Omega Patents, LLC v. Calamp Corp. ( 2021 )

Case: 20-1793 Document: 44 Page: 1 Filed: 09/14/2021
United States Court of Appeals
for the Federal Circuit
______________________
OMEGA PATENTS, LLC,
Plaintiff-Cross-Appellant
v.
CALAMP CORP.,
Defendant-Appellant
______________________
2020-1793, 2020-1794
______________________
Appeals from the United States District Court for the
Middle District of Florida in No. 6:13-cv-01950-PGB-DCI,
Judge Paul G. Byron.
______________________
Decided: September 14, 2021
______________________
MEGAN S. WOODWORTH, Venable LLP, Washington,
DC, argued for plaintiff-cross-appellant. Also represented
by BRIAN R. GILCHRIST, RYAN SANTURRI, Allen, Dyer, Dop-
pelt + Gilchrist, PA, Orlando, FL.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, argued for defendant-appellant. Also represented
by STEPHANIE P. KOH, LEIF E. PETERSON, II, THOMAS D.
REIN.
______________________
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2 OMEGA PATENTS, LLC v. CALAMP CORP.
Before DYK, PROST *, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Opinion joining in part and dissenting in part filed by
Circuit Judge HUGHES.
PROST, Circuit Judge.
CalAmp Corp. (“CalAmp”) appeals from a judgment of
infringement and award of damages as to U.S. Patent
No. 8,032,278 (“the ’278 patent”). Omega Patents, LLC
(“Omega”) cross-appeals the district court’s determination
of the post-verdict royalty rate. We affirm the judgment of
infringement of the asserted claims of the ’278 patent but
vacate and remand for a new trial on damages. Omega’s
cross-appeal is therefore moot.
The jury further found that CalAmp did not induce in-
fringement of the asserted claims of U.S. Patent
No. 6,756,885 (“the ’885 patent”) and Omega does not ap-
peal that determination. CalAmp, however, appeals the
jury’s underlying finding of direct infringement of the as-
serted claims by CalAmp’s customers. We vacate the jury’s
finding of direct infringement.
BACKGROUND
This patent-infringement case is before us for a second
time, returning after a second jury trial. In the second
trial, like the first, Omega accused CalAmp of infringing
certain claims of the ’278 patent, the ’885 patent, and U.S.
Patent Nos. 6,346,876 (“the ’876 patent”) and 7,671,727
(“the ’727 patent”).
Omega is listed as the assignee of the four patents in
suit. Omega’s president, Kenneth Flick, is listed as the sole
inventor of each patent. The patents generally relate to
* Circuit Judge Sharon Prost vacated the position of
Chief Judge on May 21, 2021.
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OMEGA PATENTS, LLC v. CALAMP CORP. 3
multi-vehicle-compatible systems that can remotely con-
trol various vehicle functions (for example, remote vehicle
starting), see, e.g., ’885 patent col. 3 ll. 32–34, and read the
status of various vehicle devices (for example, battery
health), see, e.g., ’278 patent col. 18 ll. 56–57. The systems
can also be used to notify the driver, or the driver’s em-
ployer, if certain conditions occur (for example, speeding).
See, e.g., id. at col. 9 ll. 26–33. To be compatible with dif-
ferent vehicles, the controller must determine the appro-
priate protocol to use in communicating with a particular
vehicle data bus (an internal communications network),
which is connected to various devices in the vehicle. This
process involves the controller first sending out a series of
signals using different protocols to the vehicle’s data bus,
which relays those signals to the vehicle’s devices. If a ve-
hicle device recognizes one of the signals, it can then re-
spond with its own signal, which travels to the data bus
and then back to the controller. The controller relies on
this response to determine the appropriate protocol to use
for further communication with the vehicle devices. See,
e.g., ’885 patent col. 4 ll. 9–23, col. 9 ll. 21–55.
CalAmp operates in the telematics industry, assisting
businesses and government entities in tracking and collect-
ing data for their assets (for example, a fleet of vehicles).
CalAmp sells its Location Messaging Unit (“LMU”) prod-
ucts, which are multi-vehicle-compatible devices that in-
clude a GPS receiver for vehicle tracking. The products at
issue in this appeal are the LMU-3000, LMU-3030, and
LMU-3050 (“the LMUs” or “the Accused LMUs”). The
LMUs connect to a vehicle’s data communication bus via
the onboard diagnostics port and can retrieve information
(for example, battery health or vehicle speed) from the ve-
hicle’s engine control unit (“ECU”) via the vehicle’s data
bus. Further, the LMUs can relay information (for exam-
ple, a speeding notification) to CalAmp’s servers, which en-
ables businesses to remotely monitor various aspects of
their vehicles.
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4 OMEGA PATENTS, LLC v. CALAMP CORP.
In the first trial, the jury found all asserted claims not
invalid, found that CalAmp directly infringed certain
claims of each of the four patents, found that CalAmp in-
duced its customers to infringe certain claims of the ’885
and ’876 patents, found willful infringement, and awarded
compensatory damages. Following the first trial, CalAmp
appealed. In that prior appeal, we affirmed the judgment
as to no invalidity of all four patents and as to CalAmp’s
direct infringement of original claim 11 (amended claim 1)
of the ’727 patent; 1 we reversed the judgment as to
CalAmp’s direct infringement of the asserted claims of the
’885 and ’876 patents; and we vacated the judgment and
remanded for a new trial as to induced infringement of the
asserted claims of the ’885 and ’876 patents and CalAmp’s
direct infringement of the asserted claims of the ’278 pa-
tent. Omega Pats., LLC v. CalAmp Corp., 920 F.3d 1337,
1353–54 (Fed. Cir. 2019). We also vacated the judgment
and remanded for a new trial as to compensatory damages
and the jury’s willfulness finding. Id. at 1354.
On remand, the district court conducted a second jury
trial, in which Omega accused CalAmp of directly infring-
ing claims 1–6, 8, 11–14, 16, 18–19, and 21 of the ’278 pa-
tent and of inducing CalAmp’s customers to infringe
claims 1–3, 12, and 14 of the ’885 patent and claims 1, 3–5,
14, and 16 of the ’876 patent. Omega sought damages for
infringement of these claims and for CalAmp’s direct in-
fringement of amended claim 1 of the ’727 patent (which
was affirmed in the first appeal). Omega also alleged will-
ful infringement of each of the four patents. This time, the
jury found that CalAmp directly infringed each asserted
claim of the ’278 patent but that CalAmp did not induce
infringement of any of the asserted claims of the ’885 or
1 We did not affirm validity or infringement of origi-
nal claims 1 and 10 of the ’727 patent, which were aban-
doned during an ex parte reexamination.
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OMEGA PATENTS, LLC v. CALAMP CORP. 5
’876 patents. J.A. 27–31. (The jury did find that CalAmp’s
customers directly infringed the asserted claims of the
’885 patent. J.A. 28–29.) The jury further found that
917,222 units of the LMUs infringed the ’278 patent.
J.A. 32. The jury awarded a $5.00-per-unit royalty for this
infringement, totaling a $4,586,110 damages award. 2
J.A. 32–33. The jury did not find willful infringement of
any of the four patents.
The district court upheld the jury’s verdict, denying
CalAmp’s combined motion for judgment as a matter of law
(“JMOL”), a new trial, and remittitur. J.A. 25–26. In ad-
dition, the district court awarded Omega an ongoing roy-
alty of $5.00 per unit infringing the ’278 patent. J.A. 14–
22.
Only the ’885 and ’278 patents are at issue in this ap-
peal. As to the ’885 patent, claim 1 is representative3 and
recites:
1. A control system for a vehicle comprising a data
communications bus and at least one vehicle device
connected thereto, the control system comprising:
a transmitter and a receiver for receiving signals
from said transmitter; and
a multi-vehicle compatible controller cooperating
with said transmitter and said receiver and for
storing a set of device codes for a given vehicle de-
vice for a plurality of different vehicles, for reading
a device code from the data communications bus,
2 The jury also awarded $1.00 for a single unit found
to infringe amended claim 1 of the ’727 patent, J.A. 32–33,
and the district court added prejudgment interest, J.A. 1.
3 The only claim limitations of the ’885 patent at is-
sue here appear in claim 1, from which the other asserted
claims depend.
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6 OMEGA PATENTS, LLC v. CALAMP CORP.
and for determining a match between a read device
code and the stored device codes to thereby provide
compatibility with a plurality of different vehicles.
As to the ’278 patent, claim 1 is representative4 and re-
cites:
1. A multi-vehicle compatible tracking unit for a ve-
hicle comprising a vehicle data bus extending
throughout the vehicle, the multi-vehicle compati-
ble tracking unit comprising:
a vehicle position determining device;
a wireless communications device;
a multi-vehicle compatible controller for
cooperating with said vehicle position determining
device and said wireless communications device to
send vehicle position information;
said multi-vehicle compatible controller to be
coupled to the vehicle data bus for communication
thereover with at least one vehicle device using at
least one corresponding vehicle device code from
among a plurality thereof for different vehicles;
and
a downloading interface for permitting
downloading of enabling data related to the at least
one corresponding vehicle device code for use by
said multi-vehicle compatible controller.
4 The only claim limitations of the ’278 patent at is-
sue here appear in claim 1, as well as the other asserted
independent claims, and the remaining asserted claims de-
pend from these independent claims.
