Global Traffic Technologies v. Morgan , 620 F. App'x 895 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GLOBAL TRAFFIC TECHNOLOGIES LLC,
Plaintiff-Appellee
v.
RODNEY K. MORGAN, KM ENTERPRISES, INC.,
Defendants-Appellants
STC, INC.,
Defendant-Appellant
______________________
2014-1537, 2014-1566
______________________
Appeals from the United States District Court for the
District of Minnesota in No. 0:10-cv-04110-ADM-JJG,
Judge Ann D. Montgomery.
______________________
Decided: June 4, 2015
______________________
CHAD DROWN, Faegre Baker Daniels LLP, Minneap-
olis, MN, argued for plaintiff-appellee. Also represented
by JAMES W. PORADEK, TIMOTHY E. GRIMSRUD, LAUREN J.
FRANK, TIMOTHY M. SULLIVAN, EVA BETH STENSVAD.
LOUIS W. TOMPROS, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, argued for all defendants-
2 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
appellants. Defendant-appellant STC, Inc. also repre-
sented by ANANT KUMAR SARASWAT; ROBERT ANTHONY
ARCAMONA, Washington, DC.
JANA YOCOM RINE, Jana Yocom, P.C., Mount Vernon,
IL, for defendants-appellants Rodney K. Morgan, KM
Enterprises, Inc.
______________________
Before DYK, O’MALLEY, and TARANTO, Circuit Judges.
O’MALLEY, Circuit Judge.
Global Traffic Technologies, LLC (“GTT”) asserted
U.S. Patent No. 5,539,398 (“the ’398 patent”) against
Rodney Morgan, KM Enterprises, Inc., and STC, Inc.
(collectively, “Appellants”) 1 in the United States District
Court for the District of Minnesota. At trial, the jury
found that Appellants willfully infringed, inter alia,
method claims 16 and 17 of the ’398 patent, awarding
$5,052,118 in damages. Because Appellants claim con-
struction arguments regarding the method claims are
waived, we affirm the finding of infringement and decline
to address Appellants’ claim construction arguments for
the remaining system claims. We also reverse the district
court’s imposition of enhanced damages under § 284, but
affirm its conclusions regarding the sufficiency of GTT’s
marking, the admission of GTT’s damages expert’s testi-
mony, and Morgan’s personal liability. Accordingly, we
affirm-in-part, reverse-in-part, and remand.
1 Although KM Enterprises, Inc. (“KME”) and Mor-
gan, the sole shareholder of KME, filed separate appellate
briefs, we treat Appellants collectively except where
noted.
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 3
I. BACKGROUND
A. The ’398 Patent
The ’398 patent asserted that there was a need to
preempt the normal traffic signal programming for emer-
gency vehicles—e.g., fire trucks and ambulances. The
’398 patent explained that preemption would allow those
vehicles to get to an emergency more quickly and safely.
The ’398 patent discussed that the prior art systems for
preempting traffic signals were based on optical emitters
or radio transmitters. According to the patent, these prior
art systems were inadequate because they required a line-
of-sight with the signal controller or suffered from
range/location inaccuracies.
To solve these alleged deficiencies, the ’398 patent
purported to provide a traffic control preemption system
for emergency vehicles that used data from a global
positioning system (“GPS”). In the disclosed invention,
each vehicle was equipped with a GPS receiver and a
processor module to generate “navigational vehicle data,
such as position, heading and velocity.” ’398 patent col. 3
ll. 51–53. Each intersection was equipped with a module
that received the navigational vehicle data, determined if
the vehicle was approaching that intersection, and decid-
ed whether to preempt the normal traffic signal pro-
gramming.
4 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
Figure 1 is illustrative:
’398 patent Fig. 1. In Figure 1, the disclosed preemption
system included a vehicle module 100 and an intersection
module 200. The vehicle module 100 included the GPS
receiver, which received the GPS information from a GPS
system 5. The vehicle module 100 processed the GPS
data and transmitted it “via transmitter 80 and antenna
101 to the intersection module 200.” ’398 patent col. 5 l.
24–25. The intersection module 200 received the data via
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 5
receiver antenna 210. The intersection module 200 then
processed the vehicle data, and determined whether the
vehicle was “within one of the allowed approaches to that
intersection.” ’398 patent col. 5 ll. 47–48. If the vehicle
was “within” one of those allowed approaches, the inter-
section controller 320 would adjust the traffic signal
programming appropriately to allow the emergency
vehicle to pass through the intersection.
