"Nine neither changed its position on this issue between the trial and appellate levels nor forfeited its argument that “internal diameter” is a measured diameter . . . the intrinsic evidence does not clearly require “internal diameter” to have two different meanings . . . Because the intrinsic record was not clear that “internal diameter” should carry different meanings in different portions of the claims of the ’445 patent, the district court erred by holding that the term “can refer to both an inner surface and a measured diameter” . . . Instead, we conclude that the plain meaning of “internal diameter” is a “measured diameter” across the width of the casing string."

"Nine proposes the same construction here as it did to the district court . . . Because the issue was fully litigated at the district court, Nine has preserved its challenge to the district court’s construction on appeal . . . On the merits, nothing in the intrinsic record requires a size limitation on casing string . . . NCS argues that the extrinsic evidence demonstrates that persons of ordinary skill in the art would understand “casing string” to have a size of ≥ 4.5 inches in diameter, “because wellbores that are lined with casing string have a standard size, and tubing tools for completing well operations have to fit inside of the casing string so they can be run downhole” . . . NCS primarily relies on industry catalogs . . . The problem with NCS’s position is that, even if those catalogs were evidence of definitional plain meaning rather than mere commonality, any such definition is explicitly contradicted by the specification."

"[In Sanho] Prior to the filing date, the inventor testified that he “sent to Sanho via private courier a finished version of the [HyperDrive]” and alleged a prior public disclosure . . . Although there was no confidentiality or nondisclosure agreement, there was no teaching of the features of the invention to others beyond Sanho . . . On these facts, we [did] not think it [was] a close question . . . . [T]he sale of the HyperDrive here did not publicly disclose the subject matter[.]" . . . In Sanho, we did “not decide exactly what is necessary for demonstrating that a sale publicly disclosed the relevant subject matter, or whether to apply the prevailing standard for when a printed publication is sufficiently publicly accessible to qualify as prior art.”

"As in Sanho, there is no evidence that AirLocks were widely distributed or placed where the public could examine them. Instead, NCS’s CEO testified that, even when sold to Tundra, the AirLock was delivered in a sealed black tube that would have to be cut open . . . NCS has not identified any record evidence that, for example, the public would be able to understand from the black tube that there was a “rupture disc [ ] configured to disengage from sealing engagement when exposed to a pressure greater than a hydraulic pressure in the casing string after the casing string has been positioned in the wellbore and the region of the tubular member where the rupture disc is attached has a larger internal diameter than the internal diameter of the casing string” . . . Thus, as in Sanho, while there was no non-disclosure agreement, there was no teaching."

"A&M granted TexasLDPC an exclusive license to the asserted patents and copyrights in exchange for equity in TexasLDPC, a percentage of sublicense royalties, and a percentage of any money recovered from enforcing the asserted patents and copyrights . . . A&M maintains the option to terminate the Agreement if TexasLDPC “fails to exert commercially reasonable efforts to achieve any milestone” by the established deadline . . . if TexasLDPC failed to record net sales or sublicensing revenue by 2021, A&M also had the option to terminate the Agreement “unless [TexasLDPC] is exercising commercially reasonable efforts to enforce Copyrights or Patent Rights or seek collections . . . Though TexasLDPC undisputedly met the milestones outlined in § 5.01,3 by summer 2019, TexasLDPC exhausted its capital and had been unable to secure any customers or sublicensees . . . Defendants alleged that TexasLDPC’s pivot to enforcement . . . triggered the Agreement’s immediate termination under § 8.03(a)(iii), because TexasLDPC “cease[d] its business operations” . . . After a hearing on Defendants’ 12(b)(1) argument, TexasLDPC filed a supplemental agreement (nunc pro tunc agreement) between itself and A&M, asserting the contract term “business operations” always included enforcement. Id. TexasLDPC claimed this nunc pro tunc agreement had retroactive effect and thus cured any jurisdictional defect . . . the district court ultimately determined that TexasLDPC lost its legal interest in the case when it shifted its business to enforcement, because the contract language and extrinsic evidence demonstrated that the contract ended automatically . . . Further, the district court deemed the nunc pro tunc agreement ineffectual.”

"[T]he Agreement conveyed “incomplete rights” because: (i) it barred suit against Marvell [a preexisting nonexclusive licensee]; (ii) it reserved to A&M the exclusive right to enforce the Marvell license; and (iii) it reserved to A&M the right to develop the patented technology." (my clarification)

"While the “all substantial rights” inquiry in this case is a close call, the rights-grant in this case is most comparable to Luminara . . . TexasLDPC’s right to sue is essentially unfettered, thereby protecting Defendants from the possibility of facing multiple lawsuits on the same patents. A&M retains the right to participate in certain lawsuits, but A&M’s participation is limited by consent from Texas’s Attorney General, and A&M can only initiate litigation against Marvell . . . The district court determined the Agreement did not grant “all substantial rights” because A&M retained the right to practice the patents and the sole ability to enforce the Marvell license. This was error. In accordance with Luminara, A&M’s retained right to practice the asserted patents is not a “substantial right requiring joinder,” because the threat of the patents’ invalidation does not endanger that right . . . While A&M retains the sole right to bring suit against Marvell, this retained right as to just a single previous licensee has limited effect on TexasLDPC’s substantial patent rights"

