                 United States Court of Appeals
                            For the Eighth Circuit
                        ___________________________

                                No. 17-1866
                        ___________________________

                   Medtronic, Inc. & Consolidated Subsidiaries

                              lllllllllllllllllllllAppellee

                                           v.

                        Commissioner of Internal Revenue

                             lllllllllllllllllllllAppellant
                                    ____________

                    Appeal from The United States Tax Court

                                   ____________

                            Submitted: March 14, 2018
                              Filed: August 16, 2018
                                  ____________

Before WOLLMAN, SHEPHERD, and ERICKSON, Circuit Judges.
                        ____________

WOLLMAN, Circuit Judge.

       The Commissioner of Internal Revenue (Commissioner) appeals from the tax
court’s valuation of Medtronic, Inc. and its consolidated subsidiaries’ (Medtronic)
true income for the 2005 and 2006 tax years.

       The Commissioner characterizes this dispute as involving “the classic case of
a U.S. multinational taxpayer (Medtronic) shifting income from its highly profitable
U.S. operations and intangibles to an offshore subsidiary operating in a tax haven
(Medtronic [Puerto Rico]), by charging an artificially low rate for the intangibles.”
Appellant’s Reply Br. 1. Medtronic’s view of the case is that because its Puerto Rico
subsidiary bears the lion’s share of potential liability arising from any defectively
manufactured products, it was entitled to a commensurate rate of return on its
operations there. Appellee’s Br. 21-26.

       The Commissioner argues that the tax court erred in not applying the correct
transfer pricing method when calculating the arm’s length royalty rates for
Medtronic’s intercompany licenses. We vacate the tax court’s order and remand for
further proceedings consistent with this opinion.

                                  I. Background

       Medtronic is a medical device company that produces and markets class III
devices, which include implantable cardiac pulse generators and neurological
stimulators (devices), as well as other medical therapy devices (leads). Medtronic’s
parent company, Medtronic US, and its distributer, Medtronic USA, Inc. (Med USA),
are located in the United States, and its class III device manufacturer, Medtronic
Puerto Rico Operations Co. (Medtronic Puerto Rico), is located in Puerto Rico.
Medtronic allocates the profit earned from its devices and leads between Medtronic
US, Med USA, and Medtronic Puerto Rico through its intercompany licensing
agreements.

       Medtronic’s 2002 consolidated tax return used the comparable uncontrolled
transactions (CUT) transfer pricing method to determine the royalty rates paid on its
intercompany licences. The Internal Revenue Service’s (IRS) audit of the return left
it with the concern that Medtronic was shifting too much profit from its devices and
leads to Puerto Rico in an attempt to avoid taxation in the United States. Using the
residual profit split transfer pricing method, the IRS concluded that 90% of

                                         -2-
Medtronic’s devices and leads profit should be allocated to the United States
operations and 10% to the Medtronic Puerto Rico operations. To resolve the audit,
Medtronic and the IRS entered into a Memorandum of Understanding (Memorandum)
in which Medtronic Puerto Rico agreed to pay royalty rates of 44% for devices and
26% for leads on its intercompany sales. The IRS in return agreed to apply the
Memorandum’s royalty rates in future years “as long as there [were] no significant
changes in any underlying facts.” Neither party considered the Memorandum’s
royalty rates to be an arm’s length price, but rather as only a compromise in an effort
to resolve the audit.

        The IRS and Medtronic could not agree on how the Memorandum should apply
to Medtronic’s royalty income for the 2005 and 2006 tax years. After completing an
initial audit of Medtronic’s transfer pricing method, the IRS determined that the
comparable profits method—not the CUT method—was the best way to determine
an arm’s length price for Medtronic’s intercompany licensing agreements for those
two years.1 Using the comparable profits method to determine the royalty rates for
intangibles under the intercompany licensing agreements, the IRS concluded that the
rate paid by Medtronic Puerto Rico was too low, resulting in tax deficiencies for 2005
and 2006. Accordingly, the Commissioner proposed an initial adjustment of $84
million based on his revised calculations under the Memorandum. Medtronic
contested the IRS’s determinations, arguing that the CUT method should instead be


      1
        The comparable profits method determines an arm’s length result by
computing “the amount of operating profit that the tested party would have earned on
related party transactions if its profit level indicator were equal to that of an
uncontrolled comparable (comparable operating profit).” Treas. Reg. § 1.482-5(b)(1).
Two steps are used in this method. First, companies are selected to be the comparable
test party, with focus on their assets utilized and their risks incurred. See Treas. Reg.
§ 1.482-5(c)(2)(ii). Second, a profit-level indicator is selected and applied to the
financial information of the comparable companies to determine profitability. See
Treas. Reg. § 1.482-5(b)(1).

