# United States **Court of Appeals**  **for the Federal Circuit**

______________________
REMBRANDT WIRELESS TECHNOLOGIE S, LP, Plaintiff

- Appellee

v.

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS A MERICA, LLC, Defendants

- Appellants

SAMSUNG AUSTIN SEMIC ONDUCTOR, L.L.C., RESEARCH IN MOTION C ORPORATION, RESEARCH IN MOTION L TD., Defendants

______________________

2016

- 1729

______________________

A ppeal from the United States District Court for the Eastern District of Texas in No. 2:13

- cv

- 00213

- JRG, Judge J. Rodney Gilstrap.

______________________

Decided: April 17, 2017

______________________

M ICHAEL F. H EIM , Heim, Payne & Chorush, LLP, Houston, TX, argued for plaintiff -appellee. Also repr esented by E RIC J. E NGER , M IRANDA Y. J ONES ; D EMETRIOS A NAIPAKOS , A MIR H. A LAVI , J AMIE A LAN A YCOCK , A LISA A.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 2

L IPSKI , Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing PC, Houston, TX.

J ESSE J. J ENNER , Ropes & Gray LLP, New York, NY, argued for defendants -appellants. Also represented by D OUGLAS H ALLWARD -D RIEMEIER , Washington, DC; G ABRIELLE E. H IGGINS , East Palo Alto, CA; B RIAN P. B IDDINGER , Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY.

______________________
Before T ARANTO , C HEN , and S TOLL , Circuit Judges

. S TOLL , Circuit Judge

. A jury found that Samsung infringed Rembrandt’s a sserted patents, which the jury also found not in valid over prior art cited by Samsung . The jury awarded Rembrandt $15.7 milli on in damages. After trial, Samsung moved for judgment as a matter of law on obviousness and damages, which the district court denied. Samsung appeals the district cou rt’s denial of JMOL, as well as the district court’s claim construction order and an order denying Sam s ung’s motion to limit Rembrandt’s damages for alleged failure to mark patented articles.
Because we agree with the district court’s challenged claim construction and its denial of Samsung’s JMOL motions, we affirm those decisions. We disagree, howe ver, with the district court’s denial of Samsung’s motion based on the marking statute

, and we vacate that decision and remand for proceedings consistent with this opinion.

B ACKGROUND

Rembrandt Wireless Technologies, LP, sued S amsung Electron ics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC in the United States District Court for Eastern District of Texas on March 15, 2013 for infringement of two patents thatREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 3

share a specification : U.S. Patent No. 8 ,023,580 and a continuation patent , U.S. Patent No. 8,457,228. These patents claim priority to a provisional application filed on December 5, 1997

, and relate to “ a system and method of communication in which multiple modulation methods are used to facili tate communication among a plurality of modems in a network, which have heretofore been inco mpatible. ” ’580 patent col. 2 ll. 17 –20

. The patent s explain that in the prior art “a transmitter and receiver modem pair can successfully communicate only when the modems are compatible at the physical layer. ” Id. at col. 1 ll. 27

– 29. As a result, “ communication between modems is generally unsuccessful unless a common modulation method is used. ” Id. at col. 1 ll. 45

– 47. Particularly with modems communicating via master/slave protocol, the patent s explain that “[i] f one or more of the trib modems [slaves] are not compatible with the modulation method used by the master, those tribs will be unable to receive communications from the master. ” Id. at col. 1 ll. 58

– 61. To overcome the challenges described in the prior art, the patents propose using the first section of a transmitted message (the message “header”) to indicate the modul ation method being used for the substance of the message (the message “payload”)

. Claim 2 of the ’580 patent , which is dependent upon claim 1, is representative:

1. A communication device capable of commun icating according to a master/slave relationship in which a slave communication from a slave to a master occurs in response to a master commun ication from the master to the slave, the device comprising:
a transceiver, in the role of the master a ccording to the master/slave relationship, for sending at least transmissions mod ulated using at least two types of modul a-REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 4

tion methods, wherei n the at least two types of modulation methods comprise a first modulation method and a second modulation method, wherein the second modulation method is of a different type than the first modulation method , wherein each transmission comprises a group of
t ransmission sequences, wherein each group of transmission sequences is stru ctured with at least a first portion and a payload portion wherein first information in the first portion indicates at least which of the first modulation method and the second modulation method is used for modulating second information in the pa yload portion, wherein at least one group of transmission sequences is addressed for an intended destination of the payload portion, and wherein for the at least one group of transmission seq uences:
the first information for said at least one group of transmission sequences compri ses a first sequence, in the first portion and modulated according to the first modul ation method, wherein the first sequence indicates an impending change from the f

irst modulation method to the second modulation method, and

the second information for said at least one group of transmission sequences co mprises a second sequence that is modula ted according to the second modulation method, wherein the second sequence is transmitted after the first sequence.

