Petition for Writ of Certiorari — Sunoco Partners Marketing & Terminals L.P., Petitioner v. Powder Springs Logistics, LLC, et al.

Supreme Court briefJun 11, 2026

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No. ____

In the

Supreme Court of the United States

SUNOCO PARTNERS MARKETING &

TERMINALS L.P.,

Petitioner,

POWDER SPRINGS LOGISTICS, LLC,

MAGELLAN MIDSTREAM PARTNERS L.P.,

Respondents.

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

JOHN R. KEVILLE

MICHELLE C. REPLOGLE

MICHAEL C. KRILL

SHEPPARD, MULLIN

RICHTER & HAMPTON

LLP

845 Texas Avenue, 25th

Floor

Houston, Texas 77002

(713) 431-7100

MICHAEL H. MCGINLEY

Counsel of Record

MARTIN J. BLACK

JEFFREY S. EDWARDS

BRIAN A. KULP

CORY J. KOPICKI

DECHERT LLP

Cira Centre

2929 Arch Street

Philadelphia, PA 19104

(215) 994-2463

michael.mcginley@dechert.com

Counsel for Petitioner

June 11, 2026

QUESTIONS PRESENTED

The Patent Act provides that if a patent owner

proves infringement, courts “shall award the claimant

damages adequate to compensate for the

infringement.” 35 U.S.C. § 284. Damages are

“adequate to compensate for infringement when they

place the patent owner in as good a position as he

would have been in if the patent had not been

infringed.” WesternGeco LLC v. ION Geophysical

Corp., 585 U.S. 407, 417 (2018) (quotation marks

omitted). Despite that, the Federal Circuit does not

permit patentees to recover lost profits merely by

proving that the infringement caused them to lose

reasonably foreseeable sales. After proving that,

patentees also must subtract the hypothetical “value”

of non-patented services or things that are sold with

the patented technology from their lost profits claims.

This leaves them with less than the value of the sales.

Patent damages often require expert testimony. In

the Federal Circuit, courts must exclude experts if

they rely on facts contradicted by record evidence,

even if record evidence cuts both ways. The questions

presented are:

1. Whether the Federal Circuit’s standard for

recovery of lost profits damages violates 35 U.S.C.

§ 284.

2. Whether Rule 702 requires courts to exclude expert

testimony when record evidence is contrary to a

critical fact upon which the expert relied, as the

Federal Circuit holds, or whether juries should

determine whether facts upon which an expert

relied are true, as all other Circuits have held.

PARTIES TO THE PROCEEDING

Petitioner Sunoco Partners Marketing &

Terminals L.P. (parent company stock ticker symbol:

ET) was plaintiff in the district court and appellant

before the Federal Circuit. Respondents Powder

Springs Logistics, LLC, and Magellan Midstream

Partners L.P., were defendants in the district court

and appellees and cross-appellants before the Federal

Circuit.

iii

RULE 29.6 DISCLOSURE STATEMENT

Sunoco Partners Marketing & Terminals L.P. is a

wholly owned subsidiary of Energy Transfer L.P., a

publicly held corporation under the ticker symbol ET.

Energy Transfer L.P. does not have a parent

corporation, and no publicly held corporation owns ten

percent or more of its stock.

RELATED PROCEEDINGS

This case arises from and is related to the following

proceedings:

Sunoco Partners Marketing & Terminals L.P., v.

Powder Springs Logistics, LLC, Nos. 2023-1218, 20231274 (Fed. Cir.), judgment entered January 16, 2026;

Sunoco Partners Marketing & Terminals L.P., v.

Powder Springs Logistics, LLC, No. 1:17-cv-01390LPS-CJB (D. Del.), final judgment entered October 24,

2022.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ....................................... i

PARTIES TO THE PROCEEDING ........................... ii

RULE 29.6 DISCLOSURE STATEMENT ............... iii

RELATED PROCEEDINGS ..................................... iv

TABLE OF CONTENTS ............................................ v

TABLE OF APPENDICES ....................................... vii

TABLE OF AUTHORITIES ...................................... ix

PETITION FOR WRIT OF CERTIORARI ................ 1

OPINIONS AND ORDERS BELOW ......................... 5

JURISDICTION ......................................................... 5

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED ..................................... 5

STATEMENT OF THE CASE ................................... 5

A. Factual Background ....................................... 5

B. Procedural Background .................................. 8

REASONS FOR GRANTING THE PETITION....... 12

The Decision Below Is Profoundly Wrong......... 12

A. The Federal Circuit’s Apportionment

Requirement Violates the Patent Act ........... 13

1. Section 284 provides damages to fully

compensate for infringement ................... 13

2. The Federal Circuit’s apportionment

requirement conflicts with Section

284’s plain text, this Court’s precedents, and the statutory history .............. 14

B. The Federal Circuit’s Outlier View of Rule

702 Invades the Province of the Jury,

While Conflicting with the Text of Rule

702 and this Court’s Precedents.................... 22

1. The Seventh Amendment tasks juries

with resolving factual disputes ................ 22

2. When expert testimony is based on a

disputed set of facts, the jury must

resolve those factual disputes .................. 24

3. The Federal Circuit often excludes

expert testimony based on a court’s

own weighing of the evidence .................. 26

II. The Decision Below Exacerbates A Lopsided

Circuit Split ........................................................ 29

III. These Are Exceptionally Important Questions, And This Case Is An Ideal Vehicle To

Resolve Them ..................................................... 34

CONCLUSION ......................................................... 36

vii

TABLE OF APPENDICES

Page

APPENDIX A – OPINION OF THE UNITED

STATES COURT OF APPEALS FOR THE

FEDERAL CIRCUIT, FILED JANUARY 16,

2026 ........................................................................ 1a

APPENDIX B – MEMORANDUM ORDER IN

THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE, FILED

JUNE 9, 2020 ...................................................... 72a

APPENDIX C – REPORT AND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED MARCH 13, 2020 ............ 93a

APPENDIX D – REPORT AND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED FEBRUARY 27, 2020 .... 108a

APPENDIX E – REPORT AND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED FEBRUARY 19, 2020 .... 127a

APPENDIX F – REPORT AND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED JANUARY 16, 2020....... 141a

APPENDIX G — CONSTITUTIONAL PROVISION, STATUTE AND RULE INVOLVED ..... 167a

viii

APPENDIX H – REPORT AND RECOMMENDATION OF THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED FEBRUARY 6, 2020 ...... 169a

APPENDIX I – MEMORANDUM ORDER OF

THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE, FILED

JANUARY 3, 2020 ............................................. 204a

TABLE OF AUTHORITIES

Page(s)

Cases

Aro Mfg. Co. v. Convertible Top Replacement Co.,

377 U.S. 476 (1964) ..................................... 1, 14, 16

Bose Corp. v. JBL, Inc.,

274 F.3d 1354 (Fed. Cir. 2001) ............................. 29

Cabrice Corp. of Am. v. Am. Pats. Dev. Corp.,

283 U.S. 27 (1931) ................................................. 21

Cincinnati Car Co. v. N.Y. Rapid Trans. Co.,

66 F.2d 592 (2d Cir. 1933) ..................................... 16

Cooper Indus., Inc. v. Leatherman Tool Grp., Inc.,

532 U.S. 424 (2001) ............................................... 21

Daubert v. Merrell Dow Pharms., Inc.,

509 U.S. 579 (1993) ...................................... 3, 23-25

EcoFactor, Inc. v. Google LLC,

137 F.4th 1333 (Fed. Cir. 2025) ........... 4, 22, 24, 26,

28, 29, 32

Elec. Pipe Line, Inc. v. Fluid Sys. Inc.,

250 F.2d 697 (2d Cir. 1957) ............................. 18, 19

Elosu v. Middlefork Ranch Inc.,

26 F.4th 1017 (9th Cir. 2022) ................ 4, 25, 33, 34

Garretson v. Clark,

111 U.S. 120 (1884) ............................. 16, 17, 18, 21

Gasoline Prods. Co. v. Champlin Ref. Co.,

283 U.S. 494 (1931) ............................................... 23

Gen. Motors Corp. v. Devex Corp.,

461 U.S. 648 (1983) ......................... 1, 15, 16, 19, 21

Hughes Tool Co. v. G.W. Murphy Indus., Inc.,

491 F.2d 923 (5th Cir. 1973) ................................. 19

In re Scrap Metal Antitrust Litig.,

527 F.3d 517 (6th Cir. 2008) ................................. 25

Jacob v. City of New York,

315 U.S. 752 (1942) ............................................... 23

Leonard v. Stemtech Int’l Inc.,

834 F.3d 376 (3d Cir. 2016) ................................... 30

Marine Polymer Techs., Inc. v. HemCon, Inc.,

672 F.3d 1350 (Fed. Cir. 2012) ............................. 21

Milward v. Acuity Specialty Prods. Grp. Inc.,

639 F.3d 11 (1st Cir. 2011) .............................. 25, 31

Neder v. United States,

527 U.S. 1 (1999) ................................................... 26

Pipitone v. Biomatrix, Inc.,

2001 WL 568611 (E.D. La. May 22, 2001) ............ 32

Pipitone v. Biomatrix, Inc.,

288 F.3d 239 (5th Cir. 2002) ....................... 4, 30, 32

Quiet Tech. DC-8, Inc. v. Hurel-Dubois UK Ltd.,

326 F.3d 1333 (11th Cir. 2003) ................... 3, 24, 25

Rite-Hite Corp. v. Kelley Co.,

56 F.3d 1538 (Fed. Cir. 1995) ............................... 34

SEC v. Jarkesy,

603 U.S. 109 (2024) ..................................... 3, 22, 23

Smith v. Ford Motor Co.,

215 F.3d 713 (7th Cir. 2000) ................................. 30

Sommerville v. Union Carbide Corp.,

149 F.4th 408 (4th Cir. 2025)................................ 31

Synergetics, Inc. v. Hurst,

477 F.3d 949 (8th Cir. 2007) ................................. 30

Tennant v. Peoria & P.U. Ry. Co.,

321 U.S. 29 (1944) ................................................. 28

Tokai Corp. v. Easton Enters., Inc.,

632 F.3d 1358 (Fed. Cir. 2011) ............................. 29

Tome v. United States,

513 U.S. 150 (1995) ............................................... 24

United States v. Morgan,

45 F.4th 192 (D.C. Cir. 2022) ................................ 30

United States v. Napout,

963 F.3d 163 (2d Cir. 2020) ................................... 30

W.L. Gore & Assocs., Inc. v. Carlisle Corp.,

1978 WL 21430 (D. Del. May 17, 1978) .......... 16, 19

Werth v. Makita Elec. Works, Ltd.,

950 F.2d 643 (10th Cir. 1991) ............................... 31

WesternGeco LLC v. ION Geophysical Corp.,

585 U.S. 407 (2018) ..................................... 1, 14, 15

Yale Lock Mfg. Co. v. Sargent,

117 U.S. 536 (1886) ......................................... 17, 18

Constitutional Provisions

U.S. Const. amend. VII ........................................ 5, 23

Statutes and Rules

28 U.S.C. § 1254(1) ..................................................... 5

28 U.S.C. § 1295(a) ................................................... 35

35 U.S.C. § 284 ........................................ 1, 2, 5, 13-15

xii

Fed. R. Evid. 702 .......................... 1, 3-5, 9, 12, 22-26,

29, 30, 32-35

Other Authorities

3 William Blackstone, Commentaries on the

Laws of England (1768) ........................................ 22

4 William Blackstone, Commentaries on the

Laws of England (1769) ........................................ 23

7 Donald S. Chisum, Chisum on Patents, § 20.05

Lost Profits (2026) ................................................. 18

Ned L. Conley, An Economic Approach to Patent

Damages, 15 AIPLA Q.J. 354 (1987) ........ 16, 18, 35

Essay of a Democratic Federalist (Oct. 17, 1787),

in 3 The Complete Anti-Federalist 61 (Herbert

Storing ed. 1981) ................................................... 23

Letter from a Federal Farmer (Jan. 18, 1788), in

2 The Complete Anti-Federalist 321 (Herbert

Storing ed. 1981) ................................................... 23

Brent Rabowsky, Recovery of Lost Profits on

Unpatented Products in Patent Infringement

Cases, 70 S. Cal. L. Rev. 281 (1996) ..................... 35

PETITION FOR WRIT OF CERTIORARI

The Federal Circuit has badly misconstrued

Section 284 of the Patent Act to deny patent owners

the full value of their patents. And it has mangled

Federal Rule of Evidence 702 to invade the province of

the jury on key damages issues. The net result of those

distortions is that patent owners are often deprived of

adequate compensation for infringement of their

patents, while infringers are incentivized to usurp

that value with impunity. This case is a prime

example of both problems. The Court should grant

certiorari and reverse.

Section 284 is clear. It directs that when a patent

owner proves infringement, courts “shall award the

claimant damages adequate to compensate for the

infringement.” 35 U.S.C. § 284. As this Court has

repeatedly emphasized, the “overriding purpose” of

Section 284 is to “afford[] patent owners complete

compensation” for infringement. Gen. Motors Corp. v.

Devex Corp., 461 U.S. 648, 655 (1983). And this Court

has long heeded that congressional command. It has

held that the proper measure of damages is “what

would [the] Patent Holder[] have made” had “the

Infringer not infringed.” Aro Mfg. Co. v. Convertible

Top Replacement Co., 377 U.S. 476, 507 (1964)

(quotation marks omitted). So, if a practicing entity

can show that it would have made reasonably

foreseeable sales but for the infringement, then it is

entitled to recoup those lost profits if it can prove the

amount. That ensures that the patent owner receives

“complete

compensation

for

infringement.”

WesternGeco LLC v. ION Geophysical Corp., 585 U.S.

407, 414 (2018) (cleaned up).

The Federal Circuit’s apportionment jurisprudence

upends those principles and artificially depresses the

compensatory damages that patent owners can obtain.

Under the Federal Circuit’s framework, proof of

reasonably foreseeable sales is not enough to recover

lost profits from those sales. The patent owner must

also separate the hypothetical “value” of non-patented

services or things sold or provided with the patented

technology. Then it must subtract that “value” from its

lost profits claim. That is true even when those

services or things are needed to use the patented

technology and are provided for that reason.

That is out of step with the Patent Act’s command.

And this case demonstrates that approach’s distortive

effect. Petitioner Sunoco owned patents covering an

automated system for blending butane into gasoline,

which is a profitable endeavor. Sunoco licensed the

patented technology as part of Butane Supply

Agreements (“BSAs”). Through those agreements,

Sunoco provided customers with fully operational

turnkey blending facilities that blended butane into

gasoline.

Here,

the

record

overwhelmingly

demonstrates that, but for Respondent Magellan’s

infringement, Sunoco would have executed BSAs with

Magellan. Consequently, Sunoco sought to recover the

profits it lost from not executing those BSAs as

“damages adequate to compensate for the

infringement.” 35 U.S.C. § 284.

But the decision below rejected that straightforward application of the statute. Instead, it faulted

Sunoco for not parceling out damages tied to each

element of the BSA. Thus, rather than being

compensated for the hundreds of millions of profits it

lost as a result of the infringement, Sunoco received

only $12 million in compensatory damages.

Respondents were rewarded for their willful

infringement. And other counterparties naturally will

be incentivized to take the same unlawful route.

Worse yet, the decision below tied Sunoco’s hands

behind its back by excluding its damages expert based

on the Court’s view of the evidence. That freewheeling

approach has become commonplace in the Federal

Circuit. But Rule 702 does not grant courts the right

to invade the jury’s role as factfinder. On the contrary,

this Court has rejected calls for a strict interpretation

of Rule 702, stressing that judges must not

underestimate the “capabilities of the jury.” Daubert

v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595-96

(1993). The Framers shared the same view. They

ratified the Seventh Amendment to ensure that

litigants could rely on juries, not courts, to weigh the

evidence and resolve factual disputes.

All of the regional Circuits have eschewed the

Federal Circuit’s approach. Unlike the Federal

Circuit, they have consistently resisted temptations to

“supplant the adversary system or the role of the jury.”

Quiet Tech. DC-8, Inc. v. Hurel-Dubois UK Ltd., 326

F.3d 1333, 1341 (11th Cir. 2003) (quotation marks

omitted). That aligns with centuries of AngloAmerican law, from Blackstone to this Court,

stressing that “[t]he right to trial by jury is of such

importance and occupies so firm a place in our history

and jurisprudence that any seeming curtailment of

the right has always been and should be scrutinized

with the utmost care.” SEC v. Jarkesy, 603 U.S. 109,

121 (2024) (quotation marks omitted).

Yet, as the decision below showcases, the Federal

Circuit’s outlier interpretation of Rule 702 has created

a uniquely stringent regime for patent damages

experts, which calls upon judges “to resolve fact

disputes under the guise of evaluating whether

experts may testify at trial.” EcoFactor, Inc. v. Google

LLC, 137 F.4th 1333, 1354 (Fed. Cir. 2025) (en banc)

(Stark, J., concurring in part and dissenting in part).

Under the Federal Circuit’s distinct approach,

whenever “relevant evidence is contrary to a critical

fact upon which the expert relied, the district court

fails to fulfill its responsibility as gatekeeper by

allowing the expert to testify at trial.” Id. at 1346

(majority op.).

Here, the lower court “assumed a factfinding role

in its analysis” and improperly made “credibility

determinations that are reserved for the jury.” Elosu

v. Middlefork Ranch Inc., 26 F. 4th 1017, 1023-24 (9th

Cir. 2022). Because that is precisely what the Federal

Circuit’s interpretation of Rule 702 invites, it will

continue to happen until this Court intervenes. This

Court should step in now and explain that, as

“Daubert makes clear,” when predicate facts on which

an expert relies are in dispute and evidence cuts both

ways, the “fact-finder is entitled to hear” the expert

testimony and decide whether the “predicate facts on

which [the expert relies] are accurate.” Pipitone v.

Biomatrix, Inc., 288 F.3d 239, 250 (5th Cir. 2002).

That is how every other Circuit approaches the issue.

This Court should resolve that split and fix the

Federal Circuit’s broken view of Rule 702.

OPINIONS AND ORDERS BELOW

The Federal Circuit’s opinion is unreported but

available at 2026 WL 122544 and reproduced at

Pet.App.1a-71a. The district court’s opinion striking

Sunoco’s expert is unreported but available at 2020

WL 3060458 and reproduced at Pet.App.72a-92a.

