Bearbox LLC, Austin Storms v. Lancium LLC, Michael T. McNamara, Raymond E. Cline, Jr.

United States Court of Appeals
for the Federal Circuit
______________________
BEARBOX LLC, AUSTIN STORMS,
Plaintiffs-Appellants
v.
LANCIUM LLC, MICHAEL T. MCNAMARA,
RAYMOND E. CLINE, JR.,
Defendants-Appellees
______________________
2023-1922
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:21-cv-00534-GBW-CJB,
Judge Gregory Brian Williams.
______________________
Decided: January 13, 2025
______________________
B ENJAMIN T. HORTON, Marshall, Gerstein & Borun
LLP, Chicago, IL, argued for plaintiffs-appellants. Also
represented by J OHN L ABBE , CHELSEA MURRAY, RAYMOND
R. R ICORDATI , III.
MARK C HRISTOPHER NELSON, Barnes & Thornburg
LLP, Dallas, TX, argued for defendants-appellees. Also
represented by A DAM M. KAUFMANN, Chicago, IL; C HAD
S.C. STOVER , Wilmington, DE.
______________________
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BEARBOX LLC v. LANCIUM LLC 2
Before C HEN, BRYSON, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Lancium allegedly stole Austin Storms’ thunder and
patented it. This case centers around a conversation over
cocktails and dinner at a Bitcoin mining conference, a fol-
low-up email with four attachments, and a subsequent pa-
tent. Based on the dinner conversation and email
attachments, Mr. Storms asserts that Lancium’s patent
must be corrected to name him as an inventor.
BearBox LLC and Mr. Storms (collectively, “BearBox”)
appeal the United States District Court for the District of
Delaware’s grant of summary judgment to Lancium LLC,
Michael T. McNamara, and Dr. Raymond E. Cline, Jr. (col-
lectively, “Lancium”) on BearBox’s Louisiana state law con-
version claim, which the district court held to be
preempted, as pled, by federal patent law. J.A. 63–91.
BearBox also appeals the district court’s exclusion of Bear-
Box’s expert’s supplemental report. BearBox LLC v. Lan-
cium LLC, No. 21-534, 2022 WL 17403466 (D. Del.
Nov. 23, 2022) (“Supplemental Report Decision”). Last,
BearBox appeals the district court’s denial of BearBox’s
claim that Mr. Storms was either a sole or joint inventor of
U.S. Patent No. 10,608,433 (the “’433 patent”). BearBox
LLC v. Lancium LLC, No. 21-534, 2023 WL 2367390
(D. Del. Mar. 6, 2023) (“Inventorship Decision”). We affirm
the district court’s judgment on each issue.
B ACKGROUND
I
The following facts are taken primarily from the dis-
trict court’s undisputed findings of fact in the Inventorship
Decision.
Mr. Storms is the founder and sole employee of Bear-
Box LLC. He has significant experience with Bitcoin min-
ing. For instance, in 2017, Mr. Storms designed and built
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BEARBOX LLC v. LANCIUM LLC 3
a half-megawatt datacenter for Bitcoin mining in his fa-
ther’s karate studio. At the time, Mr. Storms’ implemen-
tation was unprofitable due to the price of electricity and
the vast amount of power needed for Bitcoin mining. In
2018, Mr. Storms founded BearBox LLC to design and de-
velop mobile cryptocurrency datacenters. BearBox LLC is
a Louisiana entity with a principal place of business in
Mandeville, Louisiana.
Mr. McNamara and Dr. Cline co-founded Lancium in
November 2017 with the intention of co-locating flexible
datacenters, such as Bitcoin miners, at windfarms to ex-
ploit the highly variable power output of windfarms. To
exploit the power output, Lancium would “ramp down” its
flexible datacenters to allow the windfarm to sell that
power to the electrical grid when energy prices were high.
Conversely, when power prices were low, Lancium would
“ramp up” its flexible datacenters. In other words, Lan-
cium would buy low, sell high. Because Lancium’s co-loca-
tion was “behind-the-meter,”1 Lancium agreed to cut back
its power usage based on real-time signals indicating the
price of power so that the windfarm could capture power
when the price of power was high. Lancium disclosed these
concepts in International Publication No. WO 2019/139632
(the “’632 application”) in February 2018, fifteen months
before Mr. Storms met anyone at Lancium.
The ’632 application, titled “Method and System for
Dynamic Power Delivery to a Flexible Datacenter Using
Unutilized Energy Sources,” names both Mr. McNamara
and Dr. Cline as inventors and has a priority date of Janu-
ary 2018. Figure 6 of the ’632 application depicts the flex-
ible datacenter (200) connected to the windfarm, as well as
1 “Behind-the-meter” means “that the load is con-
nected directly to a power generation entity, i.e., a wind
farm, and transmits power to the load before transmitting
power to the grid.” J.A. 10 ¶ 31.
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BEARBOX LLC v. LANCIUM LLC 4
connections to the local power substation (690) and the
grid (660).
’632 application, Fig. 6.
Figure 2 of the ’632 application shows individual com-
puting systems (100) of the flexible datacenter organized
into racks and subsets (240), as well as a datacenter control
system (220), which may be a computing system configured
to “dynamically modulate power delivery to one or more
computing systems 100.” J.A. 8888–91 ¶¶ 30, 33, 38.
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BEARBOX LLC v. LANCIUM LLC 5
’632 application, Fig. 2.
The ’632 application also explains that the flexible dat-
acenter—based on an operational directive or monitored
conditions, including economic conditions—would control
its computing systems on a granular level, i.e., on the indi-
vidual computing system or collections of computing sys-
tem level, to ensure that its systems consumed less power
than the windfarm would generate. Thus, the flexible dat-
acenter would monitor information from the windfarm in-
dicating how much power the flexible datacenter could
consume.
At the time of the ’632 application’s filing, Lancium
monitored various conditions, including the real-time price
of power; the price of Bitcoin; and other information ena-
bling Lancium to determine whether it was profitable to
mine Bitcoin at any given time.
By October 2018, before Mr. Storms met anyone at
Lancium, Lancium was operating 120 cryptocurrency min-
ers at its facility in Texas with modified off-the-shelf soft-
ware to control its cryptocurrency miners. Lancium’s
system monitored some of the information disclosed in the
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BEARBOX LLC v. LANCIUM LLC 6
’632 application, including power and Bitcoin price, to de-
termine a performance strategy based on whether it was
profitable to mine Bitcoin. For example, Lancium calcu-
lated the breakeven price for different types of cryptocur-
rency miners and used this calculation to determine when
to turn the miners on or off.
