Tuesday, April 09, 2019

CAFC reviews decision of MD FL in Omega: specificity needed to preserve appeal on invalidty issue

The outcome was mixed:

CalAmp Corp. appeals from a judgment that U.S. Patent Nos. 6,346,876 (’876 patent),
6,756,885 (’885 patent),
7,671,727 (’727 patent), and 8,032,278 (’278 patent) were
infringed and are not invalid. We affirm the judgment of no
invalidity, affirm-in-part, reverse-in-part, vacate-in-part,
and remand the judgment as to direct infringement. We vacate and remand
for a new trial on indirect infringement,
compensatory damages, willful infringement, enhanced
damages, and attorney’s fees.

CalAmp's argument of invalidity was of interest:

CalAmp argues that the district court’s claim construction of the terms
“transmitter,” “receiver,” and “data communication bus / vehicle data communications bus / vehicle
data bus” were erroneous. Some or all of the terminology
appears in each of the various claims of the asserted patents. There is no argument that these constructions had
any effect on the jury’s findings of infringement. Rather,
CalAmp contends that these constructions affected the
jury’s verdict of invalidity, though there is no claim that
these constructions affected invalidity with respect to prior
art introduced at trial. The contention is that had the district court adopted CalAmp’s proposed constructions,
“CalAmp’s invalidity defenses would have included additional prior art references.”

CalAmp, Open. Br. at 17.

The CAFC noted:

“Federal Rule [of Civil Procedure] 46 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 therefor,” otherwise
a claim of error is typically forfeited. 9B Charles A. Wright
& Arthur R. Miller, Federal Practice and Procedure § 2472
(3d ed. 2018) (“Wright & Miller”). “This requirement is not
a mere technical formality and is essential to the orderly
administration of civil justice.” Id. At the same time, courts
have recognized that the requirement of securing a ruling
is “not to be applied in a ritualistic fashion.” Wright & Miller § 2472.
Context may well reveal an implicit ruling that
will suffice to preserve the issue. CalAmp informed the district court
during Markman that construction of the terms
“transmitter,” “receiver,” and “data bus” were actually in
dispute because additional prior art for CalAmp’s invalidity defense may
or may not be relevant depending on the
court’s construction.
Here 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.2 Instead, the court
was presented with only vague claims that there was prior
art before August 22, 1995, one year before the earliest priority date of the asserted patents,
that would be relevant
under CalAmp’s proposed construction. 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.
In its opening brief on appeal, CalAmp argued its “invalidity defenses would have included additional prior art
references showing such wired connections.” But in its
opening brief CalAmp failed to present a developed argument as to why any actions by the district court after the
Markman hearing had the effect of excluding or limiting
prior art that CalAmp offered to present or even what relevant prior art was excluded by the claim construction ruling. Under these circumstances, CalAmp has failed to
properly preserve the issue.


We decline CalAmp’s invitation to speculate as to how
additional prior art may have been rendered irrelevant
under the court’s claim construction. Thus, although
CalAmp’s challenge to the district court’s claim construction was preserved under Federal Rule of Civil Procedure
51 for purposes of challenging the jury instructions, Lighting Ballast Control LLC v. Phillips Elecs. N. Am. Corp., 790
F.3d 1329, 1338 (Fed. Cir. 2015), we conclude that CalAmp
failed to satisfy the requirements of Federal Rule of Civil
Procedure 46 by not seeking admission into evidence of, or
at least specifically identifying, the additional prior art.
Such a request and specific ruling by the district court is
particularly necessary where the prior art concerns a defense of obviousness because a prior art reference need not
satisfy every claim element to still be relevant to obviousness.
For these reasons, we affirm the judgment as to the validity of the asserted patent claims.


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