JURISDICTION

The Federal Circuit entered judgment on January

16, 2026. The Chief Justice has granted applications

to extend the time for filing a petition for writ of

certiorari to June 11, 2026. This Court has jurisdiction

under 28 U.S.C. § 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

The following provisions are reproduced in the

appendix: U.S. Const. amend. VII; 35 U.S.C. § 284;

and Fed. R. Evid. 702.

STATEMENT OF THE CASE

A. Factual Background

In 2010, Sunoco purchased part of Texon’s business

and obtained patents covering automated systems and

methods for blending butane into gasoline. App.74567460.1 Butane is cheaper than gasoline, and each

gallon of blended butane creates an extra gallon of

gasoline for sale at the gasoline market price. App.169.

After purchasing the patents, Sunoco adopted

Texon’s method of licensing its patents as part of

Butane Supply Agreements (“BSAs”). App.7477-7479.

Under those agreements, Sunoco granted a limited

1 “App.__” cites are to the joint appendix in the Federal Circuit.

license to “practice and use” the patented technology,

which encompasses Sunoco’s full blending system.

App.25160. To ensure that customers could use the

patented blending system, Sunoco also provided

certain services under the BSAs. App.25142-25143.

These included building and operating the patented

blending systems at the licensees’ gasoline terminals,

supplying the needed butane, and maintaining the

patented blending systems. App.25143. In exchange,

Sunoco received a share in the profits that the licensee

made from selling the extra gasoline created using the

patented inventions. App.7498-7505. The typical

profit-sharing arrangement was either 40/60 or 50/50,

depending on which entity provided the construction

capital. Id.

Sunoco has never granted rights to these patents

other than through BSAs. App.7626. Since 2010,

Sunoco has executed over 60 BSAs and has earned

over $470 million in profits from patented blending at

third-party terminals. App.7477-7480; App.2532825335. It has earned $261 million more from using its

patented systems at its own terminals. App.25519.

Many of the companies that agreed to BSAs with

Sunoco are Sunoco’s direct competitors. App.7626.

Recognizing the financial benefits, they partnered

with Sunoco to obtain the right to use the patented

technology. App.8984. And agreeing to a BSA with

Sunoco was the only way to get that. App.7626. The

BSAs provided some other services to facilitate the use

of the patented technology, such as supplying butane.

App.25143. But no one agreed to a BSA because of

those other services. They wanted the patented

systems. App.22016.

Take Phillips 66 as an example. It built and

installed its own automated butane blending system

in Denver. App.7626. It soon realized that its system

might be infringing Sunoco’s patents. Id. Phillips 66

then agreed to multiple BSAs with Sunoco, even

though, aside from the right to use the patented

technology, it could have accessed internally other

services provided under the BSAs. Id. As a Sunoco

executive explained, the only reason companies like

this were with Sunoco was “because of the patents.”

App.22016.

But one company, after learning about the

patented technology, decided to disregard the strength

of the patents and do everything itself. Respondent

Magellan Midstream Partners L.P. (“Magellan”) first

learned about the patented technology decades ago

when Texon approached it and offered it a BSA.

App.22513. After one of Texon’s presentations,

Magellan recognized the “value in Texon’s . . . system”

but figured there would be “more value for Magellan

[in] keeping everything internal.” App.25500.

Magellan disregarded infringement concerns, which

were confirmed when the PTO rejected Magellan’s

patent claims as anticipated by Sunoco’s patents.

App.22249-22253. Since 2012, Magellan’s infringing

systems have blended over 600 million gallons,

yielding over $300 million in profits. App.2562925632.

In 2013, the Colonial Pipeline Company

(“Colonial”), operator of the largest refined products

pipeline in the world, sought an automated butane

blending system for its pipeline. App.1486-1487.

Sunoco and Magellan competed for the business, with

Sunoco proposing its patented technology and offering

a profit share consistent with its BSA arrangements.

App.7535-7536. Instead, Colonial went with

Magellan, and the two jointly formed Respondent

Powder Springs Logistics LLC (“Powder Springs”),

which began blending on the pipeline in 2017.

App.22095-22097. Since 2018, Powder Springs’s

infringement has resulted in it blending over 300

million gallons, generating over $100 million in

profits. App.24043-24044.

B. Procedural Background

Sunoco sued Respondents for patent infringement

and requested a damages award based on the profitsharing methodology embodied in the BSAs.

Pet.App.15a-16a. A jury ultimately found that the

relevant asserted claims covering the butane blending

technology were valid and willfully infringed. Id. But

it awarded a mere $12 million in damages, even

though Respondents had stolen hundreds of millions

of dollars in profits by using the infringing systems.

App.1-2; Pet.App.16a.

The damages amount was that small because the

jury never heard from Sunoco’s damages expert.

Pet.App.84a. So, it was forced to adopt the two cents

per gallon rate that Respondents’ expert offered as the

sole measure of damages. Pet.App.18a.

Unlike Respondent’s expert, Sunoco’s damages

expert relied on the BSAs. App.7362-7407. He offered

a straightforward causation argument and explained

that the BSAs provided the most accurate way to

measure

damages.

App.7476-7514.

Because

Magellan’s infringement directly and proximately

caused Sunoco to miss out on BSAs that it otherwise

would have executed with Magellan, damages should

be based on the BSAs. App.7490-7493. And because

there were dozens of BSAs executed with a plethora of

different companies that all adopted the same

standard profit-sharing arrangement, that profitsharing agreement should be used. App.7497-7506.

Based on the amount of blended gasoline Magellan

created using the infringing technology, and even

using the BSAs’ lower rate of 40% of net profits,

Sunoco would have received over $150 million from

BSAs with Magellan. App.7506-7514.

Sunoco’s expert further explained that the

patented technology drove demand for the BSAs.

App.8976-8985. Testimony from multiple Sunoco

executives confirmed that. For example, one executive

testified that Sunoco would not “have a [BSA] business

without [the] patents” and that “a hundred percent of

our income” comes from “those patents.” App.5238.

Another testified that the patents drove demand and

that Sunoco would not even have been “at the table”

without the patents. App.7626; App.8984. Other

evidence supported that testimony, such as

competitors like Phillips 66 agreeing to the BSAs

despite being able to do everything Sunoco did under

the BSAs—except legally use the patented technology.

App.7626; App. 8980-8982. Under binding law, if the

patented technology drove demand for the BSAs, all

agree that they could be used to reliably measure

damages.

But bound by the Federal Circuit’s artificial

apportionment

requirement

and

misguided

interpretation of Rule 702, the District Court excluded

the opinions of Sunoco’s damages expert. The

magistrate judge concluded that because the BSAs

contained more than just the patented technology,

Sunoco’s expert needed to separate the value of the

services provided under the BSAs, such as operating

the blending system, from the value of the patented

blending system. Pet.App.216a-225a. Although the

magistrate judge agreed that there would be no need

for that if the patents drove demand for the BSAs, he

decided that Sunoco had failed to “persuasively

demonstrate” that was the case. Pet.App.223a.

In response, Sunoco’s damages expert submitted a

supplemental report, further explaining in detail that

the patents drove demand for Sunoco’s BSAs.

App.8966-9001. For support, the report emphasized a

litany of the documentary evidence discussed above,

ranging from sworn testimony from Sunoco’s

executives to Sunoco’s competitors agreeing to BSAs

despite having no independent need for anything

provided under the BSAs aside from the patented

blending system. App.8976-8985. For example, one

Sunoco executive noted an agreement with Kinder

Morgan, a direct competitor, and explained that the

BSA with Kinder “really reflects the strength of the

patents.” App.8984-8985.

The district judge adopted the report and

recommendation of the magistrate judge and struck

the supplemental report of Sunoco’s expert.

Pet.App.84a-89a. Applying the Federal Circuit’s

misguided precedents, he stressed “the fact evidence”

undercutting the expert’s position. Pet.App.87a. As for

the expert’s view that the patented technology drove

demand for the BSAs, which was based on the

testimony of fact witnesses, the judge noted that

“binding precedent” of the Federal Circuit held that

this went to admissibility, not weight, and the judge

simply stated he was “not persuaded” by the expert’s

view. Pet.App.88a.

The Federal Circuit affirmed the lower court’s

exclusion of Sunoco’s damages expert. Pet.App.44a59a. It refused to allow Sunoco to rely on the profitsharing arrangements reflected in the BSAs, even

though Sunoco lost out on executing BSAs because of

the infringement. Pet.App.44a-48a. Instead, the

Federal Circuit imposed a stringent apportionment

requirement on Sunoco’s claim for lost profits.

According to the court, Sunoco’s expert should have

separated the “value” of the non-patented BSA

services, such as operating the system and delivering

butane, from the value of the patented technology.

Pet.App.46a-47a. And then he had to subtract that

“value” from Sunoco’s total lost profits claim. Id.

Sunoco’s expert had not done so to the court’s

satisfaction. Id. The Federal Circuit then reasoned

that because there was “record evidence showing that

the BSAs” contained more than just the patented

technology, an opinion “premised on using the total

profit-share from the . . . BSAs” must be unreliable

unless

some

recognized

exception

this

apportionment requirement applied, such as if the

patents drove demand for the BSAs. Pet.App.47a.

Ample documentary evidence supported that the

patents drove demand for the BSAs and the expert’s

conclusion that damages should be based on the profitsharing methodology in the BSAs. App.7497-7506;

App.8976-8985. Nevertheless, after weighing evidence

and discrediting purported “self-serving testimony

from Sunoco’s own witnesses,” the court simply

rejected Sunoco’s view of the facts. Pet.App.56a-57a.

And it said as much, noting that Sunoco’s expert’s

view of the facts was unpersuasive “when viewed

against” the competing evidence in the record. Id. It

found that the patents did not in fact drive demand.

Id. It also stressed, multiple times, the “strict

requirements” that must be met before allowing

expert testimony to reach the jury on the inherently

fact-bound question of whether a patent drove demand

for a product or service. Pet.App.54a; Pet.App.56a.

At bottom, the Federal Circuit never fully grappled

with Sunoco’s basic lost profits argument: that but for

the infringement, Sunoco would have executed BSAs

with the infringer, so lost profits damages should be

based on the BSAs—regardless of whether they were

worth more than the patent licenses. And the Federal

Circuit compounded that error by refusing to allow

expert testimony that would have allowed Sunoco to

recover its lost profits even under the Federal Circuit’s

flawed framework. As a result, the infringers netted

hundreds of millions of dollars through years of willful

infringement, while Sunoco received a mere $12

million dollars after years of litigation.

REASONS FOR GRANTING THE PETITION

I. The Decision Below Is Profoundly Wrong.

The decision below is egregiously wrong in

multiple ways. The Federal Circuit’s lost profits

apportionment requirement conflicts with the Patent

Act’s text, statutory history, and this Court’s

precedents. And its interpretation of Rule 702 conflicts

with this Court’s precedents and the law of every other

Circuit. To restore uniformity in the law and to uphold

the patent and expert witness regimes that Congress

enacted, this Court should intervene.

A. The Federal Circuit’s Apportionment

Requirement Violates the Patent Act.

The decision below epitomizes what is wrong with

the Federal Circuit’s current lost profits framework.

Section 284 of the Patent Act aims to put patent

holders in as good a place as they would have been in

had infringement not occurred. The plain text and this

Court’s cases make that clear. Despite that, proving

that infringement directly caused lost profits is not

enough for the Federal Circuit.

Instead, the Federal Circuit has developed a rule—

untethered from Section 284’s text—that injects an

arbitrary apportionment requirement into the lost

profits framework. It requires practicing entities

seeking lost profits to subtract the hypothetical

“value” of non-patented services or things that are sold

or provided with the product containing the patented

technology. That leaves patent owners with less than

they would have earned had the infringement not

occurred, conflicting with the statute’s text and

frustrating the design of Section 284.

1. Section 284 provides damages to fully

compensate for infringement.

Section 284 of the Patent Act provides that a court

“shall award the claimant damages adequate to

compensate for the infringement, but in no event less

than a reasonable royalty for the use made of the

invention by the infringer.” 35 U.S.C. § 284 (emphasis

added). This “provides a general damages remedy for

the various types of patent infringement.”

WesternGeco LLC, 585 U.S. at 414. And “[a]s this

Court has explained, the overriding purpose of § 284

is to affor[d] patent owners complete compensation for

infringements.” Id. (quotation marks omitted).

“The question posed by the statute is how much has

the patent holder suffered by the infringement.” Id.

(cleaned up). Damages are “adequate to compensate

for infringement when they place the patent owner in

as good a position as he would have been in if the

patent had not been infringed.” Id. at 417 (cleaned up).

In other words, the court must ask: “had the Infringer

not infringed, what would [the] Patent Holder . . . have

made?” Aro Mfg., 377 U.S. at 507.

Simply put, a “patent owner is entitled to recover

the difference between its pecuniary condition after

the infringement, and what its condition would have

been if the infringement had not occurred.”

WesternGeco LLC, 585 U.S. at 417 (cleaned up). “This

recovery can include lost profits.” Id. And a practicing

entity may thus recover all reasonably foreseeable lost

profits if they result from the infringement. That is the

only showing required under the “plain text of the

Patent Act.” Id. at 417.

2. The Federal Circuit’s apportionment

requirement conflicts with Section

284’s plain text, this Court’s precedents,

and the statutory history.

The Federal Circuit has refused to follow the plain

text of Section 284 and this Court’s interpretation of

it. It has instead imposed requirements on top of those

that Congress prescribed. Beyond proof of “how much

[the patent owner] would have made if [the defendant]

had not infringed,” Aro Mfg., 377 U.S. at 507, plaintiffs

must also determine the hypothetical “value” of nonpatented services or things sold or provided with the

product containing the patented technology. Then

they must subtract that “value” from their total lost

profits claim—regardless of whether the patented

technology is ever licensed in isolation.

The problem with that approach is that it leaves

patent owners worse off than where they would have

been had infringement not occurred. It does not make

them whole through “damages adequate to

compensate for the infringement.” 35 U.S.C. § 284.

After all, if there were no infringement, the patent

owners would have recouped all profits made from

selling the product containing the patented

technology. But under the Federal Circuit’s approach,

the patent owners recoup only a portion of that

amount. This artificial apportionment requirement

thus prevents “plac[ing] the patent owner in as good a

position as he would have been in if the patent had not

been infringed.” WesternGeco LLC, 585 U.S. at 417

(quotation marks omitted). That does not align with

the statute, this Court’s case law, basic principles of

tort law, or common sense.

Nor does it align with the history of Section 284.

Before 1946, the Patent Act permitted patentees to

sue both for “disgorge[ment]” of the infringer’s profits

and the patentee’s own lost profits and other

“damages.” Gen. Motors Corp., 461 U.S. at 654. “A

patent owner’s ability to recover the infringer’s profits

reflected the notion that he should be able to force the

infringer to disgorge the fruits of the infringement

even if it caused him no injury.” Id. Thus, in an action

for disgorgement, only those “profits of the infringer”

that were “properly attributable to the patented

invention justly belonged to the patentee.” W.L. Gore

& Assocs., Inc. v. Carlisle Corp., 1978 WL 21430, at

*11 (D. Del. May 17, 1978). This concept of

apportionment was “developed as [a] means for

determining what portion of the infringer’s profits

should be paid to the patent owner.” Ned L. Conley,

An Economic Approach to Patent Damages, 15 AIPLA

Q.J. 354, 371, 373 (1987) (citing Garretson v. Clark,

111 U.S. 120, 121 (1884)).

But “[t]he difficulty of allocating profits in such

cases [had] plagued the court[s] from the outset” and

ultimately asked an “unanswerable” question.

Cincinnati Car Co. v. N.Y. Rapid Trans. Co., 66 F.2d

592, 593 (2d Cir. 1933). So, Congress abolished the

disgorgement remedy in 1946 and adopted the current

general damages provision “to ensure that the patent

owner would in fact receive full compensation.” Gen.

Motors Corp., 461 U.S. at 654; see Aro Mfg., 377 U.S.

at 505-06 (explaining that the amendment sought “to

make the basis of recovery in patent-infringement

suits general damages, that is, any damage the

complainant can prove”).

Although Congress thought it had done away with

the “unanswerable” apportionment question, once the

Federal Circuit seized exclusive jurisdiction over the

field in 1982, it began asking the very same question

anyway. On many occasions, the Federal Circuit has

cited Garretson v. Clark as justifying a new set of

jerry-rigged apportionment rules. 111 U.S. 120

(1884).2 In doing so, it walked right back into the

apportionment morass from which Congress had

extricated the patent bar.

Garretson did not even interpret the current text of

Section 284. And it cannot support the weight the

Federal Circuit wants it to bear. In Garretson, the

patentee sold mops, and the patent at issue covered

the “clamp of a mop-head.” Id. at 121. The patentee

brought an action seeking disgorgement and damages.

Id. He could not show that infringement of the clamp

patent caused the loss of any mop sales, and so there

was a failure of proof on causation. Id. The Court then

said that the patentee “must in every case give

evidence tending to separate or apportion the

defendant’s profits and the patentee’s damages

between the patented feature and the unpatented

features.” Id. In the context of lost profits, that simply

means that the patentee must establish that the

infringement caused his damages. Nothing more,

nothing less.3

2 This Court has not cited Garretson, which is a thinly reasoned

one-page opinion, since 1940.

3 Yale Lock Manufacturing Co. v. Sargent, 117 U.S. 536 (1886),

arose in this same context. Because the plaintiff could not prove

that it would have sold more locks but for the infringement, the

special master prevented recovery of lost profits. Damages were

confined to the “reduction of price on the locks which the plaintiff

sold, caused by the infringement.” Id. at 552. Yale Lock is thus a

price erosion case, not a typical lost profits case involving lost

sales. Regardless, the Court embraced a standard but for test,

explaining that the “proper measure of damages” must be

calculated by examining “the difference between [the patent

holder’s] pecuniary condition after the infringement, and what

When read with the historical background and in

context, it is apparent that Garretson, a case bound up

with disgorgement issues, did not create a rigid

apportionment requirement for all lost profits cases.

“Whatever purposes apportionment served with

respect to equitable recovery of infringer profits, it

clearly [does] not apply with equal force to a damage

recovery where the basic theory [is] one of making the

patent owner whole for all losses covered by the

infringer’s wrongdoing.” 7 Donald S. Chisum, Chisum

on Patents, § 20.05 Lost Profits (2026); see also Conley,

supra, at 373 (explaining that apportionment

“originated with application to an infringer’s profits as

the measure of damages” and “has no relevance to the

measure of damages based on lost profits”).