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OMEGA PATENTS, LLC v. CALAMP CORP. 7
DISCUSSION
CalAmp appeals (1) the district court’s denial of JMOL
that CalAmp’s customers did not directly infringe the
’885 patent (and in the alternative, CalAmp requests that
we vacate the direct-infringement finding); (2) the district
court’s denial of JMOL and a new trial on CalAmp’s in-
fringement of the ’278 patent; and (3) the district court’s
denial of remittitur and a new trial as to damages for the
’278 patent. Omega cross-appeals the district court’s de-
termination of the ongoing royalty rate for infringement of
the ’278 patent. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
We “review denial of post-trial motions for JMOL and
new trial under regional circuit law.” Wordtech Sys., Inc.
v. Integrated Networks Sols., Inc., 609 F.3d 1308, 1312
(Fed. Cir. 2010). Under Eleventh Circuit law, we review a
district court’s denial of JMOL de novo, viewing all evi-
dence in the light most favorable to the nonmoving party,
and we review denial of a new trial for abuse of discretion.
Hicks v. City of Tuscaloosa, 870 F.3d 1253, 1257 (11th Cir.
2017). JMOL should be granted “only when the plaintiff
presents no legally sufficient evidentiary basis for a rea-
sonable jury to find for him on a material element of his
cause of action.” Howard v. Walgreen Co., 605 F.3d 1239,
1242 (11th Cir. 2010) (cleaned up). We likewise apply re-
gional circuit law when reviewing a district court’s eviden-
tiary rulings. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d
1259, 1276 (Fed. Cir. 1999). Under Eleventh Circuit law,
we review evidentiary rulings for abuse of discretion. Sea-
mon v. Remington Arms Co., 813 F.3d 983, 987 (11th Cir.
2016).
I. DIRECT INFRINGEMENT OF THE ’885 PATENT BY
CALAMP’S CUSTOMERS
CalAmp successfully defended Omega’s claim of in-
duced infringement. The jury found that CalAmp did not
induce infringement of the asserted claims of the
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8 OMEGA PATENTS, LLC v. CALAMP CORP.
’885 patent, and Omega did not appeal this finding.
CalAmp does appeal, however, an underlying finding of di-
rect infringement by CalAmp’s customers—specifically, the
district court’s denial of JMOL that those customers did not
directly infringe. The direct-infringement finding did not
itself impose liability on CalAmp but instead was intended
to serve as a predicate to Omega’s induced-infringement
theory. In the alternative, CalAmp requests that we vacate
the jury’s finding if we do not consider the merits.
Because CalAmp is the prevailing party as to Omega’s
claim of induced infringement of the ’885 patent, we de-
cline to review the merits of CalAmp’s appeal of the JMOL
denial regarding direct infringement by its customers. See
Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344,
1350 (Fed. Cir. 2006) (“An appeal is not an opportunity to
bring before the appellate court every ruling with which
one of the parties disagrees without regard to whether the
ruling has in any way impacted the final judgment.”).
Here, the final judgment of no induced infringement is not
before us, and it is a “well-established rule that, as an ap-
pellate tribunal, we review judgments, not opinions” or
predicate findings. Droplets, Inc. v. E*TRADE Bank,
887 F.3d 1309, 1321 (Fed. Cir. 2018); see Tesco Corp. v.
Nat’l Oilwell Varco, L.P., 804 F.3d 1367, 1379 (Fed. Cir.
2015) (declining “to address the predicate findings in the
trial court’s opinion”).
Nonetheless, we agree with CalAmp that the jury’s di-
rect-infringement finding should be vacated. Because
Omega did not appeal the final judgment of no induced in-
fringement, “frustrat[ing] [CalAmp’s] right to appeal,”
Camreta v. Greene, 563 U.S. 692, 698 (2011), the question
of whether CalAmp’s customers directly infringed the as-
serted claims of the ’885 patent is moot. Indeed, Omega
acknowledges that “the question of customer infringement
[is] irrelevant” at this stage of the case. Cross-Appellant’s
Br. 13. And CalAmp asserts (without opposition) that it
could suffer harm from the jury’s finding of direct
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OMEGA PATENTS, LLC v. CALAMP CORP. 9
infringement by way of indemnification claims, reputa-
tional injury, or attorneys’ fees, Appellant’s Br. 33 n.8, 35;
see J.A. 23140–41, therefore retaining the requisite per-
sonal stake in the outcome.
As the Supreme Court has stated, “[a] party who seeks
review of the merits of an adverse ruling, but is frustrated
by the vagaries of circumstance . . . ought not in fairness be
forced to acquiesce in that ruling.” Camreta, 563 U.S.
at 712 (cleaned up). Under such circumstances, “[t]he eq-
uitable remedy of vacatur ensures that those who have
been prevented from obtaining the review to which they are
entitled are not treated as if there had been a review.” Id.(cleaned up). Here, appellate review is unavailable to
CalAmp through no action or fault of its own. Accordingly,
to “expunge[] an adverse decision that would be reviewable
had this [issue] not become moot,” id. at 712 n.10, we va-
cate the jury’s finding of direct infringement of the asserted
claims of the ’885 patent by CalAmp’s customers.
II. CALAMP’S INFRINGEMENT OF THE ’278 PATENT
CalAmp challenges the district court’s denial of JMOL
and a new trial as to infringement of the asserted claims of
the ’278 patent on two principal grounds: (1) that the dis-
trict court improperly permitted Omega’s technical expert,
Joseph McAlexander, to testify beyond the scope of his ex-
pert report; and (2) that Omega presented an improper “de-
vice code” theory to the jury upon which the jury relied
and that Omega failed to present evidence that two claim
limitations were met. We conclude that the district court
properly denied JMOL and a new trial.
A. Scope of Mr. McAlexander’s Testimony
CalAmp argues that the district court improperly per-
mitted Mr. McAlexander to testify beyond the scope of his
expert report with respect to the “enabling data” limitation
of the ’278 patent. We disagree.
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10 OMEGA PATENTS, LLC v. CALAMP CORP.
At trial, Mr. McAlexander testified that the LMUs
have an interface for “download[ing] enabling data,”
J.A. 23529, and that the enabling data is, for example,
“scripts” that “inform[] the LMU device how it is to operate
and that information is downloaded and is provided in
memory in the flash,” J.A. 23531. Mr. McAlexander fur-
ther testified that “several different things” are part of the
scripts, including “configuration information specifically in
terms of the executable instructions” and “a stored table of
information from which you can derive whether or not you
have a match or not in terms of bus discovery, device dis-
covery.” J.A. 23531. CalAmp objected to this “enabling
data” testimony on the basis that it was not disclosed in
Mr. McAlexander’s expert report. J.A. 23532. The district
court considered and overruled CalAmp’s objection, finding
that the expert report provided a sufficient foundation for
the challenged testimony. J.A. 23533–34.
Mr. McAlexander’s report states that the LMUs “in-
clude[] a downloading interface for permitting downloading
of enabling data” and that the LMUs can be configured to
receive “firmware or scripts with programming instruc-
tions or enabling data” via one or more downloading inter-
face. J.A. 8666. We conclude that these disclosures
provided enough notice to CalAmp “to prepare [its] case[]
adequately and to prevent surprise.” Guevara v. NCL (Ba-
hamas) Ltd., 920 F.3d 710, 719 (11th Cir. 2019) (quoting
Reese v. Herbert, 527 F.3d 1253, 1266 (11th Cir. 2008)). In-
deed, in a pretrial deposition, CalAmp questioned
Mr. McAlexander on the “enabling data” disclosures of his
expert report, with Mr. McAlexander responding in line
with his expert report and much as he ultimately testified
at trial. See J.A. 3902–04 (deposition transcript);
J.A. 23531 (trial transcript). Accordingly, we see no abuse
of discretion in the district court’s evidentiary ruling that
the subject matter of the challenged testimony was within
the scope of Mr. McAlexander’s report. See Seamon,
813 F.3d at 987.
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OMEGA PATENTS, LLC v. CALAMP CORP. 11
B. The “Device Code” Issue and Associated Limitations
CalAmp also contends that Omega failed to show that
the LMUs practice the “corresponding vehicle device code”
and “enabling data related to the at least one correspond-
ing vehicle device code” limitations of claim 1 of the ’278 pa-
tent. CalAmp further contends that the jury’s
infringement finding is impermissibly tainted because
“Omega improperly argued [to the jury] that a ‘device code’
(such as a stored device code) could originate from the Ac-
cused LMUs, ignoring the claim constructions that a device
code is a signal from a vehicle device and that the LMU is
not a vehicle device.” Appellant’s Br. 38–39 (emphases in
original). CalAmp’s theory is that “[t]he jury’s finding that
the Accused LMUs infringe the ’278 patent can only rest on
Omega’s improper ‘device code’ theory.” Appellant’s Br. 37.
We disagree with CalAmp on each of these matters.
First, some background. Before the first trial, the dis-
trict court construed the term “device code” in the ’885 and
’876 patents to mean a “signal from a vehicle device.”
J.A. 798–800. The district court was not asked to construe
“device code” with respect to the ’278 patent. The district
court was asked to construe the term “vehicle device” as
used in the ’885, ’876, ’727, and ’278 patents but declined
to do so—an issue that we confronted in the first appeal.
See Omega Pats., 920 F.3d at 1346. (Claim construction of
“device code” was not at issue in the first appeal.) We held
that the district court improperly declined to define the
term “vehicle device” and that the proper construction of
this term is an “electrical or electronic component in a ve-
hicle that can be controlled and/or the status thereof read.”
