Apple Inc. v. VirnetX Inc., et al.

A patented invention often makes but a small contribution to a complex end-product’s value. Thus, for well over a century, this Court has enforced the rule that a patentee must apportion damages for infringement so that any recovery is limited only to the value of its patented invention, not the value created by the numerous other features of an end-product in which the patented invention is included. The Federal Circuit, however, now permits patentees to recover damages that extend far beyond the value of the patented invention whenever the patentee proves damages based on prior licenses, as they commonly do. The question presented is whether the Federal Circuit’s reliance on prior licenses to ascertain infringement damages, without satisfying apportionment rules, conflicts with this Court’s precedent requiring apportionment “in every case.” Garretson v. Clark, 111 U.S. 120, 121 (1884).

The Patent and Trademark Office (PTO) may invalidate patent claims after issuing them. This Court has held that when patent claims are invalidated, the invalidation applies in pending litigation. The question presented is whether intervening PTO invalidations apply in all pending cases, including appeals that remain pending at the rehearing or certiorari stage.