United States Court of Appeals 

for the Federal Circuit ______________________ 

SSL SERVICES, LLC,

Plaintiff-Appellant,

v.

CITRIX SYSTEMS, INC. AND CITRIX ONLINE, LLC,

Defendants-Cross-Appellants.

______________________ 

2013-1419, -1420

______________________ 

Appeals from the United States District Court for the 

Eastern District of Texas in No. 08-CV-0158, Judge J. 

Rodney Gilstrap.

______________________ 

Decided: October 14, 2014

______________________ 

GREGORY G. GARRE, Latham & Watkins LLP, of 

Washington, DC, argued for plaintiff-appellant. With him 

on the brief were ADAM M. GREENFIELD and KATYA S.

CRONIN. Of counsel on the brief were MEGAN S.

WOODWORTH and THOMAS D. ANDERSON, Dickstein 

Shapiro LLP, of Washington, DC. 

J. ANTHONY DOWNS, Goodwin Procter LLP, of Boston, 

Massachusetts, argued for defendants-cross-appellants. 

With him on the brief were LANA S. SHIFERMAN; and 

WILLIAM M. JAY, of Washington, DC. Of counsel on the 

brief were ERICA D. WILSON, Davis Wright Tremaine LLP, 
2 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

of San Francisco, California; and BLAIR MARTIN JACOBS, 

McDermott Will & Emery LLP, of Washington, DC, and 

LEIGH JOHN MARTINSON, of Boston, Massachusetts. 

______________________ 

Before LOURIE, LINN, and O’MALLEY, Circuit Judges.

O’MALLEY, Circuit Judge.

This patent case involves multi-tier virtual private 

networks. SSL Services, LLC (“SSL”) asserted that Citrix 

Systems, Inc. and Citrix Online, LLC (collectively, “Citrix”) infringed claims contained in U.S. Patent Nos. 

6,061,796 (“the ’796 Patent”) and 6,158,011 (“the ’011 

Patent”). The district court held a Markman hearing and 

construed several terms raised on appeal. After a jury 

trial, the jury found that Citrix willfully infringed claims 

2, 4, and 7 of the ’011 Patent, and that those claims were 

not shown to be invalid. The jury also found that Citrix

did not infringe claim 27 of the ’796 Patent. The district 

court subsequently denied motions for judgment as a 

matter of law (“JMOL”) and a new trial regarding noninfringement of claim 27 of the ’796 Patent, willful infringement of the asserted claims of the ’011 Patent, and 

invalidity with respect to those same claims. The district 

court also denied SSL prevailing party status, awarded 

prejudgment interest, and precluded the jury from hearing certain testimony. 

SSL appeals the district court’s denial of a new trial 

on non-infringement of claim 27 of the ’796 Patent, arguing that the district court erred in its claim construction

of the terms “intercepting” and “destination address,” and 

in imposing a set step order requirement for the claim. 

SSL also appeals the district court’s finding that it was

not the prevailing party in the litigation overall. Citrix

cross-appeals the district court’s denial of JMOL of no 

willful infringement and invalidity of claims 2, 4, and 7 of 

the ’011 Patent. Citrix further contests the district court’s
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 3

award of prejudgment interest and asserts that certain of 

its evidentiary rulings justify a new trial on willful infringement and damages. 

Based on the “destination address” limitation, we affirm the denial of a new trial on non-infringement of claim 

27 of the ’796 Patent. Furthermore, we affirm the district 

court’s denial of JMOL requesting a finding of no willful 

infringement and invalidity of the asserted claims of 

the ’011 Patent. We also affirm the denial of a new trial 

based on the district court’s evidentiary rulings, and 

affirm the award of prejudgment interest. Finally, we 

vacate the district court’s denial of prevailing party status 

to SSL because we find that SSL is the prevailing party, 

and remand for an assessment of costs and fees.

I. BACKGROUND

A. The SSL Patents

SSL acquired the ’796 Patent and ’011 Patent from VOne, Inc. (“V-One”) in June 2005. Both patents are titled 

“Multi-Access Virtual Private Network.” ’796 Patent, at 

[54] (filed August 26, 1997); ’011 Patent, at [54] (filed 

February 26, 1999). The ’011 Patent is a continuation of 

the ’796 Patent. The patents contain virtually identical 

specifications. The key difference is that the claims of 

the ’011 Patent are directed to allowing users to establish 

encrypted connections with a server, whereas the claims 

of the ’796 Patent are directed to allowing users to establish encrypted communications with another client computer.

According to the ’796 Patent, a Virtual Private Network (“VPN”) is “a system for securing communications

between computers over an open network such as the 

Internet.” ’796 Patent col. 1 ll. 14–16. The asserted 

patents have the same abstract, which states:

A virtual private network for communicating between a server and clients over an open network 
4 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

uses an applications level encryption and mutual 

authentication program and at least one shim positioned above either the socket, transport driver 

interface, or network interface layers of a client 

computer to intercept function calls, requests for 

service, or data packets in order to communicate

with the server and authenticate the parties to a 

communication and enable the parties to the 

communication to establish a common session 

key. Where the parties to the communication are 

peer-to-peer applications, the intercepted function 

calls, requests for service, or data packets include 

the destination address of the peer application, 

which is supplied to the server so that the server 

can authenticate the peer and enable the peer to 

decrypt further direct peer-to-peer communications. 

’011 Patent, at [57]; ’796 Patent, at [57]. 

The claimed methods and system require an authentication and encryption program that encrypts computer 

files using a “session key”1 before transmitting data over 

the Internet. Once the other client computer has received 

the encrypted files, it can decrypt those files using the 

same session key. This approach allows the transfer of 

encrypted data directly from one client computer to another client computer over the open network. 

For the ’796 Patent, only claim 27 is at issue. It

states:

A method of carrying out communications over a 

multi-tier virtual private network, said network 

1 The parties agreed that a “session key” is “a sequence of bits that is input into an encryption algorithm 

to encrypt data for a session.” SSL Servs., LLC v. Citrix 

Sys., Inc., 816 F. Supp. 2d 364, 372 (E.D. Tex. 2011).

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 5

including a server and a plurality of client computers, the server and client computers each including means for transmitting data to and 

receiving data from an open network, comprising 

the steps of: 

intercepting function calls and requests for service 

sent by an applications program in one of said client computers to a lower level set of communications drivers;

causing an applications level authentication and 

encryption program said one of said client computers to communicate with the server, generate a 

session key, and use the session key generated by 

the applications level authentication and encryption program to encrypt files sent by the applications program before transmittal over said open 

network;

intercepting a destination address during initialization of communications between said one of said 

client computers and a second of said client computers on said virtual private network;

causing said applications level authentication and 

encryption program to communicate with the 

server in order to enable the applications level authentication and encryption program to generate 

said session key;

transmitting said destination address to said 

server;

causing said server to communicate with the second of said two client computers;

enabling said second of said two client computers 

to recreate the session key;
6 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

causing said authentication software to encrypt 

files to be sent to the destination address using 

the session key; and

transmitting the encrypted files directly to the 

destination address.

