  United States Court of Appeals
      for the Federal Circuit
                 ______________________

      TEXAS ADVANCED OPTOELECTRONIC
               SOLUTIONS, INC.,
             Plaintiff-Cross-Appellant

                            v.

 RENESAS ELECTRONICS AMERICA, INC., F/K/A
         INTERSIL CORPORATION,
             Defendant-Appellant
            ______________________

            2016-2121, 2016-2208, 2016-2235
                ______________________

   Appeals from the United States District Court for the
Eastern District of Texas in No. 4:08-cv-00451-RAS,
Judge Richard A. Schell.
                ______________________

                  Decided: May 1, 2018
                 ______________________

   JAMIL ALIBHAI, Munck Wilson Mandala, LLP, Dallas,
TX, argued for plaintiff-cross-appellant. Also represented
by MICHAEL ANDREW MCCABE, KELLY P. CHEN, MICHAEL
CRAIG WILSON, ROBERT D. MCCUTCHEON, JESSICA
SPANIOL, JORDAN C. STRAUSS.

   GREGORY A. CASTANIAS, Jones Day, Washington, DC,
argued for defendant-appellant. Also represented by
DANIEL KAZHDAN; RICHARD J. JOHNSON, Dallas, TX;
GREGORY LOUIS LIPPETZ, Palo Alto, CA.
2              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
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                 ______________________

    Before DYK, BRYSON, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
    Texas Advanced Optoelectronic Solutions, Inc.,
(TAOS) and Intersil Corporation each develop and sell
ambient light sensors, which are used in electronic devic-
es to adjust screen brightness in response to incident
light. In the summer of 2004, the parties confidentially
shared technical and financial information during negoti-
ations regarding a possible merger. The parties ultimate-
ly went their separate ways, but soon after, Intersil
released new sensors with the technical design TAOS had
disclosed in the confidential negotiations. TAOS then
sued Intersil in federal district court for infringement of
U.S. Patent No. 6,596,981, as well as for trade secret
misappropriation, breach of contract, and tortious inter-
ference with prospective business relations under Texas
state law. After a trial held in early 2015, a jury returned
a verdict for TAOS and awarded damages on all four
claims. The court ruled on the parties’ post-trial motions
and entered final judgment, and both parties appealed.
    We now affirm in part, reverse in part, vacate in part,
and remand. Among our rulings, we affirm liability for
trade secret misappropriation, though on a more limited
basis than TAOS presented to the jury, and we affirm
liability for infringement of the asserted apparatus claims
of the patent at issue. But we vacate the monetary
awards, and we remand for further proceedings.
                             I
                             A
    In the early 2000s, TAOS and Intersil were both de-
veloping ambient light sensors for electronic devices.
Ambient light sensors use a silicon- or other semiconduc-
tor-based photodiode that absorbs light and conducts a
TEXAS ADVANCED OPTOELECTRONIC    v. RENESAS               3
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current. The resulting photocurrent is detected by a
sensor, and measurements of the current, a function of
the ambient light, are used to adjust the brightness of an
electronic screen display. One benefit is better visibility—
e.g., a brighter screen is more visible in a bright environ-
ment; another is improved battery efficiency—e.g., a
dimmer screen, sufficient in a dark environment, uses less
power. To protect the ambient light sensor within an
electronic device, the sensor is typically encased in clear
packaging, such as glass or plastic.
    A problem with using a silicon-based photodiode is
that silicon absorbs not only visible light but also light,
such as infrared light, that humans cannot see. If the
sensor detects a change in infrared light, it may respond
by making a corresponding adjustment in the screen’s
brightness, even though the adjustment does not improve,
and may even impair, the screen’s visibility to the human
eye. For example, turning on an incandescent lamp,
which emits much of its energy in the form of infrared
light, would indicate to the sensor a much greater in-
crease in ambient light than the human eye will detect.
The screen brightness would then be greatly, rather than
only slightly, increased, wasting power and possibly
impairing visibility. ’981 patent, col. 1, lines 22–29.
     One solution to that problem was to place a filter over
the sensor (synonymously, detector) to prevent infrared
radiation from reaching it. Although effective, those
filters add cost. Id., col. 1, lines 37–42.
    TAOS conceived another solution, one that does not
require using such filters. In 2001 and 2002, TAOS began
developing the ambient light sensor TSL2550. The tech-
nology used in the TSL2550 is featured in TAOS’s ’981
patent, applied for in January 2002 and issued in July
2003. TAOS’s solution in the TSL2550, and in the ’981
patent, was to include in the silicon substrate an array of
diodes—some shielded from visible light (shielded diodes),
4               TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
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some exposed to visible light (exposed diodes). Id., col. 3,
lines 33–36. In that design, only infrared light produces a
photocurrent in the shielded diodes, while infrared and
visible light do so in the exposed diodes. See id., col. 2,
line 49 through col. 3, line 30. A processor calculates the
ratio of the photocurrents in exposed diodes to photocur-
rents in shielded diodes or vice versa and, based on that
information, factors out the infrared light to determine
the amount of visible light—which can then be used for
screen brightness adjustments. Id., col. 3, lines 24–27.
     The ’981 patent specification describes an embodi-
ment in which the silicon substrate consists of two wells,
one shielded and one exposed, id., col. 1, lines 44–52,
where each well is a photodiode, see id., col. 2, lines 56–57
(the well/substrate junction is a diode junction). See also
id., col. 6, lines 42–49 (claim 1 covers a substrate with two
wells, one shielded and one exposed). The specification
also discloses an embodiment in which the photodiode
array structure of the silicon substrate is a repeating
pattern of shielded and exposed wells in a 3:1 ratio. See
id., col. 4, lines 5–8 & Fig. 2. TAOS used the latter em-
bodiment in the TSL2550, released by TAOS in 2002.
    In 2003 and 2004, TAOS began developing its second-
generation product, the TSL2560. TAOS changed the
photodiode array structure from the repeating pattern of
shielded and exposed wells in a 3:1 ratio (TSL2550) to a
repeating pattern of shielded and exposed wells in a 1:1
ratio (TSL2560). The parties refer to the latter pattern as
an “interleaved” or “alternating” array. TAOS found that
the interleaved 1:1 ratio design improved light sensitivity.
    Meanwhile, Intersil was working on its own ambient
light sensors. Its EL7900 used a colored filter over the
detector to reflect all infrared light. Intersil also began
developing the EL7903, which it later renamed ISL29001.
By early February 2004, the design for the EL7903 in-
cluded a color filter and plastic packaging.
TEXAS ADVANCED OPTOELECTRONIC    v. RENESAS               5
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    In February 2004, Intersil approached TAOS to ask
for a license to the TSL2550 technology (repeating 3:1
photodiode array). TAOS was not interested in granting
such a license, but it was willing to consider a potential
merger. On June 3, 2004, TAOS and Intersil executed a
Confidentiality Agreement “in order to allow both parties
to evaluate the Possible Business Relationship” by disclos-
ing to the other “information relating to our respective
businesses and operations (‘Confidential Information’).”
J.A. 23828. Under that Agreement, a “Permitted Use” of
“Confidential Information” was use “for the limited pur-
pose of enabling the recipient of such information (the
‘Recipient’) to investigate and evaluate the business and
financial condition of the other (the ‘Provider’) in connec-
tion with such discussions and negotiations.” Id. The
Agreement included familiar clarifications of what did not
constitute “Confidential Information”: information public-
ly available as of the date of the Agreement; information
publicly available after the date of the Agreement, as long
as it was not made publicly available by the Recipient in
violation of the Agreement; and information that “was
known by the Recipient prior to the date of [the Agree-
ment] and such knowledge was documented in the Recipi-
ent’s written records prior to such date.” J.A. 23828–29.
    TAOS and Intersil engaged in diligence meetings
throughout June 2004. During those meetings, TAOS
disclosed the technical aspects of the not-yet-released
TSL2560 with the 1:1 interleaved diode array structure.
TAOS also disclosed that it planned to use glass rather
than plastic packaging for its sensors, glass being more
expensive but also more reliable and more useful for
especially small sensors. And TAOS provided financial
information, including information about prices it paid for
inputs into its products. Intersil used that financial
information to prepare an internal “Build vs. Buy analy-
sis” to decide whether Intersil should build up its own
optoelectronics program or instead buy TAOS.
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    At the end of the June 2004, Intersil offered to buy
TAOS. But after a series of offers and counter-offers, the
parties failed to come to an agreement. Negotiations
ended in August 2004.
    On August 31, 2004, Intersil decided to pursue a de-
sign of interleaved photodiodes in a 1:1 ratio for the
EL7903/ISL29001, a product already in development. In
2005, while Intersil was redesigning the EL7903/
ISL29001, TAOS released the TSL2560. In early 2005,
TAOS also won a contract from Apple to supply ambient
light sensors—specifically, the TSL2561, a derivative of
the TSL2560—for use in Apple’s iMac computers. Intersil
reverse-engineered the TSL2560 in late January 2006.
    Between late 2005 and late 2006, Intersil put its
EL7903/ISL29001 and next-generation ISL29003 into the
market. In September 2006, Intersil won a contract from
Apple to supply the ISL29003 for the Apple iPod, and it
began selling its products to Apple in June 2007. Apple
later solicited bids for ambient light sensors for use in the
iPhone 3G smartphone; by March 2008, Apple selected
Intersil’s product. In contrast, TAOS had won the supply
contract for ambient light sensors in the original Apple
iPhone, before the 3G version, and it won the Apple
supply contracts for iPhones after the 3G version.
                              B
    On November 25, 2008, TAOS sued Intersil in the
U.S. District Court for the Eastern District of Texas for
infringement of the ’981 patent and, under Texas law, for
trade secret misappropriation, breach of contract, and
tortious interference with contractual relations. TAOS
invoked the court’s patent, diversity, and supplemental
jurisdiction. See 28 U.S.C. §§ 1332, 1338, 1367. Before
trial, the court limited patent damages: it granted sum-
mary judgment excluding 98.8% of Intersil’s sales of
allegedly infringing products on the ground that a jury
could not find those sales to be the result of sales or offers
TEXAS ADVANCED OPTOELECTRONIC     v. RENESAS                7
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to sell domestically. Tex. Advanced Optoelec. Sols., Inc. v.
Intersil Corp., No. 4:08-cv-451, 2015 WL 13469997, at *4
(E.D. Tex. Feb. 11, 2015) (SJ Order). After a trial held in
April 2015, a jury returned a verdict for TAOS on all
claims and awarded (1) $73,653.51 as a reasonable royal-
ty for patent infringement; (2) $48,783,007 in disgorge-
ment of Intersil’s profits and $10 million in exemplary
damages for trade secret misappropriation; (3) $12 million
as a reasonable royalty for breach of contract; and (4) $8
million in lost profits and $10 million in exemplary dam-
ages for tortious interference. 1 The jury also found Inter-
sil’s infringement to be willful.
    After the trial, TAOS moved for an injunction and en-
hanced damages for willful patent infringement, and
Intersil moved for judgment as a matter of law and for a
new trial. The court denied both of TAOS’s motions as
well as Intersil’s motion for a new trial. Tex. Advanced
Optoelec. Sols., Inc. v. Intersil Corp., No. 4:08-cv-451, 2016
WL 1659926, at *3, *7–8 (E.D. Tex. Apr. 26, 2016) (Post-
trial Order) (denying TAOS’s motion for enhanced dam-
ages and Intersil’s motion for a new trial); Tex. Advanced
Optoelec. Sols., Inc. v. Intersil Corp., No. 4:08-cv-451, 2016
WL 1615741, at *4–5 (E.D. Tex. Apr. 22, 2016) (Injunction
Order) (denying TAOS’s motion for an injunction). The
court also denied Intersil’s motion for judgment as a
matter of law, except that the court granted Intersil’s
motion for judgment of no willful infringement as a mat-
ter of law. Post-trial Order, 2016 WL 1659926, at *9–10.
    TAOS filed a motion for entry of final judgment,
which the court granted in part and denied in part. Id. at
*3–6. In response to TAOS’s motion, Intersil argued that
the jury awards on each claim were duplicative, and that


