Omega Patents, LLC v. CalAmp Corp.


Docket No. 2018-1309

PROST, DYK, WALLACH
April 8, 2019

Brief summary: DC decision finding infringement of ‘727 claim 1 affirmed; others reversed and remanded for state of mind analysis and to determine whether there were predicate acts of infringement; willfulness finding remanded.

Summary: CalAmp (CA) appealed DC decision that Omega’s US 6,346,876; 6,756,885; 7,671,727; and 8,032,278 relating to remote control systems for vehicle functions were infringed and not invalid, and award of about $15 million in compensatory damages, willful infringement, attorney’s fees and royalties. The FC panel first considered CalAmp’s argument that the DC’s “claim constructions affected the jury’s verdict or invalidity” because certain prior art was not considered. CalAmp was found to have preserved that issue after the Markman hearing but was found not have “identified [it] at any time thereafter”, and therefore found not to have preserved the issue for appeal (Becton, FC 1990; FRCP 46). The FC panel reviewed the DC’s denial of CalAmp’s judgment of a matter of law (JMOL) on various infringement issues de novo (In re: Copaxone (FC 2018) (where DC relies on intrinsic claim construction evidence, review is de novo); Avid Tech., FC 2016 (error must be remanded unless “non prejudicial, i.e., was harmless”)). Regarding ‘727 claim 11, the FC panel agreed with the jury’s finding of infringement (“admittedly a close issue”). Regarding the ‘876 and ‘885 patent claims, the FC panel explained that it “assume[s] that a systems claims is infringed by the sale of the system” and then “[t]he question…is whether ‘all of the elements of the claim…[are] present in the accused system[s] allegedly sold by CalAmp” (Netword, FC 2001; Centillion, FC 2011). And the FC panel concluded that the ‘876 and ‘885 patent system claims require a “receiver” to receive “signals from a ‘transmitter’ on the cell tower”, “[b]ut CalAmp is not alleged to provide the cell tower” (“not all the required claim elements”), and was therefore found to be entitled to JMOL of no direct infringement. On induced infringement of the ‘876 and ‘885 patent system claims, the FC panel explained that “liability for inducement must be predicated on direct infringement” (Limelight, US 2014; Enplas, FC 2018) and “Omega’s theory here is that CalAmp’s customers directly infringe the systems claims.” The FC panel affirmed the jury’s verdict as to all of the ‘876 claims except claim 12, and remanded that claim and the ‘885 claims “for a new trial on the issue of whether there were predicate acts of direct infringement.” CalAmp also argued it was entitled to a new trial because the written questions submitted to the jury regarding inducement were erroneous, and the FC panel agreed since the DC erroneously excluded evidence as to “CalAmp’s state of mind” which “substantially prejudiced CalAmp’s ability to present its defense” (Enplas, FC 2018 (must show “alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement”; “CalAmp’s state of mind as to the validity of the asserted patents at the time of infringement is irrelevant as to the issue of inducement.”)). The FC panel also concluded “a new trial is required on direct infringement” of the ‘278 device claims by CalAmp for the same reasons as ‘876 claim 12 and the ‘885 claims. The FC panel reviewed the compensatory damages award based on total sales as to ‘727 claim 11, since infringement was only affirmed “as to a subset of CalAmp’s products”. The FC panel vacated the jury’s finding of willfulness, and the associated awards of enhanced damages and attorney’s fees, as it “cannot determined which patent(s) or claim(s) the jury found to be willfully infringed”. It did find that the DC’s “exclusion of [CalAmp’s expert] testimony relating to CalAmp’s state of mind prior to the alleged acts of infringement was an abuse of discretion” and that the DC erred in preventing entry of “opinion-of-counsel evidence” (“remains relevant to the infringer’s state of mind post-Halo”; Broadcom, FC 2008; Bettcher, FC 2011; Exmark, FC 2018; Polara Eng’g, FC 2018).

This entry was posted in Attorney's Fees, Claim Construction, Damages, Inducement to Infringe, Infringement, Willfullness. Bookmark the permalink.

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