Before the Federal Circuit was created, decisions

from the regional Circuits and district courts

recognized all this and rejected the argument that

apportionment was required to recover lost profits.

Take the Second Circuit’s decision in Elec. Pipe Line,

Inc. v. Fluid Sys. Inc., 250 F.2d 697 (2d Cir. 1957),

which is analogous to the facts here. Fluid Systems

had developed a patented system for “reducing the

viscosity of heavy fuel oils.” Id. at 698. The infringing

system caused Fluid Systems to miss out on certain

contracts to install their system. Id. at 699. The

infringer argued that Fluid Systems “must apportion

profits resulting from the sale of its system to exclude

his condition would have been if the infringement had not

occurred.” Id. at 552-53. The special master concluded that onehalf of the total reduction in price could be attributed to the

infringement and not “other causes which gave to the defendant

an advantage in selling its locks.” Id.

revenues derived from the unpatented component

parts.” Id. at 700. Despite no apportionment, the lower

court awarded Fluid Systems lost profits on those

contracts, which included “profits on lost sales of

unpatented component parts of the system, such as

immersion heaters and other accessories.” Id. at 699.

The Second Circuit affirmed. Id. at 700. It reasoned

that “but for Electric Pipe’s infringement, Fluid

Systems would have made all these installations,” so

“loss of profit on [them] was the correct standard of

damages.” Id. at 699. And it rejected any

apportionment requirement. “[T]he inclusion of profits

from the sale of all the components seem[ed] proper,

because Fluid Systems’ revenues would have reflected

these sales had it not been for Electric Pipe’s

infringement.” Id. at 700. Fluid Systems “was under

no duty to apportion profits, and the component parts

property were included in the computation of lost

profits.” Id.; see also Hughes Tool Co. v. G.W. Murphy

Indus., Inc., 491 F.2d 923, 928 (5th Cir. 1973)

(“Whether or not the article would have some

commercial usefulness without the patented feature is

irrelevant where it is clear that the patentee would

have made the sale of the article had not the defendant

infringed.”). Simply put, “[o]nce the fact that sales

have been lost has been proven, there is no occasion

for the application of apportionment.” W.L. Gore, 1978

WL 21430, at *10.

This case exemplifies the problems with the

Federal Circuit’s approach, which fundamentally fails

to “make the patent owner whole.” Gen. Motors Corp.,

648 U.S. at 656. Sunoco provided a valuable patented

blending system. To facilitate the use of that

technology, Sunoco provides other services that are

intertwined with the patented blending system. That

arrangement was embodied in the BSAs, and the only

way Sunoco monetized its patented technology was

through the BSAs.

The

analysis

here

should

have

been

straightforward. Because Magellan’s infringement

caused Sunoco to miss out on BSAs that it otherwise

would have executed with Magellan, damages should

be based on the BSAs. And because there were dozens

of BSAs executed with many similarly-situated

companies that all adopted the same profit-sharing

arrangements, that profit-sharing agreement should

have been used. Given the opportunity to present this

claim, Sunoco would have established that it lost more

than $150 million because of Magellan’s infringement.

Instead of permitting that, the Federal Circuit

needlessly demanded that Sunoco strip the “value” of

the non-patented BSA services from the value of the

patented blending system. Even setting aside that

these services have functionally no independent value,

that logic makes no sense.

The infringement caused Sunoco to lose BSAs.

Sunoco thus cannot be made “whole” unless it receives

what it would have made under the BSAs. And none

of that turns on the hypothetical value of the BSA

services that fall outside the literal scope of the

asserted claims. As a result, the arbitrary

apportionment rule prevented Sunoco from receiving

“full compensation for the infringement,” thereby

frustrating the “language of §

“fundamental purpose.” Id. at 654.4

284”

and

its

Moreover, even under the Federal Circuit’s flawed

framework, Sunoco still should have been able to

recover lost profits here because of the entire market

value rule. All agree that apportionment is

unnecessary when the patents drive demand for a

product or service. In such cases, damages may be

based on the entire value of the product or service,

regardless of whether it encompasses more than just

the patents. See Marine Polymer Techs., Inc. v.

HemCon, Inc., 672 F.3d 1350, 1360 (Fed. Cir. 2012).

Sunoco’s blending systems were no incremental

improvement like the mop-head clamp in Garretson,

which had barely altered a household product that

“had been in use time out of mind.” 111 U.S. at 121.

Sunoco’s patented technology provided a method for

implementing a turnkey system for blending butane

into gasoline. See Pet.App.9a-11a. Sunoco never

offered, and no one has ever purchased, any of the BSA

services from Sunoco unless they also received the

patented blending system. The record more than

supports that Sunoco’s patented blending system

drove all demand for the BSAs. But, after distorting

Section 284, the Federal Circuit compounded that

The Federal Circuit’s approach also conflicts with basic

principles of tort law. Patent infringement is a tort. Carbrice

Corp. of Am. v. Am. Pats. Dev. Corp., 283 U.S. 27, 33 (1931).

Under ordinary tort principles, injured parties receive

compensatory damages sufficient to put them in the same

position they would have occupied had the injury never occurred.

See, e.g., Cooper Indus., Inc. v. Leatherman Tool Grp., Inc., 532

U.S. 424, 432 (2001).

initial error and refused to let the jury address the key

factual question of whether the patents drove demand

for the BSAs.

B. The Federal Circuit’s Outlier View of Rule

702 Invades the Province of the Jury,

While Conflicting with the Text of Rule 702

and this Court’s Precedents.

The decision below also exemplifies the Federal

Circuit’s uniquely stringent interpretation of Rule

702. That outlier approach has created a special

regime for patent damages experts that invites lower

courts to resolve fact disputes and invade the province

of the jury. Under the Federal Circuit’s rule, whenever

the court believes “evidence is contrary to a critical

fact upon which the expert relied, the district court

fails to fulfill its responsibility as gatekeeper by

allowing the expert to testify at trial.” EcoFactor, Inc.,

137 F.4th at 1346; see also Pet.App.47a (affirming

exclusion of Sunoco’s damages expert because his

opinion was “premised on using the total profit-share”

from the BSAs and there was “record evidence

showing that the BSAs” were worth more than the

patents).

The

Federal

Circuit’s

approach

fundamentally distorts the division of labor between

judge and jury. And it conflicts with every other

Circuit’s approach to the question.

1. The Seventh Amendment tasks juries

with resolving factual disputes.

The right to trial by a jury of one’s peers was

“prized by the American colonists.” Jarkesy, 603 U.S.

at 121. By the Founding, it had long been hailed as

“the glory of the English law.” 3 William Blackstone,

Commentaries on the Laws of England 379 (1768).

And it served as a vital check on judicial overreach.

The Framers knew that making judges the “masters

as to facts” in civil disputes would at best result in

“arbitrary proceedings,” Letter from a Federal Farmer

(Jan. 18, 1788), in 2 The Complete Anti-Federalist

321-22 (Herbert Storing ed. 1981), and at worst in

“lordly court[s] of justice,” always eager to displace the

wisdom and judgment of the common man, Essay of a

Democratic Federalist (Oct. 17, 1787), in 3 The

Complete Anti-Federalist 61.

To avoid that, the Framers adopted the Seventh

Amendment, guaranteeing that in “[s]uits at common

law . . . the right of trial by jury shall be preserved.”

U.S. Const. amend. VII. This right requires “issues of

fact” to “be submitted for determination . . . by the

jury.” Gasoline Prods. Co. v. Champlin Ref. Co., 283

U.S. 494, 498 (1931). That role for the jury is

“fundamental and sacred to the citizen,” and it must

be “guarded by the courts.” Jacob v. City of New York,

315 U.S. 752, 753 (1942). As Blackstone warned long

ago, intrusions on the jury right, “though begun in

trifles,” tend to “gradually increase and spread.” 4

William Blackstone, Commentaries on the Laws of

England 344 (1769). And so “every encroachment

upon it” must be “watched with great jealousy.”

Jarkesy, 603 U.S. at 122 (quotation marks omitted).

In Daubert, this Court adhered to those principles

and rejected a restrictive interpretation of Rule 702. It

swatted aside the argument that a strict approach was

needed to prevent “befuddled juries” from being

constantly “confounded” by complex expert testimony.

Daubert, 509 U.S. 595-96. That view was “overly

pessimistic about the capabilities of the jury and of the

adversary system generally.” Id. at 596. “Vigorous

cross-examination, presentation of contrary evidence,

and careful instruction on the burden of proof” are the

“conventional devices” to hash out an expert’s

perceived weaknesses, not “wholesale exclusion.” Id.

Daubert made clear that Rule 702 provides no

license for judges to “supplant the adversary system

or the role of the jury.” Quiet Tech., F.3d at 1341

(quotation marks omitted). Yet the Federal Circuit’s

approach, which “invit[es] district judges . . . to resolve

fact disputes under the guise of evaluating whether

experts may testify at trial,” does precisely that.

EcoFactor, Inc., 137 F.4th at 1354 (Stark, J.,

concurring in part and dissenting in part). That

cannot be squared with the Seventh Amendment,

Daubert, or Rule 702.

2. When expert testimony is based on a

disputed set of facts, the jury must

resolve those factual disputes.

Under Rule 702 and Daubert, expert testimony is

admissible where the proponent shows that the

testimony is helpful, “reliable,” and “based on

sufficient facts or data.” Fed. R. Evid. 702. Nothing in

that language allows a court to exclude expert

testimony because it is predicated on facts that—while

“sufficient” to support the expert’s opinion—are

disputed. Those factual disputes must be resolved by

the jury, not by judges.

The Advisory Committee notes, which are accorded

great weight in interpreting the federal rules, see, e.g.,

Tome v. United States, 513 U.S. 150, 160 (1995),

reinforce that understanding. They state that Rule

702 is “not intended to authorize a trial court to

exclude an expert’s testimony on the ground that the

court believes one version of the facts and not the

other.” Fed. R. Evid. 702 advisory committee’s note to

2000 amendment. Where expert opinions are “based

on contested sets of facts,” the underlying factual

disputes must be resolved by the jury at trial, not by

the court at the threshold. See Fed. R. Evid. 702

advisory committee’s note to 2023 amendment.

This Court’s precedents and a litany of decisions

from the regional Circuits clearly articulate that

understanding. See Daubert, 509 U.S. at 596. “When

the factual underpinning of an expert’s opinion is

weak, it is a matter affecting the weight and

credibility of the testimony—a question to be resolved

by the jury.” Milward v. Acuity Specialty Prods. Grp.

Inc., 639 F.3d 11, 22 (1st Cir. 2011) (quotation marks

omitted). “[M]ere weaknesses in the factual basis of an

expert’s opinion . . . bear on the weight of the evidence

rather than on its admissibility.” In re Scrap Metal

Antitrust Litig., 527 F.3d 517, 530 (6th Cir. 2008)

(quotation marks omitted). That is because it is “not

the role of [courts] to make ultimate conclusions as to

the persuasiveness of the proffered evidence.” Quiet

Tech., 326 F.3d at 1341. Nor is the court’s gatekeeping

role intended to disturb the role of the jury. See Elosu,

26 F.4th at 1026.

In short, courts have long understood and adhered

to the basic principle that issues with the factual

predicates of expert testimony go to weight, not

admissibility. The proper inquiry under Rule 702 is

not whether the district court agrees with the expert’s

conclusions. Nor is it whether the court agrees with

the facts underlying those conclusions. It is simply

whether a reasonable mind considering the relevant

facts and data could reach the expert’s conclusions.

Once that threshold is cleared, the court’s gatekeeping

role is complete.

3. The Federal Circuit often excludes

expert testimony based on a court’s

own weighing of the evidence.

But one court—the Federal Circuit—has become

“so enamoured of judges,” Neder v. United States, 527

U.S. 1, 32 (1999) (Scalia, J., concurring in part and

dissenting in part), and so skeptical of jurors, that it

has developed its own unique interpretation of Rule

702. That view “invit[es] district judges . . . to resolve

fact disputes under the guise of evaluating whether

experts may testify at trial.” EcoFactor, Inc., 137 F.

4th at 1354 (Stark, J., concurring in part and

dissenting in part). Under the Federal Circuit’s

distinct approach, expert testimony must be excluded

when record “evidence is contrary to a critical fact

upon which the expert relied.” Id. at 1346 (majority

op.).

The decision below stands as an exemplar of this

troubling trend in the Federal Circuit. That court has

“opened the door to turning Rule 702 into a vehicle for

judicial resolution of fact disputes.” Id. at 1355 (Stark,

J., concurring in part and dissenting in part). As

explained above, the decision below started from the

incorrect premise that Sunoco’s expert should have

separated the value of the other services provided

under the BSAs from the value of the patented

technology, unless an exception recognized by the

Federal Circuit applied.

But Sunoco’s expert had offered a straightforward

basis, supported by the evidence, for calculating lost

profits based on the BSAs, without apportionment. In

any event, Sunoco’s expert also relied on the entire

market value rule and explained that the patented

technology drove demand for the BSAs.

Most notably, Sunoco’s damages expert relied on

deposition and trial testimony from multiple Sunoco

executives that directly supported his view. For

example, one Sunoco executive had testified that

Sunoco would not “have a [BSA] business without

[the] patents” and that “a hundred percent of our

income . . . is related to those patents.” App.5238;

App.8984. He noted that Sunoco wouldn’t even have

“the opportunity to negotiate partnerships . . . without

the patent.” App.8985. Likewise, another Sunoco

executive testified that the patents drove demand and

that Sunoco’s customers did not need anything offered

by the BSAs aside from the patents. App.22016.

Sunoco would not even have been “at the table”

without the patents. App.7626; App.8984.

Real-world evidence supported that testimony and

the opinion of Sunoco’s damages expert too. Phillips 66

developed and installed its own automated butane

blending system in Denver. But, when it realized that

its system was infringing Sunoco’s valid patents,

Phillips 66 executed BSAs with Sunoco covering the

Denver terminal and several others. This supports the

obvious point: companies executed BSAs because of

the patents—which is what Sunoco’s expert

concluded.

None of that was sufficient to satisfy the Federal

Circuit’s “[s]trict requirements.” Pet.App.56a. After

weighing the evidence and discrediting purported

“self-serving

testimony

from

Sunoco’s

own

witnesses,” id., the Federal Circuit decided that the

patents did not drive demand. The decision below

never even attempted to explain why large oil

companies agreed to BSAs despite being able to

construct and operate their own versions of Sunoco’s

patented blending systems. At bottom, the Federal

Circuit found Sunoco’s view of the facts unpersuasive

“when viewed against” the competing evidence in the

record and adopted the competing view. Pet.App.56a57a.

Once again, the Federal Circuit’s “outright

dismissal of . . . testimony lays bare that [it] chose[] to

believe one version of the facts over the other.”

EcoFactor, Inc, 137 F.4th at 1351 (Reyna, J.,

concurring in part and dissenting in part). That

invades the province of the jury, which has long been

tasked with appraising credibility and determining

the weight given to testimony. See, e.g., Tennant v.

Peoria & P.U. Ry. Co., 321 U.S. 29, 35 (1944).

Unfortunately, this case is not unique in the Federal

Circuit. It is only the latest example of a misguided

trend that has taken hold in the Federal Circuit,

which has developed a penchant for doing its own

factfinding and making credibility determinations.

See, e.g., EcoFactor, Inc. 137 F.4th at 1344 (reducing

executive’s testimony to “an unsupported assertion

from an interested party” and excluding expert

opinion that relied upon it).

II.

The Decision Below

Lopsided Circuit Split.

Exacerbates

Although only the Federal Circuit deals with

patent damages experts, whether proffered evidence

should be admitted in a trial is not an issue unique to

patent law. See Bose Corp. v. JBL, Inc., 274 F.3d 1354,

1360 (Fed. Cir. 2001). And the Federal Circuit stands

alone in its repeated refusals to heed a key principle

of Rule 702—that expert testimony may be, and

frequently will be, based on hotly disputed facts.

Solely within the Federal Circuit, the court is

tasked with weighing the evidence and determining

when certain record “evidence is contrary to a critical

fact upon which the expert relied.” EcoFactor, Inc., 137

F.4th at 1346. But because the adversarial system will

almost always produce some contrary evidence

detracting from important facts upon which an expert

relies, this cannot be a correct interpretation of Rule

702. As a result, in cases governed by Federal Circuit

precedent, the court often resolves factual disputes to

exclude experts on critical damages issues.

That is not the rule outside the Federal Circuit.

Indeed, the panel below was duty bound to apply the

law of the Third Circuit on evidentiary issues. See

Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358,

1364 (Fed. Cir. 2011). After paying lip service to that

requirement, it followed the Federal Circuit’s unique

view instead. The Third Circuit has not adopted any

rule instructing district judges to wholesale exclude

expert testimony whenever record “evidence is

contrary to a critical fact” on which the expert relied.

Instead, the Third Circuit will reverse district judges

only if they “admit expert testimony which is based on

assumptions lacking any factual foundation in the

record.” Leonard v. Stemtech Int’l Inc., 834 F.3d 376,

391 (3d Cir. 2016) (quotation marks omitted).

The Federal Circuit’s rule is incompatible with the

Third’s Circuit’s interpretation of Rule 702. In fact, an

advisory committee note to Rule 702 cites a Third

Circuit case for the proposition that, when expert

testimony is based on “contested sets of facts,” the jury

should “decid[e] the disputed facts.” See Fed. R. Evid.

702 advisory committee’s note to 2023 amendment.

Unlike the Federal Circuit, the regional Circuits

manage to faithfully apply Rule 702 and Daubert

without usurping the jury’s role in many complicated

contexts. See, e.g., Pipitone, 288 F.3d at 250;

Synergetics, Inc. v. Hurst, 477 F.3d 949, 955 (8th Cir.

2007) (explaining the “general rule” that the “factual

basis of an expert opinion goes to the credibility of the

testimony, not the admissibility, and it is up to the

opposing party to examine the factual basis for the

opinion in cross-examination”); Smith v. Ford Motor

Co., 215 F.3d 713, 718 (7th Cir. 2000) (citing Daubert

for the proposition that the “soundness of the factual

underpinnings of the expert’s analysis and the

correctness of the expert’s conclusions based on that

analysis are factual matters to be determined by the

trier of fact”); United States v. Morgan, 45 F.4th 192,

201 (D.C. Cir. 2022) (stressing that concerns about an

expert’s factual assumption “should be considered by

the jury in assessing the weight” of the expert’s

testimony, “not by the court in its threshold

admissibility determination”); United States v.

