          United States Court of Appeals
                        For the First Circuit

Nos. 12-1110; 12-1185

                        CONTOUR DESIGN, INC.,

                         Plaintiff-Appellee,

                                  v.

                 CHANCE MOLD STEEL COMPANY, LTD.,
                 a/k/a Chance Mold Company, Ltd.;
                      EKTOUCH COMPANY, LTD.,

                        Defendants-Appellants.


          APPEALS FROM THE UNITED STATES DISTRICT COURT
                FOR THE DISTRICT OF NEW HAMPSHIRE

         [Hon. Joseph N. Laplante, U.S. District Judge]


                                Before

                    Thompson, Selya, and Dyk,*
                          Circuit Judges.


     Kathryn Grace Spelman, with whom Daniel H. Fingerman, Daniel
S. Mount, Kevin M. Pasquinelli, Mount Spelman & Fingerman PC, Peter
G. Callaghan, and Preti Flaherty Beliveau Pachios PLLP were on
brief, for defendants-appellants Chance Mold Steel Company, Ltd.,
a/k/a Chance Mold Company, Ltd., and EKTouch Company, Ltd.
     Lawrence L. Blacker for plaintiff-appellee Contour Design,
Inc.


                          September 4, 2012


___________
  *Of the Federal Circuit, sitting by designation.
          DYK, Circuit Judge. In this trade secret misappropriation

and breach of contract case, defendant Chance Mold Steel Co.

(“Chance”)1 appeals from a permanent injunction and from a jury

award of damages.    The injunction, based on a finding of contract

breach, prohibits Chance from selling, displaying, manufacturing,

or assisting others in manufacturing a number of ergonomic computer

mouse products.2    We use the shorthand “selling” or “sale” to refer

to the injunction’s operative terms. The injunction barred sale of

specific products that were materially identical to products Chance

had previously manufactured for Contour Design, Inc. (“Contour”)

and a new product (not previously manufactured for Contour) known

as the ErgoRoller.

          Chance challenges the scope of the injunction, arguing

that the ErgoRoller should not be enjoined, and the duration of the

injunction   with   respect   to   the    other   products.   Chance   also

contends that the jury improperly awarded lost profits damages.3



     1
       Defendant EKTouch Co., a company with the same principals,
business address, and telephone phone number as Chance, sells
products manufactured by Chance. This opinion will use “Chance” to
refer collectively to Chance and EKTouch.
     2
       The injunction also required Chance to return various
materials belonging to the plaintiff, including confidential
electronic files and firmware.
     3
       In its reply brief, Chance objects to other aspects of the
damages award, but Chance has waived this argument by failing to
raise it in its opening brief. See DeCaro v. Hasbro, Inc., 580
F.3d 55, 64 (1st Cir. 2009) (“[C]ontentions not advanced in an
appellant's opening brief are deemed waived.”).

                                    -2-
We reverse the injunction as applied to the ErgoRoller.                We affirm

the scope of the injunction as applied to the other enjoined

products, and we affirm the damages award.4

                                 I. Background

            Plaintiff Contour is a corporation based in New Hampshire

(and incorporated in Delaware) that sells ergonomic computer mice.

In 1995, Contour and Chance, a Taiwanese manufacturer, entered into

negotiations for a contract whereby Chance would manufacture mice

for Contour.      In connection with the negotiations, Chance and

Contour executed a non-disclosure agreement (“NDA”) and a letter of

intent on June 15, 1995.          In the NDA, in exchange for receiving

Contour’s   confidential information          related   to   ergonomic    mice,

Chance agreed not to disclose this information to others and not to

“duplicate, produce, manufacture or otherwise commercially exploit

. . . product[s] derived from or based on” Contour’s products.

J.A. 157-58.     The NDA expires on June 15, 2015.

