OMEGA PATENTS, LLC v. CALAMP CORP.
Before Prost, Dyk, and Wallach. Appeal from the United States District Court for the Middle District of Florida.
Summary: Asserting the district court’s claim construction prevented consideration of additional prior art, without identifying the specific prior art, fails to meet the requirements of FRCP 46.
Omega sued CalAmp for patent infringement. The jury found willful infringement and found all asserted claims were not invalid. The district court awarded treble damages, attorney’s fees, damages for post-verdict sales, and pre-judgment interest. CalAmp appealed.
CalAmp argued the district court’s claim construction effectively prevented CalAmp from relying upon additional prior art to support its invalidity defense. The Federal Circuit rejected that argument because CalAmp failed to identify the art that may be impacted by the claim construction ruling. CalAmp failed to satisfy FRCP 46 by failing to seek admission into evidence of, or specifically identify, the additional prior art. Thus, the Federal Circuit affirmed on validity. However, the Federal Circuit found only a subset of accused products infringed a subset of the claims. The Federal Circuit vacated the willfulness finding because the jury verdict did not specify which claims CalAmp willfully infringed, and vacated the enhanced damages and attorney’s fees awards because they were based on the willfulness finding. The Federal Circuit also held that the district court abused its discretion in excluding CalAmp testimony regarding its mental state for willfulness. While such testimony could confuse the jury to believe it was relevant for determining infringement and validity, it was important for determining willfulness.