    1    The jury awarded nominal damages of $1 for In-
tersil’s retention of documents in breach of the contract.
That award is not at issue on appeal.
8               TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
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TAOS should be awarded relief on only one. See id. at *4.
The court concluded that the damages awarded for breach
of contract and for tortious interference were duplicative
of the monetary award for trade secret misappropriation.
Id. at *4. It found no duplication in the patent infringe-
ment and trade secret misappropriation awards and
allowed both to stand. Id. at *5. The court entered final
judgment on June 9, 2016.
   Both parties appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
                             II
    Intersil argues that (A) it is not properly liable for
trade secret misappropriation; (B) the disgorgement
award is excessive; (C) the district court erred in relying
on the jury’s verdict on disgorgement, which presented an
equitable issue for the court to decide and therefore
required the court to enter findings of fact and conclusions
of law under Fed. R. Civ. P. 52(a)(1); (D) patent infringe-
ment was not proved; and (E) the patent infringement
damages are duplicative of the trade secret award.
    We review de novo the denial of the motion for judg-
ment as a matter of law. i4i Ltd. P’ship v. Microsoft
Corp., 598 F.3d 831, 841 (Fed. Cir. 2010) (applying Fifth
Circuit law). A motion for judgment as a matter of law “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.’” Id. (quoting Fed. R. Civ.
P. 50(a)(1)). A new trial of limited scope may be a proper
form of relief on a motion for judgment as a matter of law.
See Fed. R. Civ. P. 50(b)(2); Cone v. W. Va. Pulp & Paper
Co., 330 U.S. 212 (1947); 9B Arthur R. Miller, Federal
Practice and Procedure §§ 2538, 2540 (3d ed. Apr. 2018
update).
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                              A
    Intersil argues that we must reverse the jury verdict
of liability for trade secret misappropriation. We disa-
gree, although we agree that the verdict cannot properly
rest on some of the bases TAOS presented to the jury.
                              1
    In its complaint filed in 2008, TAOS asserted a claim
of trade secret misappropriation. Compl. at 23–24, Tex.
Advanced Optoelec. Sols., Inc. v. Intersil Corp., No. 4:08-
cv-451 (E.D. Tex. Nov. 25, 2008), ECF No. 1. Under the
applicable Texas common law, a trade secret is “any
formula, pattern, device or compilation of information
which is used in one’s business and presents an oppor-
tunity to obtain an advantage over competitors who do
not know or use it.” In re Bass, 113 S.W.3d 735, 739 (Tex.
2003) (citation omitted); accord Hyde Corp. v. Huffines,
314 S.W.2d 763, 769 (Tex. 1958) (adopting the definition
of a trade secret in the Restatement (First) of Torts § 757
(1939)). “One who discloses or uses another’s trade se-
crets, without a privilege to do so, is liable to the other if
(a) he discovers the secret by improper means, or (b) his
disclosure or use constitutes a breach of confidence re-
posed in him by the other in disclosing the secret to him.”
Hyde, 314 S.W.2d at 769 (quoting Restatement of Torts
§ 757). 2
    At trial, TAOS asserted that Intersil had misappro-
priated three trade secrets—two financial and one tech-
nical: (1) TAOS’s detailed financial information, allegedly
used by Intersil in making its “Build vs. Buy” decision;


    2   The Texas Uniform Trade Secrets Act, which gov-
erns claims accruing on or after September 1, 2013, does
not apply here. See Sw. Energy Prod. Co. v. Berry-
Helfand, 491 S.W.3d 699, 711 n.7 (Tex. 2016) (citing Tex.
Civ. Prac. & Rem. Code § 134A.001–.008).
10              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
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(2) the TSL2560 “packaging roadmap” specification of
glass packaging despite its cost (higher than for plastic),
allegedly used by Intersil in deciding to use plastic pack-
aging, J.A. 23722; see also J.A. 19561–63; J.A. 24041; and
(3) the 1:1 interleaved photodiode array structure, alleg-
edly used by Intersil in modifying its products (the
EL7903/ISL29001). TAOS’s theory of liability was that
Intersil’s use of those trade secrets “constitute[d] a breach
of confidence reposed in [Intersil] by [TAOS] in disclosing
the secret to [Intersil].” Hyde, 314 S.W.2d at 769 (quoting
Restatement of Torts § 757(b)); see Joint Proposed Pretrial
Order at 4–5, Tex. Advanced Optoelec. Sols., Inc. v. Inter-
sil Corp., No. 4:08-cv-451 (E.D. Tex. Feb. 18, 2015), ECF
No. 501 (TAOS’s contentions that “[a]fter the Confidenti-
ality Agreement was executed, TAOS provided Intersil
with its confidential information and trade secrets,” and
“Intersil misappropriated TAOS’s trade secrets when
[Intersil] . . . utilized TAOS’s trade secrets to revamp the
designs for [Intersil’s] first digital ambient light sensor
and develop its new line of ambient light sensors”); see
also Hyde, 314 S.W.2d at 769–70 (example of liability
under Restatement § 757(b): Where “‘A has a trade secret
which he wishes to sell with or without his business[,] . . .
B is a prospective purchaser[,] . . . [and,] [i]n the course of
negotiations, A discloses the secret to B solely for the
purpose of enabling him to appraise its value[,] . . . B is
under a duty not to disclose the secret or use it adversely
to A.’” (quoting Restatement § 757 cmt. j)).
                              2
    According to Intersil, there is insufficient evidence to
support a jury verdict of trade secret misappropriation
based on the glass packaging information and the photo-
diode array structure, and the “Build vs. Buy” analysis
does not, as a matter of law, constitute misappropriation.
TEXAS ADVANCED OPTOELECTRONIC    v. RENESAS             11
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                            a
    At trial TAOS asserted that Intersil misappropriated
TAOS’s packaging roadmap and cost-breakdown infor-
mation for the TSL2560 showing the high expense of the
glass packaging component. Intersil does not dispute that
information of that type can qualify as a trade secret. See
Glob. Water Grp., Inc. v. Atchley, 244 S.W.3d 924, 928
(Tex. App. 2008) (noting that “device[s]” and “pricing
information” may constitute trade secrets); Restatement
of Torts § 757 cmt. b (same). Instead, Intersil argues that
TAOS failed to show that Intersil acquired this infor-
mation by misappropriation from TAOS. We agree.
    TAOS’s technical expert admitted that Intersil was
already using low-cost plastic rather than glass packaging
in 2003 and early 2004, long before TAOS revealed its
cost-breakdown information in June 2004. As shown by
written documentation, Intersil also recognized in Febru-
ary 2004 that plastic would provide “low cost packaging”
that would “offer a price advantage.” J.A. 30499. Intersil
did not misappropriate information that it already had.
Use of such independently possessed information is no
more a misappropriation than is use of one’s “independent
invention,” against which “trade secret law does not offer
protection.” Philips v. Frey, 20 F.3d 623, 629 (5th Cir.
1994) (applying Texas law). 3 We therefore conclude that
no substantial evidence supports finding misappropria-
tion based on the asserted glass packaging trade secret.


   3    The same evidence shows that Intersil’s use of
plastic packaging is permitted by the Confidentiality
Agreement regardless of TAOS’s disclosure of its glass
packaging roadmap. The Agreement states that “Confi-
dential Information” does not include information that
“was known by [Intersil] prior to the date of [the Agree-
ment] and such knowledge was documented in [Intersil’s]
written records prior to such date.” J.A. 23828–29.
12              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
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                               b
    For the second trade secret, Intersil does not dispute
the sufficiency of the evidence regarding the act of misap-
propriation. Instead, Intersil contends that the photodi-
ode array structure was no longer “secret” in 2004 (the
time of the misappropriation) because, it says, the ’981
patent disclosed that structure in 2003. We disagree.
     The asserted trade secret is a structure that includes
both a 1:1 ratio of shielded to unshielded wells and inter-
leaving of the wells in that ratio, i.e., repetition of the 1:1
ratio in an alternating pattern (requiring more than one
set of wells). The patent discloses, individually, a 1:1
ratio and interleaving of shielded and unshielded wells.
E.g., ’981 patent, col. 1, lines 44–51 (1:1 ratio); id., col. 4,
lines 4–17 & Fig. 2 (interleaving wells in a 3:1 ratio). But
Intersil does not argue—and does not point to any evi-
dence or argument at trial—that the patent discloses the
combination of those features. Intersil instead treats the
two features as if they were the same thing. See Intersil
Br. 17 (“the alternating (i.e., 1:1) diode structure”); id. at
27–28 (describing the patent’s disclosure of a 1:1 ratio);
see also id. at 7, 15, 16, 23 (referring to the trade secret as
the “1:1 ratio”); Reply Br. 1–2 (referring to the “supposed-
ly ‘secret’ 1:1 ratio”); id. at 3, 5–8, 10 (similar). Intersil
therefore has waived the argument that a reasonable jury
could not find that the patent fails to disclose the combi-
nation of both features. 4