Id. at 1346, 1347. We further held that this construction
excludes the LMUs as “vehicle devices.” Id. at 1347. And
because “Omega’s primary theory at [the first] trial was
that the LMU was a ‘vehicle device’ and the signals it sent
to the ECU were infringing ‘devices codes,’” we set aside
the jury’s verdict of infringement of all asserted claims of
the ’885 patent. Omega Pats., 920 F.3d at 1347. But we
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12 OMEGA PATENTS, LLC v. CALAMP CORP.
explained that a new trial was warranted because “Omega
also presented evidence that the signal sent from the ECU
(an uncontested ‘vehicle device’) to the LMU could satisfy
the ‘device code’ limitation.” Id. We then noted that the
asserted claims of the ’278 patent have a “device code” lim-
itation and concluded that a new trial on direct infringe-
ment by CalAmp of the ’278 patent was warranted for the
same reasons as discussed with respect to the ’885 patent.
Omega Pats., 920 F.3d at 1349.
CalAmp’s fundamental problem in this appeal as to in-
fringement, therefore, is that the ECU is indisputably a
“vehicle device” that communicates with the LMUs. See,
e.g., id. at 1347; Appellant’s Br. 5 (“The Accused LMUs . . .
communicate over the vehicle’s data bus to obtain data . . .
from the . . . ECU.”).
Claim 1 of the ’278 patent recites “communication . . .
with at least one vehicle device using at least one corre-
sponding vehicle device code.” CalAmp argues that Omega
failed to present evidence that the LMUs use a “device
code” that meets the “device code” construction, thereby
failing to show that the LMUs practice the “corresponding
vehicle device code” limitation. See Appellant’s Br. 39–41;
Appellant’s Reply Br. 27–28. CalAmp is incorrect. The
parties agree that the “device code” element is met by a
“signal from a vehicle device.” See Appellant’s Br. 21;
Cross-Appellant’s Br. 20. And in the retrial, the jury was
presented with evidence that the LMUs receive a signal
from the ECU, a vehicle device. For example, the jury
heard testimony from Mr. McAlexander that the “[v]ehicle
device is the actual control unit, the ECU” in the context of
infringement of claim 1 of the ’278 patent. J.A. 23528; see
J.A. 23513, 23523–24. And the jury was played deposition
testimony from Gallin Chen, one of CalAmp’s corporate
representatives, that “the LMU[-]3000 is able to read a sig-
nal from a vehicle device off the bus.” J.A. 19522 (emphasis
added); see J.A. 19488. Indeed, in discussing the “vehicle
device” of claim 1, Mr. McAlexander stated to the jury that
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OMEGA PATENTS, LLC v. CALAMP CORP. 13
“the deposition testimony that’s been played, Chen in par-
ticular, verified this.” J.A. 23528; see J.A. 23471–72 (McAl-
exander testifying that the LMU-3000, LMU-3030, and
LMU-3050 “operate the same way” from “the claimed in-
vention standpoint”). Accordingly, we conclude that there
was sufficient evidence for the jury to find the “correspond-
ing vehicle device code” limitation met.
CalAmp further argues that Omega failed to show the
“enabling data related to the at least one corresponding ve-
hicle device code” limitation of claim 1 of the ’278 patent.
CalAmp presents two theories, each of which fails. First,
CalAmp ties this limitation to its “device code” argument.
See, e.g., Appellant’s Br. 41 (arguing that “having failed to
identify the ‘corresponding vehicle device code,’ McAlexan-
der’s testimony also necessarily failed to identify the ‘ena-
bling data’ that must be ‘related to the at least one
corresponding vehicle device code’”). This argument fails
because, as discussed, the jury was presented with suffi-
cient evidence to find the “corresponding vehicle device
code” limitation met. Second, CalAmp asserts that the
jury’s finding as to “enabling data” “rests on evidence that
should not have been admitted.” Appellant’s Br. 42 (argu-
ing that McAlexander improperly testified beyond the
scope of his expert report). But this argument too fails be-
cause, as discussed, the district court did not abuse its dis-
cretion in permitting the challenged testimony. And here,
Mr. McAlexander testified, for example, that the “enabling
data” limitation is met by “scripts that are downloaded [to
the LMUs]” that “include the instructions and the data nec-
essary to be able to make the determination as to . . . which
bus is being discovered and what units are on that bus.”
J.A. 23535; see also J.A. 23529–31 (McAlexander describ-
ing “scripts” that “inform[] the LMU device how it is to op-
erate” as “enabling data”). Accordingly, we conclude that
Mr. McAlexander’s testimony constitutes sufficient evi-
dence for the jury to find the “enabling data” limitation
met.
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14 OMEGA PATENTS, LLC v. CALAMP CORP.
CalAmp also argues that the jury’s infringement find-
ing as to the ’278 patent was impermissibly tainted by
Omega’s “improper ‘device code’ theory.” Appellant’s
Br. 37. CalAmp suggests that “the jury found the required
‘corresponding vehicle device code’ to be what Omega im-
properly identified as the ‘stored device code’ that origi-
nates at the LMU itself.” Appellant’s Br. 39. It is
undisputed that the LMU is not a vehicle device. See, e.g.,
J.A. 23554 (McAlexander testifying that “the LMU is not a
vehicle device”). Although CalAmp argues that Omega
presented this improper theory to the jury during closing
argument, Appellant’s Br. 28, CalAmp does not contend
that it “object[ed] on this ground, nor did it ask for a limit-
ing instruction, so the objection to the closing argument is
waived.” Haygood v. Auto-Owners Ins. Co., 995 F.2d 1512,
1517 (11th Cir. 1993). CalAmp also does not assert that it
objected to the evidence Omega presented in support of this
theory, so that objection is also “waived.” Carter v. Deci-
sionOne Corp., 122 F.3d 997, 1004–05 (11th Cir. 1997)
(first citing Fed. R. Evid. 103(a)(1); and then citing Wilson
v. Attaway, 757 F.2d 1227, 1242 (11th Cir. 1985)).
Moreover, the jury was clearly instructed that “the ac-
cused LMUs . . . are not vehicle devices[,] but the Engine
Control Unit or ECU is a vehicle device.” J.A. 45. A “jury
is presumed to follow jury instructions.” Pensacola Motor
Sales Inc. v. E. Shore Toyota, LLC, 684 F.3d 1211, 1224–25
(11th Cir. 2012) (quoting Adams v. Wainwright, 709 F.2d
1443, 1447 (11th Cir. 1983)).
As explained above, there was sufficient evidence for
the jury to find the “corresponding vehicle device code” lim-
itation of the ’278 patent met—namely, by signals from the
ECU. And this evidence is independent from Omega’s
“stored device code” presentation at trial that CalAmp com-
plains was improper. See supra. Given the instruction, we
must assume the jury verdict rested on a proper theory.
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OMEGA PATENTS, LLC v. CALAMP CORP. 15
C. JMOL or a New Trial as to Infringement
We view CalAmp’s arguments for a new trial on in-
fringement of the ’278 patent as coextensive with its argu-
ments that CalAmp is entitled to JMOL of no infringement.
See, e.g., Appellant’s Br. 38, 42. As discussed, we reject
those arguments. Accordingly, we affirm the district
court’s denial of JMOL and a new trial as to CalAmp’s in-
fringement of the asserted claims of the ’278 patent.
III. DAMAGES
CalAmp appeals the district court’s denial of a new
trial on damages for CalAmp’s infringement of the ’278 pa-
tent on two separate grounds: (1) that the district court er-
roneously precluded CalAmp’s damages expert,
Dr. DeForest McDuff, from testifying in rebuttal; and
(2) that Omega’s damages theory is legally flawed, leaving
the jury’s award unsupported by the record. We review the
district court’s denial of a motion for new trial for abuse of
discretion. Hicks, 870 F.3d at 1257. We discuss each issue
in turn and conclude that the district court abused its dis-
cretion as to each of the two issues in denying CalAmp’s
motion for a new trial on damages. 5
A. Exclusion of Dr. McDuff
CalAmp argues that a new trial on damages for in-
fringement of the ’278 patent is warranted because under
5 In the alternative, CalAmp appeals the district
court’s denial of remittitur. Because we agree with
CalAmp that the district court abused its discretion in not
ordering a new trial on damages, we need not and do not
reach CalAmp’s appeal in the alternative as to remittitur.
Nor would it be appropriate to address remittitur here, con-
sidering the district court’s improper exclusion of
Dr. McDuff and the lack of evidence of apportionment, as
discussed herein.
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16 OMEGA PATENTS, LLC v. CALAMP CORP.
the law of the case Dr. McDuff is not barred from testifying
and because the district court abused its discretion in pre-
cluding Dr. McDuff from offering rebuttal testimony as to
damages in the retrial. We agree.
