  United States Court of Appeals for the Federal Circuit
                                        2009-1504

                          I4I LIMITED PARTNERSHIP and
                    INFRASTRUCTURES FOR INFORMATION INC.,

                                                      Plaintiffs-Appellees,

                                             v.

                             MICROSOFT CORPORATION,

                                                      Defendant-Appellant.


       Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of
Washington, DC, argued for plaintiffs-appellees. With him on the brief were Don O.
Burley, Kara F. Stoll and Jason W. Melvin; and Erik R. Puknys, of Palo Alto, California. Of
counsel on the brief were Douglas A. Cawley and Jeffrey A. Carter, McKool Smith, P.C. of
Dallas, Texas, and T. Gordon White, of Austin, Texas.

      Matthew D. Powers, Weil, Gotshal & Manges LLP, of Redwood Shores, California,
argued for defendant-appellant. With him on the brief were Kevin S. Kudlac and Amber H.
Rovner, of Austin, Texas. Of counsel on the brief were Matthew D. McGill, Minodora D.
Vancea, Gibson, Dunn & Crutcher LLP, of Washington, DC; and Isabella E. Fu, Microsoft
Corporation, of Redmond, Washington. Of counsel was David J. Lender, Weil, Gotshal &
Manges LLP, of New York, New York.

       John W. Thornburgh, Fish & Richardson, P.C., of San Diego, California, for amici
curiae Dell Inc. and Hewlett-Packard Company. With him on the brief were John E.
Gartman; and Indranil Mukerji, of Washington, DC.

       Richard A. Samp, Washington Legal Foundation, of Washington, DC, for amicus
curiae Washington Legal Foundation, of Washington, DC. With him on the brief was
Daniel J. Popeo.

Appealed from: United States District Court for the Eastern District of Texas

Judge Leonard Davis
 United States Court of Appeals for the Federal Circuit
                                        2009-1504

                          I4I LIMITED PARTNERSHIP and
                    INFRASTRUCTURES FOR INFORMATION INC.,

                                                  Plaintiffs-Appellees,

                                             v.

                             MICROSOFT CORPORATION,

                                                  Defendant-Appellant.

Appeal from the United States District Court for the Eastern District of Texas in case no.
07-CV-113, Judge Leonard Davis.

                            __________________________

                            DECIDED: March 10, 2010
                            __________________________


Before SCHALL, PROST, and MOORE, Circuit Judges.

PROST, Circuit Judge.

       This is a patent infringement case about an invention for editing custom XML, a

computer language. The owner of the patent, i4i Limited Partnership (“i4i”), brought suit

against Microsoft Corporation (“Microsoft”), alleging that the custom XML editor in

certain versions of Microsoft Word (“Word”), Microsoft’s word-processing software,

infringed i4i’s patent. After a seven-day trial, the jury found Microsoft liable for willful

infringement. The jury rejected Microsoft’s argument that the patent was invalid, and

awarded $200 million in damages to i4i. The district court denied Microsoft’s motions

for judgment as a matter of law and motions for a new trial, finding that Microsoft had

waived its right to challenge, among other things, the validity of the patent based on all
but one piece of prior art and the sufficiency of the evidence supporting the jury’s

damage award.      Although statutorily authorized to triple the jury’s damages award

because of Microsoft’s willful infringement, the district court awarded only $40 million in

additional damages.     It also granted i4i’s motion for a permanent injunction.        This

injunction, which this court stayed pending the outcome of this appeal, is narrow. i4i

Ltd. v. Microsoft Corp., No. 2009-1504 (Fed. Cir. Sept. 3, 2009). It does not affect

copies of Word sold or licensed before the injunction goes into effect. Thus, users who

bought or licensed Word before the injunction becomes effective will still be able to use

the infringing custom XML editor, and receive technical support from Microsoft. After its

effective date, the injunction prohibits Microsoft from selling, offering to sell, importing,

or using copies of Word with the infringing custom XML editor.            Microsoft is also

prohibited from instructing or assisting new customers in the custom XML editor’s use.

       On appeal, Microsoft challenges the jury verdict and injunction on multiple

grounds. Because this case went to trial and we are in large part reviewing what the

jury found, our review is limited and deferential.        We affirm the issuance of the

permanent injunction, though we modify its effective date to accord with the evidence.

In all other respects, we affirm for the reasons set forth below.

                                     BACKGROUND

       i4i began as a software consulting company in the late 1980s.              Basically,

companies would hire i4i to develop and maintain customized software for them. Thus,

while consumers might not find i4i’s products on the shelves at Best Buy or CompUSA,

i4i was in the business of actively creating, marketing, and selling software. In June

1994, i4i applied for a patent concerning a method for processing and storing




2009-1504                                    2
information about the structure of electronic documents. After approximately four years,

the United States Patent and Trademark Office (“PTO”) allowed the application, which

issued as U.S. Patent No. 5,787,449 (“’449 patent”). The invention claimed in the ’449

patent forms the basis of this litigation. Since then, i4i has developed several software

products that practice the invention. One of these products is “add-on” software for

Microsoft Word, which expands Word’s capability to work with documents containing

custom XML.

       XML is one of many markup languages. Markup languages tell the computer

how text should be processed by inserting “tags” around text. Tags give the computer

information about the text. For example, some tags might tell the computer how to

display text, such as what words should appear in bold or italics. Tags can also tell the

computer about the text’s content, identifying it as a person’s name or social security

number, for instance. Each tag consists of a delimiter and tag name. The delimiter sets

the tag apart from the content. Thus, a tag indicating that “717 Madison Pl. NW” is an

address might appear as <address>717 Madison Pl. NW</address> where “address” is

the tag’s name and “<” and “>” are the delimiters. Custom XML allows users to create

and define their own tags. i4i refers to tags and similar information about a document’s

structure as “metacodes.” The specification of the ’449 patent defines “metacode” as

“an individual instruction which controls the interpretation of the content of the data.”

’449 patent col.4 ll.15-16.

       The ’449 patent claims an improved method for editing documents containing

markup languages like XML.       The improvement stems from storing a document’s

content and metacodes separately.       Id. at col.6 ll.18-21.   The invention primarily




2009-1504                                  3
achieves this separation by creating a “metacode map,” a data structure that stores the

metacodes and their locations within the document. The document’s content is stored

in a data structure called “mapped content.” Claim 14 is illustrative:

       A method for producing a first map of metacodes and their addresses of
       use in association with mapped content and stored in distinct map storage
       means, the method comprising:

       providing the mapped content to mapped content storage means;

       providing a menu of metacodes; and

       compiling a map of the metacodes in the distinct storage means, by
       locating, detecting and addressing the metacodes; and

       providing the document as the content of the document and the metacode
       map of the document.

Id. at col.16 ll.18-30.

       Separate storage of a document’s structure and content was an improvement

over prior technology in several respects. Importantly, it has allowed users to work

solely on a document’s content or its structure. Id. at col.7 ll.6-11, 17-20.

       Since 2003, versions of Microsoft Word, a word processing and editing software,

have had XML editing capabilities. In 2007, i4i filed this action against Microsoft, the

developer and seller of Word. i4i alleged that Microsoft infringed claims 14, 18, and 20

of the ’449 patent by making, using, selling, offering to sell, and/or importing Word

products capable of processing or editing custom XML.              i4i further alleged that

Microsoft’s infringement was willful. Microsoft counterclaimed, seeking a declaratory

judgment that the ’449 patent was invalid and unenforceable.

       Before the case was submitted to the jury, Microsoft moved for judgment as a

matter of law (“JMOL”) on the issues of infringement, willfulness, and validity. The




2009-1504                                    4
district court denied Microsoft’s motions, and the case was submitted to the jury. The

jury found that Word infringed all asserted claims of the ’449 patent. The jury further

found that the patent was not invalid, and that Microsoft’s infringement was willful. It

awarded $200 million in damages.

      After trial, Microsoft renewed its motions for JMOL on infringement, validity, and

willfulness. In the alternative, Microsoft moved for a new trial on these issues based on

the sufficiency of the evidence supporting the jury’s findings. Microsoft also argued it

was entitled to a new trial based on errors in the claim construction, evidentiary rulings,

and jury instructions. The district court denied Microsoft’s motions. It granted i4i’s

motion for a permanent injunction and awarded $40 million in enhanced damages.

      Microsoft now appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                      DISCUSSION

      Microsoft raises numerous issues on appeal.         First, Microsoft challenges the

district court’s construction of the claim term “distinct.” Second, Microsoft challenges

the jury’s validity finding, urging us to find that the ’449 patent was anticipated or

obvious as a matter of law, or at least grant a new trial on those issues. Third, Microsoft

argues that the jury’s infringement finding must be set aside because it is unsupported

by substantial evidence. Fourth, Microsoft challenges the damages award, specifically

the admission of certain expert testimony and the sufficiency of the evidence supporting

the award. Finally, Microsoft challenges the issuance and terms of the permanent

injunction. We address each of these issues in turn.




2009-1504                                   5
                                  I. Standards of Review

       For issues not unique to patent law, we apply the law of the regional circuit in

which this appeal would otherwise lie. Thus, we apply Fifth Circuit law when reviewing

evidentiary rulings and denials of motions for JMOL or new trial.          Finisar Corp. v.

DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008).

       We review denials of JMOL de novo.          Cambridge Toxicology Group, Inc. v.

Exnicios, 495 F.3d 169, 179 (5th Cir. 2007). JMOL is appropriate only if the court finds

that a “reasonable jury would not have a legally sufficient evidentiary basis to find for the

party on that issue.” Fed. R. Civ. P. 50(a)(1); see Cambridge Toxicology, 495 F.3d at

179.

       We review the denial of a new trial motion for abuse of discretion. Industrias

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

2002). We will not reverse a denial absent a “clear showing” of an “absolute absence of

evidence to support the jury’s verdict.” Duff v. Werner Enters., Inc., 489 F.3d 727, 729

(5th Cir. 2007) (emphasis added).

