Case: 22-1630 Document: 92 Page: 1 Filed: 03/27/2024
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`HARRIS BRUMFIELD, TRUSTEE FOR ASCENT
`TRUST,
`Plaintiff-Appellant
`
`v.
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`Defendants-Appellees
`______________________
`
`2022-1630
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Illinois in No. 1:10-cv-00715, Judge
`Virginia M. Kendall.
`______________________
`
`Decided: March 27, 2024
`______________________
`
`MICHAEL DAVID GANNON, Baker & Hostetler LLP, Chi-
`cago, IL, argued for plaintiff-appellant. Also represented
`by JENNIFER KURCZ, LEIF R. SIGMOND, JR.; ALAINA
`LAKAWICZ, Philadelphia, PA.
`
` STEFFEN NATHANAEL JOHNSON, Wilson, Sonsini,
`Goodrich & Rosati, PC, Washington, DC, argued for de-
`fendants-appellees. Also represented by KELSEY CURTIS;
`GRANVILLE CLAYTON KAUFMAN, NATALIE J. MORGAN, San
`Diego, CA; MICHAEL BRETT LEVIN, Palo Alto, CA; MICHAEL
`S. SOMMER, New York, NY; NAOYA SON, Los Angeles, CA.
`
`

`

`Case: 22-1630 Document: 92 Page: 2 Filed: 03/27/2024
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`2
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`BRUMFIELD v. IBG LLC
`
`______________________
`
`Before PROST, TARANTO, and HUGHES, Circuit Judges.
`TARANTO, Circuit Judge.
`Trading Technologies International, Inc. (TT)—whose
`successor is the plaintiff-appellant named in the caption—
`brought this action against IBG LLC and its subsidiary In-
`teractive Brokers LLC (together, IBG) in 2010 in the
`Northern District of Illinois, alleging infringement of sev-
`eral TT-owned patents.1 Four of TT’s patents are at issue
`in this appeal: U.S. Patent Nos. 6,766,304 (issued July 20,
`2004); 6,772,132 (issued August 3, 2004); 7,676,411 (issued
`March 9, 2010); and 7,813,996 (issued October 12, 2010).
`The district court held the asserted claims of the ’411 and
`’996 patents invalid, and a jury found the asserted claims
`of the ’304 and ’132 patents infringed (and not proved in-
`valid for obviousness) and awarded $6,610,985 in damages,
`resulting in the final judgment now before us.
`Only TT, not IBG, appeals. TT challenges three rulings
`of the district court. First, on cross-motions for summary
`judgment, the district court held that the asserted claims
`of the ’411 and ’996 patents were invalid under 35 U.S.C.
`§ 101, while rejecting the § 101 challenge to the asserted
`claims of the ’304 and ’132 patents (with the resulting trial
`limited to a subset of such claims). Trading Technologies
`International, Inc. v. IBG, LLC, No. 10 C 715, 2021 WL
`
`
`1 Plaintiff-Appellant Harris Brumfield was the pri-
`mary investor in and majority shareholder of TT, which
`was sold in December 2021, with the rights to the patents
`here at issue assigned to a trust, Ascent Trust. Mr. Brum-
`field, as the sole trustee for Ascent Trust, was then substi-
`tuted for TT as the plaintiff in this action. Like the parties
`and the district court, we refer throughout to plaintiff-ap-
`pellant as Trading Technologies (TT).
`
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`BRUMFIELD v. IBG LLC
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`3
`
`2473809, at *5, *7 (N.D. Ill. June 17, 2021) (101 Opinion).
`Second, the district court, acting under Federal Rule of Ev-
`idence 702, excluded one of the damages theories, concern-
`ing foreign activities, proposed by TT’s damages expert.
`Trading Technologies International, Inc. v. IBG LLC, No.
`10 C 715, 2021 WL 5038754, at *2 (N.D. Ill. July 23, 2021)
`(FRE 702 Opinion). Third, the district court denied TT’s
`post-verdict motion for a new trial on damages, a motion in
`which TT alleged that IBG had misrepresented, by state-
`ment or omission, how it was calculating the damages fig-
`ures it presented to the jury. Brumfield, Trustee for Ascent
`Trust v. IB LLC, 586 F. Supp. 3d 827, 830–31 (N.D. Ill.
