R. J. Reynolds Vapor Company v. Altria Client Services LLC

Most products are made up of numerous components and features, patented and unpatented both. Their commercial success may be attributable to consumer demand for their patented features, or demand for unpatented features, or even savvy marketing. Consistent with longstanding principles of tort damages, the Patent Act contains a damages provision entitling patent owners to damages only for what they actually invented: “damages adequate to compensate for the infringement.” 35 U.S.C. § 284 (emphasis added). These damages may take the form of “a reasonable royalty for the use made of the invention by the infringer.” Id. (emphasis added). For nearly 150 years, this Court has required patent damages to be apportioned, holding that patent owners seeking damages “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.” Garretson v. Clark, 111 U.S. 120, 121 (1884) (emphasis added). The questions presented are:

1. Does the Federal Circuit’s judicially created “built-in apportionment” exception, which allows patent owners to use unrelated prior licenses to prove damages without providing “evidence tending to separate or apportion” the patent’s contribution, violate Garretson v. Clark’s requirement that apportionment “must in every case” be shown?

2. Alternatively, in light of the Federal Circuit’s intervening en banc decision in EcoFactor, Inc. v. Google LLC, 137 F.4th 1333, 1339-40, 1346 (2025)—