In each of the two trials, the district court precluded
Dr. McDuff from testifying at all. Before the first trial, the
district court granted Omega’s Daubert motion to exclude
Dr. McDuff. J.A. 5497. After the first trial, CalAmp moved
for a new trial on damages on the basis that the district
court “erroneously excluded Dr. McDuff’s opinions in their
entirety . . . despite only identifying criticisms of
Dr. McDuff’s affirmative calculation of what a reasonable
royalty should be.” J.A. 17913. CalAmp argued that the
court therefore improperly precluded CalAmp “from pre-
senting its expert’s criticism of Omega’s damages analysis,”
i.e., rebuttal testimony. J.A. 17913. The district court de-
nied CalAmp’s motion because “CalAmp did not seek re-
consideration of the [c]ourt’s [Daubert] [o]rder to allow
Dr. McDuff to testify [in rebuttal]” and found that
CalAmp’s opportunity to object to the exclusion of
Dr. McDuff “has been waived.” J.A. 18509. CalAmp did
not raise the issue of the exclusion of Dr. McDuff’s testi-
mony (in principal or in rebuttal) in the first appeal. But
in that appeal, we vacated the compensatory damages
award and remanded for a new trial, with instructions to
the parties “to achieve clarity by clearly presenting evi-
dence . . . as to . . . compensatory damages . . . so that this
court may effectively fulfill its appellate function in any
further review arising from the retrial.” Omega Pats.,
920 F.3d at 1354. CalAmp subsequently moved for “clari-
fication” that Dr. McDuff would be permitted to offer dam-
ages testimony in rebuttal in the retrial based on our
instructions. J.A. 19125–27. The district court denied
CalAmp’s motion, again on the basis that the district
court’s Daubert order before the first trial excluding
Dr. McDuff “was not appealed.” J.A. 19261.
Case: 20-1793 Document: 44 Page: 17 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 17
The issue here is whether the district court properly
applied the law-of-the-case doctrine in view of our mandate
following the first appeal to our court. The “law of the case”
is “a procedural matter not unique to patent law” to which
we apply “the precedent of the regional circuit in which the
case arose”—here, the Eleventh Circuit. Exxon Corp. v.
United States, 931 F.2d 874, 877 n.4 (Fed. Cir. 1991). Ap-
plying Eleventh Circuit law, we review the district court’s
application of the law-of-the-case doctrine de novo. Alpha-
med, Inc. v. B. Braun Med., Inc., 367 F.3d 1280, 1285
(11th Cir. 2004).
“The mandate rule provides that ‘issues actually de-
cided [on appeal]—those within the scope of the judgment
appealed from, minus those explicitly reserved or re-
manded by the court—are foreclosed from further consid-
eration.’” Amado v. Microsoft Corp., 517 F.3d 1353, 1360
(Fed. Cir. 2008) (alteration in original) (quoting Engel In-
dus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir.
1999)). “We review the district court’s interpretation of our
mandate de novo under Federal Circuit law.” Metso Mins.
Inc. v. Terex Corp., 594 F. App’x 649, 651 (Fed. Cir. 2014)
(citing TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d
1336, 1341 (Fed. Cir. 2013)); see Cardiac Pacemakers, Inc.
v. St. Jude Med., Inc., 576 F.3d 1348, 1355–56 (Fed. Cir.
2009); Engel, 166 F.3d at 1382; Laitram Corp. v. NEC
Corp., 115 F.3d 947, 950–51 (Fed. Cir. 1997). In interpret-
ing this court’s mandate, “both the letter and the spirit of
the mandate must be considered.” Engel, 166 F.3d at 1383.
On remand, we explicitly instructed both parties “to
achieve clarity by clearly presenting evidence [in the re-
trial] . . . as to . . . compensatory damages . . . so that this
court may effectively fulfill its appellate function in any
further review arising from the retrial.” Omega Pats.,
920 F.3d at 1354; see id. at 1349–51 (declining to decide ev-
identiary issues with respect to compensatory damages
and remanding for a new trial). This instruction to the par-
ties necessarily implied that the district court was “to
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18 OMEGA PATENTS, LLC v. CALAMP CORP.
consider damages consistent with the principles set forth
in the opinion,” including by reconsidering prior orders re-
garding evidence of damages. Bluebonnet Sav. Bank,
F.S.B. v. United States, 339 F.3d 1341, 1346 (Fed. Cir.
2003) (per curiam). Moreover, in our view, the “spirit of the
mandate” permitted the district court to reconsider any ev-
identiary rulings that might be seen in a different light at
the retrial. See Engel, 166 F.3d at 1383.
Here, the issue of Dr. McDuff’s rebuttal testimony (and
our remand instruction) was timely raised by CalAmp be-
fore the retrial. See J.A. 19125–28. On remand, the dis-
trict court simply held that Dr. McDuff was precluded from
testifying in rebuttal because “the admissibility of
Dr. McDuff was decided [before the first trial]” and because
that “decision is final” and “was not appealed.” J.A. 19261.
This decision was contrary to our mandate and opinion.
See Bluebonnet, 339 F.3d at 1346 (“We did not intend for
our mandate to foreclose the trial court from conducting
any further inquiry into the proper amount of the damages
to be awarded in this case.”).
A “district court’s actions on remand should not be in-
consistent with either the letter or the spirit of the man-
date.” Laitram, 115 F.3d at 951. Accordingly, to the extent
the district court precluded Dr. McDuff from testifying in
rebuttal in the retrial on the basis that it was bound by its
evidentiary ruling in the first trial, 6 that was legal error.
6 Ordinarily, under the Eleventh Circuit’s law-of-
the-case doctrine, “[a] legal decision made at one stage of
the litigation, unchallenged in a subsequent appeal when
the opportunity existed, becomes the law of the case for fu-
ture stages of the same litigation, and the parties are
deemed to have waived the right to challenge that decision
at a later time.” United States v. Stein, 964 F.3d 1313, 1324
Case: 20-1793 Document: 44 Page: 19 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 19
We recognize that our instruction in the first appeal
left the district court with discretion as to evidentiary rul-
ings in the retrial. See Seamon, 813 F.3d at 987. But when
the dispositive issue is whether the district court misinter-
preted our mandate, “no deference is due.” Laitram, 115
F.3d at 950.
Regardless, to the extent the district court did exercise
its discretion, we conclude that it was an abuse of discre-
tion to preclude Dr. McDuff from testifying in rebuttal in
the retrial. Omega’s Daubert motion before the first trial
to exclude Dr. McDuff did not challenge his qualifications
to testify regarding damages in this case or his critique of
Omega’s expert’s comparable-license analysis. See
J.A. 867–84, 5488–97. Indeed, leading up to the retrial, the
district court confirmed that Dr. McDuff “was qualified”
and that “[t]he issue of whether [Dr. McDuff] was challeng-
ing plaintiff’s damages expert was really not directly ad-
dressed in the [Daubert] motions or the order.” J.A. 19260.
In other words, the issue of Dr. McDuff’s rebuttal testi-
mony was never addressed (or challenged) on the merits.
(11th Cir. 2020) (quoting United States v. Escobar-Urrego,
110 F.3d 1556, 1560 (11th Cir. 1997)). But such waiver
does not necessarily apply where, as here, the mandate
permits consideration on remand of the otherwise-waived
issue. See, e.g., Stein, 964 F.3d at 1324 (explaining that
whether the law of the case applies depends on “the scope
of . . . [the] remand”); United States v. Mesa, 247 F.3d 1165,
1171 n.6 (11th Cir. 2001) (noting that waiver may be over-
come by the mandate on remand); Baumer v. United States,
685 F.2d 1318, 1321 (11th Cir. 1982) (recognizing that an
issue not raised on appeal may nonetheless be litigated on
remand depending on “the scope of th[e] mandate”). Our
case law, which governs the interpretation of our man-
dates, contains a similar principle. E.g., Amado, 517 F.3d
at 1360.
Case: 20-1793 Document: 44 Page: 20 Filed: 09/14/2021
20 OMEGA PATENTS, LLC v. CALAMP CORP.
Moreover, Dr. McDuff’s critiques of Omega’s damages ex-
pert were disclosed in Dr. McDuff’s expert report submit-
ted before the first trial, see Report of DeForest McDuff,
Ph.D. (excerpts), Omega Pats., LLC v. CalAmp Corp.,
No. 13-cv-1950 (M.D. Fla. May 22, 2017), ECF No. 216-23,
and CalAmp timely moved for permission to call
Dr. McDuff in rebuttal before the retrial, see J.A. 19125–
28. We discern no basis for the district’s court ruling to
preclude Dr. McDuff from testifying in rebuttal in the re-
trial (other than erroneously adhering to its prior ruling).
Accordingly, we conclude that the district court abused its
discretion. Klay v. United Healthgroup, Inc., 376 F.3d
1092, 1096 (11th Cir. 2004) (“A district court may . . . abuse
its discretion by applying the law in an unreasonable or in-
correct manner.”).
Omega’s contrary arguments are unpersuasive. First,
Omega relies on our decision in Tronzo v. Biomet, Inc.,
236 F.3d 1342 (Fed. Cir. 2001), for the proposition that
“CalAmp waived the district court’s decision to exclude
Dr. McDuff” by “not appeal[ing] that decision as part of the
first appeal to this Court.” Cross-Appellant’s Br. 52.
Tronzo does not help Omega. In Tronzo, we held that the
mandate in question acted to prevent reconsideration of
the issue of punitive damages on remand because in the
first appeal the defendant “chose not to contest the amount
of punitive damages” and our remand only concerned com-
pensatory damages. 236 F.3d at 1345, 1349. Here, in con-
trast to the unchallenged punitive damages award in
Tronzo, CalAmp did contest compensatory damages in the
first appeal. Moreover, in Tronzo, the mandate in question
“left it to the district court to decide, at its discretion,
whether it would be appropriate to take new evidence” on
remand as to the category of damages that was remanded.
Id. at 1345. Accordingly, Tronzo does not suggest a differ-
ent outcome here.