Napout, 963 F.3d 163, 188 (2d Cir. 2020) (noting that

most “contentions that [an expert’s] assumptions are

unfounded go to the weight, not admissibility” of the

opinion); Sommerville v. Union Carbide Corp., 149 F.

4th 408, 423 (4th Cir. 2025) (“[Q]uestions regarding

the factual underpinnings of the [expert’s] opinion

affect the weight and credibility of the witness’s

assessment, not its admissibility.”); Werth v. Makita

Elec. Works, Ltd., 950 F.2d 643, 654 (10th Cir. 1991)

(“[S]ufficiency of the factual basis to support [the

expert’s] opinion go[es] to its weight, and not to its

admissibility.”). The list could go on.5

The Fifth Circuit’s opinion in Pipitone is

illustrative of the conflict. In Pipitone, the critical

issue was whether an expert should be permitted to

testify that use of a manufacturer’s syringe caused the

plaintiff to develop a salmonella infection in his knee.

288 F.3d at 241. Neither side disputed that if the

syringe was in fact contaminated, the knee would

become infected. Id. at 246. But the manufacturer took

issue with the expert’s factual premise that the

“syringe was the source of the contamination.” Id. at

247.

The district court excluded the expert, believing

that his conclusions were “too speculative” and

ultimately “unsupported” because evidence in the

5 Of course, in some instances courts must exclude experts for

failing to establish a sufficient factual foundation for their

opinion. When an expert opinion lacks factual foundation,

exclusion is proper. But “[t]here is an important difference

between what is unreliable support and what a trier of fact may

conclude is insufficient support for an expert’s conclusion.”

Milward, 639 F.3d at 22.

record undermined his key factual premise that the

syringe was the source of the contamination. Pipitone

v. Biomatrix, Inc. 2001 WL 568611, at *3-4 (E.D. La.

May 22, 2001).

The Fifth Circuit reversed. It explained that “the

answer to the critical causation question will depend

on which set of predicate facts the fact-finder believes:

the plaintiffs’ contention that the content of the

[syringe] was contaminated or the defendant’s that it

was not.” Pipitone, 288 F.3d at 249. Stressing the

Advisory Committee notes to Rule 702, the Fifth

Circuit held that, as “Daubert makes clear,” in

situations like this one where a key predicate fact is in

dispute and some evidence cuts both ways, the “factfinder is entitled to hear” the expert testimony and

“decide whether the predicate facts on which [the

expert relied] are accurate.” Id. at 250.

Here, like Pipitone, the dispute is not actually

about the expert’s methodology or whether a sufficient

factual basis supports the opinion. Rather, the dispute

centers on whether a key predicate fact is true:

whether the patents are the key drivers of demand for

the BSAs. If that is true, then all agree that using the

BSAs to measure damages is appropriate. In essence,

as in Pipitone, this is a case where everything turns on

“which set of predicate facts the fact-finder believes.”

Id. at 249. But just like the district court that the Fifth

Circuit reversed, the Federal Circuit never let the

factfinder fulfill its role. Instead, the panel below

offered an “overly stringent” interpretation of Rule

702, id. at 250, turning the “court’s role as gatekeeper

[into] a replacement for the adversary system,”

EcoFactor, Inc., 137 F. 4th at 1350 (Stark, J.,

concurring in part and dissenting in part).

The Ninth Circuit’s decision in Elosu also squarely

conflicts with the Federal Circuit’s approach. That

“case concern[ed] the scope of a district court’s

discretion to exclude expert testimony that it deems

unsupported by the record.” Elosu, 26 F.4th at 1023.

The district court reasoned that the expert had “relied

too heavily” on “interested testimony” and that

positions in the expert report “conflicted with the

testimony of eyewitnesses.” Id. at 1026-28. The

district court excluded the expert, holding the opinion

to be “speculative and unsupported by the evidence.”

Id. at 1026.

The Ninth Circuit reversed, holding that a “court

cannot exclude expert testimony for lacking ‘sufficient

facts or data’ while openly disregarding the foundation

of the expert’s opinion.” Id. at 1027. Rule 702 “requires

foundation, not corroboration.” Id. at 1025. The Ninth

Circuit explained that it “may well be that [the expert]

relied too heavily on an interested party,” but that

“goe[s] to the weight of the testimony and its

credibility, not its admissibility.” Id. at 1028

(quotation marks omitted). Nor should a court “fixat[e]

on evidence not offered in support of [an expert’s

opinion] while simultaneously ignoring the evidence

advanced on its behalf.” Id. at 1027 (quotation marks

omitted).

The decision below made both errors. It criticized

Sunoco’s damages expert for relying on “self-serving

testimony from Sunoco’s own witnesses,” and it

ignored the real-world evidence supporting that

testimony and the expert’s opinion. Pet.App.56a.

Just like the district court that the Ninth Circuit

reversed, the decision below expressly stated that it

found Sunoco’s view of the facts unpersuasive “when

viewed against” competing evidence in the record.

Pet.App.56a-57a. It “assumed a factfinding role in its

analysis” and made “credibility determinations that

are reserved for the jury.” Elosu, 26 F.4th at 1023-25.

It ignored that neither Rule 702 nor Daubert

“license[s] a court to engage in freeform factfinding, to

select between competing versions of the evidence, or

to determine the veracity of the expert’s conclusions.”

Id. at 1026. Instead, “[t]hat is for the litigants to

argue, and for the jury to decide.” Id.

The regional Circuits respect those principles. The

Federal Circuit does not. The Federal Circuit’s

approach results in “constraining damages experts in

a manner not called for by either Rule 702 or Daubert.”

EcoFactor, Inc., 137 F.4th at 1354. (Stark J.,

concurring in part and dissenting in part). It fails to

appreciate the role and resolve of the jury. Id. at 1351.

And it raises serious concerns under the Seventh

Amendment.

III.

These Are Exceptionally Important

Questions, And This Case Is An Ideal

Vehicle To Resolve Them.

The interpretation of Section 284 offered below and

in many recent Federal Circuit decisions violates the

plain meaning of the Patent Act. And despite the

Federal Circuit’s recent insistence upon unyielding

adherence to a rigid apportionment requirement in

lost profits cases, some of its own decisions cannot

possibly be reconciled with that rule. See, e.g., Rite-

Hite Corp. v. Kelley Co., 56 F.3d 1538, 1544 (Fed. Cir.

1995) (en banc) (affirming an award of lost profits on

sales of a product that did not even contain the patent

in suit). Indeed, not long ago, commentators and

leading practitioners were declaring that “under

current law, there is never a need to apportion lost

profits between patented and unpatented items.”

Brent Rabowsky, Recovery of Lost Profits on

Unpatented Products in Patent Infringement Cases, 70

S. Cal. L. Rev. 281, 295 (1996); see also Conley, supra,

at 373 (“[T]he concept of recovery of lost profits, as

uniformly applied by the courts, does not admit to

dividing the patent owner’s lost profits according to

any perceived value contributed by the invention.”).

Despite the confusion and shifting standards, this

Court does not appear to have squarely addressed the

critical topic of apportionment in over a hundred

years. The lack of attention to this fundamental issue

has plagued district courts, the Federal Circuit, and

litigants. This Court’s guidance is necessary to

prevent entrenchment of a doctrine that disregards

the fundamental dictates of the Patent Act.

Likewise, the Federal Circuit’s unique position in

the federal judiciary makes its cramped interpretation

of Rule 702 enormously consequential. See 28 U.S.C.

§ 1295(a). And nearly every patent case involves a

damages expert. If courts must continue to exclude

those experts whenever some “evidence is contrary” to

an important fact on which their opinions rely, the role

of the jury will be severely diminished.

This case supplies a perfect example of both

problems and an ideal opportunity to correct the

Federal Circuit’s flawed approach in one fell swoop.

The Federal Circuit misconstrued Section 284. And

then it weighed evidence, discredited testimony, and

excluded Sunoco’s damages expert simply because the

court rejected the factual predicate of the expert’s

opinion. In doing so, it allowed Respondents to reap

hundreds of millions in profits from willful

infringement and left Sunoco with a mere fraction of

that in damages. Such perverse outcomes will

proliferate until this Court intervenes.

CONCLUSION

The petition for a writ of certiorari should be

granted.

Respectfully submitted,

JOHN R. KEVILLE

MICHELLE C. REPLOGLE

MICHAEL C. KRILL

SHEPPARD, MULLIN

RICHTER & HAMPTON

LLP

845 Texas Avenue, 25th

Floor

Houston, Texas 77002

(713) 431-7100

MICHAEL H. MCGINLEY

Counsel of Record

MARTIN J. BLACK

JEFFREY S. EDWARDS

BRIAN A. KULP

CORY J. KOPICKI

DECHERT LLP

Cira Centre

2929 Arch Street

Philadelphia, PA 19104

(215) 994-2463

michael.mcginley@dechert.com

Counsel for Petitioner

June 11, 2026

APPENDIX

TABLE OF APPENDICES

Page

APPENDIX A – OPINION OF THE UNITED

STAT ES COU RT OF A PPEA LS FOR

T H E F E DE R A L C I R C U I T, F I L E D

JANUARY 16, 2026 . . . . . . . . . . . . . . . . . . . . . . . . . . . 1a

APPENDIX B – MEMORANDUM ORDER IN

THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE,

FILED JUNE 9, 2020 . . . . . . . . . . . . . . . . . . . . . . . 72a

A PPENDIX C – REPORT A ND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED MARCH 13, 2020 . . . . . . . 93a

A PPENDIX D – REPORT A ND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED FEBRUARY 27, 2020 . . . 108a

A PPENDIX E – REPORT A ND RECOMMENDATION IN THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED FEBRUARY 19, 2020 . . . .127a

A PPENDI X F – REPORT A ND

RECOMMENDATION IN THE UNITED

STATES DISTRICT COURT FOR THE

DI S T R IC T OF DEL AWA R E , F I L ED

JANUARY 16, 2020 . . . . . . . . . . . . . . . . . . . . . . . . . 141a

Table of Appendices

Page

APPENDIX G — CONSTITUTIONAL PROVISION, STATUTE AND RULE INVOLVED . . . 167a

A PPENDIX H – REPORT A ND RECOMMENDATION OF THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

DELAWARE, FILED FEBRUARY 6, 2020 . . . . 169a

APPENDIX I – MEMORANDUM ORDER OF

THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE,

FILED JANUARY 3, 2020 . . . . . . . . . . . . . . . . . . 204a

Appendix

APPENDIX A — OPINION

OF THE

UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT,

FILED JANUARY 16, 2026

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2023-1218, 2023-1274

SUNOCO PARTNERS MARKETING &

TERMINALS L.P.,

Plaintiff-Appellant,

POWDER SPRINGS LOGISTICS, LLC, MAGELLAN

MIDSTREAM PARTNERS L.P.,

Defendants-Cross-Appellants.

Appeals from the United States District Court for

the District of Delaware in No. 1:17-cv-01390-RGA, Judge

Richard G. Andrews.

Decided: January 16, 2026

Before Stoll, Clevenger, and Cunningham,

Circuit Judges.

Stoll, Circuit Judge.

This patent infringement case raises issues of

eligibility, infringement, and damages and is related to

systems and methods of blending butane with gasoline.

Appendix A

Sunoco Partners Marketing & Terminals L.P. sued

Magellan Midstream Partners L.P. and Powder Springs

Logistics, LLC for patent infringement, which ultimately

proceeded to a bifurcated jury trial. A final judgment was

entered against Magellan for willfully infringing claim 3 of

U.S. Patent No. 6,679,302, claims 31 and 32 of U.S. Patent

No. 7,032,629, and claim 3 of U.S. Patent No. 9,207,686. A

final judgment was entered against Powder Springs for

willfully infringing claim 3 of the ’686 patent.

Sunoco challenges on appeal several decisions by the

district court that occurred pre-trial, during trial, and

post-trial related to damages, as well as the district court’s

judgment as a matter of law that claims 16 and 17 of the

’302 patent and claims 18 and 22 of the ’629 patent were

not infringed. Magellan and Powder Springs cross-appeal

the district court’s judgment under Federal Rule of Civil

Procedure 52(c) that claims 3, 16, and 17 of the ’302 patent,

claims 18, 22, 31, and 32 of the ’629 patent, and claim 3

of the ’686 patent are eligible under 35 U.S.C. § 101, as

well as the district court’s decision to award supplemental

damages to Sunoco. For the reasons discussed below, we

affirm the district court’s damages decisions, affirm the

district court’s JMOL of no infringement, and affirm-inpart and reverse-in-part the district court’s eligibility

decision.

Background

The ’302 and ’629 patents are titled “Method and

System for Blending Gasoline and Butane at the Point of

Distribution.” U.S. Patent No. 6,679,302 Title; U.S. Patent

Appendix A

No. 7,032,629 Title. They are directed to “blending butane

with gasoline at petroleum tank farms, immediately

before distribution to tanker trucks,” and share a common

specification, as the ’629 patent is a continuation of the ’302

patent. ’302 patent Abstract; ’629 patent Abstract. The

“Background of the Invention” explains that “[b]utane has

historically been blended with gasoline at several points in

the gasoline distribution chain.” ’302 patent col. 1 ll. 65-66.

Butane is added to gasoline for two reasons: (1) because it

is more volatile than gasoline, it is “commonly added as a

RVP modifying agent,” where RVP stands for Reid vapor

pressure and is the measure of a petroleum product’s

ability to combust; and (2) because it “reduce[s] the cost

of gasoline.” Id. at col. 1 ll. 31-51. The Environmental

Protection Agency has promulgated regulations on how

much butane can be blended with gasoline. Id. at col. 1

ll. 52-64.

The specification explains that one of the locations

in the gasoline distribution chain where butane has

historically been added to gasoline is at tank farms,

before the gasoline is dispensed to tanker trucks using a

dispensing unit such as a rack. Id. at col. 1 ll. 65-66, col. 2 ll.

24-40, col. 5 ll. 13-20. The specification describes blending

at the tank farm: “When delivery of gasoline is made to a

large storage tank, the RVP of the tank is measured, and

sufficient butane is added to the tank to attain a desired

RVP.” Id. at col. 2 ll. 24-27. “However, blending butane at

tank farms is not without its complications,” including that

it is “labor intensive and imprecise.” Id. at col. 2 ll. 34-41.

Additionally, “[e]ach time that gasoline is introduced to a

tank, the RVP must again be measured, and butane must

be added to the, [sic] tank to attain a desired RVP.” Id. at

Appendix A

col. 2 ll. 34-37. But “[o]ften, gasoline will be dispensed to

several tanker trucks before the butane can be blended, . . .

losing the opportunity to blend butane in those shipments.”

Id. at col. 2 ll. 37-40. Thus, after the butane is offloaded

into the gasoline tank, the tank then takes “considerable

stirring” to render the mixture homogeneous. Id. at col.

2 ll. 39-44. The specification explains that, because these

conventional methods were imprecise, suppliers were

unable to maximize the amount of butane blended with

gasoline. See id. at col. 2 ll. 39-52, col. 2 l. 66-col. 3 l. 11.

The patented invention offers a solution: unlike

prior manual blending methods where butane was

added directly to the gasoline tank, “blending occurs

downstream of the gasoline and butane storage tanks on

the tank farm, after the gasoline and butane are drawn

from their storage tanks for dispensing into a tanker

truck, but before the gasoline is actually dispensed to

the tanker truck at the rack.” Id. at col. 3 ll. 17-21. The

invention uses a “blending apparatus” for blending the

butane and gasoline streams at varying blend ratios to

achieve a desired vapor pressure, and the apparatus is

“under the continuous control of a process control unit,

which can vary the ratio at which gasoline and butane are

blended to attain a desired vapor pressure.” Id. at col. 3

ll. 21-31. The specification explains that these features

offer “a number of significant advantages”: (1) “[t]he

amount of butane blended with the gasoline can be more

thoroughly controlled, yielding less RVP variability”; (2)

“butane and gasoline can be blended to yield consistent

optimal performance of motor vehicles that employ the

blended gasoline”; (3) “[t]he ratio of butane and-gasoline

Appendix A

[sic] blended can be easily varied and controlled to comply

with regional and/or seasonal RVP requirements imposed

by EPA or state regulations”; and (4) “tank farm operators

are able to maximize the amounts of butane that they

blend with gasoline, and minimize their cost basis for the

gasoline sold.” Id. at col. 3 ll. 44-67.

Sunoco asserted claims 3, 16, and 17 of the ’302 patent

and claims 18, 22, 31, and 32 of the ’629 patent at trial.

Claim 3 of the ’302 patent, which depends from claims 1

and 2, provides:

1. A system for blending gasoline and butane

at a tank farm comprising:

a tank of gasoline;

a tank of butane;

c) a blending unit, at the tank farm,

downstream of and in fluid connection

with the tank of gasoline and the tank

of butane;

d) a dispensing unit downstream

of and in fluid connection with the

blending unit; and

e) a rack, wherein the dispensing

unit is located at the rack and is

adapted to dispense gasoline to

gasoline transport vehicles.

Appendix A

2. The system of claim 1 further comprising

a process control unit, wherein the process

control unit generates a ratio input signal

that controls the ratio of butane and gasoline

blended by the blending unit.

3. The system of claim 2 wherein the ratio

input signal is derived from a calculation of

the ratio of butane and gasoline that will yield

a desired vapor pressure.

Id. at col. 13 ll. 12-31. Claims 16 and 17 of the ’302 patent,

which depend from claims 12, 13, and 14, provide:

12. A method for blending gasoline and butane

at a tank farm comprising:

a) drawing a gasoline stream from

a tank of gasoline;

b) drawing a butane stream from a

tank of butane;

c) blending the butane and gasoline

streams, at the tank farm, to form a

blend; and

d) dispensing the blend to gasoline

transport vehicles using a dispensing

unit located at a rack.

Appendix A

13. The method of claim 12, further comprising:

a) determining a blend ratio of

butane and gasoline in the butane

and gasoline streams that will yield a

desired vapor pressure, and

b) blending the gasoline and butane

streams at the blend ratio.

14. The method of claim 13, wherein the blend

ratio is determined from a vapor pressure of

the gasoline stream and a vapor pressure of

the butane stream.

