Omega Patents Showcases the Need to Specifically Identify Prior Art and the Bases of Willful Infringement

In Omega Patents, LLC v. CalAmp Corporation, No. 2018-1309 (Fed. Cir. April 8, 2019), the Federal Circuit affirmed a finding that the asserted claims of four patents are not invalid, affirmed a finding of infringement for a subset of the claims, remanded a finding of infringement for the remaining claims, and vacated an award of enhanced damages.

CalAmp argued that the district court’s claim construction was erroneous and that its invalidity argument would include additional prior art if the claims were correctly construed.  It did not identify the additional prior art or attempt to enter it into the record.  Accordingly, the Federal Circuit found CalAmp failed to satisfy the requirements of FRCP 46 and affirmed the validity finding.

The Federal Circuit also vacated and remanded findings of infringement for a subset of the asserted claims, agreeing with CalAmp that Omega failed to show direct infringement or the requisite mental state for induced infringement. 

Finally, the enhanced damages award was based on a finding that “CalAmp willfully infringed a valid patent” but did not specify which claims or patents were willfully infringed.  The Federal Circuit vacated the willfulness finding and the enhanced damages award because it was unclear which claims the jury believed to be willfully infringed.