’796 Patent col. 20 l. 49–col. 22 l. 5. 

In the claimed method, a first client computer runs an 

application that attempts to open a communication link 

with a second client computer by making “function calls 

and requests for service”2 to a “lower level set of communication drivers.” The patents describe three basic layers: 

(1) the applications level, (2) the transport driver interface 

(“TDI”) layer, and (3) the network driver interface (“NDI”) 

layer. The patents reference the TDI and NDI layers 

together as the lower level set of communication drivers. 

Before the communication drivers can execute the 

function call, a software module on the first client computer intercepts the function call. The specification 

explains that this separate software module is called a 

“shim.” After the shim intercepts the function call, an 

“authentication and encryption program” initiates communication with the authentication server and generates 

a session key that is used to encrypt data. For the two 

client computers to communicate, the “shim” must also 

intercept the “destination address” of the second client 

computer and transmit it to the server. The server then 

communicates with the second client computer, and 

provides information that allows the second client computer to recreate the previously generated session key. 

2 An example of a function call or request for service is an instruction to “connect” to another client computer. Appellee Br. 12.

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 7

The first client computer uses the session key to encrypt files. The encrypted files are then transmitted 

directly to the second client computer over the open 

network without having to route the communications 

through the authentication server. The second client 

computer can decrypt the encrypted files using the recreated session key.

For the ’011 Patent, claims 2, 4, and 7 are at issue on 

appeal. Claim 2 of the ’011 Patent is directed to a multitier VPN. Claim 4 of the ’011 Patent is directed to computer software for installation on a client computer of a 

multi-tier VPN. Claim 7 of the ’011 Patent is directed to a 

method of carrying out communications over a multi-tier 

VPN. All three claims include a limitation of “encrypting 

files,” which is the only limitation at issue on appeal for 

the ’011 Patent.

Before SSL acquired the asserted patents from V-One, 

Citrix and V-One had entered into a joint development 

and licensing agreement that lasted from 2000 to 2003

(“V-One Agreements”). During this time, Citrix also 

considered V-One as a potential target for acquisition, 

and V-One provided Citrix with access to its technology. 

The purpose of the V-One Agreements was to rebrand and 

distribute V-One’s SmartGate software. While the V-One 

Agreements incorporated the asserted patents, the 

SmartGate software did not use the ’011 Patent’s claimed

technology. 

B. The Citrix Accused Products 

1. The GoTo Products

SSL asserted that Citrix’s GoTo Products infringe 

claim 27 of the ’796 Patent. In 2004, Citrix acquired 

ExpertCity.com. Citrix rebranded ExpertCity.com’s
8 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

products as GoToAssist, GoToMyPC, and GoToMeeting3

(collectively, “GoTo Products”). The GoTo Products allow 

direct encrypted communication between two computers 

while bypassing a broker server that cannot access the 

encrypted data. All of the GoTo Products use a broker 

server to initialize the communication and that server 

carries out communications between the computers. 

GoToMyPC is a desktop virtualization product that 

creates a VPN to allow a user to securely access a computer from another remote computer. A user can access 

the host computer from a remote computer by transmitting to the broker a request to connect to a client computer based on an internal identification number, e.g., 

MachineNameKey or QuickConnectID. The broker then 

identifies the location of the host computer on the GoToMyPC network based on the MachineNameKey or 

QuickConnectID. Once the broker identifies the requested host computer, the broker communicates with the host 

and remote computer to allow the two computers to 

establish a secure session to exchange encrypted data. 

GoToAssist is a remote assistance product that allows 

an individual, such as a customer support agent, to access 

a customer’s computer securely through a VPN. Although

the customer initially requests assistance, the broker 

forwards that request along with an associated SessionID 

to available customer support agents so that they may 

assist the customer. Once a customer support agent 

accepts the help session request, the broker uses the 

SessionID to generate a session key and identify the 

customer’s computer to allow communication through a 

VPN.

3 GoToMeeting is materially the same as GoToWebinar and GoToTraining. Joint Appendix (“J.A.”) 

4017. Therefore, we address all of these products together 

as part of GoToMeeting.

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 9

GoToMeeting is a virtual meeting product that allows 

computers to participate in online meetings. When a 

meeting is scheduled, the meeting organizer’s computer 

communicates with a broker and obtains a MeetingID. 

The MeetingID is a short number or link that allows other 

participants to join the meeting. The broker uses this 

MeetingID to identify participating computers and then 

sends information securely to the participants’ computers 

through a server.

2. The Access Gateway and Netscaler Products

Access Gateway and Netscaler are software products 

that enable a computer to communicate securely with a 

remote server. These products were developed independently by third parties and acquired by Citrix in late 

2004 and 2005. On appeal, Citrix does not dispute that 

Access Gateway and Netscaler include all the limitations 

of the asserted claims of the ’011 Patent, except for the 

“encrypt files” limitation. 

C. Procedural Background

In April 2008, SSL filed suit in the United States District Court for the Eastern District of Texas alleging that 

Citrix’s GoTo Products infringe claim 27 of the ’796 Patent. In May 2009, SSL amended its complaint to assert

infringement of claims 2, 4, and 7 of the ’011 Patent by 

Citrix’s Access Gateway and Netscaler Products. 

On May 18, 2011, the district court held a Markman 

hearing. SSL Servs., LLC v. Citrix Sys., Inc., 816 F. Supp. 

2d 364, 366 (E.D. Tex. 2011). Relevant to this appeal, the 

district court construed the term “destination address” as 

used in claim 27 of the ’796 Patent as “the network address of a computer or server.” Id. at 385.4 The court also 

4 The parties also dispute the propriety of the trial 

court’s construction of the term “intercepting” as used in 

 
10 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

construed the term “encrypt files” as used in claims 2, 4, 

and 7 of the ’011 Patent as “to render a set of data used by 

a program unintelligible without decrypting.” Id. at 384. 

After a jury trial, the jury found that: (1) Citrix’s GoTo Products did not infringe claim 27 of the ’796 Patent; 

(2) Citrix’s Access Gateway and Netscaler products directly and indirectly infringed claims 2, 4, and 7 of the ’011 

Patent; (3) Citrix willfully infringed the asserted claims of 

the ’011 Patent; and (4) Citrix had not proved that the 

asserted claims of the ’011 Patent were invalid. Consequently, the jury awarded $10 million in damages. 

SSL then filed a motion for: (1) prejudgment interest, 

(2) post-judgment interest, (3) enhanced damages, and (4) 

entry of final judgment. Citrix filed a motion for entry of 

final judgment and an award of prevailing party status. 

