United States Court of Appeals 

for the Federal Circuit ______________________ 

REMBRANDT WIRELESS TECHNOLOGIES, LP,

Plaintiff-Appellee

v.

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG 

ELECTRONICS AMERICA, INC., SAMSUNG 

TELECOMMUNICATIONS AMERICA, LLC,

Defendants-Appellants

SAMSUNG AUSTIN SEMICONDUCTOR, L.L.C., 

RESEARCH IN MOTION CORPORATION, 

RESEARCH IN MOTION LTD.,

Defendants

______________________ 

2016-1729

______________________ 

Appeal 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 

______________________ 

MICHAEL F. HEIM, Heim, Payne & Chorush, LLP, 

Houston, TX, argued for plaintiff-appellee. Also represented by ERIC J. ENGER, MIRANDA Y. JONES; DEMETRIOS 

ANAIPAKOS, AMIR H. ALAVI, JAMIE ALAN AYCOCK, ALISA A.
2 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

LIPSKI, Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing 

PC, Houston, TX. 

JESSE J. JENNER, Ropes & Gray LLP, New York, NY, 

argued for defendants-appellants. Also represented by 

DOUGLAS HALLWARD-DRIEMEIER, Washington, DC; 

GABRIELLE E. HIGGINS, East Palo Alto, CA; BRIAN P.

BIDDINGER, Quinn Emanuel Urquhart & Sullivan, LLP, 

New York, NY. 

______________________ 

Before TARANTO, CHEN, and STOLL, Circuit Judges.

STOLL, Circuit Judge. 

A jury found that Samsung infringed Rembrandt’s asserted patents, which the jury also found not invalid over 

prior art cited by Samsung. The jury awarded Rembrandt 

$15.7 million 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 court’s denial of JMOL, as well as the district 

court’s claim construction order and an order denying 

Samsung’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, however, 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.

BACKGROUND

Rembrandt Wireless Technologies, LP, sued Samsung 

Electronics 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 that 
REMBRANDT 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 facilitate communication among a plurality of 

modems in a network, which have heretofore been incompatible.” ’580 patent col. 2 ll. 17–20. The patents 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 

patents 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 modulation 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 communicating according to a master/slave relationship in 

which a slave communication from a slave to a 

master occurs in response to a master communication from the master to the slave, the device 

comprising:

a transceiver, in the role of the master according to the master/slave relationship, 

for sending at least transmissions modulated using at least two types of modula-
4 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

tion methods, wherein 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 

transmission sequences, wherein each 

group of transmission sequences is structured 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 payload 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 sequences:

the first information for said at least one 

group of transmission sequences comprises a first sequence, in the first portion and 

modulated according to the first modulation method, wherein the first sequence 

indicates an impending change from the 

first modulation method to the second 

modulation method, and

the second information for said at least 

one group of transmission sequences comprises a second sequence that is modulated 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 after 
REMBRANDT 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 incorporating the Bluetooth enhanced data rate (“EDR”) 

standard infringed its patents. After a five-day trial, the 

jury found that Samsung infringed Rembrandt’s patents, 

and that the patents were valid over the prior art Samsung 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 final judgment.

Samsung appeals, and we have jurisdiction under 

28 U.S.C. § 1295(a)(1).

DISCUSSION

 Samsung 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 damages; 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. Samsung 
6 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

does not appeal the jury’s finding of infringement. We 

address each issue in turn.

I. Claim Construction 

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 modulation methods and the QAM

[quadrature amplitude modulation] family of modulation 

methods.” Claim Construction Order, 2014 WL 3385125, 

at *15. We review claim constructions 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 the prosecution history. During prosecution of 

the ’580 parent patent, the applicant inserted the “different types” limitation into its claims after the examiner 

had already issued a notice of allowance. In the applicant’s contemporaneous remarks to the examiner, he 

indicated that he inserted the limitation into the independent claims to “more precisely claim the subjectmatter.” J.A. 2234. The applicant explained: 

Applicant has further amended [its] claims . . . 

with additional recitations to more precisely claim 

the subject matter. For example, the 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 QAM 

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. Samsung 

contends that the plain claim language requires only that 

the different types of modulation methods be “incompatible” with one another. According to Samsung, the claims 

cover devices that modulate signals using the same family 

of modulation methods (for example, FSK modulation), 

but operating with different amplitudes between modems. 

Samsung asserts that, because modulating using different 

amplitudes makes the devices incompatible, this arrangement embodies “different types” of modulation. 