16. The method of claim 14, wherein the step

of determining the blend ratio comprises:

a) setting a predetermined value for

the vapor pressure of the blend;

b) transmitting the predetermined

value for the vapor pressure of the

blend to a processing unit;

c) transmitting the gasoline vapor

pressu re and the but ane vapor

pressure to the processing unit;

d) calculating the blend ratio from

the gasoline vapor pressure, the

Appendix A

butane vapor pressure, and the

predetermined value for the vapor

pressure of the blend.

17. The method of claim 16, further comprising:

a) t r a n sm it t i ng a sig n a l t h at

corresponds to the vapor pressure of

the blend from the processing unit to

a programmable logic control; and

b) adjusting the ratio of butane and

gasoline blended in the blending unit

with the programmable logic control.

Id. at col. 14 ll. 3-21, col. 14 ll. 33-50.

Claims 18 and 22 of the ’629 patent, which depend

from claim 17, provide:

17. A computer-implemented method for

blending a butane stream with a gasoline

stream comprising the steps of:

receiv i ng a f i r st me a su rement

indicating a vapor pressure of the

gasoline stream;

receiving a second measurement

indicating a vapor pressure of the

butane stream;

Appendix A

calculating a blend rate at which the

butane stream can be blended with a

gasoline stream; and

transmitting an instruction to a

programmable logic controller for

adjusting the butane stream to the

calculated blend rate for blending with

the gasoline stream and distributing

at a rack.

18. The computer-implemented method of

claim 17, wherein the blend rate is based on a

predetermined vapor pressure for the blended

gasoline and butane.

22. The computer-implemented method of

claim 17, further comprising the steps of:

receiv i ng a thi rd measu rement

indicating a vapor pressure of the

blend of the gasoline stream and the

butane stream; and

generating a report comprising the

third measurement.

’629 patent col. 14 ll. 38-52, col. 14 ll. 62-67. Claims 31 and

32 of the ’629 patent provide:

31. A computer-implemented method for

blending a butane stream and a gasoline stream

comprising the steps of:

10a

Appendix A

receiv i ng a f i r st me a su rement

indicating a vapor pressure of the

gasoline stream;

calculating a blend rate at which the

butane stream can be blended with

the gasoline stream;

transmitting an instruction to a

programmable logic controller for

adjusting the butane stream to the

calculated blend rate for blending with

the gasoline stream and distributing

at a rack; and

receiving a second measurement

indicating a vapor pressure of the

blended gasoline stream and butane

stream.

32. The computer-implemented method

of claim 31, further comprising the step of

generating a report comprising the second

measurement.

Id. at col. 16 ll. 8-24.

The ’686 patent is titled “Versatile Systems for

Continuous In-line Blending of Butane and Petroleum,”

is directed to “in-line processes of blending butane into

11a

Appendix A

gasoline streams, and for blending butane into a gasoline

stream at any point along a petroleum pipeline,” and is

a continuation-in-part of the ’629 patent. U.S. Patent

No. 9,207,686 Title, Abstract. The “Background of the

Invention” explains that “[s]everal methods have been

attempted to improve the precision of butane blending

and the predictability of Reid vapor pressure in the final

product.” Id. at col. 3 ll. 1-3. The specification explains

that “[b]y combining the advantages of in-line vapor

pressure monitoring both upstream and downstream

of a butane blending operation,” the patented invention

is “a tightly controlled butane blending system with

surprising versatility that can be used to blend butane

with petroleum products at practically any point along a

petroleum pipeline, regardless of variations in the flow

rate of gasoline . . ., the time of year . . ., or the ultimate

destination.” Id. at col. 3 ll. 15-23. The invention allows

“petroleum vendors and distributors . . . to take optimum

advantage of the many cost saving and performance

benefits that butane blending offers, and to do so without

regard to the location where the blending occurs along

the pipeline.” Id. at col. 3 ll. 24-28.

Sunoco asserted only claim 3 at trial. Claim 3 depends

from claim 1 and provides:

1. A method for in-line blending of gasoline

and a volatility modifying agent comprising:

a) providing a continuously flowing

gasoline stream that comprises:

12a

Appendix A

i) a plurality of batches of

different gasoline types;

ii) a gasoline flow rate that

varies over time; and

iii) a plurality of gasoline

vapor pressures;

b) providing an allowable vapor

pressure;

c) providing a stream of said agent

t hat compr ises a n agent vapor

pressure;

d) periodically determining said

gasoline vapor pressure;

e) periodically determining said

gasoline flow rate;

f) calculating a blend ratio based

upon said agent vapor pressure, said

gasoline vapor pressure, and said

allowable vapor pressure; and

g) blending said agent stream and

said gasoline stream at a blending unit

at said blend ratio to provide a blended

gasoline stream having a blended

13a

Appendix A

vapor pressure less than or equal to

said allowable vapor pressure.

The method of claim 1, further comprising:

a) providing a first information

processing unit (IPU) on which said

calculating is performed;

b) providing a second IPU which

generates pulses of flow rate data;

c) transmitting said flow rate data

to said first IPU; and

d) calculating a blend rate on said

first IPU based upon said flow rate

data from said second IPU.

Id. at col. 15 l. 62-col. 16 l. 13, col. 16 ll. 16-23.

III

Sunoco purchased the asserted patents from Texon

LP in 2010, when it acquired all of Texon’s butane blending

business. After the purchase, Sunoco adopted Texon’s

method of licensing its patents as part of Butane Supply

Agreements (“BSAs”). Under the BSAs, Sunoco (1)

constructs and operates its patented system at a licensee’s

gasoline terminal, (2) supplies butane needed for the

system, and (3) grants a limited license to its patents, all

14a

Appendix A

in exchange for sharing the licensee’s profits from selling

the extra gasoline created using the patented inventions.

Also under the BSAs, Sunoco performs services related

to (1) making and using the patented inventions, such as

designing, engineering, constructing, and maintaining

the blending systems; and (2) providing regulatory

oversight support, maintenance and support services, risk

management, customer services, and financial services

related to butane hedging, among others. Additionally,

Sunoco’s BSAs include the use of its proprietary blending

algorithm with its patented system. Generally, the parties

to the BSAs share the resulting profits 40/60 or 50/50

with Sunoco only being compensated for its share of the

profit on the gasoline gallons created, not on the sale of

all gallons blended with the patented technology. The

difference in profit-share depends on which party provides

construction capital for building the blending system:

Sunoco gets a 40 percent profit-share when the licensee

provides the construction capital and a 50 percent profitshare when it provides the capital.

Sunoco has granted rights to its patents under

an arrangement other than the above described BSA

methodology only once. When Sunoco acquired Texon’s

butane blending business, a preexisting licensee of Texon,

Buckeye Terminals, LLC, wanted to continue its BSA with

Texon rather than Sunoco. Sunoco agreed to allow Texon

to continue to use the patented inventions for Buckeye, and

under the “Buckeye License,” Texon paid Sunoco $0.02/

gallon for patented blending at all Buckeye terminals for

ten years and 60 percent of Texon’s profits at any future

Buckeye terminals. Buckeye and Texon used a 50/50

15a

Appendix A

profit-share, so Sunoco’s 60 percent share from Texon’s

profit was 30 percent of the total profits from the use of

the patented inventions at Buckeye terminals.

In 2013, Colonial Pipeline Company sought an

automated blending system for the Colonial Pipeline,

which is the largest refined products pipeline system

in the country. Sunoco and Magellan competed for

the project, with Sunoco proposing use of its patented

blending technology with a 50/50 profit-share under

its established BSA methodology. Colonial, however,

chose Magellan’s proposal, under which Magellan would

construct, operate, and maintain the system, as well as

supply butane and provide other services, in exchange for

a 40/60 profit-share. Colonial and Magellan jointly formed

Powder Springs, which began blending on the pipeline in

2017. Sunoco still operates its own patented systems at 25

terminals on the Colonial Pipeline downstream of Powder

Springs’s terminals.

In 2017, Sunoco filed suit for patent infringement in

the District of Delaware, initially suing Magellan and

Powder Springs (or, collectively, “Defendants-CrossAppellants”) for infringing multiple claims across five

patents. Sunoco requested a damages award based on

its BSA profit-sharing methodology. Several stages of

the underlying lawsuit—which ultimately proceeded to

a bifurcated trial on (1) liability, where the jury found

claims 3, 16, and 17 of the ’302 patent, claims 18, 22, 31,

and 32 of the ’629 patent, and claim 3 of the ’686 patent

16a

Appendix A

valid and willfully infringed; and (2) damages, where the

jury awarded Sunoco approximately $12 million—are

relevant to this appeal.

Before trial, Defendants-Cross-Appellants sought

to exclude the opinions of Sunoco’s damages expert, Dr.

Keith Ugone, as unreliable under Daubert v. Merrell Dow

Pharmaceuticals, Inc., 509 U.S. 579, 113 S. Ct. 2786, 125

L. Ed. 2d 469 (1993), because Dr. Ugone failed to apportion

Sunoco’s BSAs to reflect only the value of the patented

inventions. After allowing Sunoco an opportunity to

supplement Dr. Ugone’s opinions to show apportionment,

the district court struck his supplemental opinions for

failing to apportion appropriately.

In so doing, the district court first determined that the

“entire market value analysis in Dr. Ugone’s supplemental

report is unreliable.” J.A. 22. The court found that Dr.

Ugone did “not identify reliable evidence to allow Sunoco

to ‘meet its burden to show that the patented feature was

the sole driver of consumer demand, i.e., that it alone

motivated consumers to buy the accused the [sic] products

or substantially creates the value of the component parts.’”

Id. (quoting the entire market value standard set forth

in Power Integrations, Inc. v. Fairchild Semiconductor

Int’l, Inc., 904 F.3d 965, 979-80 (Fed. Cir. 2018)). The

district court also noted that it does not “follow[] that the

‘sole driver’ requirement is satisfied” merely because the

non-patented features offered as part of Sunoco’s BSAs

are not sold separately from the patented features. J.A.

17a

Appendix A

23 (citing LaserDynamics, Inc. v. Quanta Comput., Inc.,

694 F.3d 51, 68 (Fed. Cir. 2012)). Further, the district

court determined that Sunoco had not provided evidence

to meet its burden to show that its patented features

substantially create the value of the component parts

of the BSA, “especially given the undisputed evidence

that Sunoco’s services are valued for their non-patented

features, such as their expertise and algorithm.” J.A. 2324 (citations omitted).

Turning to Dr. Ugone’s purported apportionment

analysis, the district court determined that his analysis

was unreliable because Dr. Ugone did not analyze the

value of certain unpatented features of Sunoco’s BSAs.

This included Sunoco’s blending algorithm, which the

district court did not view as “part of the patented system”

because of testimony that the algorithm was “proprietary

and a Sunoco trade secret.” J.A. 24-25 (citations omitted).

As to Dr. Ugone’s opinions on lost opportunity cost, the

district court determined that those too were unreliable

because he “failed to apportion the value lost due to noninfringing manual blending.” J.A. 25. Thus, the district

court struck all of Sunoco’s damages expert’s opinions.1

1. Sunoco filed several other suits that involve the asserted

patents, including a suit against U.S. Venture, Inc. in the Northern

District of Illinois for infringing different claims of the ’302 and ’629

patents. Sunoco P’ship Mktg. & Terminals L.P. v. U.S. Venture,

Inc., 436 F. Supp. 3d 1099, 1107 (N.D. Ill. 2020) (“U.S. Venture I”).

Notably, in U.S. Venture I, Sunoco sought damages based on its

BSAs relying on the testimony of the same expert, Dr. Ugone. After

a bench trial, the Illinois district court determined that Dr. Ugone’s

failure to apportion the BSAs to reflect only the value of the asserted

and infringed patent claims prohibited Sunoco from recovering lost

18a

Appendix A

At trial, Sunoco requested jury instructions regarding

lost profits based on evidence it elicited from fact witnesses,

such as (1) testimony that the patents drove demand for

Sunoco’s BSAs, and (2) testimony about the 30 percent

profit sharing arrangement between Sunoco and Texon

from the Buckeye License. The district court, however,

rejected the proposed instruction and precluded Sunoco

from arguing for damages based on “some value that’s

intermediate” to the “full value” of the 40 or 50 percent

rates in the BSAs or the 30 percent rate in the Buckeye

License. See J.A. 23229-31 (Trial Tr. 1461:5-1463:15). The

district court had warned Sunoco prior to trial that such a

theory “is no more proper . . . coming from fact witnesses

than it would have been coming from Dr. Ugone” and that

“someone must apportion” the BSAs. J.A. 14509 (Hearing

Tr. 95:18-97:7). Thus, the royalty rate that Sunoco could

seek from the jury in its closing argument was limited to

the $0.02/gallon rate that Defendants-Cross-Appellants’

expert, Dr. Robert Maness, proposed based on the

Buckeye License.

During post-trial proceedings, the district court

issued three orders relevant to this appeal: (1) an order

profits or reasonable royalty damages based on the full value of the

BSAs. Id. at 1127-30. Sunoco appealed that decision to this court,

arguing the district court erred in rejecting BSA-based damages,

and we affirmed the Illinois district court’s damages decision. Sunoco

Partners Mktg. & Terminals L.P. v. U.S. Venture, Inc., 32 F.4th 1161,

1179-81 (Fed. Cir. 2022) (“U.S. Venture II”).

19a

Appendix A

addressing patent eligibility as to each asserted claim,

(2) an order addressing JMOL of no infringement and

of no willful infringement, and (3) an order addressing

enhanced and supplemental damages.

The distr ict cour t denied Defendants- CrossAppellants’ renewed motion under Federal Rule of Civil

Procedure 52(c) that all asserted claims are ineligible

under 35 U.S.C. § 101. Defendants-Cross-Appellants

argued that the asserted claims of the ’302 and ’629

patents are directed to “the abstract idea of gathering

and transmitting blend data and using generic computer

components to calculate a blend ratio and add butane to

gasoline,” with the focus of the claims on “using a computer

to automate aspects of butane blending that have long been

done manually.” Sunoco Partners Mktg. & Terminals L.P.

v. Powder Springs Logistics, LLC, 624 F. Supp. 3d 484,

489 (D. Del. 2022) (“101 Order”) (citations omitted). The

district court, however, disagreed and determined that

Defendants-Cross-Appellants had “failed to show that

the claimed invention simply automates this prior manual

blending,” and instead the court determined “that claims

3, 16, and 17 of the ’302 patent and claims 18, 22, 31, and

32 of the ’629 patent are directed to improved systems

and methods for blending butane.” Id. at 490.

The district court explained that the specification

described improvements over conventional methods of

butane blending:

20a

Appendix A

Specifically, “[b]y blending gasoline and butane

immediately before the gasoline is dispensed to

a tanker truck, and by continuously controlling

the ratio of gasoline and butane blended by the

blending apparatus, a number of significant

advantages are attained, including,” among

other things, that “[t]he ratio of butane and[

] gasoline blended can be easily varied and

controlled” and “operators are able to maximize

the amounts of butane that they blend.”

Id. at 491 (second and third alteration in original) (quoting

’302 patent col. 3 ll. 44-67). The district court determined

that the patents’ claims capture these improved blending

methods. The district court further analogized this case

to EcoServices, LLC v. Certified Aviation Services, LLC,

830 F. App’x 634 (Fed. Cir. 2020), and CardioNet, LLC v.

InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020), to conclude

that the “claims are not simply directed to the automation

of the prior manual blending methods in which an operator

would measure the RVP of samples from a gasoline tank,

add the appropriate amount of butane into the tank, stir

the tank, and then measure the RVP of the blend.” 101

Order at 492. Instead, the district court held that “the

claims are directed to specific technical systems and

methods that ‘allow[ ] a distributor to blend more gasoline

than would be possible with the prior art.’” Id. (alteration

in original) (quoting ’302 patent col. 11 ll. 53-55). As the

district court determined the claims were not directed to

ineligible subject matter under Alice step one, the court

did not proceed to Alice step two.

21a

Appendix A

As to the ’686 patent, Defendants-Cross-Appellants

argued that claim 3 is directed to the “abstract idea of

receiving blending data and using a generic computer to

make calculations based on those measurements,” which

“is simply the automation of the well-known methods for

manual blending along a pipeline.” Id. at 493 (citation

omitted). The district court, however, determined that

Defendants-Cross-Appellants had not met their burden

to show that “claim 3 is directed simply to the automation

of these prior manual blending methods,” holding that

“[c]laim 3 is instead directed to a specific method for inline blending.” Id. The district court concluded that claim

3 captures unconventional methods of in-line blending by

reciting (1) “‘periodically determining said gasoline vapor

pressure’ and ‘said gasoline flow rate’”; (2) “calculating a

blend ratio based upon . . . said gasoline vapor pressure[ ]

and said allowable vapor pressure”; and (3) “‘blending’

the butane and gasoline streams ‘at a blending unit at

said blend ratio to provide a blended gasoline stream

having a blended vapor pressure less than or equal to said

allowable vapor pressure.’” Id. at 493-94 (alteration and

omission in original) (quoting ’686 patent col. 15 l. 61-col.

16 l. 13). The district court explained that McRO, Inc. v.

Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.

Cir. 2016), is instructive in determining that DefendantsCross-Appellants had failed to provide sufficient evidence

that the prior art blending process was the same process

required by claim 3. The district court thus held that

the claimed invention used a computer to perform a

distinct process to automate a task compared to what was

22a

Appendix A

previously manually performed. See 101 Order at 494. 2

Again, as the district court determined the claim was not

directed to ineligible subject matter under Alice step one,

the court did not proceed to Alice step two. 3

The district court granted JMOL of no infringement

for claims 16 and 17 of the ’302 patent and claims 18 and

22 of the ’629 patent but denied JMOL of no infringement

on the other claims the jury found infringed. The district

court concluded that claims 16 and 17 of the ’302 patent

and claims 18 and 22 of the ’629 patent “require[] knowing

(whether it be through, for example, actual measurement,

through looking it up in a table or other resource, or

through knowledge of an inherent characteristic) the

vapor pressure of the gasoline or butane to be blended.”

Sunoco Partners Mktg. & Terminals L.P. v. Powder

2. As part of its 101 Order, the district court also noted that

it struck exhibits related to the prior art Kerr-McGee system

as untimely and declined to use Defendants-Cross-Appellants’

remaining proposed findings of fact that relied on excerpts of the

Kerr-McGee documents from the prosecution history of another

related patent to find the claimed blending steps were conventional

activities. See 101 Order at 490 n.3.

