NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

FLEET ENGINEERS, INC.,

Plaintiff-Cross-Appellant

v.

MUDGUARD TECHNOLOGIES, LLC,

Defendant

TARUN SURTI,

Defendant-Appellant

______________________ 

2022-2001, 2022-2076

______________________ 

Appeals from the United States District Court for the 

Western District of Michigan in No. 1:12-cv-01143-PLM, 

Judge Paul L. Maloney.

______________________ 

Decided: August 15, 2023

______________________ 

GEORGE THOMAS WILLIAMS, III, McGarry Bair PC, 

Grand Rapids, MI, for plaintiff-cross-appellant. 

 TARUN SURTI, Brentwood, TN, pro se. 

 ______________________ 

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2 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

Before MOORE, Chief Judge, LOURIE and STOLL, Circuit 

Judges.

PER CURIAM. 

Tarun Surti appeals from decisions of the United States 

District Court for the Western District of Michigan in 

which he was awarded damages for infringement of U.S. 

Patent RE44,755 (the “’755 patent”)1 by Fleet Engineers, 

Inc., but was denied other claimed relief. See Fleet Eng’rs, 

Inc. v. Mudguard Techs., LLC, No. 1:12-cv-01143, 2021 WL 

9057803 (W.D. Mich. Oct. 19, 2021). 

In particular, Surti appeals from (1) a decision excluding certain evidence from trial, (2) an order narrowing the 

issues of infringement to a subset of the asserted claims, 

(3) grants of judgment as a matter of law (“JMOL”) in favor 

of Fleet on claims of induced and contributory infringement, (4) portions of the jury verdict on infringement and 

damages, (5) failure to award attorney fees, and (6) failure 

to grant a permanent injunction.

Fleet cross-appeals, asserting that (1) the district court 

erred in not additionally granting JMOL in its favor on 

Surti’s claims of direct infringement and that (2) the jury 

verdict on direct infringement was not supported by substantial evidence.

1 The ’755 patent is a reissue of U.S. Patent 

8,146,949 (the “’949 patent”), the original patent of interest 

in this case. The asserted claims of the ’949 patent are 

identical to corresponding claims in the reissued ’755 patent. The original filings by the parties in this litigation 

predated the reissue, and thus some of the underlying record and arguments refer to the ’949 patent as the asserted 

patent. We refer to the asserted patent using the reissue 

number. 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 3

For the following reasons, we affirm. 

BACKGROUND

Surti and Fleet have been locked in acrimonious litigation over mudflaps and Surti’s ’755 patent for over a decade. 

The ’755 patent relates to a “mud flap for preventing 

spray from the wheel of a vehicle on a wet roadway from 

impairing the vision of drivers of other vehicles.” ’755 patent, col. 1 ll. 12−15. Traditional mudflaps are often constructed from solid panels of rubber material. Id. col. 1 ll. 

21−27. As a vehicle moves, air resistance can cause the 

mudflap to lift or “sail,” allowing a spray of water and debris to reduce the visibility of the driver behind the vehicle

equipped with the mudflap. Id. col. 1 ll. 16−27. The mudflaps described in the ’755 patent purport to solve that

problem using a series of vertical slots or channels through 

which air can flow. The invention thus purports to “separate[] air, water and road debris thrown up by a tire or 

wheel and direct[] the water and debris to the ground while 

allowing the air to pass through the air outlets.” Id. col. 4 

ll. 19−22. Claim 1 of the ’755 patent recites: 

1. A mudflap for preventing spray from a 

wheel of a vehicle on a wet roadway from impairing the vision of drivers of other vehicles, 

comprising a vertically extending flap which 

is mounted to the rear of the wheel with a 

front side of the flap facing the wheel and a 

rear side facing away from the wheel, a plurality of laterally spaced, vertically extending 

vanes defining a plurality of vertically extending channels on the front side of the flap for 

directing water and debris from the wheel in 

a downward direction toward the ground and 

not to the rear or sides of the flap, and vertically extending slotted openings in the channels of a size permitting air to pass through 

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4 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

the openings to the rear of the flap and preventing water and debris from doing so.

Id. col. 4. ll. 40−52. 