Beginning in 2019, Lancium began to internally de-
velop its own software to control its cryptocurrency miners.
And by May 1, 2019, Lancium’s proprietary software mon-
itored signals from a windfarm, the Electric Reliability
Council of Texas, Bitcoin pricing, real-time power pricing,
hash rate, block height, and the miners’ actual power us-
age. With that information, Lancium’s proprietary soft-
ware could determine a target power level at which the
miners should operate and then send instructions to some
or all Bitcoin miners to suspend or restart Bitcoin mining.
This proprietary software eventually became known as
Lancium Smart Response. While Lancium developed the
software that became Lancium Smart Response, Lancium
also worked with various companies to design and manu-
facture portable mining containers for Lancium’s use.
Around the same time, from late-2018 into early 2019,
Mr. Storms began to design, build, and test the BearBox
system—a system of relays, power-distribution units, and
a computer-user interface that allowed a remote user to
control individual relays so that Bitcoin miners could be
turned on and off. In November 2018, Mr. Storms met
someone through Twitter and learned the basics of the en-
ergy market. With this knowledge in hand, Mr. Storms
started exploring the idea of a system that mined crypto-
currency when electricity prices were low but sold wind en-
ergy to the grid when prices were favorable, i.e., buy low,
sell high. In April 2019, Mr. Storms’ Twitter contact wrote
to him that it would be “super cool to write a little Python
script” that controlled the mining site based on various eco-
nomic conditions, such as the cost of electricity. Inventor-
ship Decision, at *5, ¶ 32 (citation omitted). Mr. Storms
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BEARBOX LLC v. LANCIUM LLC 7
got to work and began to write source code for his BearBox
system. He completed the source code by May 7, 2019, but
he never provided the source code to Lancium.
Mr. Storms was first introduced to Lancium in May
2019. On May 3, 2019, Mr. Storms attended the “FCAT
Mining Summit” in Boston, Massachusetts, to learn more
about the cryptocurrency industry and to meet potential
customers for his BearBox containers. Id. at *10, ¶ 63. At
the FCAT Mining Summit, Mr. Storms met
Mr. McNamara for the first time at a cocktail reception.
Following the cocktail reception, a small group of people,
including Mr. Storms, Mr. McNamara, and Lancium’s
CFO, went to dinner.
The dinner lasted approximately two hours.
Mr. Storms sat across the table from Mr. McNamara. Over
dinner the two discussed the BearBox system, and
Mr. McNamara showed interest in its specifications and
price. Mr. Storms never showed Mr. McNamara any Bear-
Box documents or source code. Following dinner,
Mr. Storms and Mr. McNamara exchanged phone numbers
but never met again. Mr. Storms also never met or spoke
to Dr. Cline or any other Lancium employee.
Shortly after the FCAT Mining Summit dinner,
Mr. Storms and Mr. McNamara exchanged a few text mes-
sages about Mr. Storms’ BearBox system. Mr. McNamara
expressed interest in Mr. Storms’ BearBox system as a po-
tential alternative to another system that Lancium was ex-
ploring. On May 8, 2019, Mr. McNamara sent a text
message to Mr. Storms asking for his BearBox design spec-
ifications. The next day, Mr. Storms sent a single email to
Mr. McNamara with the subject line “BearBox 20’ product
details and supporting documents.” Id. at *11, ¶ 73 (cita-
tion omitted). The body of Mr. Storms’ email reads:
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BEARBOX LLC v. LANCIUM LLC 8
Hey Michael,
See attached for the 20’ BearBox product details
and some supporting docs. I’ve also attached some
recent modeling data from one of the Exelon wind
sites (based on publicly available marketplace
data) – I can model for any pricing node you guys
might be interested in reviewing.
Let me know if you have any questions!
Talk soon,
A
Id. at *11–12, ¶ 73 (citation omitted). Attached to
Mr. Storms’ email were the following documents: (1) a
one-page BearBox Product Specification Sheet; (2) an an-
notated diagram of BearBox’s Automatic Miner Manage-
ment System; (3) specification sheets on fans and other
hardware components; and (4) a data file modeling a simu-
lation of the BearBox system.
Mr. Storms and Mr. McNamara did not communicate
following Mr. Storms’ email. The district court found that
Mr. McNamara credibly testified that, upon receipt of
Mr. Storms’ email, he spent no more than three minutes
reviewing the attachments and that he considered the price
of the BearBox system to be too high compared to other
container manufacturers Lancium solicited. Id. at *13,
¶ 84.
On October 28, 2019, Lancium filed United States Pro-
visional Patent Application No. 62/927,119 (the “’119 appli-
cation”), which ultimately issued as the ’433 patent. The
’433 patent is titled “Methods and Systems for Adjusting
Power Consumption Based on a Fixed-Duration Power Op-
tion Agreement,” and lists Mr. McNamara and Dr. Cline as
the inventors. ’433 patent cover.
The ’433 patent relates to a set of computing systems
that are configured to perform computational operations
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BEARBOX LLC v. LANCIUM LLC 9
using power from a power grid. See ’433 patent col. 5
ll. 48–50. The ’433 patent also relates to a control system
that monitors a set of conditions and receives power option
data that is based, at least in part, on a power option agree-
ment, which specifies minimum power thresholds associ-
ated with time intervals. See id. at col. 5 ll. 50–55. The set
of computing systems may also determine a performance
strategy for a load based on a combination of the power op-
tion data and one or more monitored conditions. See id.
at col. 5 ll. 55–60. The performance strategy may specify a
power consumption target for the load for each time inter-
val such that each power consumption target is equal to or
greater than the minimum power threshold associated
with each time interval. Id. at col. 5 l. 60–col. 6 l. 13. The
computing systems may provide instructions to perform
one or more computational operations based on the perfor-
mance strategy. See id. at col. 6 ll. 14–65. Representative
claim 1 reads:
1. A system comprising:
[a] a set of computing systems, wherein the set of
computing systems is configured to perform com-
putational operations using power from a power
grid;
[b] a control system configured to:
[b1] monitor a set of conditions;
[b2] receive power option data based, at least in
part, on a power option agreement, wherein the
power option data specify: (i) a set of minimum
power thresholds, and (ii) a set of time intervals,
wherein each minimum power threshold in the set
of minimum power thresholds is associated with a
time interval in the set of time intervals;
[b3] responsive to receiving the power option data,
determine a performance strategy for the set of
computing systems based on a combination of at
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BEARBOX LLC v. LANCIUM LLC 10
least a portion of the power option data and at least
one condition in the set of conditions, wherein the
performance strategy comprises a power consump-
tion target for the set of computing systems for
each time interval in the set of time intervals,
wherein each power consumption target is equal to
or greater than the minimum power threshold as-
sociated with each time interval; and
[b4] provide instructions to the set of computing
systems to perform one or more computational op-
erations based on the performance strategy.