                                          -3-
used to calculate an arm’s length price. Medtronic further claimed an overpayment
of its taxes based on its original royalty rates under the intercompany licenses.

       After completing the audit, the Commissioner proposed to increase the royalty
payments paid by Medtronic Puerto Rico to Medtronic US by an additional $455
million. Following Medtronic’s appeal to the IRS’s Appeals Office, the
Commissioner requested that the case be returned to the IRS for reexamination.
Thereafter, the Commissioner again used the comparable profits method to calculate
the arm’s length royalty rates, following which he issued Medtronic a notice of
deficiency totaling $198,232,199 for 2005 and $759,383,578 for 2006.
Approximately seven months later, the Commissioner amended the notice, asserting
that the initial adjustments were understated and that Medtronic’s deficiencies as
related to devices and leads were actually $548,180,115 and $810,301,695 for 2005
and 2006, respectively.

       Medtronic filed suit in United States Tax Court, arguing that the CUT method,
not the comparable profits method, was the best method for determining an arm’s
length price for the intercompany licenses.2 After a nearly six-week trial, the tax
court rejected both parties’ royalty rate valuations. In doing so, the tax court held that
the Commissioner’s “allocations were arbitrary, capricious, or unreasonable.” The
court also found that the comparable profits method “downplayed” Medtronic Puerto
Rico’s role in ensuring the quality of the devices and leads, that it did not reasonably
attribute a royalty rate to Medtronic’s profits, that it used an incorrect return on assets
approach, that it improperly aggregated the transactions, and that it ignored the value
of licensed intangibles. Similarly, the tax court concluded that Medtronic’s CUT

       2
         The tax court addressed four intercompany agreements: (1) the components
supply agreement, (2) the distribution agreement, (3) the trademark and trade name
license, and (4) the device and leads licenses. The Commissioner does not appeal the
first three agreements and instead focuses his appeal solely on profits pertaining to
the devices and leads licenses.

                                           -4-
method did not produce an accurate arm’s length adjustment because it did not
distinguish between devices and leads and therefore produced a result that was
unconvincing and overly broad.

       The tax court then engaged in its own valuation analysis. It ultimately decided
that Medtronic’s CUT method was the best way to determine an arm’s length royalty
rate for intercompany agreements, but made a number of adjustments. In doing so,
it found that the arm’s length royalty rate for the device licenses was 44% and the rate
for the lead licenses was 22%. It thereafter issued an order concluding that Medtronic
had an income tax deficiency of $26,711,582.00 in 2005, but that it had an income
tax overpayment of $12,459,734.00 in 2006. The Commissioner then filed this
appeal, seeking a reversal and a remand for a reevaluation of the best transfer pricing
method and a recalculation of the arm’s length royalty rate.

                                    II. Discussion

       We review a tax court’s decision in the same manner as a district court’s civil
bench ruling—legal conclusions and mixed questions of law and fact are reviewed
de novo, and factual findings are reviewed for clear error. Clajon Gas Co., L.P. v.
C.I.R., 354 F.3d 786, 789 (8th Cir. 2004).

      Section 1.482 of the Treasury Regulations states that “there is no strict priority
of methods” when determining an arm’s length result of a controlled transaction.
Treas. Reg. § 1.482-1(c)(1). Instead, “[a]n arm’s length result may be determined
under any method without establishing the inapplicability of another method, but if
another method subsequently is shown to produce a more reliable measure of an
arm’s length result, such other method must be used.” Id. When more than one
method is available, the two primary factors to consider are “the degree of
comparability between the controlled transaction (or taxpayer) and any uncontrolled


                                          -5-
comparables, and the quality of the data and assumptions used in the analysis.”
Treas. Reg. § 1.482-1(c)(2).

       As set forth above, the tax court concluded that the CUT method would
produce the most reliable arm’s length return rate. This method “evaluates whether
the amount charged for a controlled transfer of intangible property was arm’s length
by reference to the amount charged in a comparable uncontrolled transaction.” Treas.
Reg. § 1.482-4(c). If uncontrolled transactions involve the same or comparable
intangible property, then the CUT method will generally yield the most reliable arm’s
length measurement. Treas. Reg. § 1.482-4(c)(2)(ii). Intangible property is
considered comparable if it was created under similar circumstances and was “used
in connection with similar products or processes within the same general industry or
market; and [it has] similar profit potential.” Treas. Reg. § 1.482-4(c)(2)(iii)(B).
Other factors to consider when evaluating comparability include relevant functions,
contract terms, risks, economic conditions, and property or services. Treas.
Reg. § 1.482-1(d)(1).