"TexasLDPC insists that the district court’s reliance on the inability to obtain certain discovery information from A&M was in error, because it is unrelated to whether the parties can be accorded proper relief . . . Defendants and the district court both suggest that TexasLDPC’s reliance upon a damages theory consisting of a reasonable royalty based on a hypothetical negotiation—assessed using the GeorgiaPacific factors—has made evidence controlled by A&M essential to the district court’s damages calculation . . . Rule 19 is not a discovery tool . . . We agree that Rule 19 “does not list the need to obtain evidence from an entity or individual as a factor bearing upon whether or not a party is necessary or indispensable to a just adjudication” . . . even if we agreed with Defendants that additional licensing information held exclusively by A&M is relevant to other Geogia-Pacific factors, Defendants conceded that A&M already produced the only two A&M licenses directly related to the asserted patents . . . The mere fact that A&M may possess certain information does not turn an absent party into one that is necessary under Rule 19(a)."

"[A]rgues that the district court erred in its (1) conclusion that the preambles of claims 1 and 10 (which depends from claim 1) of the ’913 patent and claim 47 of the ’022 patent are limiting and (2) construction of the term “universal.” "

"[t]he preamble at issue furnishes essential meaning to the claim. The claim does not merely recite a gripper with a plurality of prongs and a screw guide. It recites one that is, as the district court explained, “capable of manipulating and inserting ‘a universal, intervertebral bone fusion spacer’ into a disc space” . . . The “Background of the Invention” section describes “[t]he present invention” as relating “to a unique universal bidirectional screw (BDS) system” (emphasis CAFC's) . . . We conclude that because the drafter “cho[se] to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.” (emphasis in original)."

"“[U]niversal[ity]” is a fundamental characteristic of the claimed invention and thus, even if considered alone, we would conclude that it is limiting . . . Moskowitz argues that the district court’s construction incorrectly requires “a hypothetical one-size-fits-all intervertebral bone fusion spacer/bi-directional transvertebral screw fusion device to be suitable for implantation in every region of the spine for every patient” . . . We see no error in the district court’s construction. The district court pointed to the patents’ specifications, which provide for multiple uses in all three spinal regions . . . the patents unambiguously describe the device as being adaptable across spinal regions and usable with multiple surgical approaches. That adaptability makes the design “universal.”"

"Versata argues that under both the Defend Trade Secrets Act and Michigan Uniform Trade Secrets Act, it is allowed to pursue unjust enrichment damages as a matter of statutory right. We agree with Versata that it was entitled to pursue unjust enrichment damages; the district court legally erred when it precluded Versata from doing so . . . We . . . conclude that Versata may seek unjust enrichment damages under the DTSA and the MUTSA as a matter of law . . . The district court’s reliance in this case on precedent where the parties’ licensing history was used to calculate damages to categorically preclude recovery of unjust enrichment damages is misplaced."

"Versata argues that the district court erred in reducing the jury award because it presented sufficient evidence for the jury to accurately calculate damages. We agree and conclude that the district court erred when it reduced the jury award from $82,260,000 to $3. Accordingly, we reverse the district court’s JMOL Decision and reinstate the jury award for breach of contract damages"

"Ford argues that “Versata offered insufficient evidence that Ford had knowledge of each alleged combination trade secret.” . . . That is, Ford claims that Versata provided no evidence that it identified the specific “bundles of features [Grid, Buildability, and Workspaces of the ACM software] to Ford” but instead provided hundreds of documents to Ford containing these trade secrets . . Therefore, because Versata failed to demonstrate that Ford had specific knowledge of the ACM combination trade secrets, Ford argues that the district court’s judgment on trade secret liability must be reversed. Neither the DTSA nor the MUTSA, however, requires a plaintiff to show a defendant’s knowledge of specific elements of combination trade secrets . . . Nothing in the language of either statute requires the degree of specific knowledge of the exact combination of a trade secret that Ford urges us to read in."

"[Defendant] asserted that summary judgment was warranted because Viavi’s infringement contentions identified only the 11246 Filter, which had been released of any pre-May 1, 2020 infringement and that had not been manufactured or sold since May 1, 2020 . . . [Plaintiff] opposed the summary judgment motion . . . It contended that the scope of the case went beyond the 11246 Filter, even as that was the only filter included in the claim charts accompanying Viavi’s complaint. Further, Viavi contended it was entitled to reasonable discovery from PTOT so that it could obtain information about any of PTOT’s filters that were incorporated into the major company’s devices."

"In fact, as soon as Viavi finally purchased several of the major company’s devices, it discovered that the only non-Viavi filter being used in one of these devices was not the 11246 Filter . . . After learning this, Viavi even initiated a new action wherein it sued based only on Filter #25, not on the 11246 Filter. Therefore, Viavi’s own actions indicate that, with a more searching pre-suit investigation, it “would have not filed” the suit it ended up filing here."