We disagree with Samsung and adopt the construction 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 regarding the meaning of the “different 

types” limitation is the descriptive statement the applicant made to the examiner when he inserted the limitation into the claims. Samsung’s arguments to the 

contrary do not 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.,” which Samsung argues 

introduces an exemplary item in a set. A patentee’s use of 

“i.e.,” in the intrinsic record, however, is often definitional. 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.” 
8 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

On a related note in the context of disavowal, we have 

explained that “[w]hether a statement to the PTO that 

includes ‘i.e.’ constitutes a clear and unmistakable disavowal 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 used “i.e.” to define the “different types” limitation because Rembrandt used it to 

describe 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 internally inconsistent, 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 definitional here would create an internal inconsistency with 

claim 43, which recites that “at least one of said modulation methods implements phase modulation.” Samsung 

asserts that because claim 43 refers to “at 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 43 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. In 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 differenti-
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 specification 

repeatedly refers to different types of modulation methods, but it does not provide examples of what would 

constitute different methods or otherwise define this 

limitation. 

Samsung also mentions that in related IPR proceedings, the Patent Trial and Appeal Board adopted the 

broader construction Samsung argues for here. As Samsung admits, however, this construction does not bind our 

court. And the 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 Rembrandt’s patents unpatentable over the prior art, which is 

ultimately what Samsung seeks under its proposed construction. 

We therefore agree with the construction entered by 

the district court that the term “modulation method [] of a 

different type” means “different families of modulation 

techniques, such as the FSK family of modulation methods 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 applies 

 
10 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

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., 523 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.” Cambridge Toxicology 

Grp. v. Exnicios, 495 F.3d 169, 179 (5th Cir. 2007) (quoting Fed. R. Civ. P. 50(a)(1)). When a jury returns a general verdict regarding obviousness, 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 undisturbed 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. (“Upender”) as a secondary reference. According to Samsung, 

the DBPSK and PPM/DQPSK modulation methods discussed in Boer are in “different families,” and are therefore 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 expert,2 Dr. Morrow, testified that, in his experience, modulation methods are in different families if they have “no 

overlapping characteristics.” J.A. 1083, 18:13–24. Rembrandt therefore argued that PPM/DQPSK and DBPSK 

were not in different families because they both altered

phase. 

The jury was, of course, 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). Samsung argues, however, that Dr. Morrow’s testimony, and 

Rembrandt’s argument based on it, constitute an improper reinterpretation of the court’s “different types” construction. Samsung urges that modulation methods can 

have some overlapping characteristics and still be in 

different families, as required by the court’s construction. 

Samsung couches 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 validity. We disagree. Dr. Morrow’s testimony regarding 

whether 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 limited purposes not 

including use for validity.

 
12 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

issue. We disagree. As the district court correctly noted, 

any dispute regarding whether particular modulation 

techniques are in different families is a factual one. “[A]

sound claim construction need not always purge every 

shred of ambiguity,” including potential 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) (citation omitted), 

cert. denied, 137 S. Ct. 640 (2017). “Such 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 factual question. Particularly

with regard to obviousness, it is a factual question going 

to the scope and 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 presumed fact finding that Boer did not teach the “different 

types” limitation.

Substantial evidence likewise supports the jury’s presumed finding that there was no motivation to combine 

Boer with Upender, as Rembrandt had argued. The ’580 

and ’228 patents claim a master/slave communication 

protocol, whereas Boer discloses devices communicating 

under the CSMA/CA protocol.3 Samsung had argued that 

combining Boer with Upender—which discusses and 

compares several communication protocols, including 

3 Upender defines CSMA/CA as Carrier Sense Multiple Access with Collision Avoidance.

 
REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS 13

master/slave4—would render Rembrandt’s patents obvious. Rembrandt countered 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 master/slave. Specifically, 

Upender analyzes the tradeoffs between different communication 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 this 

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 master/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 teaches away from substituting CSMA/CA with 

master/slave. Whether a reference teaches away is doctrinally distinct from whether there is no motivation to 

combine prior art references. See Apple Inc. v. Samsung 

Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en 

banc) (identifying motivation to combine and teaching 

away as “two discrete bases” supporting district court’s 

denial 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 that

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 synonymous for the purposes of this case. 

 
14 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

not automatically 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. Even if Upender “does not teach away, 

its statements regarding users[’] prefer[ences] . . . are 

relevant to a finding regarding whether a skilled artisan 

would be motivated to combine” Upender with Boer. 

Apple, 839 F.3d at 1051 n.15. Therefore, because Upender strongly suggests that master/slave is inferior to 

CSMA/CA, substantial evidence supports the jury’s presumed 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” limitation 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 independent claims from which they depend are nonobvious.”). 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. Samsung first asserts that the 

district court erred 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, 852 
REMBRANDT 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 Instruments—one with EDR functionality and the other without. After calculating the price premium Samsung had 

paid to procure the EDR chips as compared to the nonEDR chips, Mr. Weinstein concluded that the reasonable 

royalty rate would be between 5 and 11 cents per infringing unit, resulting in a total damages range of $14.5–

$31.9 million. 

