Holding: A request for remittitur may be preserved by a party that does not provide an express request for a reduction of a specific amount of damages at the district court if enough information was provided to make the opposing party and the district court aware of the reduction of damages that was sought.
Belanger owns US Patent No. 8,602,041 which discloses a spray type car wash system that includes a lighting system to provide a visual cue for centering a vehicle when entering the wash bay. The claims of the ‘041 Patent require a carriage for a translating a spray arm relative to a predefined wash area and that the spray arm is dependingly mounted from the carriage to extend vertically into the wash area. Additionally, the claims require that light sources carried by the spray arm and spray nozzles are at least partially enclosed within an outer cushioning sleeve that encloses a fluid conduit of the spray arm.
Belanger sent a cease-and-desist letter to Wash World accusing Wash World’s Razor EDGE car wash system of infringement of the ‘041 Patent. Wash World sued Belanger seeking a declaratory judgment of noninfringement. The district court decided a claim construction hearing was not necessary for either the terms “outer cushioning sleeve” or predefined wash area.” On summary judgment, Wash World argued that its system lacked an outer cushioning sleeve because the hard plastic cover on the arm of its system did not act as cushioning. Wash World also argued that its spray arm is not translated relative to a predefined wash area since the path of its spray arm is determined based on sonar measurement of the dimensions of the vehicle being washed and the position of the vehicle with respect to the spray arm.
The district court denied Wash World’s motion for summary judgment of noninfringement, and the case went to a jury trial. The jury found the Razor EDGE system to infringe the ‘041 Patent and granted damages of over $10M to Belanger. Wash World moved for judgment as a matter of law, arguing incorrect claim construction on several claim terms and challenging the damages award by alleging that Belanger had failed to prove it was entitled to lost profits based on convoyed sales. The district court denied Wash World’s motion and upheld the damages award.
On appeal, the Federal Circuit held that Wash World failed to preserve its right to challenge the construction of the term “outer cushioning sleeve” since the construction it argued on appeal to the Federal Circuit had not been raised at the district court. A party is not confined to the precise wording of the construction that was argued at the district court, and can offer new arguments to support its claim construction, but cannot add new limitations to its proposed construction on appeal. When there is no indication that the district court was aware of a supposed claim construction dispute, the party is considered to have forfeited that argument. Similarly, the Federal Circuit found that Wash World forfeited its argument regarding the term “predefined wash area.” At the district court, Wash World proposed that the term meant “substantially within a wash area,” but on appeal, Wash World argued that the wash area must be consistent across all vehicles—a new and distinct construction.
Wash World also contested the term “dependingly mounted,” asserting that it required the spray arm to be directly mounted to the carriage. While this issue arose during summary judgment, it was not explicitly addressed as a claim construction matter in the district court. Nonetheless, the Federal Circuit determined that the parties had effectively engaged in claim construction. Therefore, Wash World had not forfeited this argument. However, the Federal Circuit agreed with the district court in finding that the term “dependingly mounted” in the ‘041 Patent did not require direct attachment of the spray arm to the carriage. Even though the specification of the ‘041 Patent only showed embodiments having a direct connection, this does not exclude the claims from covering indirect attachments.
Although Wash World lost its appeals regarding claim construction, the Federal Circuit found in favor of Wash World’s challenge of the lost profits portion of the jury’s damages award. Wash World asked for remittitur of $2.6M of the damages award that was improperly based on lost profits from convoyed sales. Although Wash World did not specify the specific amount for remittitur until its reply brief in support of its post-trial motion for JMOL, Wash World had preserved its remittitur argument since it had previously broadly argued that the damages award included lost profits for convoyed sales before the district court. Typically, a request for a new form of relief in a reply brief is improper, but an elaboration on a request for relief that was present in the opening brief may be sufficient to preserve the issue.
The Federal Circuit also found that exceptional circumstances exist in this case to allow for remittitur even if Wash World had forfeited its request, since the amount of damages based on convoyed sales could be precisely determined and the requirements for obtaining lost profits for convoyed sales were not met. To prove entitlement to lost profits for convoyed sales, a patentee must prove that the unpatented products and the patent product together constitute a functional unit that are analogous to components of a single assembly. Convoyed sales damages are not allowed for items that have no functional relationship to the patent invention and that are only sold with the patented product for convenience or business advantage. The damages award to Belanger included the full cost of an in-bay automatic car wash system that included an unpatented dryer already installed. Belanger did not show any functional relationship between the patented system and the additional dryer included in the damages award.
Federal Circuit Precedential 
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