2. The device of claim 1, wherein the transceiver is configured to transmit a third sequence afterREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 5

the second sequence, wherein the third sequence is transmitted in the first modulation method and indicates that communication from the master to the slave has reverted to the first modulation method.

Id. at col. 7 l. 53 – col. 8 l. 24 (emphasis added to show dispute)

. Relevant here, the district court construed “modulation method [] of a different type” as “different families of modulation techniques, such as the FSK family of modulation methods and the QAM family of modulation methods

. ” Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. , No. 2:13

- CV

- 213

- JRG

- RSP, 2014 WL 3385125, at *15 (E.D. Tex. July 10, 2014) ( Claim Construction Order ).
Rembrandt alleged at trial that Samsung devices i ncorporating the Bluetooth enhanced data rate (“EDR”) standard infringed its patents. After a five

- day trial, the jury found that Samsung infringed Rembrandt’s pat ents
, and that the patents were valid over the prior art Sa msung presented. The jury awarded Rembrandt $15.7 million in damages

. The district court denied Samsung’s post-trial motions for judgment as a matter of law

— on both liability and on damages

— and entered fi nal jud gment. Samsung appeals, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).

D ISCUSSION
S amsung appeals several issues: (1) the district court’s construction of the “different types” limitation; (2) the district court’s denial of JMOL of obviousness; (3) the district court’s denial of Samsung’s Daubert motion, motions for a new trial, and motion for JMOL on dama ges; and (4) the district court’s denial of Samsung’s motion to limit damages based on Rembrandt’s purported failure to mark products embodying the ’580 patent

. SamsungREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 6

does not appeal the jury’s finding of infringement

. We address each issue in turn.

I. Claim Construc tion
Samsung disputes the district court’s construction of

“ modulation method [] of a different type .” The district
court construed this limitation as “ different families of modulation techniques, such as the FSK [frequency

- shift keying] family of modulat ion methods and the QAM [quadrature amplitude modulation] family of modulation methods

. ” Claim Construction Order , 2014 WL 3385125, at *15

. We review claim construction s based solely on the intrinsic record, as here, de novo. Shire Dev. , LLC v. Watson Pharm., Inc. , 787 F.3d 1359, 1364 (Fed. Cir

. 2015) (quoting Teva Pharm. USA, Inc. v. Sandoz, Inc.

, 135 S. Ct. 831

, 840

– 42 ( 2015)).

The district court arrived at its construction relying

on the applicant’s characterization of the “different types” term in t he prosecution history. During prosecu tion of the ’580 parent patent

, the applicant inserted the “diffe rent types” limitation into its claims after the examiner had already issued a notice of allowance

. In the appl icant’s contemporaneous remarks to the e xaminer, he indicated that he inserted the limitation into the ind ependent claim s to “more precisely claim the subject

matter.” J.A. 2234 . The applicant explained:
Applicant has further amended [its] claims . .

. with additional recitations to more precisely claim the subject matter. For example, t he language of independent claim 1 has been clarified to refer to
two types of modulation methods, i.e. , different families of modulation techniques, such as the FSK family of modulation methods and the QA M family of modulation methods

. Id.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 7

Samsung disputes the court’s construction, arguing that it improperly affords dispositive weight to a single self- serving statement in the prosecution history made after the examiner had allowed certain claims. Samsun g contends that the plain claim language requires only that the different types of modulation methods be “incom pat ible ” with one another. A ccording to Samsung, the claims cover devices that modulate signals using the same family of modulation methods (for example, FSK modula tion), but operating with different amplitudes between modems

. Samsung asserts that

, because modulating using different amplitudes make s the devices incompatible, t his a rrangement embodies “differ ent types ” of modulation.
We disagree with Samsung and adopt the constru ction entered by the district court. While the specification is the principal source of the meaning of a disputed term, the prosecution history may also be relevant. Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996)

. Here, the clearest statement in the intrinsic record regard ing the meaning of the “different types” limitation is the descriptive statement the appl icant made to the examiner when he inserted the limit ation into the claim s. Samsung’s arguments to the contrary do no t diminish this unambiguous statement in the prosecution history

. For example, Samsung avers that we should not give the prosecution history statement definitional weight because it uses the phrase “i.e.,” whi ch Samsung argues introduces an exemplary item in a set. A patentee’s use of “i.e.,” in the intrinsic record, however, is often definitio nal. Edwards Lifesciences LLC v. Cook Inc. , 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“[U]se of ‘i.e.’ signals an intent to define the word to which it refers .”) ; see also Abbott Labs. v. Novopharm Ltd.