3. Sunoco sued U.S. Venture in the Southern District of Texas

for infringing different claims of the ’686 patent. Sunoco Partners

Mktg. & Terminals L.P. v. U.S. Venture, Inc., 598 F. Supp. 3d 520,

523 (S.D. Tex. 2022) (“U.S. Venture Tex. Op.”), appeal dismissed,

2023 U.S. App. LEXIS 31858, 2023 WL 8366206 (Fed. Cir. Dec. 4,

2023). There, the Texas district court held claims 16 and 17 of the ’686

patent ineligible under 35 U.S.C. § 101. Id. at 535-41. Neither claim

recites periodically determining gasoline vapor pressure or flow rate.

23a

Appendix A

Springs Logistics, LLC, 624 F. Supp. 3d 473, 477 (D.

Del. 2022) (“Infringement Order”) (quotation marks

and citation omitted). The district court considered a

prior decision of our court that held “the phrase ‘vapor

pressure of the butane stream’ in claim 17 of the ’302

patent covers an assumed vapor pressure value.” Id.

(citing U.S. Venture II, 32 F.4th at 1175-76). The district

court next considered that it was undisputed the accused

products do not measure the vapor pressure of the

butane but use an inherent butane RVP of 52 psi. The

district court concluded that using an assumed butane

vapor pressure satisfied the claim limitations requiring

knowledge of a butane vapor pressure. The district

court, however, determined that this knowledge was not

enough to satisfy the “receiving” limitation of claims 18

and 22 of the ’629 patent and “transmitting” limitation of

claims 16 and 17 of the ’302 patent, and held that Sunoco’s

expert’s conclusory testimony on these limitations could

not constitute substantial evidence to support the jury

verdict of infringement for these claims.

In its Infringement Order, the district court also

denied Defendants-Cross-Appellants’ motion for JMOL

of no willful infringement for all asserted claims.

The district court declined to enhance Sunoco’s

damages award, despite its denial of JMOL of no willful

infringement. The district court considered the Read

factors as part of its analysis, see Sunoco Partners Mktg.

& Terminals L.P. v. Powder Springs Logistics, LLC, No.

24a

Appendix A

17-cv-01390-RGA, 2022 U.S. Dist. LEXIS 156988, 2022

WL 3973499, at *1 (D. Del. Aug. 31, 2022) (“Damages

Order”) (citing Read Corp. v. Portec, Inc., 970 F.2d 816,

827 (Fed. Cir. 1992)), ultimately concluding that the factors

weighed against enhancing damages. 2022 U.S. Dist.

LEXIS 156988, [WL] at *3.

The district court also awarded supplemental

damages at a $0.02/gallon royalty rate for DefendantsCross-Appellants’ infringement that was not covered

by the jury verdict. The district court explained that

the jury’s damages number of $12,200,958.44 was the

exact number presented by Sunoco in closing argument

from multiplying the royalty rate of $0.02/gallon by the

infringing volumes of blended gasoline through the end

in January 2019. “Thus, [the district court] ha[d] no doubt

that the jury only considered Defendants’ infringement

through January 2019 when assessing damages.” Id. And

while the district court acknowledged that Sunoco had

Defendants-Cross-Appellants’ blending volumes through

October 2021 prior to trial, the court reasoned that (1) this

information came in after fact and expert discovery closed,

(2) there was no witness at trial or within subpoena range

through whom Sunoco could have introduced these new

volumes, and (3) other efforts to remedy an authentication

problem may not have been successful. Accordingly, the

district court determined that Sunoco “had no practical

means of presenting these new volumes to the jury.” Id.

As “the jury only compensated Sunoco for infringement

through January 2019, [the district court] believe[d]

supplemental damages [were] necessary to properly

compensate Sunoco for Defendants’ infringement.” 2022

U.S. Dist. LEXIS 156988, [WL] at *4.

25a

Appendix A

***

Sunoco appeals the district court’s (1) decision to

strike Dr. Ugone’s various damages opinions, (2) decision

not to instruct the jury on lost profits and to preclude

Sunoco from asking the jury for a royalty based on its

BSAs or Buckeye License, (3) decision not to award

enhanced damages for Defendants-Cross-Appellants’

willful infringement, and (4) decision to grant JMOL of

no infringement of claims 16 and 17 of the ’302 patent

and claims 18 and 22 of the ’629 patent. Magellan and

Powder Springs cross-appeal the district court’s decisions

(1) holding all asserted claims eligible and (2) awarding

supplemental damages. We have jurisdiction under 28

U.S.C. § 1295(a)(1).

Discussion

Magellan and Powder Springs’s Cross-A ppeal

We first address Magellan and Powder Springs’s

cross-appeal, as they challenge the eligibility of all

patent claims at issue. Magellan and Powder Springs

also challenge the district court’s award of pre-verdict

supplemental damages to Sunoco.

“For the district court’s entry of judgment under

Rule 52(c), we review the district court’s factual findings

for clear error and its legal conclusions de novo.” Intell.

Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1312

26a

Appendix A

(Fed. Cir. 2016). “Patent eligibility is a question of law that

may involve underlying questions of fact.” PersonalWeb

Techs. LLC v. Google LLC, 8 F.4th 1310, 1314 (Fed. Cir.

2021). We review de novo a determination that a claim is

not directed to patent-ineligible subject matter. See, e.g.,

CardioNet, 955 F.3d at 1367.

“Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of matter,

or any new and useful improvement thereof, may obtain

a patent therefor . . . .” 35 U.S.C. § 101. “The Supreme

Court has identified three types of subject matter that are

not patent-eligible: ‘Laws of nature, natural phenomena,

and abstract ideas . . . .’” CardioNet, 955 F.3d at 1367

(quoting Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216,

134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014)). “The abstract

ideas category, the subject matter at issue in this case,

embodies the longstanding rule that an idea of itself is

not patentable.” Id. (cleaned up) (quoting Alice, 573 U.S.

at 218). But “an invention is not rendered ineligible for

patent simply because it involves an abstract concept.”

Alice, 573 U.S. at 217. Applications of abstract concepts to

a new and useful end are eligible for patent protection. Id.

The Supreme Court has “articulated a two-step test

for examining patent eligibility.” CardioNet, 955 F.3d at

1367. “At step one, we consider the claims ‘in their entirety

to ascertain whether their character as a whole is directed

to excluded subject matter.’ We also consider the patent’s

written description, as it informs our understanding of the

claims.” Id. at 1367-68 (citations omitted). “If the claims

are not directed to a patent-ineligible concept under Alice

27a

Appendix A

step [one], the claims satisfy § 101 and we need not proceed

to the second step.” Id. at 1368 (quotation marks omitted)

(quoting Data Engine Techs. LLC v. Google LLC, 906 F.3d

999, 1007 (Fed. Cir. 2018)). “If the claims are directed to a

patent-ineligible concept, however, we next consider Alice

step two. In this step, we consider the elements of each

claim both individually and as an ordered combination to

determine whether the additional elements transform the

nature of the claim into a patent-eligible application.” Id.

(quotation marks and citations omitted).

We begin by analyzing claims 3, 16, and 17 of the ’302

patent at Alice step one. Defendants-Cross-Appellants

argue the claims are directed to the abstract idea of

gathering and/or receiving blend data and making a

calculation with that data.4 We disagree and hold that

claims 3, 16, and 17 are not directed to an abstract idea.

“At this step, we look to whether the claims focus on

a specific means or method that improves the relevant

technology or are instead directed to a result or effect

that itself is the abstract idea and merely invoke generic

processes and machinery.” PowerBlock Holdings, Inc. v.

iFit, Inc., 146 F.4th 1366, 1371 (Fed. Cir. 2025) (quotation

marks and citation omitted). As the district court

concluded here, claims 3, 16, and 17 of the ’302 patent are

4. Defendants-Cross-Appellants argue that claim 31 of the

’629 patent is representative of the claims in the ’302 patent. See

Defendants-Cross-Appellants’ Reply Br. 2 n.1. We disagree and note

that the district court also did not treat any claims as representative.

28a

Appendix A

“directed to improved systems and methods for blending

butane.” See 101 Order at 490.

The ’302 patent’s specification, as well as trial

testimony on the state of the art that the district court

credited, 5 explains the conventional methods of blending

butane at tank farms and the drawbacks of these methods.

See 101 Order at 489-90. The specification then explains

how the patented system and methods are different

from prior manual blending methods, including that (1)

“blending occurs downstream of the gasoline and butane

storage tanks on the tank farm, after the gasoline and

butane are drawn from their storage tanks for dispensing

into a tanker truck, but before the gasoline is actually

dispensed to the tanker truck at the rack,” ’302 patent col.

3 ll. 16-21; and (2) “a blending apparatus” blends the butane

and gasoline streams at varying blend ratios to achieve a

desired vapor pressure, and the apparatus is “under the

continuous control of a process control unit, which can

vary the ratio at which gasoline and butane are blended

to attain a desired vapor pressure,” id. at col. 3 ll. 21-31.

The specification explains that this “allows for blending

the butane and gasoline streams to form a blend such that

the maximum allowable vapor pressure is not exceeded

and then dispensing the blend at the rack, without having

to stir the tank and certify the vapor pressure of the tank

before releasing it to the rack.” See 101 Order at 490 (citing

5. As Sunoco pointed out at oral argument, the district

court ruled on eligibility under Rule 52(c) and made several fact

findings based on the record. See Oral Arg. at 43:04-44:01, https://

oralarguments.cafc.uscourts.gov/default.aspx?fl=23-1218_01132025.

mp3 .

29a

Appendix A

’302 patent col. 10 ll. 33-36, col. 11 ll. 30-42, 50-55). The

specification further lays out four specific improvements

this allowed for, including that “[t]he ratio of butane andgasoline [sic] blended can be easily varied and controlled”

and “operators are able to maximize the amounts of butane

that they blend.” ’302 patent col. 3 ll. 44-67.

Improvements over the prior blending methods are

sufficiently captured in claim 3, which depends from claims

1 and 2. Claim 3 recites a system “for blending gasoline

and butane at a tank farm” that includes: (1) a butane

stream and a gasoline stream; (2) a tank of gasoline and

one of butane; (3) a processing unit to calculate a blend

ratio; (4) equipment, including a blending unit downstream

of and in fluid connection with the gasoline tank, for

blending the streams at the calculated blend ratio; and

(5) a dispensing unit downstream of the blending unit to

dispense the blend at a truck rack. See ’302 patent col. 13

ll. 12-31. Accordingly, we agree with the district court

that claim 3 is directed to “a specific implementation of a

technological improvement” for a butane blending system.

Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d

1341, 1347 (Fed. Cir. 2019). We hold that the limitations

in this claim provide enough specificity and structure to

satisfy § 101.

Indeed, we see this case as analogous to our recent

decision in PowerBlock Holdings where we held eligible

at Alice step one claims for selectorized dumbbells.

PowerBlock Holdings, 146 F.4th at 1371-73. There, we

explained that even though the claim language was broad,

it was still “limited to a particular type of dumbbell,”

30a

Appendix A

went “beyond claiming the ‘broad concept’ of automating

a known technique and provide[d] a sufficiently ‘specific

manner of performing’ automated weight stacking,”

and was “sufficiently focused on a specific mechanical

improvement.” Id. at 1372-73. Similarly here, claim 3 is

limited to a particular blending system that goes beyond

merely automating conventional blending techniques by

providing a sufficiently specific manner of blending and is

focused on a specific mechanical improvement. See also,

e.g., CardioNet, 955 F.3d at 1368 (holding that the claims

“focus on a specific means or method that improves cardiac

monitoring technology; they are not directed to a result

or effect that itself is the abstract idea and merely invoke

generic processes and machinery” (quotation marks and

citation omitted)).

On the other hand, we disagree with DefendantsCross-Appellants’ contention that claim 3 is analogous

to the patent at issue in University of Florida Research

Foundation, Inc. v. General Electric Co., 916 F.3d 1363

(Fed. Cir. 2019). The patent at issue there, involving “a

method and system for ‘integrat[ing] physiologic data from

at least one bedside machine,’” sought to “automate ‘pen

and paper methodologies’ to conserve human resources

and minimize errors” and was “a quintessential ‘do it on

a computer’ patent.” Univ. of Fla., 916 F.3d at 1366-67

(alteration in original) (citations omitted). As explained

above, claim 3 is different: it claims equipment tanks, a

processing unit to calculate a blend ratio, a blending unit,

a dispensing unit, and a truck rack, as well as the specific

arrangement that the blending unit is downstream of the

tank. It is directed to an eligible mechanical invention—

31a

Appendix A

i.e., “a concrete thing, consisting of parts, or of certain

devices and combination of devices.” SiRF Tech., Inc. v.

Int’l Trade Comm’n, 601 F.3d 1319, 1332 (Fed. Cir. 2010)

(quoting In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir.

2009)); see 35 U.S.C. § 101.

Nor do we agree with Defendants-Cross-Appellants’

view that claim 3 is similar to the claims at issue in

Chamberlain. In Chamberlain, the specification described

a system for wirelessly controlling a moveable barrier,

such as a garage door. The claims recited a moveable

barrier operator with a controller, an interface, and a

wireless transmitter that sends status information. The

claims did not recite the moveable barrier. We concluded

that the asserted claims were “directed to wirelessly

communicating status information about a system,” an

abstract idea. Chamberlain, 935 F.3d at 1346-47. We

explained that the claims in Chamberlain were “not

limited to a specific implementation of a technological

improvement to communication systems,” “they simply

recite[d] a system that wirelessly communicates status

information” instead of using physical signal paths. Id. at

1347. Claim 3 of the ’302 patent here is distinguishable.

Claim 3 recites elements of a mechanical system including

a blending unit that physically blends butane and gasoline

that is both connected downstream of the butane and

gasoline tanks and upstream of the dispensing unit, which

is also configured to blend butane and gasoline such that

the blend has the desired vapor pressure. Here, claim 3

passes muster at Alice step one, as it is sufficiently focused

on a specific mechanical improvement to blending butane.

32a

Appendix A

Defendants-Cross-Appellants contend that we should

not consider elements of claims that were invalidated as

anticipated in other court proceedings—i.e., claim 1 of

the ’302 patent—and should only consider in our § 101

analysis the limitations added in claims 2 and 3. “We

decline [Defendants-Cross-Appellants’] invitation to read

out or ignore limitations in claim [3] here merely because

they can be found in the prior art.” PowerBlock, 146 F.4th

at 1373 (citing Diamond v. Diehr, 450 U.S. 175, 188, 101

S. Ct. 1048, 67 L. Ed. 2d 155 (1981)). We emphasize here

that “parties and tribunals [should] not . . . conflate the

separate novelty and obviousness inquiries under 35

U.S.C. §§ 102 and 103, respectively, with the step one

inquiry under § 101.” Id. at 1373 n.3.6

Defendants-Cross-Appellants have not made any

meaningful argument that the method claims 16 and 17

of the ’302 patent are patent-ineligible even if claim 3 is

patent-eligible. See, e.g., Defendants-Cross-Appellants’

Br. 66 (describing claim 3 of the ’302 patent as “more

high-level” than claims 16 and 17). Courts may treat

claims the same regardless of whether they are method

or system claims for the purposes of patent eligibility.

See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of

Canada (U.S.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (“The

6. The district court struck certain evidence regarding the

prior art Kerr-McGee system, an order that is not appealed, and

then did not find the remaining excerpts of the prior art system in

the record persuasive in showing the claimed blending steps were

conventional. See 101 Order at 490 n.3. As our analysis is focused

on what the language of the challenged claims captures, we do not

reach the parties’ dispute over this prior art system.

33a

Appendix A

equivalence of the asserted method and system claims is

also readily apparent. . . . The only difference between

the claims is the form in which they were drafted. The

district court correctly treated the system and method

claims at issue in this case as equivalent for purposes of

patent eligibility under § 101.”); cf. Alice, 573 U.S. at 226

(“Put another way, the system claims are no different

from the method claims in substance. . . . This Court has

long warned against interpreting § 101 in ways that make

patent eligibility depend simply on the draftsman’s art.”

(cleaned up) (citation omitted)). Thus, claims 16 and 17 are

directed to eligible subject matter for the same reasons

as claim 3.

Because we conclude under Alice step one that claims

3, 16, and 17 of the ’302 patent are not directed to an

abstract idea, we do not reach Alice step two. We affirm

the district court’s holding that claims 3, 16, and 17 of the

’302 patent are patent eligible under § 101.

We turn next to claims 18, 22, 31, and 32 of the ’629

patent and start with Alice step one. Defendants-CrossAppellants argue that these claims are directed to the

abstract idea of gathering and/or receiving blend data

and making a calculation with that data. Because Sunoco

concedes that claim 31 is representative for our § 101

analysis for the ’629 patent, our analysis focuses on claim

31. Oral Arg. at 42:18-42:32. Starting with Alice step one,

we agree that claim 31 of the ’629 patent is directed to an

abstract idea.

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In contrast to claim 3 of the ’302 patent, claim 31 of

the ’629 patent recites “[a] computer-implemented method

for blending a butane stream and a gasoline stream” that

includes: (1) “receiving a first measurement indicating a

vapor pressure . . .”; (2) “calculating a blend rate . . .”; (3)

“transmitting an instruction to a programmable logic

controller . . .”; and (4) “receiving a second measurement

indicating a vapor pressure . . . .” ’629 patent col. 16 ll.

8-21. Claim 31 does not recite the step of blending gasoline

and butane; nor does it recite where blending would

occur. Rather, claim 31 recites an algorithm that receives

measurements, calculates, and transmits an instruction

for adjusting a butane stream based on “receiving” and

“calculating” data. We have held similar algorithm and

data-focused claims ineligible. See In re Bd. of Trs. of

Leland Stanford Junior Univ., 989 F.3d 1367, 1372-73

(Fed. Cir. 2021) (collecting cases and explaining that

“[c]ourts have long held that mathematical algorithms

for performing calculations, without more, are patent

ineligible under § 101.”); PersonalWeb Techs., 8 F.4th at

1317 (“[W]e [have] explained that a process that started

with data, added an algorithm, and ended with a new

form of data was directed to an abstract idea.” (cleaned

up) (citation omitted)).

While the district court determined that this claim

is directed to the improved blending methods based

on the specification, see 101 Order at 491, we disagree.