Id. at col. 59 ll. 2–28.
II
At some point, BearBox caught wind of the ’433 patent
and filed this lawsuit against Lancium asserting, inter
alia, claims of sole or joint inventorship of the ’433 patent
and conversion under Louisiana state law.
Lancium moved for summary judgment arguing that
BearBox’s Louisiana state law conversion claim fails as a
matter of law because federal patent law preempts it as
pled. The district court agreed and dismissed the conver-
sion claim as preempted by federal patent law. In reaching
its decision, the district court determined that “it is clear
that BearBox’s conversion claim is ‘patent-like’ in nature
and also turns on a determination of inventorship regard-
ing the subject matter of the ’433 patent.” J.A. 86.
Lancium also moved for summary judgment as to Bear-
Box’s sole or joint inventorship claims. The district court
denied summary judgment as to BearBox’s sole inventor-
ship claim because the district court could not “say that no
reasonable fact finder could find that there is clear and con-
vincing evidence establishing Storms’ right to be named”
as an inventor on the ’433 patent. J.A. 73. And “[b]ecause
there are genuine issues of material fact surrounding the
extent of [Messrs.] Storms, McNamara, and [Dr.] Cline’s
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BEARBOX LLC v. LANCIUM LLC 11
collaboration related to the subject matter claimed in the
’433 patent,” the district court denied Lancium’s motion as
to BearBox’s joint inventorship claim. J.A. 79. As such,
the inventorship claims proceeded to a bench trial.
In the interim, the district court struck Dr. Stanley
McClellan’s entire supplemental technical expert report.
Supplemental Report Decision, at *1. The district court de-
termined that BearBox had acted in bad faith when it
served Dr. McClellan’s supplemental report on Novem-
ber 11, 2022, nearly three weeks before the start of a three-
day bench trial and approximately five months after the
close of expert discovery, without seeking leave of court or
Lancium’s consent, as required by the scheduling order.
Following the three-day bench trial, the district court
issued its findings of fact and conclusions of law. Inventor-
ship Decision. The district court determined that Lan-
cium’s witnesses had credibly testified about Lancium’s
software, its research and development activities prior to
the FCAT Mining Summit, the conversation with
Mr. Storms at the FCAT Mining Summit dinner, and their
handling of Mr. Storms’ email. With respect to each claim
of the ’433 patent, the district court determined that Bear-
Box failed to prove by clear and convincing evidence that
Mr. Storms either conceived of, or communicated prior to
Lancium’s independent conception, the subject matter of
any claim of the ’433 patent. Therefore, the district court
concluded that BearBox had not met its burden by clear
and convincing evidence to establish Mr. Storms’ sole or
joint inventorship claims. The district court then entered
final judgment.
BearBox appeals. We have jurisdiction under 28 U.S.C
§ 1295(a)(1).
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BEARBOX LLC v. LANCIUM LLC 12
DISCUSSION
I
We begin our analysis with whether federal patent law
preempts BearBox’s Louisiana state law conversion claim,
as pled. The district court granted summary judgment dis-
missing BearBox’s conversion claim based on conflict
preemption. We review a district court’s grant of summary
judgment under the law of the regional circuit, here the
Third Circuit. Acceleration Bay LLC v. 2K Sports, Inc.,
15 F.4th 1069, 1075 (Fed. Cir. 2021). The Third Circuit re-
views the grant of summary judgment de novo. Id. (citing
Azur v. Chase Bank, USA, Nat’l Ass’n, 601 F.3d 212, 216
(3d Cir. 2010)). Federal Circuit law governs whether fed-
eral patent law preempts a state law claim, a question we
review de novo. Ultra-Precision Mfg., Ltd. v. Ford Motor
Co., 411 F.3d 1369, 1376 (Fed. Cir. 2005).
“Under the Supremacy Clause, state law that conflicts
with federal law is without effect.” Id. at 1377 (citing U.S.
Const. art. VI, cl. 2; Bonito Boats, Inc. v. Thunder Craft
Boats, Inc., 489 U.S. 141, 168 (1989); Hunter Douglas, Inc.
v. Harmonic Design, Inc., 153 F.3d 1318, 1331 (Fed. Cir.
1998), overruled in part, Midwest Indus., Inc. v. Karavan
Trailers, Inc., 175 F.3d 1356, 1361 (Fed. Cir. 1999)). There
are three types of preemption: explicit, field, or conflict
preemption. Hunter Douglas, 153 F.3d at 1332. This case
concerns only conflict preemption. “Conflict preemption oc-
curs when state law stands as an obstacle to the accom-
plishment and execution of the full purposes and objectives
of Congress.” Ultra-Precision, 411 F.3d at 1377 (internal
quotation marks and citation omitted).
While there are several congressional objectives, “pub-
lic disclosure and use . . . is the centerpiece of federal pa-
tent policy.” Bonito Boats, 489 U.S. at 157. Indeed, “the
efficient operation of the federal patent system depends
upon substantially free trade in publicly known, unpat-
ented design and utilitarian conceptions.” Id. at 156. For
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BEARBOX LLC v. LANCIUM LLC 13
this reason, “[s]tates may not offer patent-like protection to
intellectual creations which would otherwise remain un-
protected as a matter of federal law.” Id.; Ultra-Precision,
411 F.3d at 1377–78 (“Federal law preempts state law that
offers ‘patent-like protection’ to discoveries unprotected
under federal patent law.” (citation omitted)). “[A] state
law that substantially interferes with the enjoyment of an
unpatented utilitarian or design conception which has been
freely disclosed by its author to the public” is preempted by
federal patent law because it “contravenes the ultimate
goal of public disclosure and use.” Bonito Boats, 489 U.S.
at 156–57.
