br. 17. Nothing in the record 

indicates that Kingston ever objected to the final language 

of the curative instruction, suggested that it amounted to 

an affirmative reconstruction of the claim term, or offered 

alternative language for the instruction, nor does Kingston 

argue that it did.

Second, Kingston’s attempt in its JMOL motion to “reserve[] its rights” to challenge the instruction at some unknown later date is insufficient to preserve the argument 

for an appeal. See J.A. 1474. When a party fails to seek a 

2 Kingston’s statement at trial that the instruction

“would take out the entire limitation including the parallel” was directed to Pavo’s proposal that included what the 

district court characterized as a confusing comma. See 

J.A. 20555–56. By failing to reiterate the argument in response to the district court’s version of the instruction, 

Kingston forfeited it. In any event, Kingston does not now 

argue that this statement preserved any specific objection 

to the language of the instruction.

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new trial before the district court, it forfeits its right to do 

so on appeal. Unitherm Food Sys., Inc. v. Swift-Eckrich, 

Inc., 546 U.S. 394, 404 (2006). That is what Kingston did 

here. The Federal Rules of Civil Procedure limit the time 

for parties to file post-judgment motions. See Fed. R. Civ. 

P. 50(b), (d); Fed. R. Civ. P. 59(b). A party cannot unilaterally extend that time by “reserving its rights,” nor does 

such a reservation avoid the Unitherm rule. Kingston 

never moved for a new trial at all, let alone on the basis 

that the district court’s curative jury instruction reconstrued the “pair of parallel plate members” claim term. Its 

failure to move for a new trial forfeits the argument on appeal. Unitherm, 546 U.S. at 404.

B 

Similarly, Kingston never sought a new trial on the 

grounds that Pavo prejudiced the jury by disclosing Kingston’s total revenue. It therefore forfeited its right to make 

that same argument on appeal.

Before jury selection, Kingston objected to Pavo’s use 

of an opening demonstrative slide that depicted Kingston’s 

total product revenue. Kingston argued that Pavo should 

be precluded from disclosing total product revenue to the 

jury because it violated the entire market value rule and 

was inherently unduly prejudicial. Pavo argued that product revenue was relevant to the commercial success of the 

accused product as compared to alleged non-infringing alternatives. The district court precluded Pavo from using 

the slide in its opening statement but stated that it was 

“not limiting [Pavo] from making statements about the total accused product revenue at this point, but [was] going 

to take a look at it.” J.A. 20085. The parties later submitted competing trial briefs on the issue and reiterated their 

respective positions. The district court ultimately excluded 

an underlying exhibit but permitted Mr. Bergman to testify 

generally to total product revenue. All told, Pavo referenced Kingston’s total sales revenue to the jury three 

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times: once in its opening statement, once during Mr. Bergman’s direct examination, and once during its cross-examination of Kingston’s damages expert. Kingston never 

sought a new trial on the grounds that Pavo used total 

product revenue for an improper purpose and thereby unduly prejudiced the jury.

Kingston’s failure to move the district court for a new 

trial on this ground, by itself, forfeits the argument on appeal. Unitherm, 546 U.S. at 404. Kingston’s arguments on 

appeal demonstrate why. Kingston asserts that Pavo did 

not use its sales revenue for a proper purpose and contests 

Pavo’s assertion that Pavo relied on total product revenue 

to refute Kingston’s arguments regarding non-infringing 

alternatives. See, e.g., Reply Br. 21. We, as an appellate 

body, cannot properly evaluate those arguments in the first 

instance. The trial court, having just presided over several 

days of testimony, would have been better suited to determine whether Kingston’s assertions of prejudice have 

merit, and it would have had the benefit of the full trial 

record, which we lack, to do so. Since Kingston did not 

make those arguments to the district court, we will not now 

consider them.

CONCLUSION

We have considered the parties’ remaining arguments 

but find them unpersuasive. For the above reasons, we affirm the judgment of the district court.

AFFIRMED

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