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Damages? Apportionment among licensed properties is essential, $10 million award reduced to $1

by Dexter Hamilton | Oct 9, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court decision excluding a damages expert’s testimony and reducing a jury’s $10 million damages award to nominal damages. The Court found that the plaintiff failed to put forth evidence from which a jury could reasonably determine damages without speculation. Rex Medical, L.P. v. Intuitive Surgical, Inc., Intuitive Surgical Operations, Inc., Intuitive Surgical Holdings, LLC, Case No. 24-1342 (Fed. Cir. Sept. 8, 2025) (Dyk, Prost, Stoll JJ.)

Rex Medical sued Intuitive for patent infringement. Initially, Rex asserted two related patents directed to systems for stapling tissue during surgery. Intuitive filed a petition for inter partes review (IPR) against one of the patents, and Rex withdrew it from the case.

Rex’s damages expert then opined that a hypothetical negotiation for a license to the remaining patent would have resulted in a $20 million payment. As support, he cited a prior settlement agreement between Rex and Covidien in which Rex asserted both patents before dropping the remaining asserted patent here from that case. Rex and Covidien ultimately settled, with Covidien paying $10 million to license both of the originally asserted patents alongside “eight other U.S. patents, seven U.S. patent applications and nineteen patents or applications from countries outside the United States.”

Intuitive moved to preclude Rex’s expert’s testimony regarding the Covidien license, and the district court granted the motion. Nonetheless, the jury returned an infringement verdict and granted $10 million in damages. Intuitive filed a renewed motion for judgment as a matter of law (JMOL). The district court denied the motion with respect to infringement and validity, but agreed on damages, reducing the award to $1. Rex appealed, challenging the exclusion of its expert’s testimony and the reduction of the damages award.

The Federal Circuit first addressed the exclusion of the expert testimony, reviewing for abuse of discretion. The Court noted that “[w]hen relying on comparable licenses to prove a reasonable royalty, we require a party to ‘account for differences in the technologies and economic circumstances of the contracting parties.’” The district court had held that Rex’s expert failed to adequately address the extent to which the patent dropped from this case and other patents included in the Covidien license contributed to the value of the license. As the Federal Circuit explained, the expert did not allocate the payment between the licensed patents and applications. Thus, the Federal Circuit ruled that the district court did not err in excluding the testimony.

Second, the Federal Circuit addressed the reduction in damages. Rex argued, and the Court agreed, that the reduction was in essence a grant of JMOL of no damages. The Court reviewed for abuse of discretion and described how, at trial, Rex relied primarily on the Covidien license and lay witness testimony to prove damages. While the lay witness testified that the focus of the Covidien license was both of the patents originally asserted here, the Court noted that the patent remaining at issue in this case had been dropped from [...]

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Oh brother: Draft settlement agreements carefully

by Ashley K. Justice | Sep 18, 2025 | Copyrights, Trademarks

The US Court of Appeals for the Eighth Circuit affirmed a district court judgment, finding that the plaintiff failed to sufficiently prove damages for its copyright claim, the jury instructions accurately applied the sophisticated consumer exception to initial-interest confusion, and the district court properly submitted ambiguous contract language to the jury for interpretation. Hoffmann Brothers Heating and Air Conditioning, Inc. v. Hoffmann Air Conditioning & Heating LLC, Case No. 24-1289 (8th Cir. Sept. 8, 2025) (Graza, Stras, Kobes, JJ.)

Brothers Tom and Robert Hoffmann were partners in Hoffmann Brothers. After Robert bought out Tom, they entered into a settlement agreement that included a four-year restriction barring Tom from using the name “Hoffmann” in connection with an HVAC business. After four years, Tom began using “Hoffmann Air Conditioning & Heating, LLC” (Hoffmann AC). Hoffmann AC’s advertising agency later mistakenly used pictures of Hoffmann Brothers. Hoffmann Brothers sued for trademark and copyright infringement. Hoffmann AC prevailed on some issues at summary judgment, and the jury reached a mixed verdict on the remaining claims. Both parties were denied attorneys’ fees, and Hoffmann Brothers appealed.