Second, Omega contends that CalAmp is barred from
presenting Dr. McDuff’s testimony in rebuttal based on
Case: 20-1793 Document: 44 Page: 21 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 21
CalAmp’s representation prior to the retrial that CalAmp
“will treat issues actually resolved by the [district] [c]ourt
at the first trial—and not appealed or otherwise impacted
by the Federal Circuit’s opinion and remand—as final.”
Cross-Appellant’s Br. 52–53 (quoting J.A. 19132). But as
discussed, the issue of Dr. McDuff’s rebuttal testimony was
“impacted” by our opinion in the first appeal. Therefore,
this representation by CalAmp is of no import here.
In sum, we conclude that a new trial on damages for
infringement of the ’278 patent is warranted because the
district court abused its discretion in precluding
Dr. McDuff from offering his fully disclosed rebuttal testi-
mony in the retrial, and in denying CalAmp’s motion for a
new trial on that basis.
B. Apportionment
Ultimately, a new trial on damages is warranted. The
jury awarded a $5.00-per-unit royalty for CalAmp’s in-
fringement of the ’278 patent. CalAmp argues that the
$5.00 figure does not reflect apportionment and that
Omega failed to show the incremental value of the ’278 pa-
tent (or that the patented improvement drove demand for
the entire accused product), rendering the jury’s damages
award unsustainable. We agree.
“[T]he patentee must in every case give evidence tend-
ing to separate or apportion . . . the patentee’s damages be-
tween the patented feature and the unpatented features
. . . .” LaserDynamics, Inc. v. Quanta Comput., Inc.,
694 F.3d 51, 67 (Fed. Cir. 2012) (cleaned up). Accordingly,
where a royalty is at issue, “[n]o matter what the form of
the royalty, a patentee must take care to seek only those
damages attributable to the infringing features.” VirnetX,
Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir.
2014). And “where multi-component products are involved,
the governing rule is that the ultimate combination of roy-
alty base and royalty rate must reflect the value attributa-
ble to the infringing features of the product, and no more.”
Case: 20-1793 Document: 44 Page: 22 Filed: 09/14/2021
22 OMEGA PATENTS, LLC v. CALAMP CORP.
Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226
(Fed. Cir. 2014). In other words, “[w]hen the accused in-
fringing products have both patented and unpatented fea-
tures, measuring this value requires a determination of the
value added by such features.” Id. It follows that “a pa-
tentee may assess damages based on the entire market
value of the accused product only where the patented fea-
ture creates the basis for customer demand or substan-
tially creates the value of the component parts.” VirnetX,
767 F.3d at 1326 (cleaned up).
We have, however, explained that “when a sufficiently
comparable license is used as the basis for determining the
appropriate royalty, further apportionment may not neces-
sarily be required.” Vectura Ltd. v. Glaxosmithkline LLC,
981 F.3d 1030, 1040 (Fed. Cir. 2020). “That is because a
damages theory that is dependent on a comparable license
(or a comparable negotiation) may in some cases have
‘built-in apportionment.’” Id. “Built-in apportionment ef-
fectively assumes that the negotiators of a comparable li-
cense settled on a royalty rate and royalty base
combination embodying the value of the asserted patent.”
Id. at 1041. For built-in apportionment to apply the license
must be “sufficiently comparable” in that “principles of ap-
portionment were effectively baked into” the purportedly
comparable license. Id.; see Commonwealth Sci. & Indus.
Rsch. Organisation v. Cisco Sys., Inc., 809 F.3d 1295, 1303
(Fed. Cir. 2015). The patentee has the burden of proving
damages, Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d
1301, 1324 (Fed. Cir. 2009), and where licenses are at is-
sue, that includes “the burden to prove that the licenses
were sufficiently comparable,” id. at 1329; see
ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872
(Fed. Cir. 2010).
Here, Omega first contends that it did not need to show
apportionment at all because “[t]he jury heard [that] the
infringing LMUs have no component parts outside what is
found in the ’278 patent” and that “[e]ach of these LMU
Case: 20-1793 Document: 44 Page: 23 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 23
components [is] found in the infringed claims of the
’278 patent.” Cross-Appellant’s Br. 35–36. We disagree
with Omega as a matter of law. See Exmark Mfg. Co. v.
Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332,
1348 (Fed. Cir. 2018). In Exmark, the asserted claim was
directed to a lawn mower as a whole and covered the entire
infringing lawn-mower product. Id. We held that the pa-
tent owner was still required to “apportion or separate the
damages between the patented improvement and the con-
ventional components of the multicomponent product” to
ensure that the patent owner was “compensated for the pa-
tented improvement (i.e., the improved flow control baffle)
rather than the entire mower.” Id. Accordingly, here, even
if the LMUs have the same components as those set forth
in the asserted claims, Omega still must “adequately and
reliably apportion[] between the improved and conven-
tional features of the accused [product]” when using the
LMUs “as a royalty base.” Id.; see Commonwealth,
809 F.3d at 1301. We therefore reject Omega’s contention
that it was not required to show apportionment simply be-
cause the jury heard testimony that the LMUs have no
component parts outside what is claimed in the ’278 pa-
tent. As we discuss below, there is no question that the
LMUs have conventional components that are not the in-
ventive aspects of the ’278 patent.
Turning to the merits of apportionment, we conclude
that Omega did not present sufficient evidence to the jury
to sustain its damages award for infringement of the as-
serted claims of the ’278 patent. First, Omega failed to
show that its patented improvement drove demand for the
entire LMU product. Second, in the alternative, 7 Omega
7 Omega appears to argue both that it was not re-
quired to show apportionment based on what drove de-
mand for the LMUs and that it did provide sufficient
Case: 20-1793 Document: 44 Page: 24 Filed: 09/14/2021
24 OMEGA PATENTS, LLC v. CALAMP CORP.
failed to show the incremental value that its patented im-
provement added to the LMU product as apportioned from
the value of any conventional features. We further address
each issue in turn.
As to demand for the entire LMU product, Omega ar-
gues that “[a] reasonable jury could have concluded . . .
[that] the infringing LMU sales were driven primarily, if
not exclusively, by the invention of the ’278 patent and de-
termined to apportion minimal, if any, value to any other
characteristics,” Cross-Appellant’s Br. 36, in that “a rea-
sonable jury could have concluded that the multivehicle
compatibility feature was worth anywhere from almost the
entire profit of the product, to $7.00, to $6.26, or the $5.00
value that the jury ultimately awarded,” Cross-Appellant’s
Br. 38. 8 We disagree.
According to the record, additional features of the
LMUs include, for example, a “3-axis accelerometer,” the
ability to “detect hard braking, cornering[,] or accelera-
tion,” and an “industry leading on-board alert engine.”
J.A. 21425–26. It is undisputed that these features are not
inventive aspects of the asserted claims of the ’278 patent.
As another example, it is undisputed that CalAmp’s VPOD
units provide functionality that overlaps with a subset of
the functionality of the LMUs, see, e.g., J.A. 23473, and this
evidence for the jury to apportion the incremental value of
the ’278 patent. See, e.g., Cross-Appellant’s Br. 35–36. We
consider these arguments as made in the alternative.
8 In support of this damages theory, Omega relied on
CalAmp’s supposed willingness to pay a royalty of $7.00
per unit for non-patented “multivehicle technology” from a
third party, which is in the range of the $5.00 figure
awarded by the jury. Cross-Appellant’s Br. 37–38; see
J.A. 19494. But Omega has identified no evidence that the
third party’s “multivehicle technology” is comparable to the
invention of the ’278 patent.
Case: 20-1793 Document: 44 Page: 25 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 25
functionality was found not to infringe any claim of the
’278 patent (a finding Omega did not appeal), see J.A. 30–
31. Omega nonetheless argues that the multi-vehicle-com-
patibility feature of the LMUs “primarily, if not exclu-
sively” drove sales. Cross-Appellant’s Br. 36. But Omega
failed to present sufficient evidence to the jury that this
feature “create[d] the basis for customer demand or sub-
stantially create[d] the value of the component parts.” Vir-
netX, 767 F.3d at 1326 (cleaned up). Rather, Omega
merely points to lesser testimony, for example, that multi-
vehicle compatibility would be “an important feature,”
J.A. 19650, or “a helpful feature,” J.A. 23582, and that de-
velopment of the LMUs “was driven by a general market
need,” J.A. 19634. Omega further points to testimony that
multivehicle compatibility increased the value of the
LMUs, see Cross-Appellant’s Br. 32, but this testimony
goes on to explain that the LMUs would still have had
value absent this feature, see J.A. 19622. In sum, we con-
clude that the jury could not reasonably have found that
the multi-vehicle-compatibility feature of the LMUs drove
demand for the entire LMU product. 9 See LaserDynamics,
694 F.3d at 68 (“It is not enough to merely show that the
[patented improvement] is viewed as valuable, important,
or even essential to the use of the [accused product].”).
Omega is therefore left with its comparable-licenses
theory, which depends on built-in apportionment. Accord-
ing to Omega, “[w]ith evidence of Omega’s licensing pro-
gram[]” and “details of the licenses” introduced at trial,
“there was sufficient evidence” for the jury to determine a
9 Moreover, Omega does not point to any meaningful
evidence presented to the jury of “the entire market value”
of the LMUs, see VirnetX, 767 F.3d at 1326, or “the entire
profit of the product,” see Cross-Appellant’s Br. 38, further
confirming that Omega failed to carry its burden here.
