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Cert. Denied – Patent Owners Still Must Prove Unpatented Features Did Not Drive Consumer Purchasing to Rely on EMVR

On February 25, 2019, the Supreme Court denied Power Integrations, Inc.’s (“Power Integrations”) petition for writ of certiorari.  The question presented to the Court was whether a plaintiff who had proven customer demand for an infringing product as a result of the patented feature was entitled to damages based on the entire market value of the product, or if the plaintiff also had to prove that the other unpatented features of the infringing product did not drive customer demand.  The Court’s denial leaves a high burden for patentee’s relying on the Entire Market Value Rule (“EMVR”).

Power Integrations sued Fairchild Semiconductor International Inc. (“Fairchild”) for patent infringement in the Northern District of California in November of 2009.  Six years later, a jury awarded Power Integrations $138M as a reasonable royalty based solely upon the EMVR.  A portion of the verdict form is reproduced below:

On appeal, the Federal Circuit affirmed the district court’s judgment of infringement, but vacated the damages award.  The Federal Circuit found that Power Integrations presented insufficient evidence as a matter of law to invoke the EMVR.  Namely, the Federal Circuit held that whenever an allegedly infringing product contains other valuable, unpatented features, the patentee must prove that those unpatented features did not cause consumers to purchase the product in order to rely upon the EMVR.  In coming to this conclusion, the Federal Circuit noted that the accused products here contained other unpatented features, some of which were at issue in a separate lawsuit between the parties concerning different patents.

Patentees should be mindful of relying solely upon the EMVR when establishing their damages case.  The Federal Circuit’s enumeration of the EMVR sets forth a high evidentiary standard and effectively requires patentees to prove a negative.

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About this Author

Stephen Akerley, Intellectual Property Attorney, Mintz Levin Law Firm

Steve is a seasoned intellectual property trial lawyer who has successfully represented clients in District Courts across the United States, the US International Trade Commission and international tribunals. Currently, he is preparing for an ITC trial relating to high-speed memory modules.

His practice emphasizes patent litigation, representing patent owners and accused infringers in cases involving telecommunications, semiconductors, software, and biotech diagnostics. His experience handling both enforcement and defense representations informs his approach to developing and...

Philip Ducker, Mintz Levin, IP attorney, Of Counsel,Patent Litigation, International Trade Commission, Federal District Court, Trade Secrets, IP Due Diligence, Strategic IP Monetization & Licensing
Of Counsel

Philip’s practice is primarily focused on intellectual property matters with an emphasis on patents, trade secrets, trademarks, and trade dress. These matters involve a wide and diverse range of complex technologies, including electronics, mobile telecommunications, mobile devices, and medical devices. Philip has successfully represented clients in District Courts across the United States and before the US International Trade. In addition to litigation matters, Philip also regularly counsels clients on intellectual property acquisitions and divestitures.


Adrian’s practice in intellectual property focuses on trade secrets and patent litigation. Adrian handles nearly all aspects of litigation, from pre-filling investigation through pre-trial preparation, and has extensive experience in first-chair and second-chair deposition.  Adrian has experience in various technology fields, including complex software systems, encryption, speech coding, signal processing, and cellular network infrastructure.

Prior to joining Mintz Levin, Adrian worked in the Silicon Valley office of an international law firm. During his time...