Under Louisiana law, “[a] conversion is an act in dero-
gation of the plaintiff’s possessory rights and any wrongful
exercise or assumption of authority over another’s goods,
depriving him of the possession, permanently or for an in-
definite time.” Bihm v. Deca Sys., Inc., 226 So. 3d 466, 478
(La. App. 1 Cir. 2017). Of course, the Louisiana conversion
cause of action is not ipso facto preempted by the federal
patent laws. It covers a broad range of conduct that does
not necessarily implicate federal patent law. Indeed, Bear-
Box contends that its state-law claim is not based on acts
of patent infringement or on a determination of patent in-
ventorship but is instead based on acts of converting docu-
ments and information, for which it seeks compensation.
Appellants’ Br. 34–35. This contention, however, does not
square with how BearBox pled the conversion claim, as ex-
plained below. And when determining whether federal pa-
tent law preempts a state law cause of action, we do not
mechanically compare the required elements of the state
law claim to the objectives embodied by federal patent law.
Rather, we determine whether federal patent law
preempts the state law claim because the state law claim
as pled “stands as an obstacle to the accomplishment and
execution of the full purposes and objectives of Congress.”
Ultra-Precision, 411 F.3d at 1378 (evaluating whether an
unjust enrichment claim was preempted as pled); Univ. of
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BEARBOX LLC v. LANCIUM LLC 14
Colo. Found., Inc. v. Am. Cyanamid Co., 196 F.3d 1366,
1371 (Fed. Cir. 1999) (same for unjust enrichment and
fraudulent nondisclosure claims). Therefore, the narrow
question this case presents is whether the specific conver-
sion claim pled by BearBox—seeking damages for Lan-
cium’s “improper and unauthorized use” of BearBox’s
unpatented technology, including system designs, docu-
ments, data, and know-how, J.A. 1650 ¶¶ 87, 90—aims to
frustrate federal patent law policies and “offer patent-like
protection to intellectual creations which would otherwise
remain unprotected as a matter of federal law.” Bonito
Boats, 489 U.S. at 156. If so, BearBox’s claim would be
preempted.
Here, we agree with the district court that BearBox’s
conversion claim is preempted because the conversion
claim, as pled, is essentially an inventorship cause of action
and patent infringement cause of action, and thus seeks
“patent-like protection” for ideas that are unprotected un-
der federal law. Bonito Boats, 489 U.S. at 156. A review of
BearBox’s complaint is instructive.
As pled, BearBox’s conversion claim explicitly seeks to
recoup monetary damages from Lancium for its use, sale,
and monetization of technology that BearBox purports to
have invented and thus now owns. In Count V (conversion
by Lancium, Mr. McNamara, and Dr. Cline), BearBox al-
leges “Austin Storms, in his capacity as founder and Presi-
dent of BearBox, conceived, developed, and reduced to
practice BearBox’s technology. Plaintiffs own BearBox’s
technology, including system designs, documents, data,
and know-how.” J.A. 1649 ¶ 85 (emphases added). The
rest of the conversion claim reads like a patent infringe-
ment cause of action as follows:
Without [BearBox’s] consent, [Lancium] intention-
ally and willfully assumed dominion and control
over BearBox’s technology, including system de-
signs, documents, data, and know-how, and
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BEARBOX LLC v. LANCIUM LLC 15
improperly used it to modify their Smart Re-
sponse™ software, and corresponding system de-
signs, to function as reflected in BearBox’s system
designs, documents, data, and know-how, and sub-
sequently used, sold, licensed, and procured invest-
ments related to, and otherwise monetized, that
software for substantial profit.
J.A. 1650 ¶ 87 (emphases added). BearBox also alleges
“[Lancium’s] actions constitute an improper and unauthor-
ized use of [BearBox’s] property.” J.A. 1650 ¶ 89 (emphasis
added). And BearBox asserts, “[a]s such, [BearBox LLC
and Mr. Storms] are entitled to damages resulting from
[Lancium’s] improper and unauthorized use.” J.A. 1650
¶ 90; see also J.A. 1653 ¶ G.
Here, the conversion claim is replete with “patent-like”
language typically invoked when a party asserts inventor-
ship or infringement of a patent, including that Mr. Storms
“conceived, developed, and reduced to practice” certain
technology and that “Lancium improperly used” that tech-
nology. J.A. 1649 ¶ 85; J.A. 1650 ¶ 87; see Blue Gentian,
LLC v. Tristar Prod., Inc., 70 F.4th 1351, 1358 (Fed. Cir.
2023) (“An alleged joint inventor must show that he con-
tributed significantly to the conception—the definite and
permanent idea of the invention—or reduction to practice
of at least one claim”) (emphases added) (citation omitted);
35 U.S.C. § 271(a) (“[W]hoever without authority makes,
uses, offers to sell, or sells any patented invention, within
the United States . . . during the term of the patent there-
for, infringes the patent.”). The damages that BearBox
seeks to recoup—“including damages, consequential dam-
ages, disgorgement of [Lancium’s] ill-gotten profits . . .
and/or all other appropriate financial relief,” J.A. 1653
¶ G—are also “patent-like” in that they seek monetary
damages adequate to compensate for “[Lancium’s] im-
proper and unauthorized use.” J.A. 1650 ¶ 90. The district
court expressly found that BearBox’s damages expert fur-
ther supported that BearBox seeks patent-like damages
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BEARBOX LLC v. LANCIUM LLC 16
because he “reaffirm[ed] that BearBox seeks monetary
damages in, effectively, a repackaged form of a royalty pay-
ment, and reassert[ed] BearBox’s theme that monetary
damages are necessary to compensate or recognize Bear-
Box for use of BearBox’s converted technology.” J.A. 88–
89. BearBox does not challenge that finding on appeal.
Tellingly, the patent statute provides that the patentee is
entitled to recover “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. In contrast, under Louisiana law, “[t]he
measure of damages for wrongful conversion is the return
of the property, or if it cannot be returned, the value of the
property at the time of conversion.” Capers v. NorthPro
Prop. Mgmt., LLC, 321 So. 3d 502, 514 (La. App. 2 Cir.