Case: 20-1793 Document: 44 Page: 26 Filed: 09/14/2021
26 OMEGA PATENTS, LLC v. CALAMP CORP.
reasonable royalty of $5.00 per unit. Cross-Appellant’s
Br. 31. We disagree.
Omega’s president, Mr. Flick, testified that under
Omega’s licensing program the licensing fee was “five dol-
lars [per unit] whether it’s one patent or 50 patents.”
J.A. 23324. Mr. Flick further testified that “[no] particular
patent [is] treated as more valuable than another” and that
Omega’s policy was “one price for all.” J.A. 23324–25. In
other words, for “five dollars” per unit a licensee “got
every[thing] – no matter what [the licensee] did, the first
patent’s five bucks. Everything else thereafter [Omega]
just threw . . . in.” J.A. 23324.
Indeed, on appeal, Omega maintains that Mr. Flick’s
testimony “did not distinguish between data bus patents
for royalty purposes, all of which were licensed for $5.00 or
more per unit.” Cross-Appellant’s Br. 47–48. Omega none-
theless argues that a reasonable jury could have awarded
a royalty of $5.00 per unit based on Mr. Flick’s testimony.
See Cross-Appellant’s Br. 38. We disagree. Omega’s the-
ory would permit it to obtain a particular royalty rate
merely by relying on its internal “policy” without regard to
comparability—under the proffered licensing arrange-
ment, Omega sought the same licensing fee regardless of
what patents were included or what technology was cov-
ered. Put differently, Mr. Flick’s testimony does not suffi-
ciently speak to “built-in apportionment” between the
patented improvement added to the LMUs and the conven-
tional features of the LMUs. See Vectura, 981 F.3d at 1040
(explaining that “built-in apportionment” relies on “a com-
parable license” or “comparable negotiation”). To hold oth-
erwise would improperly permit Omega to hide behind its
generic licensing arrangement to avoid the task of appor-
tionment. See LaserDynamics, 694 F.3d at 79 (“[T]o prove
a reasonable royalty, alleging a loose or vague comparabil-
ity between different technologies or licenses does not suf-
fice.”).
Case: 20-1793 Document: 44 Page: 27 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 27
Although a closer call, we likewise conclude that
Omega failed to show built-in apportionment based on the
license agreements presented to the jury. At trial, Omega
introduced eighteen license agreements. See Cross-Appel-
lant’s Br. 30 n.4 (listing the agreements); see also
J.A. 22185–22439. Omega argues that “the licenses reveal
devices that connect to the data bus with the multi-vehicle
functionality found in the ’278 patent [and] generally carry
a royalty at a rate of at least $5.00 per unit.” Cross-Appel-
lant’s Br. 45. Omega’s fundamental problem is that it
failed to show that these agreements attributed a $5.00-
per-unit royalty to the value of the ’278 patent.
For starters, despite proposing a royalty of $6.26 per
unit, Omega’s damages expert, Christian Tregillis, testi-
fied that “whether it’s one patent or all the patents, the way
that Omega licenses them is, it’s five bucks” and “[t]hat’s
the market rate for the data bus patents, be it one or two
or three or four or 30.” J.A. 23587. Further walking away
from apportionment (and relying on Omega’s licensing ar-
rangement), Mr. Tregillis testified that “CalAmp should
pay the same rate no matter how many claims or how many
of the patents it infringes.” J.A. 23595. But absent evi-
dence of a comparable license or comparable negotiation to
support an identical $5.00 rate for a one-patent license to
the ’278 patent, we fail to see how this patent/claim-inde-
pendent approach accounts for apportionment. 10 See
10 The dissent faults CalAmp for not attempting to ex-
clude “Mr. Tregillis’s testimony and the license agreements
at issue” at the Daubert stage or during trial and concludes
that CalAmp’s “failure to do so means that the testimony
and licenses are evidence capable of supporting the dam-
ages award.” Dissent 5. But CalAmp’s “failure” to object
does not decide the issue—“[f]ailure to object to admission
of the evidence does not act as waiver as to a challenge to
Case: 20-1793 Document: 44 Page: 28 Filed: 09/14/2021
28 OMEGA PATENTS, LLC v. CALAMP CORP.
AstraZeneca AB v. Apotex Corp., 782 F.3d 1324, 1338
(Fed. Cir. 2015) (“When a patent covers the infringing
product as a whole, and the claims recite both conventional
elements and unconventional elements, the court must de-
termine how to account for the relative value of the pa-
tentee’s invention in comparison to the value of the
conventional elements recited in the claim, standing
alone.”); Ericsson, 773 F.3d at 1226 (“[T]he ultimate rea-
sonable royalty must be based on the incremental value
that the patented invention adds to the end product.”).
Omega suggests that Mr. Tregillis offered such testi-
mony because of purported most-favored-nation clauses in
some Omega licenses that ostensibly would have required
Omega to reduce rates for other licensees had it charged
CalAmp less than $5.00 per unit through a hypothetical
negotiation, therefore indicating that Omega would not
have accepted less than $5.00 per unit from CalAmp. See
Cross-Appellant’s Br. 38–39; J.A. 23997. This argument is
without merit. Mr. Tregillis explicitly testified that the rel-
evant most-favored-nation clauses would not be triggered
unless “two licenses have . . . comparable sales volumes,
payment terms, and distribution channels” and that he
“performed no analysis of those factors.” J.A. 23616–17.
Omega simply has not pointed to evidence that any of the
relevant most-favored-nation clauses would be implicated
by a one-patent license to CalAmp at a rate of less than
$5.00 per unit.
the sufficiency of the evidence for the jury to award dam-
ages.” Omega Pats., 920 F.3d at 1350 n.12 (citing Lucent
Techs., 580 F.3d at 1325, 1335). Indeed, Daubert itself rec-
ognizes that a decision not to exclude evidence under Rule
702 does not foreclose a challenge to the sufficiency of evi-
dence. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579,
596 (1993).
Case: 20-1793 Document: 44 Page: 29 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 29
We recognize that one or more of the license agree-
ments introduced at trial by Omega could, in theory, pro-
vide a basis for a reasonable royalty if the license rate were
properly apportioned. Indeed, at least two of the agree-
ments included the ’278 patent. See J.A. 22195–204 (“Cim-
ble Agreement”); J.A. 22227–36 (“Accele Agreement”).
Moreover, “allegedly comparable licenses may cover more
patents than are at issue in the action, include cross-licens-
ing terms, [or] cover foreign intellectual property rights.”
Ericsson, 773 F.3d at 1227. But Omega was nonetheless
required to “account for such distinguishing facts when in-
voking [the licenses] to value the patented invention.” Id.;
see Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292,
1317 (Fed. Cir. 2011) (“[T]here must be a basis in fact to
associate the royalty rates used in prior licenses to the par-
ticular hypothetical negotiation at issue in the case.”).
Here, we conclude that Omega failed to adequately ac-
count for substantial “distinguishing facts” between the
proffered licenses and a hypothetical negotiation over a sin-
gle-patent license to the ’278 patent. Most glaringly, each
of the eighteen proffered licenses involves numerous pa-
tents, in contrast to a hypothetical negotiation for a single-
patent license. For example, the Cimble Agreement covers
thirty-nine U.S. patents, twelve foreign patents, and three
patent applications, and the Accele Agreement covers
twenty-four U.S. patents, nine foreign patents, and twelve
patent applications. 11 J.A. 22203–04, 22235–36. Omega
11 As additional (uncomprehensive) examples, other
license agreements introduced at trial include “the Nu-
merex,” “Audiovox, ADS, Fortin, and DEI” agreements.
J.A. 23579; see J.A. 22392–22406 (“Numerex Agreement”);
J.A. 22255–73 (“Audiovox Agreement”); J.A. 22275–87
(“ADS Agreement”); J.A. 22288–99 (“Fortin Agreement”);
J.A. 22314–58 (“DEI Agreement”). The Numerex
Case: 20-1793 Document: 44 Page: 30 Filed: 09/14/2021
30 OMEGA PATENTS, LLC v. CALAMP CORP.
argues that “Mr. Tregillis addressed the fact that some li-
censes cover more than the ’278 patent” and “accounted for
the additional patents found in the existing licenses.”
Cross-Appellant’s Br. 46 (citing J.A. 23571–72, 23586).
But the testimony cited by Omega reveals that Mr. Tregil-
lis merely identified such differences—Mr. Tregillis simply
testified that the licenses “cover multiple patents that are
even beyond the patents in the hypothetical negotiation,”
J.A. 23571, and that the licenses contain a “long list of pa-
tents,” J.A. 23586. What’s utterly lacking is evidence that
Omega met its obligation to “account for such distinguish-
ing facts” in invoking the licenses to value the ’278 patent.
Ericsson, 773 F.3d at 1227.
Omega separately suggests that it met its obligation to
account for distinguishing facts on the basis that Mr. Flick
“described the details, similarities[,] and differences be-
tween and among the licenses.” Cross-Appellant’s Br. 30.
But, like his testimony regarding Omega’s licensing ar-
rangement, Mr. Flick merely testified, for example, that
certain licenses included a royalty of $5.00 per unit regard-
less of “which patent” was included because “no patent was
any more valuable than the others.” J.A. 23326–27 (dis-
cussing the Audiovox Agreement). The Audiovox Agree-
ment, like each of the others, covers numerous patents,
unlike a hypothetical negotiation over only the ’278 patent.