Unlike claim 3 of the ’302 patent, which recites specific

components of a system, in a specific order so that butane

is blended at a specific point in the pipeline, and in a

specific manner to capture the invention’s improvements,

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Appendix A

claim 31 is written at a high level of generality and fails

to capture any specific improvements described in the

specification. For example, claim 31 does not recite if or

where in the pipeline butane is blended with gasoline. At

most, the claim recites an instruction that could be used

for blending and “distributing at a rack.” ’629 patent col.

16 l. 18.

Sunoco argues that the claim involves more than

gathering and processing data, and that DefendantsCross-Appellants ignore that the claim is specifically

about a process of blending butane with gasoline, which

is recited by the claim’s preamble. Appellant’s Reply

Br. 42-43. Sunoco warns against “disregard[ing] those

express claim elements [and] proceed[ing] at ‘a high level

of abstraction’ that is ‘untethered from the claim language’

and that ‘overgeneraliz[es] the claim.’” Appellant’s Reply

Br. 44 (fourth alteration in original) (quoting TecSec, Inc.

v. Adobe Inc., 978 F.3d 1278, 1295 (Fed. Cir. 2020)). Sunoco

argues that “the focus of the claim[] is determining the

RVP of a flowing gasoline stream to calculate how much

butane can be added, not the subsequent act or result of

blending,” which is all that is required. Id. (citing Free

Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355, 1363

(Fed. Cir. 2021)).

The claim’s preamble does not save it from abstraction

here. We agree that courts must be vigilant against

over generalizing what a claim is directed to in an

Alice analysis. However, “we have treated collecting

information, including when limited to particular content

(which does not change its character as information), as

36a

Appendix A

within the realm of abstract ideas.” Elec. Power Grp., v.

Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Here,

the claims recite a method “of gathering and analyzing

information of a specified content [in claim 31], then

displaying the results [by generating a report in claim 32],

and not any particular assertedly inventive technology for

performing those functions. The[ claims] are therefore

directed to an abstract idea.” Id. at 1354.

Because we hold that claim 31 is directed to an

abstract idea at Alice step one, we move to Alice step two.7

“In this step, we consider the elements of each claim both

individually and as an ordered combination to determine

whether the additional elements transform the nature of

the claim into a patent-eligible application.” CardioNet,

955 F.3d at 1368 (citations and quotation marks omitted).

As an initial matter, the district court did not reach

Alice step two. Sunoco thus contends that if we reach

this step, we should not analyze it in the first instance

but instead remand the issue to the district court. See

Appellant’s Reply Br. 59 (citing MyMail, Ltd. v. ooVoo,

LLC, 934 F.3d 1373, 1380 (Fed. Cir. 2019)). However, where

a patentee has argued that its claims are eligible under

step two as a matter of law, as Sunoco does here, we have

previously reached step two even when the district court

did not. See Free Stream, 996 F.3d at 1365-66.

Sunoco argues that claim 31 recites an inventive

concept at step two because the invention is directed to

7. The parties did not provide separate arguments under Alice

step two for the various claims on appeal.

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Appendix A

specific blending methods, not just automated calculations,

that are “directed to improved systems and methods” that

“blend more gasoline than would be possible with the prior

art.” Appellant’s Reply Br. 60 (emphasis removed) (first

quoting 101 Order at 490, 492; and then citing CosmoKey

Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091,

1098-99 (Fed. Cir. 2021) (“[C]laims recite an inventive

concept by requiring a specific set of ordered steps that go

beyond the abstract idea . . . and improve upon the prior

art.”)). We disagree.

Here, at Alice step two, we do not discern “an ‘inventive

concept’ sufficient to ‘transform’ the claimed abstract

idea into a patent-eligible [invention].” Alice, 573 U.S. at

221 (quoting Mayo Collaborative Servs. v. Prometheus

Lab’ys, Inc., 566 U.S. 66, 72, 79, 132 S. Ct. 1289, 182 L.

Ed. 2d 321 (2012)). While we agree that the invention as

disclosed in the specification describes “improved systems

and methods” that “blend more gasoline than would be

possible with the prior art,” the focus of our inquiry is on

claim 31. And as discussed above, what is actually claimed

does not capture the improvements described elsewhere

in the patent. The claim merely recites a generic method

of performing any butane blending (i.e., calculating a

blend rate after receiving a vapor pressure measurement

and transmitting an instruction adjusting the flow of the

butane stream), albeit done on a computer. The claim

limitations, analyzed alone and in combination, fail to add

“something more” to “transform” the claimed abstract

idea of gathering and/or receiving blend data and making

a calculation into “a patent-eligible [invention].” See Alice,

573 U.S. at 217, 221.

38a

Appendix A

Because we conclude that claim 31 is ineligible, and

the parties treat it as representative of claims 18, 22, and

32, we reverse the district court’s holding that claims 18,

22, 31, and 32 of the ’629 patent are eligible under § 101.

Finally, we turn to claim 3 of the ’686 patent and

again start with Alice step one. Defendants-CrossAppellants argue the claim is directed to the abstract

idea of gathering and/or receiving blend data and making

a calculation with that data. We disagree.

The ’686 patent does not share a specification

with the other two patents. Instead, the ’686 patent’s

specification describes a method for in-line blending of

butane and gasoline “at any point along a petroleum

pipeline,” ’686 patent col. 1 ll. 22-25, which allows for

“surprising versatility that can be used to blend butane

with petroleum products at practically any point along a

petroleum pipeline, regardless of variations in the flow

rate of gasoline . . . , the time of year . . . , or the ultimate

destination.” Id. at col. 3 ll. 17-23. The district court

highlighted “[o]ne embodiment [that] includes ‘periodically

determining’ the gasoline flow rate and vapor pressure so

that ‘the blend ratio and blend rate are both periodically

recalculated to account for differences within and among

batches in gasoline flow rate and gasoline vapor pressure.’”

101 Order at 493 (first quoting ’686 patent col. 3 ll. 52-64;

and then citing id. at col. 14 ll. 38-44).

The district court held that claim 3 captured

the described “unconventional methods” of the ’686

patent specification because it recited (1) “periodically

39a

Appendix A

determining said gasoline vapor pressure,” (2) a “gasoline

flow rate,” (3) “calculating a blend ratio based upon . . .

said gasoline vapor pressure[ ] and said allowable vapor

pressure,” (4) “‘blending’ the butane and gasoline streams

‘at a blending unit at said blend ratio to provide a blended

gasoline stream having a blended vapor pressure less

than or equal to said allowable vapor pressure,’” (5) a

processing unit that “generates pulses of flow rate data,”

and (6) “another processing unit that performs the steps

of ‘calculating a blend ratio’ and of ‘calculating a blend rate

. . . based upon said flow rate data.’” 101 Order at 493-94

(alteration and omissions in original) (quoting ’686 patent

col. 15 l. 61—col. 16 l. 23). We agree and conclude that claim

3 is directed to providing in-line blending notwithstanding

differences within and among batches in gasoline flow rate

and gasoline vapor pressure.

Claim 1, from which claim 3 depends, recites a method

for in-line blending of gasoline and a volatility modifying

agent, batches of different gasoline types, with different

f low rates and vapor pressures, requiring periodic

determinations of flow rates and vapor pressures and

calculating a blend ratio. Claim 1 also recites blending

the agent stream and gasoline stream at a blending unit,

and claim 3 adds first and second “information processing

unit[s],” the second for calculating the flow rate data and

the first for calculating blend ratios based on the flow rate

data. Based on this specific claim language as understood

in light of the specification, we conclude that claim 3 is

not directed to an abstract idea. Rather, claim 3 recites

specific technological improvements to address specific

problems that existed in providing in-line blending of

gasoline and a volatility modifying agent.

40a

Appendix A

As we hold that claim 3 is not directed to an abstract

idea at Alice step one, we need not address Alice step

two. Consistent with the specification, the claims are

directed to an improved in-line blending system that

allows for more “versatility” and for butane and gasoline

to be blended “at any point along a petroleum pipeline.”

We thus affirm the district court’s holding that claim 3 of

the ’686 patent is eligible under § 101.

Magellan and Powder Springs also contend on crossappeal that the district court erred in awarding preverdict supplemental damages to Sunoco for February

2019 to October 2021.

Assessing and computing supplemental damages “is

within the sound discretion of the district court.” Bayer

Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 985 (Fed.

Cir. 2021) (citation omitted); Stryker Corp. v. Davol Inc.,

234 F.3d 1252, 1259-60 (Fed. Cir. 2000) (reviewing an

award of supplemental damages for abuse of discretion). “A

district court abuses its discretion by making a clear error

of judgment in weighing relevant factors or in basing its

decision on an error of law or on clearly erroneous factual

findings.” Mentor Graphics Corp. v. Quickturn Design

Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998).

Defendants-Cross-Appellants argue that Sunoco

should be held to the damages number it calculated for

the jury at trial—i.e., multiplying the $0.02/gallon royalty

rate times the accused blend volumes through January

41a

Appendix A

2019—because Sunoco had possession of DefendantsCross-Appellants’ updated blend volumes through October

2021 prior to trial. Defendants-Cross-Appellants contend

that Sunoco had ample time after its damages expert’s

opinions were stricken and it received the updated volumes

data to attempt to authenticate or admit the data at trial.

Defendants-Cross-Appellants argue that the district

court’s assessment that it was “not sure [authentication]

efforts would have been successful” was insufficient to

grant Sunoco damages it had not proven. DefendantsCross-Appellants’ Br. 50 (alteration in original) (quoting

Damages Order, 2022 U.S. Dist. LEXIS 156988, [WL] at

*3). We are not persuaded.

The district court, having witnessed trial where

“[t]he jury awarded Sunoco’s exact damages number”

as “Sunoco’s counsel presented [it]” using the infringing

volumes that ended in January 2019, was left with “no doubt

that the jury only considered Defendants’ infringement

through January 2019 when assessing damages.”

Damages Order, 2022 U.S. Dist. LEXIS 156988, [WL]

at *3 (emphasis added) (citation omitted). The district

court then made three observations about the updated

blend volume data: (1) this information came in after fact

and expert discovery closed, (2) there was no witness at

trial or within subpoena range through whom Sunoco

could have introduced the new volumes, and (3) other

efforts to remedy an authentication problem may not have

been successful based on Defendants-Cross-Appellants’

objections practice. Thus, the district court determined

that Sunoco “had no practical means of presenting these

new volumes to the jury,” and “[b]ecause the jury only

42a

Appendix A

compensated Sunoco for infringement through January

2019, . . . supplemental damages are necessary to properly

compensate Sunoco.” 2022 U.S. Dist. LEXIS 156988, [WL]

at *3-4. Defendants-Cross-Appellants have not shown

the district court made a clear error in judgment, of law,

or in fact finding in reaching this conclusion, and we will

not second guess the district court’s assessment of the

proceedings before it. Accordingly, we affirm the district

court’s award of supplemental damages.

Sunoco’s Direct A ppeal

As we affirm the district court’s determination that

claims 3, 16, and 17 of the ’302 patent and claim 3 of the

’686 patent are eligible under § 101, supra, we now turn

to Sunoco’s direct appeal. Sunoco challenges a litany of

the district court’s holdings on damages, arguing that the

court: (1) abused its discretion by excluding Dr. Ugone’s

opinions relying on Sunoco’s unapportioned BSAs; (2)

abused its discretion by excluding Dr. Ugone’s lost profits

opinions; (3) abused its discretion by excluding Dr. Ugone’s

reasonable royalty opinions; (4) erred by not instructing

the jury on lost profit damages and by prohibiting Sunoco

from asking the jury for an intermediate royalty based

on Sunoco’s BSAs and Buckeye License; (5) abused its

discretion by excluding Dr. Ugone’s lost opportunity

cost opinion against Powder Springs; and (6) abused

its discretion by not awarding enhanced damages for

Defendants-Cross-Appellants’ willful infringement.

Sunoco also challenges the district court’s JMOL of no

infringement as to claims 16 and 17 of the ’302 patent and

claims 18 and 22 of the ’629 patent.

43a

Appendix A

“For issues not unique to patent law, we apply the law

of the regional circuit in which this appeal would otherwise

lie.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 841

(Fed. Cir. 2010). This includes evidentiary rulings. Tokai

Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1364 (Fed.

Cir. 2011). The Third Circuit applies an abuse-of-discretion

standard to review evidentiary rulings, reversing

decisions resting “upon a clearly erroneous finding of fact,

an errant conclusion of law or an improper application of

law to fact.” Pineda v. Ford Motor Co., 520 F.3d 237, 243

(3d Cir. 2008) (quoting In re TMI Litig., 193 F.3d 613, 666

(3d Cir. 1999)). “[A] trial judge acts as a ‘gatekeeper’ to

ensure that ‘any and all expert testimony or evidence is not

only relevant, but also reliable.’” Id. (quoting Kannankeril

v. Terminix Int’l, Inc., 128 F.3d 802, 806 (3d Cir. 1997)).

“We review a district court’s decision on [patent]

damages for ‘an erroneous conclusion of law, clearly

erroneous factual findings, or a clear error of judgment

amounting to an abuse of discretion.’” Juicy Whip, Inc.

v. Orange Bang, Inc., 382 F.3d 1367, 1370 (Fed. Cir.

2004) (quoting Rite-Hite Corp. v. Kelley Co., 56 F.3d

1538, 1543 (Fed. Cir. 1995) (en banc)). When we “review

a damages determination, the clearly erroneous standard

applies to the review of the amount of damages, while

the abuse of discretion standard applies to the review

of the methodology chosen to compute damages.” In re

Cambridge Biotech. Corp., 186 F.3d 1356, 1369 (Fed. Cir.

1999). “We review a district court’s decision regarding

enhanced damages for an abuse of discretion.” Ironburg

Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1300 (Fed.

Cir. 2023).

44a

Appendix A

We review “the legal sufficiency of jury instructions

on an issue of patent law without deference to the district

court.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304

(Fed. Cir. 2006) (en banc). “A jury verdict will be set

aside only if the jury instructions were ‘legally erroneous’

and the ‘errors had prejudicial effect.’” Ericsson, Inc. v.

D-Link Sys., Inc., 773 F.3d 1201, 1225 (Fed. Cir. 2014)

(quoting Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356,

1363 (Fed. Cir. 2004)).

“We review denial of post-trial motions for JMOL

and new trial under regional circuit law.” Finjan, Inc. v.

Secure Computing Corp., 626 F.3d 1197, 1202 (Fed. Cir.

2010) (citations omitted). “In the Third Circuit, review

of denial of JMOL is plenary.” Id. (citations omitted).

JMOL is “‘granted only if, viewing the evidence in the

light most favorable to the nonmovant and giving it the

advantage of every fair and reasonable inference, there is

insufficient evidence from which a jury reasonably could

find’ for the nonmovant.” TransWeb, LLC v. 3M Innovative

Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016) (quoting

Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d

Cir. 1993)). Infringement is a question of fact, “reviewed

for substantial evidence when tried to a jury.” ACCO

Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1311

(Fed. Cir. 2007).

We turn first to Sunoco’s assertion that the district

court erred by striking Dr. Ugone’s opinions relying on

Sunoco’s BSAs as comparable licenses from which to adopt

45a

Appendix A

the BSA royalty rate and royalty base—i.e., a 40/60 to

50/50 profit-share on the extra gasoline created—without

further apportionment. Sunoco asserts its expert’s

opinions were erroneously struck for two reasons.

First, Sunoco argues that because its BSAs “are the

epitome of the ‘comparable’ licenses,” they “may be the

most effective method of estimating the asserted patent’s

value” and need not be apportioned. Appellant’s Br. 23-24

(first quoting LaserDynamics, 694 F.3d at 79; and then

quoting Commonwealth Sci. & Indus. Rsch. Organisation

v. Cisco Sys., Inc., 809 F.3d 1295, 1303-04 (Fed. Cir. 2015)).

Sunoco argues that any question over “[t]he degree of

comparability of the . . . license agreements[,] as well as

any failure on the part of [Sunoco’s] expert to control for

certain variables[,] are factual issues best addressed by

cross examination and not by exclusion.” Appellant’s Br.

24 (first and third alterations and omission in original)

(quoting ActiveVideo Networks, Inc. v. Verizon Commc’ns,

Inc., 694 F.3d 1312, 1333 (Fed. Cir. 2012)). Sunoco compares

this case to Commonwealth to argue that it was an abuse

of discretion to exclude Dr. Ugone’s opinions because

the BSAs tracked actual marketplace negotiations over

sharing the profits from Sunoco’s patented inventions.

In the alternative, Sunoco argues that it was an abuse

of discretion to exclude Dr. Ugone’s opinions under Vectura

Limited v. GlaxoSmithKline LLC, 981 F.3d 1030 (Fed.

Cir. 2020), which explains that prior licenses can have

“built-in apportionment” sufficient to meet this court’s

requirements. Appellant’s Br. 26 (citing 981 F.3d at 103942). Sunoco argues that because negotiators for its “BSAs

46a

Appendix A

recognized the only thing that prospective licensees

needed was rights to Sunoco’s patents, and settled upon on

[sic] a royalty rate and base combination that embodied the

market’s value of Sunoco’s patents,” Appellant’s Br. 27-28,

“apportionment principles had already been negotiated

into the BSA methodology.” Appellant’s Br. 28-29.

We are not persuaded by either argument. While

Sunoco attempts to frame its BSAs as only accounting

for the value of its patents, it is undisputed that the BSAs

provide Sunoco’s customers with many services and

proprietary rights beyond patent rights. These include

(1) designing, engineering, constructing, and maintaining

the blending systems; (2) providing regulatory oversight

support; (3) providing maintenance and support services;

(4) providing risk management services; (5) providing

other customer services; (6) providing hedging services

on butane; and (7) allowing the use of its unclaimed,

proprietary blending algorithm. See, e.g., J.A. 5244; J.A.

5206-08; J.A. 5222; J.A. 5343 (Meyers Dep. Tr. 141:7-20).

Indeed, evidence from Sunoco itself recognizes that (1) its

BSAs “provide a basket of services to make it as easy as

possible on [its] customers,” J.A. 5237-38 (Meyers Dep. Tr.

53:16-54:7); (2) offering these services together “is more

efficient . . . because [Sunoco] ha[s] the supply and the

logistics and the know-how . . . [, and] most of [Sunoco’s]

blend partners recognize [its] expertise in this area,” J.A.