, 323 F.3d 1324, 1330 (Fed. Cir. 2003) (holding that a patentee “explicitly defined” a term by using “ i.e. ” followed by an explanatory phrase). Indeed, the term “i.e. ” is Latin for id est , which means “ that is. ”REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 8

O n a related note in the context of disavowal, we have explained that “[w] hether a stat ement to the PTO that includes ‘i.e.’ constitutes a clear and unmistakable dis avowal of claim scope depends on the context. ” Braintree Labs., Inc. v. Novel Labs., Inc. , 749 F.3d 1349, 1355 (Fed. Cir. 2014) . The context here strongly supports the conclusion that Rembrandt us ed “i.e.” to define the “di fferent types” limitation because Rembrandt used it to describ e to the examiner a new limitation it had inserted to further limit its claims.
Samsung directs us to cases where we have held that “i.e.” was not used to define, particularly in instances where interpreting “i.e.” as definitional would be interna lly incon sistent, see Pfizer, Inc. v. Teva Pharm. , USA, Inc.

, 429 F.3d 1364, 1373 (Fed. Cir. 2005)

, or where it would read out preferred embodiments, see Dealertrack, Inc. v. Huber , 674 F.3d 1315, 1326 (Fed. Cir. 2012)

. Samsung argues that interpreting the “i.e.” statement as defin ition al here would create an internal inconsistency with claim 43, which recites that “at least one of said modul ation method s implements phase modulation.” Samsung
asserts that because claim 43 refers to “a t least one” of the methods using phase modulation, more than one of them could use phase modulation, even though under the district court’s construction that would mean they are not in different families.

We are not convinced that there would necessarily be a conflict with claim 4 3 under the adopted construction. As Rembrandt points out

, claim 26

— from which claim 43 depends

— also uses the “at least” language to describe “at least two different types of modulation methods ,” which cuts against Samsung’s inference. I n any event , we do
not find that this parsing of the claims overcomes the definitional statement the applicant provided in the prosecution history

. See ERBE Elektromedizin GmbH v. Canady Tech. LLC

, 629 F.3d 1278, 1286

– 87 (Fed. Cir. 2010) (rejecting patent owner’s claim di fferenti-REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 9

ation argument based on disclaimer in the prosecution history). Nor do we find that the specification is at odds with the prosecution history definition. The spec ification repeatedly refers to different types of modulation met hods, but it does not provide examples of what would constitute different methods or otherwise define this limitation.
Samsung also mentions that in related IPR procee dings

, the Patent Trial and Appeal Board adopted the broader construction Samsung argues for here

. As Sa msung admits, however, this construction does not bind our
court. And t he Board in IPR proceedings operates under a broader claim construction standard than the federal
courts

. Cuozzo Speed Techs., LLC v. Lee , 136 S. Ct. 2131, 2142 , 2146 (2016)

. We also note that even after adopting Samsung’s construction, the Board refused to deem Re mbrandt’s patents unpatentable over the prior art , which is ultimately what Samsung seeks under its proposed co nstruction

. We therefore agree with the construction en tered by
t he district court that the term “modula tion method [] of a different type ” mean s “ different families of modulation techniques, such as the FSK family of modulation met hods and the QAM family of modulation methods

. ” Claim Construction Order

, 2014 WL 3385125, at *15

. II. Obviousness
Samsung argues that even under the district court ’ s construction of “different types

, ” it proved by clear and convincing evidence that Rembrandt’s patents are invalid for obviousness under 35 U.S.C. § 103 and that the jury verdict of nonobviousness must be overturned as a matter of law. 1

1 Given the effective filing dates of the ’580 and ’228 patents’ claims, the version of 35 U.S.C. § 103 that appliesREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 10

We review the district court’s post

- trial denial of judgment as a matter of law under the law of the regional circuit, here the Fifth Circuit. Finisar Corp. v. DirecTV Grp., Inc. , 52 3 F.3d 1323, 1328 (Fed. Cir. 2008) . Fifth Circuit law has us review the denial of JMOL de novo, asking, as the district court did, whether a “ reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Camb ridge Toxicology Grp. v. Exnicios , 495 F.3d 169, 179 (5th Cir. 2007) ( quo ting Fed. R. Civ. P. 50(a)(1) )

. When a jury returns a ge neral verdict regarding obvious ness , a legal question with factual underpinnings, “ [w]e first presume that the jury resolved the underlying factual disputes in favor of the verdict winner and leave those presumed findings undi sturbed if they are supported by substantial evidence. Then we examine the legal conclusion de novo to see whether it is correct in light of the presumed jury fact findings. ” Circuit Check Inc. v. QXQ Inc. , 795 F.3d 1331, 1334 (Fed. Cir. 2015) (quoting Jurgens v. McKasy

