American Calcar, Inc. v. American Honda Motor Co., Inc. et al.

Case Overview & Background

Parties and their roles. Plaintiff American Calcar, Inc. ("Calcar") was a small California company founded by inventor Michael L. Obradovich (with co-inventors Michael L. Kent and John G. Dinkel). Calcar's business was publishing "Quick Tips" guidebooks — condensed summaries of vehicle owner's manuals — and it developed and patented automotive multimedia/user-interface technology; it did not itself manufacture navigation or infotainment systems, so in this suit it functioned essentially as a non-practicing patent-assertion entity. Defendants were American Honda Motor Co., Inc. (Honda's U.S. sales and marketing arm, based in Torrance, California) and Honda of America Manufacturing, Inc. (its Ohio-based manufacturing subsidiary) (collectively "Honda"), represented on appeal by Fish & Richardson; Calcar was represented by Baker Botts. Calcar originally asserted fifteen patents from its in-vehicle multimedia "family," all sharing a common specification derived from the January 28, 1997 parent application that issued as U.S. Patent No. 6,009,355 (the "'355 patent," titled "Multimedia information and control system for automobiles"). The patents that actually went to trial and final judgment were three continuations: 6,330,497 ("Multimedia technique for operating devices in a vehicle" — claims using an in-car display to show the status of vehicle functions and control the corresponding devices); 6,438,465 ("Technique for effectively searching for information in a vehicle" — claims a system storing displays associated with vehicle aspects, accepting a query about an aspect, and showing the matching display); and 6,542,795 (a companion "Search patent" that the Federal Circuit described as containing the same "aspect of the vehicle" search-and-display limitation). The '355 parent is listed in the case metadata but was not among the patents carried through final judgment; I could not independently confirm its exact disposition on this docket. (Titles per USPTO/PubChem records; claim language and claim grouping per 651 F.3d 1318 and 768 F.3d 1185.)

Accused technology and procedural posture. Calcar alleged that Honda's computerized in-vehicle navigation/multimedia systems — touch-screen interfaces allowing drivers to access vehicle information, search for vehicle-related content, control vehicle functions, and receive alerts with "coping" help (e.g., a "Check Now" screen) — infringed. The case began as American Calcar Inc. v. American Honda Motor Co., No. 6:05-cv-00475, in the Eastern District of Texas (Tyler Division, Judge Leonard Davis), a classic plaintiff-friendly forum of that era. Honda moved to transfer under 28 U.S.C. § 1404(a), and the court transferred the case to the Southern District of California (filed there October 23, 2006 as 3:06-cv-02433-DMS-CAB), assigned to Judge Dana M. Sabraw with Magistrate Judge Cathy Ann Bencivengo — largely because Judge Sabraw was already familiar with the same Calcar patent family from an earlier, settled Calcar v. BMW suit, and because Calcar and much of the relevant evidence were in the San Diego area (transfer order at govinfo; RPX/Unified Patents docket). In April 2008 the court granted summary judgment of noninfringement as to five patents and infringement as to the '759 patent; in July 2008 a jury found the '497 patent invalid and the '465, '795, and '759 patents valid. On November 3, 2008, however, Judge Sabraw granted Honda's inequitable-conduct motion and held the '497, '465, and '795 patents unenforceable (2008 WL 8990987, ECF No. 577, "Calcar I"), denying Calcar's permanent-injunction motion. The Federal Circuit's first appeal — Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318 (Fed. Cir. 2011) ("Calcar II") — affirmed the noninfringement rulings, reversed the '759 validity ruling, and, applying the newly minted en banc Therasense standard, vacated the inequitable-conduct findings and remanded for but-for-materiality and specific-intent findings. On remand, Judge Sabraw again found inequitable conduct (2012 WL 1328640, S.D. Cal. Apr. 17, 2012, "Calcar III"), and the Federal Circuit affirmed in American Calcar, Inc. v. American Honda Motor Co., 768 F.3d 1185 (Fed. Cir. 2014) (panel of Chief Judge Prost, Judge Wallach, and Judge Newman dissenting), with the mandate returning in February 2015.