`2022) (Post-Trial Opinion)
`We reject TT’s challenges. We therefore affirm.
`I
`A
`The four patents before us have materially the same
`specification: The application that issued as the ’132 patent
`is the ancestor of the other three patents (so we cite only
`the specification of the ’132 patent). The specification de-
`scribes assertedly improved graphical user interfaces for
`commodity trading and methods for placing trade orders
`using those interfaces. ’132 patent, col. 3, lines 11–20. The
`specification asserts that the improved interfaces allow
`traders to place orders “quickly and efficiently” in volatile
`markets where speed is important. Id., col. 3, line 10; see
`id., col. 2, lines 1–41.
`The claims of the patents differ somewhat, including in
`a respect that plays a role in the analysis of patent eligibil-
`ity under § 101 as that issue is presented to us. The as-
`serted claims of the two patents from 2004 involve an
`interface that, in the words of the ’304 patent, has a “com-
`mon static price axis” along which (changing) bids and asks
`are displayed. ’304 patent, col. 12, lines 41–54 (emphasis
`added). The language of the asserted claims of the ’132
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`BRUMFIELD v. IBG LLC
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`patent is similar, requiring a “dynamic display of a plural-
`ity of bids and a plurality of asks” in a commodity market,
`“the dynamic display being aligned with a static display of
`prices corresponding thereto, wherein the static display of
`prices does not move in response to a change in the inside
`market,” ’132 patent, col. 12, lines 8–15 (emphases added),
`where “the ‘inside market’ is the highest bid price and the
`lowest ask price,” id., col. 4, lines 58–60.
`The two patents from 2010 are different. The ’411 pa-
`tent, in its claims, requires simply a “price axis,” with no
`requirement that it be static. ’411 patent, col. 12, lines 30–
`39. The same is true, based on claim construction, for the
`’996 patent. Although that patent’s claims use the phrase
`“static price axis,” the district court, at TT’s urging, con-
`strued that phrase in the ’996 patent to include price axes
`that can be moved in response to “a re-centering or re-posi-
`tioning” command, which can be issued automatically ra-
`ther than by the user. Trading Technologies International,
`Inc. v. IBG LLC, No. 10 C 715, 2019 WL 6609428, at *2–4
`(N.D. Ill. Dec. 5, 2019). In doing so, the district court noted,
`based on the ’996 patent’s prosecution history, that “‘static’
`in the ’996 [p]atent was to be understood in a broader sense
`than the ’132 and ’304 [p]atents.” Id. at *3; see TT’s Open-
`ing Br. at 5–6.
`The following claims are representative for purposes of
`the present appeal—two claims to a method, two to a com-
`puter readable medium hosting code for execution:
`’304 patent, claim 27. A computer readable me-
`dium having program code recorded thereon for ex-
`ecution on a computer for displaying market
`information relating to and facilitating trading of a
`commodity being traded in an electronic exchange
`having an inside market with a highest bid price
`and a lowest ask price on a graphical user inter-
`face, the program code causing a machine to per-
`form the following steps:
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`dynamically displaying a first indicator in
`one of a plurality of locations in a bid dis-
`play region, each location in the bid display
`region corresponding to a price level along
`a common static price axis, the first indica-
`tor representing quantity associated with
`at least one order to buy the commodity at
`the highest bid price currently available in
`the market;
`dynamically displaying a second indicator
`in one of a plurality of locations in an ask
`display region, each location in the ask dis-
`play region corresponding to a price level
`along the common static price axis, the sec-
`ond indicator representing quantity associ-
`ated with at least one order to sell the
`commodity at the lowest ask price cur-
`rently available in the market;
`displaying the bid and ask display regions
`in relation to fixed price levels positioned
`along the common static price axis such
`that when the inside market changes, the
`price levels along the common static price
`axis do not move and at least one of the first
`and second indicators moves in the bid or
`ask display regions relative to the common
`static price axis;
`displaying an order entry region compris-
`ing a plurality of locations for receiving
`commands to send trade orders, each loca-
`tion corresponding to a price level along the
`common static price axis; and
`in response to a selection of a particular lo-
`cation of the order entry region by a single
`action of a user input device, setting a plu-
`rality of parameters for a trade order
`
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`BRUMFIELD v. IBG LLC
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`relating to the commodity and sending the
`trade order to the electronic exchange.