On appeal, the Eighth Circuit affirmed that Hoffmann Brothers did not sufficiently prove damages for its copyright claim based on Hoffmann AC’s use of its photographs. Because the photographs were unregistered works, Hoffmann Brothers was required to prove actual damages and/or additional profits of the infringer attributable to the infringement. Hoffmann Brothers’ only evidence of actual damages was Hoffmann AC’s monthly fee paid to its marketing agency. The Court found that using the monthly fee was too speculative because it did not reflect the benefit to Hoffmann AC or the harm to Hoffmann Brothers. For evidence of additional profits, Hoffmann Brothers’ expert report failed to link the use of the photographs to Hoffmann AC’s gross revenue. The Court explained that the Hoffmann Brothers could have linked additional profits attributable to the use of the photographs by, for example, demonstrating that:

Hoffmann AC gained customers because of the ads.
The photographs actually influenced purchasing decisions.
There was spike in monthly revenue that coincided with use of the photographs.

Regarding Hoffmann Brothers’ trademark claim, the jury found that the names were not so similar as to cause confusion. Hoffmann Brothers appealed, arguing that the district court erred in its jury instructions. The Eighth Circuit rejected the argument, finding the instructions fair and legally adequate. The instruction was directed to the issue of initial-interest confusion (a concept not adopted by Missouri courts), which occurs when consumer confusion arises at the outset, even if no sale ultimately results. The Court explained that under Eighth Circuit precedent, a sophisticated consumer exception applies to this theory, meaning that consumers who exercise a high degree of care are less likely to be initially confused. Here, the district court instructed the jury to consider initial-interest confusion only if it found that Hoffmann Brothers’ customers were not sophisticated. While the Eighth Circuit acknowledged some hesitation about the assumption that sophisticated consumers are never susceptible to initial-interest [...]

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Fifth Circuit untangles damages in trademark battle

by Christian Tatum | Sep 18, 2025 | Trademarks

The US Court of Appeals for the Fifth Circuit reinstated a jury’s lost profits and breach damages awards that the district court set aside during post-trial proceedings, finding that sufficient evidence supported the awards. I&I Hair Corp. v. Beauty Plus Trading Co., Case No. 24-10374 (5th Cir. Sept. 5, 2025) (Haynes, Ho, Oldham, JJ.) (per curiam).

I&I Hair, the seller of EZBRAID synthetic braids, sued competitor Beauty Plus for trademark infringement, unfair competition, and breach of a 2019 settlement agreement that prohibited Beauty Plus from using the EZBRAID mark or confusingly similar terms. At trial, the jury awarded approximately $70,000 for infringement, $1.15 million in lost profits for unfair competition, and $1.3 million for breach of the settlement agreement.

After trial, the district court set aside the unfair competition and breach awards, concluding I&I failed to prove lost profits with reasonable certainty. I&I appealed.

The Fifth Circuit reversed, emphasizing that Texas law requires only competent evidence permitting a jury to determine lost profits with reasonable certainty, not precise proof of the exact amount awarded. The Court found that I&I had met this standard, highlighting evidence that EZBRAID sales surged by 400% in 2017 – 2018 and 70% in 2018 – 2019 but slowed to 10% growth in 2019 – 2020 after Beauty Plus began selling similar products. I&I’s sales declined further as Beauty Plus sold more than $5 million in infringing goods from 2019 to early 2022, with Beauty Plus making sales to nearly half of I&I’s customers. I&I also introduced revenue and profit margin data, as well as testimony that brand dilution and supply chain disruption amplified the harm. The Court concluded that the jury may have rationally considered I&I’s pre-infringement growth in revenue and net income, as well as testimony regarding customer confusion, to reach the damages awarded.