     4  Intersil does not argue on appeal that the unique
combination of the interleaved and 1:1 photodiode struc-
ture is not a trade secret. See Sikes v. McGraw-Edison
Co., 665 F.2d 731, 736 (5th Cir. 1982) (concluding that,
under Texas law, a trade secret may be “the application of
known techniques and the assembly of available compo-
nents”; “a trade secret can exist in a combination of char-
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    In any event, a reasonable jury could find as much.
TAOS Chief Executive Officer Kirk Laney explained that
the critical “adjustment[]” made to the earlier product
shown in Figure 2 of the patent (the TSL2550 with an
interleaved 3:1 ratio design) was making the ratio “1:1,
whereas . . . in this diagram [in Figure 2 of the patent], it
could be multiple dark [shielded] diodes.” J.A. 19511; see
also id. (Mr. Laney: “[W]e found that by doing it 1:1, we
could get a better, more uniform result as well as increase
sensitivity as well.”); J.A. 19561 (Mr. Laney describes how
TAOS explained to Intersil during the 2004 negotiations
that TAOS “had learned a lot from the 2550 to do a –
roughly a 1:1 ratio of the diode structure as they go across
the silicon.”); J.A. 19613 (Mr. Laney: “The 2550 had
actually three covered diodes between each light di-
ode . . . .”); J.A. 20399 (same testimony from ’981 patent
named inventor Eugene Dierschke). And TAOS argued to
the jury that the combination, not simply the 1:1 ratio,
was the misappropriated trade secret. J.A. 22755 (TAOS
counsel arguing in closing statement that Intersil’s prod-
uct “uses the dual-diode approach, interleaved photodiode
array, a 1:1 ratio in area, multiple cells”); J.A. 22833
(same in rebuttal).
                             c
    For the third trade secret, TAOS’s theory of liability
was that Intersil “misappropriated” TAOS’s detailed
financial information by improperly using the information
to create a “Build vs. Buy” analysis for itself. Intersil
argues that this is an improper basis for liability because


acteristics and components, each of which, by itself, is in
the public domain, but the unified process, design and
operation of which in unique combination, affords a
competitive advantage and is a protectible secret”); accord
Metallurgical Indus. Inc. v. Fourtek, Inc., 790 F.2d 1195,
1202 (5th Cir. 1986).
14             TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
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the Confidentiality Agreement clearly permitted that use.
We agree. 5
    The Agreement was designed “to allow both parties to
evaluate the Possible Business Relationship” by disclosing
“information relating to our respective businesses and
operations (‘Confidential Information’),” and a “Permitted
Use” of Confidential Information was “for the limited
purpose of enabling the recipient of such information (the
‘Recipient’) to investigate and evaluate the business and
financial condition of the other (the ‘Provider’) in connec-
tion with such discussions and negotiations.” J.A. 23828.
Intersil properly used TAOS’s financial information in its
“Build vs. Buy” analysis “to evaluate the Possible Busi-
ness Relationship,” id., by analyzing whether to build its
own optoelectronics program or to buy TAOS and incorpo-
rate TAOS’s program, J.A. 24660. Even TAOS under-
stood the Agreement to allow for that type of analysis, as
TAOS used Intersil’s confidential information in the same
way to determine whether TAOS should merge or grow.
See J.A. 42157 (TAOS requested Intersil’s “detailed
breakout for percent-of-revenue by function” to “evaluate
the business fit” and “weigh[] [the] possibilities of
merg[ing] against moving through a rapid growth phase
with equity investment to expand our sales, application,
and development teams”); TAOS Br. 52 n.4 (stating that
TAOS’s grow versus sell “activity was permitted by the
Confidentiality Agreement”).



     5  TAOS argues that Intersil waived that argument.
TAOS Br. 51 & n.3. We decline to find waiver. Intersil
raised the issue at the Rule 50(a) stage, J.A. 22417–18;
moreover, when Intersil raised the issue at the Rule 50(b)
stage, TAOS did not make, and thus waived, any argu-
ment that Intersil had waived the issue at the 50(a) stage.
See Waganfeald v. Gusman, 674 F.3d 475, 484 (5th Cir.
2012).
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     Although it is undisputed that Intersil used TAOS’s
information for the “Build vs. Buy” analysis, that use was
contractually permitted and therefore not a proper basis
of liability for trade secret misappropriation. In this case,
where the contract is clear, it “is a question of law for the
court” whether the contract permitted Intersil’s conduct.
X Techs., Inc. v. Marvin Test Sys., Inc., 719 F.3d 406, 413–
14 (5th Cir. 2013). As a matter of law, we conclude, the
Confidentiality Agreement provided Intersil the “privi-
lege” to use the information in the way Intersil used it, so
Intersil’s use did not “constitute[] a breach of confidence
reposed in [Intersil] by [TAOS] in disclosing the secret to
[Intersil].” Hyde, 314 S.W.2d at 769 (quoting Restate-
ment of Torts § 757).
    At oral argument in this court, TAOS suggested that
Intersil’s act of misappropriation was not use of the secret
information for its “Build vs. Buy” analysis, but use of
that information to “design, build, market, and sell ambi-
ent light sensors rather than using it for the purposes of
determining whether to purchase us.” Oral Argument at
38:23–34. But that theory of use of detailed financial
information in the actual building of products was not
TAOS’s theory of liability at trial, which instead was
directly about the “Build vs. Buy” analysis. TAOS was
clear about its trial position in its closing argument:
    They got the [secret] information, and they con-
    ducted a build versus buy analysis. It’s all over
    the documents. It’s all over the testimony. . . .
    They conduct . . . a build versus buy analysis re-
    lated to the products . . . and they were working to
    better understand the design and packaging/the
    secret sauce. That’s what they were using to con-
    duct the build versus buy analysis.
J.A. 22735–36. TAOS confirmed the point in rebuttal:
    [Intersil’s witness] admitted that [Intersil]
    breached this contract, that they used the confi-
16               TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                     ELECTRONICS AMERICA


     dential information for their purposes, to do their
     build versus buy or make versus build analysis.
     That is not a permitted use under that agreement.
J.A. 22830; see also J.A. 19452 (TAOS opening statement:
“The Permitted Use provision says that you will use this
information for one thing and one thing only, and that is
evaluating whether or not [Intersil] wanted to buy TAOS.
[Intersil] couldn’t use the information for purposes of
evaluating whether or not [Intersil] wanted to build [its]
own competing ambient light sensor product line, and the
evidence will show that’s exactly what [Intersil] did.”).
    And the point is highlighted by the contrast TAOS it-
self made with its two other misappropriation theories—
that Intersil misappropriated TAOS’s glass-packaging
financial trade secret and photodiode structure technical
trade secret by using those secrets “to actually create a
competing line of digital [ambient light sensors] (in addi-
tion to the Build vs. Buy analysis).” TAOS Br. 51; see J.A.
22829 (closing argument). The jury instruction, not
challenged on appeal, made this distinction clearly:
     Specifically, the plaintiff claims that the defend-
     ant misappropriated the plaintiff’s trade secrets
     when the defendant, number one, used the plain-
     tiff’s trade secrets to conduct a build versus buy
     analysis to determine whether the defendant
     should design and build the defendant’s competing
     ambient light sensors instead of acquiring the
     plaintiff and[, number two,] utilized the plaintiff’s
     trade secrets to revamp the designs for its first
     digital ambient light sensor and develop its new
     line of ambient light sensors to compete with the
     plaintiff in the ambient light sensor market.
J.A. 22663–64 (emphasis added).
TEXAS ADVANCED OPTOELECTRONIC     v. RENESAS               17
ELECTRONICS AMERICA


    Accordingly, liability for trade secret misappropria-
tion cannot properly rest on the “Build vs. Buy” theory
advanced by TAOS.
                              3
    Intersil has persuasively shown that the misappropri-
ation verdict cannot properly rest on two of TAOS’s theo-
ries—the theory that Intersil’s packaging choice was the
result of misappropriated information, and the theory
that Intersil misused the financial information for a Build
vs. Buy analysis. Nevertheless, Intersil has not shown
that the liability verdict should be set aside. Intersil does
not specifically contend that the submission of the first
(glass packaging) theory to the jury now requires vacating
the liability verdict. And though Intersil does make such
a contention based on the submission of the second (Build
vs. Buy) theory to the jury, we find vacatur on that
ground unjustified even if we assume (without deciding)
that Intersil is correct in viewing the second theory as not
merely unsupported by sufficient evidence but as “legally”
erroneous.
    The general rule is that “if a jury could find liability
according to multiple theories, and one of them is [legally]
erroneous, we reverse unless we can tell that the jury
came to its decision using only correct legal theories. If it
is impossible to tell whether a correct theory has been
used, we reverse for a new trial.” Rodriguez v. Riddell
Sports, Inc., 242 F.3d 567, 577 (5th Cir. 2001) (citations
omitted); see McCaig v. Wells Fargo Bank (Tex.), N.A., 788
F.3d 463, 476 (5th Cir. 2015). But the verdict will stand if
the legal error is harmless. See Skilling v. United States,
561 U.S. 358, 414 & n.46 (2010); Hedgpeth v. Pulido, 555
U.S. 57, 60–61 (2008) (per curiam); United States v.
Skilling, 638 F.3d 480, 481–82 (5th Cir. 2011). An error is
harmless if it did not affect Intersil’s “substantial rights.”
28 U.S.C. § 2111; Fed. R. Civ. P. 61; see also Shinseki v.
Sanders, 556 U.S. 396, 407–08 (2009). Harmless-error
18              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                    ELECTRONICS AMERICA


review is a flexible one in which we “determin[e] whether
[the] error is harmless through the . . . case-specific
application of judgment, based upon examination of the
record.” Shinseki, 556 U.S. at 407. Unless prejudice is
clear even without any explanation, “the party seeking
reversal normally must explain why the erroneous ruling
caused harm.” Id. at 410.
     Here, we conclude that the error regarding the Build
v. Buy theory was harmless. Intersil concedes that “[t]he
verdict[] . . . was based largely on the asserted secrecy of
‘the diode structure that [TAOS] patented.’” Intersil
Br. 30–31 (emphasis added; fourth alteration in original).
That assertion cuts strongly in favor of a harmless-error
conclusion, and the assertion is amply supported by the
evidence. TAOS has pointed to overwhelming evidence
that Intersil learned of TAOS’s design during the due
diligence and changed its design soon after the negotia-
tions fell through. For instance, Xijian Lin, Intersil’s lead
engineer on the EL7903/ISL29001, confirmed that, before
the EL7903, he had never designed a structure with
interleaved shielded and exposed diodes. J.A. 20486.
Brian North, the design engineer working on Intersil’s
EL7903, admitted that he learned of TAOS’s design
during the due diligence.          J.A. 21502–03; see also
J.A. 20428–29 (TAOS inventor Dierschke testified that
during the negotiations TAOS showed Intersil the change
from a 3:1 interleaved array in the TSL2550 to a 1:1
interleaved array in the TSL2560). And documents show
that Intersil changed the structure of the EL7903 to
incorporate the 1:1 interleaved diode array structure after
the end of the due diligence meetings in August 2004.
Compare J.A. 30499 (EL7903 product specification dated
February 11, 2004, with no mention of 1:1 interleaved
array structure), with J.A. 24635 (email dated Sept. 1,
2004, summarizing a meeting the day before when stat-
ing: “A new PD [photodetector] layout (different from
EL7900) will be used. It has the the [sic] light current
TEXAS ADVANCED OPTOELECTRONIC     v. RENESAS              19
ELECTRONICS AMERICA


cells interleaving the dark current cells.”). Both parties’
experts testified that there was no evidence of Intersil’s
independent design of that structure.          J.A. 20867;
J.A. 21961. Intersil has not provided any explanation as
to why the error at issue is harmful in light of this evi-
dence.
     In these circumstances, we affirm the verdict of Inter-
sil’s liability for trade secret misappropriation, limited to
Intersil’s use of the photodiode array structure.
                             B
    Intersil challenges the amount of the monetary award
for trade secret misappropriation on several grounds,
including that the absence of liability on at least the
“Build vs. Buy” trade secret requires vacatur of the award
and that the award encompassed damages attributable to
sales that occurred long after the 1:1 interleaved photodi-
ode array structure was no longer a trade secret. 6 We
agree as to both and vacate the award. 7
                             1
    The monetary award for trade secret misappropria-
tion must be vacated because we have determined that
misappropriation liability here can properly rest on only