This case is now on its second appeal. Our decision in 

the first appeal, which provides a more fulsome summary 

of the facts and procedural history through 2019, set forth 

how Fleet, a manufacturer of products for the trucking industry, brought an action seeking a declaratory judgment 

that its mudflaps do not infringe the ’755 patent, and that 

the patent was invalid. See Fleet Eng’rs, Inc. v. Mudguard 

Techs., LLC, 761 F. App’x 989 (Fed. Cir. 2019) (“Fleet I”). 

Surti counterclaimed, asserting claims of patent infringement, breach of contract, and misappropriation of trade secrets. After the parties filed cross-motions for summary 

judgment, the district court granted Fleet’s motion of noninfringement as well as finding it not liable for an alleged 

breach of contract and misappropriation of trade secrets. 

J.A. 422−46. Surti appealed and we held that unresolved 

factual issues precluded summary judgment on the issue of 

direct infringement. Fleet I, 761 F. App’x at 992−94. We 

also affirmed the court’s finding that Surti failed to present 

evidence of a contract between Surti and Fleet, and thus

upheld summary judgment on the contract-based claims. 

Id. at 994. Finally, we held that the district court did not 

err in granting summary judgment in favor of Fleet on the

claim for misappropriation of trade secrets. Id. at 994−95.

On remand, a jury evaluated infringement of claims 1, 

2, 5, 8, 9, and 13 of the ’755 patent by two subsets of Fleet 

products, referred to as the Group A and Group B products. 

See J.A. 53−54. Both product groups, shown below, include 

openings that are angled at approximately 45 degrees, separated into four quadrants. The Group A products further 

contain vertical ridges and openings at or near the bottom 

of the mudflap, while the products in Group B do not.

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 5

J.A. 53.

At the close of evidence, but before the verdict, Fleet 

moved for JMOL on Surti’s claims of direct, induced, contributory, and willful infringement. J.A. 942−46. The district court granted Fleet’s motion as to induced and 

contributory infringement, holding that there was no evidence in the record to support either theory of liability, but 

declined to enter JMOL as to direct infringement and willfulness. J.A. 1091−92. The jury ultimately found that although Fleet’s Group B products did not infringe the 

asserted claims of the ’755 patent, the Group A products 

did. J.A. 54. That infringement, however, was not found 

to be willful. Id., 56. The jury declined to award lost profits

and instead awarded damages based on 4% of the gross 

sales of the Group A products, amounting to an award of 

$228,000. J.A. 1, 57. Surti appealed. Fleet cross-appealed. 

We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

Surti raises multiple challenges on appeal. He first contends that the decision excluding certain evidence from 

trial constituted an abuse of discretion. In addition, he

challenges an order narrowing the infringement issues to 

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6 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

a subset of claims in the ’755 patent. He further asserts 

that JMOL, granted in Fleet’s favor on claims of induced 

and contributory infringement, was in error. He also contends that portions of the jury verdict on infringement and 

damages were unsupported by substantial evidence. Finally, he challenges the denial of attorney fees as well as 

the failure to enter a permanent injunction. Fleet’s crossappeal asserts that the district court erred in not additionally granting JMOL in its favor on Surti’s claims of direct

infringement and that the jury verdict on direct infringement was not supported by substantial evidence. We address each argument in turn.

I 

We turn first to Surti’s assertion that the district court’s 

exclusion of witness testimony and evidence was an abuse 

of discretion. According to Surti, the court “blocked [evidence pertaining to] the history of the case prior to the litigation date,” including testimony from Surti himself, as 

well as from a mold manufacturer, an injection molder, and 

an engineer who designed original part drawings. See Appellant’s Br. ¶ 4; see also J.A. 709−11 (Surti’s evidentiary 

motion), J.A. 5−8 (order denying Surti’s evidentiary motion). 

We review evidentiary rulings under the law of the regional circuit, here the Sixth Circuit. See SSL Servs., LLC 

v. Citrix Sys., Inc., 769 F.3d 1073, 1082 (Fed. Cir. 2014). 

Under Sixth Circuit law, evidentiary decisions are reviewed for abuse of discretion and should only be reversed 

if they have caused more than harmless error. McCombs

v. Meijer, Inc., 395 F.3d 346, 358 (6th Cir. 2005). “An abuse 

of discretion occurs if the district court relies on clearly erroneous findings of fact, applies the wrong legal standard, 

misapplies the correct legal standard when reaching a conclusion, or makes a clear error of judgment.” Miller v. 