The Fifth Circuit rejected each of Beauty Plus’ arguments. First, it rejected Beauty Plus’ claim that the unfair competition award improperly mirrored Beauty Plus’ profits, explaining that the question was whether the number fell within the range supported by evidence, not whether it matched I&I’s calculations precisely. Second, the Court dismissed Beauty Plus’ challenge to the breach award, noting that Texas law requires certainty only as to the fact of damages, not the exact amount. Finally, the Court found I&I had adequately preserved its opposition to Beauty Plus’ judgment as a matter of law motion.

Accordingly, the Fifth Circuit reinstated the jury’s full verdict and remanded the case for further proceedings on attorneys’ fees.

Dim damages methods can doom bright ideas

by Keval Amin | Aug 7, 2025 | Patents

In a mixed ruling on evidentiary exclusions and damages methodology, the US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded a district court’s decision that excluded patent validity evidence and granted judgment as a matter of law (JMOL). The Federal Circuit found that the district court erred in blocking the defendant’s invalidity case and directed it to reassess the reliability of the damages expert’s testimony under Rule 702. Jiaxing Super Lighting Co., Ltd. v. CH Lighting Technology Co., Ltd., Case No. 23-1715 (Fed. Cir. July 28, 2025) (Dyk, Chen, Hughes, JJ.)

Jiaxing Super Lighting and its affiliate Obert (collectively, Super Lighting) sued CH Lighting over three patents related to LED tube lamps – two covering structural designs and one addressing electrical safety. CH Lighting admitted infringement but argued that the structural patents were invalid under the America Invents Act’s (AIA) on-sale bar. The district court excluded key evidence, found the remaining expert testimony insufficient, and granted JMOL in Super Lighting’s favor. A jury later found CH Lighting liable and awarded damages, which the district court doubled. CH Lighting’s motions for a new trial and renewed JMOL were denied. CH appealed.

CH Lighting contended that certain 2014 LED tubes met all claim limitations and triggered the on-sale bar. The Federal Circuit disagreed, affirming the district court’s finding that CH Lighting’s expert lacked a proper foundation, having offered no concrete evidence or personal knowledge of the alleged sales. However, the Court found error in the exclusion of two key evidentiary items: testimony authenticating sales documents and an internal presentation showing competitor products predating the patents. The district court excluded the documents for lack of authentication and barred the presentation because of its connection to a dropped inequitable conduct claim, later reasoning that the products shown differed in wattage. The Federal Circuit rejected both rationales, explaining that the relevant inquiry focused on whether the products disclosed patented features, not their wattage. The Federal Circuit deemed these exclusions an abuse of discretion, warranting a retrial on validity.

The Federal Circuit separately upheld the jury’s findings on a different patent where the jury found the patent not invalid for anticipation and infringed. CH Lighting had argued that a prior art reference anticipated the asserted claims and that the accused chips could not infringe if the reference did not. The Court found, based on the conflicting testimony of the parties’ expert witnesses, that the jury was free to credit one expert over the other and therefore had substantial evidence supporting the jury’s no invalidity verdict. Similarly, the parties’ experts presented conflicting evidence on infringement and that Jiaxing’s expert’s theory was not necessarily inconsistent with the validity ruling. The Court thus affirmed the findings of validity and infringement.

Turning to damages, the Federal Circuit emphasized that expert testimony must be based on reliable methodology and sufficient factual grounding, reinforcing standards articulated in the recent EcoFactor, Inc. v. Google en banc decision. Because the jury [...]

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Up in Smoke: Statutory Trademark Damages Can Exceed Actual Damages

by Taylor MacDonald | May 15, 2025 | Trademarks

Addressing a jury’s statutory damages award that surpassed the plaintiffs’ actual damages, the US Court of Appeals for the Eleventh Circuit affirmed the district court’s denial of the defendant’s motion for judgment as a matter of law (JMOL), finding that the award was consistent with trademark damages law given the jury’s finding of no willfulness and was not violative of constitutional due process. Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc., Case No. 24-10765 (11th Cir. Apr. 30, 2025) (Pryor, Grant, Kid, JJ.)