            On   December   1,    1995,     the   parties    entered    into   a

manufacturing supply agreement, and for the next fourteen years,

Chance manufactured mice for Contour, including the RollerMouse


     4
       While the damages award encompassed Contour’s lost sales as
a result of Chance’s marketing of the ErgoRoller, on appeal Chance
makes no challenge to the damages award on this basis. We note
that the evidence before the district court at the hearing on the
injunction with respect to the ErgoRoller was different than the
evidence presented to the jury for the award of damages; for
example, the parties’ stipulation that certain aspects of the
ErgoRoller were independently developed was entered into after the
jury trial.

                                      -3-
Free.   As part of product development, Chance would work from a

prototype to create electronic files representing its shape, and

would use these files to create “molds” for mass production.         Over

the course of their relationship, Contour paid Chance over $40

million.

           Contour stopped placing orders with Chance in 2009, after

Chance began to sell its own competing product, the ErgoRoller.

Thereafter, in a now-admitted violation of the NDA and trade secret

law, Chance sold its existing inventory of Contour products to

third   parties   and   manufactured   and   sold   materially   identical

versions of these products under different names (the “Classic,”

“Open,” and “Professional”).      Chance also continued to sell the

ErgoRoller, but whether this violated the NDA or trade secret law

is hotly disputed. In December 2009, Contour sued Chance for trade

secret misappropriation under the New Hampshire Uniform Trade

Secrets Act (“NHUTSA”), N.H. Rev. Stat. Ann. § 350-B:1 to -B:9, and

breach of contract (the NDA), challenging the sale of Contour’s

preexisting products and the sale of the ErgoRoller.

           The district court granted a preliminary injunction,

which required Chance to stop selling and recall inventory of the

preexisting products and return their molds, but which did not

extend to the ErgoRoller.      This court affirmed.      Contour Design,

Inc. v. Chance Mold Steel Co., 649 F.3d 31 (1st Cir. 2011).

Thereafter, a jury found for Contour on its misappropriation and


                                  -4-
contract claims and awarded $7.7 million in compensatory damages.

The district court then granted exemplary damages for willful and

malicious misappropriation as well as attorneys’ fees.                      Contour

Design, Inc. v. Chance Mold Steel Co. (“District Court Findings”),

No. 09–CV–451, 2011 WL 6300622, at *15-17 (D.N.H. Dec. 16, 2011),

ECF No. 228.    Based on breach of the NDA, the district court also

entered a permanent injunction until the expiration of the NDA on

June 15, 2015, against the sale of preexisting products and the

ErgoRoller.     Id. at *17-21, 28-29; Contour Design, Inc. v. Chance

Mold Steel Co. (“Permanent Injunction”), No. 09-CV-451 (D.N.H. Dec.

16, 2011), ECF No. 229.

          Chance     timely        appealed   the    permanent        injunction,

challenging the inclusion of the ErgoRoller and its duration as to

other products.       We have       jurisdiction     pursuant    to    28    U.S.C.

§ 1292(a)(1).    Chance also timely appealed from the final judgment

awarding damages, challenging the jury’s award of lost profits,

over which we have jurisdiction pursuant to 28 U.S.C. § 1291.                    We

consolidated the two appeals. We consider first Chance’s appeal of

the injunction, and then the damages appeal.

                               II. Injunction

          With    respect     to    the   computer   mouse   products        Chance

marketed as the Classic, Open, and Professional, there is no

question that Chance misappropriated Contour’s trade secrets and is

liable for that misappropriation; Chance does not appeal the


                                       -5-
finding of misappropriation, the finding that the misappropriation

was willful and malicious, or the entry of an injunction barring

sale of the Classic, Open, and Professional (other than challenging

its duration).   While Chance has clearly engaged in inappropriate

corporate behavior in violation of state trade secret law and in

breach of the NDA, the fact that some of its conduct was unlawful

does not mean that all of its conduct was unlawful.      We cannot

simply assume that all of Chance’s actions are tarred by the same

brush.

