{"id":3124,"date":"2021-09-15T02:23:00","date_gmt":"2021-09-15T07:23:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=3124"},"modified":"2021-09-19T21:29:56","modified_gmt":"2021-09-20T02:29:56","slug":"damage-award-must-reflect-apportionment-of-incremental-value-of-invention","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=3124","title":{"rendered":"Damage Award Must Reflect Apportionment of Incremental Value of Invention"},"content":{"rendered":"\n

In Omega Patents, LLC. v. CalAmp Corp.<\/a>, [2020-1793, 2020-1794] (September 14, 2021), the Federal Circuit affirmed the judgment of infringement of the asserted claims of U.S. Patent No. 8,032,278, but vacated and remanded for a new trial on damages. The Federal Circuit also vacated the jury\u2019s finding of direct infringement of U.S. Patent No. 6,756,885.\u00a0 The patents relate generally to multi-vehicle-compatible systems that can remotely control various vehicle functions (for example, remote vehicle starting), and read the status of various vehicle devices (for example, battery health).<\/p>\n\n\n\n

CalAmp appealed (1) the district court\u2019s denial of JMOL that CalAmp\u2019s customers did not directly infringe the \u2019885 patent (and in the alternative, CalAmp requests that we vacate the direct-infringement finding); (2) the district court\u2019s denial of JMOL and a new trial on CalAmp\u2019s infringement of the \u2019278 patent; and (3) the district court\u2019s denial of remittitur and a new trial as to damages for the \u2019278 patent. Omega cross-appealed the district court\u2019s de-termination of the ongoing royalty rate for infringement of the \u2019278 patent.<\/p>\n\n\n\n

The Federal Circuit vacated the finding of direct infringement by CalAmp\u2019s customers of the \u2018885 patent because Omega\u2019s decision not to appeal the final judgment of non-induced infringement frustrated the CalAmp\u2019s right to appeal, and pointing out that the question of whether CalAmp\u2019s customers directly infringed the asserted claims of the \u2019885 patent is moot.<\/p>\n\n\n\n

The Federal Circuit also found that the district court properly denied JMOL and an new trial on the issue of infringement of the \u2018278 patent.  CalAmp argued that that the district court improperly permitted Omega\u2019s technical expert, Joseph McAlexander, to testify beyond the scope of his expert report.  The Federal Circuit found that the report \u201cprovided enough notice to CalAmp to adequate prepare its case, and noted that CalAmp deposed the expert in line with is ultimate trial testimony.<\/p>\n\n\n\n

CalAmp also argued that Omega presented an improper \u201cdevice code\u201d theory to the jury upon which the jury relied and that Omega failed to present evidence that two claim limitations were met.  The Federal Circuit disagreed, and pointed out that there was adequate evidence of direct infringement.  The Federal Circuit further found that Omega failed to object to the allegedly improper evidence of infringement, waiving any objection thereto.  Finally, given the instructions that were given to the jury, the Federal Circuit said it must assume that the jury verdict rested on a proper theory.<\/p>\n\n\n\n

On the issue of damages, CalAmp argued that the district court erroneously precluded its damages expert from testifying in rebuttal, and that Omega\u2019s damages theory was legally flawed.  The Federal Circuit agreed that it was error to preclude CalAmp\u2019s expert from testifying on rebuttal, simply because his direct testimony was excluded, and this exclusion was not appealed.  The Federal Circuit found that law of the case did not apply to preclude other testimony from the excluded expert.<\/p>\n\n\n\n

The Federal Circuit concluded that ultimately, a new trial on damages was warranted. The jury awarded a $5.00-per-unit royalty for CalAmp\u2019s infringement of the \u2019278 patent, and CalAmp argued that the $5.00 royalty figure  does not reflect apportionment and that Omega failed to show the incremental value of the \u2019278 patent (or that the patented improvement drove demand for the entire accused product), rendering the jury\u2019s damages award unsustainable.  The patentee must in every case give evidence tending to separate or apportion the patentee\u2019s damages between the patented feature and the unpatented features.  No matter what the form of the royalty, a patentee must take care to seek only those damages attributable to the infringing features.  Where multi-component products are involved, the governing rule is that the ultimate combination of royalty base and royalty rate must reflect the value attributable to the infringing features of the product, and no more.<\/p>\n\n\n\n

Omega argued that because its claims included all the elements of the accused device, no apportionment was needed.  Citing Exmark v. Briggs & Stratton, the Federal said that even when the claims are directed to a product as a whole, the patent owner was still required to \u201capportion or separate the damages between the patented improvement and the conventional components of the multicomponent product\u201d to ensure that the patent owner was compensated for the patented improvement.<\/p>\n\n\n\n

Turning to the merits of apportionment, the Federal Circuit concluded that Omega did not present sufficient evidence to the jury to sustain its damages award for infringement of the asserted claims of the \u2019278 patent. First, it said that Omega failed to show that its patented improvement drove demand for the entire product. Second, in the alternative, it said that Omega failed to show the incremental value that its patented improvement added to the product as apportioned from the value of any conventional features. Lastly, the Federal Circuit rejected Omega\u2019s comparable-licenses theory, finding that flat fee licensing did not address \u201cbuilt-in apportionment\u201d between the patented improvements and the conventional features of the accused products.  The Federal Circuit likewise concluded that Omega failed to show built-in apportionment based on specific the license agreements presented to the jury.   <\/p>\n","protected":false},"excerpt":{"rendered":"

In Omega Patents, LLC. v. CalAmp Corp., [2020-1793, 2020-1794] (September 14, 2021), the Federal Circuit affirmed the judgment of infringement of the asserted claims of U.S. Patent No. 8,032,278, but vacated and remanded for a new trial on damages. The … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[48],"tags":[],"class_list":["post-3124","post","type-post","status-publish","format-standard","hentry","category-damages"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3124","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=3124"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3124\/revisions"}],"predecessor-version":[{"id":3125,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3124\/revisions\/3125"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=3124"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=3124"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=3124"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}