We see no reversible error in the district court’s denial of Samsung’s motion to exclude Mr. Weinstein’s testimony. 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 Instruments, suggested to him that the data from these 

time periods were most suitable for his purposes. Rembrandt 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 patented invention adds to the end product.” Ericsson, Inc. v. DLink Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). We 

also note that while Mr. Weinstein compared the chips for 
16 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

a time period when the non-EDR and EDR chip price 

differential was on the high end of the spectrum, Samsung 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 attribution of the chips’ cost differential solely to the addition 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 testimony in the case shows that the major difference 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 

its discretion in permitting Mr. Weinstein to use the 

methodology he adopted.

Mr. Weinstein used a settlement agreement Rembrandt entered into with BlackBerry, which was a defendant in this suit before settling, and a licensing 

agreement Rembrandt entered into with Zhone Technologies, Inc., to confirm his proposed royalty rate. On appeal, 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 agreement 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 

allowing Mr. Weinstein to discuss the BlackBerry agreement, 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 BlackBerry settlement 

agreement was relevant here because it contained a 

license of the very patents Samsung was found to infringe. 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 BlackBerry did not agree to 

that express term, Mr. Weinstein explained his understanding of the agreement to be that BlackBerry effectively paid Rembrandt a per-sale amount consistent with his 

proposed royalty rate, he was cross-examined 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 agreement 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 allocated payments 

made by BlackBerry and Zhone to arrive at his proposed 

royalty rate. We disagree. It was within the district 

court’s discretion to redact information from these agreements to prevent exposing confidential business information and to avoid jury confusion, and we will not 

disrupt that decision as an abuse of discretion. 

Finally, Samsung argues that substantial evidence 

does not support the jury’s damages award of $15.7 million. 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 whether 
18 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

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

liable for pre-notice damages, the jury’s damages award 

should be adjusted to strip out the royalties from prenotice 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 refusing 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 marking 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 potential damages award 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, Samsung 

sought to limit Rembrandt’s damages to those incurred 

after Samsung received notice of Rembrandt’s patents, 

which, according to Samsung, occurred when Rembrandt 

filed its complaint. Eight days later, Rembrandt withdrew 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. Adopting the Magistrate Judge’s recommendation, the District Judge 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 to 
20 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

mark: “In the event of failure so to mark, no damages 

shall be recovered by the patentee in any action for infringement, 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 infringement occurring after such notice.” Id. “A licensee 

who makes or sells a patented article does so ‘for or under’

the patentee, thereby limiting the patentee’s damage 

recovery when the patented article is not marked.” Amsted 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 information of the public,’ [and] . . . [t]he 

public may rely upon the lack of notice in exploiting 

shapes and designs accessible to all.” (quoting Wine Ry. 

Appliance Co. v. Enter. Ry. Equip. Co., 297 U.S. 387, 397

(1936))). The essence of “the marking statute is to encourage 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)). More specifically, “[t]he marking statute 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 is 

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 with the statute’s purpose. 

Allowing Rembrandt to use disclaimer to avoid the consequence of its failure to mark undermines 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 

Publix 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 never held that the patent owner’s 

disclaimer relinquishes the rights of the public. Indeed, 

our precedent and that of 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 Cir. 1977) (recognizing accused infringer’s inequitable 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). As our marking cases make clear, the marking 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, we hold that disclaimer cannot serve to retroac-
22 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

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-byclaim approach in this case, for example, would permit 

Rembrandt to recover pre-notice damages for Samsung’s 

infringement of claims other than claim 40, which is the 

only claim that Samsung alleges 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 Magistrate Judge, after deciding Samsung’s motion to limit damages on the disclaimer ground, expressly 

declined to rule on this theory, as did the District Judge. 

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 affirming 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 dispute” 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 raise this issue on appeal, it has not 

waived this argument. See WesternGeco L.L.C. v. ION 
REMBRANDT 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 as we have remarked in earlier 

cases regarding legal issues not addressed by the parties: 

It is tempting to explore these unanswered questions, both because they are interesting and because 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 Katz Interactive Call Processing 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-bypatent or claim-by-claim basis.

CONCLUSION

We have considered Samsung’s remaining arguments 

and find them unpersuasive. Accordingly, we affirm the 

challenged portion of the district court’s claim construction 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 

issue for proceedings consistent with this opinion.

AFFIRMED-IN-PART, VACATED-IN-PART, AND

REMANDED
24 REMBRANDT WIRELESS v. SAMSUNG ELECTRONICS

COSTS

Each party shall bear its own costs.