5330-31 (Collela Dep. Tr. 536:25-537:5); (3) “[t]he results of

the blending, because of [the proprietary] algorithms, . . .

was the selling point,” J.A. 5343 (Meyers Dep. Tr. 139:18141:2); and (4) the proprietary algorithm helps blend

butane to a customer’s specification, which is a selling

47a

Appendix A

point, J.A. 5336 (Buchanan Dep. Tr. 70:9-72:22). See also

J.A. 23-24 (district court crediting this evidence). 8 None

of the case law cited by Sunoco allows a party to avoid

apportionment when it will result in a damages award that

exceeds the value attributable to the infringing features of

the accused product. See, e.g., LaserDynamics, 694 F.3d at

67 (“[T]he patentee . . . must in every case give evidence

tending to separate or apportion the defendant’s profits

and the patentee’s damages between the patented feature

and the unpatented features, and such evidence must be

reliable and tangible, and not conjectural or speculative.”

(emphasis added) (omission in original) (citation omitted));

Commonwealth, 809 F.3d at 1301 (“Consequently, to be

admissible, all expert damages opinions must separate the

value of the allegedly infringing features from the value

of all other features.”). In view of the largely undisputed

record evidence showing that the BSAs encompass more

than just the value of the asserted patents, the district

court did not abuse its discretion in excluding Dr. Ugone’s

opinions that were premised on using the total profitshare from the unapportioned BSAs as unreliable under

our precedent.

This conclusion accords with our prior decision in U.S.

Venture II, where we held that a different district court did

not err in refusing to grant Sunoco (1) lost profit damages

or (2) a reasonable royalty rate based on its unapportioned

BSAs because the BSAs “do not accurately reflect the

8. While not the focus of the parties’ apportionment dispute

here, we note that the BSAs also provide a license to other patents

in Sunoco’s butane blending portfolio in addition to the asserted

patents. See J.A. 5206-07.

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Appendix A

value of the patented invention.” 32 F.4th at 1180. There,

we noted that Sunoco’s “[BSAs] reflect a bundle of goods

and services beyond just the patented invention—e.g., the

purchase and sale of butane, equipment maintenance and

monitoring, and a license to more than just the patented

technology.” Id. (citation omitted).

We disagree, however, with Defendants-CrossAppellants’ contention that Sunoco is collaterally estopped

from arguing that its damages should be tied to the

unapportioned BSAs. Collateral estoppel applies when

“(1) a prior action presents an identical issue; (2) the

prior action actually litigated and adjudged that issue;

(3) the judgment in that prior action necessarily required

determination of the identical issue; and (4) the prior

action featured full representation of the estopped party.”

VirnetX Inc. v. Apple Inc., 909 F.3d 1375, 1377 (Fed. Cir.

2018) (quoting Stephen Slesinger, Inc. v. Disney Enters.,

Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). At a minimum, we

are unpersuaded that Defendants-Cross-Appellants can

show factor one is satisfied here. First, our prior decision

in U.S. Venture II stemmed from different infringement

acts against a different defendant. Second, that decision

was also on appeal from a bench trial where the district

court, acting as a fact finder, credited the defendant’s

expert’s opinions over Dr. Ugone’s opinions, which

presents a different legal standard than the case here,

where the district court was acting as a gatekeeper to

admissibility prior to a jury trial. See Kroy IP Holdings,

LLC v. Groupon, Inc., 127 F.4th 1376, 1380 (Fed. Cir.

2025) (“Collateral estoppel generally does not apply when

the second action involves application of a different legal

standard.”).

49a

Appendix A

We next turn to Sunoco’s challenge to the district

court’s exclusion of Dr. Ugone’s lost profits opinions. 9

Sunoco presents five arguments on appeal for why the

district court abused its discretion in excluding Dr.

Ugone’s lost profits opinions: (1) Dr. Ugone established a

prima facie case for lost profits under the Panduit factors;

(2) under Mentor, apportionment is satisfied when the

first two Panduit factors are established; (3) Dr. Ugone

presented enough evidence in support of his opinions

that Sunoco’s patents were the key drivers of demand for

Sunoco’s BSAs to go to the jury; (4) Dr. Ugone established

that apportionment was not necessary because Sunoco

could receive lost profits on the other BSA services

as convoyed sales; and (5) Dr. Ugone appropriately

apportioned Sunoco’s damages request in his supplemental

report. We take each issue in turn.

Sunoco contends that Dr. Ugone established a prima

facie case of “but for” causation for lost profits by opining

on how the Panduit factors were met. As part of these

opinions, Dr. Ugone calculated that Sunoco would have

averaged a per-gallon profitability that ranged from $0.25/

gallon (from a 40/60 profit-share) to $0.28/gallon (from

a 50/50 profit-share) but for infringement, resulting in

lost profits of $150.3 to $166.7 million. See J.A. 7503-14

¶¶ 107-16.

9. Sunoco did not seek lost profits from Powder Springs. See

Appellant’s Br. 31 n.2.

50a

Appendix A

“Under the Panduit test, a patentee is entitled to lost

profit damages if it can establish four things: (1) demand

for the patented product; (2) absence of acceptable noninfringing alternatives; (3) manufacturing and marketing

capability to exploit the demand; and (4) the amount of

profit it would have made.” Mentor Graphics Corp. v.

EVE-USA, Inc., 851 F.3d 1275, 1285 (Fed. Cir. 2017)

(quoting Panduit Corp. v. Stahlin Bros. Fibre Works,

Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)). “Damages under

Panduit are not easy to prove.” Id. (collecting support).

The district court did not abuse its discretion in

striking Dr. Ugone’s lost profits opinions under the Panduit

factors for the same reasons discussed above related to

his opinion on reasonable royalty and comparable licenses.

Dr. Ugone used the full profit-share of the unapportioned

BSAs to calculate Sunoco’s lost profits. While Sunoco

may be able to show demand for its BSAs, the BSAs are

not coextensive with the asserted patents and instead

encompass more services and products than the patented

inventions. Thus, there was no prima facie showing under

Panduit factor one—demand for the patented product—

or Panduit factor four—the amount of profit Sunoco would

have made—without apportioning the value of the patents

from the other services.

Nor does the case law relied on by Sunoco compel

a different result. In Versata Software, Inc. v. SAP

America, Inc., 717 F.3d 1255 (Fed. Cir. 2013), the

patentee’s damages expert isolated from the sales of

the accused product the value of the patentee’s software

product—software that the parties apparently did not

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dispute encompassed only the claimed invention—before

separately calculating what additional revenue streams

would follow on from a software sale through maintenance

and consulting agreements. 717 F.3d at 1266-67. Similarly,

it does not appear to have been a dispute in Georgetown

Rail Equipment Co. v. Holland L.P., 867 F.3d 1229 (Fed.

Cir. 2017), that the comparable contract used for the lost

profit calculation would include services other than those

rendered by the patented invention. We are not holding

that a prima facie case for lost profits can never be made

based on comparable licenses that take into account

“sound economic proof confirmed by the historical record”

or the sale of other services. Versata, 717 F.3d at 1267

(citation omitted); Georgetown, 867 F.3d at 1243; see also

Appellant’s Br. 32. We hold only that, based on the record

here, the district court did not err in requiring Sunoco

to separately apportion the other services out from the

patented inventions in its BSAs.

Sunoco contends, however, that in proving the first two

Panduit factors, Dr. Ugone satisfied the apportionment

requirement for his lost profit opinions under Mentor. But

Mentor does not fit the facts of this case.

Mentor’s unusual facts were “remarkably simple”—

in short, “[t]he jury found, and [the defendant] d[id] not

dispute on appeal, that Mentor satisfied all of the Panduit

factors with regard to the sales to Intel for which the jury

awarded lost profits.” 851 F.3d at 1286-87. These facts

included that:

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Intel would not have purchased the [defendant’s]

emulator system without the two patented

featu res a nd that there were no other

alternatives available. Despite hearing evidence

that there were many valuable and important

features in the emulator system, this jury

found that if [defendant] could not have sold

its emulator system with the two infringing

features (Mentor’s patented features), Intel

would have bought the emulators from Mentor.

Id. at 1287. In Mentor, the relevant challenge on appeal

was whether, because the “infringing features were just

two features of [the accused] emulators that comprise[d]

thousands of hardware and software features,” further

apportionment was needed. Id.

In our analysis, we acknowledged that “apportionment

is an important component of damages law generally, and

we believe it is necessary in both reasonable royalty and

lost profits analysis.” Id. at 1287-88 (first citing Ericsson,

773 F.3d at 1226 (“Apportionment is required even for

non-royalty forms of damages.”); and then citing VirnetX,

Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014)

(“No matter what the form of the royalty, a patentee must

take care to seek only those damages attributable to the

infringing features.”)). We then narrowly held (1) that

“[i]n this case, apportionment was properly incorporated

into the lost profits analysis and in particular through the

Panduit factors,” and (2) “that on the undisputed facts of

this record, satisfaction of the Panduit factors satisfies

principles of apportionment: Mentor’s damages are tied

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to the worth of its patented features.” Id. at 1288. We

also emphasized that Mentor was “a highly factual case,

and [the defendant] did not appeal any of the jury’s fact

findings relating to damages.” Id. at 1289.

There are no undisputed facts on the Panduit factors

here. Indeed, Magellan contests both Panduit factors one

and two. And again, as to factor one, Dr. Ugone did not

start his analysis with demand for the claimed inventions;

instead, he and Sunoco sought to conflate demand for

the claimed inventions with the demand for the BSAs

as a whole. But they cannot start with the demand for

undisputedly more than the patented inventions—indeed,

for an entire basket of services—to base patent damages

on. See, e.g., VirnetX, 767 F.3d at 1326 (“[A] patentee must

take care to seek only those damages attributable to the

infringing features.”).10

Thus, Dr. Ugone did not reliably show that Sunoco’s

“damages are tied to the worth of its patented features.”

Mentor, 851 F.3d at 1288; see also WesternGeco L.L.C. v.

ION Geophysical Corp., 913 F.3d 1067, 1073 & n.2 (Fed.

Cir. 2019) (citing Mentor in a footnote after explaining that

“[i]f the application of the Panduit factors does not result

in the separation of profits attributable to the patented

device and the profits attributable to providing other

aspects of the surveys . . . , it appears that apportionment

10. As to factor two, Magellan points out that following the

jury’s verdict of infringement, Powder Springs switched to a

non-infringing manual blending operation, indicating that there

were acceptable non-infringing alternatives. Defendants-CrossAppellants’ Br. 36 (citing J.A. 21263-64; J.A. 21283-85).

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is necessary.”). And while Sunoco argues that the district

court erred in “dismiss[ing] Mentor because Sunoco was

seeking lost profits associated with its BSAs,” as “demand

[for the BSAs] is the same demand for the rights to

Sunoco’s patents provided under the BSAs,” Appellant’s

Br. 35, that argument is belied by the record.

Sunoco further argues that apportionment was not

necessary because Dr. Ugone’s opinion that Sunoco’s

patents were the key drivers of demand for Sunoco’s

BSAs under the entire market value rule was reliable.

We disagree.

“The entire market value rule allows for the recovery

of damages based on the value of an entire apparatus

containing several features, when the feature patented

constitutes the basis for customer demand.” Lucent

Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336 (Fed.

Cir. 2009) (quoting TWM Mfg. Co. v. Dura Corp., 789 F.2d

895, 901 (Fed. Cir. 1986)). We have explained that “[t]he

law requires patentees to apportion . . . to a reasonable

estimate of the value of its claimed technology,” unless

the patentee can “establish that its patented technology

drove demand for the entire product.” VirnetX, 767 F.3d

at 1329. “[S]trict requirements limiting the entire market

value exception ensure that [a damages request] ‘does not

overreach and encompass components not covered by the

patent.’” Id. at 1326 (quoting LaserDynamics, 694 F.3d

at 70). “If the product has other valuable features that

also contribute to driving consumer demand . . . then the

damages for patent infringement must be apportioned to

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reflect only the value of the patented feature. This is so

whenever the claimed feature does not define the entirety

of the commercial product.” Power Integrations, 904 F.3d

at 978.

Sunoco argues that Dr. Ugone explained that the

granted patent rights were the key driver for the BSAs,

see Appellant’s Br. 37 (citing J.A. 8976-85 ¶¶ 7-19), and

relied on fact witness testimony from Sunoco personnel

that included (1) Sunoco’s former Director of Business

Development James Myers’s testimony that “I don’t think

we have a business without those patents,” and that “a

hundred percent of our income, in my opinion, probably

is related to those patents,” J.A. 8984 ¶ 18(a); (2) Myers’s

testimony that he believed Phillips 66 Company entered

into a BSA to ensure that it was not infringing Sunoco’s

patents, J.A. 8981 ¶ 14; and (3) Sunoco’s former Vice

President for Sunoco’s Northeast Operations Joseph

Colella’s testimony that “Kinder Morgan’s license with

Sunoco ‘really reflects the strength of the patents,’” J.A.

8984 ¶ 18(d). See Appellant’s Br. 38-39. Sunoco also points

to Dr. Ugone’s reliance on evidence that Magellan assumed

Perimeter Terminal, LLC’s pre-existing BSA with Sunoco

on terms more favorable to Sunoco. Appellant’s Br. 39

(citing J.A. 8978-79 ¶ 9(b)-(c)). Sunoco contends that this

was enough to “‘reliably show’ that the licensed patent

rights were the ‘sole’ driver of BSA demand[, which] is a

jury question.” Appellant’s Br. 39 (citing Marine Polymer

Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1360 (Fed.

Cir. 2012)). Thus, Sunoco argues that the district court

overstepped its gatekeeping role in excluding Dr. Ugone’s

opinions.

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We disagree. “[S]trict requirements limit[] the entire

market value exception.” VirnetX, 767 F.3d at 1326. We

do not believe the district court abused its discretion

in requiring Dr. Ugone’s opinions to adhere to those

requirements to reach the jury; indeed, it is part of the

court’s “gatekeeping obligation” to ensure as “a critical

prerequisite . . . that the underlying methodology be

sound.” Id. at 1328. And where it is not, “the district court

should . . . exercise[] its gatekeeping authority to ensure

that only theories comporting with settled principles of

apportionment [are] allowed to reach the jury.” Id. Here,

the district court determined that Dr. Ugone’s entire

market value opinions were unreliable because they were

speculative as to the importance of the patents in driving

demand for Sunoco’s BSAs. The court’s determination

was supported by evidence and admissions in the record

that features of the BSAs other than the asserted patents

helped drive demand for Sunoco’s customers to enter into

the BSAs. The district court explained that evidence

from Sunoco itself showed that its services are “valued

for their non-patented features, such as their expertise

and algorithm,” and that even Dr. Ugone “recognized in

formulating his expert opinions that Sunoco’s algorithm

and software are necessary and valuable components to

what Sunoco includes in its [BSAs].” J.A. 23-24 (citation

omitted). The district court’s determination is not

undermined by the above self-serving testimony from

Sunoco’s own witnesses. None of that testimony states

that the asserted patents are the sole driver of demand for

the BSAs and Sunoco’s other services have no value. And,

while not required, Sunoco did not present testimony from

the customers whose state of mind Sunoco’s employees and

former employees purported to speak to. The evidence

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Sunoco relies on, when viewed against Sunoco’s admissions

about other meaningful services provided by the BSAs, is

unreliable to show that “the claimed feature . . . define[s]

the entirety of the commercial product [or service].” Power

Integrations, 904 F.3d at 978. Thus, under the facts of

this case, the district court did not abuse its discretion in

holding that apportionment was required.

Sunoco also argues that Dr. Ugone established that

apportionment was not necessary because Sunoco could

receive lost profits on the other BSA services as convoyed

sales.

“A patentee may recover lost profits on unpatented

components sold with a patented item, a convoyed sale,

if both the patented and unpatented products ‘together

were considered to be components of a single assembly or

parts of a complete machine, or they together constituted

a functional unit.’” Am. Seating Co. v. USSC Grp., Inc.,

514 F.3d 1262, 1268 (Fed. Cir. 2008) (quoting Rite-Hite, 56

F.3d at 1550). “Our precedent has not extended liability

to include items that have essentially no functional

relationship to the patented invention and that may have

been sold with an infringing device only as a matter of

convenience or business advantage.” Id. (quoting RiteHite, 56 F.3d at 1550).

As with any damages opinion, however, an expert

must still present a reliable methodology. See Daubert,

509 U.S. at 589-93. And here, merely declaring certain

services to be convoyed sales did not remove the need

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to provide guidance for the fact finder on what the value

was of the non-patented products versus the patented

product in order for Dr. Ugone’s opinions to be reliable.

Indeed, review of Dr. Ugone’s reports shows he attributed

a value to only two services as “convoyed sales”: Sunoco’s

hedging service and its butane supply service. J.A. 897276 ¶ 5(b). To be sure, Dr. Ugone also provided general

statements like “[u]nder a lost profits theory of damages,

these services would represent convoyed sales.” J.A. 8986

¶ 20. But he provided no breakdown for what the value of

each “convoyed sale” would be for any of the other various

unpatented services and features provided by the BSAs.

While “we note that we have never required absolute

precision in [applying the principles of apportionment],”

VirnetX, 767 F.3d at 1328, the issue here is that if the

jury were to determine that only some (or none) of the

extra services were in a functional relationship with the

patented inventions, it would have no guidance on how to

determine what to award in damages.

As Dr. Ugone provided no way to determine what

amount to award for each service if it was found to be

in a functional unit with the patented inventions versus

what to award for just the patented inventions, the district

court did not abuse its discretion in striking his opinions

as unreliable.

Finally, Sunoco challenges the district court’s

decision striking Dr. Ugone’s apportionment opinions in

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his supplemental report. In his supplemental report, Dr.

Ugone assigned value for Sunoco’s hedging services at

$0.02/gallon and for its butane supply/certification services

at $0.01/gallon. See J.A. 8991-93 ¶ 26(d)-(e); J.A. 8987-88

¶¶ 22-24. Dr. Ugone opined that there was no separate

value for any other features of Sunoco’s BSAs apart from

its patented system. The district court determined that

this was unreliable, as at a minimum, Sunoco’s blending

algorithm was a feature that Sunoco’s own witnesses

touted as a selling point and could not be considered

part of the patented system because it was an unclaimed

trade secret.11 See J.A. 24-25 (citation omitted). For all the

reasons previously discussed about requiring an appellant

to ensure “damages are tied to the worth of its patented

features,” Mentor, 851 F.3d at 1288, we see no abuse of

discretion in this exclusion.

Moreover, Sunoco and Dr. Ugone were warned that

they needed to apportion the value of

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