       In using this method, the tax court applied the Pacesetter agreement as the best
CUT to calculate the arm’s length result for intangible property. The Pacesetter
agreement was entered into by Pacesetter’s parent company and Medtronic US in
1992 in an effort to settle several lawsuits regarding patent and license use. As part
of the agreement, the parties cross-licensed their pacemaker and patent portfolios.
They additionally agreed that Medtronic would receive a $75 million lump sum
payment plus a 7% royalty for all future sales of cardiac stimulation devices or
components covered under Medtronic’s patents in the United States.

      The tax court determined that the Pacesetter agreement was an appropriate
CUT because it involved similar intangible property and had similar circumstances
regarding licensing. We conclude that the tax court’s factual findings are insufficient
to enable us to conduct an evaluation of that determination.

                                         -6-
       The tax court did not address in sufficient detail whether the circumstances of
the settlement between Pacesetter and Medtronic US were comparable to the
licensing agreement between Medtronic and Medtronic Puerto Rico. The Pacesetter
agreement resolved litigation between the parties, and the tax court did not decide
whether it was one created in the ordinary course of business. See Treas. Reg.
§ 1.482-1(d)(4)(iii)(A)(1) (stating that transactions that were not made in the ordinary
course of business will not generally be considered reliable for arm’s length
purposes).

       Additionally, the tax court did not analyze the degree of comparability of the
Pacesetter agreement’s contractual terms and those of the Medtronic Puerto Rico
licensing agreement. See Treas. Reg. § 1.482-1(d)(3)(ii)(A)(1) (“Determining the
degree of comparability between the controlled and uncontrolled transactions requires
a comparison of the significant contractual terms that could affect the results of the
two transactions.”). For example, the tax court acknowledged that the Pacesetter
agreement included a lump sum payment and a cross-license, but it did not address
how Pacesetter’s additional terms affected the degree of comparability with
Medtronic Puerto Rico’s licensing agreement, which did not include a lump sum
payment or cross-license. In the absence of findings regarding the degree of
comparability between the controlled and uncontrolled transactions, we cannot
determine whether the Pacesetter agreement constituted an appropriate CUT. See
Treas. Reg. § 1.482-4(c)(2)(iii)(B)(2)(vii) (“In evaluating comparability of the
circumstances of the controlled and uncontrolled transactions, . . . specific factors that
may be particularly relevant include . . . [t]he existence and extent of any collateral
transactions or ongoing business relationships between the transferee and
transferor.”).

       The tax court also did not evaluate how the different treatment of intangibles
affected the comparability of the Pacesetter agreement and the Medtronic Puerto Rico
licensing agreement. The Pacesetter agreement was limited to patents and excluded

                                           -7-
all other intangibles, including “any technical know-how or design information,
manufacturing, marketing, and/or processing information or know-how, designs,
drawings, specifications, software source code or other documents directly or
indirectly pertinent to the use of the Licensed patents.” The Medtronic Puerto Rico
licensing agreement, on the other hand, did not exclude such intangibles. Although
we recognize that the tax court made a 7% adjustment for the “know how” that
Medtronic Puerto Rico received from Medtronic, as well as a 2.5% adjustment to
account for the differences in licensed products (the Pacesetter agreement licensed
only cardiac “patent portfolios” whereas Medtronic’s agreements also licensed
neurological products), we cannot determine that appropriateness of using the
Pacesetter agreement as a CUT without additional findings regarding the
comparability of the remaining intangibles.

        Finally, the tax court did not decide the amount of risk and product liability
expense that should be allocated between Medtronic US and Medtronic Puerto Rico.
The Commissioner contends that Medtronic Puerto Rico bore only 11% of the
devices and leads manufacturing costs, which included its share of the product
liability expense, and that therefore Medtronic Puerto Rico’s allocation of profits
should be a similar percentage based on its economic contribution. The tax court
rejected the Commissioner’s 11% valuation, concluding that it was unreasonably low
because it did not give enough weight to the risks that Medtronic Puerto Rico
incurred in its effort to ensure quality product manufacturing. Accordingly, the tax
court allocated almost 50% of the device profits to Medtronic Puerto Rico. In doing
so, the tax court also rejected the Commissioner’s comparable profits methods
because it found that the comparable companies used by the Commissioner under this
method did not incur the same amount of risk incurred by Medtronic Puerto Rico.
Yet the tax court reached these conclusions without making a specific finding as to
what amount of risk and product liability expense was properly attributable to
Medtronic Puerto Rico. In the absence of such a finding, we lack sufficient
information to determine whether the tax court’s profit allocation was appropriate.