       We review jury instructions for abuse of discretion, cognizant as we do so of the

district court’s broad discretion to compose jury instructions, so long as the instructions

accurately describe the law. Baker v. Canadian Nat’l/Ill. Cent. R.R., 536 F.3d 357, 363-

64 (5th Cir. 2008); Walther v. Lone Star Gas Co., 952 F.2d 119, 125 (5th Cir. 1992); see

also Barton’s Disposal Serv., Inc. v. Tiger Corp., 886 F.2d 1430, 1434 (5th Cir. 1989).

We will reverse a judgment “only if the [jury instructions] as a whole create[] a

substantial doubt as to whether the jury has been properly guided in its deliberations.”

Baker, 536 F.3d at 363-64. Erroneous instructions are subject to harmless error review.




2009-1504                                    6
We will not reverse if, considering the record as a whole, the erroneous instruction

“could not have affected the outcome of the case.” Wright v. Ford Motor Co., 508 F.3d

263, 268 (5th Cir. 2007).

                                  II. Claim Construction

       On appeal, we must decide whether the district court properly construed the

claim term “distinct.” In the asserted claims, the term “distinct” is used to describe how

the metacode map and the mapped content are stored. Specifically, the claims say the

metacode map is stored in “distinct map storage means” or “distinct storage means.”

See, e.g., ’449 patent col.16 ll.20, 25-26, 53-54. Analogously, the document’s content is

stored in “mapped content storage,” id. at col.16 ll.22-23, or “mapped content distinct

storage means.” Id. at col.15 l.51 (emphasis added).

       Before the district court, Microsoft argued that “distinct” added two requirements:

(1) storing the metacode map and mapped content in separate files, not just separate

portions of the computer’s memory; and (2) the ability to edit the document’s content

and its metacode map “independently and without access” to each other.

       The district court rejected both of Microsoft’s proposed limitations. Based on its

review of the claim language, the specification, and prosecution history, the district court

concluded that “distinct” did not require storage in separate files. Similarly, it concluded

that the user’s ability to independently edit the document’s structure or content was a

benefit of separate storage, not a claim limitation.       The district court then defined

“distinct map storage means” in more general terms, as “a portion of memory for storing

a metacode map.” “Mapped content distinct storage means” was defined as “a portion

of memory for storing mapped content.”




2009-1504                                    7
       On appeal, Microsoft renews both arguments about the meaning of “distinct.”

We review the district court’s claim construction de novo. Cybor Corp. v. FAS Techs.,

Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). To ascertain the scope and

meaning of the asserted claims, we look to the words of the claims themselves, the

specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1315-

17 (Fed. Cir. 2005) (en banc); see also 35 U.S.C. § 112 ¶ 2; Innova/Pure Water, Inc. v.

Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115-16 (Fed. Cir. 2004) (holding that

the claims are not “presumed” to be restricted to the embodiments disclosed in the

specification). We conclude that the district court properly rejected both of Microsoft’s

proposed limitations.

                                    A. Separate Files

       To determine whether “distinct” adds the requirement of storage in separate files,

we begin with the claim language. See Phillips, 415 F.3d at 1312. In this case, the

claim’s plain language does not require storage of the metacode map and mapped

content in separate files. The term “file” appears nowhere in the ’449 patent. Instead,

the claims use “storage means”; the specification uses “structures.” ’449 patent col.16

ll.22-26, 53; see also id. at col.4 ll.7-13, 21-24. Both “storage means” and “structures”

are broader terms than “file,” suggesting no particular format.       At trial, i4i’s expert

testified that a person of ordinary skill in the art would understand “structures” to store

and organize data, but not as limited to a particular storage format.         Indeed, the

specification arguably renounces particular formats by defining “document” as a “non-

random aggregation of data irrespective of its mode of storage or presentation.” Id. at

col.4 ll.57-59 (emphasis added).




2009-1504                                   8
       Turning to the specification, we similarly see no “clear intent[] to limit the claim

scope” to storage in files. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir.

2009). The sample algorithms do not say the storage means is restricted to “files.” ’449

patent col.8 ll.53-62; see Innova/Pure Water, 381 F.3d at 1121-22. Instead, they use

the more generic term “storage space,” creating one for the mapped content and

another for the metacode map.

       As for the prosecution history, we do not read it as limiting storage to files.

During prosecution, i4i distinguished its invention from U.S. Patent No. 5,280,574

(“Mizuta”) prior art in part because Mizuta stored “all document information . . . in one

file . . . the document file.” But this is not all i4i said. i4i then explained that Mizuta

“lacked any notion of a metacode map” or “distinct storage means.”           In evaluating

whether a patentee has disavowed claim scope, context matters.            Together, these

statements make clear that what distinguished the Mizuta prior art was not the storage

type (file or no file), but rather the separation of a document’s content and structure.

The statements Microsoft now plucks from the prosecution history do not “clear[ly] and

unmistakabl[y] disavow” storage means that are not files. Computer Docking Station

Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (citing Purdue Pharma L.P. v.

Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)).

       Because the claims themselves do not use the word “file” and the specification

discloses embodiments where the storage format is not a file, we conclude that “distinct”

does not require storage in separate files. Liebel-Flarsheim Co. v. Medrad, Inc., 358

F.3d 898, 907-08 (Fed. Cir. 2004) (declining to limit the invention’s scope to the

disclosed embodiments when the specification did “not expressly or by clear implication




2009-1504                                   9
reject the scope of the invention” to those embodiments); see also Boston Scientific

Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 987 (Fed. Cir. 2009).

                                  B. Independent Manipulation

       The closer question is whether “distinct” requires independent manipulation of

the metacode map and mapped content. Several of the embodiments in the ’449 patent

allow the user to manipulate only the metacode map or mapped content. ’449 patent

figs.4, 5, 6, 8. However, based on our review of the claim language, the specification,

and the prosecution history, we conclude that the claims are not limited to these

particular embodiments.

       Generally, a claim is not limited to the embodiments described in the

specification unless the patentee has demonstrated a “clear intention” to limit the claim’s

scope with “words or expressions of manifest exclusion or restriction.”            Liebel-

Flarsheim, 358 F.3d at 906; see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d

1313, 1327 (Fed. Cir. 2002). By the same token, not every benefit flowing from an

invention is a claim limitation.      See Computer Docking, 519 F.3d at 1374; Verizon

Servs. Corp. v. Vonage Holding Corp., 503 F.3d 1295, 1302-03 (Fed. Cir. 2007).

       We begin again with the claim language.             None of the claims mention

“independent manipulation” of the mapped content and metacode map, an omission we

find significant. Had the inventors intended this limitation, they could have drafted the

claims to expressly include it.

       Similarly, the specification refers to “separate,” rather than “independent,”

manipulation of the document’s architecture and content. The specification goes on to

describe the storage of the metacode map and content as “distinct and separate.”




2009-1504                                     10
“Distinct” and “separate” are not the same as “independent.”                Moreover, the

specification teaches that “separate manipulation” describes the user’s ability to work on

only the metacode map or content.          Behind the scenes, the invention keeps the

metacode map and content synchronized. For example, Figure 9 teaches that updates

to the content may require the invention to make corresponding changes to the

metacode map. ’449 patent col.14 l.49-col.15 l.5.

       Microsoft is correct that the specification refers to working on “solely” the

document’s structure (metacode map):

           The present invention provides the ability to work solely on metacodes.
       The process allows changes to be made to the structure of a document
       without requiring the content. A metacode map could be edited directly
       without the mapped content. Additionally a new map can be created
       based solely on an existing map without requiring the content.

Id. at col.7 ll.6-11 (emphases added). Read as a whole, however, these statements are

best understood as describing the advantages of separate storage, the real claim

limitation.   See Abbott Labs., 566 F.3d at 1289-90.         The specification’s permissive

language, “could be edited,” “can be created,” and “ability to work,” does not clearly

disclaim systems lacking these benefits.

       An examination of the prosecution history similarly reveals no statements that

unequivocally narrow the claims to require independent manipulation.           Initially, the

examiner rejected several claims as obvious, explaining that “[s]torage is always

distinct, even if at distinct addresses.” In response, i4i stated:

       [T]he architecture of a document can be treated as a separate entity from
       the content of the document. Thus, the architecture of the document can
       be treated as an entity having distinct storage from the content of the
       document. This separation allows distinct processes to operate on the
       content and the architecture, with or without knowledge of the other. In
       other words, using the present invention, one could change the



2009-1504                                    11
        architecture, (layout, structure, or presentation formation) of a document
        without even having access to the actual content of the document. This is
        achieved by extracting the metacodes from an existing document and
        creating a map of the location of the metacodes in the document and then
        storing the map and the content of the document separately.

The reason for the examiner’s rejection helps us understand i4i’s response. In context,

i4i’s response is best read as clarifying why the invention’s “storage means” are more

than just “distinct addresses.” i4i’s subsequent discussion of the benefits of separate

storage is not sufficiently “clear and unmistakable” to disavow embodiments lacking

independent manipulation. Purdue Pharma, 438 F.3d at 1136.

        In light of the specification’s permissive language, the prosecution history, and

the claim language, we conclude that “independent manipulation” is a benefit of

separate storage, but not itself a limitation.

                                         III. Validity

        Microsoft also appeals two issues regarding the validity of i4i’s patent. The first

is whether the invention would have been obvious to one of skill in the art. The second

is whether Microsoft is entitled to JMOL or a new trial on validity, due to anticipation by

a software program called S4.

        At trial, Microsoft argued that the ’449 patent was invalid based on several pieces

of prior art. As relevant here, Microsoft argued that i4i’s invention would have been

obvious in light of U.S. Patent No. 5,587,902 (“Kugimiya”), when combined with either

an SGML editor known as Rita or U.S. Patent No. 6,101,512 (“DeRose”).                In the

alternative, Microsoft argued that i4i’s invention was anticipated under 35 U.S.C.

§ 102(b) by the sale of a software program, SEMI-S4 (“S4”), by i4i before the critical

date.




2009-1504                                        12
       i4i disputed that it would have been obvious to combine Kugimiya with Rita or

DeRose.      i4i presented evidence that Kugimiya was in a different field (language

translation) than Rita, DeRose, or the ’449 patent, which address document editing. i4i

also presented evidence of secondary considerations, including long-felt need, failure of

others, and commercial success. As to anticipation, i4i also argued that S4 did not

practice the ’449 patent because it did not create a “metacode map.”