, 927 F.2d 1552, 1557 (Fed. Cir. 1991))

. To allege obviousness, Samsung presented at trial a prior art combination consisting of U.S. Patent No. 5,706,428 (“Boer”) as the primary reference and an article by Bhargav P. Upender and Philip J. Koopman, Jr. (“U pender”) as a secondary reference. According to Samsung, the DBPSK and PPM/DQPSK modulation methods di scussed in Boer are in “different fa milies,” and are ther efore different types of modulation methods under the district court’s construction

. Samsung’s expert, Dr. Goodman, testified that

, much like the QAM and PSK modulation methods that the district court specifically noted were in different families, Boer’s cited modulation

here is the one in force preceding the changes made by the America Invents Act. See Leahy

– Smith America Invents Act, Pub. L. No. 112

- 29, § 3(n), 125 Stat. 284, 293 (2011).REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 11

methods alter different sets of characteristics: PPM/DQPSK alters phase and position, but DBPSK alters only phase.
On the other hand, Rembrandt’s infringement e xpert, 2 Dr. Morrow, testified that , in his experience, mod ulation methods are in different families if they have “no overlapping characteristics.” J.A. 1083, 18:13

– 24. Re mbrandt therefore argued that PPM/DQPSK and DBPSK were not in different families because they both altered phase.
The jury was, of cours e, free to credit Dr. Morrow’s testimony and reject Dr. Goodman’s. MobileMedia Ideas LLC v. Apple Inc. , 780 F.3d 1159, 1168 (Fed. Cir.) (“[W]hen there is conflicting testimony at trial, and the evidence overall does not make only one finding on the point reasonable, the jury is permitted to make credibility determinations and believe the witness it considers more trustworthy.”)

, cert. denied

, 136 S. Ct. 270 (2015). Sa msung argues , however, that Dr. Morrow ’s testimony, and Rembrandt’s argument based on it, constitute an impro per reinterpretation of the court’s “different types” co nstruction. Samsung urges that modulation methods can have some overlapping characteristics and still be in different families, as required by the court’s construction. Samsung c ouches this argument as a claim construction

2 Rembrandt did not present a validity expert, and Samsung suggests it was improper for Rembrandt to rely on its infringement expert’s testimony for issues of valid ity. We disagree. Dr. Morrow’s testimony regarding whethe r two modulation techniques are in the same or different families is equally applicable to the infringement and validity issues. Samsung does not argue that the testimony was improperly admitted into evidence or that the testimony was admitted only for li mited purposes not including use for validity.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 12

issue. We disagree. As the district court correctly noted, any dispute regarding whether particular modulation techniques are in different famil i es is a factual one. “[A] sound claim construction need not alwa ys purge every shred of ambiguity

, ” including po tential ambiguity arising from “ the words a court uses to construe a claim term .” Eon Corp. IP Holdings v. Silver Spring Networks

, 815 F.3d 1314, 1318 (Fed. Cir. 2016) ( ci tation omitted)

, cert. denied , 137 S. Ct. 640 (2017)

. “S uch an endeavor could proceed ad infinitum .” Id.
Contrary to the way Samsung has cast the issue

, whether Boer meets the “ different types ” limitation under the court’s construction is a fact ual ques tion. P articularly with regard to o bviousness, it is a factual question going
to the scope a nd content of the prior art. See Graham v. John Deere Co. of Kan. City , 383 U.S. 1, 17 (1966). We review such factual questions underlying obviousness for substantial evidence. Circuit Check

, 795 F.3d at 1334

. Taken with Dr. Morrow’s testimony, the fact that Boer’s DBPSK and PPM/DQPSK modulation methods both alter phase is substantial evidence to support the jury’s pr esumed fact finding that Boer did not teach the “different types” limitation.
Substantial evidence likewise supports the jury’s pr esumed finding that there was no m otivation to combine Boer with Upender, as Rembrandt had argued. The ’580 and ’228 patents claim a master/slave communication protocol , whereas Boer discloses devices c ommunicating under the CSMA/CA protocol. 3 Samsung had argue d that combining Boer with Upender— which discusses and

compares several communication protocols , including

3 Upender defines CSMA/CA as Carrier Sense Mu ltiple Access with Collision Avoidance.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 13

master/slave 4

— would render Rembrandt’s patents obv ious. Rembrandt coun tered that one of skill in the art would not have been motivated to combine the references because Upender teaches away from substituting Boer’s CSMA/CA approach with mas ter/slave. Specifically

, Upender analyze s the tradeoffs between different co mmunication protocols based on various attributes, such as efficiency, robustness, and cost. Upender concludes that CSMA/CA is at least as good