Claim 16 is representative of the method claims on
appeal:
16. A traffic control preemption method which
uses data received from a global positioning sys-
tem (GPS) to determine whether a vehicle, having
an associated vehicle path, is allowed to preempt
traffic signals at an intersection comprising the
steps of:
(a) receiving GPS signals;
(b) processing the GPS signals on-board the vehi-
cle so as to generate vehicle data;
(c) transmitting the vehicle data;
(d) providing a map of allowed approaches, where-
in the map of allowed approaches comprises a plu-
rality of preprogrammed allowed positions
proximate to the intersection;
(e) comparing the vehicle data with the map of al-
lowed approaches;
(f) determining based on a comparing step (e),
whether the vehicle is within one of the allowed
approaches; and
(g) allowing the vehicle to preempt the traffic sig-
nals associated with the intersection if the vehicle
is within one of the allowed approaches.
6 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
’398 patent col. 10 ll. 43–63 (emphasis added). The itali-
cized term is at issue in the present appeal.
B. The Procedural History
STC, Inc. (“STC”) partnered with KME, Morgan’s
company, to manufacture and distribute the EMTRAC
GPS traffic preemption system (“EMTRAC”). 2 STC was
responsible for manufacturing EMTRAC, and KME and
Morgan were responsible for marketing and selling the
system. On September 30, 2010, GTT sued Morgan in the
United States District Court for the District of Minnesota,
alleging that EMTRAC infringed the ’398 patent. On
April 28, 2011, GTT amended its complaint to include
Morgan’s company, KME. GTT filed a separate complaint
against STC on December 22, 2011, again alleging that
EMTRAC infringed the ’398 patent. The district court
consolidated the two actions in response to a stipulated
motion.
Prior to trial, the district court construed the disputed
claim terms—including “map of allowed approaches,”
which was given its plain meaning. Global Traffic Techs.
LLC v. Emtrac Sys. Inc., No. 0:10-cv-4110, 2012 WL
2884846, at *5 (D. Minn. July 13, 2012) (“Claim Construc-
tion Order”). On September 20, 2013, the jury returned a
verdict finding that KME, Morgan, and STC willfully
infringed, inter alia, method claims 16 and 17. 3 The jury
2 EMTRAC is a traffic preemption system that uses
GPS receivers on emergency vehicles to determine the
vehicles’ positions.
3 Because Appellants do not separately challenge
dependent claim 17, we will only address independent
method claim 16 on appeal. The jury also found in-
fringement of certain system claims in the ’398 patent.
On appeal, Appellants challenge the construction of claim
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 7
awarded GTT $5,052,118 in damages for the infringe-
ment. The district court denied all of Appellants’ post-
trial motions for judgment as a matter of law (“JMOL”),
finding that: (1) GTT adequately proved infringement of
the method claims for the jury to find infringement, (2)
Appellants’ infringement was willful, (3) the testimony of
GTT’s damages expert was properly admitted, and (4) the
jury properly found Morgan personally liable for in-
fringement. Global Traffic Techs. LLC v. Emtrac Sys.
Inc., No. 0:10-cv-4110, 2014 WL 1663420 (D. Minn. Apr.
25, 2013) (“JMOL Order”). The district court also award-
ed GTT $2,526,059 in enhanced damages under § 284
(50% of the total damages award), $923,965 in pre-
judgment interest, and $1,384.14 per day in post-
judgment interest.
Appellants timely appealed. We have jurisdiction un-
der 35 U.S.C. § 1295(a)(1) (2012).
II. DISCUSSION
A. Claim 16
STC recognizes that, our analysis of claim 16 is poten-
tially dispositive of its challenge to the jury’s infringement
verdict. See Oral Arg. at 0:09, Global Traffic Techs. LLC
v. Morgan, 2014-1537, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?/fl=20
14-1537.mp3 (“There are many issues raised in this
appeal, but I would like to start with one that is case
dispositive, and that is the construction of ‘map of allowed
approaches.’”). Specifically, if we affirm the district
court’s construction of “map of allowed approaches,”
because STC has asserted no other viable grounds upon
which to attack the jury’s verdict of infringement with
respect to claim 16, that verdict will stand. And, because
terms in these system claims, but, as explained infra, we
need not reach these constructions.