Why the case is notable. This is one of the leading post-Therasense affirmations of inequitable conduct, and it made several important points: (1) the withheld prior art was the defendant's own product — the 1996 Acura RL ("96RL") navigation system — which Obradovich had personally driven, photographed, and studied while preparing a Quick Tips guide, yet he disclosed only the system's existence to the PTO while withholding the owner's manual, photos, and operational details that covered exactly the claimed features; (2) the court held that "partial disclosure cannot absolve a patentee of intent if the disclosure is intentionally selective," rejecting negligence as a competing inference given the inventor's "ample time and opportunity" for full disclosure; (3) inequitable conduct is an equitable issue tried to the court, so the jury's advisory verdict of validity did not bind the district court, and but-for materiality is assessed under PTO examination standards (broadest reasonable construction, preponderance), meaning a jury validity finding does not preclude a materiality finding; and (4) the remedy was fatal to the campaign — all three patents were rendered unenforceable, ending the infringement case. Judge Newman's dissent argued that a PTO reexamination had found the withheld information non-material and that intent was not the single reasonable inference, highlighting the sharp post-Therasense split on how hard inequitable conduct is to prove. The case also illustrates the mid-2000s pattern of automotive user-interface patent assertions by small, non-practicing plaintiffs against automakers (Calcar had previously sued BMW, which settled pre-trial), and it remains a cautionary reference in later proceedings: the Calcar decisions have been cited in subsequent litigation and PTAB matters involving later Calcar-family patents (e.g., IPR2019-01165, involving U.S. Patent 9,978,107, which used the Calcar Federal Circuit opinions as an exhibit), though this 2006 case itself predates the AIA IPR regime and had no direct IPR linkage.

American Calcar, Inc. v. American Honda Motor Co., Inc. et al.

No. 3:06-cv-02433-DMS (CAB) (S.D. Cal.) — Case status: closed/affirmed (Fed. Cir. mandate 2015)

The case is part of the "'355-family" litigation over vehicle multimedia/interface patents. Although the case metadata lists U.S. Patent No. 6,009,355 (the parent), that patent did not go to trial; the patents litigated through final judgment were 6,330,497 ("Three-Status"), 6,438,465 and 6,542,795 ("Search"), plus 6,587,759 ("Notable Condition") on validity only. The district court held the three trial patents unenforceable for inequitable conduct; the Federal Circuit affirmed after a Therasense remand.

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1. Filing & Initial Pleadings

• 2006-10-23 — Complaint filed in the Southern District of California, assigned to Judge Dana M. Sabraw (case No. 3:06-cv-02433-DMS; magistrate judge Cathy Ann Bencivengo for pretrial matters). (RPX Empower docket summary; court filings bear the "DMS (CAB)" caption.) Calcar asserted 15 patents against American Honda Motor Co. and Honda of America Manufacturing, Inc. relating to vehicle computer systems. (Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1323 (Fed. Cir. 2011) ("Calcar II").)
• 2007 — Honda answered and asserted defenses including non-infringement, invalidity, and inequitable conduct; an amended complaint was met by Honda's answer to amended complaint and counterclaim (docket entry 87; Calcar's reply to that answer/counterclaim appears on the docket). (Unified Patents docket listing.)
• Note on venue: One secondary source states the case was "transferred to the district court ... from the Eastern District of Texas"; I could not verify that transfer from the docket sources I located, and the RPX docket lists the case as filed 2006-10-23 in S.D. Cal. Treat the E.D. Tex. transfer claim as unverified. (Compare JPTOs case summary vs. RPX Empower.)