                                         -8-
      We deem such findings to be essential to our review of the tax court’s
determination that the Pacesetter agreement was a CUT, as well as necessary to our
determination whether the tax court applied the best transfer pricing method for
calculating an arm’s length result or whether it made proper adjustments under its
chosen method. Accordingly, we vacate the tax court’s January 25, 2017, order and
remand the case for further consideration in light of the views set forth in this
opinion. See Centron DPL Co. v. Tilden Fin. Corp., 965 F.2d 673, 676 (8th Cir.
1992) (“In the absence of . . . critical factual determinations, we must vacate the
judgment of the district court and remand for reconsideration with instructions to
make more complete factual findings.”).

SHEPHERD, Circuit Judge, concurring.

        I concur in full with Judge Wollman’s opinion. As it recounts, when selecting
the Pacesetter-Medtronic US agreement as a comparable uncontrolled transaction
(“CUT”), the tax court did not sufficiently address: (1) the fact it arose out of
litigation; (2) the lump sum payment that was a part of it; (3) the cross-licenses that
were a part of it; and (4) certain intangibles that were not part of it.3 I write separately
to make two additional points. First, not only are those factors important to ensure
adequate appellate review, but the applicable Treasury Guidelines mandate that they
be considered. And second, when searching for CUTs to assess damages in patent
infringement actions, courts routinely reject patent licenses that are different in even
one of the four ways that was not adequately addressed by the tax court. Simply put,
the Treasury Department and courts in patent cases deem these factors significant.




       3
      Judge Wollman also correctly points out that the tax court “did not decide the
amount of risk and product liability that should be allocated between Medtronic US
and Medtronic Puerto Rico.” Maj. Op. 8.

                                            -9-
At the very least, the taxpayer deserves an explanation why they are insignificant in
this case.

       The Treasury Guidelines operate with a mix of “mandatory” and “discretionary
words.” See Murphy v. Smith, 138 S. Ct. 784, 789 (2018). And it is a well-worn
principle of reading legal texts that “mandatory words impose a duty; permissive
words grant discretion.” See Antonin Scalia & Bryan A. Garner, Reading Law: The
Interpretation of Legal Texts 112 ( West 2012). In this case, the Treasury Guidelines
“create[] a mandate, not a liberty” when it comes to engagement with the four factors
not addressed by the Tax Court. Smith, 138 S. Ct. at 787. When speaking generally
about comparability, the Treasury Guidelines state that, regardless of the
comparability test deployed, “each method requires analysis of all of the factors that
affect comparability.” Treas. Reg. § 1.482-1(d)(1) (emphasis added). The Treasury
Guidelines go on to say that “[s]uch factors include . . . functions . . . [and]
contractual terms.” Id. § 1.482-1(d)(1) (i)-(ii). All four of the factors identified by
Judge Wollman’s opinion touch on either “functions” or “contractual terms.” The
“require[d] analysis” was missing from the Tax Court’s discussion.4

       Courts assessing damages in patent cases find these factors decisive as well.
In determining damages in a patent infringement case, the goal is to get to a number


      4
        At oral argument, counsel attempted to draw a parallel between our sentencing
jurisprudence and the Treasury Regulations. In the sentencing context we have held
that “[i]f a sentencing judge adverts to some of the considerations contained in [18
U.S.C. § 3553(a)]” we are satisfied that the court “was aware of the entire contents
of the relevant statute.” United States v. Hawkins, 375 F.3d 750, 752 (8th Cir. 2004)
(internal quotation marks omitted). But § 3553(a) states that courts “shall consider”
certain factors in imposing a sentence. The Treasury Guidelines demand more: they
“require[] analysis of all of the factors that affect comparability.” Treas. Reg.
§ 1.482-1(d)(1).

                                         -10-
which would have been arrived at during “a hypothetical negotiation between the
patentee and the infringer when the infringement began.” ResQNet.com, Inc. v.
Lansa, Inc., 594 F.3d 860, 868 (Fed. Cir. 2010). The standard is essentially the same
as the one set forth by the Treasury Guidelines. See 12 James. J. Hall, Mertens Law
of Federal Income Taxation § 45I:25 (noting “Section 482” is meant to determine an
“arm’s-length price” which “is the price an unrelated party would have paid under the
same circumstances for the property involved in the controlled transaction”). In the
patent context, previous patent licenses are used as proxies for the “hypothetical
negotiation.” But in conducting this analysis, courts often shy away from
comparisons that differ on even one of the four planes the tax court failed to analyze
here.