8 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
the method and system claims are allegedly infringed by
the same products and conduct, STC does not contend
that the number of claims infringed impacts the damages
award, making an analysis of claim 1 and its claim terms
unnecessary.
In its claim construction order, the district court
found that “map of allowed approaches”—the only disput-
ed term in claim 16—should be given its “plain meaning.”
Claim Construction Order, 2012 WL 2884846, at *5. In
explaining its ruling, and the dispute between the parties
it was resolving, the district court expressly refused to
include two specific limitations in this claim term: a
geographical or “location-specific” one and one it charac-
terized as redundant. Id. STC had urged that the term
include a reference to the fact that the map be a “prepro-
grammed” map and that the court expressly inform the
jury that “said map” is to be “stored at the intersection”
“where the traffic signal that is to be preempted is locat-
ed.” Id. The district court rejected both suggestions.
While the court agreed that the map referenced in claim
16 must be preprogrammed, the court found that fact to
be expressly stated elsewhere in the claim, making its use
as a modifier of map redundant. Id. The court also found,
for reasons it had explained when assessing similar
requests by STC for intersection-specific location limita-
tions to be read into other claim terms in the ’389 patent,
that no location-specific limitation should be read into
map of allowed approaches. Id. Because, in the absence
of STC’s requests for these specific limitations, the court
found no other dispute between the parties regarding the
meaning of this claim term, it afforded the phrase its
plain meaning. Importantly, STC neither sought recon-
sideration of the court’s order as to this term nor ex-
plained at any time before trial that the court
misunderstood the points it was urging with respect to
the phrase “map of allowed approaches.” The case pro-
ceeded to trial and, after the jury returned its verdict
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 9
finding infringement of claim 16, the district court reject-
ed STC’s motion for JMOL, explaining that GTT present-
ed evidence that the EMTRAC system performed each of
the claimed steps, as the trial court had construed them.
JMOL Order, 2014 WL 1663420, at *2–3.
On appeal, STC argues that the district court miscon-
strued “map of allowed approaches,” and that there was
insufficient evidence for the jury to find direct and indi-
rect infringement of claim 16 under its proposed construc-
tion.
i. Claim Construction: “map of allowed approaches”
Claim construction is a matter of law, which we re-
view de novo, but we review any underlying factual
findings by the district court for clear error. Teva Pharm.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837–38 (2015).
Generally, claim terms should be given their ordinary and
customary meaning from the perspective of a person
having ordinary skill in the art at the time of the effective
date of the patent application. Phillips v. AWH Corp., 415
F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). To ascer-
tain the scope and meaning of the asserted claims, we
look to the words of the claims themselves, the specifica-
tion, the prosecution history, and any relevant extrinsic
evidence. Id. at 1315–17. This inquiry, at times, begins
and ends with the intrinsic evidence. In fact, the specifi-
cation is the single best guide to the meaning of the claim
terms; it is often dispositive. Id. at 1318 (“[T]he specifica-
tion ‘is always highly relevant to the claim construction
analysis. Usually, it is dispositive . . . .” (internal cita-
tions omitted)).
On appeal, STC argues that the district court should
have construed the term “map of allowed approaches” as a
“preprogrammed map of routes to the intersection where
the traffic signal that is to be preempted is located, said
map being stored at the intersection.” STC’s Br. 43
(emphasis added by STC). According to STC, the funda-
10 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
mental dispute between the parties as to this limitation is
“whether an ‘approach’ can encompass a fixed area (like a
rectangle on a map), or whether it requires movement
(like a route).” Id. STC contends that the claims, specifi-
cation, and figures make clear that the “allowed ap-
proaches” limitation requires measurement of movement
along a path or route toward the intersection and do not
encompass static detection zones. More specifically, STC
contends that the map of allowed approaches must be
created from data tracking vehicle movement along a
path using multiple data points along that path. STC’s
Br. 44.
GTT responds that STC waived this argument be-
cause it never argued before the district court that the
“allowed approaches” required movement toward an
intersection. GTT contends that the specification and
claim language makes clear that the “map of allowed
approaches” can take any shape, including rectangular
detection zones.
We agree with GTT that STC waived this argument
by failing to raise it to the district court. See Singleton v.
Wulff, 428 U.S. 106, 120 (1976) (“It is a general rule, of
course, that a federal appellate court does not consider an
issue not passed upon below.”). Although STC did argue
that “map of allowed approaches” should mean “prepro-
grammed map of routes to the intersection where the
traffic signal to be preempted is located, said map being
stored at the intersection,” its argument to the district
court was that the map must be stored at the intersection;
it never argued that a “route” required movement or a
particular form of data point tracking. Joint Appendix
(“J.A.”) 5173–74.