2. Pre-Trial Motions of Substance

• 2007-07-10 — Summary judgment of noninfringement of the '231 "Radio" patent, granted for Honda (Dkt. No. 74, "Radio SJ Op."). (Cited in Calcar II, 651 F.3d at 1323.)
• 2007-09-24 — Claim construction (Markman) order issued (following hearings on 2007-09-10 and 2007-09-11). The court construed disputed terms across the '355 family, generally adopting plain/ordinary meaning and rejecting Honda's narrower constructions — e.g., "notable condition" was not limited to an "urgent or emergency occurrence" because prosecution history showed the patentee had broadened the claim from "emergency" to "notable." (Am. Calcar v. Am. Honda, Markman Order, S.D. Cal. Sept. 24, 2007, available via IP Mall.)
• 2008-04-04 — Summary judgment of noninfringement of the '928 and '794 "Service Provider" patents (Dkt. No. 314, "Service Provider SJ Op."). (Calcar II, 651 F.3d at 1323.)
• 2008-04-24 — Summary judgment of noninfringement of the '485 and '964 "Car-Mail" patents (Dkt. No. 333, "Car-Mail SJ Op."). (Calcar II, 651 F.3d at 1323.)
• The court also granted summary judgment of infringement of the '759 "Notable Condition" patent in Calcar's favor (subject to the jury's later validity determination). (Calcar II, 651 F.3d at 1323.)
• Motion hearings on the SJ and other pretrial motions occurred on 2007-06-22, 2008-02-29, 2008-03-14, and 2008-04-03 (transcript docket entries). No motion to dismiss, transfer, or stay pending IPR is reflected in the sources I reviewed (the patents are pre-AIA, so IPR was never available — see § 8).

3. Claim Construction (Markman) Outcomes

• 2007-09-24 order (Judge Sabraw): For the '795 patent, terms "request" and "selecting, based on the user description" were given plain meaning, with the court noting the "request" must include "a user description of the aspect of the vehicle." For the '961 patent (a related family member), "notable condition," "output subsystem," "processor," "option," and related phrases were construed — with the court rejecting Honda's proposed emergency-only limitation.
• On appeal (2011): The Federal Circuit affirmed the constructions underlying the noninfringement summary judgments, including a construction limited to specification examples where that limitation was emphasized as the core of the invention, and affirmed SJ of noninfringement under the doctrine of equivalents where Calcar offered only a broad inventor declaration without limitation-by-limitation particularized testimony. (Calcar II, 651 F.3d at 1336–39.)

4. Discovery Milestones (Strategically Significant)

• Obradovich deposition (2007): Inventor/Calcar founder Michael Obradovich could not recall at deposition whether he had "operated" the 1996 Acura RL ("96RL") navigation system; at trial in 2008 he said he thought he had "played with" it. This inconsistency became a centerpiece of Honda's inequitable-conduct case. (Cantor Colburn, Proving Inequitable Conduct under Therasense Standard (2015).)
• Documents/photos in Calcar's possession: Discovery revealed that Calcar had prepared a "Quick Tips" guide for the 96RL, took photographs of the navigation system and owner's manual, and had those photos in a filing cabinet — while Calcar's president disclaimed knowledge of them until they were found. The district court found this testimony "incredible," a finding the Federal Circuit later deferred to. (Id.; 768 F.3d at 1193–95.)
• Prosecution file ("waves" of information): Evidence that Obradovich fed his patent attorney "waves" of information that omitted the 96RL operational details, the manual, and the photos — details the district court found were precisely the claimed features (status display for '497; search for '465/'795). (Faegre Drinker, Practitioner Guilty of Inequitable Conduct (2014-12-11).)
• Pre-trial practice included an in limine hearing on 2008-06-06 and a status conference on 2008-06-12 (transcript docket entries).