    6   TAOS argues that Intersil waived the second chal-
lenge by not raising it in a Rule 50(a) motion. TAOS is
wrong—Intersil raised the issue in its Rule 50(a) motion.
J.A. 22382.
    7   Because we vacate the award on those grounds,
we need not address Intersil’s other challenges to the
amount of the award on the issues of gross versus net
profits and proper apportionment to the trade secret used
in devices containing other features. If similar issues
arise on remand, the district court should consider the
issues at that time.
20             TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                   ELECTRONICS AMERICA


one of the three grounds that TAOS presented to the jury.
TAOS’s calculation of monetary relief did not distinguish
among those grounds. TAOS’s expert testified that the
“trade secrets [were] the – the drivers of sales.”
J.A. 21137–38. But he did not explain which of the trade
secrets contributed to what amount of profit to be dis-
gorged; he assigned all profits to the misappropriation of
all trade secrets. On this record, we have no basis to
conclude that the remaining ground for liability—the
photodiode structure trade secret—supports the entire
award. This is one reason for vacating the award.
                             2
    There is a second, independent reason. As to the loss
of trade secret status, the unrebutted evidence at trial
showed that TAOS’s 1:1 interleaved photodiode array was
accessible to Intersil by proper means long before the time
of many of the sales included in TAOS’s request for mone-
tary relief. Such accessibility existed no later than Janu-
ary 2006, when Intersil successfully reverse-engineered
the TSL2560, and perhaps as early as February 2005,
when TAOS “released” the TSL2560. 8 We need not pin-
point the date to know that it predated many of the sales
included in the calculation of monetary relief put before
the jury by TAOS’s expert.
    Accessibility by proper means rendered the photodi-
ode array structure no longer a protected secret. See E.I.
duPont deNemours & Co. v. Christopher, 431 F.2d 1012,
1015 (5th Cir. 1970) (“[T]he Texas rule is clear” that
“[o]ne may use his competitor’s secret process if he discov-
ers the process by reverse engineering applied to the



     8  It is not clear from the record (1) exactly when, in
early 2005, the TSL2560 was released and (2) whether
that release included a disclosure of the specific photodi-
ode array structure.
TEXAS ADVANCED OPTOELECTRONIC    v. RENESAS              21
ELECTRONICS AMERICA


finished product.”). Secrecy protection terminated at the
end of the period of time it would have taken Intersil,
after Intersil’s permissible discovery of the photodiode
structure, to recreate that structure in its own products.
See Research Equip. Co. v. C. H. Galloway & Sci. Cages,
Inc., 485 S.W.2d 953, 956 (Tex. Civ. App. 1972) (explain-
ing that “the trial court was called upon to determine that
period of time which would have been required for one
having no background in the cage manufacturing business
to launch such an enterprise”); see also Injunction Order,
2016 WL 1615741, at *3 (in denying TAOS’s motion for an
injunction based on the misappropriation, the trial court
acknowledged that “[w]hatever potential ‘head start’
[Intersil] may have gained from its misappropriation of
[TAOS]’s trade secrets occurred years ago and has no
bearing on any future harm”).
    TAOS contends that, under Texas law, the period of
liability extends indefinitely, at least for purposes of
monetary relief. But the cited authority, K & G Oil Tool
& Serv. Co. v. G & G Fishing Tool Serv., 314 S.W.2d 782
(Tex. 1958), says no such thing. See Oral Arg. 22:20–
23:30 (arguing that K & G Oil holds that trade secret
misappropriation is a single tort that occurs at the time of
the misappropriation, but admitting that K & G Oil does
not speak to “the damage side”). In fact, K & G Oil, 314
S.W.2d at 790, refers to the Texas Supreme Court’s opin-
ion in Hyde, 314 S.W.2d at 769, decided the same day,
where the court concluded that a defendant liable for
trade secret misappropriation was not entitled to dissolu-
tion of an injunction immediately upon publication of the
trade secret in a patent application, because such dissolu-
tion would give the defendant a “head start” on the com-
petition. Hyde, 314 S.W.2d at 777–78. That limited head-
start period, which “depend[s] upon the facts of each
particular case,” id. at 778, ends TAOS’s entitlement to
monetary relief.
22             TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                   ELECTRONICS AMERICA


    Here, the jury awarded disgorgement of profits in the
exact amount TAOS’s expert proposed, based on sales
from April 2006 through March 2014. More than 90% of
that award was attributable to sales that occurred be-
tween January 2008 and March 2014. TAOS’s evidence
supporting its claim to monetary relief for trade secret
misappropriation did not limit the covered sales to a
head-start period, and that omission cannot be deemed
harmless. The jury awarded what TAOS sought, and
given the timing of the sales on which the relief sought
was based, the absence of any limitation to a head-start
period might have had large consequences. A head-start
period of less than two years, which Intersil has suggest-
ed, would seem to require exclusion of the lion’s share of
the sales covered by the award on appeal. Oral Argument
at 7:05–17 (Intersil counsel representing that the head-
start period would be 22 months); see J.A. 19455 (TAOS,
in its opening statement to the jury, asserting a similar
head-start period).
    For those reasons, we vacate the jury’s monetary
award for misappropriation of trade secrets. On remand,
any determination of sales-based monetary relief for trade
secret misappropriation requires evidence and a determi-
nation of the time at which the trade secret became
properly accessible to Intersil and the duration of any
head-start period.
                             3
    The parties do not dispute that, if the disgorgement
award is vacated, the same disposition is appropriate for
the jury’s award of exemplary damages. We therefore
vacate that award.
                             C
    Intersil challenges the judgment on disgorgement for
an additional reason. It agrees that the question of
liability for trade secret misappropriation in this case was
TEXAS ADVANCED OPTOELECTRONIC      v. RENESAS               23
ELECTRONICS AMERICA


properly tried to the jury. It contends, however, that the
district court erred in “rely[ing] on the jury’s verdict on
disgorgement” as a remedy for that wrong, and therefore
that vacatur of the disgorgement award is necessary.
Post-trial Order, 2016 WL 1659926, at *9. According to
Intersil, monetary relief in the form of disgorgement is
equitable and, as a result, the court, not the jury, must
decide whether to award it and how much to award.
Therefore, Intersil argues, the district court had to treat
the jury verdict on disgorgement as merely advisory, see
Fed. R. Civ. P. 39(a), (c), and had to “find the facts special-
ly and state its conclusions of law separately” on dis-
gorgement, Fed. R. Civ. P. 52(a)(1). The district court did
not do so.
    We already are vacating the judgment awarding
disgorgement relief on other grounds. But we are re-
manding for a new trial on this relief (if it continues to be
requested on remand), and so it is significant whether the
jury or the court is to decide whether to award disgorge-
ment and, if so, what amount to award. We therefore
address Intersil’s argument.
    TAOS does not dispute Intersil’s premise that Intersil
had a right to a non-jury decision on disgorgement unless
TAOS had a Seventh Amendment right to a jury decision
on disgorgement. We therefore proceed on that premise.
The parties debate whether TAOS has a Seventh
Amendment right to a jury decision on its request for
disgorgement of Intersil’s profits. We conclude that TAOS
does not have such a right, and we therefore vacate the
disgorgement award on this ground as well. Intersil is
entitled to a decision on disgorgement by the trial court,
with findings of fact and conclusions of law duly entered
in accordance with Rule 52.
                              1
    The Seventh Amendment to the U.S. Constitution,
ratified in 1791, provides that, “[i]n Suits at common law,
24              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                    ELECTRONICS AMERICA


where the value in controversy shall exceed twenty dol-
lars, the right of a trial by jury shall be preserved.” The
right of trial by jury “is the right which existed under the
English common law when the Amendment was adopted.”
Markman v. Westview Instruments, Inc., 517 U.S. 370,
376 (1996) (quoting Balt. & Carolina Line, Inc. v. Red-
man, 295 U.S. 654, 657 (1935)). In this case, which focus-
es on the remedy of disgorgement for a wrong (trade
secret misappropriation) that undisputedly had to be
adjudicated by a jury, it suffices for us to answer a histo-
ry-focused question: did the law courts award the defend-
ant’s profits as a remedy for this kind of wrong? No
controlling Fifth Circuit precedent having been identified
to us, we proceed directly to Supreme Court authorities to
answer the question.
    This question may be asked, without material differ-
ence for present purposes, in either of two ways. The
Supreme Court has said that a party has a right to a jury
trial of a particular “action” if such an action, or a suffi-
cient analogue, could have been brought in the English
courts of law in 1791. Chauffeurs, Teamsters & Helpers,
Local No. 391 v. Terry, 494 U.S. 558, 564–66 (1990); see
also Parsons v. Bedford, Breedlove & Robeson, 28 U.S. (3
Pet.) 433, 447 (1830). The answer to that question de-
pends on a historical examination of the “action” asserted,
considering “the nature of the issues involved,” and the
remedy sought, with emphasis on the latter. Terry, 494
U.S. at 565; accord Wooddell v. Int’l Bhd. of Elec. Workers,
Local 71, 502 U.S. 93, 97 (1991); Tull v. United States,
481 U.S. 412, 417–18 (1987). The Supreme Court has also
said that it first asks if the “cause of action” was tried at
law in 1791 or is “analogous to one that was,” and then
asks if the particular “trial decision”—such as the “reme-
dy” determination after finding “liability”—must be
decided by the jury in order to preserve the jury-trial
right on the cause of action as it existed in 1791. City of
Monterey v. Del Monte Dunes at Monterey, Ltd., 526 U.S.
TEXAS ADVANCED OPTOELECTRONIC     v. RENESAS              25
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687, 708–09 (1999); accord Markman, 517 U.S. at 376;
see, e.g., Tull, 481 U.S. at 425–26. History plays a strong
role in the latter inquiry. Markman, 517 U.S. at 378. If
the historical inquiry under either framing does not yield
an answer, the court considers “precedent and functional
considerations.” City of Monterey, 526 U.S. at 718–19; see
Markman, 517 U.S. at 384, 388. In this case, however,
TAOS does not dispute that it lacks a right to a jury
decision on the remedy it seeks if that remedy was not
historically available at law; it does not rely on functional
considerations to support its argument for a right to a
jury determination of disgorgement.
    Intersil uses the first framing. It views TAOS as hav-
ing distinct misappropriation “claims”—one a damages
claim, the other a disgorgement claim—and argues that
the disgorgement “claim” was not brought in the law
courts in 1791, so no right to a jury trial attaches to that
“claim.” (In that view, the underlying liability issues had
to be decided by the jury under Beacon Theatres, Inc. v.
Westover, 359 U.S. 500, 508–10 (1959), because among
TAOS’s requests for relief was the undisputedly legal
remedy of a reasonable royalty.) Intersil’s contention may
also be evaluated, however, by accepting that there was a
cause of action for misappropriation to be decided by the
jury, and asking whether the particular remedy of dis-
gorgement was available in the law courts in 1791 for that
cause of action. We see no difference in those two ap-
proaches for purposes of this case: under either framing, if
disgorgement of the defendant’s profits was not available
at law for the kind of wrong at issue here, TAOS has no
constitutional right to a jury to decide the disgorgement
question.
                             2
    In some cases, a plaintiff seeking disgorgement as a
remedy for trade secret misappropriation might prove
that this measure of relief, though focused on the defend-
26              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                    ELECTRONICS AMERICA