          The central question here is whether Chance’s attempted

design-around, the ErgoRoller, was properly enjoined.   “We review

a district court’s grant of a permanent injunction for abuse of

discretion; we review its underlying conclusions of law de novo and

any factual findings for clear error.” The Shell Co. (P.R.) v. Los

Frailes Serv. Station, Inc., 605 F.3d 10, 19 (1st Cir. 2010).   The

permanent injunction was based entirely on Contour’s breach of

contract claims, not its trade secret misappropriation claims.

Interpretation of the NDA is governed by New Hampshire law.5


     5
       A choice-of-law provision in the contract selects Colorado
law, but the district court properly concluded that New Hampshire
law applies.   A federal court sitting in diversity applies the
choice-of-law rules of the forum state. See Klaxon Co. v. Stentor
Elec. Mfg. Co., 313 U.S. 487, 496 (1941). “Under New Hampshire
law, ‘[w]here parties to a contract select the law of a particular
jurisdiction to govern their affairs, that choice will be honored
if the contract bears any significant relationship to that
jurisdiction.’”   In re Scott, 999 A.2d 229, 237-38 (N.H. 2010)
(alteration in original) (quoting Hobin v. Coldwell Banker
Residential Affiliates, 744 A.2d 1134, 1137 (N.H. 2000)). Here,

                                -6-
            This issue arises against the background of Bonito Boats,

Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156 (1989), in

which the Supreme Court held that federal preemption under the

patent laws requires “that ideas once placed before the public

without     the   protection    of   a   valid     patent   are    subject   to

appropriation without significant restraint” by state laws. At the

same time, the Supreme Court has made clear that state contract law

is not generally preempted.          “State law is not displaced merely

because the contract relates to intellectual property which may or

may not be patentable.”         Aronson v. Quick Point Pencil Co., 440

U.S. 257, 262 (1979).     Private agreements may create liability for

misappropriation of a product that “was not in the public domain”

at the time of the agreement.        Id. at 263.    Similarly, “because the

public awareness of a trade secret is by definition limited, . . .

‘the policy that matter once in the public domain must remain in

the public domain is not incompatible with the existence of [state

law] trade secret protection.’”             Bonito Boats, 489 U.S. at 155

(quoting Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484

(1974)).

            Here,   the   NDA    imposes     two   obligations     related   to

Contour’s     “Confidential     Information”       (defined   as     Contour’s



the only alleged connection with Colorado is that the lawyer who
drafted the NDA was in Colorado. Because Chance is unable to point
to any “significant relationship” between the NDA and Colorado, we
apply New Hampshire law to interpret the NDA.

                                      -7-
“inventions,       designs,      methods,      samples,    market   information,

concepts and ideas”) and “Product” (defined as “computer mouse

products and related materials”). J.A. 157. First, it bars Chance

from disclosing, copying, or using the Confidential Information

without Contour’s consent:

               [Chance] agrees (a) that it has maintained and will
               continue to maintain, and will subject . . . the
               Confidential    Information   to,   processes   and
               procedures designed to prevent the disclosure and
               protect the confidential nature of the . . .
               Confidential   Information,    (b)  to   treat   as
               confidential and preserve the confidentiality of
               . . . all Confidential Information disclosed to
               [Chance] by [Contour] or otherwise coming into the
               possession or control of [Chance], (c) to make no
               use of . . . any Confidential Information except in
               connection with the Evaluation [to evaluate the
               desirability of entering a manufacturing agreement]
               without the prior written consent of [Contour], (d)
               to make no disclosure of . . . any Confidential
               Information to any party without the prior written
               consent of Owner, and (e) to not disclose . . . any
               Confidential Information to any employee or
               consultant who has not executed a confidentiality
               agreement on terms comparable to this Agreement,
               and (f) not to make copies or replicas of the
               Confidential Information . . . .