5. Trial, Verdict & Post-Trial Motions

• 2008-06-16 to 2008-07-17 — Jury trial before Judge Sabraw (trial days ran 6/16–6/19, 6/23–6/26, 6/30–7/1, 7/10, 7/15, and verdict 7/17 per transcript docket entries). The verdict form was filed 2008-07-17 (Dkt. No. 538).
• Verdict: The jury found the asserted claims of the '497 patent invalid (anticipated by the 96RL system) and the asserted claims of the '465, '795, and '759 patents not invalid; it awarded Calcar damages on the patents found infringed and not invalid. The jury also rendered an advisory finding of no inequitable conduct as to the '497/'465/'795 patents — which the court was not bound to follow because inequitable conduct is equitable. (Calcar II, 651 F.3d at 1323–24; Finnegan, Last Month at the Federal Circuit (July 2011).) I did not locate the exact damages figure in my sources.
• 2008-11-03 — District court granted Honda's inequitable conduct motion and held the '497, '465, and '795 patents unenforceable (Dkt. No. 577; Am. Calcar v. Am. Honda, 2008 WL 8990987 ("Calcar I")). The court also denied Calcar's motion for a permanent injunction. (Calcar II, 651 F.3d at 1323; Unified Patents docket.)
• 2008-12-22 — Honda filed its renewed JMOL/new-trial motion on invalidity of the '759 patent (Dkt. No. 591, briefed and heard 2009-01-23).
• 2009-03-10 (Dkt. No. 613), opinion 2009-11-17 — District court denied Honda's renewed JMOL/new-trial motion on '759 validity and entered judgment for Calcar on that patent. (Calcar II, 651 F.3d at 1323 & n.4.)
• Final judgment entered on the docket (JUDGMENT re Dkts. 586, 587, 588, 616, 617) — this was the judgment appealed in the first appeal.
• § 285 fees: After the 2014 affirmance, Honda pursued an application for fees and costs under 35 U.S.C. § 285; the docket shows a joint motion to extend deadlines on that application. I could not confirm from my sources the ultimate fee award (if any) — flag as unverified.

6. Appeals & Final Disposition

• First appeal (Nos. 09-1503, -1567): Calcar appealed the inequitable conduct finding and the noninfringement SJs; Honda cross-appealed the denial of JMOL on '759 validity. The notice of appeal (Dkt. No. 627) references trial transcripts through 2008-10-10.
  • 2011-06-27 — Federal Circuit (Lourie, Bryson, Gajarsa) in Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318 ("Calcar II"): affirmed the SJ of noninfringement (Car-Mail, Service Provider, Radio patents); reversed denial of JMOL and held the '759 patent invalid (anticipated by Japanese reference Nihei); vacated the inequitable-conduct ruling and remanded for application of the new en banc Therasense standard — affirming but-for materiality of the withheld 96RL information as to '497, but requiring the district court to redo materiality for '465/'795 and to make specific intent findings for all three patents.
• Remand (Calcar III): On remand, after briefing and a March 2012 hearing, the district court on 2012-04-17 again found inequitable conduct under Therasense — "but for" the withheld 96RL information the PTO would not have granted '465/'795, and the only reasonable inference was that Obradovich knew the information was material and deliberately withheld it — and again held all three patents unenforceable. (Am. Calcar v. Am. Honda, 2012 WL 1328640 (S.D. Cal. Apr. 17, 2012).)
• Second appeal (No. 2013-1061): Notice of appeal filed 2012-11-08 (Dkt. No. 687); docketed in the Federal Circuit as 13-1061.
  • 2014-09-26 — Federal Circuit (Prost, C.J.; Wallach; Newman, dissenting) in Am. Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185 ("Calcar IV") affirmed. The panel held the district court did not clearly err in finding but-for materiality (measured under the PTO's preponderance/BRI standard, so the jury's validity verdicts did not control) and that intent to deceive was the single reasonable inference; it rejected Calcar's Seventh Amendment argument (the jury's inequitable-conduct finding was advisory only). Judge Newman dissented, noting the PTO's reexamination had found the withheld information non-material and questioning the intent inference.
• 2015-02-13 — Appeal Mandate hearing in the district court; the mandate from the Federal Circuit (2013-1061) was filed, ending the substantive litigation. (Unified Patents docket.) Final disposition: judgment of unenforceability affirmed; case closed.

7. Settlement / Judgment Summary

No settlement — the case was decided on the merits. Final outcome: (a) the '497, '465, and '795 patents held unenforceable for inequitable conduct; (b) the '231, '485, '964, '928, and '794 patents disposed of by summary judgment of noninfringement; (c) the '759 patent held invalid on appeal (reversing the district court's JMOL denial). Honda's § 285 fee application followed the 2014 affirmance; its disposition is unconfirmed in my sources.