The district court granted-in-part and denied-in-part 

SSL’s motion by: (1) awarding prejudgment interest, (2) 

awarding post-judgment interest as agreed by the parties, 

(3) awarding an additional $5 million in enhanced damages for a total of $15 million in damages, and (4) denying 

prevailing party status to SSL and refusing to impose

costs on that ground. Addressing Citrix’s motion, the 

district court entered a Final Judgment on September 17, 

2012, but denied Citrix’s request for prevailing party 

status and costs. 

The parties subsequently filed post-trial motions. The 

district court denied Citrix’s motions for judgment as a 

matter of law (“JMOL”) and for a new trial on noninfringement, invalidity, willful infringement, and damages relating to the claims of the ’011 Patent. SSL Servs., 

the ’796 Patent and whether there is a step order required 

for practicing the method claimed. For reasons explained 

below, we do not resolve the parties’ debate on those 

terms.

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 11

LLC v. Citrix Sys., Inc., 940 F. Supp. 2d 480, 485 (E.D. 

Tex. 2013). The court also denied SSL’s motion for JMOL 

on its infringement claim relating to claim 27 of the ’796 

Patent and/or for a new trial on that claim. Id.

SSL and Citrix filed notices of appeal on May 17, 

2013. This court has jurisdiction over both the appeal and 

cross-appeal pursuant to 28 U.S.C. § 1295(a)(1) (2012). 

II. DISCUSSION

A. Standard of Review

The Federal Circuit reviews decisions on motions for 

JMOL, motions for a new trial, and evidentiary rulings 

under the law of the regional circuit. Verizon Servs. Corp. 

v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1331 (Fed. Cir. 

2010). Here, the applicable regional circuit is the Fifth

Circuit. Under Fifth Circuit law, we review the denial of 

a motion for JMOL de novo while applying the same 

standards as the district court. Cambridge Toxicology 

Grp., Inc. v. Exnicios, 495 F.3d 169, 179 (5th Cir. 2007). 

“[JMOL] is appropriate only when a ‘reasonable jury 

would not have a legally sufficient evidentiary basis to 

find for the party on that issue.’” Id. (quoting Fed. R. Civ.

P. 50(a)(1)).

The Fifth Circuit reviews the denial of a new trial for 

an abuse of discretion. Industrias Magromer Cueros y 

Pieles S.A. v. La. Bayou Furs Inc., 293 F.3d 912, 924 (5th 

Cir. 2002). “‘There is no such abuse of discretion unless 

there is a complete absence of evidence to support the 

verdict.’” Id. (quoting Sam’s Style Shop v. Cosmos Broad. 

Corp., 694 F.2d 998, 1006 (5th Cir. 1982)). The Fifth 

Circuit also reviews evidentiary rulings for an abuse of 

discretion. Huss v. Gayden, 571 F.3d 442, 452 (5th Cir. 

2009); Paz v. Brush Engineered Materials, Inc., 555 F.3d 

383, 387–88 (5th Cir. 2009). 

Claim construction is a question of law reviewed de 

novo. Lighting Ballast Control LLC v. Philips Elecs. N. 
12 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

Am. Corp., 744 F.3d 1272, 1276–77 (Fed. Cir. 2014) (en 

banc). Infringement is a question of fact reviewed for 

substantial evidence. ACCO Brands, Inc. v. ABA Locks 

Mfrs. Co., 501 F.3d 1307, 1311 (Fed. Cir. 2007). Obviousness is a question of law based on specific factual 

findings. Graham v. John Deere Co., 383 U.S. 1, 17–18 

(1966). We presume that the jury resolved the underlying 

factual disputes in favor of the verdict and review those 

factual findings for substantial evidence. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1356–

57 (Fed. Cir. 2012). 

B. SSL’s Appeal

On appeal, SSL asserts that the district court erred in 

failing: (1) to grant SSL’s motion for a new trial on infringement of claim 27 of the ’796 Patent, and (2) to find 

that SSL was the prevailing party.

1. The ’796 Patent

a) Destination Address

The district court construed “destination address” as 

“the network address of a computer or server.” SSL 

Servs., 816 F. Supp. 2d at 385. In support, it pointed to 

the claim language, finding that the phrase “destination 

address” refers to the address on the network of the 

claimed second client computer. Id. at 386. Turning to 

the written description, the district court emphasized the 

distinction between the terms “destination” and “destination address.” Id. The district court explained that to 

construe “destination address” the same as “destination” 

would write the term “address” out of the former term. 

Id. It further clarified that the network address is not 

limited to Internet Protocol (“IP”) based protocols, concluding that the claimed invention may use non-IP based 

protocols. Id.
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 13

(1) Claim Construction

Although SSL agrees that “[t]he plain meaning of 

‘destination address’ is the address of the destination—

here, the second client computer or server,” it asserts that 

the district court erred in interpreting the term to require 

a network address, and then further equating “network 

address” with IP address. Appellant Br. 45–47. SSL 

argues that the district court should adopt its construction: an “[i]dentifier for a desired location.” Appellant Br. 

48; see also SSL Servs., 816 F. Supp. 2d at 385. Citrix 

responds that the district court correctly construed the 

claim language in the context of a claim covering transmissions between computers on an open network as a 

network address of a computer. 

We agree with Citrix that the district court correctly 

construed the term “destination address.” To determine

the scope and meaning of the asserted claims, we look to 

the words of the claims, the specification, the prosecution 

history, and any relevant extrinsic evidence. Phillips v. 

AWH Corp., 415 F.3d 1303, 1315–17 (Fed. Cir. 2005) (en 

banc). We find the claim language regarding the destination address informative. Claim 27 requires “means for 

transmitting data to and receiving data from an open 

network.” ’796 Patent col. 20 ll. 49–53. The claim further 

states “intercepting a destination address during initialization of communications between said one of said client 

computers and a second of said client computers on said 

virtual private network,” and “transmitting the encrypted 

files directly to the destination address.” Id. at col. 20 

l. 66–col. 21 l. 2, col. 22 ll. 4–5. Consequently, the destination address is the address for a second client computer 

on the network, which is the network address of that 

specific computer. Furthermore, the language of transmitting the files directly to the destination address that is 

intercepted during the initialization of communications 

suggests that the destination address allows transmission 

to the target client computer without having to distin-
14 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

guish or differentiate through various internal identifiers 

or other methods to determine where those files need to 

be delivered. This requires the destination address to be 

the network address.