Top Tobacco, Republic Technologies, and Republic Tobacco (collectively, Republic) sued Star Importers & Wholesalers for trademark violations and the sale of counterfeit cigarette rolling papers. Prior to trial, the district court granted summary judgment in favor of Republic. Thus, the only issues tried to the jury were damages related, including whether Star’s conduct had been willful, whether the company’s president should be personally liable, and the appropriate damages award.

Republic sought damages under 15 U.S.C. § 1117(c) of the Lanham Act, permitting the jury to look beyond actual damages and award up to $200,000 per non-willfully infringed mark or $2 million per willfully infringed mark. The jury instructions explained to the jury that it could consider multiple factors, including lost revenue, the conduct’s willfulness, and whether the counterfeit goods were a public safety risk. The instructions also clarified that the statute permitted both compensatory and punitive rationales for the award, as long as it was not a windfall for Republic. Ultimately, the jury found that Star’s conduct had not been willful and granted the plaintiffs $123,000 per infringed mark. Star moved for JMOL, arguing the total $1.107 million award was inconsistent with the finding of no willfulness. The district court denied the motion. Star appealed.

The Eleventh Circuit affirmed the district court’s denial of the JMOL motion, concluding that:

The jury was permitted to provide an award greater than actual damages.
The jury was permitted to consider punitive and deterrence rationales despite finding the actions were not willful.
The award did not violate constitutional due process.

Applying the principles of statutory construction, the Eleventh Circuit explained that because § 1117(a) permits an award for actual damages, § 1117(c)’s purpose was explicitly to allow awards greater than the actual loss suffered. Further, the jury’s role of factfinder under the Seventh Amendment precluded the district court from overriding a verdict that fell within the statute. Finally, the Court noted that the jury instructions were a safeguard against punishing defendants without any regard for actual damages because the instructions protected against a windfall for the plaintiff. In this case, the jury had facts regarding the marks’ strength, potential dangers of the counterfeit papers’ chemicals, and the prevalence of counterfeiting in the industry. Thus, the Court found that the jury had substantial evidence for the award – which was below the statutory maximum – and that it was not a windfall for Republic.

Similarly, the Eleventh Circuit reasoned that since the jury awarded damages below the statutory maximum [...]

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Damages on Default Judgment Not Barred by Absence of Precise Amount in Complaint

by Amit Kumar Saha, PhD | May 8, 2025 | Trademarks

The US Court of Appeals for the Ninth Circuit reversed and remanded a district court decision, allowing collection of actual damages in a default judgment where the complaint only sought damages “in an amount to be determined at trial.” AirDoctor, LLC v. Xiamen Qichuang Trade Co., Ltd., Case No. 24-215 (9th Cir. Apr. 11, 2025) (Friedland, J.) (Berzon, Kennelly JJ., concurring) (per curiam).

AirDoctor produces and sells air purification products, including branded filters designed specifically for its machines. In 2022, AirDoctor discovered that Xiamen Qichuang Trade had sold tens of thousands of unauthorized replacement filters that were marketed as compatible with AirDoctor products. These filters were allegedly labeled with AirDoctor’s registered trademarks, including AIRDOCTOR and ULTRAHEPA, without permission. AirDoctor asserted that these actions constituted trademark infringement, false advertising, and unfair competition under the Lanham Act and related state laws.

AirDoctor filed a complaint seeking injunctive relief and monetary damages “in an amount to be determined at trial.” Xiamen did not respond or appear in the litigation, and the court entered a default judgment against it. AirDoctor subsequently moved for approximately $2.5 million in actual damages, calculated based on the number of infringing units sold, along with $50,000 in attorneys’ fees and costs. The district court entered a default judgment in Air Doctor’s favor but declined to award damages or attorneys’ fees. The court reasoned that Fed. R. Civ. Pro 54(c) barred monetary relief in default judgments unless the complaint demanded a specific sum. Since AirDoctor’s complaint did not include a precise dollar amount, the court concluded that granting the requested monetary relief would exceed what was demanded in the pleadings and thus violate Rule 54(c). AirDoctor appealed.