In its claim construction brief, for example, while STC
referenced the concept of a map of “paths,” it only argued
that the intrinsic evidence required that the “map of
allowed approaches” (i.e., of its referenced paths) be
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 11
located at the intersection. J.A. 5173–74; see also J.A.
5124 (arguing the same in the joint claim construction
statement). At the Markman hearing, moreover, STC
confirmed to the court that the main dispute was over the
physical location of the “map of allowed approaches.” See
Global Traffic Techs., LLC v. Emtrac Sys., Inc., No. 0:10-
cv-4110 (D. Minn. May 30, 2012), ECF No. 110, at 39:12–
22 (“With regard to ‘map of allowed approaches,’ . . . our
point in connection with this hearing, is that there is a
specific, definable geographical location with regard to the
location and the intersection which is separate from that
geographical location which is definable with respect to
the vehicle.”). GTT explained to the trial court that “the
big dispute seems to be, what [STC’s] main infringement
argument seems to be, is that they store the maps of
allowed approaches in the—physically in the vehicle
computer unit as opposed to physically at the intersection,
and our position is that none of these claims require a
physical location limitation.” Id. at 11:11–16. STC not
only did not dispute that characterization, it debated it
head on. Id. at 32:2–5 (“The 200 series of numbers within
the patent refer to the intersection module. The mapping
means is physically there. The patent doesn’t describe
anything else, so that’s the only way to construe that
language.”); see also id. at 39:23–25 (“Figures 1, 2 and 3 of
the patent support [STC’s] claim construction that ‘map of
allowed approaches’ has this physical element where it is
within the intersection module.”). Indeed, at the Mark-
man hearing, GTT even characterized the allowed ap-
proaches as “rectangles,” and STC never objected to that
characterization. Id. at 7:6–9 (“In the slide here, the
rectangle’s showing one of the allowed approaches to the
intersection and its determining that this police car’s in
the allowed approach using this GPS technology.”).
In its claim construction order, the district court re-
jected STC’s “locational limitation” argument in finding
that “map of allowed approaches” should be given its
12 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
plain meaning, but did not address whether the term
required movement. See Claim Construction Order, 2012
WL 2884846, at *5. As noted, following the claim con-
struction order, STC never argued that the district court
failed to address what they now claim is a fundamental
dispute between the parties as to whether the “map of
allowed approaches” requires movement or non-static
directionality. See STC’s Br. 43–47; Oral Arg. at 1:40.
Tellingly, although STC requested construction of other
claim terms after the Markman order, it never made its
directionality argument before the district court. As a
result we find STC’s proposed construction of “map of
allowed approaches” waived. 4
Accordingly, we reject STC’s argument that “map of
allowed approaches” should be limited to a map of
“movement along a path (toward the intersection).” STC’s
Br. 46.
ii. Infringement
Because infringement was tried to a jury, we review
the jury’s finding of infringement for substantial evidence.
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 849 (Fed.
Cir. 2010). It is sufficient for us to discuss indirect in-
fringement. There is no substantial challenge on appeal
to the sufficiency of the evidence to show the required
underlying direct infringement—here, that Appellants’
customers performed the steps of claim 16. As to the
other elements of indirect infringement, the challenges on
appeal fail based on meritlessness, waiver, or both.
4 Although STC argued at oral argument that it
presented evidence at trial regarding the difference
between the EMTRAC system and the system disclosed in
the ’398 patent, those arguments were directed at non-
infringement, not claim construction. Oral Arg. at 6:07.
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 13
Putting to one side Morgan’s argument about the al-
leged need for corporate veil-piercing, which we discuss
below, appellants Morgan and KME argue only that they
cannot be liable for indirect infringement unless they
themselves directly infringed. That is incorrect. They can
be liable for inducing or contributing to the direct in-
fringement of their customers. Moreover, KME did not
preserve a sufficiency challenge to indirect infringement
through the required JMOL motions in the district court.
STC, for its part, contends that GTT failed to present
sufficient evidence that it proceeded with the knowledge
respecting the patent that is required to establish indirect
infringement. GTT argues that STC waived these argu-
ments by failing to present them in the required JMOL
motions in the district court. We agree.