ant’s gains, is good evidence of damages in the form of the
plaintiff’s losses or of a reasonable royalty for use of the
secret. But this is not such a case. In the trial court here,
TAOS sought disgorgement of Intersil’s profits as such,
not based on any evidence or argument that such profits
soundly measured, and hence were a case-specific proxy
for, TAOS’s losses or a reasonable royalty.
    First, nothing in the jury instructions required that,
to award Intersil’s profits, the jury had to find that those
profits were related in any way to either TAOS’s lost
profits or a reasonable royalty. See J.A. 79; J.A. 22668.
By the time the case went to trial, TAOS had dropped its
claim for lost profits. Accordingly, the jury instruction
and verdict form presented the jury with only disgorge-
ment of Intersil’s profits and a reasonable royalty as
options for monetary relief, distinguishing them. J.A. 79;
J.A. 113; J.A. 22668.
    Second, TAOS’s expert, when presenting its evidence
of appropriate monetary relief, gave very different figures
at trial for monetary relief for disgorgement and for a
reasonable royalty. Compare J.A. 21057 ($48,763,000 for
disgorgement), with J.A. 21061 ($17.2 million as a rea-
sonable royalty), and J.A. 21077–78 (same). Before trial,
when lost profits were still under consideration, he sup-
plied very different figures for the three forms of relief—
disgorgement, a reasonable royalty, and lost profits. J.A.
6198. Moreover, he made a point at trial of distinguishing
Intersil’s profits from TAOS’s lost profits, the latter
sought for claims other than trade secret misappropria-
tion. J.A. 21055–56.
    Third, TAOS itself characterized its disgorgement re-
quest as one for all of Intersil’s profits, without qualifica-
tion as to that figure’s relationship to any other measure.
Its proposed jury instruction stated: “If you find that
Intersil misappropriated one or more of TAOS’[s] trade
secrets, you may award TAOS up to all of Intersil’s profits
TEXAS ADVANCED OPTOELECTRONIC     v. RENESAS              27
ELECTRONICS AMERICA


gained as a result of that misappropriation under the
‘disgorgement’ remedy.” Joint Proposed Jury Instructions
and Verdict Form at 75 (emphasis added). That instruc-
tion continued: “The purpose of the disgorgement remedy
is to compensate TAOS for Intersil’s conduct, and the
remedy is available regardless of whether actual damages
are proven.” Id.
    Fourth, TAOS cites no evidence for its assertion on
appeal that, “[b]ecause Intersil’s profits from misappro-
priating TAOS’[s] trade secrets correlated with TAOS’[s]
losses, the disgorgement remedy was a proxy for damages
properly determined by a jury.” TAOS Br. 61. The ab-
sence of evidence is even more significant in light of our
holding that the misappropriation liability is restricted to
Intersil’s use of the photodiode array trade secret. For
example, TAOS says that, after TAOS won the first
iPhone contract, “Intersil kicked TAOS out of the Apple
iPhone” by winning the contract for the second-generation
iPhone (iPhone 3G). TAOS Br. 28; accord J.A. 19455
(TAOS opening statement). But TAOS has not identified
evidence showing that it would have won the contract had
Intersil not used TAOS’s photodiode array structure.
TAOS itself attributed Intersil’s iPhone 3G win primarily
to Intersil’s significantly lower bid price, made possible by
using the (lower cost) plastic packaging. See J.A. 19455–
56 (TAOS opening statement: Intersil “kicked [TAOS]
out” of the iPhone 3G contract with a lower bid price by
using plastic packaging); J.A. 20135–36 (similar testimo-
ny of TAOS CEO Mr. Laney); J.A. 20140–42 (Mr. Laney
testifies that TAOS regained Apple’s business after adopt-
ing similar plastic packaging and reducing price); see also
Feb. 12, 2015 Trial Tr. at 72, 74, Tex. Advanced Optoelec.
Sols., Inc. v. Intersil Corp., No. 4:08-cv-451 (E.D. Tex.
June 1, 2016), ECF No. 582 (Intersil opening statement:
Intersil also attributes that win to lower bid price).
    For those reasons, we conclude that in this case there
is no basis for viewing the requested disgorgement of all
28             TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                   ELECTRONICS AMERICA


of the defendant’s profits as a “proxy” for actual damages
in the form of lost profits or a reasonable royalty. To be
sure, monetary relief in the form of disgorgement, like
other monetary relief, has been labeled a form of “com-
pensation” where awarded to a wronged plaintiff for an
injury. See Kokesh v. SEC, 137 S. Ct. 1635, 1644 (2017)
(distinguishing disgorgement award to injured private
plaintiff from disgorgement as penalty sought by govern-
ment enforcer); Mowry v. Whitney, 81 U.S. (14 Wall.) 620,
653 (1871) (using “compensation” label for infringer’s
profits in deciding whether interest was allowed). But
that description does not answer the Seventh Amendment
question about availability of disgorgement in the law
courts in 1791, even if disgorgement is characterized at a
general level (to quote the jury instruction here) as “com-
pensat[ing] the Plaintiff for the harm that was proximate-
ly caused by the Defendant as a result of the
misappropriation of the Plaintiff’s trade secrets.” J.A. 79.
The question in this case is whether disgorgement of the
defendant’s profits, considered on its own terms, without
proof that it was a sound measure of the plaintiff’s harm,
was available at law in 1791 for this sort of wrong.
                             3
   TAOS has not shown that such disgorgement was
available. And there are strong reasons to think that it
was not.
    Disgorgement of a defendant’s gains is often called
“restitution.” See, e.g., Kokesh, 137 S. Ct. at 1640; Great-
West Life & Annuity Ins. Co. v. Knudson, 534 U.S. 204,
215 (2002); Harris Tr. & Sav. Bank v. Salomon Smith
Barney Inc., 530 U.S. 238, 250 (2000). The Supreme
Court has made clear that, “[i]n the days of the divided
bench, restitution was available in certain cases at law,
and in certain others in equity.” Great-West Life, 534 U.S.
at 212 (citing sources).
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    Thus, “restitution is a legal remedy when ordered
    in a case at law and an equitable remedy . . . when
    ordered in an equity case,” and whether it is legal
    or equitable depends on “the basis for [the plain-
    tiff’s] claim” and the nature of the underlying
    remedies sought.
Id. at 213 (alterations in original) (quoting Reich v. Cont’l
Cas. Co., 33 F.3d 754, 756 (7th Cir. 1994) (Posner, J.)); see
Sereboff v. Mid Atl. Med. Servs., Inc., 547 U.S. 356, 362–
66 (2006) (repeating this standard; finding non-
restitutionary lien by agreement to be equitable).
    Examples are informative. Restitution could be ob-
tained in equity when the underlying cause of action was
equitable (e.g., a claim of breach of a trustee’s fiduciary
duties) or when a party sought a specific equitable reme-
dy, such as a constructive trust or lien or (in some circum-
stances) accounting for profits. See Great-West Life, 534
U.S. at 213–16 & n.2; Sereboff, 547 U.S. at 363–68. The
Court has referred to disgorgement as equitable in vari-
ous circumstances, often as ancillary to a request for an
injunction. 9 On the other hand, in some circumstances, a


    9    E.g., Porter v. Warner Holding Co., 328 U.S. 395,
398–99 (1946) (“restitution of illegal rents” in compliance
with “a decree compelling one to disgorge . . . rents . . .
may be considered as an equitable adjunct to an injunc-
tion decree”); Sheldon v. Metro-Goldwyn Pictures Corp.,
309 U.S. 390, 399 (1940) (“recovery of profits . . . had been
allowed in equity both in copyright and patent cases as
appropriate equitable relief incident to a decree for an
injunction”); Hamilton-Brown Shoe Co. v. Wolf Bros. &
Co., 240 U.S. 251, 259 (1916) (explaining, in a trademark
case, that if equity jurisdiction rests on another basis,
such as “the right to an injunction,” the equity court, “for
the purpose of administering complete relief,” may award
“profits . . . as an equitable measure of compensation”); see
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“plaintiff had a right to restitution at law through an
action derived from the common-law writ of assumpsit.”
Great-West Life, 534 U.S. at 213.
    Here, “the basis for [TAOS’s] claim,” id., is trade se-
cret misappropriation. Claims for that wrong were first
recognized in the American and English equity (or chan-
cery) courts in the nineteenth century. See 1 Melvin F.
Jager, Trade Secrets Law § 2:2 (Oct. 2017 update) (first
trade secret case in England was reported in 1817, New-
bery v. James, 35 Eng. Rep. 1011 (Ch. 1817), in which an
injunction was denied; such English cases “were routinely
cited as authority for the first series of U.S. [trade secret]
cases, in the late 1800’s and early 1900’s”); Restatement
(Third) of Unfair Competition § 39 cmt. a (1995); e.g.,
Peabody v. Norfolk, 98 Mass. 452, 458 (1868) (recognizing
trade secret protection by equity courts); Bryson v. White-
head, 57 Eng. Rep. 29, 31 (1822) (same); see also Kewanee
Oil Co. v. Bicron Corp., 416 U.S. 470, 493 (1974) (“Trade
secret law and patent law have co-existed in this country
for over one hundred years”); Robert G. Bone, A New Look
at Trade Secret Law: Doctrine in Search of Justification,
86 Cal. L. Rev. 241, 252–53 & n.58 (1998) (Peabody was
one of the first trade secret cases in the United States);




also Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct.
1962, 1978 (2014) (discussed infra; characterizing dis-
gorgement of profits for copyright infringement in that
case as equitable); Great-West Life, 534 U.S. at 218 n.4
(discussing Curtis v. Loether, 415 U.S. 189 (1974), and
Terry, 494 U.S. 558); Tull, 481 U.S. at 424 (distinguishing
disgorgement and monetary restitution awarded as an
adjunct to injunctive relief from a civil penalty; finding
jury-trial right for decision on liability under a civil penal-
ty provision, though judge could decide amount of penal-
ty).
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Developments in the Law: Competitive Torts, 77 Harv. L.
Rev. 888, 948 (1964) (same).
    Once claims of trade secret misappropriation came to
be accepted in the Nineteenth Century, several decisions
quickly recognized that a plaintiff properly asserting
jurisdiction in equity could also request incidental mone-
tary relief in the form of disgorgement (restitution) of the
defendant’s profits based on the defendant’s past use of
the trade secret. E.g., Green v. Folgham, 57 Eng. Rep.
159, 162–63 (Ch. 1823) (defendant undisputedly consid-
ered as holding trade secret in trust under the settlement
was decreed to account for profits, which would be award-
ed to plaintiffs; the case was then referred to the courts of
law, where a jury would decide the value of the trade
secret to award further monetary relief to plaintiffs); see
Vickery v. Welch, 36 Mass. 523, 527 (1837) (in a debt
action on a bond brought in court of law, recognizing a
trade secret as property, deciding that the bond had been
forfeited, and stating that the plaintiff “may be heard in
chancery [equity] touching the damages”); see also Re-
statement (First) of Restitution § 136 cmt. a (1937) (“The
usual method of seeking restitution is by a bill in equity,
with a request for an accounting for any profits which
have been received.”). In contrast, we have been pointed
to no sound basis for concluding that, for this wrong, the
law courts would have awarded disgorgement of the
defendant’s profits, notwithstanding that the law courts,
through a writ of assumpsit, sometimes awarded such
relief for certain other wrongs.
    We also consider appropriate analogues from 1791 in
the Seventh Amendment historical inquiry. See Mark-
man, 517 U.S. at 378; Terry, 494 U.S. at 565–66. As a
general matter, a tort plaintiff could bring a quasi-
contract action in the law courts, through a writ of as-
sumpsit, and seek monetary restitution. 1 Dan B. Dobbs,
Law of Remedies § 4.1(3), at 565 (2d ed. 1993); see also id.
§ 4.3(2), at 590; Frederic C. Woodward, The Law of Quasi
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Contracts § 271, at 439 (1913) (“[T]here is in reality an
election between alternative obligations resulting from
the commission of a tort—an obligation to pay such dam-
ages as the plaintiff has suffered, and an obligation to pay
for such benefits as the defendant has received . . . .”);
Arthur L. Corbin, Waiver of Tort and Suit in Assumpsit,
19 Yale L.J. 221, 225–27, 239–40, 244 (1910) (similar);
William A. Keener, Treatise on the Law of Quasi-
Contracts 159–63 (1893) (similar); see generally Wood-
ward, Quasi Contracts §§ 270–74, at 437–42. But trade
secret misappropriation is a particular kind of tort—for
improper use of intellectual property—and for that kind of
tort, the legal quasi-contract restitutionary remedy does
not appear to have included awarding disgorgement of the
defendant’s profits, which is what is sought here.
    Consider patent infringement. Congress never au-
thorized quasi-contract (legal) actions based on patent
infringement. See 7 Donald S. Chisum, Chisum on Pa-
tents § 20.02 (2011). Originally, damages were authorized
through traditional actions on the case. See Root v. Lake
Shore & M.S. Ry. Co., 105 U.S. 189, 191 (1881); Wood-
ward, Quasi Contracts § 288, at 461. No legal action for
disgorgement of profits was recognized. See Coupe v.
Royer, 155 U.S. 565, 582 (1895); Tilghman v. Proctor, 125
U.S. 137, 143–46 (1888). That remained true when a
reasonable royalty came to be recognized as an available
remedy, starting in the second half of the Nineteenth
Century, and then definitively in Dowagiac Manufactur-
ing Co. v. Minnesota Moline Plow Co., 235 U.S. 641, 648
(1915), and a subsequent statute, Pub. L. No. 67-147, § 8,
42 Stat. 389, 392 (1922). Not long before Congress abol-
ished disgorgement of defendant’s profits as a patent
remedy, see Aro Mfg. Co. v. Convertible Top Replacement
Co., Inc., 377 U.S. 476, 504–05 (1964) (describing 1946
amendment), the Supreme Court observed that “recovery
of profits . . . had been allowed in equity both in copyright
and patent cases as appropriate equitable relief incident
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to a decree for an injunction,” Sheldon v. Metro-Goldwyn
Pictures Corp., 309 U.S. 390, 399 (1940) (emphasis add-
ed); see Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240
U.S. 251, 259 (1916) (trademark case following patent
cases, Root and Tilghman, to recognize that equity could
award disgorgement of profits where equity jurisdiction
otherwise attached, typically because the plaintiff had a
right to an injunction).
    Certain scholars furnished an explanation for the law
courts’ not providing disgorgement of the defendant’s
profits for patent infringement, even though patent
infringement sounded in tort, see Schillinger v. United
States, 155 U.S. 163, 169 (1894), and restitution through a
writ of assumpsit was broadly available for torts, includ-
ing for the improper taking or use of intangible property,
based on a theory of a contract implied in law (quasi-
contract), see Woodward, Quasi Contracts §§ 270–75, at
437–42; Corbin, Waiver of Tort and Suit in Assumpsit, 19
Yale L.J. at 231; Keener, Quasi-Contracts 159–60, 163–
65; see also 2 Dobbs, Remedies § 6.2(4), at 41 & n.1.
Citing the facts that another’s use of a patent-protected
idea does not prevent a patent owner from also using the
invention and that all the infringer has taken at the
owner’s expense is the owner’s right to exclude the in-
fringer, these scholars reasoned that “the true measure of
recovery” in restitution in an action in assumpsit based on
patent infringement would not be “the profits actually
reaped by the infringer, as in the case of a suit in equity
for an injunction and accounting, but the value of the use
of the invention—ordinarily determined by reference to
the royalty or price paid for such use by licensees.”
Woodward, Quasi Contracts § 288, at 461; see also Keener,
Quasi-Contracts 165–66. On that rationale, they said, the
assumpsit measure of relief for this tort was limited to a
reasonable royalty.      See Woodward, Quasi Contracts
§ 288, at 461; Keener, Quasi-Contracts 166 (“The plaintiff
in a case of this sort should recover such a sum as the jury
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would have been authorized to give, had there been a
contract between the plaintiff and the defendant that the
latter should pay the reasonable value of the user.”); see
also Corbin, Waiver of Tort and Suit in Assumpsit, 19
Yale L.J. at 244–45 (plaintiff suing in assumpsit is enti-
tled to recover the amount of what would have been
gained under the implied contract, not “the full amount of
the defendant’s unholy enrichment”).
    The apparent fact is that for patent infringement, dis-
gorgement of profits was not historically available at law.
As for copyright and trademark infringement, we have
seen no support for concluding that disgorgement of
profits was available at law for those wrongs. 10 And
recently, in Petrella v. Metro-Goldwyn-Mayer, Inc., 134
S. Ct. 1962 (2014), the Supreme Court treated recovery of
the defendants’ profits in a copyright infringement case as
an equitable remedy. It stated:
     Like other restitutional remedies, recovery of [de-
     fendants’] profits “is not easily characterized as
     legal or equitable,” for it is an “amalgamation of


     10 See Feltner, 523 U.S. at 350–52 (early copyright
actions brought in the courts of law were tried before
juries in the form of actions on the case and actions of
debt); Hamilton-Brown Shoe, 240 U.S. at 259 (trademark
case describing availability of disgorgement in equity);
Mark A. Thurmon, Ending the Seventh Amendment
Confusion: A Critical Analysis of the Right to a Jury Trial
in Trademark Cases, 11 Tex. Intell. Prop. L.J. 1, 57–63 &
n.315 (2002) (noting only two reported trademark actions
brought at law between 1584 and 1783—one in an action
on the case for deceit and the other in an action for fraud);
see also Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d
362, 364 (6th Cir. 1985) (noting that most early trade-
mark cases in England and America were brought in
equity, as an injunction was the preferred remedy).
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   rights and remedies drawn from both systems.”
   Restatement (Third) of Restitution and Unjust
   Enrichment § 4, Comment b, p. 28 (2010). Given
   the “protean character” of the profits-recovery
   remedy, see id., Comment c, at 30, we regard as
   appropriate its treatment as “equitable” in this
   case.
Id. at 1967 n.1; see also id. at 1978 (characterizing as
“equitable relief” the “disgorgement of unjust gains and
an injunction against future infringement” sought by the
plaintiff in that case). While not faced with the Seventh
Amendment question, the Court recognized the equitable
nature of disgorgement for a particular tort involving
intellectual property. 11
    We see no basis for drawing a different conclusion for
TAOS’s request for disgorgement for trade secret misap-
propriation in this case, based on Intersil’s improper
taking and use of TAOS’s intellectual property in the
photodiode structure. For Seventh Amendment purposes,
claims for patent, copyright, or trademark infringement
are appropriate analogues of the trade secret claim here.
From all we have seen, no disgorgement remedy was
available at law in 1791 for the former claims. We con-
clude that no such remedy would have been available at
law for the trade secret misappropriation here, either.