Countrywide Bank, N.A., 708 F.3d 704, 707 (6th Cir. 2013)

(internal quotation marks omitted). 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 7

Under that standard, Surti’s arguments can best be understood as asserting that the district court made a clear 

error of judgment in excluding evidence. According to 

Surti, the excluded testimony and evidence was “very important for the Jury to know.” Appellant’s Br. ¶ 4. Abuse 

of discretion, however, is a highly deferential standard. 

And a party’s opinion that excluded evidence was relevant, 

or even important, is insufficient to overturn a court’s decision excluding that evidence. As the court explained, the

identities of the witnesses that Surti wished to testify on 

his behalf were not disclosed until years after close of discovery and his additional excluded evidence did not appear 

to be relevant to the asserted claims of patent infringement. See J.A. 6−8. We agree and see no clear error of 

judgment. We therefore conclude that it was not an abuse 

of discretion for the court to exclude those witnesses and 

that evidence from the record.

II

Surti next asserts that the district court erred in narrowing the infringement inquiry to only six of the ’755 patent’s 25 claims. In particular, according to Surti, the court 

“totally ignored” his “pleading for his ’755 claim no. 19 that 

was properly filed and timely identified.” Appellant’s Br.

¶ 5. Fleet does not substantively address that issue in its 

response. 

It is clear, however, that the district court did not ignore 

claim 19. Rather, it thoroughly evaluated the filings to 

identify the asserted claims after we suggested it do so in 

Fleet I. See 761 F. App’x at 993−94; J.A. 659−62. Moreover, 

although Surti refers to his assertion of claim 19 as “timely 

identified,” that cannot be the case, because, as discussed 

below, claim 19 did not exist before the deadlines to amend 

the pleadings or the chart of asserted claims passed. 

Surti’s allegation amounts to a suggestion that the district court abused its discretion in declining to amend the

scheduling order to allow for the assertion of claim 19. But 

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8 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

a scheduling order may only be modified “for good cause

and with the judge’s consent.” Fed. R. Civ. P. 16(b)(4). 

“The primary measure of Rule 16’s good cause standard is 

the moving party’s diligence in attempting to meet the case 

management order’s requirements.” Inge v. Rock Fin. 

Corp., 281 F.3d 613, 625 (6th Cir. 2002) (internal quotation 

marks omitted). “We review for abuse of discretion a district court’s decision to amend its scheduling order to allow 

a late filing.” Andretti v. Borla Performance Indus., Inc., 

426 F.3d 824, 830 (6th Cir. 2005).

At the outset of this litigation, the district court issued 

a Case Management Order (“CMO”) setting a March 1, 

2013 deadline for motions to amend the pleadings. See District Court Docket No. 13 at 1. The CMO also required 

Surti to “file and serve a disclosure, listing each claim of 

the patents-in-suit that [he] contends have been infringed.” 

Id. ¶ 3.a. Surti subsequently timely filed a disclosure asserting that Fleet “infringed claims 1, 2, 5, 8, 9, and 13” of 

the ’949 patent. See District Court Docket No. 20 at 1. The 

CMO further required the parties to provide a “comprehensive chart” denoting “all claims of each patent-in-suit that 

[Surti] will contend at trial has been infringed.” CMO ¶ 3.c; 

see also District Court Docket No. 27 at 2 (confirming 

Fleet’s understanding that Surti asserted infringement of

’949 patent claims 1, 2, 5, 8, 9, and 13). By mid-2013, the 

deadlines to amend the pleadings and the CMO, and the 

deadline to submit the chart of asserted claims had all 

passed, although the CMO allowed the parties to further 

“amend or modify the disclosures in the chart for good 

cause shown.” CMO ¶ 3.c.

Thereafter, on February 11, 2014, the ’949 patent reissued as the ’755 patent. J.A. 104. Claims 1, 2, 5, 8, 9, and 

13 were not amended during reissue and remained unchanged, although the ’755 patent further contains claims 

not originally present in the ’949 patent, including claim 

19. Compare J.A. 102−03 (’949 patent claims 1−17) with

J.A. 112−13 (’755 patent claims 1−25). Fleet subsequently 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 9

moved to amend its complaint to reference the reissued patent, and the district court found that good cause existed to 

do so. See District Court Docket No. 98 at 1−3. As the court 

explained, “[a]llowing Fleet Engineers to amend the complaint would not cause [Surti] prejudice as the claims in the 

amended complaint are identical to the claims in the original complaint, albeit against the reissue patent instead of 

the original patent.” Id. at 3. 