The issue before the Ninth Circuit was whether the district court erred in interpreting Rule 54(c) to prohibit an award of actual damages in a default judgment where the complaint requested “damages in an amount to be determined at trial” but did not specify a fixed damages amount. Xiamen did not appear on appeal either.

The Ninth Circuit reversed, concluding that Rule 54(c) does not require a complaint to state a specific sum of damages for a court to award actual damages after a default judgment. The Court emphasized that the rule’s purpose is to prevent awards that are fundamentally different in kind or amount from those for which the defendant had been put on notice by the complaint, not to deny recovery when the type of relief was clearly identified, even if the amount was not. The Court noted that AirDoctor had clearly requested actual damages in its complaint and had indicated that the precise amount would be determined later, which was sufficient to give Xiamen fair notice of the relief sought. Relying on its 1974 decision in Henry v. Sneiders, the Court reaffirmed that actual damages may be awarded in default cases even if the complaint does not state a dollar figure, as long as the damages are of the same kind as those demanded.

The Ninth Circuit clarified that Rule [...]

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Not Secret and Not Used: Misappropriation Claim Dismissed

by Dexter Hamilton | Apr 17, 2025 | Trade Secrets

The US Court of Appeals for the Fifth Circuit upheld a district court’s grant of summary judgment in favor of the defendants, finding that the plaintiff failed to identify a trade secret and presented no evidence of its use or disclosure. DeWolff, Boberg & Associates, Inc. v. Justin Pethick and The Randall Powers Co., Case No. 24-10375 (5th Cir. Apr. 3, 2025) (Smith, Clement, Duncan, JJ.)

In 2018, Justin Pethick was a DeWolff, Boberg & Associates (DBA) employee. That year, DBA’s competitor, The Randall Powers Company (Powers), hired Pethick as regional vice president of sales. After Pethick began working at Powers, some prospective DBA clients hired Powers for consulting services. DBA sued Powers for trade secret misappropriation, asserting that Pethick stole its trade secrets and used them to poach clients. The district court granted summary judgment in favor of Powers and Pethick. DBA appealed.

The Fifth Circuit affirmed but on alternative grounds. To prevail on a misappropriation claim under Texas law (where the initial suit was brought), “a plaintiff must show that (1) a trade secret existed, (2) the trade secret was acquired through a breach of a confidential relationship or discovered by improper means, and (3) the defendant used the trade secret without authorization from the plaintiff.”

On appeal, Powers first argued that the information DBA claimed was trade secrets, such as contact information, meeting notes, and “confidential information related to business opportunities,” did not qualify as protectable trade secrets. DBA pointed to “large swathes of database information” without distinguishing what exactly was supposedly a trade secret. The Fifth Circuit found it was unclear as to what materials were trade secrets, noting that it had “no obligation to sift through the record in search of evidence to support a party’s opposition to summary judgment.” The Court held that summary judgment was justified on this basis.

The Fifth Circuit further held that, even assuming the information qualified as trade secrets, summary judgment was still warranted because there was no evidence that Powers and Pethick used the information. Although Pethick had requested a copy of a document that DBA claimed contained trade secrets prior to joining Powers, there was no evidence that he ever possessed it while at Powers. To the contrary, the forensic expert retained by DBA to remove its data from Pethick’s computer did not find the document. The Court concluded that DBA failed to demonstrate any use of an alleged trade secret.