Id.6       However, this confidentiality obligation does not apply to

information that “now is or later becomes in the public domain

other than as a result of a breach by [Chance].”                Id.   Second, in

the NDA       Chance   “agrees    that   it will     not   duplicate,   produce,

manufacture or otherwise commercially exploit the Product, or

develop any other product derived from or based on the Product,”


       6
        This confidentiality obligation also extends to “the
Product,” but Contour does not rely on that restriction here.

                                         -8-
without Contour’s written agreement. Id. at 158 (emphasis added).

On each of these two theories the district court barred Chance from

continued sale of the ErgoRoller.            In each instance we think the

district court erred.

            First, as to the use of Confidential Information, the

parties   stipulated     that    the    ErgoRoller     “software    .   .   .   .

electronics and electrical design were independently developed and

not derived from Contour’s product or firmware.”           Id. at 2032.     The

district court concluded, however, that in making the molds for the

ErgoRoller body, Chance used the confidential electronic files that

had been used to make the molds for Contour’s RollerMouse Free.

District Court Findings, 2011 WL 6300622, at *18.                 The district

court based    this    ultimate finding       on   a   number   of subsidiary

findings:     (1)     “the    dimensions,      features,    and     mechanical

functionality of the ErgoRoller, while not identical to those of

the Free, are palpably similar”; (2) the engineer who designed the

ErgoRoller, Mhaco Chiang, “had access to the electronically stored

files used to produce the molds for the Free”; (3) the development

time for the ErgoRoller was shorter than it had been for any of

Contour’s products; (4) Chance failed to elicit “any positive

evidence that       Chance   independently     developed   the    ErgoRoller’s

design”; and (5) Mei-Ling Wang (Chance’s general manager) refused

to testify that the electronic files from the Free would not be




                                       -9-
useful for making the ErgoRoller, despite her counsel’s leading

questions.    Id. at *18-20.

          Findings (1), (3), (4), and (5) are not supported by the

record.   The ErgoRoller and the Free are not “palpably similar.”

As the district court stated, “the ErgoRoller is overall squarer

and more compact in design than the Free, . . . its profile is

lower,” it “has five buttons while the Free has only four, and the

ErgoRoller’s buttons are differently shaped from those of the

Free.” Id. at *6. As mentioned above, the parties stipulated that

the ErgoRoller’s software, electronics, and electrical design were

not derived from the Free.

          The record also does not support the finding that the

development time for the ErgoRoller was unusually short: Steven

Wang (Contour’s CEO, no relation to Mei-Ling Wang) testified that

the time from the start of development until commercial launch

ranged from about one to three years for three of Contour’s

products, and Mei-Ling Wang testified that the time from the start

of development until commercial launch was two years for the

ErgoRoller.   The fact that only six months were needed to create a

working sample of the ErgoRoller does not suggest that the time for

commercial development was unusually short.

          It is also incorrect that Chance put forth no positive

evidence of independent development of the ErgoRoller: Ms. Wang was

asked whether it is correct that “the molds for the ErgoRoller were


                               -10-
made independently of any molds for the Free,” and she responded,

“That’s   correct.”       J.A.   2147.        No    witness      testified    to    the

contrary.     Finally, Ms. Wang was not asked (and thus did not evade

questions about) whether the electronic files from the Free would

be useful for making the ErgoRoller.               As discussed below, the only

relevant testimony was to the contrary.