2021). But BearBox does not just demand the return of its
allegedly converted property or its value at the time of the
alleged conversion, BearBox persistently pursues more—
monetary damages akin to those awarded under federal
patent law.
Moreover, “federal patent law generally precludes a
plaintiff from recovering a [damages] award premised on
defendant’s making, using, offering to sell, or selling an un-
patented discovery after plaintiff makes the discovery
available to the public.” Ultra-Precision, 411 F.3d at 1380;
cf. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 492
(1974) (concluding “patent law does not pre-empt trade se-
cret law”). Here, BearBox’s technology is not patented, was
freely shared with others,2 and is otherwise in the public
domain. Were we to allow the conversion claim to move
2 Cocktail hour, dinner conversation, and
Mr. Storms’ email aside, the district court also found that
Mr. Storms separately shared portions of his source code
with another third-party individual. See Inventorship De-
cision, at *13 ¶ 83.
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BEARBOX LLC v. LANCIUM LLC 17
forward as pled, then BearBox, like a patentee, would po-
tentially recover lost profits or a reasonable royalty from
its competitor, Lancium, for Lancium’s alleged use of Bear-
Box’s technical information that “otherwise remain[s] un-
protected as a matter of federal law.” Bonito Boats,
489 U.S. at 156. Such a cause of action, as pled here, is
clearly preempted.
For all these reasons, we affirm the district court’s de-
termination that federal patent law preempts BearBox’s
state law conversion claim.
II
Now we address the district court’s decision to strike
Dr. McClellan’s supplemental report in toto. We review ev-
identiary rulings not unique to patent law under the law of
the regional circuit. TecSec, Inc. v. Adobe Inc., 978 F.3d
1278, 1285 (Fed. Cir. 2020). Here, the Third Circuit re-
views a district court’s evidentiary rulings for an abuse of
discretion. Wi-LAN Inc. v. Sharp Elecs. Corp., 992 F.3d
1366, 1370 (Fed. Cir. 2021) (citing Acumed LLC v. Ad-
vanced Surgical Servs., Inc., 561 F.3d 199, 211 (3d Cir.
2009)); ZF Meritor, LLC v. Eaton Corp., 696 F.3d 254, 268
(3d Cir. 2012).
BearBox contends that the district court abused its dis-
cretion because (1) Dr. McClellan’s untimely supplemental
report was justified; (2) Dr. McClellan’s supplemental re-
port did not offer new opinions; and (3) the district court
incorrectly weighed the Pennypack factors in favor of ex-
cluding the supplemental report. None of BearBox’s con-
tentions persuades us that the district court abused its
discretion.
A
BearBox first argues that its filing of Dr. McClellan’s
untimely supplemental report was justified because Lan-
cium raised a new claim construction dispute (triggering
the need for a supplemental report) for the first time after
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BEARBOX LLC v. LANCIUM LLC 18
the close of discovery. Appellants’ Br. 38–40. Therefore, in
BearBox’s view, the district court’s “extreme sanction”—
striking an expert’s supplemental report—was “contrary to
Federal Circuit and Third Circuit law.” Appellants’ Br. 38.
BearBox’s argument, however, rests on a mistaken view of
the record.
Lancium did not raise the claim construction dispute
for the first time after the close of discovery. To be sure,
the district court held a Markman hearing and adopted
Lancium’s proposed constructions of the disputed terms af-
ter the close of discovery. See J.A. 6005–20. Critically,
however, these adopted constructions were not new to
BearBox or Dr. McClellan. The district court determined
that “both BearBox and Dr. McClellan were equipped with
Lancium’s proposed constructions [of the disputed terms]
six months prior to supplementing Dr. McClellan’s re-
ports.” Supplemental Report Decision, at *2. And where,
as here, “claim construction remains an open issue at the
time the parties serve expert reports,” BearBox had “an ob-
ligation” under the district court’s own precedent “to pre-
pare for the fact that the court may adopt [the other party’s
claim] construction.” Id. (quoting St. Clair Intell. Prop.
Consultants, Inc. v. Matshushita Elec. Indus. Co., Ltd.,
No. 04-1436, 2012 WL 1015993, at *5 (D. Del. Mar. 26,
2012)). In other words, under this precedent, BearBox
should have addressed Lancium’s proposed constructions
in its expert reports. Id. (citing St. Clair, 2012 WL
1015993, at *5; Union Carbide Chems. & Plastics Tech.
Corp. v. Shell Oil Co., 270 F. Supp. 2d 519, 524 (D. Del.
2003)). BearBox failed to do so. In truth, BearBox’s posi-
tion is even worse because, in his reply report, Dr. McClel-
lan acknowledged and generally disagreed with Lancium’s
proposed constructions yet failed to go one step further and
apply and analyze Lancium’s proposed constructions until
his untimely supplemental report. Id. On this record, the
district court’s rejection of BearBox’s proffered justification
for its delay does not constitute an abuse of discretion.
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BEARBOX LLC v. LANCIUM LLC 19
B
Next, BearBox argues that the district court erred in
concluding that Dr. McClellan’s supplemental report of-
fered new opinions. See Appellants’ Br. 40–44. In our
view, however, the district court carefully compared
Dr. McClellan’s opening and reply reports with the supple-
mental report. We agree with the district court that the
“opinions in [Dr. McClellan’s] Supplemental Report are be-
yond mere ‘elaboration’ or ‘clarification’” for at least the
reasons the district court identifies. Supplemental Report
Decision, at *2. For example, the district court correctly
determined that Dr. McClellan’s supplemental report “of-
fer[ed] analysis of how Austin Storms allegedly conceived
of a system where the power entity held the option,”
whereas Dr. McClellan previously opined “that the load,
not the power entity, held the option in a power option
agreement.” Id. at *1 (citing J.A. 6105–06 ¶¶ 25–26;
J.A. 6149 (157:1–18)).
On appeal, BearBox asserts:
[T]he district court erred in concluding that
[Dr.] McClellan “previously opined that load was
not required to use the ‘minimum power thresh-
old,’” [J.A. 6131 ](84:18–85:1) and that “neither
[his] Opening Report nor his Reply report . . . ex-
plain how BearBox’s system operated by maintain-
ing ‘a minimum amount of power a load must use
during an associated time interval.’”
Appellants’ Br. 40 (fourth alteration in original). This as-
sertion fails.