The written description further supports the district 

court’s construction. It states that the most commonly 

used set of software routines for the transport or TDI 

layer is the transport control protocol (“TCP”)/IP protocol, 

where the TCP packages the data into datagrams and 

provides addressing functions, and the IP “further packages those datagrams into packets by adding additional 

headers used in routing the packets to a destination 

address.” ’796 Patent col. 3 ll. 16–24. The written description also describes other transport protocols that can

be used, including the user diagram protocol (“UDP”), the 

internet control message protocol, and non-IP based 

protocols such as Netbeui or IPX. Id. col. 3 ll. 24–28. It 

further states that “the shim 55 intercepts IP packets 

from applications . . . [and] checks the destination address

(which can be in TCP format, UDP format, and so forth).” 

Id. col. 10 ll. 45–48. This language suggests that the 

“destination address” is a part of the address portion of 

data packets in a network address format. Therefore, we 

conclude that the district court correctly construed the 

term “destination address” to mean “network address.”

While SSL alleges that the district court’s construction limited the format to an IP format, we disagree. As 

discussed above, the district court clarified that “the 

claimed invention is not limited to IP-based protocols and 

may use non-IP based protocols.” SSL Servs., 816 F. 

Supp. 2d at 386. Although the district court focused on 

how the accused products use IP-based protocols during 

its infringement analysis, the district court properly did 

not limit the construction of the term “destination address” to an IP address. 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 15

(2) Request for a New Trial

SSL argues that even if we agree that the district 

court correctly construed the term “destination address,” 

our analysis of the infringement verdict must continue. 

SSL asserts that it is entitled to a new trial if we agree 

that any one of the disputed claim constructions was 

erroneous, arguing that we must assess the constructions 

relating to all the disputed limitations before we can rest 

assured that the jury’s non-infringement finding was not 

infected by some error. Because the jury returned a 

general verdict of non-infringement after hearing multiple 

theories of non-infringement, SSL argues that “it would 

be impossible for this Court to discern whether the jury 

rested its verdict of non-infringement on the erroneous 

claim construction.” Appellant Br. 52. 

We agree that the general verdict rule applies with 

the same force in patent cases as it does in all other cases. 

We also agree that Citrix misreads our decision in Verizon 

Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Fed. 

Cir. 2010), which does not even address the general 

verdict rule or reach any conclusions regarding how that 

rule might have been implicated—or avoided—on the 

facts presented.5 We find, however, that there is no 

evidence in the record from which a good faith argument 

can be made that the Citrix GoTo Products’ identifiers are 

“network addresses” as that term was construed by the 

5 We specifically conclude that Verizon does not, as 

Citrix contends, stand for the proposition that a general 

verdict of non-infringement may be affirmed upon a 

decision that the district court’s challenged construction 

of even one claim term relating to a single claim limitation is correct. That is so only, where, as here, there is no 

argument and no evidence that substantial evidence 

might have supported a finding of non-infringement 

under the first challenged construction which we consider. 

 
16 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

district court. Because we now affirm that construction, 

we conclude that, even if the district court erred in its

construction of the other challenged limitations, the result 

the jury reached—the finding of non-infringement—would 

not change. In these circumstances, we soundly can base 

our conclusion that the non-infringement verdict stands 

on the fact that the single network address limitation is 

not practiced by the accused products. See Teleflex, Inc. v. 

Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002) 

(“We may affirm the jury’s findings on infringement or 

validity issues if substantial evidence appears in the 

record supporting the jury’s verdict and if correction of the 

errors in a jury instruction on claim construction would 

not have changed the result, given the evidence presented.”). 

SSL seems to concede that it must show prejudice in 

the trial court’s instructions to the jury regarding the 

meaning of a relevant claim term before an erroneous

instruction regarding any such term can justify disturbing 

a jury verdict. See, e.g., Ecolab Inc. v. Paraclipse, Inc., 

285 F.3d 1362, 1373 (Fed. Cir. 2002) (“A party seeking to 

alter a judgment based on erroneous jury instructions 

must establish that ‘those instructions were legally erroneous,’ and that ‘the errors had prejudicial effect.’”) (quoting Advanced Display Sys., Inc. v. Kent State Univ., 212 

F.3d 1271, 1281 (Fed. Cir. 2000)). It implies, however, 

that prejudice must be presumed whenever a general 

verdict makes it impossible to discern on which specific 

limitation the jury rested its verdict of non-infringement. 

The cases upon which SSL relies do not give rise to such a 

presumption, however, and we know of no case law that 

creates one. The general verdict rule guards against the 

threat of a tainted or improper verdict. See SEB S.A. v. 

Montgomery Ward & Co., 594 F.3d 1360, 1374 (Fed. Cir. 

2010) (“Under the general verdict rule, where one or more 

of multiple claims is found legally invalid, a reviewing 

court must reverse and order a new trial if [the reviewing 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 17

court is] unable to determine whether the invalid theory 

tainted the verdict.”) (citation omitted), aff’d on other 

grounds, 134 S. Ct. 2060 (2011). But, the burden to 

establish that such a threat exists is on the party challenging the verdict. Ecolab, 285 F.3d at 1373. SSL has 

not satisfied the burden of establishing that an error in 

any other claim construction could have changed the 

verdict here if we conclude, as we have, that the “destination address” in claim 27 of the ’796 Patent means the 

“network address of a computer or server.”

While SSL argued that the Citrix GoTo Products’ 

identifiers would infringe under SSL’s construction of 

“destination address” because they are “identifier[s] for a 

desired location,” SSL did not argue in its opening brief to 

this court that the GoTo Products would still infringe 

under the district court’s construction. See Appellant Br. 

48–49. Not until its reply did SSL contend that the jury 

might have found that the Citrix GoTo Products met the 

destination address limitation as construed by the district 

court. Appellant Reply Br. 32–33. And, even then, SSL 

failed to point to testimony or evidence in the record upon 

which such a finding could be predicated.6 Accordingly, 

we find that SSL waived the argument that the jury could 

have found that the GoTo Products met the destination 

address limitation under the district court’s construction. 

See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 

1312, 1319 (Fed. Cir. 2006) (“Our law is well established 

that arguments not raised in the opening brief are 

waived.” (citation omitted)).

Even if this argument was not waived, moreover, all 

relevant evidence supports the finding that the Citrix 

6 While SSL cites to the trial court’s refusal to grant 

summary judgment or otherwise take the question of 

infringement from the jury, those orders are not the same 

as record evidence. 