`ʼ304 patent, col. 14, line 47, through col. 15, line 17.
`’132 patent, claim 1. A method for placing a trade
`order for a commodity on an electronic exchange
`having an inside market with a highest bid price
`and a lowest ask price, using a graphical user in-
`terface and a user input device, said method com-
`prising:
`setting a preset parameter for the trade or-
`der[;]
`displaying market depth of the commodity,
`through a dynamic display of a plurality of
`bids and a plurality of asks in the market
`for the commodity, including at least a por-
`tion of the bid and ask quantities of the
`commodity, the dynamic display being
`aligned with a static display of prices cor-
`responding thereto, wherein the static dis-
`play of prices does not move in response to
`a change in the inside market;
`displaying an order entry region aligned
`with the static display prices comprising a
`plurality of areas for receiving commands
`from the user input devices to send trade
`orders, each area corresponding to a price
`of the static display of prices; and
`selecting a particular area in the order en-
`try region through single action of the user
`input device with a pointer of the user in-
`put device positioned over the particular
`area to set a plurality of additional param-
`eters for the trade order and send the trade
`order to the electronic exchange.
`
`

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`BRUMFIELD v. IBG LLC
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`7
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`ʼ132 patent, col. 12, lines 2–26.
`’411 patent, claim 1. A method of displaying mar-
`ket information relating to and facilitating trading
`of a commodity being traded on an electronic ex-
`change, the method comprising:
`receiving, by a computing device, market
`information for a commodity from an elec-
`tronic exchange, the market information
`comprising an inside market with a current
`highest bid price and a current lowest ask
`price;
`displaying, via the computing device, a bid
`display region comprising a plurality of
`graphical locations, each graphical location
`in the bid display region corresponding to a
`different price level of a plurality of price
`levels along a price axis;
`displaying, via the computing device, an
`ask display region comprising a plurality of
`graphical locations, each graphical location
`in the ask display region corresponding to
`a different price level of the plurality of
`price levels along the price axis;
`dynamically displaying, via the computing
`device, a first indicator representing quan-
`tity associated with at least one trade order
`to buy the commodity at the current high-
`est bid price in a first graphical location of
`the plurality of graphical locations in the
`bid display region, the first graphical loca-
`tion in the bid display region corresponding
`to a price level associated with the current
`highest bid price;
`upon receipt of market information com-
`prising a new highest bid price, moving the
`
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`BRUMFIELD v. IBG LLC
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`first indicator relative to the price axis to a
`second graphical location of the plurality of
`graphical locations in the bid display re-
`gion, the second graphical location corre-
`sponding to a price level of the plurality of
`price levels associated with the new high-
`est bid price, wherein the second graphical
`location is different from the first graphical
`location in the bid display region;
`dynamically displaying, via the computing
`device, a second indicator representing
`quantity associated with at least one trade
`order to sell the commodity at the current
`lowest ask price in a first graphical location
`of the plurality of graphical locations in the
`ask display region, the first graphical loca-
`tion in the ask display region correspond-
`ing to a price level associated with the
`current lowest ask price;
`upon receipt of market information com-
`prising a new lowest ask price, moving the
`second indicator relative to the price axis to
`a second graphical location of the plurality
`of graphical locations in the ask display re-
`gion, the second graphical location corre-
`sponding to a price level of the plurality of
`price levels associated with the new lowest
`ask price, wherein the second graphical lo-
`cation is different from the first graphical
`location in the ask display region;
`displaying, via the computing device, an or-
`der entry region comprising a plurality of
`graphical areas for receiving single action
`commands to set trade order prices and
`send trade orders, each graphical area
`
`

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`9
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`corresponding to a different price level
`along the price axis; and
`selecting a particular graphical area in the
`order entry region through a single action
`of the user input device to both set a price
`for the trade order and send the trade order
`having a default quantity to the electronic
`exchange.
`’411 patent, col. 12, line 23, through col. 13, line 16.