When Is a Trade Secret Accessible? As Soon as It Can Be Reverse Engineered

by Jodi Benassi | Apr 10, 2025 | Trade Secrets

Although the US Court of Appeals for the Federal Circuit upheld a damages award for trade secret misappropriation and breach of a confidentiality agreement, it found that the district court erred in its determination of when the trade secret became publicly accessible for the purpose of applying a reverse engineering defense. The Federal Circuit also vacated and remanded the prejudgment interest award, finding that interest should not accrue on future sales. ams-OSRAM USA Inc. v. Renesas Elect. America, Inc., Case No. 22-2185 (Fed. Cir. Apr. 4, 2025) (Taranto, Schall, Chen, JJ.)

In 2008 ams sued Renesas for patent infringement, trade secret misappropriation, and breach of contract for using information that ams revealed in confidence. In 2015 a jury found for ams, and the district court entered judgment for trade secret misappropriation damages, but not for breach of contract. The district court determined that the breach award was duplicative of the misappropriation award. On appeal, in 2018 the Federal Circuit affirmed Renesas’ liability for misappropriation on a more limited basis than had been presented to the jury. The Court vacated the misappropriation award and remanded, instructing that disgorgement of profits damages should be decided by the judge, not the jury.

On remand, ams argued that it was entitled to “re-elect its remedy” and narrowed to the misappropriation and contract claims, which required the case to be retried. The new jury also found in favor of ams. The district judge then determined the monetary award for trade secret misappropriation, consisting of disgorgement of profits for one product and exemplary damages of double that sum. On ams’s breach of contract claim, the jury awarded a reasonable royalty on sales of products, other than the one subject to disgorgement damages. ams was also awarded prejudgment interest on both its misappropriation and contract claims, and attorneys’ fees on its breach of contract claim. Both parties appealed.

Trade Secret Accessibility and Reverse Engineering

The district court ruled that ams’s trade secrets became accessible in January 2006 when Renesas successfully reverse engineered the trade secret embodied in ams’s product. The district court determined that the relevant inquiry for accessibility is what the misappropriator actually did rather than what the misappropriator or other parties could have done. Renesas argued that the trade secret first became accessible when it could have reverse engineered the trade secret in February 2005.

The Federal Circuit agreed with Renesas, explaining that the district court’s ruling was inconsistent with Texas law. Under Texas law, information that is generally known or readily available by independent investigation does not qualify as a trade secret. Citing Fifth Circuit precedent, the Federal Circuit emphasized that the public is free to discover and exploit trade secrets through reverse engineering of products in the public domain. The Court found that Renesas could have accessed ams’s trade secrets through proper and straightforward means by February 2005. While acknowledging that the trade secret may not have been immediately apparent through casual inspection, the Court pointed out that reverse engineering is a common [...]

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Impermissible Convoyed Sales Wash Away Damages Award

by Christian Tatum | Apr 3, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding of infringement but vacated its damages award because the award improperly included auxiliary products lacking any functional relationship to the infringed patent claim. Wash World Inc. v. Belanger Inc., Case No. 2023-1841 (Fed. Cir. Mar. 24, 2025) (Stark, Lourie, Prost, JJ.)

Belanger owns a patent related to a spray-type car wash system. A competitor, Wash World, filed for a declaratory judgment that its car wash system did not infringe the patent.

A jury returned a general verdict of infringement and awarded Belanger $9.8 million in lost profit damages. Wash World moved for judgment as a matter of law of noni nfringement based on the positions it previously raised and challenged the damages award. Wash World argued that Belanger failed to prove entitlement to lost profits for convoyed sales. The district court rejected Wash World’s arguments. Wash World appealed, challenging the district court’s constructions of three claim terms that Wash World argued were dispositive to noninfringement and the damages award for improperly including nearly $2.6 million in ineligible convoyed sales.

The Federal Circuit concluded that for two of the three claim terms, the constructions Wash World argued for on appeal were materially different from the constructions it urged the district court to adopt. The Federal Circuit emphasized that while a party is not confined to the precise wording of the constructions it advances at the district court, it must still present essentially the same dispute on appeal. Finding no exceptional circumstances, the Court deemed Wash World’s appellate positions on the two claims to be forfeited. As to the remaining term, the Court found that while Wash World had preserved the issue for appeal, the district court’s interpretation was correct.

