District Court Rules Plaintiff Need Not Come Forward with Evidence of Priority Date Earlier than Patent Application Until Defendant Produces Clear and Convincing Evidence of Invalidating Prior Art and Summary Chart Is Not Sufficient

Omega Patents, LLC (“Omega”) filed a patent infringement action against CalAmp Corp. (“CalAmp”) asserting that CalAmp infringes the claims of U.S. Patent No. 6,346,876 (“the ‘876 Patent”), U.S. Patent No. 6,737,989 (“the ‘989 Patent”), U.S. Patent No. 6,756,885 (“the ‘885 Patent”), U.S. Patent No. 7,671,727 (“the ‘727 Patent”), and U.S. Patent No. 8,032,278 (“the ‘278 Patent”). The patents relate to control systems for vehicles with a “data communications bus.” Omega asserted that CalAmp’s devices are used to monitor particular vehicle characteristics and conditions and report vehicle information to an end user, thus infringing on the patents-in-suit. In particular, CalAmp advertises for sale the LMU-3000, LMU-3030, and LMU-3050 (the “Accused Devices”) which are described as full-featured tracking systems which “access vehicle diagnostic interface data, track vehicle speed and location, plus detect hard braking, cornering, or acceleration.”

CalAmp filed a motion seeking to determine the issue of whether the patents-in-suit, excluding the ‘989 Patent, are entitled to any priority date earlier than the date the patents-in-suit were actually filed. In response, Omega asserted that it is under no obligation to establish priority until CalAmp first sets forth a prima facie case of invalidity as to a specific claim or patent and carries its burden of persuasion that the relevant prior art reference is dated after the earlier priority date (the ‘551 Patent) but before the filing date of the patent(s) at issue. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008).

The district court began its analysis by explaining that CalAmp “has the burden of proving by clear and convincing evidence that the patents-in-suit, otherwise presumed valid, are invalid. It is not until these burdens of persuasion have been met that Omega embraces the burden of proving that the patents-in-suit enjoy a priority date preceding the relevant prior art.”

To argue it had met this burden, CalAmp presented argument including citations to the parent patent (the ‘551 Patent) and to various alleged admissions made by Omega’s expert witness and attorneys in prior litigation. As explained by the district court, Omega contended that the submission of a chart containing prior art references that allegedly establish invalidity is inadequate to shift the burden of persuasion to Omega to demonstrate that the patents-in-suit are entitled to a priority date preceding the date the patent was filed. “That is, Omega submits that mere references to prior art is insufficient to establish that the prior art in fact invalidate the patents-in-suit, which is a precondition to shifting the burden of persuasion back to Omega.”

The district court agreed with Omega that the request was premature. “Assuming Omega establishes infringement of some or all of the patents-in-suit, and further assuming CalAmp proves by clear and convincing evidence that prior art invalidates some or all of the patents-in-suit, then and only then does Omega have a burden of establishing that the continuations-in-part relate back to the parent patent.”

Accordingly, the district court denied the motion to establish a priority date.

Omega Patents, LLC v. Calamp Corp., Case No. 6:13-cv-1950-Orl-40DAB (M.D. Fla. Jan. 13, 2016)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.