`’996 patent, claim 1. A computer readable me-
`dium having program code recorded thereon for ex-
`ecution on a computer having a graphical user
`interface and a user input device, the program code
`causing a machine to perform the following method
`steps:
`receiving market information for a com-
`modity from an electronic exchange, the
`market information comprising an inside
`market with a current highest bid price
`and a current lowest ask price;
`receiving an input from a user that desig-
`nates a default quantity to be used for a
`plurality of trade orders;
`dynamically displaying a first indicator in
`one of a plurality of locations in a bid dis-
`play region, each location in the bid display
`region corresponding to a price level along
`a static price axis, the first indicator repre-
`senting quantity associated with at least
`one order to buy the commodity at the cur-
`rent highest bid price;
`dynamically displaying a second indicator
`in one of a plurality of locations in an ask
`display region, each location in the ask
`
`

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`BRUMFIELD v. IBG LLC
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`display region corresponding to a price
`level along the static price axis, the second
`indicator representing quantity associated
`with at least one order to sell the commod-
`ity at the current lowest ask price;
`displaying the bid and ask display regions
`in relation to a plurality of price levels ar-
`ranged along the static price axis such that
`when the inside market changes, the price
`levels along the static price axis do not
`change positions and at least one of the
`first and second indicators moves in the bid
`or ask display regions relative to the static
`price axis;
`displaying an order entry region aligned
`with the static price axis comprising a plu-
`rality of areas for receiving commands from
`the user input device to send trade orders,
`each area corresponding to a price level of
`the static price axis; and
`receiving a plurality of commands from a
`user, each command sending a trade order
`to the electronic exchange, each trade order
`having an order quantity based on the de-
`fault quantity without the user designating
`the default quantity between commands,
`wherein each command results from select-
`ing a particular area in the order entry re-
`gion corresponding to a desired price level
`as part of a single action of the user input
`device with a pointer of the user input de-
`vice positioned over the particular area to
`both set an order price parameter for the
`trade order based on the desired price level
`and send the trade order to the electronic
`exchange.
`
`

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`BRUMFIELD v. IBG LLC
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`11
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`’996 patent, col. 11, line 45, through col. 12, line 24.
`B
`TT sued IBG for infringement of the four patents we
`have identified, asserting various claims—some claiming a
`method, some a system, and some “a computer readable
`medium having program code recorded thereon for execu-
`tion on a computer” (e.g., ’304 patent, claim 27, quoted su-
`pra). As relevant for present purposes, the instrument of
`the alleged infringement was the BookTrader module
`(trading tool) that is part of IBG’s Trader Workstation Plat-
`form (TWS), software that traders load onto their comput-
`ers and use for buying and selling on exchanges, such as
`commodities exchanges. IBG released TWS BookTrader a
`few months before the ’304 patent issued in July 2004 (the
`’132 patent issued the next month and the ’411 and ’996
`patents in 2010). TT alleged that IBG infringed the ’304
`and ’132 patents via TWS BookTrader starting as soon as
`those patents issued, and those allegations went to trial.
`The BookTrader tool also was part of a different IBG prod-
`uct called WebTrader (for use on the world wide web), but
`WebTrader was involved only in the claims that IBG in-
`fringed claims of the ’411 and ’996 patents—which, as will
`be described, were held invalid.
`We describe the three rulings of the district court that
`are at issue on appeal, though not in chronological order.
`1
`In June 2021, on cross-motions for summary judgment
`on the § 101 eligibility of the four patents’ asserted claims,
`the district court conducted the two-step analysis described
`in Alice Corp. v. CLS Bank International, 573 U.S. 208
`(2014), and ruled partly for TT and partly for IBG. 101
`Opinion, 2021 WL 2473809, at *1, *6–7. The court first
`rejected IBG’s § 101 challenge to the ’304 and ’132 patents’
`claims. Id. at *5. The court discussed our nonprecedential
`decision in Trading Technologies International, Inc. v.
`
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`BRUMFIELD v. IBG LLC
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`CQG, Inc., in which we upheld claims of the ’304 and ’132
`patents against a § 101 challenge (asserted by CQG), rea-
`soning that the claims are “‘directed to a specific implemen-
`tation of a solution to a problem in the software arts.’” 675
`F. App’x 1001, 1006 (Fed. Cir. 2017) (CQG) (quoting Enfish,
`LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
`2016)). The district court saw no persuasive reason to draw
`a different conclusion here, though the record is somewhat
`different. 101 Opinion, 2021 WL 2473809, at *5. IBG does
`not appeal the district court’s rejection of its § 101 chal-
`lenge to the asserted claims of the ’304 and ’132 patents.