       Before the case was submitted to the jury, Microsoft moved for JMOL on

invalidity, arguing that i4i’s sale of S4 violated the on-sale bar under § 102(b). Microsoft

did not move for pre-verdict JMOL on obviousness or with regard to other prior art. The

verdict form did not require the jury to make separate findings for the different pieces of

prior art.   Instead, the form asked:    “Did Microsoft prove by clear and convincing

evidence that any of the listed claims of the ’449 patent are invalid?” The jury was

instructed to answer “yes” if it found a particular claim invalid, but otherwise answer

“no.” The jury found all the asserted claims not invalid.

                                     A. Obviousness

       On appeal we must decide whether the ’449 patent would have been obvious in

light of some combination of Rita or DeRose with Kugimiya.

       The Rita prior art is a software program that allows users to create and edit

documents using SGML, a markup language like XML. Rita stores the SGML tags and

document’s content in a “tree structure.” This tree stores the tags and content together.

DeRose discloses a system for generating, analyzing, and navigating electronic

documents containing a markup language, such as XML or SGML.                     To assist

navigation, DeRose and Rita use “pointers,” which allow the user to move between




2009-1504                                   13
different branches of the tree structure. Kugimiya discloses a system for translating

documents from English to Japanese. As part of the translation process, Kugimiya

finds, removes, and stores any XML tags in a separate file.           The program then

translates the document’s content from English to Japanese, after which it puts the XML

tags into the translated document.      After the tags are replaced, the separate file

containing the tags is discarded.

      Although obviousness is a question of law, it is based on factual underpinnings.

As always, our review of the ultimate legal question, whether the claimed invention

would have been obvious, is de novo. Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d

1098, 1108 (Fed. Cir. 2003). The extent to which we may review the jury’s implicit

factual findings depends on whether a pre-verdict JMOL was filed on obviousness. Id.;

see also Jurgens v. McKasy, 927 F.2d 1552, 1557-58 (Fed. Cir. 1991).

      In this case, Microsoft has waived its right to challenge the factual findings

underlying the jury’s implicit obviousness verdict because it did not file a pre-verdict

JMOL on obviousness for the Rita, DeRose and Kugimiya references. Fed. R. Civ. P.

50(a), (b). As we explained in Duro-Last, a party must file a pre-verdict JMOL motion

on all theories, and with respect to all prior art references, that it wishes to challenge

with a post-verdict JMOL.     321 F.3d at 1107-08.      Microsoft’s pre-verdict JMOL on

anticipation, based on S4, was insufficient to preserve its right to post-verdict JMOL on

a different theory (obviousness), or on different prior art (Rita, DeRose, Kugimiya).

Duro-Last, 321 F.3d at 1107-08.

      Accordingly, we do not consider whether the evidence presented at trial was

legally sufficient to support the jury’s verdict.   Our review is limited to determining




2009-1504                                   14
whether the district court’s legal conclusion of nonobviousness was correct, based on

the presumed factual findings. Id. at 1108-09; Kinetic Concepts, Inc. v. Blue Sky Med.

Group, Inc., 554 F.3d 1010, 1020-21 (Fed. Cir. 2009). In conducting this review, we

must presume the jury resolved underlying factual disputes in i4i’s favor because the

jury made no explicit factual findings. Duro-Last, 321 F.3d at 1108. This presumption

applies to disputes about (1) the scope and content of the prior art; (2) differences

between the prior art and asserted claims; (3) the existence of motivation to modify prior

art references; and (4) the level of ordinary skill in the pertinent art. Id. at 1109; see

also Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Kinetic Concepts, 554 F.3d at

1019.

        Microsoft’s argument on appeal—that it would have been obvious to combine

DeRose or Rita with Kugimiya—depends heavily on (1) the scope of the prior art, and

(2) whether a person of ordinary skill would have been motivated to combine the

references’ teachings. These are questions of fact. Kinetic Concepts, 554 F.3d at

1020-21. Similarly, Microsoft’s argument that the prior art discloses all of the claim

limitations boils down to questions of fact: whether the “tree structure” in Rita and

DeRose is a “metacode map,” and whether a “pointer” is an “address of use.” See id.;

Graham, 383 U.S. at 17. The jury found all of the asserted claims not invalid, meaning

the jury must have believed that there were differences between the prior art and

asserted claims, and that a person of ordinary skill would not have been motivated to

combine the references. Cf. Kinetic Concepts, 554 F.3d at 1019-20; Duro-Last, 321

F.3d at 1108-09. Because we must view the evidence in the light most favorable to the

verdict, all of these questions must be resolved against Microsoft, and in favor of i4i.




2009-1504                                  15
Arsement v. Spinnaker Exploration Co., 400 F.3d 238, 249, 252-53 (5th Cir. 2005); see

Jurgens, 927 F.2d at 1557-58. In light of the jury’s implicit factual findings, Microsoft

has not established that the asserted claims would have been obvious.

                                     B. Anticipation

       For anticipation, the question is whether the district court erred in denying

Microsoft’s motion for post-verdict JMOL on invalidity, or alternatively a new trial, based

on the sale of S4 violating the on-sale bar. See 35 U.S.C. § 102(b).

       S4 was a software program developed for a client called SEMI by i4i’s corporate

predecessor. i4i’s founder, Michel Vulpe, hired Stephen Owens to help develop S4,

which they delivered to SEMI in early 1993. S4 allowed the user to add and edit SGML

tags in electronic documents. For storage purposes, S4 divided the document into

“entities.” According to Vulpe and Owens, these entities were simply chunks of the

SGML document, where the SGML tags were intermixed with the content. Both Vulpe

and Owens testified that S4 did not create a “metacode map.”

       At trial, Microsoft argued that the sale of S4 before the critical date violated the

on-sale bar. To prove invalidity by the on-sale bar, a challenger must show by clear and

convincing evidence that the claimed invention was “on sale in this country, more than

one year prior to the date of the application for patent in the United States.” Id.; Adenta

GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1371 (Fed. Cir. 2007). It is uncontested that

S4 was sold in the United States before the critical date. At trial, the dispute was

whether S4 practiced the “metacode map” limitation of the ’449 patent.

       Because the S4 source code was destroyed after the project with SEMI was

completed (years before this litigation began), the dispute turned largely on the




2009-1504                                   16
credibility of S4’s creators, Vulpe and Owens, who are also the named inventors on the

’449 patent. Both testified that the S4 software sold to SEMI did not practice the ’449

patent, for which they claimed the key innovation—the metacode map—was not even

conceived until after the critical date. Both were extensively cross-examined. Vulpe

was impeached with statements from a letter he had written to investors, as well as a

funding application submitted to the Canadian government.

       On appeal, Microsoft argues that it was entitled to JMOL because it established a

prima facie case of anticipation, which i4i could not rebut by relying on the inventors’

testimony alone, absent corroboration. Alternatively, Microsoft contends the evidence

was not sufficient to support the jury’s verdict of validity.

                                     1. Burden of Proof

       Microsoft’s contention regarding a prima facie case and i4i’s “rebuttal”

misunderstands the nature of an anticipation claim under 35 U.S.C. § 102(b).

Anticipation is an affirmative defense. See, e.g., Electro Med. Sys., S.A. v. Cooper Life

Scis., Inc., 34 F.3d 1048, 1052 (Fed. Cir. 1994). We do not agree that i4i was required

to come forward with corroboration to “rebut” Microsoft’s prima facie case of

anticipation.   Corroboration is required in certain circumstances.   See, e.g., Martek

Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374-76 (Fed. Cir. 2009)

(“Because Lonza sought to introduce the testimony of an alleged prior inventor under

§ 102(g) for the purpose of invalidating a patent, Lonza was required to produce

evidence corroborating Dr. Long's testimony.”); Procter & Gamble Co. v. Teva Pharms.

USA, Inc., 566 F.3d 989, 989-99 (Fed. Cir. 2009) (requiring corroboration where

patentee tried to prove that the conception date was earlier than the filing date of a




2009-1504                                     17
potentially anticipatory patent); Henkel Corp. v. Procter & Gamble Co., 560 F.3d 1286

(Fed. Cir. 2009) (interference); Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d

1279, 1295-96 (Fed. Cir. 2008) (“An alleged co-inventor's testimony, standing alone,

cannot rise to the level of clear and convincing evidence; he must supply evidence to

corroborate his testimony.”). However, this is not a case where witness testimony was

being used to overcome prior art by establishing an earlier date of invention.

       To support its argument that S4 practiced the ’449 patent, Microsoft offered

testimony by a former i4i employee and its expert.         i4i responded with evidence,

specifically testimony by S4’s inventors, that S4 did not practice the claimed method.

Though we require corroboration of “any witness whose testimony alone is asserted to

invalidate a patent,” Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369-70

(Fed. Cir. 1999) (emphasis added), here the inventor testimony was offered by i4i in

response to Microsoft’s attack on the validity of the ’449 patent. It was not offered to

meet Microsoft’s burden of proving invalidity by clear and convincing evidence. Cf.

TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159-60 (Fed. Cir. 2004);

Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1217 (Fed. Cir. 2002); Finnigan,

180 F.3d at 1367. We know of no corroboration requirement for inventor testimony

asserted to defend against a finding of invalidity by pointing to deficiencies in the prior

art. Accordingly, we hold that corroboration was not required in this instance, where the

testimony was offered in response to a claim of anticipation and pertained to whether

the prior art practiced the claimed invention.




2009-1504                                   18
                              2. Sufficiency of the Evidence

       In contrast to obviousness, Microsoft did move for pre-verdict JMOL regarding

anticipation based on S4. We nonetheless conclude that there was sufficient evidence

for a reasonable jury to find that the ’449 patent was not anticipated by the sale of S4.