BearBox essentially argues that Dr. McClellan previ-
ously opined that the load was required to use the mini-
mum power threshold. In support, it identifies portions of
Dr. McClellan’s original report, including specific source
code modules, such as the arb_main_AEC.py module, as
evidence of Dr. McClellan’s understanding that
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BEARBOX LLC v. LANCIUM LLC 20
Mr. Storms’ source code simulation included a function
that maintained the energy used by the load. Appellants’
Br. 41 (citing J.A. 2741–42 ¶¶ 66–67). While BearBox de-
scribes this energy used by the load in its appeal brief as
“required kw_load usage,” nothing in Dr. McClellan’s un-
derlying reports specifies that the load is required to use
this minimum amount of power. As such, we see no error
in the district court’s conclusion that “neither Dr. McClel-
lan’s Opening Report nor his Reply Report explain how
BearBox’s system operated by maintaining ‘a minimum
amount of power a load must use during an associated time
interval’ (i.e., ‘minimum power threshold’).” Supplemental
Report Decision, at *2 (emphasis added). Further, as the
district court also noted, Dr. McClellan testified that a load
was not required to use the minimum power threshold. Id.
(citing J.A. 6131 (84:18–85:1)). The cited portions of
Dr. McClellan’s expert reports that BearBox now relies on
do not overcome or otherwise rectify Dr. McClellan’s
clearly contradictory testimony. As such, we see no error
in the district court’s conclusion that the supplemental re-
port offered new opinions.
C
Finally, we turn to BearBox’s contention that even if it
offered new opinions, the supplemental report should not
have been stricken because striking a supplemental report
is an “‘extreme sanction,’ not normally warranted absent a
showing of willful deception or flagrant disregard of court
orders.” Appellants’ Br. 44–45 (citing In re Paoli R.R. Yard
PCB Litig., 35 F.3d 717, 792 (3d Cir. 1994)). In considering
whether the district court abused its discretion in exclud-
ing evidence, the Third Circuit considers the Pennypack
factors:
(1) “the prejudice or surprise in fact of the party
against whom the excluded witnesses would have
testified” or the excluded evidence would have been
offered; (2) “the ability of that party to cure the
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BEARBOX LLC v. LANCIUM LLC 21
prejudice”; (3) the extent to which allowing such
witnesses or evidence would “disrupt the orderly
and efficient trial of the case or of other cases in the
court”; (4) any “bad faith or willfulness in failing to
comply with the court’s order”; and (5) the im-
portance of the excluded evidence.
ZF Meritor, 696 F.3d at 298 (quoting Meyers v. Pennypack
Woods Home Ownership Assn., 559 F.2d 894, 904–05
(3d Cir. 1977)). Here, the district court made a finding of
bad faith under factor (4) and found that the weight of fac-
tors (1), (2), (3), and (5) favor excluding Dr. McClellan’s
supplemental report. Supplemental Report Decision,
at *1–3. We see no error in the court’s analysis.
First, with respect to factors (1) and (2), as discussed
above, the supplemental report “offer[ed] new legal theo-
ries and opinions related to BearBox’s alleged conception
and communication of the subject matter of the ’433 pa-
tent.” Id. at *1. Lancium did not receive notice of these
new legal theories and opinions until three weeks before
trial, nearly five months after the close of expert discovery.
The district court correctly concluded the untimely new
theories “would ultimately prejudice Lancium, especially
at th[e] late juncture of the case.” Id. at *2. Still, the dis-
trict court considered whether Lancium could be cured of
the prejudice caused by a late supplemental report. But
the court correctly found, because of “the strained schedule
and quickly approaching trial,” that “Lancium ha[d] no
meaningful opportunity to conduct rebuttal discovery, pre-
pare a supplemental rebuttal report, or prepare for an ad-
ditional deposition.” Id. at *3. BearBox also offered to
have Lancium’s expert, Dr. Mark Ehsani, provide a supple-
mental report to address Dr. McClellan’s supplemental re-
port. We agree with the district court that while this
approach “may cure some prejudice,” it “would undoubt-
edly disrupt the trial process.” Id. With the strained
schedule, there would still be no meaningful opportunity to
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BEARBOX LLC v. LANCIUM LLC 22
“to conduct rebuttal discovery . . . or prepare for an addi-
tional deposition.” Id.
As for factor (3), the district court concluded that “[t]he
risk of prejudice suffered by Lancium is uncurable in light
of the strained schedule and quickly approaching trial.” Id.
Here, BearBox presents no contrary persuasive evidence
and does not demonstrate that the district court’s determi-
nation was erroneous.
With respect to factor (4), the district court concluded
that “BearBox’s disregard of the express terms of the
Court’s Scheduling Order indicate[d] bad faith which
weighs in favor of exclusion.” Id. at *2. The scheduling
order indicated that after the close of discovery, “[n]o other
expert reports will be permitted without either the consent
of all parties or leave of the Court.” Id. Thus, BearBox was
required either to seek leave of the court or to obtain con-
sent from Lancium to serve the supplemental report. But
BearBox sought “neither.” Id. As such, we cannot say the
district court’s determination of bad faith was erroneous.
Where a party fails to comply with the court’s scheduling
order, the district court has the authority to sanction a
party by “prohibiting the disobedient party from . . . intro-
ducing designated matters in evidence,” i.e., otherwise ad-
missible testimony. Fed. R. Civ. P. 37(b). On this record,
the district court did not err in concluding that this factor
weighs in favor of exclusion.
Finally, as for factor (5), the district court assessed the
importance of the supplemental report in two different
ways. First, the district court’s careful comparison of
Dr. McClellan’s opening report and reply report with the
supplemental report demonstrates to us that it appreciated
the importance of the supplemental report. As noted
above, the district court assessed whether the opinions in
the supplemental report went beyond mere “elaboration or
clarification” and concluded that they did. Supplemental
Report Decision, at *2 (internal quotation marks omitted).
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BEARBOX LLC v. LANCIUM LLC 23
Second, the district court’s alternative assessment of
the Pennypack factors—which assumes that the supple-
mental report did not contain new opinions—supports the
court’s weighing of factor (5). The district court explained
that “[e]ven assuming that BearBox was correct that
Dr. McClellan’s Supplemental Report does not offer new
opinions, the Court cannot reasonably conclude that exclu-
sion of that report—which would necessarily reiterate the
same opinions proffered in Dr. McClellan’s Opening Report
and Reply Report—would harm BearBox.” Id. n.1. Alt-
hough the district court addressed this counterfactual sit-
uation for the sake of argument, we understand it to be
another example of the district court assessing the im-
portance of the evidence.