`Moving to the ’411 and ’996 patents, the district court
`held the asserted claims of those patents to be invalid be-
`cause they claim subject matter that is ineligible for pa-
`tenting under § 101. Id. at *5–7. The court stressed that
`those claims are broader than those of the ’304 and ’132
`patents (in that they do not preclude automatic movement
`of the price axis) and reasoned that TT had failed to explain
`how these broader claims provide a specific solution to the
`problem solved by the ’304 and ’132 patents. Id. at *6.
`Given the difference, the court concluded that the ’411 and
`’996 patents’ claims amount to nothing more than “the ab-
`stract idea of placing orders on an electronic exchange.”
`101 Opinion, 2021 WL 2473809, at *6. In so ruling, the
`court pointed to our non-precedential decision in another
`case between TT and IBG, Trading Technologies Interna-
`tional, Inc. v. IBG LLC, 767 F. App’x 1006 (Fed. Cir. 2019),
`in which we agreed with a § 101 challenge to claims of U.S.
`Patent No. 7,693,768, which is a descendant of the ’132 pa-
`tent and whose claims call simply for a price axis, not a
`static price axis.
`The court also rejected TT’s contention that another
`nonprecedential decision of this court, IBG LLC v. Trading
`Technologies International, Inc., 757 F. App’x 1004 (Fed.
`Cir. 2019) (IBG I), justified rejecting the § 101 challenge
`here. In IBG I, we held that the four patents at issue in
`the present case did not qualify for Covered Business
`
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`BRUMFIELD v. IBG LLC
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`Method (CBM) review under § 18 of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
`329–31 (2011) (AIA), so we did not reach the § 101 merits.
`IBG I, 757 F. App’x at 1007–08. We reasoned that our ear-
`lier holding of eligibility as to the ’304 and ’132 patents in
`CQG implied that those patents did not qualify for CBM
`review. Id. We then stated, with no elaboration, that we
`saw “no meaningful difference” on the CBM-qualification
`issue for the ’411 and ’996 patents, though there was no
`predicate decision of eligibility for those patents, and that
`we were not reaching the § 101 issue. Id. at 1008. In the
`present case, the district court concluded that, although
`“the inquiries under CBM review and § 101 eligibility are
`related,” the CBM determination did “not dictate a finding
`of § 101 eligibility here.” 101 Opinion, 2021 WL 2473809,
`at *7.
`TT’s case on infringement of the ’304 and ’132 patents
`eventually went to trial, and that trial involved only
`method and “computer readable medium” (CRM) claims:
`five method claims (1, 12, 15, 17, and 22) and one CRM
`claim (27) of the ’304 patent, and three method claims (1,
`7, and 25) and two CRM claims (8 and 51) of the ’132 pa-
`tent. Earlier in the case, TT had asserted a larger set of
`claims, including some system claims, but we need not con-
`sider any system claims in addressing the two issues pre-
`sented on appeal concerning the ’304 and ’132 patents
`because TT does not seek to revive any system claims. See
`TT’s Opening Br. at 48, 66 (seeking new trial only on dam-
`ages for these patents).
`
`2
`In 2020, before the § 101 ruling, IBG moved to exclude
`certain proposed testimony of TT’s damages expert, Cath-
`erine Lawton, under Federal Rule of Evidence 702. In July
`2021, not long before the trial, the district court ruled on
`the motion. The court allowed much of Ms. Lawton’s pro-
`posed testimony, but it excluded proposed testimony
`
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`BRUMFIELD v. IBG LLC
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`advancing one particular basis for Ms. Lawton’s proposed
`amount of damages, a basis tied to activities of foreign us-
`ers of TWS BookTrader. FRE 702 Opinion, 2021 WL
`5038754, at *2.
`Before describing that ruling, we describe another rul-
`ing (issued during briefing on the Rule 702 motion and ul-
`timately relied on in the FRE 702 Opinion) on a related
`IBG motion—in which IBG sought summary judgment of
`no direct or indirect infringement of the asserted claims (of
`all four patents, at the time) based on activities of foreign
`users of the TWS BookTrader trading tool.2 Trading Tech-
`nologies International, Inc. v. IBG LLC, No. 10 C 715, 2020
`WL 7408745 (N.D. Ill. Dec. 17, 2020) (Partial SJ Opinion).
