Omega Patents, LLC v. Calamp Corp.
Docket No. 2020-1793, -1794 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1793.OPINION.9-14-2021_1833974.pdf)
DYK, PROST, HUGHES
September 14, 2021
Brief Summary: DC denial of CalAmp’s JMOL for a new trial on infringement affirmed but jury damages award vacated and remanded for improper apportionment.
Summary: CalAmp appealed DC judgment of infringement and damages award regarding Omega’s US 8,032,278 relating to multi-vehicle-compatible systems that can remotely control various vehicle functions such as remote vehicle starting. Omega appealed the DC’s post-verdict royalty rate. The jury also found that CalAmp did not induce infringement of Omega’s US 6,756,885 (same subject matter at the ‘278 patent) but CalAmp appealed the jury’s underlying finding of direct infringement of the asserted claims by CalAmp’s customers, “specifically, the district court’s denial of JMOL that those customers did not directly infringe.” The FC panel explained that “[t]he direct-infringement finding did not itself impose liability on CalAmp but instead was intended to serve as a predicate to Omega’s induced-infringement theory.” However, as CalAmp was “the prevailing party as to Omega’s claim of induced infringement of the ’885 patent, we decline to review the merits of CalAmp’s appeal of the JMOL denial regarding direct infringement by its customers” but it did “agree with CalAmp that the jury’s direct-infringement finding should be vacated” (Camreta, US 2011). The FC panel did consider the DC’s denial of CalAmp’s request for a judgment of a matter of law (JMOL) and a new trial as to infringement, with CalAmp alleging that Omega expert’s testimony was “beyond the scope of his expert report” and that “Omega failed to present evidence that two claim limitations were met.” The FC panel disagreed as to the expert, finding the “disclosures provided enough notice to CalAmp ‘to prepare [its] case adequately and to prevent surprise’” (Guevara, 11th Cir. 2019). The FC panel also found “there was sufficient evidence” in the expert’s reports “for the jury to find the ‘corresponding vehicle device code’ limitation met” and “the ‘enabling data’ limitation met” by CalAmp’s accused products. It therefore affirmed the DC’s denial of JMOL on infringement. The FC panel did find the DC abused its discretion by precluding CalAmp’s damages expert and that the jury’s damages award was unsupported by the record (e.g., “the $5.00 figure does not reflect apportionment and that Omega failed to show the incremental value of the ’278 patent (or that the patented improvement drove demand for the entire accused product)” (LaserDynamics, FC 2012; VirnetX, FC 2014; Ericsson, FC 2014; Exmark, FC 2018; “Omega still must ‘adequately and reliably apportion between the improved and conventional features of the accused [product]’ when using the LMUs ‘as a royalty base’… the jury could not reasonably have found that the multi-vehicle-compatibility feature of the LMUs drove demand for the entire LMU product.”) The FC panel therefore vacated the jury’s damage award and remanded the case for a new trial on damages. Judge Hughes’s dissent argued Omega’s royalty evidence was sufficient and certain expert testimony should not have been precluded.