   11    More than a decade earlier, in another case in-
volving copyright infringement, the Court referred to
“awards of actual damages and profits, see [17 U.S.C.]
§ 504(b), which are generally thought to constitute legal
relief.” Feltner, 523 U.S. at 346. But, in the references
cited for support, the Court provided explanatory paren-
theticals related to only “damages,” not “profits.” Id. The
Court also carefully used the word “generally” when
noting how such remedies may be understood. Id.
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                             4
     TAOS relies on Dairy Queen, Inc. v. Wood, 369 U.S.
469 (1962), to support its claim of a jury-trial right on
disgorgement. But that decision does not support its
claim here. Dairy Queen contains no discussion of a
request for disgorgement of the defendant’s profits or,
indeed, any mention of “restitution,” “defendant’s “prof-
its,” “unjust gains,” or “unjust enrichment.” Id. at 469–
80. It does refer to the plaintiffs’ request for an “account-
ing,” and explains that, though the term was generally
employed to identify a procedure used in equity, the
request in Dairy Queen was in fact a claim for familiar
legal “damages” for breach of contract or trademark
infringement or both. Id. at 476–77; see also id. at 477
n.13 (“Whatever else the complaint sought, it did seek a
judgment for some $60,000 allegedly owing under the
contract.”); Resp.’s Br., Dairy Queen, Inc. v. Wood, 1962
WL 115789, at *6 (U.S. Jan. 5, 1962) (arguing (unsuccess-
fully) that the complaint asked only for an accounting,
and not for a certain sum of $60,000 owed under the
contract).
    The Fifth Circuit came to a similar conclusion in like
circumstances in Swofford v. B & W, Inc., 336 F.2d 406
(5th Cir. 1964), a patent infringement case where “it [was]
clear that the plaintiffs ha[d] requested damages” despite
the plaintiffs’ terminological choice to ask for an “account-
ing for profits, damages.” Id. at 409–10; see also id. at 410
(noting that “counsel for the plaintiffs emphasized the
damage request and offered to amend the complaint by
substituting ‘damages’ for ‘accounting’ if the court thought
there is ‘magic’ in the term, ‘accounting.’”). The Fifth
Circuit did go on to state that equity courts in patent
infringement cases that awarded defendant’s profits via
an accounting were in fact providing damages. Id. at 411.
But the Fifth Circuit did not hold that disgorgement of
the defendant’s profits was available at law in 1791. See
id. Nor did that court’s reasoning apply to any cognizable
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claim for disgorgement, because the Supreme Court, a
month earlier, had ruled that defendants’ profits were not
available under the Patent Act. Aro Mfg., 377 U.S. at
504–05.
    We conclude, therefore, that TAOS has no right to a
jury decision on its request for disgorgement of Intersil’s
profits as a remedy for trade secret misappropriation.
                             D
    Regarding patent infringement, Intersil argues that
there is insufficient evidence to support the jury’s verdict
of direct infringement of dependent claims 16, 17, 18, 43,
45, and 46 of the ’981 patent. Claims 16, 17, and 18
depend on independent claim 1, which reads:
       1. A monolithic optical detector comprising:
       a first well in a substrate, said first well con-
   figured to be exposed to incident light and for gen-
   erating a first photocurrent as a function of the
   incident light;
        a second well in the substrate, proximate said
   first well, said second well configured to be shield-
   ed from the incident light and for generating a
   second photocurrent as a function of the incident
   light; and
       means, responsive to the first and second pho-
   tocurrents, for determining an indication of spec-
   tral content of the incident light.
’981 patent, col. 6, lines 42–52. Claims 43, 45, and 46
directly or indirectly depend on independent claim 28,
which is the method claim counterpart to claim 1, and
which reads:
       28. A method for determining spectral con-
   tent of incident light upon a monolithic optical de-
   tector comprising:
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         generating a first photocurrent as a function
     of the incident light at a first well in a substrate,
     the first well configured to be exposed to incident
     light;
         generating a second photocurrent as a func-
     tion of the incident light at a second well in the
     substrate proximate the first well, the second well
     configured to be shielded from the incident light;
     and
         determining an indication of spectral content
     of the incident light in response to the first and
     second photocurrents.
Id., col. 8, lines 46–57. Dependent claims 16, 17, 18, 43,
45, and 46 contain limitations regarding additional fea-
tures of the optical detector in claims 1 and 28, such as an
analog-to-digital converter. E.g., id., col. 7, lines 51–57
(claim 16). The issues on appeal concern only certain
limitations in the two independent claims, which are
incorporated in each of the respective dependent claims.
     TAOS’s theory of infringement at trial was that Inter-
sil’s products infringe the method claims (i.e., claims 43,
45, and 46) by operating in “Mode 3.” In Mode 3, accord-
ing to TAOS, the products “determin[e] an indication of
spectral content of the incident light in response to the
first and second photocurrents.” In Intersil’s products,
the default mode of the chip is noninfringing Mode 1. An
off-chip microcontroller is used to activate Mode 3 to
collect information from the shielded and exposed diodes,
and perform subtraction to roughly estimate the amount
of visible light. See Feb. 25, 2015 Trial Tr. at 83–84, 91–
94, Tex. Advanced Optoelec. Sols., Inc. v. Intersil Corp.,
No. 4:08-cv-451 (E.D. Tex. June 1, 2016), ECF No. 588
(testimony of Intersil employee: Mode 1 collects data from
diode 1, Mode 2 collects data from diode 2; Mode 1 is the
default; and the off-chip microcontroller may select
Mode 3); see also Feb. 19, 2015 Trial Tr. at 12–14, Tex.
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Advanced Optoelec. Sols., Inc. v. Intersil Corp., No. 4:08-
cv-451 (E.D. Tex. June 1, 2016), ECF No. 587 (cross-
examination testimony of TAOS infringement expert).
There was no evidence presented at trial that any of
Intersil’s products in fact operate in Mode 3. TAOS’s
infringement expert testified that Apple did not use
Intersil’s products in Mode 3 and agreed that he had not
observed and was not aware of “Mode 3 being implement-
ed in any commercial product.” J.A. 20965. And while
TAOS points to trial testimony and exhibits regarding
“testing” of the products (by Intersil and/or Apple), the
cited evidence does not show that such testing included
operation in Mode 3.
     Intersil argues that because there is no evidence of
the accused products operating in Mode 3, the only al-
leged infringing mode, there is no evidence of any use of
Intersil’s products that directly infringes the method
claims. See Mirror Worlds, LLC v. Apple Inc., 692 F.3d
1351, 1359 (Fed. Cir. 2012) (direct infringement of a
method claim requires that each step of the method be
performed). We agree, and therefore reverse the verdict
of infringement of method claims 43, 45, and 46.
     The same reasoning does not apply to apparatus
claims 16, 17, and 18. As TAOS points out, those claims
require only devices that are capable of “determining an
indication of spectral content of the incident light in
response to the first and second photocurrents”—i.e., that
they include, as part of the monolithic optical detector,
“means, responsive to the first and second photocurrents,
for determining an indication of spectral content of the
incident light,” ’981 patent, col. 6, lines 50–52. Although
infringement of the apparatus claims requires that Inter-
sil’s products have the ability to perform in Mode 3,
infringement does not require actual use of Intersil’s
products in Mode 3. See Ericsson, Inc. v. D-Link Sys.,
Inc., 773 F.3d 1201, 1216–17 (Fed. Cir. 2014).
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     Intersil makes no argument in response that those
apparatus claims require more than capability. Instead,
Intersil argues that a separate claim element is missing
from its products: it contends that the structure of the
“means, responsive to the first and second photocurrents,
for determining an indication of spectral content of the
incident light” is not located on the chip in Intersil’s
products, while the claim requirement of a “monolithic
optical detector” requires that it be on the chip. See Tex.
Advanced Optoelec. Sols., Inc. v. Intersil Corp., No. 4:08-
cv-451, 2013 WL 10996554, at *6 (E.D. Tex. June 10,
2013) (construing “monolithic optical detector” as “an
optical detector formed on or in a single semiconductor
substrate”). According to Intersil, its off-chip microcon-
troller must be used to switch from default Mode 1 to
infringing Mode 3, and that microcontroller activity
should be considered part of the “means, responsive to the
first and second photocurrents, for determining an indica-
tion of spectral content of the incident light.”
      The jury could find otherwise. TAOS’s expert testified
that “Mode 3 is done on [the] chip,” J.A. 20848, and that
the structure for Mode 3 is present on the chip,
J.A. 20996. Intersil, for its part, did not present an af-
firmative contrary theory to the jury. Intersil’s infringe-
ment expert agreed that the first two limitations of
claim 1 (the shielded and exposed wells) are on the chip,
J.A. 21769, but he did not testify about the microcontrol-
ler’s role regarding the last limitation (“means . . . for
determining”). See J.A. 21722–23, 21770–73 (expert’s
distinct noninfringement theory that the equations per-
formed in Mode 3 on the chip do not qualify as a “means
. . . for determining”). In light of the testimony presented
at trial, a reasonable jury could have found that the
microcontroller’s simple “activation” of Mode 3—switching
from default Mode 1 to Mode 3—was not part of the
“means . . . for determining.” We affirm the judgment of
infringement of claims 16, 17, and 18.
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                             E
    Intersil argues that the district court erred in conclud-
ing that the award for patent infringement is not duplica-
tive of the award for trade secret misappropriation. We
agree with Intersil.
     “[D]ouble recovery for the same injury is inappropri-
ate.” Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 466
F.3d 1000, 1017 (Fed. Cir. 2006). Here, Intersil’s use of
TAOS’s photodiode array structure is the basis of Inter-
sil’s liability for both trade secret misappropriation and
patent infringement. The award for patent infringement
was based on a subset of the sales that form the basis of
the award for trade secret misappropriation: patent
infringement damages were based on sales of the
ISL29001, ISL29002, ISL29003, and ISL29004; the trade
secret misappropriation award was based on sales of
those four products and more than a dozen others. The
patent award represents an impermissible double recov-
ery. See id. at 1019 (impermissible double recovery where
“all of the damages awarded to [plaintiff] flowed from the
same operative facts: sales of the [same] infringing [prod-
ucts]”).
    The double recovery is clear from the TAOS expert’s
calculations. TAOS’s expert calculated a disgorgement
award for the trade secret misappropriation in which all
profits made from sales of the infringing products (plus all
profits made from sales of additional products) would go
to TAOS. The expert calculated a reasonable royalty for
the patent infringement based on a fraction of the total
profits for those infringing products. The jury chose to
award the full amount ($48,783,007) of the expert’s pro-
posed disgorgement award for the trade secret misappro-
priation and a partial amount ($73,653.51) of the expert’s
proposed royalty for the patent infringement ($105,219).
    The royalty award for patent infringement was there-
fore duplicative of some portion of the disgorgement
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award for trade secret misappropriation, to the extent the
awards cover the same period. The jury’s disgorgement
award for trade secret misappropriation covered the
period from April 2006 through March 2014. TAOS’s
expert’s proposed royalty calculation for patent infringe-
ment covered a subset of that period, namely, January
2007 through March 2014. Thus, although the jury
awarded only a portion of the proposed patent royalty, the
patent award on appeal covers sales (in fact, only sales)
that are already part of the disgorgement award. Such
overlap is improper. See id. at 1018–19 (concluding that
patent infringement damages and trademark infringe-
ment disgorgement were duplicative for sales of the same
products).
    We vacate the award of damages for patent infringe-
ment and remand for further proceedings as appropriate.
Any damages award for patent infringement must be
limited to infringement of claims 16, 17, and 18.
                              III
     In its cross-appeal, TAOS makes three arguments:
(1) the district court erred in granting summary judgment
in favor of Intersil as to extraterritorial sales; (2) the court
erroneously denied TAOS an injunction barring Intersil’s
infringement of the ’981 patent; and (3) the court erred in
denying TAOS enhanced damages based on Intersil’s
willful infringement. We affirm the district court as to
the first cross-appeal issue. We vacate as to the second
and third.
                               A
     We review de novo the district court’s grant of Inter-
sil’s motion for summary judgment as to damages from
extraterritorial sales. See Profectus Tech. LLC v. Huawei
Techs. Co., Ltd., 823 F.3d 1375, 1379 (Fed. Cir. 2016)
(applying Fifth Circuit law); Triple Tee Golf, Inc. v. Nike,
Inc., 485 F.3d 253, 261 (5th Cir. 2007).
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    Under 35 U.S.C. § 271(a), “whoever without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States or imports into the United
States any patented invention during the term of the
patent therefor, infringes the patent.” Section 284 then
provides, in pertinent part, that “[u]pon finding for the
claimant the court shall award the claimant damages
adequate to compensate for the infringement.” Under
those statutes, Intersil moved for summary judgment
against TAOS receiving damages for 98.8% of Intersil’s
sales of the products accused of infringement. Intersil
submitted evidence that, except for 1.2% of the accused
units, all of its accused products were manufactured,
packaged, and tested abroad, and those units were
shipped to manufacturers and distributors abroad.
    TAOS did not dispute those facts. Instead, TAOS fo-
cused on providing evidence that Intersil had sold or
offered to sell the patented invention to Apple within the
United States. See SJ Order, 2015 WL 13469997, at *2–
3. TAOS presented evidence of domestic purchase orders
of silicon wafers (possible components of the accused
products, but not the accused products themselves), id.
at *2; evidence that Intersil and Apple are both United
States corporations with their principal places of business
in the United States, and that Apple sold the iPhone 3G
in the United States, which included the accused prod-
ucts, id.; an unsigned Intersil template purchase order
identifying no particular parties or products, id.; internal
Intersil emails and other documents referring to “Apple
Contract C347” but not specifying the terms of any such
contract or whether the contract has been executed, id.;
an email stating that Intersil will ship products to Apple
pursuant to an order placed by Apple, without specifying
where the order was executed or where the Intersil prod-
ucts will ship from or to, id. at *3; a document concerning
business with Apple and containing unexplained charts
and graphs and unexplained references to contracts and
44              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                    ELECTRONICS AMERICA


