PATENT CASE OF THE WEEK

Omega Patents, LLC v. CalAmp Corp., Appeal No. 2018-1309 (Fed. Cir. Apr. 8, 2019)

In an appeal from a series of post-trial decisions, the Federal Circuit provided several important opinions.

The Court addressed the effects of failing to apprise the district court of the consequences of a particular claim construction. In this case, the parties briefed their Markman positions and the district court rendered its opinions. The jury found the claims not invalid based on the prior art presented at trial. On appeal, CalAmp appealed the invalidity findings—not based on the prior art that was admitted at trial, but based on the prior art that was not relevant at trial because of the Court’s Markman decision.

The Federal Circuit affirmed, relying on rarely invoked Fed. R. Civ. P. 46. That rule requires that “a party, at the time the ruling or order of the trial judge is … sought, make known to the court the action that he desires the court to take … and the grounds therefore,” otherwise a claim of error is typically forfeited. The Court noted that “CalAmp did nothing in the district court Markman proceeding to specifically identify the prior art that would be impacted by the claim construction ruling. At the Markman hearing, there was no identification of any specific prior art references that would be excluded by the district court’s claim construction ruling.”  The Court elaborated: “To be sure, CalAmp was not required to identify the prior art at the Markman proceeding in order to preserve the argument, but here CalAmp fails to argue the prior art was identified at any time thereafter.” 

On this rationale, the Court denied the challenge to the claim constructions and the no-invalidity finding.

In another claim construction dispute, the district court judge declined to give a term a construction because that term was defined in the patent, over the objection of CalAmp. CalAmp appealed the non-construction and the jury finding of infringement of one of the claims based on what may have been an errant construction applied by the jury. The Federal Circuit reversed, relying on O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008), which held “[w]hen the parties raise an actual dispute regarding the proper scope of [] claims, the court, not the jury, must resolve that dispute.”  The Court held that “[t]he court is not absolved of this duty to construe the actually disputed terms just because the specification of the patent defines the term. Even if the parties had agreed to the construction, the district court was still obligated to give that construction to the jury.”

Ultimately, the Court affirmed infringement for a single claim out of 30 that were asserted, and for that claim, held that infringement could only be sustained for 5% of the products sold. For that reason among certain evidentiary issues, the Court ordered a new trial on numerous issues, including infringement of the claims where claim construction was lacking, induced infringement, damages, willful infringement, enhanced damages, along with a reassessment of any entitlement to attorneys’ fees.

The opinion can be found here.

ALSO THIS WEEK

ATI Technologies ULC v. Iancu, Appeal Nos. 2016-2222, -2406, -2608 (Fed. Cir. Apr. 11, 2019)

In an appeal from an inter partes review, the Federal Circuit reversed a finding of unpatentability with respect to a number of patents relating to computer 3-D imaging software.  The PTAB had held the claims invalid over the prior art, even though the patentee had submitted a declaration with evidence of an earlier conception date. The PTAB credited the conception date, but held that there was insufficient evidence of diligent reduction to practice. The Federal Circuit held that the PTAB relied on an erroneous standard for diligence, requiring a showing of “continuous reasonable diligence” as opposed to “reasonably continuous diligence.”  The Court found this difference to be not inconsequential, particularly because ATI had submitted 1,300 pages of documentary evidence corroborating efforts to reduce the invention to practice, including on each business day between conception and the filing of the patent applications. Because the Court held that “the record is clear that ATI exercised the requisite ‘reasonably continuous diligence,’” it reversed the PTAB’s determination. 

The opinion can be found here.