Although STC challenged the jury’s finding of in-
fringement of claim 16, it only argued that there was
insufficient evidence that the EMTRAC system performed
every claimed step. JMOL Order, 2014 WL 1663420, at
*2–3. The district court properly rejected this argument
and STC does not appeal this conclusion. We, therefore,
agree with GTT that STC waived its new indirect in-
fringement arguments made on appeal. Singleton, 428
U.S. at 120.
In addition to waiving these new arguments, they are
without merit. GTT presented ample evidence that all
accused infringers had affirmative knowledge of the ’398
patent, had no reasonable non-infringement defense for
claim 16 (see Commil USA, LLC v. Cisco Systems, Inc.,
No. 13-896, 2015 WL 2456617 (Sup. Ct. May 26, 2015)),
and indeed willfully blinded themselves to their infringe-
ment of at least claim 16, and the jury was free to credit
that evidence. See, e.g., J.A. 1734 (“we chose not to read
it”); J.A. 1779:18–1780:15 (explaining that Morgan and
STC had knowledge of the ’398 patent when they started
developing updates to the EMTRAC system). Because
14 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
Appellants do not challenge the jury instruction, affirm-
ing indirect infringement alone is sufficient to uphold the
jury’s verdict. Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d
1201, 1222 (Fed. Cir. 2014) (holding that a general verdict
will not be set aside if there is sufficient evidence to
support any of the alternative factual theories so long as
there is no dispute over the legal propriety of the jury
instruction). 5
B. Enhanced Damages Under Section 284
The district court concluded that GTT was entitled to
enhanced damages because it had proven successfully
that Appellants willfully infringed the patent. The dis-
trict court explained that Appellants’ actions were objec-
tively unreasonable because “an objectively reasonable
person, with knowledge that a patent exists in the field in
which the potential infringers wish to compete would not
ignore the patent, but would investigate whether its
design would infringe.” JMOL Order, 2014 WL 1663420,
at *13. As the district court noted, moreover, the jury
found that GTT proved by clear and convincing evidence
that Appellants actually knew or should have known that
their actions constituted an unjustifiably high risk of
infringement. As a result, the district court awarded GTT
enhanced damages under § 284 in the amount of
$2,526,059 (50% of the total damages award).
5 GTT also presented evidence that Appellants
themselves performed the patented method by testing and
supporting the EMTRAC system. See, e.g., J.A. 1693:23–
1694:2 (testifying that Appellants would make the
EMTRAC systems, test it, and then ship it to customers).
Because we uphold the jury’s finding of infringement
based on indirect infringement, however, we need not
decide whether the evidence of direct infringement is
sufficient to maintain the entirety of the damages award.
See Ericsson, 773 F.3d at 1222.
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 15
Section 284 states in relevant part that “the court
may increase the damages up to three times the amount
found or assessed.” A patentee must show that he is
entitled to enhanced damages by showing that the in-
fringer willfully infringed. In re Seagate Tech., LLC, 497
F.3d 1360 (Fed. Cir. 2007) (en banc). Seagate sets out a
two-part test for proving willfulness where the patentee
must show that: (1) “the infringer acted despite an objec-
tively high likelihood that its actions constituted in-
fringement of a valid patent,” and (2) the “objectively-
defined risk (determined by the record developed in the
infringement proceeding) was either known or so obvious
that it should have been known to the accused infringer.”
Id. at 1371. The first question is for the court; the second
is for the jury. Bard Peripheral Vascular, Inc. v. W.L.
Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012).
We review the first prong de novo and the second prong
for substantial evidence. SSL Servs., LLC v. Citrix Sys.,
Inc., 769 F.3d 1073, 1090–91 (Fed. Cir. 2014).
On appeal, Appellants challenge the district court’s
analysis of the first prong. We conclude that the district
court applied the wrong standard in its analysis of that
prong. The district court found that there was ample
evidence in the record that Appellants knew of the patent
and determined that “an objectively reasonable person,
with knowledge that a patent exists in the field in which
the potential infringers wish to compete would not ignore
the patent, but would investigate whether its design
would infringe.” JMOL Order, 2014 WL 1663420, at *13.
The infringer’s knowledge of the patent is irrelevant to
the first Seagate prong, however. See Seagate, 497 F.3d
at 1371 (“The state of mind of the accused infringer is not
relevant to this objective inquiry.”). Instead, the district
court should have considered whether Appellants acted
“despite an objectively high likelihood that its actions
constituted infringement of a valid patent.” Seagate, 497
F.3d at 1371. This requires analysis of all of the infring-
16 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
er’s non-infringement and invalidity defenses, even if
those defenses were developed for litigation. See Halo
Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1382 (Fed.