See Bellows v. Amoco Oil Co., 118 F.3d 268, 273 (5th Cir. 1997). At trial, the jury heard

conflicting testimony on whether S4 met the “metacode map” limitation. In evaluating

the evidence, the jury was free to disbelieve Microsoft’s expert, who relied on the S4

user manual, and credit i4i’s expert, who opined that it was impossible to know whether

the claim limitation was met without looking at S4’s source code. Although the absence

of the source code is not Microsoft’s fault, the burden was still on Microsoft to show by

clear and convincing evidence that S4 embodied all of the claim limitations. The jury’s

finding of validity was supported by the testimony of the inventors (Vulpe and Owens),

as well as their faxes to an attorney regarding the patent application.

                                   3. Jury Instructions

       Microsoft also challenges the jury instructions on its burden of proving

anticipation. According to Microsoft, the burden of proof should have been less for prior

art that was not before the PTO, as was the case for Rita and DeRose.

       We conclude that the jury instructions were correct in light of this court’s

precedent, which requires the challenger to prove invalidity by clear and convincing

evidence. See, e.g., Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d 1348,

1363-64 (Fed. Cir. 2008).      This court’s decisions in Lucent Technologies, Inc. v.

Gateway, Inc., 580 F.3d 1301, 1311-16 (Fed. Cir. 2009), and Technology Licensing

Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008), make clear that the




2009-1504                                   19
Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 426

(2007) did not change the burden of proving invalidity by clear and convincing evidence.

Thus, based on our precedent, we cannot discern any error in the jury instructions.

                                       IV. Infringement

         Taking Microsoft’s arguments with regard to infringement in turn, we first review

the jury instructions on infringement. We then decide whether the verdict is supported

by substantial evidence.

                                     A. Jury Instructions

         At trial, i4i presented three theories of liability: direct, contributory, and induced

infringement. Over Microsoft’s objection, the district court used a general verdict form,

which did not require separate findings on the different theories. Instead, the form

asked:     “Did i4i prove by a preponderance of the evidence that Microsoft infringes

Claims 14, 18, or 20 of the ’449 patent?” The form then instructed the jury to answer

“yes” or “no” for each claim. The jury answered “yes” for all asserted claims.

         On appeal, Microsoft argues that it is entitled to a new trial because of two

alleged errors in the jury instructions regarding contributory infringement.             First,

Microsoft argues it was error to use the term “component” rather than “material or

apparatus.” In relevant part, the instructions provided:

         If you find someone has directly infringed the ’449 patent, then
         contributory infringement exists if i4i establishes by a preponderance of
         evidence that:

         1) Microsoft sold, offered for sale, or imported;
         2) A material component for use in practicing the patented claim—or
            patented method that is not a staple article of commerce suitable for
            substantial non-infringing use;
         3) With knowledge that the component was especially made or adapted
            for use in an infringing manner.



2009-1504                                      20
The corresponding statutory section, 35 U.S.C. § 271(c), uses the words “material or

apparatus,” not “component,” for patented processes.         Although the district court’s

instructions differed from the statute, this is not a case where the difference mattered.

See Baker, 536 F.3d at 363-64 (reversing a jury verdict “only if the charge as a whole

creates a substantial doubt as to whether the jury has been properly guided in its

deliberations”). The parties’ infringement arguments did not turn on whether Word’s

custom XML editor was a “component,” versus a “material or apparatus.” Nor is there

any reason to think the jury was aware of the difference, or would have viewed the

difference as anything but semantics had it known, because both parties used the terms

interchangeably at trial. Under these circumstances, we are satisfied that the instruction

properly guided the jury in its deliberations.

       Microsoft also argues that the district court erred by instructing the jury to focus

on the custom XML editor, rather than all of Word, when deciding whether any

noninfringing uses were “substantial.” Given the evidence presented at trial, the district

court did not abuse its discretion. As we explained in Lucent, a particular tool within a

larger software package may be the relevant “material or apparatus” when that tool is a

separate and distinct feature. 580 F.3d at 1320-21. In Lucent, the infringement inquiry

accordingly focused on the date-picker, even though that tool was included in Microsoft

Outlook, a larger software package. Id. Although the software differs, our reasoning in

Lucent applies equally here. At trial, i4i showed that some versions of Word 2003

included the custom XML editor, while others did not. Dr. Rhyne opined that this ability

to “leave [the editor] out or put it in” various Word products showed that the editor was a

separate and distinct feature. Thus, there was sufficient evidence before the jury for it




2009-1504                                    21
to conclude that the relevant “material or apparatus” was the custom XML editor, not all

of Word. Accordingly, the jury was properly instructed that it should focus on the editor,

not all of Word. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed.

Cir. 2008).

                              B. Sufficiency of the Evidence

       Microsoft also challenges the sufficiency of evidence supporting the jury’s

general verdict of infringement.       Infringement is a question of fact.         Because

infringement was tried to a jury, we review the verdict only for substantial evidence.

ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1311 (Fed. Cir. 2007).

       Before we consider the evidence, we pause briefly to address what errors are

fatal to a general verdict. Different rules apply depending upon whether the flaw is in

the legal theory or the evidence. We must set aside a general verdict if the jury was told

it could rely on any of two or more independent legal theories, one of which was

defective. Walther, 952 F.2d at 126; see Northpoint Tech., Ltd. v. MDS Am., Inc., 413

F.3d 1301, 1311-12 (Fed. Cir. 2005). However, we will not set aside a general verdict

“simply because the jury might have decided on a ground that was supported by

insufficient evidence.” Walther, 952 F.2d at 126 (emphasis added). We will uphold

such a verdict if there was sufficient evidence to support any of the plaintiff’s alternative

factual theories; we assume the jury considered all the evidence and relied upon a

factual theory for which the burden of proof was satisfied. See Northpoint Tech., 413

F.3d at 1311-12.

       In this case, Microsoft argues that the general verdict must be set aside unless

both of i4i’s alternative legal theories, contributory infringement and induced




2009-1504                                    22
infringement, are supported by substantial evidence. We disagree: the verdict must be

upheld if substantial evidence supports either legal theory. Microsoft’s argument fails to

distinguish between defects in legal theories and defects in the factual evidence. In this

case, the jury was instructed that it could rely on any of three legal theories—direct,

contributory, or induced infringement. All of these theories are legally valid and the

corresponding instructions on each were proper. Because the jury could not have relied

on a legally defective theory, the only remaining question is whether there was sufficient

evidence to support either of i4i’s independently sufficient legal theories, contributory

infringement or induced infringement. 1 We conclude that there was.

                                 1. Direct Infringement

      To succeed on a theory of contributory or induced infringement, i4i was required

to show direct infringement of the ’449 patent. Lucent, 580 F.3d at 1317; see also

Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 858 (Fed. Cir. 2006). Because the

claims asserted by i4i are method claims, Microsoft’s sale of Word, without more, did

not infringe the ’449 patent. Lucent, 580 F.3d at 1317. Direct infringement occurs only

when someone performs the claimed method. Id.

      Based on the evidence presented at trial, a reasonable jury could have found that

at least one person performed the methods claimed in the ’449 patent. This evidence

included testimony by i4i’s expert (Dr. Rhyne), a joint stipulation, and Microsoft’s

response to interrogatories. Rhyne opined that Word’s custom XML editor met all of the



      1
               Even though we could affirm the jury’s verdict of infringement so long as
there was sufficient evidence of direct infringement by Microsoft, here we focus on
indirect infringement because that was the basis for i4i’s damages estimate, which the
jury apparently credited. See Lucent, 580 F.3d at 1334-35; Dynacore Holdings Corp. v.
U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed. Cir. 2004).


2009-1504                                  23
limitations of the asserted claims because the editor separated a document into a “CP

stream” of content and a separate data structure containing the metacodes and their

addresses of use. Rhyne testified that this separate data structure met the “metacode

map” limitation. Though Microsoft’s expert offered conflicting evidence, opining that

Word did not infringe the asserted claims, the jury was free to disbelieve Microsoft’s

expert and credit i4i’s expert, who testified that the ’449 patent was infringed if Word

was used to open an XML document, edit an XML document, or save a document

containing custom XML in an XML file format. The joint stipulation and Microsoft’s

interrogatory responses unequivocally state that Word was used in these ways. Cf.

Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298-99 (Fed. Cir. 2009);

Martek, 579 F.3d at 1371-72.

                               2. Contributory Infringement

      For contributory infringement, the question is whether there is substantial

evidence to support a finding under this theory.      A party is liable for contributory

infringement if that party sells, or offers to sell, a material or apparatus for use in

practicing a patented process. That “material or apparatus” must be a material part of

the invention, have no substantial noninfringing uses, and be known (by the party) “to

be especially made or especially adapted for use in an infringement of such patent.” 35

U.S.C. § 271(c); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d

1293, 1312 (Fed. Cir. 2005).

      Based on the evidence presented at trial, the jury could have reasonably

concluded that the custom XML editor had no substantial, noninfringing uses and that

Microsoft knew that the use of the custom XML editor would infringe i4i’s patent. At




2009-1504                                  24
trial, Rhyne agreed that the custom XML editor could be used in three noninfringing

ways, but opined that none were “substantial.”       Rhyne explained that saving a

document in the noninfringing, binary format deprived users of the very benefit XML was

intended to provide:    namely, allowing another program to search and read the

document’s metacode tags.

      Despite Microsoft’s contention to the contrary, evidence that some users saved

XML documents in these noninfringing formats does not render the jury’s verdict

unreasonable. Whether a use is “substantial,” rather than just “unusual, far-fetched,

illusory, impractical, occasional, aberrant, or experimental,” cannot be evaluated in a

vacuum. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009).

In assessing whether an asserted noninfringing use was “substantial,” the jury was

allowed to consider not only the use’s frequency, but also the use’s practicality, the

invention’s intended purpose, and the intended market. See id. Here, the jury heard

ample testimony that the noninfringing, binary file format was not a practical or

worthwhile use for the XML community, for which the custom XML editor was designed

and marketed.