            To    be   sure,   trade     secret      misappropriation         may   be

demonstrated by circumstantial evidence, such as access to the

trade secret by the misappropriating party and similarity between

the secret and the defendant’s design, a theory on which the

district court relied here.         See Stratienko v. Cordis Corp., 429

F.3d 592, 600 (6th Cir. 2005) (citing cases from the Second, Third,

Fourth, Seventh, Eighth, Ninth, and Federal Circuits); 4 Milgrim on

Trade Secrets § 15.01 & n.16 (Matthew Bender & Co. 2012) (citing

state and federal cases).7          It is reasonable to assume that a

similar standard would apply under the confidentiality provisions

of the NDA.      As the district court found, Chance had access to the

confidential      electronic     files    used       to   make     molds     for    the



     7
       Although the Supreme Court of New Hampshire has not
discussed the use of the access-and-similarity test, it has stated
that the NHUTSA “is New Hampshire’s codification of the Uniform
Trade Secrets Act (UTSA) . . . [and it] must be construed ‘to
effectuate its general purpose to make uniform the law with respect
to the subject of [the NHUTSA] among states enacting it.’
Therefore, opinions rendered by courts interpreting the UTSA[]
. . . inform our analysis.” Mortgage Specialists, Inc. v. Davey,
904 A.2d 652, 662 (N.H. 2006) (quoting N.H. Rev. Stat. Ann.
§ 350-B:8).

                                       -11-
RollerMouse Free.       However, as noted above, similarity between

Chance’s design and Contour’s overall design was not demonstrated.

              The district court speculated that “the electronic files

used to produce the molds for the Free could be modified to produce

molds   for    the   ErgoRoller,”   District   Court   Findings,    2011   WL

6300622, at *20, but there was no testimony that they were in fact

modified, or that they would even be useful for producing a product

with    a   different   overall   shape.     Rather,   the   only   relevant

testimony is that the electronic files for a new product are

created from the final prototype of the new product, rather than

being modified from electronic files from old products.             And Ms.

Wang testified that this was also true for the ErgoRoller: the

prototype was created by an outside company, and the molding

process was not started until April or May of 2009, which was after

the prototype was finished in March 2009.

              The only significant similarity between the Free and the

ErgoRoller supported by the record is that both have a metal roller

bar in a trough with an optical sensor that detects movements of

the roller bar.         But there is       no evidence to establish any

connection between this feature and the allegedly misappropriated

information, the electronic files used to make molds for the Free.

              Thus, the record does not support a finding that Chance

used Contour’s confidential electronic files to make the molds for

the ErgoRoller, and the district court’s finding to the contrary


                                    -12-
was clearly erroneous.     Contour’s theory of misappropriation of

confidential information fails.

          The   district   court’s   other    basis   for   enjoining   the

ErgoRoller was its conclusion that the ErgoRoller was “derived

from” the RollerMouse Free. It is not clear how the district court

interpreted the “derived from” language in the NDA, aside from

reading it “to mean what it says.”      Id.   Contour contends that this

provision is a general non-compete provision, barring competition

with Contour mouse products.    There is no support for this theory

in the agreement, which applies only to “derived” products.

Furthermore, we doubt that a twenty-year worldwide non-compete

agreement on all ergonomic computer mice with roller bars would be

upheld under New Hampshire law, again suggesting that the agreement

should not be interpreted to extend that far.          Cf. Technical Aid

Corp. v. Allen, 591 A.2d 262, 267-68 (N.H. 1991) (holding that a

former employee could not be restricted from servicing any of the

company’s customers for eighteen months).             We must therefore

determine the meaning of the term “derived.”

          In patent law, to prove “derivation” under 35 U.S.C.

§ 102(f), the party asserting that the patentee “derived” the

invention from another must show that the complete invention was

communicated to the patentee; a partial disclosure is insufficient.

See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1344-45

(Fed. Cir. 2003).   We have no doubt that contracting parties may


                                 -13-
agree that one party will not copy another’s product, whether or

not that product would qualify for patent protection. See Aronson,

440 U.S. at 262.        Here, the prohibition on the sale of a “derived”

product would cover such copying.             But in this case, it is clear

that the ErgoRoller is not simply a copy of the Free.              As discussed

above, the size, shape, and number of buttons are different, and

the parties stipulated that the ErgoRoller software, electronics,

and electrical design were independently developed.8               Contour does

not contend that the Free was copied or that the complete invention

was derived from the Free.         But Contour does argue that aspects of

the ErgoRoller were derived from the Free.