 
18 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

GoTo Products’ identifiers7 are not “network addresses” 

that are intercepted during initialization of communications between the first and second client computer where 

the encrypted files are transmitted directly. First, there 

is no dispute that the Citrix GoTo Identifiers are not IP 

addresses. The GoTo Products, however, use IP-based 

protocols. Accordingly, the network addresses of the 

client computers running the GoTo Products necessarily 

are the respective IP addresses. Therefore, because the 

GoTo Identifiers are not the IP addresses of the client 

computers, the record commands the finding that the 

Citrix GoTo Products do not contain the “destination 

address” limitation. Second, the first client computer 

never knows the IP address of the second client computer 

based on the GoTo Identifiers. Only the intermediary, 

such as a broker or communications server, knows the 

second client computer’s IP address. Accordingly, the 

GoTo Products could neither intercept nor provide the 

network address to direct the encrypted files. Because 

the GoTo Identifiers are not the IP address of the second 

client computer, the “destination address” limitation is 

simply not met. SSL proffers no facts or evidence to 

support a contrary conclusion. Consequently, we affirm 

the denial of SSL’s motion for a new trial on infringement

of the ’796 Patent, without considering the “intercepting” 

and step order limitations.8

2. Prevailing Party 

We review the district court’s determination of 

whether a party is the “prevailing party” under Federal 

Rule of Civil Procedure 54(d) and 35 U.S.C. § 285 de novo. 

7 MeetingID, SessionID, MachineNameKey, or 

QuickConnectID (collectively, “GoTo Identifiers”).

8 We do not imply that the trial court’s construction 

of those terms was erroneous, we simply do not reach 

those questions.

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 19

See Shum v. Intel Corp., 629 F.3d 1360, 1367 (Fed. Cir. 

2010); Inland Steel Co. v. LTV Steel Co., 364 F.3d 1318, 

1320 (Fed. Cir. 2004). In a patent case, Federal Circuit 

law governs the determination of which party has prevailed. 35 U.S.C. § 285 (“The court in exceptional cases 

may award reasonable attorney fees to the prevailing 

party.”); Fed. R. Civ. P. 54(d)(1) (“Unless a federal statute, 

these rules, or a court order provides otherwise, costs—

other than attorney’s fees—should be allowed to the 

prevailing party”); Manildra Milling Corp. v. Ogilvie 

Mills, Inc., 76 F.3d 1178, 1182 (Fed. Cir. 1996). To be the

“prevailing party,” we require: (1) that the party “received 

at least some relief on the merits,” and (2) “[t]hat relief 

must materially alter the legal relationship between the 

parties by modifying one party’s behavior in a way that 

‘directly benefits’ the opposing party.” Shum, 629 F.3d at

1367 (citations omitted); see also Farrar v. Hobby, 506 

U.S. 103, 111–12 (1992) (“[A] plaintiff ‘prevails’ when 

actual relief on the merits of his claim materially alters 

the legal relationship between the parties by modifying 

the defendant’s behavior in a way that directly benefits 

the plaintiff.”). A party does not need to prevail on all 

claims to qualify as the prevailing party. See Kemin 

Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de 

C.V., 464 F.3d 1339, 1347–48 (Fed. Cir. 2006).

The district court found that Citrix prevailed on noninfringement of the ’796 Patent and SSL prevailed on 

willful infringement of the ’011 Patent. Accordingly, the 

district court concluded that neither party is the prevailing party because “both parties achieved some success 

and sustained some failure.” J.A. 62–63. It then held 

that each side shall bear its own costs. SSL asserts that 

it is the prevailing party as it obtained a judgment that 

Citrix willfully infringed the asserted claims of the ’011 

Patent. Citrix requests that we affirm the district court’s 

conclusion that neither party prevailed and that the 

district court did not abuse its discretion in denying costs 
20 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

because Citrix “received greater relief by winning on the 

primary ‘796 patent.” Appellee Br. 57.9 

We find that the district court erred in holding that 

SSL was not the prevailing party. It is well-established 

that there is a distinction between being eligible for fees 

as the prevailing party and the discretionary decision to 

award fees. See Farrar, 506 U.S. at 111–13; Manildra, 76 

F.3d at 1182–83. A party “prevails” when “actual relief on 

the merits of his claim materially alters the legal relationship between the parties . . . in a way that directly 

benefits the [party].” Farrar, 506 U.S. at 111–12. For 

example, the Supreme Court in Farrar found that a 

plaintiff who won nominal damages was still the prevailing party because a judgment for damages in any amount 

modified the defendant’s behavior to the plaintiff’s benefit. Id. The Court explained that the degree of the overall 

success impacts only the reasonableness of the fee award. 

Id. Therefore, a district court may award minimal or no 

fees after considering the amount of success to the prevailing party. Id. at 115–16. 

In this case, the district court found that SSL proved 

willful infringement of the three asserted claims of 

the ’011 Patent by Citrix’s Access Gateway and Netscaler 

Products. In light of this infringement finding, the jury 

awarded lump-sum damages of ten million dollars, which 

the district court enhanced to a total of fifteen million 

dollars. See SSL Servs., 940 F. Supp. 2d at 486; J.A. 60. 

In contrast, while Citrix did obtain a finding of noninfringement as to claim 27 of the ’796 Patent, it did not 

prove the asserted claims of the ’011 Patent were invalid, 

and it was found to have infringed the ’011 Patent. 

9 Citrix does not argue that the trial court erred in 

denying it prevailing party status, only that it was correct 

to find that neither party is a prevailing party in the 

circumstances at issue here.

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 21

Despite some success by Citrix in defending against 

some of SSL’s claims, we agree with SSL that it is the 

prevailing party. SSL has a judgment for damages 

against Citrix. This judgment is a “relief on the merits 

[that] materially alters the legal relationship” of the 

parties. Farrar, 506 U.S. at 111; Manildra Milling Corp., 

76 F.3d at 1182 (“[A] judgment for damages in any 

amount modifies the defendant’s behavior to the plaintiff’s benefit.”). Even though SSL did not succeed on all of 

its infringement claims, this does not change the outcome. 

See Kemin, 464 F.3d at 1347–48 (upholding a district 

court’s finding that a patent holder is the prevailing party 

when it “prevailed on one of its two infringement claims

(resulting in a damages award and a permanent injunction),” and the patent holder “prevailed on [the accused 

infringer’s] invalidity and unenforceability claims.”). In 

view of the parties’ respective successes, we find SSL is 

the “prevailing party” for purposes of Federal Rule of Civil 

Procedure 54(d) and 35 U.S.C. § 285.

Finding SSL to be the prevailing party, however, does 

not automatically entitle it to any particular level of fees. 

See Shum, 629 F.3d at 1366 (“An award of costs thus 

involves two separate inquir[i]es. First, who is the ‘prevailing party’ within the meaning of Rule 54(d)(1). Second, how much (if any) costs should be awarded to the 

prevailing party.” (citation omitted)). Accordingly, we 

vacate the district court’s finding of no prevailing party 

and remand so that the district court may assess the 

amount of fees or costs to award to SSL in connection with 

the claims on which it prevailed.

C. Citrix’s Cross-Appeal

On cross-appeal, Citrix argues that this court should 

grant JMOL of non-infringement or remand for a new 

trial on SSL’s claims under the ’011 Patent. Citrix raises 

several issues in its cross-appeal: (1) non-infringement 

based on the “encrypt files” limitation; (2) invalidity; (3) 
22 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

willful infringement; (4) the propriety of the district 

court’s evidentiary ruling regarding expert reliance on the 

V-One Agreements; and (5) the award of prejudgment 

interest. We address these issues below.