products, id.; another series of unexplained charts, id.;
and emails between Intersil and Apple regarding pricing
negotiations and Apple’s testing of Intersil products,
without specifying locations of such negotiations and
testing, id. The district court properly determined that
none of that evidence sufficed to allow a reasonable find-
ing that Intersil sold or offered to sell the accused prod-
ucts within the United States, except for 1.2% of the
accused units, for which there was additional evidence of
domestic sale. Id. at *4.
     TAOS renews its argument on appeal, but it now re-
lies, in large part, on trial testimony and trial exhibits,
rather than the exhibits submitted at the summary
judgment stage. Compare TAOS Br. 29–31 (citing pri-
marily to joint appendix cites at numbers over 20000,
corresponding to trial evidence), and TAOS Reply Br. 10–
11 (same), with J.A. 14498–15702 (TAOS exhibits submit-
ted in response to Intersil’s motion for summary judg-
ment); see also TAOS Br. 89 (argument focuses on trial
evidence). Such evidence, which was not before the
district court on summary judgment, is not a proper
ground for disturbing the summary judgment ruling. See
Meyer Intellectual Props. Ltd. v. Bodum, Inc., 690 F.3d
1354, 1371 (Fed. Cir. 2012) (A party “cannot for the first
time on appeal introduce deposition testimony that was
not before the district court when it was deciding the
motions for summary judgment.”).
    As for the evidence that may properly be considered,
that evidence—of domestic negotiations and testing of
some of Intersil’s products—does not demonstrate “sub-
stantial activities regarding sales” sufficient to raise a
material dispute of fact as to sales or offers to sell in the
United States. TAOS Reply Br. 10. 12 In Halo Electronics,


     12 An offer to sell in the United States must be an of-
fer to make a sale that will occur in the United States; it
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ELECTRONICS AMERICA


Inc. v. Pulse Electronics, Inc., this court affirmed a grant
of summary judgment that the defendant Pulse did not
sell or offer to sell within the United States under § 271(a)
in light of evidence similar to that presented here by
TAOS. 769 F.3d 1371, 1377–81 (Fed. Cir. 2014), rev’d on
other grounds, 136 S. Ct. 1923 (2016). In Halo, manufac-
turing and delivery of the accused products were outside
the United States, id. at 1379; Pulse’s domestic pricing
negotiations with third-party Cisco, conducted on a quar-
terly basis and directed to specific products, did not
“constitute a firm agreement to buy and sell, binding on
both Cisco and Pulse,” id.; those parties had a “general
business agreement” that “did not refer to, and was not a
contract to sell, any specific product,” id.; and the plaintiff
Halo presented no evidence of the location of formation of
relevant binding contracts to sell, id. at 1379 n.1. Under
those undisputed facts, this court affirmed the district
court’s conclusion on summary judgment that there was
no sale or offer to sell in the United States. Id. at 1381.
    TAOS has presented an even weaker case than Halo
presented. Here, the undisputed facts show manufacture,
packaging, and testing abroad, and shipping of the units
to locations abroad. And TAOS has not presented any
evidence similar to Halo’s “general business agreement”
and quarterly pricing negotiations as to specific products.
     TAOS points to Carnegie Mellon University v. Mar-
vell Technology Group, Ltd., 807 F.3d 1283, 1309 (Fed.
Cir. 2015), in which this court agreed with the district
court in declining to rule as a matter of law in favor of the
defendant Marvell that the sales occurred abroad. But in
Carnegie Mellon, “there was some evidence suggesting


is not enough that the offer is made in the United States.
See Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed.
Cir. 2010).
46             TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                   ELECTRONICS AMERICA


that specific contractual commitments for specific vol-
umes of chips [accused products] were made in the United
States.” Id. TAOS presented no such specific evidence to
the district court here. In addition, in Carnegie Mellon,
Marvell “had the opportunity to present evidence at trial
that the sales took place only abroad and simply failed to
do so.” Id. The court repeatedly stressed that “record” in
concluding that judgment as a matter of law in favor of
Marvell was not warranted. Id. at 1309 (“We cannot
conclude otherwise on the record here”; “On this record,
we cannot say that a jury could not find the chips to have
been sold in the United States”); id. at 1310 (“On this
record, . . . Marvell is not entitled to JMOL”). Here, the
evidentiary record is quite different. Intersil presented
evidence of extraterritorial manufacturing, packaging,
testing, and shipping, and TAOS failed to present any
evidence establishing the required domestic activity. On
this record, TAOS has not produced evidence sufficient to
raise a material dispute of fact as to the 98.8% of units
that were the subject of the district court’s grant of sum-
mary judgment.
                            B
    We review for abuse of discretion the district court’s
denial of TAOS’s motion for an injunction to prevent
future patent infringement by Intersil. eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006). TAOS
challenges the district court’s findings supporting the
denial of the motion for an injunction. It also requests
that we enter an injunction in its favor.
     To obtain a permanent injunction, TAOS, having suc-
ceeded on the merits of its patent-infringement claim, had
to show (1) irreparable injury in the absence of an injunc-
tion, (2) inadequacy of compensatory remedies at law,
(3) a balance of hardships favoring an injunction, and
(4) consistency of an injunction with the public interest.
Id. The district court denied TAOS’s request for an
TEXAS ADVANCED OPTOELECTRONIC    v. RENESAS             47
ELECTRONICS AMERICA


injunction upon finding that, because TAOS had request-
ed a reasonable royalty as compensation for past in-
fringement, a reasonable royalty should be adequate to
compensate TAOS for future infringement. Injunction
Order, 2016 WL 1615741, at *4. On that ground alone,
the court found that TAOS had not shown irreparable
harm (the first eBay element, closely related to the sec-
ond).
     That analysis is insufficient even for the irreparable
harm and inadequacy of compensation elements of eBay.
A patent owner’s request for relief in the form of a rea-
sonable royalty may be relevant to those inquiries, but it
is not conclusive without further analysis. Irreparable
harm, not adequately compensable at law, may exist even
if there is evidence that, for example, the patent owner is
“willing[] to license its patent” and does not commercially
practice its patent. eBay, 547 U.S. at 393. A patentee
may find a royalty to be the most appropriate remedy for
past infringement: it may best measure those harms
which are reliably measurable. That does not mean,
however, that there do not exist the kinds of hard-to-
measure harms, such as impaired goodwill and competi-
tive position, that can justify injunctions to prevent them
before they occur (precisely because they are hard to
quantify later). See i4i Ltd. P’ship, 598 F.3d at 862 (af-
firming permanent injunction and finding of inadequate
remedies at law, as “loss of market share, brand recogni-
tion, and customer goodwill . . . may frequently defy
attempts at valuation, particularly when the infringing
acts significantly change the relevant market”); see also,
e.g., Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1329
(Fed. Cir. 2008) (affirming permanent injunction, even
where patent owner had granted licenses to other entities,
because “[a]dding a new [direct] competitor to the market
may create an irreparable harm that the prior licenses did
not”). In this court, the two parties allege various case-
specific facts as supporting or disproving irreparable
48              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                    ELECTRONICS AMERICA


harm: e.g., TAOS says that this is a two-player market;
Intersil points to TAOS’s success in winning Apple busi-
ness in recent years. TAOS Br. 83–85; Intersil Reply Br.
47–50; see also Injunction Order, 2016 WL 1615741, at *4
(stating that, if plaintiff had not requested a reasonable
royalty for past harm, “the court might have determined
that [Intersil’s] continued sale of an Infringing Product
amounted to irreparable injury”). But the district court
did not make findings about such specifics.
    Nothing the district court said about the other eBay
elements cures the absence of a full discussion of irrepa-
rable harm and inadequacy of compensation at law.
Regarding the balance of hardships, the court said only
that “without establishing irreparable harm, [TAOS]
cannot demonstrate that it will be faced with a hardship if
an injunction does not issue.” Injunction Order, 2016 WL
1615741, at *5. That observation is hardly independent of
the deficient irreparable-harm analysis. And the court
did not find that an injunction would so harm the public
interest that it should be denied even if irreparable harm
were present. Indeed, it said only that the public interest
factor “weighs against the issuance of an injunction”
because TAOS did not address how to prevent the injunc-
tion from adversely affecting the public interest. Id.
    In these circumstances, we vacate the denial of an in-
junction and remand for further consideration of the
request, while expressing no opinion on the outcome. We
will not grant TAOS’s request that we order an injunction
to be issued. It suffices in this case to say that “[t]he
decision to grant or deny permanent injunctive relief is an
act of equitable discretion by the district court,” eBay, 547
U.S. at 391, and we are not in a position to make the
necessary factual findings.
                             C
    The parties do not dispute that, if the jury verdict
finding liability for patent infringement survives, the
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ELECTRONICS AMERICA


district court’s ruling denying enhanced damages under
the standard set forth in In re Seagate Technology, LLC,
497 F.3d 1360, 1371 (Fed. Cir. 2007), must be vacated in
light of the intervening decision in Halo Electronics, Inc.
v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), abrogat-
ing In re Seagate. Post-trial Order, 2016 WL 1659926, at
*6–8. Because we affirm the verdict of patent infringe-
ment as to the apparatus claims, we vacate the district
court’s denial of TAOS’s motion for enhanced damages
based on the jury’s finding of willful infringement.
                            IV
     For the foregoing reasons, we affirm the judgment of
liability for trade secret misappropriation of the photodi-
ode array structure; reverse the verdict of infringement of
claims 43, 45, and 46 of the ’981 patent; affirm the verdict
of infringement of claims 16, 17, and 18 of the ’981 patent
and the judgment of infringement; and vacate the awards
for trade secret misappropriation and patent infringe-
ment, including the award of exemplary damages for
trade secret misappropriation. We also affirm the sum-
mary judgment excluding 98.8% of TAOS’s proposed
damages for patent infringement, vacate the denial of
TAOS’s motion for an injunction barring Intersil’s sale of
infringing products, and vacate the denial of TAOS’s
motion for enhanced damages. We remand for further
proceedings.
    This case involves two other causes of action for which
the jury found Intersil liable and awarded damages—
namely, breach of contract and tortious interference.
TAOS has requested that, in the event the judgment is
vacated or modified on appeal, we “remand to the district
court for a determination of whether judgment should be
entered on the breach of contract and tortious interfer-
ence claims.” TAOS Br. at 91 n.12. We think it sufficient,
in light of our vacatur of the disgorgement award for
trade secret misappropriation, to vacate the district
50              TEXAS ADVANCED OPTOELECTRONIC v. RENESAS
                                    ELECTRONICS AMERICA


court’s determination that the damages for breach of
contract and tortious interference are duplicative of that
disgorgement award. Post-trial Order, 2016 WL 1659926,
at *3–4. We leave to the district court on remand the
resolution of all issues, both substantive and procedural,
that bear on the proper treatment of the jury verdicts on
breach of contract and tortious interference.
     Each party shall bear its own costs.
     AFFIRMED IN PART, REVERSED IN PART,
       VACATED IN PART, AND REMANDED