       For example, take lump sum payments. As one academic has noted, “courts
generally frown upon the use of one type of license—for instance, a lump sum
license—to calculate a different type of license, such as a running royalty in which
the defendant pays per unit sold over time.” Jonathan S. Masur, The Use and Misuse
of Patent Licenses, 110 Nw. U. L. Rev. 115, 124 (2015). Indeed, the Federal Circuit
has held that “certain fundamental differences exist between lump-sum agreements
and running-royalty agreements.” Wordtech Sys., Inc v. Integrated Networks
Solutions, Inc., 609 F.3d 1308, 1320 (Fed. Cir. 2010) (internal quotation marks
omitted) (rejecting comparison between lump-sum and royalty licenses and
remanding for new trial on damages). Here, as Judge Wollman’s opinion notes, the
Pacesetter-Medtronic agreement contained a $75 million lump-sum payment whereas
the Medtronic US-Medtronic Puerto Rico agreement was a royalty-only one. The tax
court failed to grapple with this difference.

       Next, consider cross licenses. Courts have held that agreements which include
cross licenses are inadequate comparisons for “hypothetical negotiation[s]”—damage
assessments—where they are not involved. See, e.g., ePlus, Inc. v. Lawson Software,
Inc., 764 F. Supp. 2d 807, 813 (E.D. Va. 2011), aff’d, 700 F.3d 509 (Fed. Cir. 2012).

                                        -11-
Indeed, in a striking parallel to this case, the Lawson Software court held that
comparison agreements which involve “lump[-]sum payments . . . and extensive
cross-licensing agreements . . . differ considerably from the factual predicates . . .
where the hypothetical negotiation does not involve a lump[-]sum payment or cross-
licensing of a wide variety of patents.” Id.

        The same mismatch problem is found when attempting to use settlements. As
Judge Easterbrook has noted: “The terms of a settlement reflect [litigation] costs as
well as the parties’ estimates about the probable outcome on the merits if the case
proceeds. It is risky to use the parties’ predictions as a reason to decide some other
case on the merits.” In re Mahurkar Double Lumen Hemodialysis Catheter Patent
Litig., 831 F. Supp. 1354, 1379 (N.D. Ill. 1993) (Easterbrook, J., sitting by
designation), aff’d, 71 F.3d 1573 (Fed. Cir. 1995). That said, the Federal Circuit has
recognized that sometimes the “most reliable license” for comparison may “ar[i]se out
of litigation.” Lansa, Inc., 594 F.3d at 872; but see id. at 880 (Newman, J.,
concurring in part and dissenting in part) (noting that “unpredictability of patent
litigation remains notorious” and that “particular litigation settlements may be based
on unique considerations”). Regardless, Judge Easterbrook’s exact warning is borne
out here: the Pacesetter-Medtronic settlement agreement recitals note that the parties
entered into the agreement to reduce future litigation costs. And, again, this was not
accounted for by the tax court.

       Finally, some intangibles were not accounted for. Failing to do so is reversible
error in the patent context. Wordtech Sys., Inc., 609 F.3d at 1320 (“We stressed that
comparisons of past patent licenses to the infringement must account for the
technological and economic differences between them.” (internal quotation marks
omitted)). Here, as Judge Wollman’s opinion notes, the intangibles not included in
the Pacesetter-Medtronic agreement, but included in the Medtronic-Medtronic Puerto
Rico, are varied—and valuable. Without a doubt, “additional findings regarding the
comparability” of the intangibles are needed. Maj. Op. 8.

                                         -12-
       To conclude, “any search for a ‘comparable uncontrolled [transaction]’” is
undoubtedly “quixotic.” Michael J. Graetz & Rachael Doud, Technological
Innovation, International Competition, and the Challenges of International Income
Taxation, 113 Colum. L. Rev. 347, 416 (2013). But, I harbor serious doubts that the
Medtronic-Pacesetter agreement can serve as an appropriate CUT for the reasons
stated above. Cf. South Dakota v. Wayfair, Inc., 138 S. Ct. 2080, 2086 (2018) (“It
is essential to public confidence in the tax system that [courts] avoid creating
inequitable exceptions.”). In the first instance, however, the tax court should conduct
the “require[d] analysis” mandated by the Treasury Regulations in order ensure
meaningful appellate review. See Treas. Reg. § 1.482-1(d)(1).
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