               In such circumstances, and absent more explicit language

in the agreement, we think that the “derived from” language at the

very       least   requires   appropriation    of   some   novel   property   of

Contour’s products, not the derivation of features of the Contour

products well known in the art.          This conclusion is supported by

the NDA’s exclusion of information in the public domain from its




       8
       In finding that the ErgoRoller was “derived from” the Free,
the district court also relied on an e-mail from a Chance employee
to a distributor, which described the ErgoRoller as “a former
Contour Free.” District Court Findings, 2011 WL 6300622, at *20;
see J.A. 1371. But the employee in question, Ms. Tzu-Wen (Lynn)
Lin, was a salesperson who was hired because she could speak
English. The fact that a lower-level employee without corporate
officer responsibility may have characterized the ErgoRoller as “a
former Contour Free” is not significant given the other evidence of
differences.

                                      -14-
confidentiality obligations, as discussed above.9                       Indeed, the

district    court    recognized      that   there    is   not    “any    basis    for

enjoining Chance from making or selling products that are ‘similar’

to Contour’s, insofar as those products do not misappropriate

Contour’s trade secrets or use its confidential information.”

District Court Findings, 2011 WL 6300622, at *28.

            The     record    is    clear   that    the   ErgoRoller      does   not

appropriate any novel features of Contour’s products. As discussed

above, the only significant similarity between the products is that

both have a metal roller bar in a trough with an optical sensor

that detects movements of the roller bar.             However, Contour failed

to introduce evidence that these features were novel, and indeed

there was    evidence        that   computer   mice with        roller   bars    were

disclosed in published patents that predated Contour’s “invention.”

There is no suggestion that using an optical sensor would be

anything but a common solution to detect motions of the roller bar,

and the particular electronics used to operate the sensor were

stipulated to be “not derived from Contour’s product or firmware.”

J.A. 2032.




     9
       We also note that extending the “derived from” language to
non-novel properties of Contour’s products might raise preemption
problems.   As discussed above, a private contract may restrict
copying of an idea that was not in the public domain at the time of
contracting, but may not “withdraw any idea from the public
domain.” Aronson, 440 U.S. at 263.

                                       -15-
           Contour      argues    that     having   a   roller     bar   that   was

removable was Contour’s idea, but the NDA only prohibits Chance

from producing a “product derived from or based on the Product,”

where   “the    Product”   is    defined     as   Contour’s    “computer    mouse

products and related materials.” Id. at 157-58. None of Contour’s

commercial products utilized a removable roller bar. While some of

Contour’s prototypes did use a removable bar, the ErgoRoller was

not similar to these products.           See District Court Findings, 2011

WL 6300622, at *6 (stating that the ErgoRoller’s removable bar “was

not achieved by placing the roller bar on a hinged axle, as in the

original prototype of the RollerMouse Free, but by placing the

roller bar in a trough in which it slides and rotates freely”).                  In

any event, Contour’s CEO, Steven Wang, admitted that the idea of a

computer mouse with a removable roller bar was disclosed in U.S.

Patent No. 4,799,049, which issued in 1989, six years before the

NDA was signed.         Thus, there was no proof that any aspect of

Chance’s ErgoRoller product was derived from any novel feature of

Contour’s products.

           In    sum,   the     district    court   erred     in   extending    the

injunction to Chance’s ErgoRoller product because the record does

not support the finding that Chance breached the NDA in producing

the ErgoRoller.      However, we see no error in the duration of the

injunction as applied to the other enjoined products. The district

court granted an injunction based on breach of the NDA until June


                                      -16-
15, 2015, which is the expiration date of the NDA.   This was not an

abuse of discretion in light of the limited duration of the

injunction.   See Ross-Simons of Warwick, Inc. v. Baccarat, Inc.,

217 F.3d 8, 14 (1st Cir. 2000) (finding no abuse of discretion in

the scope of a permanent injunction that “specifically enforces the

contract” signed by the parties).