      Further, the jury could have reasonably concluded that Microsoft knew that use

of the editor would infringe the ’449 patent, based on the circumstantial evidence

presented at trial. Cf. Lucent, 580 F.3d at 1318, 1321-22; Fuji Photo Film Co. v. Jazz

Photo Corp., 394 F.3d 1368, 1377-78 (Fed. Cir. 2005). Here, the evidence showed that

the Word development team heard a presentation by i4i about software practicing the

’449 patent, asked how the software worked, and received marketing materials on the

software. Internal Microsoft emails showed that other Microsoft employees received a




2009-1504                                 25
marketing email from i4i containing the patent number, were “familiar” with i4i’s

products, and believed the Word’s custom XML editor would render that product

“obsolete.” Based on this evidence, the jury could have reasonably concluded that

Microsoft knew about the ’449 patent and knew use of its custom XML editor would

infringe.

                                3. Induced Infringement

       Though we need not reach this theory because substantial evidence supports

i4i’s theory of contributory infringement, we do so for the sake of completeness. On

appeal, the sole question is whether there is substantial evidence to support a verdict of

induced infringement.      To prove inducement, the patentee must show direct

infringement, and that the alleged infringer “knowingly induced infringement and

possessed specific intent to encourage another’s infringement.” MEMC Elec. Materials,

Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005); see 35

U.S.C. § 271(b).

       Based on the evidence presented at trial, a reasonable jury could have

concluded that Microsoft had the “affirmative intent to cause direct infringement.” DSU

Med. Corp v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc in relevant part).

The jury saw and heard about Microsoft’s online training and user support resources,

which provided detailed instructions on using Word’s custom XML editor. i4i’s expert

opined that using the editor as directed by these materials would infringe the ’449

patent.     The instructional materials were thus substantial evidence that Microsoft

intended the product to be used in an infringing manner. See DSU, 471 F.3d at 1303,

1305. Unlike the instructions in Vita-Mix, 581 F.3d at 1328-29, which taught a use the




2009-1504                                  26
defendant “could have reasonably believed was non-infringing” and another use that

was “non-infringing,” here there was substantial evidence Microsoft knew its instructions

would result in infringing use.      As explained in our discussion of contributory

infringement, Microsoft’s internal emails are substantial evidence of Microsoft’s

knowledge, both of the ’449 patent and the infringing nature of Word’s custom XML

editor. Regarding i4i’s software that practiced the invention, one Microsoft employee

remarked: “[W]e saw this tool some time ago and met its creators. Word [2003] will

make it obsolete. It looks great for XP though.” Evidence that consumers were using

Word in an infringing manner included Microsoft data on usage of Word, as well as a

Microsoft marketing document listing “real” examples of custom XML’s use in Word.

                                      V. Damages

      Microsoft protests the $200 million damages award on several grounds. We

begin by reviewing the propriety of various evidentiary rulings. We then decide whether

the district court abused its discretion by denying Microsoft a new trial on damages.

                                 A. Evidentiary Rulings

      We review evidentiary rulings for abuse of discretion. Huss v. Gayden, 571 F.3d

442, 452 (5th Cir. 2009); see Paz v. Brush Engineered Materials, Inc., 555 F.3d 383,

387-88 (5th Cir. 2009).    Microsoft challenges the admission of expert testimony on

damages, as well as a survey relied on by the expert. We address each in turn.

                                  1. Expert Testimony

      To determine whether expert testimony was properly admitted under Rule 702 of

the Federal Rules of Evidence, we use the framework set out in Daubert v. Merrell Dow




2009-1504                                  27
Pharmaceuticals, Inc., 509 U.S. 579, 589-90 (1993). 2 Daubert requires the district court

ensure that any scientific testimony “is not only relevant, but reliable.” Id. at 589; see

also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 141-42 (1999).                When the

methodology is sound, and the evidence relied upon sufficiently related to the case at

hand, disputes about the degree of relevance or accuracy (above this minimum

threshold) may go to the testimony’s weight, but not its admissibility. Knight v. Kirby

Inland Marine Inc., 482 F.3d 347, 351 (5th Cir. 2007); Moore v. Ashland Chem. Inc., 151

F.3d 269, 276 (5th Cir. 1998) (en banc).

       On appeal, Microsoft challenges the expert testimony by Dr. Wagner, i4i’s

damages expert. Wagner opined that a reasonable damages award would be $200

million dollars, based on a hypothetical negotiation between i4i and Microsoft at the time

the infringement began. To come up with the $200 million figure, Wagner calculated a

royalty rate ($98), then multiplied that rate by the number of Word products actually

used in an infringing manner (2.1 million).

       At trial, the parties hotly disputed the correctness of the $98 royalty rate.

Microsoft argued that this rate was exorbitant given the price of certain Word products,

which could be as little as $97. As further evidence of its unreasonableness, Microsoft

pointed out that the rate resulted in a total damages amount ($200 million) greatly

exceeding the $1-$5 million Microsoft had paid to license other patents. In response, i4i

had its expert (Wagner) give a detailed explanation for how he arrived at the $98 royalty



       2
               An expert witness with “scientific, technical, or otherwise specialized
knowledge,” may testify and form an opinion “if (1) the testimony is based upon
sufficient facts or data, (2) the testimony is the product of reliable principles and
methods; and (3) the witness has applied the principles and methods reliably to the
facts of the case.” Fed. R. Evid. 702.


2009-1504                                     28
rate. Wagner testified that he first chose an appropriate “benchmark” in order to value

Microsoft’s use of the claimed invention at the time of the hypothetical negotiation.

Wagner chose a product called XMetaL as his benchmark, which had a retail price of

$499. To calculate the licensing fee, Wagner multiplied the price of XMetaL ($499) by

Microsoft’s profit margin (76.6%), based on his assumption that any licensing fee would

be a fraction of the profits. Wagner then applied the 25-percent rule to this number,

which assumes the inventor will keep 25% of the profits from any infringing sales. This

resulted in a baseline royalty rate of $96. Wagner testified that the 25-percent rule was

“well-recognized” and “widely used” by people in his field.

       To support his royalty calculation, Wagner adjusted the baseline royalty rate of

($96) using the factors set out in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.

Supp. 1116, 1120 (S.D.N.Y. 1970). 3 Based on the Georgia-Pacific factors, Wagner

then increased the baseline from $96 to $98, which was the “reasonable royalty rate” he



       3
              These factors include: (1) royalties the patentee has received for licensing
the patent to others; (2) rates paid by the licensee for the use of comparable patents; (3)
the nature and scope of the license (exclusive or nonexclusive, restricted or non-
restricted by territory or product type); (4) any established policies or marketing
programs by the licensor to maintain its patent monopoly by not licensing others to use
the invention or granting licenses under special conditions to maintain the monopoly; (5)
the commercial relationship between the licensor and licensee, such as whether they
are competitors; (6) the effect of selling the patented specialty in promoting sales of
other products of the licensee; (7) the duration of the patent and license term; (8) the
established profitability of the product made under the patent, including its commercial
success and current popularity; (9) the utility and advantages of the patent property over
old modes or devices; (10) the nature of the patented invention and the benefits to
those who have used the invention; (11) the extent to which the infringer has used the
invention and the value of that use; (12) the portion of profit or of the selling price that
may be customary in that particular business to allow for use of the invention or
analogous inventions; (13) the portion of the realizable profit that should be credited to
the invention as opposed to its non-patented elements; (14) the opinion testimony of
qualified experts; and (15) the results of a hypothetical negotiation between the licensor
and licensee. Id.


2009-1504                                   29
used in calculating the $200-$207 million damages estimate.             Specifically, Wagner

concluded that factors 3, 5, 6, 9, and 11 affected the baseline rate.

       Wagner opined that factor 3, which considers the license’s terms, lowered the

royalty rate because his hypothetical license did not give Microsoft know-how, additional

cooperation or trade secrets, just non-exclusive use in the United States. However,

Wagner opined that factors 5, 6, 9, and 11 increased the royalty rate. For factor 5,

which looks at the commercial relationship between the licensor and licensee, Wagner

found that Microsoft was a direct competitor of i4i, which meant any license would

destroy a “very large segment” of i4i’s market. For factor 6, which asks whether the

patented technology promotes the sale of other products, Wagner concluded that the

infringing custom XML editor was critical to Microsoft’s sales generally, as evidenced by

internal Microsoft statements that a custom XML editor was “one of the most important

ways” for encouraging users to purchase new Word products.              Examining factor 9,

which examines the infringer’s need for taking a license, Wagner opined that Microsoft

had no commercially acceptable, non-infringing alternatives to using i4i’s patent. This

opinion was based on internal Microsoft documents describing Microsoft’s interest in

creating such a custom XML editor, and prolonged inability to do so. For factor 11,

which looks at the use and value of the patented technology to Microsoft, Wagner

concluded that the custom XML editor was a critical addition to Word. In support of this

view, i4i presented statements by Microsoft employees that custom XML was not a

“slight addition [but i]t’s more like 90 percent of the value,” was “where the future is,

seriously,” and “the glue that holds the Office ecosystem together.” Based on all of




2009-1504                                   30
these Georgia-Pacific factors, Wagner increased the baseline royalty rate by $2, for a

total of $98.

       On appeal, Microsoft ably points out various weaknesses in the damage

calculations by i4i’s expert. At their heart, however, Microsoft’s disagreements are with

Wagner’s conclusions, not his methodology. Daubert and Rule 702 are safeguards

against unreliable or irrelevant opinions, not guarantees of correctness.          We have

consistently upheld experts’ use of a hypothetical negotiation and Georgia-Pacific

factors for estimating a reasonable royalty. See, e.g., Micro Chem., Inc. v. Lextron, Inc.,

317 F.3d 1387, 1393 (Fed. Cir. 2003); Interactive Pictures Corp. v. Infinite Pictures, Inc.,

274 F.3d 1371, 1384 (Fed. Cir. 2001). Wagner’s testimony about the acceptance of the

hypothetical negotiation model among damage experts and economists, combined with

his methodical explication of how he applied the model to the relevant facts, satisfied

Rule 702 and Daubert. See Daubert, 509 U.S. at 593. Given Wagner’s testimony

about his credentials, the district court did not abuse its discretion in finding Wagner

qualified to apply the methodology. See Pipitone v. Biomatrix, Inc., 288 F.3d 239, 249-

50 (5th Cir. 2002). Microsoft’s quarrel with the facts Wagner used go to the weight, not

admissibility, of his opinion.

       We further hold that Wagner’s opinion was “based on sufficient facts or data.”