Cir. 2014) (“The court properly considered the totality of
the record evidence, including the obviousness defense
that Pulse developed during the litigation, to determine
whether there was an objectively-defined risk of in-
fringement of a valid patent.”).
In this case, the district court found that Appellants
“had good-faith invalidity defenses once litigation began.”
JMOL Order, 2014 WL 1663420, at *14. We agree.
Because Appellants’ defenses during litigation were
objectively reasonable, GTT failed to prove the first prong
of our willfulness test. See Halo, 769 F.3d at 1382. As a
result, we reverse the district court’s award of enhanced
damages under § 284.
C. Marking
GTT makes and sells the Opticom GPS System (“the
Opticom system”). There is no dispute that the Opticom
system embodies at least one claim of the ’398 patent.
GTT argued that Appellants received constructive notice
of the ’398 patent because, although GTT did not mark
the physical components in the system, it did mark the
packaging in which the Opticom system was sold. The
district court instructed the jury to determine whether
marking the packaging was sufficient to meet GTT’s
marking requirement under § 287. The jury found that
GTT adequately marked Opticom and, based on that
conclusion, awarded damages from the date Appellants
started selling the EMTRAC system, rather than the date
on which GTT filed this lawsuit. The district court upheld
the jury’s finding in response to Appellants’ motion for
JMOL.
On appeal, Appellants argue that GTT failed to com-
ply with the marking statute because it marked the
packaging of its patented products rather than the indi-
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 17
vidual products themselves, even though there was suffi-
cient physical space on the components of the Opticom
system for marking. In essence, Appellants ask us to hold
as a matter of law that, if there is physical space on any
component of a patented system, the patentee must mark
that component to comply with the marking statute.
Section 287(a) states in relevant part:
Patentees . . . may give notice to the public that
[any patented article] is patented, either by fixing
thereon the word “patent” or the abbreviation
“pat.” together with the number of the patent . . .
or when, from the character of the article, this can
not be done, by fixing to it, or to the package
wherein one or more of them is contained, a label
containing a like notice.
35 U.S.C. § 287(a). As the statute states, marking of “any
patented article” is necessary if, “from the character of the
article,” it can be marked. Id. In this case, the “patented
article” is a system such that the “character of the article”
is defined by more than the physical surfaces on its com-
ponent parts. Id. Because the purpose of the marking
statute is to provide constructive notice to the public,
moreover, we apply a rule of reason analysis in determin-
ing when “substantial compliance may be found to satisfy
the [marking] statute.” Maxwell v. J. Baker, Inc., 86 F.3d
1098, 1111 (Fed. Cir. 1996).
As noted, the marking statute requires an analysis of
the “character of the article.” 35 U.S.C. § 287(a). Certain-
ly, the physical size of the article may be one factor in
considering whether the article itself must be marked
rather than the packaging. See Sessions v. Romandka,
145 U.S. 29, 49–50 (1896) (considering the patentee’s
ability to stamp the patented screws with a legible mark
based on the size of the screws). The physical size of the
patented article, however, is not the only thing that
defines the “character of the article.” 35 U.S.C. § 287(a).
18 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
There may be many other aspects of a patented article
that can affect whether marking the article provides
sufficient constructive notice to the public. See Maxwell,
86 F.3d at 1111. Because we do not pretend to know all of
the possible types, characteristics, or components of
patented—and yet to be patented—machines and sys-
tems, we cannot construct a bright line rule regarding
what aspects to consider in determining whether marking
the packaging amounts to “substantial compliance.” Id.
One example is a multi-component system that embodies
a patent. In this example, marking the individual compo-
nents of the system may not have the desired notice effect
of providing public notice because such markings may
mislead the public into believing that the marked compo-
nents themselves are patented, as opposed to the entire
multi-component system. As another example, patented
articles may be immediately installed out of the public
view once unpackaged. Again, in this example, the public
may be better notified with marking on the packaging, as
opposed to the article itself.
We use these examples to show that the physical size
of the article is not the only aspect of the “character of the
article” that may be considered. 35 U.S.C. § 287(a).
