Omega Patents, LLC ("Omega") sued CalAmp Corp.
("CalAmp") for patent infringement in the Middle District
of Florida. The jury returned a verdict for Omega, finding all of
the asserted claims valid and infringed. On April 5, 2017, U.S.
District Judge Paul G. Byron granted Omega's motions for entry
of final judgment, an award of attorney's fees and enhanced
damages against CalAmp. Judge Byron's opinion highlights the
importance of presenting credible evidence of an accused
infringer's reliance on opinions of counsel at a time before
commencing the challenged conduct. The court did not seem to give
much weight to after-the-fact opinions.
The court first concluded that Omega is entitled to enhanced
damages under the Supreme Court's Halo Elecs., Inc. v.
Pulse Elecs., Inc. decision and reasonable attorney's fees
under the Octane Fitness, LLC v. ICON Health & Fitness,
Inc. decision. Importantly, the court stated that culpability
for enhanced damages should be measured against the knowledge of
the actor at the time of the challenged conduct.
In this case, CalAmp was fully aware of the asserted patents
through licensing negotiations with Omega long before introducing
the accused products. CalAmp presented various noninfringement
arguments, but none was deemed credible. First, CalAmp's
corporate representative and CalAmp's technical expert both
argued that the accused devices did not infringe because they read
vehicle speed data from a GPS module instead of a data bus, as
required by the asserted claims. Second, those same witnesses
argued that, to the extent that the accused products read speed
data from the data bus, it was the end users who programmed the
accused devices to perform that way – not CalAmp.
Both arguments were discredited by contradictory testimony and
sworn interrogatory responses, which admitted that the accused
products read speed data from the data bus and that it was, in
fact, CalAmp that programmed them to operate that way. The court
held that the contradictory evidence provided substantial support
for the jury's finding of willfulness.
The court next analyzed CalAmp's evidence regarding opinions
of counsel. CalAmp's representative testified that, in 2010,
before launching the accused devices, CalAmp received verbal
opinions of counsel that the accused products did not infringe
then-existing patents. This testimony about oral assurances,
however, was called into question by an email from three years
later in which that same individual expressed concern about
infringing certain claims (later asserted in this litigation) that
"relate to how [CalAmp] program[s] a unit at the
factory." In addition to citing the CalAmp
representative's prior discredited testimony, the court
reasoned that CalAmp's representative should have had no reason
to worry or to suggest a noninfringement theory in 2013 had counsel
in fact vetted the accused devices in 2010.
The court next concluded that CalAmp did not have a "close
case" or a good-faith belief that the patents were not
infringed or invalid. Regarding noninfringement, the court
concluded that the defense theory emerged late in the litigation
and therefore failed to mitigate CalAmp's culpability at the
time of infringement. Further, regarding CalAmp's invalidity
defense, the court found that the expert failed to articulate any
motivation to combine the prior art references. Because there is no
evidence that the expert provided CalAmp with invalidity opinions
before launch, the court found that, under Halo, the
after-the-fact invalidity opinion was of little merit in assessing
enhanced damages. Additionally, although the United States Patent
and Trademark Office (USPTO) issued Office Actions rejecting some
of the asserted claims in ex parte reexamination
proceedings, the court held that the USPTO's decision does not
have any preclusive effect as to the jury verdict, unless the
Federal Circuit affirms the USPTO before the jury's verdict
The court awarded enhanced damages of threefold the actual
damages and also awarded reasonable attorney's fees based on an
analysis of the applicable Read factors, including
evidence of deliberate copying, whether CalAmp had a good-faith
basis for believing that it did not infringe or that the patents
were invalid, the closeness of the case, the relative size and
financial condition of CalAmp, and the duration of the
Omega Patents, LLC v. CalAmp Corp., Case No.
6:13-cv-1050-ORL-40DCI (M.D. Fla. April 5, 2017)
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In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
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