— and most often, better

— than master/slave in every respect

. We conclude that t his disclosure provides substantial evidence to support the jury’s presumed finding that one of ordinary skill in the
art would not have been motivated to replace the CSMA/CA protocol already in place in Boer with a ma ster/slave arrangement as taught by Upender

. Samsung misses the mark by arguing that we must find a motivation to combine if we agree with it that there is not substantial evidence to support a finding that Upender teach es away from substituting CSMA/CA with master/slave. Whether a reference teaches away is do ctrinally distinct from wheth er there is no motivation to combine prior art references. See Apple Inc. v. Samsung Elecs. Co. , 839 F.3d 1034, 105 1 n.15 (Fed. Cir. 2016) (en banc) (identifying motivation to combine and teaching away as “two discrete bases” supporting district court’s d enial of JMOL); see also Star Sci., Inc. v. R.J. Reynolds Tobacco Co. , 655 F.3d 1364, 1374

– 75 (Fed. Cir. 2011)

. Surely a showing that a prior art reference teaches away from a given combination is evidence that one of skill in the art would not have been motivated to make th at combination to arrive at the claimed invention. But the absence of a formal teaching away in one reference does

4 Upender refers to master/slave as the “polling” protocol, but both parties agree that the two are synon ymous for the pur poses of this case.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 14

not automati cally establish a motivation to combine it with another reference in the same field

. As such , the jury did not need to find that Upender taught away from using master/slave in order to find that there would be no motivation to replace CSMA/CA in Boer with master/slave

. E ven if Upender “ does not teach away, its statements regarding users [’] prefe r[ences] . .

. are relevant to a finding regarding whether a skilled artisan would be motivated to combine ” Upender with Boer

. Apple , 839 F.3d at 105 1 n .15

. Therefore, because U pender strongly suggests that master/slave is inferior to CSMA/CA, substantia l evidence supports the jury’s pr esumed factual finding that one of skill in the art would not have been motivated to combine Boer with Upender’s teaching of master/slave

. The jury’s presumed findings that Boer does not teach the “different types” limitat ion and that one of skill in the
art would not have been motivated to combine Boer with Upender undermine Samsung’s obviousness challenge against all of the infringed independent claims. Because substantial evidence supports both of these findings, we need not address Samsung’s additional obviousness arguments for the infringed dependent claims. See In re Fine , 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“ Dependent claims are nonobvious under section 103 if the indepen dent claims from which they depend are n onobvious. ”). We therefore affirm the district court’s denial of JMOL that the infringed claims are invalid as obvious.

III. Damages
On appeal, Samsung also challenges the jury’ s royalty award of $15.7 million. S amsung first asserts that the district court er red in resolving certain damages -related evidentiary disputes

. Applying Fifth Circuit law, we review these rulings for an abuse of discretion

. i4i Ltd. P’ ship v. Microsoft Corp. , 598 F.3d 831, 852REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 15

(Fed. Cir. 2010) (applying Fifth Circuit law)

, aff’ d, 564 U.S. 91 (2011)

. First, Samsung argues that the district court should have excluded the testimony of Rembrandt’s damages expert, Mr. Weinstein, based on the allegedly flawed methodology he used to calculate his proposed reasonable royalty rate

. In an effort to determine the incremental value associated with implementing the infringing EDR functionality, Mr. Weinstein compared the prices of two Bluetooth chips Samsung purchased from Texas Instr uments

— one with EDR functionality and the other wit hout

. Af ter calculating the price premium Samsung had paid to procur e the EDR chips as compared to the non

EDR chips , Mr. Weinstein concluded that the reasonable royalty rate would be between 5 and 11 cents per infrin ging unit, resulting in a total damages range of $14.5

– $31.9 million.

We see no reversible error in the district court’ s den ial of Samsung ’ s motion to exclude Mr. Weinstein’s test imony. Samsung complains that the time periods that Mr. Weinstein chose to compare the two sets of chips were ones where Samsung purchased many more non

- EDR chips than EDR chips , making the relative cost of EDR chips artificially high due to mismatched economies of scale . Rembrandt responds that Mr. Weinstein testified in his deposition that the seller of the chips, Texas I nstruments, suggested to him that the data from these time periods were most suitable for his purposes . Re mbrandt also explains that Mr. Weinstein aptly focused on the earliest periods where significant sales of infringing chips were made because the added value of technology fades with time. We find these explanations plausible

, as they show that Mr. Weinstein’s royalty calculations were properly “ based on the incremental value that the paten ted invention adds to the end product. ” Ericss on, Inc. v. D

Link Sys., Inc. , 773 F.3d 1201, 1226 (Fed. Cir. 2014)

. We also note that while Mr. Weinstein compared the chip s forREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 16

a time period when the non

- EDR and EDR ch ip price differential was on the high end of the spectrum, Sa msung was free to cross