1. The ’011 Patent

a) “Encrypt Files” 

The asserted claims of the ’011 Patent include a limitation to “encrypt files.” The district court construed the 

term as “to render a set of data used by a program unintelligible without decrypting.” SSL Servs., 816 F. Supp. 

2d at 384–85. Citrix did not challenge this claim construction. In explaining its construction, the district court 

stated that “the term cannot be construed so broadly that 

it would include ‘packets,’ ‘datagrams’ or other types of 

communications. However, this does not mean that an 

accused device that encrypts packets automatically falls 

outside of the scope of the claims, but instead requires 

that at a minimum the encryption must occur at the file 

level.” Id. Furthermore, the district court concluded 

“that one of ordinary skill in the art would interpret ‘files’ 

as ‘a set of data used by a program.’” Id. at 385. The 

district court later denied Citrix’s request for JMOL on 

non-infringement of the ’011 Patent. SSL Servs., 940 F. 

Supp. 2d at 485.

In considering Citrix’s motion for JMOL of noninfringement, the district court found that the jury’s 

infringement verdict—that the Access Gateway and 

Netscaler products “encrypt files” as construed by the 

court—was supported by substantial evidence. Id. at 

494–95. In support, the court pointed to the testimony of 

SSL’s expert and demonstrative slides, which provided 

evidence from which a jury could determine that the 

products encrypted files. Id. 

Citrix argues that the jury’s infringement verdict is 

not supported by substantial evidence that Citrix’s Access 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 23

Gateway and Netscaler products “encrypt files.” Citrix

focuses on the difference between encrypting files and

encrypting “packets.” It asserts that SSL’s expert provided no evidence on the “encrypt files” limitation. SSL 

disagrees and states that the testimony of its expert 

combined with the exhibits shown to the jury provide 

substantial evidence to support finding that Citrix’s 

products practice this limitation. 

We agree that substantial evidence supports the jury’s 

verdict of infringement. Although the district court 

distinguished between encrypting files and packets, it 

construed the term “encrypt files” as “to render a set of 

data used by a program unintelligible without decrypting.” SSL Servs., 816 F. Supp. 2d at 384. Citrix does not 

dispute this construction. The testimony of SSL’s expert

on the encryption of files supports the conclusion that the 

Access Gateway and Netscaler products do, in fact, “render a set of data used by a program unintelligible without 

decrypting.” 

SSL’s expert, Dr. Kelly, testified that the Access 

Gateway and Netscaler products used encrypted communications, and that the data it sends over the Internet to 

the server is encrypted. Specifically, he explained that 

the data flows from an application through a shim to the 

Net6VPN.exe program where it is encrypted. Dr. Kelly 

also relied on demonstrative slides to show the flow of 

data from an application to the encryption program

through a shim where that encrypted data is then sent to 

the server. Based on this evidence, we affirm the district 

court’s denial of Citrix’s motion for JMOL of noninfringement because we find substantial evidence to 

support the jury verdict of infringement of the claims of 

the ’011 Patent.

b) Invalidity of the SSL Patents

On appeal, Citrix asserts that claims 2, 4, and 7 of the 

’011 Patent would have been obvious under Takahashi et 
24 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

al., “Communication Method with Data Compression and 

Encryption for Mobile Computing Environment” 

(“Takahashi”) in view of Request for Comment on the 

Generic Security Service Application Program Interface 

(GSS-API) (“RFC1508”). The parties dispute whether: (1)

Takahashi discloses applications level authentication and 

encryption software, and (2) RFC1508 discloses how to 

perform mutual authentication. Claims 2, 4, and 7 all 

require “applications level encryption and authentication 

software.”10 ’011 Patent col. 13 ll. 8–9, 52–53; col. 14 

ll. 55–56.

A patent claim is invalid as obvious if the claimed invention as a whole would have been obvious to a person 

having ordinary skill in the art at the time of the invention. 35 U.S.C. § 103. Obviousness is a question of law 

based on specific factual findings, including: (1) the scope 

and content of the prior art; (2) differences between the 

claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any relevant secondary 

considerations, including commercial success, long-felt 

but unsolved needs, and the failure of others. Graham, 

383 U.S. at 17–18. We presume that the jury resolved the 

underlying factual disputes in favor of the verdict and 

review those factual findings for substantial evidence. 

Kinetic Concepts, 688 F.3d at 1356–57. A party must 

prove an invalidity defense by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 

2242 (2011). We review the ultimate legal conclusion of 

obviousness de novo in light of the underlying factual 

findings. Kinetic Concepts, 688 F.3d at 1356–57. 

Citrix argues that the district court erred in denying 

JMOL on invalidity based on Takahashi in view of 

10 Claim 7 uses slightly different wording of an “applications level authentication and encryption program.” 

’011 Patent col. 14 ll. 55–56.

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 25

RFC1508. While Citrix asserts that Takahashi discloses 

the use of encryption software at the applications level, 

SSL argues that the district court correctly denied JMOL 

on invalidity of the ’011 Patent as Takahashi does not 

disclose the use of authentication and encryption software 

on the applications level. The district court agreed with 

SSL and found that the object identified in Takahashi 

was not on the applications level. SSL Servs., 940 F. 

Supp. 2d at 499–500. 

We agree with SSL that substantial evidence supports 

the finding that Takahashi does not disclose the authentication and encryption software at the applications level. 

Takahashi discloses a “Communication Method with Data 

Compression and Encryption for Mobile Computing 

Environment.” J.A. 6865. This method uses a “secure 

communication add-in program” to perform encryption. 

J.A. 6866. This secure communication add-in program 

“intercepts the send command of the application program 

from WinSock API, compresses its data in the send command, encrypts the data, and then returns this command 

to WinSock DLL, which is properly transferred.” J.A. 

6866–67. 

Takahashi Figure 8 (reproduced below) discloses the 

program structure for the compression and encryption 

methods. 
26 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

J.A. 6870. Looking at this figure, SSL’s expert testified 

that the encryption software is not located at the applications level. J.A. 2368–70. The figure shows the applications (AP) separate from the “Compress and Encryption 

process.” J.A. 6870. 

Citrix argues that the software in Takahashi is on the 

applications level because it is above the TDI layer. 

Appellee Br. 63. We disagree. That software is located 

above the TDI level does not make it part of the applications level. For example, the ’011 Patent explains that 

the Winsock element is located above the TDI level, but 

the Winsock is not deemed part of the applications level. 

See J.A. 110 (col. 3 ll. 60–64). SSL’s expert also testified 

that the Winsock software, which appears above the TDI 

level, is not in the applications level. J.A. 1261–63. 