8. Parallel PTAB / USPTO Proceedings

• No IPR or PGR was available or filed on the '497, '465, or '795 patents: they derive from an application filed 1997-01-28 (the '355 parent), well before the AIA's post-grant review provisions (effective 2012–2013). I found no PTAB IPR/PGR involving these three patents.
• Ex parte reexamination: The record reflects PTO reexamination of at least the '497 patent, in which the PTO confirmed patentability over the withheld 96RL art — a point Judge Newman relied on in her 2014 dissent, and which the majority held did not defeat but-for materiality because the district court must apply the PTO's examination standards (preponderance/BRI), not the jury's clear-and-convincing standard. (768 F.3d at 1190–91; Foley & Lardner, Federal Circuit Upholds Inequitable Conduct Post-Therasense (2014-10-07).)
• Unrelated later PTAB matter: IPR2019-01165 (involving U.S. Patent 9,978,107 and a different defendant) cites the Calcar opinions as exhibits; it is not a parallel proceeding on the asserted patents here.

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Key authorities

• Am. Calcar, Inc. v. Am. Honda Motor Co., No. 06-cv-02433 (S.D. Cal. Nov. 3, 2008), ECF No. 577 ("Calcar I"), 2008 WL 8990987.
• Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318 (Fed. Cir. 2011) ("Calcar II").
• Am. Calcar, Inc. v. Am. Honda Motor Co., No. 06-cv-02433, 2012 WL 1328640 (S.D. Cal. Apr. 17, 2012) ("Calcar III").
• Am. Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185 (Fed. Cir. 2014) ("Calcar IV").

Caveats: I could not confirm from available sources (a) the exact damages verdict amount, (b) the outcome of Honda's § 285 fee application, (c) the E.D. Tex. transfer claim, or (d) detailed discovery-order milestones beyond those described. Docket-entry numbers (74, 314, 333, 538, 577, 587–588, 613, 616–617, 627, 687) are as cited in the Federal Circuit opinions and public docket aggregators (RPX, Unified Patents, Docket Alarm).

Based on the available records, here is what can be confirmed about plaintiff American Calcar, Inc.'s counsel in American Calcar, Inc. v. American Honda Motor Co., Inc. et al., No. 3:06-cv-02433 (S.D. Cal.):

Confirmed counsel for plaintiff American Calcar, Inc.

Related-case appearances (flag — not the S.D. Cal. docket itself)

In the parallel/companion E.D. Tex. action (before Judge Leonard Davis, Tyler Division), the docket shows pro hac vice applications approved 8/15/06 for Calcar by: Jennifer Cozeolino, Jeremy Merling, Edward R. Tempesta, Robert L. Maier, and Gary M. Butter, plus notices of appearance by John Frederick Bufe and Allen Franklin Gardner for Calcar. Jeremy Merling, Edward R. Tempesta, John Frederick Bufe, and Allen Franklin Gardner were also Baker Botts-affiliated; I could not confirm from my sources that they appeared of record in the S.D. Cal. case (3:06-cv-02433) itself, so treat them as related-action counsel only.

Gaps / caveats

• Counsel listing for the 2014 Federal Circuit appeal (No. 2013-1061, 768 F.3d 1185) was not captured in my searches; the appellate team may have differed from the 2011 team. The 2011 opinion's counsel block (651 F.3d 1318) is the best-verified source: Butter argued, with Ragusa, Williams, and Cozeolino on the brief.
• Richard Clegg's firm is not identified in the snippets I retrieved; I did not find a firm name or office for him and did not want to guess. If you need his firm, a PACER check of the S.D. Cal. docket's attorney appearances (or the signature block on Doc. 591) would confirm it.
• No in-house counsel for Calcar was identified in any source; Calcar is a small company (its founder/inventor Michael Obradovich and president were witnesses, not counsel). The prosecution attorney Alex Yip (who filed the '355-family applications) is not litigation counsel of record.
• Docket filings in this case are not sealed per the records reviewed, but I did not access PACER directly; the above is drawn from the Federal Circuit opinions (651 F.3d 1318; 768 F.3d 1185), the Unified Patents/RPX docket summaries, and the related E.D. Tex. docket.