- examine Mr. Weinstein on this issue and the jury’s award of $15.7 million fell within the low end of Mr. Weinstein’s $ 14.5

– $31.9 million suggested damages range. Samsung also takes issue with Mr. Weinstein’s a ttribution of the chips’ cost differential solely to the add ition of the EDR functionality , which it asserts was not the only technological difference between the two sets of chips

. Rembrandt responds that all of the technical expert testimo ny in the case shows that the major diffe rence between the chips was the incorporation of EDR and that Samsung could have cross -examined Rembrandt’s damages expert on this point , but did not. Regardless, Samsung ’s criticism of Mr. Weinstein’s selected benchmark “ goes to evidentiary weight, not [its] admissibility. ” Apple Inc. v. Motorola, Inc

. , 757 F.3d 1286, 1319 (Fed. Cir. 2014)

, overruled on other grounds by Williamson v. Citrix Online, LLC

, 792 F.3d 1339 (Fed. Cir. 2015) (en banc)

. Ultimately, we do not find that the district court abused it s discretion in permitting Mr. Weinstein to use the methodology he adopted.

Mr. Weinstein used a settlement agreement Re mbrandt entered into with BlackBerry, which was a d efendant in this suit before settling, and a licensing agreement Rembrandt entered in to with Zhone Technol ogies, Inc., to confirm his proposed royalty rate

. On a ppeal, Samsung argues that it was improper for Mr. Weinstein to consider the BlackBerry agreement at all because it is not representative of an arms

- length agre ement between the parties and , therefore, is inappropriate for use in determining the reasonable royalty rate. We hold that the district court did not abuse its discretion in allow ing Mr. Weinstein to discuss the BlackBerry agre ement , as our cases allow relevant settlement agreements to be considered in determining a reasonable royalty rate.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 17

Summit 6, LLC v. Samsung Elecs. Co. , 802 F.3d 1283, 1299

– 1300 (Fed. Cir. 2015)

. The Black B erry settlement agreement was relevant here because it contained a license of the very patent s Samsung was found to i nfringe. We are also not convinced by Samsung’s argument that Mr. Weinstein should not have cited the agreement
at all because BlackBerry would not agree to a particular

per- sale allocation clause Rembrandt wanted to include in the agreement. Even though Black B erry did not agree to that express term, Mr. Weinstein explained his unde rstanding of the agreement to be that BlackBerry effectively paid Rembrandt a per

- sale amount consistent with his proposed royalty rate

, he was cross -ex amined on that point, and the jury was free to consider that testimony

. Samsung also avers that the district court improperly redacted pertinent information from the BlackBerry settlement agree ment and the Zhone licensing agreement that would have been necessary for the jury to understand the context of those agreements

. Particularly, Samsung
asserts that by redacting the agreements, the jury was unable to see how Mr. Weinstein a llocated payments made by BlackBerry and Zhone to arr ive at his proposed royalty rate. We disagree. It was within the district court’s discretion to redact information from these agre ements to prevent exposing confidential business info rmation and to avoid jury confusion , and we will not disrupt that decis ion as an abuse of discretion.
Finally, Samsung argues that substantial evidence does not support the jury’s damages award of $15.7 mi llion

. Because we have rejected Samsung’s challenges to Mr. Weinstein’s expert presentation on damages, and because the jury’s award fell within the $14.5

– $31.9 million range he suggested, we hold that substantial evidence supports the jury’s damages award as it relates to all of Samsung’s infringing sales. As will be discussed in the next section, however, we remand this case for the district court to consider in the first instance whetherREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 18

Samsung is liable for pre -notice damages due to Re mbrandt’s purported failure to mark certain licensed pro ducts. If the district court determines that Samsung is not liable for pre

- not ice damages, the jury’s damages award should be adjusted to strip out the royalties from pre

notice sales. The parties agreed at oral argument that this adjustment involves a pure accounting function that the district court could perform based on the sales data already in the record and without holding a new damages trial. See Oral Arg. at 21:11

– 22:41 (Samsung), 45:56

– 46:46 (Rembrandt), http://oralarguments.cafc.uscourts.gov /default.aspx?fl=2016

- 1729.mp3

. IV. Marking
Samsung argues that the district court erred in refu sing to bar Rembrandt’s recovery of pre -notice damages based on Rembrandt’s failure to mark products covered by a claim Rembrandt later disclaimed. 5 We agree with Samsung that Rembrandt cannot use disclaimer to avoid the marki ng requirement in 35 U.S.C. § 287 , and vacate the judgment of the district court as it relates to marking.