Mr. Flick’s (and Mr. Tregillis’s) generic testimony simply
Agreement covers fifty-nine U.S. patents, nine foreign pa-
tents, and several patent applications (J.A. 22401–03); the
Audiovox Agreement covers twelve U.S. patents and three
foreign patents (J.A. 22264); the ADS Agreement covers
eleven U.S. patents and three foreign patents (J.A. 22285);
the Fortin Agreement covers ten U.S. patents and three
foreign patents (J.A. 22298); and the DEI Agreement co-
vers twenty-two U.S. patents, eleven foreign patents, and
several patent applications (J.A. 22346).
Case: 20-1793 Document: 44 Page: 31 Filed: 09/14/2021
OMEGA PATENTS, LLC v. CALAMP CORP. 31
does not “account[] for the technological and economic dif-
ferences between th[e] licenses” and a hypothetical negoti-
ation over a single, specific patent. ResQNet.com, 594 F.3d
at 873; Finjan, Inc. v. Secure Computing Corp., 626 F.3d
1197, 1211 (Fed. Cir. 2010) (“[U]se of past patent licenses
. . . must account for differences in the technologies and
economic circumstances of the contracting parties.”). Ac-
cordingly, we conclude that Omega did not present to the
jury “a basis in fact to associate the royalty rates used in
prior licenses to the particular hypothetical negotiation at
issue in th[is] case.” 12 Uniloc, 632 F.3d at 1317.
Omega also argues that the jury’s award of only $1.00
for a single unit found to infringe the ’727 patent, compared
with the jury’s award of $5.00 per unit for infringement of
the ’278 patent, is “compelling evidence” that “the jury
found . . . that the value of the two inventions w[as] signif-
icantly different or more closely replicated the circum-
stances of certain licenses and not others.” Cross-
Appellant’s Br. 40. To the extent that Omega is arguing
that the differing awards show that Omega presented suf-
ficient evidence of apportionment with respect to the
’278 patent, we disagree. What the jury did (or did not)
12 We disagree with the dissent’s odd suggestion that
our opinion “unnecessarily forces a patent owner to make
a specific business decision about how to license its pa-
tented technology at the outset” or “effectively forecloses
the idea” that there may be multiple reliable methods for
estimating a reasonable royalty. Dissent 7–8. Contrary to
the dissent, the hypothetical negotiation is not constrained
by the patentee’s own licensing practices. Here, under the
“hypothetical negotiation” approach, Omega failed to carry
its burden to prove that the proffered licenses were suffi-
ciently comparable to the hypothetical negotiation at issue
because it did not account for substantial distinguishing
facts.
Case: 20-1793 Document: 44 Page: 32 Filed: 09/14/2021
32 OMEGA PATENTS, LLC v. CALAMP CORP.
award with respect to the ’727 patent (which is not on ap-
peal) does not excuse Omega from its obligation to show
apportionment as to the ’278 patent.
We have considered Omega’s remaining arguments
with respect to damages but find them unpersuasive. In
sum, we conclude that Omega failed to present sufficient
evidence to the jury to support the jury’s damages award
for infringement of the asserted claims of the ’278 patent.
We therefore conclude that the district court abused its dis-
cretion in denying CalAmp’s request for a new trial and
that a new trial on damages for infringement of the ’278 pa-
tent is warranted.
IV. OMEGA’S CROSS-APPEAL
Omega cross-appeals the district court’s determination
of an ongoing royalty of $5.00 per unit infringing the
’278 patent. Because the district court’s determination of
the ongoing royalty rate was based on the jury’s damages
award for infringement of the ’278 patent, see J.A. 14–22,
and because we vacate that damages award and remand
for a new trial, the issues raised in Omega’s cross-appeal
are moot as to this appeal. We therefore dismiss the cross-
appeal.
CONCLUSION
For the above reasons, we vacate the jury’s finding of
direct infringement of the asserted claims of the ’885 pa-
tent, affirm the judgment of infringement of the asserted
claims of the ’278 patent, vacate the jury’s damages award
for infringement of the ’278 patent and remand for a new
trial on damages consistent with this opinion, and dismiss
the cross-appeal.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
Case: 20-1793 Document: 44 Page: 33 Filed: 09/14/2021
United States Court of Appeals
for the Federal Circuit
______________________
OMEGA PATENTS, LLC,
Plaintiff-Cross-Appellant
v.
CALAMP CORP.,
Defendant-Appellant
______________________
2020-1793, 2020-1794
______________________
Appeals from the United States District Court for the
Middle District of Florida in No. 6:13-cv-01950-PGB-DCI,
Judge Paul G. Byron.
______________________
HUGHES, Circuit Judge, joining in part and dissenting in
part.
Although I agree with the majority regarding infringe-
ment, I conclude that the district court properly excluded
CalAmp’s damages expert on retrial and that the evidence
presented by Omega constituted sufficient evidence to sup-
port the jury’s finding of a five dollar per product royalty
for infringement of the ’278 patent. I therefore respectfully
dissent from Parts III and IV of the majority opinion and
from the judgment. I join the remainder of the majority
opinion.
Case: 20-1793 Document: 44 Page: 34 Filed: 09/14/2021
2 OMEGA PATENTS, LLC V. CALAMP CORP.
I
As the majority notes, before the first trial, the district
court granted Omega’s Daubert motion to exclude
CalAmp’s damages expert, Dr. DeForest McDuff. Maj. Op.
at 16. After the first trial, CalAmp moved for a new trial on
damages, arguing in part that the district court erred in
excluding the entirety of Dr. McDuff’s testimony. The dis-
trict court denied the motion. And CalAmp did not raise
that issue in its first appeal to this court. Id.Not surprisingly, our prior opinion in this appeal did
not make any specific reference to the exclusion of
Dr. McDuff’s testimony. Rather, our opinion focused on
claim construction and infringement. Because we held that
only one claim of one patent was properly found to be in-
fringed in the first trial, we remanded for a new trial on
both infringement of the remaining claims and compensa-
tory damages. We also found that the district court erred
by preventing two CalAmp witnesses from testifying about
issues related to induced and willful infringement, both of
which were issues of expert testimony explicitly appealed
by CalAmp. But nowhere did we instruct the district court
to reconsider all of its prior evidentiary rulings, nor did our
discussion of the damages issue mention the exclusion of
Dr. McDuff’s testimony. See Omega Pats., LLC v. CalAmp
Corp., 920 F.3d 1337, 1351–54 (Fed. Cir. 2019). Instead, we
concluded with a general, blanket statement: “the parties
are urged to achieve clarity by clearly presenting evidence,
objections, arguments, and jury instructions as to direct
and indirect infringement, compensatory damages, and
willful infringement . . . so that this court may effectively
fulfill its appellate function in any further review arising
from the retrial.” Id. at 1354. This is the only statement
this court made regarding instructions for retrial.
Given that CalAmp did not appeal the district court’s
prior Daubert order excluding Dr. McDuff’s testimony, and
because our prior decision likewise failed to mention it, it
Case: 20-1793 Document: 44 Page: 35 Filed: 09/14/2021
OMEGA PATENTS, LLC V. CALAMP CORP. 3
is equally unsurprising that the district court refused to re-
consider that issue on remand. As the district court stated,
“[t]he decision on the admissibility of Dr. McDuff was de-
cided at docket entry 117 by me. That decision is final. It
was not appealed. And that will not be revisited at this
time.” J.A. 19261. The majority appears to suggest that the
district court legally erred because it believed “it was
bound by its evidentiary ruling in the first trial.” Maj. Op.
at 18–19. I respectfully disagree with that assessment. Ra-
ther, the district court exercised its discretion not to revisit
an evidentiary ruling made in the first trial and not ap-
pealed by CalAmp in its first appeal.
Nor do I believe that the district court abused its dis-
cretion in refusing to reconsider an unappealed evidentiary
issue. Under Eleventh Circuit law, evidentiary issues such
as these are largely within the district court’s discretion.
Seamon v. Remington Arms Co., 813 F.3d 983, 987
(11th Cir. 2016). And we should be even more wary of find-
ing abuse of discretion for refusal to reconsider an issue
that was not even raised in the first appeal, when CalAmp
was clearly aware of the issue and its potential impact on
any retrial. CalAmp presented its arguments in support of
Dr. McDuff’s testimony in its first motion for a new trial.
J.A. 17913 (“[T]he Court erroneously excluded Dr. McDuff’s
opinions in their entirety, despite only identifying criti-
cisms of Dr. McDuff’s affirmative calculation of what a rea-
sonable royalty should be. Dr. McDuff’s report also
included opinions criticizing the opinions of Omega’s dam-
ages expert Christian Tregillis.” (citation omitted)); see also
J.A. 19260. CalAmp could have raised this issue in its first
appeal, when it appealed the district court’s denial of its
first motion for a new trial. It did not do so. And I see no
abuse of discretion in the district court’s denial of CalAmp’s
request to re-litigate these arguments at retrial.
Case: 20-1793 Document: 44 Page: 36 Filed: 09/14/2021
4 OMEGA PATENTS, LLC V. CALAMP CORP.
II
I disagree with the majority’s apportionment analysis
for two reasons. First, to the extent CalAmp contests the
testimony of Omega’s expert, Christian Tregillis, and the
licenses introduced as comparable, both of these argu-
ments more properly should have been made via Daubert
motion or objection at trial. Second, to the extent the ma-
jority requires further accounting for the incremental value
of the ’278 patent beyond that reflected in the licenses in-
troduced as comparable, I believe that approach is too re-
strictive given our precedent.