Therefore, Citrix’s argument that, if Takahashi discloses 

software above the TDI layer, it is automatically a part of 

the applications level is unpersuasive. Furthermore, as 

seen in Figure 8, Takahashi separates the applications 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 27

from the encryption software at issue. Because we find 

substantial evidence exists that Takahashi does not 

disclose an applications level authentication and encryption software, we do not address whether RFC1508 discloses mutual authentication. Therefore, we affirm the 

district court’s denial of JMOL for invalidity because 

Citrix did not show by clear and convincing evidence that 

claims 2, 4, and 7 were invalid as obvious by Takahashi in 

view of RFC1508.

c) Willful Infringement

To establish willful infringement, the patent holder 

must show clear and convincing evidence that: (1) “the 

infringer acted despite an objectively high likelihood that 

its actions constituted infringement” and (2) “that this 

objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 

(Fed. Cir. 2007) (en banc). We review the first objective 

prong de novo and the second subjective prong for substantial evidence. See Bard Peripheral Vascular, Inc. v. 

W.L. Gore & Assocs., 682 F.3d 1003, 1005–08 (Fed. Cir. 

2012), cert. denied, 133 S. Ct. 932 (2013).

The district court first found that Citrix acted despite 

an objectively high likelihood that its actions constituted 

infringement of a valid patent. The jury then addressed 

the subjective prong—whether Citrix actually knew or 

should have known that its actions constituted an unjustifiably high risk of infringement of a valid and enforceable 

patent. The jury found that Citrix willfully infringed the 

’011 Patent. For the following reasons, Citrix has failed 

to show that the district court erred in denying its motion 

for JMOL regarding willful infringement. Accordingly, we 

affirm the district court’s willful infringement determination. 
28 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

(1) Objective Prong

In concluding that Citrix acted despite an objectively 

high likelihood that its actions constituted infringement 

of a valid patent, the district court found that Citrix’s 

alleged defenses of invalidity and non-infringement were 

not reasonable. 

Citrix argues that, because its non-infringement and 

invalidity defenses were reasonable, the district court 

erred in denying JMOL of no willful infringement. In 

support, Citrix relies on the fact that the district court did 

not grant summary judgment and that the United States 

Patent and Trademark Office (“USPTO”) rejected the

relevant claims of the ’011 Patent multiple times over the 

same prior art references presented at trial during the 

initial phases of an ex parte reexamination. SSL responds that it satisfied its burden of proving that Citrix’s 

defenses of non-infringement and invalidity were objectively unreasonable. SSL contends that there was ample 

evidence presented at trial, including expert testimony, 

which shows Citrix’s non-infringement defense based on 

the “encrypt files” limitation and its invalidity defenses 

involving Takahashi were meritless. SSL further argues 

that the ex parte reexamination supports its own position 

that Citrix acted unreasonably because the USPTO 

ultimately rejected Citrix’s invalidity arguments under 

the lower preponderance of the evidence standard. SSL 

asserts that if Citrix was unable to prove the ’011 Patent

was invalid under the lower preponderance of the evidence standard employed by the USPTO, it is unreasonable for Citrix to re-raise such arguments under the clear 

and convincing standard at the district court.

The district court’s finding that SSL met the threshold objective prong is supported by the record. The jury 

soundly rejected Citrix’s invalidity argument and noninfringement arguments. As noted above, the Takahashi 

reference does not disclose an applications level encryp-
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 29

tion program. Although not dispositive, the USPTO 

similarly found Citrix’s invalidity arguments unfruitful, 

despite the lower preponderance of the evidence standard. 

Further, we recognize that most of the limitations for the 

asserted claims of the ’011 Patent were uncontested. And 

we find that infringement of the only limitation raised on 

appeal of “encrypt files” was clearly supported by substantial evidence. Accordingly, we agree with the district 

court that SSL satisfied the objective prong. 

(2) Subjective Prong

After the district court found the objective prong satisfied, it submitted the issue of willful infringement to the 

jury. The jury returned a verdict finding that Citrix 

willfully infringed the relevant claims of the ’011 Patent. 

SSL and the district court pointed to several items to 

support the jury’s finding of willfulness, including the VOne Agreements, V-One executives’ confirmation of 

Citrix’s knowledge of the ’011 Patent, Citrix’s full access 

to the V-One technology, and a Citrix executive’s admission of knowledge of the ’011 Patent based on the V-One 

Agreements. 

Citrix disagrees, claiming that substantial evidence 

does not support the subjective prong of willfulness. It 

asserts that there is no evidence that anyone at Citrix had 

read the ’011 Patent nor that Citrix should have investigated that patent regarding Access Gateway and Netscaler. Further, it states that the V-One Agreements were 

only distribution agreements for the SmartGate product,

which did not embody the ’011 Patent. 

We agree that SSL presented substantial evidence 

that Citrix knew of the objectively high risk that its 

products infringed the asserted claims of the ’011 Patent. 

SSL presented evidence that Citrix first became aware of 

the ’011 Patent in 2000 based on the V-One Agreements. 

SSL Servs., 940 F. Supp. 2d at 504. Citrix negotiated and 

executed the agreements with V-One. Id. The V-One 
30 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

Agreements specifically identified and incorporated 

the ’011 Patent. Id. Furthermore, a former Citrix executive, Bill Mangum, testified that he knew of the ’011 

Patent as a result of Citrix’s relationship with V-One. Id. 

A V-One executive also testified that Citrix knew of 

the ’011 Patent and that V-One had provided Citrix with 

access to its technology relating to the ’011 Patent. Id. 

Based on this evidence, we do not find that the district 

court erred in denying Citrix’s motion for JMOL on the 

subjective prong of SSL’s claim of willful infringement.

Citrix argues that it should receive a new trial on 

willfulness because the court prevented the jury from 

hearing fact testimony from its Chief Engineer, Marco 

Murgia, that: (1) Citrix believed in good faith that its 

products were non-infringing; and (2) that reexamination 

proceedings had been initiated at the PTO. The district 

court held that Murgia could not opine on whether the 

accused products infringed claims of the ’011 Patent to 

support Citrix’s good faith belief of non-infringement. 

SSL Servs., 940 F. Supp. 2d at 500–01. Specifically, the 

district court found that “it would be significantly prejudicial to allow a fact witness[ ] to testify as to his opinions 

on the issues of infringement and validity, particularly 

when the testimony expressing such an opinion would be 

rendered without regard for how this Court has construed 

the claims.” Id. at 500. The district court also precluded 

testimony on the then ongoing reexaminations, stating 

that its limited probative value (as the proceedings were 

still ongoing at that time) was substantially outweighed 

by its prejudicial effect. Id. at 501. We find that the 

district court did not abuse its discretion in precluding 

Murgia’s testimony on these items.