On the issue of remittitur, the Federal Circuit first found that Wash World had properly preserved the issue for appeal and that even if it had not, exceptional circumstances would justify reaching the merits. The Court stated that it could discern the precise damages the jury awarded based on convoyed sales, and that the requirements for lost profits on such sales were plainly not satisfied.

The Federal Circuit explained that entitlement to lost profits for convoyed sales exists only where the unpatented products (e.g., dryers sold together with a patented car wash system) and the patented product together constitute a “functional unit,” like parts of a complete machine. The Court found that no evidence in the record could support such a finding and that damages awarded for sales of the unpatented products were thus improper. The Court further rejected Belanger’s argument that the jury’s return of a general verdict insulated the award from further scrutiny. The Court noted that based on the evidence presented, it was overwhelmingly likely that the jury’s verdict included the impermissible damages for convoyed sales. Therefore, the Federal Circuit instructed the district court on remand to remit $2.6 million in damages corresponding to sales of the unpatented components.

What’s Shaking? Not an Interlocutory Appellate Decision on Damages

by Tessa Kroll | Jan 30, 2025 | Trade Secrets

The US Court of Appeals for the Fifth Circuit dismissed and remanded a district court certified interlocutory appeal concerning the standard for calculating a reasonable royalty under the Defend Trade Secrets Act (DTSA). The Court explained that the rate instruction issued by the district court was erroneous because the parties had not yet gone to trial and the plaintiff had not yet proven liability. Therefore, the issue of damages might never arise. Silverthorne Seismic, L.L.C. v. Sterling Seismic Servs., Ltd., Case No. 24-20006 (5th Cir. Jan. 3, 2025) (Smith, Clement, Higginson, JJ.) (Higginson, J., dissenting).

Silverthorne licensed seismic data to Casillas Petroleum Resource Partners II, LLC, an oil and gas exploration company. Under this arrangement, Silverthorne provided data to Sterling, a seismic data processer, which processed the data and sent it to Casillas. Because Sterling’s data processing required more data than what Casillas had paid for, Sterling was only permitted to forward the data that Casillas had licensed. However, Sterling sent Casillas unlicensed data, which Casillas allegedly showed to potential investors.

Silverthorne sued Sterling for trade secret misappropriation under the DTSA and sought reasonable royalties for Sterling’s improper disclosure. Shortly before trial, the district court issued an order adopting the Fifth Circuit’s definition of “reasonable royalty” in University Computing (1974), which, in this case, would have required Silverthorne to prove what the parties “would have agreed to for . . . use [of] the alleged trade secret.” University Computing predates the DTSA, which provides for reasonable royalties for “disclosure or use of a trade secret.” Silverthorne appealed the order, noting that it would not be able to prove what Sterling would have agreed to pay to use the data, since Sterling was a data processor and not an end user. The district court certified the following question for appeal:

[W]hether a plaintiff is entitled to prove reasonable royalty damages under the DTSA using willing buyer(s) detached from the parties to the litigation when willing buyers (here, oil and gas exploration companies) exist for plaintiff’s alleged trade secret (here, seismic data), but the defendant and comparable entities (here, seismic processors) do not buy or license that trade secret.

An administrative panel of the Fifth Circuit granted leave to appeal.

Majority Opinion

The Fifth Circuit dismissed the appeal as not involving a controlling question of law. The Court explained that interlocutory appeals are only permitted where an order involves a controlling question of law, the resolution of which would materially and immediately affect the outcome of litigation in the district court. The Fifth Circuit emphasized that a question is not controlling just because the answer would complicate a litigant’s ability to make its case or because the answer could save the parties from a post-judgment appeal. Applying these principles, the Court reasoned that damages issues generally do not control a case until the plaintiff establishes liability, unless the damages issue would be dispositive. Because Silverthorne had not yet established liability and was not barred from proving damages under the district court’s definition [...]

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