13 F.4th 1361
Fed. Cir.2021Background
- Omega Patents, LLC (plaintiff) owns patents relating to multi-vehicle‑compatible telematics units; CalAmp (defendant) sells LMU‑3000/3030/3050 devices accused of infringing those patents (notably U.S. Pat. No. 8,032,278 (ʼ278) and U.S. Pat. No. 6,756,885 (ʼ885)).
- First trial: mixed verdict; this Court (Fed. Cir.) reversed or vacated several infringement findings and remanded (Omega Pats., LLC v. CalAmp Corp., 920 F.3d 1337 (Fed. Cir. 2019)).
- On remand a second jury found CalAmp directly infringed the asserted claims of the ʼ278 patent (917,222 infringing units) and awarded $5.00 per unit (≈ $4.59M); it also found customers directly infringed the ʼ885 claims but found no induced infringement; no willfulness.
- CalAmp appealed several rulings (denial of JMOL/new trial on ʼ278 infringement; evidentiary rulings limiting its expert; sufficiency/apportionment of damages). Omega cross‑appealed the ongoing royalty rate.
- The Federal Circuit: affirmed infringement of the asserted ʼ278 claims; vacated and remanded the jury finding of direct customer infringement of the ʼ885 patent (as moot given no induced‑infringement judgment), vacated the damages award for ʼ278 and ordered a new trial on damages (finding error in excluding CalAmp’s rebuttal expert and insufficient apportionment/support for the $5 jury royalty); dismissed Omega’s cross‑appeal as moot.
Issues
| Issue | Plaintiff's Argument (Omega) | Defendant's Argument (CalAmp) | Held |
|---|---|---|---|
| 1) Jury finding that CalAmp customers directly infringed ʼ885 | Customers did directly infringe; finding supports induced‑infringement theory | JMOL: customers did not directly infringe; vacate finding if not reached on merits | Finding vacated as moot (no induced‑infringement judgment on appeal); verdict expunged under Camreta when appeal frustrated |
| 2) Direct infringement of ʼ278; admissibility/scope of expert McAlexander | Expert testimony showed LMUs receive ECU signals (vehicle device) and download "enabling data" (scripts) — supports device‑code and enabling‑data limitations | Expert went beyond report; Omega advanced improper "stored device code" theory making LMU a vehicle device | Denied JMOL/new trial; court held expert testimony was within report scope and evidence supported device‑code (ECU signals) and enabling‑data findings; infringement affirmed |
| 3) Exclusion of CalAmp damages expert Dr. McDuff at retrial | Omega: prior Daubert exclusion stands; CalAmp waived challenge | CalAmp: law‑of‑the‑case/mandate required reconsideration; Dr. McDuff should have been allowed to rebut Omega’s damages case | Court: district erred—mandate permitted reconsideration; excluding fully disclosed rebuttal witness was abuse of discretion; new trial on damages warranted |
| 4) Sufficiency/apportionment of damages and $5/unit royalty | Proffered comparable licenses and Omega licensing policy ($5 per first data‑bus patent) show built‑in apportionment; jury could rely on licenses and testimony | $5 award lacked apportionment; Omega failed to prove the patented feature drove demand or that licenses were sufficiently comparable | Court: Omega failed to prove apportionment or comparability of licenses to support $5/unit; damages award vacated and remanded for new trial |
| 5) Ongoing royalty (Omega cross‑appeal) | $5 ongoing royalty is proper | — | Cross‑appeal rendered moot because damages award vacated; dismissed |
Key Cases Cited
- Omega Pats., LLC v. CalAmp Corp., 920 F.3d 1337 (Fed. Cir. 2019) (prior Federal Circuit opinion remanding various issues for retrial and clarifying claim construction)
- Camreta v. Greene, 563 U.S. 692 (U.S. 2011) (vacatur is equitable remedy when appeal review is frustrated)
- LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51 (Fed. Cir. 2012) (patentee must apportion damages between patented and unpatented features)
- VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014) (entire‑market‑value rule: patented feature must drive demand or substantially create product value)
- Ericsson, Inc. v. D‑Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (reasonable royalty must reflect incremental value of patented invention in multicomponent products)
- Vectura Ltd. v. Glaxosmithkline LLC, 981 F.3d 1030 (Fed. Cir. 2020) ("built‑in apportionment" may come from sufficiently comparable licenses)
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (patentee bears burden to show prior licenses are sufficiently comparable to hypothetical negotiation)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (U.S. 1993) (trial court gatekeeping of expert testimony; admissibility does not foreclose sufficiency challenges)