Thus, viewed in the best light for BearBox, we under-
stand the district court to doubt the importance of the sup-
plemental report.
At bottom, “the District Court has considerable discre-
tion in matters regarding expert discovery and case man-
agement.” ZF Meritor, 696 F.3d at 297. The district court
here did not abuse its discretion in finding BearBox’s sup-
plemental report untimely, nor did the district court abuse
its discretion in concluding that the Pennypack factors sup-
ported its decision.
III
Last, we address the district court’s conclusion that
BearBox had not met its burden to establish that
Mr. Storms was either a sole or joint inventor of the
’433 patent. At the outset, we note that BearBox does not
challenge any of the district court’s underlying factfindings
or credibility determinations as clearly erroneous. Instead,
BearBox contends that the district court erred in three
other respects: (1) in excluding portions of Mr. Storms’ tes-
timony as hearsay; (2) in analyzing individual claim ele-
ments (rather than a combination of elements) by
comparing them, element-by-element, to Mr. Storms’
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BEARBOX LLC v. LANCIUM LLC 24
corroborating documents; and (3) in applying the rule of
reason by evaluating corroborating documents in isolation.
First, we address the district court’s factfindings and legal
conclusions; then we turn to, and ultimately reject, Bear-
Box’s arguments.
“Under 35 U.S.C. § 256, a district court may order cor-
rection of inventorship when it determines that an inventor
has been erroneously omitted from a patent.” Blue Gen-
tian, 70 F.4th at 1357. “All inventors, even those who con-
tribute to only one claim or one aspect of one claim of a
patent, must be listed on that patent.” Vapor Point LLC
v. Moorhead, 832 F.3d 1343, 1348–49 (Fed. Cir. 2016).
“Patent issuance creates a presumption that the named in-
ventors are the true and only inventors.” Caterpillar Inc.
v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir.
2004). For this reason, the party seeking correction of in-
ventorship must show by clear and convincing evidence
that a joint inventor should have been listed. Eli Lilly &
Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004).
An alleged joint inventor’s testimony alone is insuffi-
cient to establish inventorship by clear and convincing ev-
idence. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456,
1461 (Fed. Cir. 1998). “Thus, an alleged co-inventor must
supply evidence to corroborate his testimony.” Id. “Cor-
roborating evidence may take many forms,” including “con-
temporaneous documents” or physical evidence,
“[c]ircumstantial evidence about the inventive process,”
and “oral testimony of someone other than the alleged in-
ventor.” Id.; see also Sandt Tech., Ltd. v. Resco Metal &
Plastics Corp., 264 F.3d 1344, 1350–51 (Fed. Cir. 2001).
“To determine whether testimony has been sufficiently cor-
roborated, a ‘rule of reason’ test is applied where ‘all perti-
nent evidence is examined in order to determine whether
the inventor’s story is credible.’” Blue Gentian, 70 F.4th
at 1357 (quoting Sandt Tech., 264 F.3d at 1350). “A court’s
conclusion about corroboration under this ‘rule of reason’
analysis is a factfinding, which we review for clear error.”
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BEARBOX LLC v. LANCIUM LLC 25
Id. (citing Fleming v. Escort Inc., 774 F.3d 1371, 1377
(Fed. Cir. 2014)).
“An alleged joint inventor must show that he contrib-
uted significantly to the conception—the definite and per-
manent idea of the invention—or reduction to practice of at
least one claim.” Id. at 1358 (citing Dana-Farber Cancer
Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371
(Fed. Cir. 2020)). These contributions must also arise from
“some element of joint behavior, such as collaboration or
working under common direction” with the other inven-
tor(s). Kimberly-Clark Corp. v. Procter & Gamble Distrib.
Co., Inc., 973 F.2d 911, 917 (Fed. Cir. 1992). This “concep-
tion inquiry is fact-intensive.” In re Jolley, 308 F.3d 1317,
1323 (Fed. Cir. 2002). But “[c]onception is a legal conclu-
sion premised on various underlying facts.” Invitrogen
Corp. v. Clontech Lab’ys, Inc., 429 F.3d 1052, 1063
(Fed. Cir. 2005).
Similarly, inventorship is ultimately a question of law
based on underlying facts. In re VerHoef, 888 F.3d 1362,
1365 (Fed. Cir. 2018). As such, we review the district
court’s overall inventorship determination de novo, and the
court’s underlying factfindings for clear error. Dana-Far-
ber, 964 F.3d at 1370.
Here, following a three-day bench trial on the issue of
correction of inventorship, the district court thoughtfully
and carefully made findings of fact and conclusions of law
and ultimately concluded that the ’433 patent does not
need to be corrected to list Mr. Storms as either a sole in-
ventor or joint inventor. Inventorship Decision at *28.
With respect to each claim of the ’433 patent, the district
court determined that BearBox failed to prove by clear and
convincing evidence that Mr. Storms either conceived of, or
communicated prior to Lancium’s independent conception,
the subject matter of any claim of the ’433 patent. The only
information that Mr. Storms shared with Lancium is a sin-
gle May 2019 email with four attachments. Id. at *11–12.
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BEARBOX LLC v. LANCIUM LLC 26
The four attachments are: (1) a one-page BearBox Product
Specification Sheet (“BearBox Spec Sheet”); (2) an anno-
tated diagram of BearBox’s Automatic Miner Management
System (“Storms’ Diagram”); (3) specification sheets on
fans and other hardware components; and (4) a data file
modeling a simulation of the BearBox system (“Storms’
Data File”). Id. at *12. Mr. Storms and Mr. McNamara did
not communicate following Storms’ email.