Because there may be many factors that affect the charac-
ter of a patented article, we hold that, when a patentee
marks the packaging rather than the article, the district
court should evaluate the specific character of the article
at issue. See Sessions, 145 U.S. at 50 (“[S]omething must
be left to the judgment of the patentee, who appears in
this case to have complied with the alternative provision
of the act, in affixing a label to the packages in which the
[patented articles] were shipped and sold.”). This factual
inquiry regarding the character of the patented article,
moreover, may be submitted to a jury, as the district court
did here.
In this case, there was substantial evidence for the
jury to find that GTT substantially complied with § 287 by
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 19
marking the Opticom packaging. Appellants presented
evidence that their patented product was an entire sys-
tem that contained multiple components that were sepa-
rated once unpackaged. J.A. 1980:9–16 (“My
understanding is the thought around the packaging is
that the, again, this is a system. It’s all the components
functioning together. The only time the system is really
together is when it is shipped from the manufacturer. So
that’s the only time that all the components are togeth-
er.”). Appellants’ expert also testified that some of the
components are not in the public view once installed and
that other companies had marked the product in the same
way, that the marking used reflected industry custom.
See J.A. 1980:24–1981:9 (“And then when they are in-
stalled, in many cases, the face selector, for example, is
installed inside of a traffic control cabinet. That cabinet
is locked. It’s out of public view. The mast arm radio that
you saw earlier is mounted on top of a mast arm or a pole
that the signal lights are hanging on. It’s mounted up on
top of that. That’s high up and out of public view. The
vehicle components as well, one component could be in the
trunk of a police car, a bus, for example. The component
could be in an equipment cabinet, again locked, excuse
me, out of the public view.”); J.A. 1979:10–19 (testifying
that 3M marked Opticom the same way before GTT
acquired the technology). Based on these factors, it was
reasonable for the jury to conclude that marking the
packaging of Opticom—the only time when all of the
components that made up the patented system were
together and in full view of the public—adequately served
the purpose of providing constructive notice to the public
that the entire Opticom system was patented.
For the foregoing reasons, we uphold the jury’s find-
ing that GTT complied with the marking statute.
20 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
D. GTT’s Expert’s Testimony
The district court found that it properly allowed tes-
timony by GTT’s damages expert at trial. We review the
admission of expert testimony under the law of the re-
gional circuit—here, the Eighth Circuit. Ericsson, 773
F.3d at 1225. The Eighth Circuit reviews the admission
of expert testimony for abuse of discretion. Bonner v. ISP
Techs., Inc., 259 F.3d 924, 928 (8th Cir. 2001).
On appeal, Appellants argue that the district court
breached its gatekeeping obligation under Daubert v.
Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993),
by failing to exclude GTT’s damages expert’s trial testi-
mony. Appellants contend that GTT’s expert failed to
consider price elasticity in his testimony at trial, provid-
ing no economic evidence to support his theory. That is
not so: GTT’s expert did testify to price inelasticity at
trial. See J.A. 2100, 2102. As GTT points out, moreover,
GTT’s expert’s testimony was based on the analysis in his
expert report, which elaborated on price elasticity. Appel-
lants do not argue that GTT’s expert departed from the
methodology described in his report, or that the method-
ology in his report was improper. Appellants had the
opportunity to cross-examine GTT’s expert and could have
asked him about price elasticity at trial.
We, therefore, affirm the district court’s denial of Ap-
pellants’ motion for JMOL regarding the exclusion of
GTT’s damages expert’s testimony.
E. Personal Liability of Morgan
The district court denied Morgan’s motion for JMOL
that he was not personally liable for infringement. We
review a district court’s denial of JMOL under the law of
the regional circuit. Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1202 (Fed. Cir. 2010). The Eighth
Circuit reviews a district court’s grant or denial of JMOL
de novo, applying the same standard as the district court.
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 21
Synergetics, Inc. v. Hurst, 477 F.3d 949, 956 (8th Cir.
2007). To grant a motion for JMOL, we must find that
“there is no legally sufficient evidentiary basis to support
a jury verdict in the non-moving party’s favor.” Id. (citing
Fed. R. Civ. P. 50(a)(1)).
On appeal, Morgan argues that GTT never alleged
that Morgan was individually liable as an infringer, only
that Morgan was liable as the sole shareholder and direc-
tor of KME. Morgan also contends that, as KME’s corpo-
rate officer, he cannot be found personally liable for
infringement absent a finding that the corporate veil
should be pierced. GTT responds that it explicitly pled
that Morgan was personally liable in its amended com-
plaint and throughout the course of litigation. GTT
insists that there was ample evidence that Morgan per-
sonally induced infringement under § 271(b).