Counsel of Record for Defendants (American Honda Motor Co., Inc. and Honda of America Manufacturing, Inc.)

The defendants were represented throughout the district-court litigation and the two Federal Circuit appeals by Fish & Richardson P.C. (with Baker Botts representing plaintiff American Calcar). The most authoritative public source for the lineup is the counsel listing in the Federal Circuit opinion in the first appeal, Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1340 (Fed. Cir. 2011) ("Calcar II"), which lists the Honda team; the 2014 appeal, Am. Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185 (Fed. Cir. 2014), confirms Robert E. Hillman continued as Honda's lead appellate counsel. The S.D. Cal. docket entries (viewed via the Unified Patents/PACER mirror) show Michael M. Rosen as the ECF filing attorney for Honda's district-court filings, indicating he served as the San Diego local/trial counsel.

Lead / appellate counsel

Robert E. Hillman — Lead counsel (argued) for defendants

• Firm/Office: Fish & Richardson P.C., Boston, MA
• Note: Argued for Honda in both Federal Circuit appeals in this case (651 F.3d 1318, 1340 (Fed. Cir. 2011); listed as Honda's attorney in the 2014 appeal, 768 F.3d 1185, per the contemporaneous Law360/VitalLaw case report). A veteran Fish & Richardson IP litigator known for complex patent defense work.

Trial / local counsel (S.D. Cal.)

Michael M. Rosen — Local/trial counsel; ECF filing attorney for defendants

• Firm/Office: Fish & Richardson P.C., 12390 El Camino Real, San Diego, CA 92130 (principal in the San Diego office)
• Note: Appears throughout the district-court docket as the filing attorney on Honda's substantive filings (e.g., trial briefs, motions in limine; docket entries bearing "(Rosen, Michael) (lao)" in Case No. 3:06-cv-02433), and was listed as of counsel on the Federal Circuit briefing in Calcar II (651 F.3d at 1340). San Diego-based IP/commercial litigator; Harvard Law J.D. 2003, admitted S.D. Cal. and the Federal Circuit (Martindale profile).

Supporting / of-counsel attorneys on the Honda team (per Calcar II briefs)

These attorneys were listed on the defendants' Federal Circuit briefs in Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1340 (Fed. Cir. 2011), and would have been part of the defense team for the underlying district-court litigation:

• John T. Johnson — Fish & Richardson P.C., New York, NY — on the brief in Calcar II; his pro hac vice application for Honda was approved in the related 2006 E.D. Tex. proceedings (per the E.D. Tex. docket), showing he was part of Honda's national defense team.
• Michael F. Autuoro — Fish & Richardson P.C., New York, NY — of counsel on the Calcar II appeal.
• Ahmed J. Davis — Fish & Richardson P.C., Washington, DC — of counsel on the Calcar II appeal.
• John A. Dragseth — Fish & Richardson P.C., Minneapolis, MN — of counsel on the Calcar II appeal.
• Frank Porcelli — Fish & Richardson P.C., Boston, MA — of counsel on the Calcar II appeal.

Caveats

• District-court appearance list: I was unable to pull the full PACER attorney-appearance report for 3:06-cv-02433 itself (PACER requires an account; the public mirrors show only the filing-attorney initials). The roster above is assembled from the Federal Circuit briefs, the S.D. Cal. docket's filing entries, and firm/martindale records. The definitive list of every attorney who entered a formal appearance for Honda in the district court would be the docket's "attorneys" tab in PACER.
• In-house counsel: No Honda in-house attorney is identified as counsel of record in the public sources reviewed; the defense appears to have been handled wholly by outside counsel at Fish & Richardson.
• Role designations: "Lead counsel" is confirmed only at the appellate level (Hillman argued). At the district-court level, Rosen's role as local/ECF counsel is well supported by the docket, but the trial-lead designation is not publicly labeled as such.
• No sealing issue: The filings are not sealed; this was a fully litigated, publicly docketed case that ended with the Federal Circuit affirming the district court's unenforceability judgment (768 F.3d 1185), after which the mandate issued and the case closed (docket entry, Feb. 13, 2015, appeal mandate hearing before Judge Dana M. Sabraw).