A.
Before trial, Samsung moved to limit Rembrandt ’s p otential damage s awar d based on its failure to mark products covered by previously- asserted claim 40 of the ’580

5 Rembrandt argues as a threshold matter that Samsung did not properly preserve this issue by raising it at trial and, thus, waived it on appeal. We disagree. The district court ruled on this issue as a matter of law before trial, and Samsung continually objected to that legal ruling before the district court. Therefore, the issue has not been waived and is ripe for appeal. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp. , 790 F.3d 1329, 1338 (Fed. Cir. 2015), cert. denied , 136 S. Ct. 1226 (2016)

.REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 19

patent . Specifically, Rembrandt had licensed the ’580 patent to Zhone Technologies, Inc.

, and Samsung alleged that Zhone sold unmarked products embodying asserted claim 40 of the ’580 patent. The license agreement between Rembrandt and Zhone did not require Zhone to mark its products with the patent number

. Pursuant to the patent marking statute, 35 U.S.C. § 287, Sam sung sought to limit Rembrandt’s damages to those incurred after Samsung received notice of Rembran dt’s pa tent s , which , according to Samsung , occurred when Rembrandt filed its complaint. Eight days later

, Rembrandt wit hdrew claim 40 from its infringement allegations and filed

a statutory disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) , disclaiming claim 40 in the U.S. Patent and Trademark Office

. The district court denied Samsung’s motion to bar Rembrandt ’s recovery of pre -notice damages based on Rembrandt’ s disclaimer of claim 40

. The court accepted Rembrandt’s argument that any prior obligation to mark products embodying claim 40 vanished once it disclaimed claim 40

. A dopt ing the M agistrate J udge ’s recommend ation , the D istrict J udge relied on the proposition that “[u]nder Federal Circuit precedent, a disclaimed patent claim is treated as if it never existed.” J.A. 337 , 342 (citing Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc. , 655 F.3d 1291 (Fed. Cir. 2011) ).

B.
The patent marking statute provides that “[p] atentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented” by marking the article in a method provided by the statute. 35 U.S.C § 287(a). Marking under the statute is permissive, not mandatory. While permissive, there is a consequence if the patent owner chooses not toREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 20

mark: “ In the event of failure so to mark, no damages shall be recovered by the patentee in any action for i nfringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for i nfringement occurring after such notice. ” Id. “ A licensee who makes or se lls a patented article does so ‘for or under’ the patentee, thereby limiting the patent ee’ s damage recovery when the patented article is not marked. ” A msted Indus. Inc. v. Buckeye Steel Castings Co. , 24 F.3d 178, 185 (Fed. Cir. 1994) (citing Devices for Med

. , Inc. v. Boehl

, 822 F.2d 1062, 1066 (Fed. Cir. 1987))

. Consistent with Supreme Court precedent, we have repeatedly emphasized that the marking statute serves to protect the public. The marking statute protects the public’s ability to exploit an unmarked product ’s features without liability for damages until a patentee provides either constructive notice through marking or actual notice. Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

, 489 U.S. 141, 162 (1989) (“ The notice requirement is designed ‘ for the inform ation of the public, ’ [and]

. . . [t] he public may rely upon the lack of notice in exploiting shapes and designs accessible to all. ” (quoting Wine R y. Appli ance Co. v. Enter. R y. Equi p. Co.

, 297 U.S. 387, 397 (1936) )). The essence of “ the marking statute is to e ncourage the patentee to give notice to the public of the patent.” Crown Packaging Tech., Inc. v. Rexam Beverage Can Co. , 559 F.3d 1308, 1316 (Fed. Cir. 2009) (quoting Am. Med. Sys., Inc. v. Med. Eng’g Corp.

, 6 F.3d 1523 , 1538 (Fed. Cir. 1993)). M ore specifically, “[t]he marking sta tute serves three related purposes: 1) helping to avoid innocent infringement; 2) encouraging patentees to give notice to the public that the article is patented; and 3) aiding the public to identify whether an article i s patented. ” Nike, Inc. v. Wal

- Mart Stores, Inc. , 138 F.3d 1437, 1443 (Fed. Cir. 1998) (internal citations omitted).REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 21

Rembrandt’s position

, adopted by the district court, effectively provides an end

- run around the marking
statute and is irreconcilable wi th the statute’s purpose

. Allowing Rembran d t to use disclaimer to avoid the cons equence of its failure to mark under mine s the marking statute’s public notice function

. In denying Samsung ’ s motion, the district court relied on the proposition that a disclaimed patent claim is treated as if it “had never existed in the patent ,” Guinn v. Kopf , 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona P ublix Theatres, Inc. v. Am. Tri– Ergon Corp.