As mentioned above, we review a district court’s exclusion of evidence under the law of the regional circuit. 

Where evidence is excluded because its probative value is 

outweighed by its potential prejudice under Rule 403 of 

the Federal Rules of Evidence, the Fifth Circuit reviews 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 31

the trial court’s determination for “clear abuse of discretion” resulting in substantial prejudice. Wellogix Inc. v. 

Accenture LLP, 716 F.3d 867, 882 (5th Cir. 2013). We 

cannot say the district court abused its discretion in 

excluding this evidence. As for Murgia’s personal beliefs 

regarding non-infringement, the fact that they were 

beliefs formed by a lay person without the benefit of the 

court’s claim construction determinations rendered them 

of little probative value and potentially prejudicial. 

The same is true with respect to the evidence of activity in an ongoing reexamination. As we noted recently, 

“this court’s precedent has often warned of the limited 

value of actions by the PTO” to establish a good faith 

belief of invalidity. VirnetX, Inc. v. Cisco Sys., Inc., No. 

13-1489, 2014 U.S. App. LEXIS 17748, at *32 (Fed. Cir. 

Sept. 16, 2014) (citing Hoechst Celanese Corp. v. BP 

Chems. Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996) (“[G]rant 

by the examiner of a request for reexamination is not 

probative of unpatentability.”) and Acoustical Design, Inc. 

v. Control Elecs. Co., 932 F.2d 939, 942 (Fed. Cir. 1991) 

(“[I]nitial rejection by the [PTO] . . . hardly justifies a good 

faith belief in the invalidity of the claims.”)). As we did in 

VirnetX, we conclude that the district court did not abuse

its discretion in finding that the probative value of unfinished agency proceedings was substantially outweighed 

by the risk of unfair prejudice to the patentee and the 

potential for misleading the jury, thereby justifying 

exclusion under Federal Rule of Evidence 403. See, e.g., 

SynQor, 709 F.3d at 1380 (finding no abuse of discretion 

for excluding non-final reexamination evidence as being 

“confusing and more prejudicial than probative”); Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1342–43 

(Fed. Cir. 2009) (finding the probative value of a copending reexamination marginal and the effect likely to 

be highly prejudicial). For these reasons, we affirm the 

district court’s exclusion of this evidence. 
32 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

d) Evidentiary Ruling on Damages

Again applying Fifth Circuit law, we review evidentiary rulings and the denial of a motion for a new trial for 

an abuse of discretion. Huss, 571 F.3d at 452; Paz, 555 

F.3d at 387–88. Citrix argues that the district court 

abused its discretion by allowing SSL’s damages expert to 

rely on the V-One Agreements, which were not patent 

licenses, in his damages analysis. These 2000 and 2001 

agreements were between V-One and Citrix, and referenced the ’011 Patent as intellectual property that was 

relevant to the technology underlying the agreements. 

Though the agreements only supplied Citrix with distribution rights to the Smartgate software product and 

provided no patent license, the court found the agreements “sufficiently ‘comparable’ to be probative of the 

hypothetical negotiation” as they involve the actual 

parties, relevant technology, and were close in time to the

date of the hypothetical negotiation. SSL Servs., 940 F. 

Supp. 2d at 489–90. The district court also concluded that 

the information in the licenses was relevant to other 

Georgia Pacific factors, including V-One’s licensing policies and the parties’ respective competitive positions. Id. 

at 490; Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 

F. Supp. 1116, 1120 (S.D.N.Y. 1970).

Although both sides used the V-One Agreements in 

their analyses,11 Citrix now contends that SSL should not 

have been allowed to rely on these agreements. But 

Citrix’s own expert stated that these agreements were the 

closest comparable information for a hypothetical negotiation that he could find. SSL Servs., 940 F. Supp. 2d at 

490. And, SSL’s expert expressly addressed the differ11 Citrix’s damages expert used a 1% royalty rate 

based on the V-One Agreements, whereas SSL’s damages 

expert used a 2.5 to 3% royalty rate based on those same 

agreements. 

 
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 33

ences between the license negotiations and any hypothetical negotiations, thereby clarifying for the jury where 

such differences might exist and the limited value of such 

evidence. 

As the district court concluded, the V-One agreements 

are sufficiently probative of the circumstances which 

would surround a hypothetical negotiation to be admissible. We do not discount all agreements regarding the 

technology at issue other than licenses addressing the 

price terms and circumstances at issue in the case at bar. 

The trial court carefully assessed the probative value of 

the V-One agreements and properly concluded that any 

issues regarding their fit to the precise facts presented 

should be addressed by way of cross-examination. We 

agree. In these circumstances, we find that the district 

court did not abuse its discretion in allowing SSL’s expert 

to rely on the V-One Agreements. 

e) Prejudgment Interest 

“Upon finding for the claimant the court shall award 

the claimant damages adequate to compensate for the 

infringement, but in no event less than a reasonable 

royalty for the use made of the invention by the infringer, 

together with interest and costs as fixed by the court.” 35 

U.S.C. § 284. “[P]rejudgment interest should be awarded 

under § 284 absent some justification for withholding 

such an award.” Gen. Motors Corp. v. Devex Corp., 461 

U.S. 648, 657 (1983). The purpose of prejudgment interest is to place the patentee in as good a position as he 

would have been had the infringer paid a reasonable 

royalty rather than infringe. Beatrice Foods v. New 

England Printing, 923 F.2d 1576, 1580 (Fed. Cir. 1991). 

We review the award of prejudgment interest for an abuse 

of discretion. Gen. Motors Corp., 461 U.S. at 657.

The district court awarded prejudgment interest in 

the amount of $4.5 million calculated to 2004, when the 

infringement began. Citrix alleges that awarding pre-
34 SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. 

judgment interest was an abuse of discretion because it 

did not receive notice of potential infringement until the 

filing of the complaint in May 2009. It asserts that SSL 

delayed bringing the lawsuit, and should not be rewarded 

for that delay. As part of the willful infringement finding 

discussed above, however, the district court found that 

Citrix knew of the ’011 Patent as early as 2000, when it 

entered into the V-One Agreements. Consequently, we 

find that the district court did not abuse its discretion in 

awarding prejudgment interest back to 2004—the date 

the infringement began. By awarding SSL prejudgment 

interest to 2004, the district court placed SSL in the 

position it would have been in had Citrix paid a reasonable royalty upon notice of the ’011 Patent and its relevance to the technology it chose to market. 

III. CONCLUSION

For the reasons stated above, we affirm the district 

court’s judgment of non-infringement of the ’796 Patent, 

willful infringement of the ’011 Patent, no invalidity of 

the ’011 Patent, award of prejudgment interest, and find 

no error in its evidentiary rulings. We also vacate the 

district court’s finding of no prevailing party and remand 

for further proceedings consistent with this opinion.

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

REMANDED