`The district court, in the Partial SJ Opinion, explained
`what it deemed a materially undisputed fact about foreign
`users of TWS BookTrader: “a user located in a different
`country downloads the TWS software platform to her com-
`puter located in that country and uses a mouse and a mon-
`itor located in that country to place orders and send them
`to the exchange” where the trades occur. Id. at *1. The
`district court then ruled on whether there was a triable is-
`sue of fact as to whether IBG, or its foreign users through
`their activities involving TWS BookTrader, met the domes-
`tic-act requirement of 35 U.S.C. § 271(a), producing direct
`or indirect infringement. At the time, TT was asserting
`method claims, system claims, and CRM claims.
`In answering that question, the court treated together
`the method and system claims of the patents, as to which
`IBG’s motion was unopposed by TT, and granted “summary
`judgment related to infringement of the method and
`
`2 When IBG moved for partial summary judgment re-
`garding foreign users, the WebTrader product, involved in
`the allegations of infringement of the ’411 and ’996 patents,
`was still in the case, but IBG’s motion addressed only the
`TWS product.
`
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`15
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`system claims caused by the activities of foreign users.” Id.
`at *2. But the court denied the motion with respect to the
`CRM claims of the patents. See ’304 patent, col. 14, lines
`47–48 (claim 27; all other claims are method claims); ’132
`patent, col. 12, lines 52–53 (claims 8–13, 30–39, 51; all
`other claims are either method or system claims). Based
`on the allegations about foreign users’ downloading of TWS
`from U.S. servers and entry into a “Customer Agreement,”
`the court concluded that the parties genuinely disputed
`facts that might establish domestic infringement—i.e., con-
`cerning whether IBG was selling (or offering to sell) its
`BookTrader product to foreign users and, if so, whether it
`was doing so domestically. Id. at *2–4. That summary
`judgment ruling has not been appealed.
`The district court relied on that ruling in addressing
`IBG’s damages-evidence motion. Ms. Lawton proposed as
`damages not an award of lost profits suffered by TT, but a
`reasonable royalty for IBG’s infringing activities, J.A.
`87413—based on a hypothetical negotiation on July 20,
`2004, the day the ’304 patent issued (to be followed two
`weeks later by issuance of the ’132 patent), J.A. 87658.
`Specifically, she proposed a royalty structured as a per-
`user, per-month royalty—for each month, starting from the
`July 20, 2004 issuance of the earliest patent, TT would re-
`ceive a fixed amount per active user of IBG’s accused prod-
`uct. J.A. 87414–15, 87942, 87963. In her proposed
`damages calculation, Ms. Lawton included foreign active
`users of TWS, identifying four bases (of different scope) for
`such inclusion. FRE 702 Opinion, 2021 WL 5038754, at *2;
`J.A. 87843–44.
`The district court allowed the proposed testimony as to
`two of the asserted bases: “making a copy of the accused
`products via a server located in the United States”; and
`“sale of the accused products in the United States via the
`user’s entry into a Customer Agreement.” FRE 702 Opin-
`ion, 2021 WL 5038754, at *2. The court explained that it
`had already concluded, in its Partial SJ Opinion, that
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`16
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`BRUMFIELD v. IBG LLC
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`those two bases, if the allegations of fact were proved, could
`establish domestic infringement. FRE 702 Opinion, 2021
`WL 5038754, at *2. The district court disallowed the two
`other asserted bases, one that is not at issue on appeal and
`one that is. Id. at *2–3.3
`The currently disputed disallowed basis was, in Ms.
`Lawton’s words, IBG’s “‘making’ the accused products in
`the United States with foreign damages.” J.A. 87844,
`87851 (capitalization removed); see FRE 702 Opinion, 2021
`WL 5038754, at *2. Regarding the “making the accused
`product” phrase, Ms. Lawton stated that the TWS software
`was “designed and made” and “developed” in the United
`States, J.A. 87851–52, having previously stated that
`“BookTrader is the Accused Product and is included in
`every version of TWS and WebTrader,” J.A. 87793. Re-
`garding the “foreign damages” phrase, she opined, as rele-
`vant here, that TT should receive compensation (damages)
`for the foreign users’ use of copies of TWS. J.A. 87851–52.