, 294 U.S. 477, 492 (1935)), and allowed Rembrandt’ s disclaimer to retroactively excuse its failure to mark. But while we have held that a disclaimer relinquishes the rights of the patent owner, we have n ever held that the patent owner’ s disclaimer relinquishes the rights of the public. Indeed, our precedent and that o f other courts have not readily extended the effects of disclaimer to situations where others besides the patentee have an interest that relates to the relinquished claims

. See Kearney & Trecker Corp. v. Cincinnati Milacron Inc. , 562 F.2d 365, 372 (6th Ci r. 1977) (recognizing accused infringer’s inequit able conduct defense against original patent claims after reissue claims secured through inequitable conduct were disclaimed ); Nat’ l Semiconductor Corp. v. Linear Tech. Corp. , 703 F. Supp. 845, 850 (N.D. Cal. 1988) (allowing antitrust and patent misuse counterclaims premised on disclaimed claims to proceed)

. Cf. Guinn , 96 F.3d at 1422 (holding disclaimer of an allegedly interfering claim did not divest the Board of jurisdiction over interference proceeding) . A s our marking cases make clear, the mar king statute’s focus is not only the rights of the patentee, but the rights of the public. See

, e.g. , Crown Packaging

, 559 F.3d at 1316; Nike , 138 F.3d at 1443; Bonito Boats

, 489 U.S. at 162. Considering these rights held by the public, w e hold that disclaimer can not serve to retroa c-REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 22

tively dissolve the § 287(a) marking requirement for a patentee to collect pre -notice damages.

C.
Separate from its disclaimer argument, Rembrandt also argued to the district court that the marking statute should attach on a claim

- by

- claim, rather than on a patent

- by

- patent
, basis. Applying Rembrandt’s claim

- by

claim approach in this case, for example, would permit Rembrandt to recover pre -notice damages for S amsung’s infringement of claims other than claim 40, which is the only claim that Samsung alleg es the unmarked Zhone product embodied

. Samsung disagreed with Rembrandt’ s position at the district court , arguing that the marking statute attaches on a patent

- by

- patent basis. Put another

way , Samsung argued that because Rembrandt’s licensee Zhone sold a product embodying one claim of the ’580 patent (claim 40) , Rembrandt may not recover pre -notice damages for any infringed claim of the patent.

The M agistrat e J udge, after deciding Samsung’s m otion to limit damages on the disclaimer ground , expressly declined to rule on this theory

, as did the District J udge

. Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. , No. 2:13

- CV

- 213

- JRG

- RSP, 2015 WL 627971, at *1, *3 & n.4 (E.D. Tex. Feb. 9, 2015)

. On appeal, Rembrandt did not present this argument as an alternative basis for affir ming the district court’s marking decision. Oral Arg. at 45:04

– 45:55, http://oralarguments.cafc.uscourts.gov/ default.aspx?fl=2016

- 1729 .mp3

. Rembrandt did concede, however, that the Zhone product practices claim 40, and thus that question is no longer a “live dis pute ” in this

case. Id. at 43:38

– 45:43.
The patent

- by

- patent versus claim

- by

- claim marking dispute between the parties raises a novel legal issue not squarely addressed by our past decisions . Although Rembrandt did not rais e this issue on appeal, it has not waived this argument

. See WesternGeco L.L.C. v. IONREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 23

Geophysical Corp.

, 837 F.3d 1358, 1364 n.3 (Fed. Cir. 2016) ( holding arguments are not waived if they involve issues both not decided by district court and “properly considered moot” until reversal of another district court ruling). But a s w e have remarked in earlier

cases regarding legal issues not addressed by the partie s: It is tempting to explore these unanswered que stions, both because they are interesting and b ecause the parties and the trial court might benefit from early answers. But, that is a temptation to be resisted. None are questions directly raised in this appeal, and the parties have not briefed or argued them. We thus leave to the trial court in the first instance the responsibility to address such questions

. . . . Cardiosom, L.L.C. v. United States

, 656 F.3d 1322, 1329 (Fed. Cir. 2011) ; see also In re K atz Interactive Call Pr ocessing Patent Litig. , 639 F.3d 1303, 1321 (Fed. Cir. 2011) (remanding legal issue not briefed on appeal for district court to address on remand )

. We therefore remand to the district court to address in the first instance whether the patent marking statute should attach on a patent

- by

patent or claim

- by

- claim basis.

C ONCLUSION We have considered Samsung’s remaining arguments and find them unpersuasi ve. Accordingly , we affirm the challenged portion of the district court’s claim constru ction order and the district court’s denial of Samsung’s JMOL motions. We vacate the district court’s denial of Samsung’s motion to limit damages, and remand that issu e for proceedings consistent with this opinion.

AFFIRM ED

- IN

- PART, VACATE D- IN

- PART, AND REMANDEDREMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 24

C OSTS Each party shall bear its own costs.