920 F.3d 1337
Fed. Cir.2019Background
- Omega Patents sued CalAmp alleging infringement of multiple patents (’876, ’885, ’727, ’278) related to multi-vehicle compatible telematics units that communicate with a vehicle data bus and can read device codes and send notifications (e.g., speed-exceeded alerts).
- CalAmp sells LMU devices (LMU-3000/3030/3050 and VPOD products) that connect to vehicle data buses and use GPS and/or vehicle-bus data plus server-side scripts to generate alerts and reports.
- A jury found the asserted claims not invalid, found CalAmp (and/or its customers) infringed, and found willful infringement; jury awarded ≈ $2.98M in compensatory damages; district court trebled damages, awarded fees and post-verdict sales, yielding ≈ $15M total.
- On appeal CalAmp challenged claim constructions, infringement findings (direct and induced), and evidentiary rulings affecting intent/willfulness; Omega defended the jury verdicts and damages.
- The Federal Circuit: affirmed validity, affirmed direct infringement of one ’727 claim (original claim 11), reversed or vacated other infringement findings (systems and device-code-related claims), vacated damages, willfulness, enhanced damages, and fees, and remanded for new trials on multiple issues.
Issues
| Issue | Plaintiff's Argument (Omega) | Defendant's Argument (CalAmp) | Held |
|---|---|---|---|
| Claim construction affected invalidity | Court’s constructions were proper; CalAmp still had prior-art opportunities | CalAmp said constructions ("transmitter/receiver/data bus") excluded prior art and impaired invalidity defenses | Court: CalAmp failed to preserve showing of specific excluded prior art; validity verdict affirmed |
| Direct infringement of system claims (’876, ’885) | Sales of CalAmp systems to customers make the systems and satisfy claim elements | CalAmp lacks certain claim elements (e.g., cell-tower transmitter/receiver) and thus cannot be the "maker" of full systems | JMOL granted for no direct infringement by CalAmp for asserted ’876 and ’885 claims (CalAmp did not supply cell-tower elements) |
| Direct infringement of device claims (’727 claim 11; ’278 and device-code claims) | LMUs and installed scripts cause devices to read bus data and send alerts; customers and CalAmp installed scripts that cause infringement | CalAmp says most devices use GPS, not bus speed; scripts installed only on a small subset; LMU is not a "vehicle device" under proper construction | Affirmed infringement for subset of claim 11 (sufficient evidence for jury). For claims requiring "vehicle device"/"device code", court vacated verdict and ordered new trial because district court failed to construe "vehicle device" and jury may have relied on inconsistent theory |
| Induced infringement / requisite intent | Customers used devices; CalAmp induced by selling, programming, and marketing products | CalAmp argued no predicate direct infringement by customers or lack of specific intent; exclusion of witness testimony prejudiced its defense | Predicate direct infringement by customers upheld for certain ’876 claims; but induced-infringement findings vacated and remanded for new trial due to exclusion of state-of-mind evidence (Chen and limited Bailey testimony) |
| Damages and willfulness | Damages based on total sales and prior licenses (MFN clauses) justify verdict; jury found willfulness | CalAmp argued damages unsupported because only a subset of devices infringed; willfulness verdict unclear as to which claims and tainted by evidentiary rulings | Damages vacated (insufficient evidence tying total sales to the single affirmed claim). Willfulness, enhanced damages, and fees vacated and remanded for retrial due to unclear jury finding and excluded intent evidence |
Key Cases Cited
- Lighting Ballast Control LLC v. Phillips Elecs. N. Am. Corp., 790 F.3d 1329 (Fed. Cir.) (claim-construction and jury-instruction preservation principles)
- In re: Copaxone Consolidated Cases, 906 F.3d 1013 (Fed. Cir.) (de novo review of intrinsic-only claim construction)
- Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040 (Fed. Cir.) (instruction error requires vacatur unless harmless)
- Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir.) (to "make" a system defendant must provide all claim elements)
- Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, 631 F.3d 1279 (Fed. Cir.) (to "use" a system, party must control the system as a whole and obtain benefit)
- Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915 (U.S.) (inducement liability requires underlying direct infringement)
- Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398 (Fed. Cir.) (inducement requires knowledge of patent and that induced acts constitute infringement)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir.) (court must resolve actual claim-scope disputes)
- Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (U.S.) (belief in invalidity does not negate inducement scienter)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (U.S.) (willfulness/inducement scienter standards)
- Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332 (Fed. Cir.) (advice-of-counsel evidence relevant to willfulness post-Halo)
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir.) (new trial required when willfulness verdict depends on invalidated infringement findings)