With respect to the third attachment, Mr. Storms ad-
mitted that nothing from the specification sheets on fans
and other hardware components related to the subject mat-
ter of the ’433 patent. Id. at *12, ¶ 74. As to the other at-
tachments—the BearBox Product Spec Sheet, Storms’
diagram, and Storms’ Data File—the district court deter-
mined either that these documents did not establish that
Mr. Storms conceived of the claimed invention or that
Mr. Storms could not establish that he communicated any
information prior to Lancium’s independent conception of
the claimed subject matter. Id. at *14–28. “As disclosed in
the ’632 [a]pplication filed in January 2018, [Lancium] had
conceived of a system where a set of computer systems is-
sued instructions to perform computational operations
based on a performance strategy derived from monitored
conditions . . . and reduced the system to practice by Octo-
ber 2018.” Id. at *18. We see no error in the district court’s
analysis. And again, as noted above, BearBox presents no
challenge to the district court’s factfindings and credibility
determinations. Nor does BearBox persuade us that the
district court’s ultimate inventorship determination was
erroneous.
BearBox first contends that the district court improp-
erly excluded as hearsay Mr. Storms’ testimony about what
he told Mr. McNamara at a cocktail hour and dinner be-
cause it “was not offered for the truth of the matter as-
serted, but only for the sake of proving notice and what
information Storms communicated to Lancium.” Appel-
lants’ Br. 51. There is merit to BearBox’s argument that
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BEARBOX LLC v. LANCIUM LLC 27
Mr. Storms’ testimony was offered for a non-hearsay pur-
pose. As Lancium points out, however, review of the trial
transcript reveals a larger problem for BearBox’s challenge
on appeal.
It is a fundamental principle of trial practice that, “to
preserve for appellate review a claim of error premised on
the exclusion of evidence, the aggrieved party must ensure
that the record sufficiently reflects the content of the pro-
posed evidence.” Williams v. Drake, 146 F.3d 44, 49
(1st Cir. 1998); United States v. DeMuro, 677 F.3d 550, 567
(3d Cir. 2012); McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1358 (Fed. Cir. 2001); Fed. R. Evid. 103(a)(2). Here,
following the district court’s ruling from the bench that the
testimony was hearsay, counsel for BearBox made no offer
of proof as to what Mr. Storms’ response would have been
if he had been permitted to answer the questions. See
J.A. 8025–26 (Trial Tr. 79:3–82:12). That failure is fatal.
Only on appeal after extensive questioning at argument
did BearBox’s counsel first start to identify what
Mr. Storms’ testimony would have included about what he
told Mr. McNamara at dinner. See Oral Arg. at 8:43–
10:30, https://oralarguments.cafc.uscourts.gov/default
.aspx?fl=23-1922_11072024.mp3. BearBox’s counsel
raised none of these points before the district court and
thus we are left to wonder how or why the inclusion of
Mr. Storms’ testimony would alter the district court’s con-
clusion on inventorship. Accordingly, we cannot determine
that there was prejudicial error in the trial court’s exclu-
sion of Mr. Storms’ testimony as hearsay.
Next, BearBox contends that “the district court failed
to consider claim elements in combination, instead focusing
on individual elements when evaluating whether Storms
conceived of the claimed inventions.” Appellants’ Br. 54.
Although BearBox cites many cases to support its position,
none is on point because they concern other invalidity doc-
trines, such as inequitable conduct and public use. The
only case that addresses inventorship, Blue Gentian,
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BEARBOX LLC v. LANCIUM LLC 28
criticizes a party’s argument for its myopic approach (pars-
ing claim elements into sub-elements) to prove that certain
claim limitations existed in the prior art with respect to the
case at hand; it did not adopt a general criticism of limita-
tion-by-limitation analysis. See 70 F.4th at 1362. Here,
the district court analyzed the entirety of the claims. In-
ventorship Decision, at *14–25. And in fact, the court’s
analysis mirrors the analysis BearBox presented in its
post-trial brief. See J.A. 7107–20. Further, given that
BearBox must demonstrate that Mr. Storms contributed
significantly to the conception or reduction to practice of at
least one claim, Blue Gentian, 70 F.4th at 1358 (citing
Dana-Farber, 964 F.3d at 1371), we see no error with the
district court’s limitation-by-limitation approach in this
case.
Last, BearBox contends that the district court erred be-
cause it “referenced the Rule of Reason” but “did not ad-
dress whether, under the Rule of Reason, the totality of the
evidence, ‘including circumstantial evidence support[s] the
credibility of the inventors’ story.’” Appellants’ Br. 59
(quoting E.I. DuPont De Nemours & Co. v. Unifrax I LLC,
921 F.3d 1060, 1077 (Fed. Cir. 2019)). Specifically, Bear-
Box takes issue with two district court fact findings that it
understands to be inconsistent and thus improperly evalu-
ated. First, the district court found that “[t]hrough late-
2018 into early 2019, Storms began to design, build, and
test a system of relays, power distribution units (‘PDUs’),
and a computer user interface that allowed a remote user
to control individual relays so that miners could be turned
on and off.” Inventorship Decision, at *4 ¶ 29 (emphasis
added) (citing testimony J.A. 8017–18 (Trial Tr. 46:02–
52:13) and photos J.A. 9412–25). In BearBox’s view, this
first finding conflicts with the district court’s later finding
that “[BearBox] did not otherwise proffer evidence estab-
lishing that the BearBox System could individually control
the system of 272 miners.” Id. at *18 ¶ 113.
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BEARBOX LLC v. LANCIUM LLC 29
But BearBox takes the court’s later language out of
context. The district court found, based on a credibility de-
termination regarding competing expert testimony, that
Mr. Storms’ “Source Code ‘only ever instructs . . . all the re-
lays of the PDUs to turn on or off.’” Id. (citation omitted).
The court also found, which BearBox does not mention,
that “even if Storms’ Email did meet element [b4][3] of
claim 1 of the ’433 patent, the Court finds as a matter of
fact that Storms did not communicate element [b4] prior to
Defendants’ independent conception.” Id. Because Bear-
Box cannot provide proof that Storms communicated the
claimed subject matter prior to Lancium’s independent
conception, its challenge fails.
C ONCLUSION
We have considered Appellants’ remaining arguments
and find them unpersuasive. For the reasons stated above,
we affirm the district court’s dismissal of BearBox’s conver-
sion claim because federal patent law preempts it; we af-
firm the district court’s exclusion of BearBox’s
supplemental expert report; and we affirm the district
court’s denial of BearBox’s claim that Mr. Storms was ei-
ther a sole or joint inventor of ’433 patent.
AFFIRMED
[3] Claim 1, element [b4] recites, “provide instructions
to the set of computing systems to perform one or more
computational operations based on the performance strat-
egy.” ’433 patent col. 59 ll. 26–28.
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