We agree with GTT that it adequately alleged that
Morgan was individually liable as an infringer, starting
with the complaint and continuing through trial. We also
agree with GTT that the jury had a sufficient basis to find
that Morgan personally induced infringement based on
his own actions, and was therefore directly liable. Accord-
ingly, there was no need to pierce the corporate veil to
find Morgan derivatively liable for KME’s infringement.
As we explained in Wordtech Systems, Inc. v. Integrated
Networks Solutions, Inc., 609 F.3d 1308 (Fed. Cir. 2010),
“‘corporate officers who actively assist with their corpora-
tion’s infringement may be personally liable for inducing
infringement regardless of whether the circumstances are
such that a court should disregard the corporate entity
and pierce the corporate veil.’” 609 F.3d at 1316 (quoting
Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d
544, 553 (Fed. Cir. 1990)). In this case, GTT presented
substantial evidence to indicate that Morgan personally
induced customers to perform the patented method in
claim 16 of the ’398 patent. See, e.g., J.A. 1757:20–
1760:20 (testifying that he personally helped cities use the
22 GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN
EMTRAC system and got his “hands dirty every day,
installing, testing, repairing and developing” the
EMTRAC GPS product). The jury reasonably found that
Morgan is personally liable for his own actions that
constituted induced infringement under § 271(b), without
piercing the corporate veil. See Wordtech, 609 F.3d at
1316; see also United States v. Trek Leather, Inc., 767 F.3d
1288, 1299 (Fed. Cir. 2014) (en banc) (“[A] person who
personally commits a wrongful act is not relieved of
liability because the person was acting for another.”).
Furthermore, GTT made it clear that it was only al-
leging induced infringement against Morgan and all of its
evidence of Morgan’s involvement was focused on proving
induced infringement. See J.A. 1015:2–4 (“[We are]
pursuing individual liability for Rodney Morgan only
under an inducement theory under Section 271.”); J.A.
1757:18 (“And, now, we’re talking about indirect in-
fringement.”). Furthermore, Morgan does not challenge
the district court’s jury instruction on appeal. 6
6 In Wordtech, this court stated that “the ‘corporate
veil’ shields a company’s officers from personal liability
for direct infringement that the officers commit in the
name of the corporation, unless the corporation is the
officers’ ‘alter ego.’” 609 F.3d at 1313. We do not believe
this statement represents a departure from the tradition-
al rule that a person is personally liable for his own
tortious actions, even if committed as a corporate officer.
See Trek Leather, 767 F.3d at 1299 (“It is longstanding
agency law that an agent who actually commits a tort is
generally liable for the tort along with the principal, even
though the agent was acting for the principal. That rule
applies, in particular, when a corporate officer is acting
for the corporation.” (citations omitted)). Instead, we
interpret Wordtech as reinforcing the rule that a corpo-
rate officer—or perhaps only a corporate owner, see
GLOBAL TRAFFIC TECHNOLOGIES v. MORGAN 23
Accordingly, we affirm the infringement verdict
against Morgan and in favor of GTT.
III. CONCLUSION
For the foregoing reasons, we affirm the jury’s finding
of infringement of the asserted method claims of the ’398
patent—claims 16 and 17—but reverse the district court’s
imposition of enhanced damages under § 284. We also
affirm the jury’s finding that GTT complied with the
marking statute, the district court’s findings that GTT’s
damages expert’s testimony was properly admitted, and
the infringement verdict against Morgan. We remand for
the district court to enter judgment consistent with this
opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART,
REMANDED
Wordtech, 609 F.3d at 1313 n.2—cannot be found deriva-
tively liable for the corporation’s infringement without
piercing the corporate veil. See, e.g., Manville, 917 F.2d
at 552 (“For Butterworth and DiSimone, officers of Para-
mount, to be personally liable for Paramount’s infringe-
ment under section 271(a), there must be evidence to
justify piercing the corporate veil.” (emphasis added));
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1579 (Fed. Cir. 1986) (“To determine whether
corporate officers are personally liable for the direct
infringement of the corporation under § 271(a) requires
invocation of those general principles relating to piercing
the corporate veil.” (emphasis added)). Because GTT only
argues that Morgan induced infringement in this case,
however, we need not reach this issue.