A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Omega Patents, LLC v. CalAmp Corp., No. 2018-1309 (Fed. Cir. (M.D. Fla.) Apr. 8, 2019). Opinion by Dyk, joined by Prost and Wallach.
After a trial, a jury found that all asserted claims of three patents were not invalid and were willfully infringed by CalAmp. The district court then trebled the jury’s compensatory damages and awarded attorneys’ fees, supplemental damages, prejudgment interest, and an ongoing royalty. CalAmp appealed a myriad of issues.
On the issue of validity, CalAmp argued that the district court’s claim construction was erroneous and served to exclude or limit the prior art it could present to the jury. The Federal Circuit determined, however, that CalAmp failed to preserve this issue for appeal. The court explained that CalAmp failed to comply with Federal Rule of Civil Procedure 46 “by not seeking admission into evidence of, or at least specifically identifying, the additional prior art.” Moreover, CalAmp failed to show on appeal “why any actions by the district court after the Markman hearing had the effect of excluding or limiting prior art that CalAmp offered to present or even what relevant prior art was excluded by the claim construction ruling.”
Turning to infringement, the Federal Circuit first concluded that, although “a close issue,” there was sufficient evidence for a reasonable jury to have found that CalAmp directly infringed one claim of one of the asserted patents. For all remaining claims, though, the Federal Circuit agreed with CalAmp. As to direct infringement, the Federal Circuit ruled that there was insufficient evidence for the jury to have found that CalAmp’s systems infringe because CalAmp did not provide all of the required claim elements. Specifically, CalAmp did not provide a cell tower with a particular “transmitter” as required by the claims.
As to induced infringement, the Federal Circuit addressed two sets of claims, analyzing whether the evidence sufficiently demonstrated predicate acts of direct infringement by CalAmp’s customers. For the first set of claims, the Federal Circuit upheld the jury verdict. For the second set, the Federal Circuit vacated and remanded for a new trial. The district court had construed the claim term “device code” to mean a “signal from a vehicle device,” but the court had declined to define “vehicle device.” As such, the Federal Circuit could not discern whether the jury found infringement based on a proper construction: “In the absence of guidance in the form of proper claim construction, the jury lacked a yardstick by which to measure the arguments and evidence on this issue and assess whether Omega’s infringement theory was a valid one.” Thus, a new trial on induced infringement was warranted.
On the issue of damages, the Federal Circuit vacated and remanded for a new trial because there was insufficient evidence to support the damages award “based on infringement of … the sole claim as to which we have affirmed the verdict of CalAmp’s infringement.” Likewise, the Federal Circuit vacated the jury’s willfulness verdict and the district court’s award of attorneys’ fees and enhanced damages.
ATI Technologies ULC v. Iancu, Nos. 2016-2222, -2406, -2608 (Fed. Cir. (PTAB) Apr. 11, 2019). Opinion by Newman, joined by O’Malley and Wallach.
In three final decisions stemming from IPR proceedings, the Patent Trial and Appeal Board found that certain patent claims challenged by LG Electronics were unpatentable. In so ruling, the Board found that the patent owner, ATI Technologies, failed to antedate the cited references because ATI had not established diligence from its prior conception leading to constructive reductions to practice. ATI appealed, and the Federal Circuit reversed.
In an effort to demonstrate diligence before the Board, ATI submitted an inventor declaration accompanied by “almost 1300 pages of documentary records showing the work done and by whom and when, including metadata, document logs, and folder histories.” The Board found, however, that ATI had not provided “evidence that is specific both as to facts and dates” for the critical periods. The Board also deemed the inventors’ daily activity insufficient because some of their work focused on developing alternative designs and optional features not recited in the claims.
On appeal, the Federal Circuit ruled that the Board applied the wrong legal standard for diligence and erred in its application of the law of diligence. Quoting precedent, the Federal Circuit explained that, “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” The court explained that “the purpose of the diligence requirement is to show that the invention was not abandoned or set aside.” Also, “[d]iligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention.” The Federal Circuit ultimately concluded that, “under the proper legal standard, the record is clear that ATI exercised the requisite ‘reasonably continuous diligence.’” The Federal Circuit therefore reversed the Board’s decisions of unpatentability.