Fed. R. Evid. 702. At trial, Microsoft disputed which facts were relevant for determining

a reasonable royalty rate. In particular, Microsoft focused on the benchmark (XMetaL),

the resulting baseline royalty rate, and i4i’s survey for estimating infringing use.

       Regarding the benchmark, Wagner explained that he chose XMetaL because it

was the product Microsoft bought and used before developing its own custom XML




2009-1504                                    31
editor, it was the cheapest of the custom XML editors available on the market at the

time, and it was one of three principal competitors Microsoft identified in the custom

XML market. Microsoft contended that a better estimate of the custom XML editor’s

value was $50, the difference in price between versions of Word with and without the

editor. Microsoft also argued that because XMetaL has many additional features

besides custom XML editing, the $499 retail price overestimated the value of the

custom XML editor. In response, Wagner acknowledged that not all users of custom

XML would have switched to a high-end product like XMetaL, but that those “who really

needed that functionality” would have, requiring them to buy one of the commercially

available products, even if it had many superfluous features. Wagner clarified that his

damages estimate only considered users who “really needed” the custom XML editor,

making it inappropriate to use the $50 price difference paid by all purchasers of Word,

regardless of whether they infringed or not.

       As for using the baseline royalty rate ($96) as the starting point for the Georgia-

Pacific analysis, Wagner opined that it was necessary because of Microsoft’s business

strategy.   According to Wagner, Microsoft’s primary goal is to make sales, not to

maximize the price it charges for each additional feature. In making sales, Wagner

explained that Microsoft’s biggest competitor is always itself: Microsoft has to convince

consumers to purchase new versions of its products, even if they already have a

“perfectly good” copy of an older version. To incentivize users to upgrade, Wagner

testified that Microsoft included new features at no additional cost, making it difficult to

value the new features.




2009-1504                                   32
       As for the survey, i4i’s survey expert (Dr. Wecker) explained that it was limited to

estimating infringing use by businesses; i4i did not even seek damages for infringing

use by individual consumers.        Wecker sent the survey to 988 large and small

businesses randomly selected from a database of 13 million U.S. companies. Wecker

explained that this large sample size was necessary to ensure he received sufficient

responses (between 25 and 100) because many companies are “too busy” or have

policies against responding to surveys.         The survey consisted of screening and

substantive questions. The screening questions helped identify the proper person to

speak with about the company’s use of custom XML. Wecker received 46 responses to

the survey, which consisted of approximately 40 substantive questions. For all of the

questions, the responder had the option of saying they did not know. Any company that

took the survey received $35, regardless of the answers they gave. Wecker explained

that he used logical imputation, an accepted procedure for statisticians to resolve

inconsistent survey responses, to make some of the answers consistent. Of those that

responded to the survey, 19 companies reported using Word in an infringing manner.

Wecker assumed that all the companies that did not respond (942) did not use Word in

an infringing manner.     Based on these assumptions, Wecker determined that 1.9%

(19/988) of all copies of Word sold to businesses between 2003 and 2008 were used in

an infringing manner. Wecker then multiplied this percentage (1.9%) by the number of

copies of Word sold to businesses, for a total of 1.8 million infringing uses. 4




       4
               Based on sales of Word, Wagner then estimated the number of additional
infringing uses that occurred between the end of the survey date and start of trial, to
give a total of 2.1 million.


2009-1504                                    33
      Wecker opined that this estimate was conservative, “really an underestimate”

and “way low” because he assumed every company that did not respond was not

infringing, which was highly unlikely and introduced a “serious downward bias.”

Microsoft contested the accuracy of the survey, based on the low response rate, use of

logical imputation to correct inconsistent answers, and questions requiring estimates of

Word usage going back several years.        In response, i4i’s experts opined that the

survey’s conservative assumptions about the unresponsive companies mitigated (and

perhaps even overcorrected) for those weaknesses.

      Microsoft is correct that i4i’s expert could have used other data in his

calculations. The existence of other facts, however, does not mean that the facts used

failed to meet the minimum standards of relevance or reliability. See Fed. R. Evid. 702

advisory committee’s note. Under Rule 702, the question is whether the expert relied

on facts sufficiently related to the disputed issue. Here, that issue was a reasonable

royalty for the ’449 patent. We conclude that Wagner based his calculations on facts

meeting these minimum standards of relevance and reliability. Fed. R. Evid. 702.

      As i4i’s expert explained, the facts were drawn from internal Microsoft

documents, publicly available information about other custom XML editing software, and

a survey designed to estimate the amount of infringing use. Thus, these facts had a

sufficient nexus to the relevant market, the parties, and the alleged infringement. While

the data were certainly imperfect, and more (or different) data might have resulted in a

“better” or more “accurate” estimate in the absolute sense, it is not the district court’s

role under Daubert to evaluate the correctness of facts underlying an expert’s

testimony. See Micro Chem., 317 F.3d at 1392. Questions about what facts are most




2009-1504                                  34
relevant or reliable to calculating a reasonable royalty are for the jury. The jury was

entitled to hear the expert testimony and decide for itself what to accept or reject. See

Pipitone, 288 F.3d at 249-50.

        As the Supreme Court explained in Daubert, “[v]igorous cross-examination,

presentation of contrary evidence, and careful instruction on the burden of proof are the

traditional and appropriate means of attacking shaky but admissible evidence.” 509

U.S. at 596.     Microsoft had these opportunities, and ably availed itself of them.

Microsoft presented expert testimony and attacked the benchmark, survey, and

calculation’s reasonableness on cross-examination.       Cf. Micro Chem., 317 F.3d at

1392.

        Based on this record, the district court did not abuse its discretion in admitting

Wagner’s expert testimony on damages.

                                      2. The Survey

        Microsoft also challenges the district court’s admission of the survey used to

estimate the amount of infringing use. We do not agree with Microsoft that the danger

of unfair prejudice substantially outweighed the survey’s probative value, so as to

warrant exclusion under Rule 403. Both of i4i’s experts, Wagner and Wecker, opined

that the survey dramatically underestimated the amount of infringing use. Given the

survey’s conservative assumptions, the district court did not abuse its discretion in

admitting the survey.     Further, the survey was properly admitted over Microsoft’s

hearsay objection under Federal Rule of Evidence 703, since the survey was used to

estimate the amount of infringing use, a key number in i4i’s damage calculation. Given

the survey’s importance, evidence about its methodology and findings could certainly




2009-1504                                   35
help the jury evaluate the expert testimony.     See C. A. May Marine Supply Co. v.

Brunswick Corp., 649 F.2d 1049, 1054-55 (5th Cir. 1981). The testimony of Wecker,

the expert who helped design the survey, sufficed to show that the survey was compiled

in accordance with acceptable survey methods.

      For these reasons, the district court did not abuse its discretion in admitting the

survey.

                      B. Reasonableness of the Damages Award

      Microsoft urges us to follow this court’s recent decision in Lucent, 580 F.3d 1301,

and hold that $200 million is not a reasonable royalty. We cannot, however, because

the procedural posture of this case differs from Lucent, and that difference controls this

case. Although Microsoft now objects to the size of the damages award, we cannot

reach that question because Microsoft did not file a pre-verdict JMOL on damages.

      In Lucent, the accused infringer filed a pre-verdict JMOL motion challenging the

sufficiency of the damages’ evidence.      Id. at 1309.   Though Microsoft could have

similarly filed a pre-verdict JMOL, for whatever reason, it chose not to. See Fed. R. Civ.

P. 50(a). On appeal, what that strategic decision means for Microsoft is that we cannot

decide whether there was a sufficient evidentiary basis for the jury’s damages award.

Cf. Lucent, 580 F.3d at 1332 (holding that “we see little evidentiary basis under

Georgia-Pacific” for the damages award).        Asking whether a damages award is

“reasonable,” “grossly excessive or monstrous,” “based only on speculation or

guesswork,” or “clearly not supported by the evidence,” are simply different ways of

asking whether the jury’s award is supported by the evidence. Fuji Photo, 394 F.3d at

1378; Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1290 (Fed. Cir. 2002).




2009-1504                                  36
Microsoft waived its ability to have us decide that question by failing to file a pre-verdict

JMOL on damages. Fed. R. Civ. P. 50(a), (b).

       Had Microsoft filed a pre-verdict JMOL, it is true that the outcome might have

been different. Given the opportunity to review the sufficiency of the evidence, we could

have considered whether the $200 million damages award was “grossly excessive or

monstrous” in light of Word’s retail price and the licensing fees Microsoft paid for other

patents. Cf. Lucent, 580 F.3d at 1325-32. As this court did in Lucent, we could have

analyzed the evidentiary basis for the Georgia-Pacific factors, and whether the

benchmark (XMetaL) was sufficiently comparable. Id.

       However, we cannot. Instead of the more searching review permitted under Rule

50(b), we are constrained to review the verdict under the much narrower standard

applied to denials of new trial motions. Duff, 489 F.3d at 730. This standard is highly

deferential: we may set aside a damages award and remand for a new trial “only upon

a clear showing of excessiveness.” Id. (emphasis added). To be excessive, the award

must exceed the “maximum amount calculable from the evidence.” Carlton v. H. C.

Price Co., 640 F.2d 573, 579 (5th Cir. 1981). We must affirm unless the appellant

clearly shows there was no evidence to support the jury’s verdict. Duff, 489 F.3d at

730, 732; see also Industrias Magromer, 293 F.3d at 923.

       Under this highly deferential standard, we cannot say that Microsoft is entitled to

a new trial on damages.       The damages award, while high, was supported by the

evidence presented at trial, including the expert testimony—which the jury apparently

credited. See Unisplay, S.A. v. Am. Elec. Sign Co., 69 F.3d 512, 519 (Fed. Cir. 1995).

