"In determining a reasonable royalty, parties frequently rely on comparable license agreements." Bio-Rad Lab'ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1372 (Fed. Cir. 2020); see Apple, 757 F.3d at 1325 ("[W]e have held many times, using sufficiently comparable licenses is a generally reliable method of estimating the value of a patent."). But the licenses relied on by the patentee "[must be] sufficiently comparable to the hypothetical license at issue in suit."

A narrowing amendment made to secure the patent gives rise to a presumption of estoppel, but that presumption can be rebutted if: “(1) the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question; (2) the equivalent was unforeseeable at the time of the application; or (3) there was some other reason suggesting that the patentee could not reasonably be expected to have described the equivalent.” Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1364 (Fed. Cir. 2020) (citing Festo, 535 U.S. at 740-41); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33 (1997) (holding that a patent owner must “establish the reason for an amendment” and the court must then decide “whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element” in the amendment”).

"Assessing the comparability of licenses requires a consideration of whether the license at issue involves comparable technology, is economically comparable, and arises under comparable circumstances as the hypothetical negotiation." Bio-Rad Lab'ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1372-73 (Fed. Cir. 2020). Contrary to NanoString's assertion, Ms. Davis does not ignore either license.

"A jury's damages award ‘must be upheld unless the amount is grossly excessive or monstrous, clearly not supported by the evidence, or based only on speculation or guesswork.’ " Bio-Rad Lab'ys, Inc. v. 10X Genomics Inc. , 967 F.3d 1353, 1373 (Fed. Cir. 2020) (quoting Gen. Elec. Co. v. Joiner , 522 U.S. 136, 146, 118 S.Ct. 512, 139 L.Ed.2d 508 (1997) ). At trial, the jury heard sufficient evidence to support both the comparability of the licenses and the award of a five dollar reasonable royalty.

However, this court has explained that when a sufficiently comparable license is used as the basis for determining the appropriate royalty, further apportionment may not necessarily be required. See, e.g. , Bio-Rad Labs., Inc. v. 10X Genomics Inc. , 967 F.3d 1353 (Fed. Cir. 2020) ; Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC , 927 F.3d 1292 (Fed. Cir. 2019) ; Commonwealth Sci. & Indus. Rsch. Organisation v. Cisco Sys., Inc. , 809 F.3d 1295 (Fed. Cir. 2015). That is because a damages theory that is dependent on a comparable license (or a comparable negotiation) may in some cases have "built-in apportionment."

There are three ways to overcome the presumption: “(1) the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question; (2) the equivalent was unforeseeable at the time of the application; or (3) there was some other reason suggesting that the patentee could not reasonably be expected to have described the equivalent.” Bio-Rad Lab'ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1364 (Fed. Cir. 2020) (citing Festo, 535 U.S. at 740-41). The standard to rebut the presumption is a preponderance of the evidence.

Bio-Rad Lab'ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1363 (Fed. Cir. 2020) (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002) (“Festo II)

While the Federal Circuit "has often excluded licenses that are technologically or economically non-comparable," it "has also held, however, that the issue of comparability is often one of sufficiency of the evidence, not admissibility." Bio-Rad Lab 'ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1373-74 (Fed. Cir. 2020). Nevertheless, "a patentee [can] not rely on license agreements that [are] radically different from the hypothetical agreement under consideration to determine a reasonable royalty."

Mondis Tech. Ltd v. LG Elecs., Inc., 407 F.Supp.3d 482, 492 (D.N.J. 2019) (quoting Ericsson). Mondis cites the Federal Circuit's decisions in Vectura Ltd. v. GlaxoSmithKline LLC, 981 F.3d 1030, 1032 (Fed. Cir. 2020), and Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1375 (Fed. Cir. 2020), which it offers as support for its argument that distinguishes Bratic's present approach from the use of a “threshold theory, ” which this Court has previously rejected in this case. Mondis cites these two cases in support of the following general point:

The patentee also may rely on other types of agreements when they are “closely comparable, and the expert expressly addresses the differences between those negotiations and any hypothetical negotiations.” CXT Sys., Inc. v. Academy, Ltd., 2020 WL 481080, at *5 (E.D. Tex. 2020) (citing SSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1093 (Fed. Cir. 2014)). “Assessing the comparability of licenses requires ‘consideration of whether the license at issue involves comparable technology, is economically comparable, and arises under comparable circumstances as the hypothetical negotiation.'” HOYA Corp. v. Alcon Inc., 713 F.Supp.3d 291, 320 (N.D. Tex. 2024) (quoting Bio-Rad Lab'ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1373 (Fed. Cir. 2020)); see also Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1211- 12 (Fed. Cir. 2010)).