At no time did either party move to update the CMO or 

the chart of asserted claims to include additional claims 

added in the reissue patent, nor was there any attempt at 

showing good cause to do so. However, in filings made in

September and October 2015, Surti asserted that Fleet had 

also infringed claim 19 of the ’755 patent. J.A. 1321; see

also District Court Docket No. 199 at 14 (referring to “asserted claims 1 and 19”); Fleet I, 761 F. App’x at 993−94 

(noting the apparent confusion that these filings raised as 

to which claims were being asserted). The district court 

subsequently issued an order clarifying that claims 1, 2, 5, 

8, 9, and 13 were the only properly asserted claims. J.A. 

476. As the court explained, “Surti’s attempt to bring 

[c]laim 19 into the dispute through his motion for summary 

judgment and his response to Fleet Engineers’ motion is 

improper.” Id.; see also id. at 661−62.

We agree. The CMO clearly required Surti to have 

moved for an amendment to add claim 19 to the dispute, 

and to support that motion with a showing of good cause. 

He did not do so. The district court therefore did not abuse 

its discretion in determining that claims 1, 2, 5, 8, 9, and 

13 were the only claims in dispute. 

III

We next turn to the district court’s decisions regarding 

granting JMOL. Surti asserts that JMOL, entered in 

Fleet’s favor on claims of induced and contributory infringement (see J.A. 9, 1091), was granted in error. Fleet, 

in its cross-appeal, asserts that the court erred in not 

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10 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

further granting JMOL to Fleet on Surti’s claims of direct

infringement.

We review decisions on motions for JMOL under the 

law of the regional circuit, here the Sixth Circuit. See SSL 

Servs., 769 F.3d at 1082. Under Sixth Circuit law, a district court’s decision to grant JMOL is reviewed de novo. 

Hanover Am. Ins. Co. v. Tattooed Millionaire Entm’t, LLC, 

974 F.3d 767, 779 (6th Cir. 2020). “Judgment as a matter 

of law may only be granted if, when viewing the evidence 

in a light most favorable to the non-moving party, giving 

that party the benefit of all reasonable inferences, there is 

no genuine issue of material fact for the jury, and reasonable minds could come to but one conclusion in favor of the 

moving party.” Barnes v. City of Cincinnati, 401 F.3d 729, 

736 (6th Cir. 2005), cert. denied, 546 U.S. 1003 (2005).

According to Surti, Fleet “engaged in an ‘induced infringement’ when they co[n]tracted the manufacturing of” 

the Group A and B mudflaps “to the [m]old maker, Viking 

Tool & Engineering, and injection molder, H S Die & Engineering.” Appellant’s Br. ¶ 3; see also id. ¶ 4 (asserting 

that the district court “failed to recognize that [Fleet] engaged in ‘induced infringement’ by engaging [a] third party 

to manufacture the infringing mud flap”).

A claim of induced infringement requires a showing not 

only of direct infringement, but further “that the alleged 

infringer knowingly induced infringement and possessed 

specific intent to encourage another’s infringement.” Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., 

909 F.3d 398, 407 (Fed. Cir. 2018) (citation omitted); see 

also C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 

911 F.2d 670, 675 (Fed. Cir. 1990) (defining induced infringement under 35 U.S.C. § 271(b) as “actively and knowingly aiding and abetting another’s direct infringement”).

As the district court earlier found when it granted

JMOL with respect to induced infringement, there was no 

evidence in the record that Fleet knowingly induced a third 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 11

party to infringe the ’755 patent with a specific intent to 

encourage another’s infringement. See J.A. 9, 1091. Surti 

has not pointed to any evidence in the record that the district court overlooked or misinterpreted in coming to that 

determination. Without a genuine issue of material fact on 

that matter, we conclude that the court did not err in granting JMOL in Fleet’s favor as to induced infringement.

A claim of contributory infringement requires a showing of a sale, or an offer to sell, “a component of a patented 

machine, manufacture, combination or composition, or a 

material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing 

the same to be especially made or especially adapted for 

use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial 

noninfringing use.” 35 U.S.C. § 271(c); Nalco Co. v. ChemMod, LLC, 883 F.3d 1337, 1356 (Fed. Cir. 2018).