On appeal, the question is not whether we would have awarded the same amount of




2009-1504                                    37
damages if we were the jury, but rather whether there is evidence to support what the

jury decided. See Fuji Photo, 394 F.3d at 1378. Here, the jury’s award was supported

by the testimony of Wagner, i4i’s damage expert, who opined that a reasonable royalty

was between $200 and $207 million. The award was also supported by the testimony

of Wecker, i4i’s survey expert, who explained that the survey’s conservative

assumptions (i.e., that none of the companies who failed to respond infringed) meant

the damages figure was “really an underestimate” and “way low.”              As we have

recognized previously, any reasonable royalty analysis necessarily involves an element

of approximation, and uncertainty. See Lucent, 580 F.3d at 1325; Unisplay, 69 F.3d at

517. Given the intensely factual nature of a damages determination and our deferential

standard of review, we are not in a position to second-guess or substitute our judgment

for the jury’s.

                                 C. Enhanced Damages

       Microsoft has only appealed the district court’s decision to enhance damages

under 35 U.S.C. § 284.

       Section 284 gives the district court discretion to “increase the damages up to

three times the amount found or assessed” by the jury. A finding of willful infringement

is a prerequisite to the award of enhanced damages. In re Seagate Technology, LLC.,

497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc). In this case, the question of whether

Microsoft willfully infringed the ’449 patent was submitted to the jury, which was

instructed that i4i had to prove Microsoft (1) was aware of the ’449 patent; (2) acted

despite an objectively high likelihood that its actions infringed a valid patent; where (3)

this objectively high risk was either known or so obvious it should have been known to




2009-1504                                   38
Microsoft. The verdict form instructed the jury to answer “yes” or “no” to “Did i4i prove

by clear and convincing evidence that Microsoft’s infringement was willful?” The jury

answered “yes.” Based on the jury’s willfulness finding, i4i made a post-trial motion for

enhanced damages.

       The district court then analyzed the factors set out in Read Corp. v. Portec, Inc.,

970 F.2d 816, 826-27 (Fed. Cir. 1992), in deciding whether to enhance damages. The

district court found that factors 2, 4, 6, 7, and 8 supported enhancement. Factors 1 and

9, combined with i4i’s delay in bringing suit, were found to weigh against enhancement.

For factor 1, which considers whether the infringer deliberately copied the ideas or

design of another, the district court found no evidence that Microsoft deliberately copied

any of i4i’s products. For factor 2, which considers whether the infringer knew of the

patent, investigated the patent’s scope and formed a good-faith belief of its invalidity or

noninfringement, the district court found Microsoft was aware of i4i’s patent, never

formed a good faith belief of noninfringement, and clearly intended to add a custom

XML editor in Word with similar capabilities to i4i’s patented products. For factor 4,

which considers the infringer’s size and financial condition, the district court found that

the jury’s award, while “substantial,” was only a small fraction of Microsoft’s profits from

the sale of Word products.         The district court also noted that Microsoft was

“undisputedly” the world leader in software for business and personal computing, with

revenues of $60.42 billion in 2008 alone. As for factors 6, 7, and 8, the district court

found that Microsoft had started using the infringing products more than five years ago

(in 2002), failed to conduct an infringement analysis after being notified of the ’449

patent again in 2003, and implemented the infringing custom XML editor with the




2009-1504                                   39
purpose of rendering i4i’s products obsolete. Although statutorily authorized to increase

the award to $600 million, the district court awarded only $40 million in enhanced

damages. See 35 U.S.C. § 284.

      On this record, we cannot conclude that the district court abused its discretion in

weighing the evidence or applying the Read factors.        See Amsted Indus., Inc. v.

Buckeye Steel Castings Co., 24 F.3d 178, 184 (Fed. Cir. 1994). The district court made

detailed factual findings which, taken together, support its award of enhanced damages.

See Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570-71 (Fed. Cir. 1996). In deciding whether

to enhance damages, the district court properly declined to reapply the test for

willfulness set out in Seagate, 497 F.3d 1360. Although a finding of willfulness is a

prerequisite for enhancing damages under § 284, the standard for deciding whether—

and by how much—to enhance damages is set forth in Read, not Seagate. See 35

U.S.C. § 284; SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1468-69

(Fed. Cir. 1997); cf. Seagate, 497 F.3d at 1371. Here, the question of willfulness was

submitted to the jury. Microsoft does not dispute that the jury instructions were proper

under Seagate, 497 F.3d at 1371. The test for willfulness is distinct and separate from

the factors guiding a district court’s discretion regarding enhanced damages. Compare

id., with Read, 970 F.2d at 826-27. Under the Read factors, the district court properly

considered Microsoft’s size and financial condition, as well as whether Microsoft

investigated the scope of the patent.      Id. at 827; see also Transclean Corp. v.

Bridgewood Servs., Inc., 290 F.3d 1364, 1377-78 (Fed. Cir. 2002).

      Microsoft is correct that it would have been improper to enhance damages based

solely on litigation misconduct, and that this is not the prototypical case of litigation




2009-1504                                  40
misconduct. 5 Typically, “litigation misconduct” refers to bringing vexatious or unjustified

suits, discovery abuses, failure to obey orders of the court, or acts that unnecessarily

prolong litigation. Jurgens, 80 F.3d at 1570-71 & n.3; see also Va. Panel Corp. v. MAC

Panel Co., 133 F.3d 860, 866 (Fed. Cir. 1997). Here, the misconduct was improper

statements by Microsoft’s counsel to the jury, in defiance of the court’s repeated

admonitions. However, the district court considered Microsoft’s litigation misconduct

only after finding that the other Read factors favored enhanced damages: “Finally, also

favoring enhancement is Microsoft’s counsel’s litigation conduct . . . .” Considering all

the Read factors and the district court’s statutory authority to treble damages under

§ 284, the actual award of $40 million was not an abuse of discretion.

                                      VI. Willfulness

       We do not read Microsoft’s opening brief as challenging the denial of Microsoft’s

post-verdict JMOL on willfulness.     Although Microsoft did mention willfulness when

disputing the propriety of the enhanced damages award, in substance this argument

focused on the district court’s rationale for awarding enhanced damages, not the jury’s

willfulness verdict. Whether the district court abused its discretion in weighing the Read

factors is not the same question as whether there was a legally sufficient evidentiary

basis for the jury’s finding of willfulness. Fed. R. Civ. P. 50(a); compare Bryant v.

Compass Group USA Inc., 413 F.3d 471, 475 (5th Cir. 2005), with Read, 970 F.2d at

821, 826-27.     Whether Microsoft’s infringement was willful is a question of fact.



       5
              Enhanced damages are certainly not the sole remedy for attorney
misconduct. Other tools, which may be more appropriate in the mine-run of cases,
include the award of attorney fees or sanctions. See 35 U.S.C. § 285; Fed. R. Civ. P.
11, 38; see also 28 U.S.C. § 1927.



2009-1504                                   41
Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed. Cir. 2008); see

Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 822 (Fed. Cir. 1992). This question

was submitted to the jury, which answered in the affirmative. Accordingly, appellate

review is limited to asking whether that verdict is supported by substantial evidence.

ACCO Brands, 501 F.3d at 1311-12. On appeal, Microsoft has never attacked the jury

instructions or the basis for the jury’s willfulness verdict.   In light of what Microsoft

actually argued, we do not read Microsoft’s passing reference to its post-verdict JMOL

on willfulness as raising the issue.

       Even if we were to read the solitary sentence, “Microsoft is entitled to judgment

as a matter of law on the issue of willfulness,” as challenging the jury’s finding of

willfulness, the result does not change. A reasonable jury could have concluded that

Microsoft “willfully” infringed the ’449 patent based on the evidence presented at trial.

Infringement is willful when the infringer was aware of the asserted patent, but

nonetheless “acted despite an objectively high likelihood that its actions constituted

infringement of a valid patent.”       Seagate, 497 F.3d at 1371.     After satisfying this

objective prong, the patentee must also show that the infringer knew or should have

known of this objectively high risk. Id.

       In this case, i4i presented sufficient evidence at trial to prove each prong of the

Seagate standard for willfulness. The jury heard that Microsoft employees attended

demonstrations of i4i’s software, which practiced the ’449 patent.       Further, the jury

learned that Microsoft employees received i4i’s sales kit, which identified i4i’s software

as “patented” technology and cited the ’449 patent. The jury then saw a series of

emails between Microsoft employees discussing a marketing email sent by i4i. One of




2009-1504                                    42
those emails explained that the “heart” of i4i’s software was patented, again citing the

’449 patent. Based on this circumstantial evidence, the jury could have reasonably

inferred that Microsoft knew about the ’449 patent.

       At trial, i4i also showed that Word’s custom XML editor was designed to and did

perform the same methods as i4i’s software (which was known to practice the ’449

patent). Despite this highly similar functionality, there is no evidence Microsoft took any

remedial action, even though Microsoft knew of the ’449 patent as early as April 2001,

before any work had begun on Word’s custom XML editor. For example, Microsoft did

not cease its infringing activity or attempt to design around; instead, Microsoft started

marketing, selling, and instructing others in the use of Microsoft’s custom XML editor in

2002. Cf. DePuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1336-37

(Fed. Cir. 2009). Similarly, there is no evidence Microsoft ever made a good faith effort

to avoid infringement; internal emails show Microsoft intended to render i4i’s product

“obsolete” and assure “there won’t be a need for [i4i’s] product.” Based on this and

other evidence presented at trial, it would have been reasonable for the jury to infer that

Microsoft went ahead with producing, marketing, and promoting its custom XML editor

despite an objectively high likelihood the editor infringed the ’449 patent. This same

evidence supports the jury’s finding as to the subjective prong of Seagate. Given the

information Microsoft had about i4i’s software and the ’449 patent, Microsoft knew or

should have known that there was an objectively high risk of infringement.

       The fact that Microsoft presented several defenses at trial, including

noninfringement and invalidity, does not mean the jury’s willfulness finding lacks a

sufficient evidentiary basis. See Fed. R. Civ. P. 50(a). The jury heard all of Microsoft’s




2009-1504                                   43
defenses, which it expressly rejected in finding the ’449 patent infringed and not invalid.

Cf. DePuy Spine, 567 F.3d at 1336-37 (noting that the question of equivalence was “a

close one”). Based on its own assessment of the evidence and Microsoft’s defenses,

the jury was free to decide for itself whether Microsoft reasonably believed there were

any substantial defenses to a claim of infringement. Cf. Cohesive Techs., 543 F.3d at

1374.