                           III. Damages

           Chance also appeals the jury’s $7.7 million compensatory

damages award, arguing that the jury instructions on lost profits

were erroneous because they did not specify that “Contour must have

been capable of manufacturing its products during the relevant

period.”   Appellants’ Br. 44-45.     Chance failed to object to the

jury instruction on lost profits at trial.10       “Absent adequate

objections to the instructions, our review is for plain error,”

which is “rare indeed . . . in a civil case.”        Sony BMG Music

Entm’t v. Tenenbaum, 660 F.3d 487, 503 (1st Cir. 2011).    We see no

plain error here.   Plain error requires, among other things, that



     10
       At the charge conference, the district court informed the
parties, “I’ve given you copies of the instructions that I think
incorporate your objections and proposals and my rulings on them
. . . and I assume you’ll want to make a record of whatever issues
you want to make a record of . . . .” J.A. 1705. Contour raised
a number of objections, including arguing for some changes to the
lost profits section of the instructions.       Chance, responding
specifically to this objection, stated, “We agree with the order
the way it is presented.” Id. at 1720. The court then said to
Chance, “I’ve heard Contour’s objections to the jury instructions.
Do you have any objections you’d like to raise?” Id. at 1721.
Chance responded, “No, your Honor.” Id.

                               -17-
the instruction be clearly incorrect.                       See United States v. Brown,

669 F.3d 10, 28 (1st Cir. 2012).                        It was not.

            In a breach of contract action, the New Hampshire Supreme

Court    “will    uphold         an    award       of    damages       for    lost   profits      if

sufficient data existed indicating that profits were reasonably

certain to result” but for the breach.                           George v. Al Hoyt & Sons,

Inc., 27 A.3d 697, 709 (N.H. 2011) (quoting Petrie-Clemons v.

Butterfield, 441 A.2d 1167, 1171 (N.H. 1982)) (internal quotation

mark    omitted);        see      E.     Mountain          Platform          Tennis,     Inc.     v.

Sherwin-Williams Co., Inc., 40 F.3d 492, 502 (1st Cir. 1994).

Unlike in the patent infringement cases cited by Chance, in which

the patentee seeking lost profits must prove that but for the

misappropriation it had “the manufacturing and marketing capability

to exploit the demand,” see, e.g., Siemens Med. Solutions USA, Inc.

v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1287

(Fed. Cir.       2011),      a    distributor            seeking       lost    profits    from     a

supplier for breach of contract need only prove that it would have

made the profits but for the breach.

            Here, the district court instructed the jury that Contour

seeks     “lost        profits         as      a        result     of        Chance’s     alleged

misappropriation in breaching the NDA,” and that in order to award

lost    profits,       the   jury       must       find    (1)    that       the   profits      “are

reasonably ascertainable”; (2) that they “were not reasonably

preventable       by    Contour”;           (3)     “that        the    lost       profits      were


                                               -18-
proximately caused by the misappropriation”; and (4) “that Chance

had a reason to foresee at the time the contract was formed that

those lost profits would result from the breach.”    J.A. 1753-54.

We see no plain error in these instructions.   The fact that Contour

did not produce its products itself did not preclude damages.   But

for the breach, it could have made the lost profits by employing

another company to manufacture the products (as it had employed

Chance initially), and Contour could then have profited by selling

them.   We thus affirm the jury award of damages.

                          IV. Conclusion

           For the foregoing reasons, we reverse the injunction as

applied to Chance’s ErgoRoller, affirm the injunction as applied to

the other enjoined products, affirm the jury award of damages, and

remand for further proceedings consistent with this opinion.



Affirmed-in-part, reversed-in-part, and remanded.    Appellee shall

recover one-half its costs.




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