A
CalAmp’s arguments about the methodology of
Omega’s expert, Christian Tregillis, and the comparability
of the licenses should have been made via Daubert motion
and objection to the admission of the licenses at trial. See
MLC Int’l Prop. LLC v. Micron Tech., Inc., No. 2020-1413,
2021 WL 3778405, at *11–12 (Fed. Cir. Aug. 26, 2021) (af-
firming district court’s Daubert order excluding expert tes-
timony regarding a reasonable royalty); Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1314 (Fed. Cir. 2014) (“[A]
district court judge, acting as a gatekeeper, may exclude
evidence if it is based upon unreliable principles or meth-
ods, or legally insufficient facts and data.”), overruled on
other grounds by Williamson v. Citrix Online, LLC, 792
F.3d 1339 (Fed. Cir. 2015). Incomparable agreements
should not be admitted as evidence. See, e.g., LaserDynam-
ics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 78 (Fed. Cir.
2012) (“Accordingly, we conclude that the district court
abused its discretion by admitting the . . . settlement
agreement into evidence, and must exclude the agreement
from the proceedings on remand.”). And when an expert’s
proffered royalty rate is “untethered from the patented
technology at issue” such testimony should not be admit-
ted. Id. at 81.
Case: 20-1793 Document: 44 Page: 37 Filed: 09/14/2021
OMEGA PATENTS, LLC V. CALAMP CORP. 5
But CalAmp made no Daubert objections to any of
Mr. Tregillis’s testimony. Oral Argument (May 6, 2021) at
11:58–12:12, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=20-1793_05062021.mp3 (Q:
“Did you ever exclude the other side’s expert witness under
Daubert?” A: “I don’t think we tried to exclude the other
side’s expert.”); J.A. 23564. Nor did CalAmp object to the
admission of the licenses that it argues are incomparable.
See J.A. 23298, 23299, 23303, 23314, 23317, 23322, 23326,
23328, 23330, 23331, 23335, 23337, 23341, 23343, 23344,
23345. To the extent CalAmp believed Mr. Tregillis’s testi-
mony and the license agreements at issue “cannot support
the jury’s award,” Appellant’s Br. 56, it should have at-
tempted to have them excluded at the Daubert stage or dur-
ing trial. Its failure to do so means that the testimony and
licenses are evidence capable of supporting the damages
award.
B
I further disagree with the majority’s view that the li-
censes introduced as comparable did not sufficiently ac-
count for the incremental value of the ’278 patent. The
majority’s approach is, in my view, overly rigid and imper-
missibly limits the manner in which damages may be cal-
culated in patent infringement cases. “A jury’s damages
award ‘must be upheld unless the amount is grossly exces-
sive or monstrous, clearly not supported by the evidence,
or based only on speculation or guesswork.’” Bio-Rad
Lab’ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1373
(Fed. Cir. 2020) (quoting Gen. Elec. Co. v. Joiner, 522 U.S.
136, 146 (1997)). At trial, the jury heard sufficient evidence
to support both the comparability of the licenses and the
award of a five dollar reasonable royalty.
35 U.S.C. § 284 provides that “[u]pon finding for the
claimant the court shall award the claimant damages ade-
quate to compensate for the infringement, but in no event
less than a reasonable royalty for the use made of the
Case: 20-1793 Document: 44 Page: 38 Filed: 09/14/2021
6 OMEGA PATENTS, LLC V. CALAMP CORP.
invention by the infringer, together with interest and costs
as fixed by the court.” While the statute does not define
“reasonable royalty,” we have previously held that “[w]hen
a ‘reasonable royalty’ is the measure, the amount
may . . . be considered a factual inference from the evi-
dence, yet there is room for exercise of a common-sense es-
timation of what the evidence shows would be a
‘reasonable’ award.” Lindemann Maschinenfabrik GmbH
v. Am. Hoist & Derrick Co., Harris Press & Shear Div., 895
F.2d 1403, 1406 (Fed. Cir. 1990). “[E]stimating a ‘reasona-
ble royalty’ is not an exact science,” and “the record may
support a range of ‘reasonable’ royalties, rather than a sin-
gle value.” Apple, 757 F.3d at 1315. Indeed, “there may be
more than one reliable method for estimating a reasonable
royalty.” Id.
“[P]arties frequently rely on comparable license agree-
ments” to determine a reasonable royalty. Bio-Rad, 967
F.3d at 1372. “Assessing the comparability of licenses re-
quires a consideration of whether the license at issue in-
volves comparable technology, is economically comparable,
and arises under comparable circumstances as the hypo-
thetical negotiation.” Id. at 1372–73. But we have recog-
nized that “[p]rior licenses . . . are almost never perfectly
analogous to the infringement action” and “may cover more
patents than are at issue in the action, include cross-licens-
ing terms, [or] cover foreign intellectual property rights.”
Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1227
(Fed. Cir. 2014).
Here, Mr. Tregillis testified that “whether it’s one pa-
tent or all the patents, the way that Omega licenses them
is, it’s five bucks.” J.A. 23587. And Kenneth Flick, Omega’s
president, testified that all of Omega’s licensing agree-
ments are structured so that the first data bus patent costs
five dollars per device, and there is no charge for any addi-
tional data bus patents included in the agreement. J.A.
23324 (“[N]o matter what you did, the first patent’s five
bucks. Everything else thereafter, you just threw it in.”).
Case: 20-1793 Document: 44 Page: 39 Filed: 09/14/2021
OMEGA PATENTS, LLC V. CALAMP CORP. 7
And nearly all of the licenses introduced by Omega and re-
lied on by Mr. Tregillis value Omega’s data bus patents at
five dollars for the first licensed patent. See, e.g., J.A.
22216, 22236, 22265, 22286, 22299, 22302, 22389, 22435,
22439. Because CalAmp did not object to Mr. Tregillis’s or
Mr. Flick’s testimony or to the admission of the licenses at
issue, to the extent that CalAmp found these licenses in-
comparable, it had the opportunity to address the issue on
cross-examination. But once Mr. Tregillis’s and Mr. Flick’s
testimony and the licenses were before the jury, the “‘de-
gree of comparability’ was appropriately left for the jury to
decide.” Bio-Rad, 967 F.3d at 1357. And the jury was
properly instructed that if it chose “to rely upon evidence
from any other license agreements, [it] must account for
any differences between those licenses and the hypotheti-
cally negotiated license between Omega and CalAmp, in
terms of the technologies and economic circumstances of
the contracting parties, when [it made its] reasonable roy-
alty determination.” J.A. 66.
In addition, where, as here, a party relied on a “hypo-
thetical negotiation” approach and evidence of relevant li-
censes with other companies to support its suggested
royalty rate, the majority’s insistence on further apportion-
ment unnecessarily forces a patent owner to make a spe-
cific business decision about how to license its patented
technology at the outset, long before a patent infringement
suit may even be contemplated. Had Omega relied on the
value of the LMUs themselves to arrive at its estimation of
a reasonable royalty rate, Omega would need to properly
apportion the value of the LMUs from the value of the ’278
patent. See, e.g., LaserDynamics, 694 F.3d at 70–71 (af-
firming the district court’s grant of a new trial on damages
where patent owner relied on entire market value rule to
suggest a royalty rate without proving that the patented
feature drove demand for the entire product). But Mr. Tre-
gillis used the “hypothetical negotiation” for his calculation
of reasonable royalty damages. J.A. 23567. “This approach
Case: 20-1793 Document: 44 Page: 40 Filed: 09/14/2021
8 OMEGA PATENTS, LLC V. CALAMP CORP.
attempts to calculate the royalty rate the parties would
have agreed upon had they negotiated an agreement prior
to the start of the infringement.” Bio-Rad, 967 F.3d at
1372.
And given that the jury was properly instructed to con-
sider the comparability of the license agreements in decid-
ing on a reasonable royalty, I see no basis for overturning
the jury’s damages award based on a hypothetical negotia-
tion theory and comparable license analysis. Mr. Tregillis
relied on Omega’s licensing policy and licensing agree-
ments that reflect this policy to explain that whether a li-
cense included one data bus patent or several, five dollars
per infringing unit was charged. Therefore, once a reason-
able juror had concluded that the ’278 patent was a data
bus patent, she could have reasonably concluded from
Mr. Tregillis’s testimony, the licenses, and Mr. Flick’s tes-
timony that Omega would have hypothetically negotiated
a five dollar per device license for the ’278 patent. The ma-
jority’s insistence on “evidence of a comparable license or
comparable negotiation to support an identical $5.00 rate
for a one-patent license to the ’278 patent,” Maj. Op. at 27,
effectively forecloses the idea that “there may be more than
one reliable method for estimating a reasonable royalty,”
Apple, 757 F.3d at 1315.
Because I would uphold the jury’s damages award of
five dollars per unit infringing the ’278 patent, I would also
affirm the district court’s determination of an ongoing roy-
alty of five dollars per unit infringing the ’278 patent.
III
I believe the district court did not abuse its discretion
in precluding Dr. McDuff from offering his rebuttal testi-
mony in the retrial. And I believe that the majority’s insist-
ence that further apportionment is necessary in this
instance takes too narrow a position on what constitute
comparable licenses. I therefore respectfully dissent from
Case: 20-1793 Document: 44 Page: 41 Filed: 09/14/2021
OMEGA PATENTS, LLC V. CALAMP CORP. 9
Parts III and IV of the majority opinion and from the judg-
ment. I would affirm.