                                VII. Permanent Injunction

        We must decide whether the district court abused its discretion in granting a

permanent injunction against Microsoft, or in tailoring that injunction under eBay Inc. v.

MercExchange, L.L.C., 547 U.S. 388, 391 (2006).

        The permanent injunction prohibits Microsoft from (1) selling, offering to sell,

and/or importing into the United States any infringing Word products with the capability

of opening XML files containing custom XML; (2) using Word to open an XML file

containing custom XML; (3) instructing or encouraging anyone to use Word to open an

XML containing custom XML; (4) providing support or assistance that describes how to

use Word to open an XML file containing custom XML; and (5) testing, demonstrating,

or marketing Word’s ability to open an XML file containing custom XML.

        The scope of this injunction is narrow, however. It applies only to users who

purchase or license Word after the date the injunction takes effect.           Users who

purchase or license Word before the injunction’s effective date may continue using

Word’s custom XML editor, and receiving technical support.

        We review the decision to grant an injunction, as well as the scope of that

injunction, for abuse of discretion. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772 (Fed.




2009-1504                                   44
Cir. 1993). Factual findings made in support of the injunction are reviewed for clear

error; the district court’s conclusion as to each eBay factor is reviewed for abuse of

discretion. Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1327-31 (Fed. Cir. 2008).

Our review is guided by statute and well-established principles of equity. See 35 U.S.C.

§ 283. 6 The plaintiff has the burden of showing that (1) it has suffered an irreparable

injury; (2) remedies available at law are inadequate to compensate for that injury; (3)

considering the balance of hardships between the plaintiff and defendant, a remedy in

equity is warranted; and (4) the public interest would not be “disserved” by a permanent

injunction. eBay, 547 U.S. at 391.

      While we conclude that the injunction’s effective date should have been five

months, rather than sixty days, from the date of its August 11, 2009 order, we affirm the

district court’s issuance of a permanent injunction and otherwise affirm the injunction’s

scope. Below, we address each factor in turn.

                                  A. Irreparable Injury

      The district court concluded that i4i was irreparably injured by Microsoft’s

infringement, based on its factual findings that Microsoft and i4i were direct competitors

in the custom XML market, and that i4i lost market share as a result of the infringing

Word products.     The district court further found that the infringing Word products

rendered i4i’s software obsolete, as a result of which i4i changed its business model to

make software that complemented Microsoft’s infringing products.




      6
              The Patent Act provides that courts “may grant injunctions in accordance
with the principles of equity to prevent the violation of any right secured by patent, on
such terms as the court deems reasonable.” 35 U.S.C. § 283.


2009-1504                                  45
       It was proper for the district court to consider evidence of past harm to i4i. Past

harm to a patentee’s market share, revenues, and brand recognition is relevant for

determining whether the patentee “has suffered an irreparable injury.”           Id. at 391

(emphasis added); see, e.g., Acumed, 551 F.3d at 1328-29 (considering the relevance

of past licensing decisions in assessing irreparable injury); Voda v. Cordis Corp., 536

F.3d 1311, 1329 (Fed. Cir. 2008) (concluding that the patentee “had not identified any

irreparable injury to himself”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379-

80 (Fed. Cir. 2008) (analyzing whether the patentee “had been irreparably harmed”).

Although injunctions are tools for prospective relief designed to alleviate future harm, by

its terms the first eBay factor looks, in part, at what has already occurred. Considering

past harm to a patentee does not establish a “general rule” or rely on the sort of “broad

classifications” rejected by the Supreme Court in eBay; not all patentees will be able to

show injury, and even those who do must still satisfy the other three factors. Cf. eBay,

547 U.S. at 393-94.

       In this case, the district court properly considered strong circumstantial evidence

that Microsoft’s infringement rendered i4i’s product obsolete for much of the custom

XML market, causing i4i to lose market share and change its business strategy to

survive. i4i was not required to prove that its specific customers stopped using i4i’s

products because they switched to the infringing Word products.              Based on the

evidence presented at trial, it was not an abuse of discretion for the district court to find

that Microsoft’s infringement irreparably injured i4i.

                             B. Inadequate Remedies at Law




2009-1504                                    46
       The district court concluded that there were inadequate remedies at law to

compensate i4i for its injury. The district court found that before and after Microsoft

began infringing, i4i produced and sold software that practiced the patented method.

The district court found no evidence that i4i had previously licensed the patent, instead

finding evidence that i4i sought to retain exclusive use of its invention.

       It was not an abuse of discretion for the district court to conclude that monetary

damages would be inadequate. In this case, a small company was practicing its patent,

only to suffer a loss of market share, brand recognition, and customer goodwill as the

result of the defendant’s infringing acts. Such losses may frequently defy attempts at

valuation, particularly when the infringing acts significantly change the relevant market,

as occurred here. The district court found that Microsoft captured 80% of the custom

XML market with its infringing Word products, forcing i4i to change its business strategy.

The loss associated with these effects is particularly difficult to quantify. Difficulty in

estimating monetary damages is evidence that remedies at law are inadequate.

Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703-04 (Fed. Cir. 2008).

                                 C. Balance of Hardships

       Except on the limited issue of timing, the balance of hardships favors i4i. The

district court found that i4i’s business is comprised “almost exclusively” of products

based on the ’449 patent. In contrast, Microsoft’s infringing custom XML editor was

found to be “merely one of thousands of features” within Word, used by only a small

fraction of Microsoft’s customers.      The district court further found that Microsoft’s

infringement of the ’449 patent allowed Microsoft to “corner[] the XML market.”




2009-1504                                    47
       Because the “balance of hardships” assesses the relative effect of granting or

denying an injunction on the parties, the district court properly considered several

factors in its analysis. eBay, 547 U.S. at 391. These factors included the parties’ sizes,

products, and revenue sources. When measured by these factors, it is clear that the

patented technology is central to i4i’s business. Because most of i4i’s products are

based on the ’449 patent, i4i’s market share, revenues, and business strategy are

similarly tied to the patented method. These same factors reveal that the infringing

custom XML editor relates to only a small fraction of Microsoft’s sizeable business. The

far greater importance of the patented method to i4i, combined with the demonstrated

past effects of infringement on i4i, favors issuance of a permanent injunction.

       The district court’s analysis properly ignored the expenses Microsoft incurred in

creating the infringing products. See Acumed, 551 F.3d at 1330. Similarly irrelevant

are the consequences to Microsoft of its infringement, such as the cost of redesigning

the infringing products. Id. As we explained in Broadcom, neither commercial success,

nor sunk development costs, shield an infringer from injunctive relief. 543 F.3d at 704.

Microsoft is not entitled to continue infringing simply because it successfully exploited its

infringement. Id.; see also Windsurfing Int’l v. AMF, Inc., 782 F.2d 995, 1003 n.12 (Fed.

Cir. 1986).

                                     D. Public Interest

       Except as to the injunction’s effective date, the district court did not abuse its

discretion in finding that the narrow scope of the injunction and the public’s general

interest in upholding patent rights favor injunctive relief. See Broadcom, 543 F.3d at

704 (quoting Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1547 (Fed. Cir. 1995)). The




2009-1504                                    48
district court’s conclusion properly recognized that the touchstone of the public interest

factor is whether an injunction, both in scope and effect, strikes a workable balance

between protecting the patentee’s rights and protecting the public from the injunction’s

adverse effects. Broadcom, 543 F.3d at 704. In particular, the injunction’s narrow

scope substantially mitigates the negative effects on the public, practically and

economically. By excluding users who purchased or licensed infringing Word products

before the injunction’s effective date, the injunction greatly minimizes adverse effects on

the public. Id. Here, the relevant “public” includes not only individual consumers, but

also companies that license infringing Word products and manufacturers that are part of

Microsoft’s distribution channels.    Cf. id. (defining the “public” to include affected

network carriers and manufacturers). By carving out users who purchased or licensed

infringing Word products before the injunction’s effective date, the injunction’s tailoring

minimizes disruptions to the market and the public.

                              E. Injunction’s Effective Date

       On appeal, Microsoft challenges the date on which the injunction goes into effect.

We review whether this aspect of the district court’s order is supported by the record.

As to the limited question of the injunction’s effective date, we conclude that it is not.

Accordingly, the injunction’s effective date is modified as described below.

       The district court ordered the injunction to go into effect sixty days after August

11, 2009, the date of its order issuing the injunction.        Citing the declaration of a

Microsoft employee (the “Tostevin declaration”), the district court found that “Microsoft

ha[d] presented evidence that it may take five months to implement any injunction.” The

district court also found, without any citation to the record, that “i4i ha[d] presented




2009-1504                                   49
evidence that it is possible to design a software patch that can remove a user’s ability to

operate the infringing functionality.” Based on, among other things, “this competing

evidence” and “the uncertainty surrounding what period of time would be ‘reasonable’ to

expect Microsoft to comply with any injunction,” the district court ordered Microsoft to

comply with the permanent injunction “within 60 days.”

       In light of the record evidence, we conclude that the district court erred by

ordering Microsoft to comply with the injunction within sixty days. The only evidence

about how long it would take Microsoft to comply with the injunction was the Tostevin

declaration, which gave an estimate of “at least” five months. The district court cited no

other evidence, and our review of the record reveals no “competing evidence.”

Accordingly, we modify the injunction’s effective date from “60 days from the date of this

order” to “5 months from the date of this order.” Cf. Canadian Lumber Trade Alliance v.

United States, 517 F.3d 1319, 1339 n.22 & 1344 (Fed. Cir. 2008) (modifying an

injunction’s terms on appeal); Forest Labs., Inc. v. Ivax Pharms., Inc., 501 F.3d 1263,

1271-72 (Fed. Cir. 2007) (modifying an injunction’s terms on appeal). The injunction’s

effective date is now January 11, 2010.

                                      CONCLUSION

       The district court’s claim construction is affirmed, as are the jury’s findings of

infringement and validity. The district court did not abuse its discretion in admitting i4i’s

evidence as to damages or in granting enhanced damages. Finally, we affirm the entry

of the permanent injunction as modified herein.

                                        AFFIRMED




2009-1504                                    50