`She proposed inclusion, in the per-user, per-month royalty,
`of all foreign active users in a given month (from July 20,
`2004), with no refinement to narrow the pool to any identi-
`fied subgroups of such foreign active users, J.A. 87837, be-
`cause, she opined, IBG deliberately markets the TWS
`software worldwide. J.A. 87853–54. She rested that pro-
`posal on her “understand[ing] that TT is entitled to world-
`wide patent damages for harm that is the foreseeable and
`but-for result of infringement in the United States.” J.A.
`87851.
`
`
`3 The disallowed basis that is not on appeal involved
`foreign users’ “use of the accused products in the United
`States.” FRE 702 Opinion, 2021 WL 5038754, at *2. The
`district court disallowed that basis for want of evidence
`that “foreign users” engaged in such use. Id. at *3 (empha-
`sis added). TT does not challenge that ruling on appeal.
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`BRUMFIELD v. IBG LLC
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`17
`
`IBG moved to exclude that damages basis as impermis-
`sibly resting on an incorrect view of the governing law. IBG
`argued that “Ms. Lawton’s worldwide damages opinion im-
`properly includes foreign users with no link to any alleged
`US infringing activities” (capitalization removed), invoking
`the principle that “‘[i]t is axiomatic that U.S. patent law
`does not operate extraterritorially to prohibit patent in-
`fringement abroad[,]’ and it ‘do[es] not thereby provide
`compensation for a defendant’s foreign exploitation of a pa-
`tented invention, which is not infringement at all.’” J.A.
`85143 (second and third alteration in original) (quoting
`Power Integrations, Inc. v. Fairchild Semiconductor Inter-
`national, Inc., 711 F.3d 1348, 1370–71 (Fed. Cir. 2013)).
`Ms. Lawton’s reliance on a foreseeability-plus-but-for-
`cause standard, IBG contended, was contrary to law. J.A.
`85146, 85148. TT responded that the proposal was legally
`permissible based on WesternGeco LLC v. ION Geophysical
`Corp., 585 U.S. 407 (2018), though WesternGeco involved
`lost-profits, not reasonable-royalty, damages, and involved
`infringement under 35 U.S.C. § 271(f)(2), not under
`§ 271(a). J.A. 88406–11; see J.A. 87851 (Ms. Lawton’s ex-
`pert report invoking WesternGeco). TT, like Ms. Lawton,
`focused on IBG’s domestic designing and programming of
`TWS BookTrader when discussing the “making” identified
`in this basis for damages, and on the assertion that IBG
`“markets and distributes/licenses its BookTrader tool to a
`worldwide audience.” J.A. 88411–12.
`The district court agreed with IBG, excluding the evi-
`dence as “premised on a misapplication of controlling law.”
`FRE 702 Opinion, 2021 WL 5038754, at *2. The district
`court understood WesternGeco to hold that “a patent owner
`claiming infringement under 35 U.S.C. § 271(f)(2) may re-
`cover lost foreign profits proximately caused by domestic
`infringement.” Id. (quoting 585 U.S. at 417). The district
`court reasoned, however, that it was unclear what Western-
`Geco implies about “the present case involving infringe-
`ment under § 271(a) and reasonable royalty damages.” Id.
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`18
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`BRUMFIELD v. IBG LLC
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`The district court therefore concluded that the controlling
`law for this case continued to be found in Power Integra-
`tions, which involved damages for § 271(a) infringement
`(though, like WesternGeco, it involved an issue about lost
`profits, not reasonable royalties). Id. (citing Power Integra-
`tions, 711 F.3d at 1371, for the proposition that “[g]ener-
`ally, even after establishing one or more acts of
`infringement in the United States, a patentee may not re-
`cover damages for worldwide sales of the patented inven-
`tion on the theory that ‘those foreign sales were the direct
`foreseeable result of [the infringer’s] domestic infringe-
`ment’” (second alteration in original)).
`The “making the accused product” basis of damages
`was therefore excluded at trial, but TT was permitted to
`present its evidence based on the making of a copy for the
`foreign user via a domestic server and the making of a do-
`mestic sale via a Customer Agreement between the foreign
`user and IBG. The jury found infringement, rejected the
`remaining validity challenges, and awarded damages of
`$6,610,985. In its post-trial opinion, the district court reit-
`erated its exclusion of the disputed damages basis. Post-
`Trial Opinion, 586 F. Supp. 3d at 839–40.
`3
`The third rul