Just as the district court found in granting JMOL with 

respect to induced infringement, the court further found 

that Surti introduced no evidence that Fleet had sold a 

component of a patented combination such that it could be 

held liable for contributory infringement. See J.A. 9, 1091. 

Surti has not pointed to any evidence in the record that the 

district court overlooked or misinterpreted in coming to 

that determination. Moreover, there is no evidence in the 

record supporting a conclusion that either the Group A or 

Group B mudflaps were components or material parts of a 

patented whole as required under § 271(c). Without a genuine issue of material fact, we conclude that the court did 

not err in granting JMOL in Fleet’s favor as to contributory 

infringement.

In its cross-appeal, Fleet asserts that the district court 

erred in not granting JMOL in its favor on Surti’s claims of 

direct infringement. In particular, Fleet asserts that neither its Group A nor its Group B products have “a plurality 

of laterally spaced, vertically extending vanes defining a 

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12 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

plurality of vertically extending channels on the front side 

of the flap” as required by the claims of the ’755 patent. See

Appellee’s Br. 70−79; J.A. 112−13 (providing the asserted 

claims). Fleet also argues that, although its Group A products have vertical slots at the bottom edge of the mudflap, 

the “slots do not define vertically extending channels to 

route water down the face of the mudflap and off the bottom of the mudflap” and that “[n]one of the slotted openings 

(vertical or otherwise) prevent water and debris from passing through them.” Appellee’s Br. at 75–77. 

Fleet asserted the same arguments in its original motion for summary judgment, and the district court did originally grant Fleet’s motion as to direct infringement. See 

J.A. 438−45. However, we overturned that grant of summary judgment in Fleet I. As we explained then, a genuine 

issue of material fact existed as to whether or not Fleet’s 

products comprise the claimed vanes, Fleet I, 761 F. App’x 

at 992, as well as whether or not Fleet’s products meet the 

“vertically extending” limitations, id. at 993. Fleet has provided no argument or evidence to suggest that these genuine issues of material fact did not still exist when it moved 

for JMOL. Instead, as it did in its motion for JMOL, Fleet 

argues on appeal that “there was substantial evidence introduced at trial” that its products do “not block water impinging upon [the] face” of the mudflap, but rather allow 

water and debris “to pass through the openings.” Appellee’s Br. at 76. Yet as the district court correctly identified 

when it denied Fleet’s JMOL motion, the claims do not require that all water and debris be completely blocked from 

passing through the mudflap. J.A. 45. Rather, “[s]ome water and debris might pass through the slotted openings.” 

Id. 

Whether or not Fleet’s products comprised vanes and 

vertical openings that prevented a sufficient amount of water and debris from passing through the mudflap such that 

they infringed Surti’s patent was a question of fact for the 

jury. Given the existence of those genuine issues of 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 13

material fact, the district court did not err in declining to 

grant JMOL in Fleet’s favor as to direct infringement. 

IV

We next turn to the parties’ assertions that portions of 

the jury verdict are unsupported by substantial evidence. 

Surti contends as such for the verdicts of noninfringement 

by the Group B products, the decision not to award lost 

profits, and the finding of a lack of willful infringement. In 

its cross-appeal, Fleet asserts that the jury’s finding of infringement by the Group A products was unsupported by 

substantial evidence. 

“A determination of infringement, both literal and under the doctrine of equivalents, is a question of fact, reviewed for substantial evidence when tried to a jury.” TI 

Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., LLC, 375 F.3d 

1126, 1133 (Fed. Cir. 2004). 

Surti first asserts that the jury verdict that Fleet’s 

Group B products did not infringe the asserted ’755 patent 

claims was unsupported by substantial evidence. According to Surti, because the jury found that the Group A products infringed, it should have also found that the Group B 

products infringed. Appellant’s Br. ¶ 3. The Group A and 

Group B products differ from one another in that only the 

Group A products contain vertical ridges and openings at 

or near the bottom of the mudflap. See J.A. 24, 53. Fleet 

responds that the jury could have reasonably come to its 

conclusion of noninfringement by the Group B products in 

view of (1) the absence of a vane, defined as “a relatively 

thin, rigid structure, like a blade, that is attached to another structure or surface,” (2) the absence of vertical channels or slots, or (3) openings that are not “of a size to permit 

air to pass through the openings to the rear of the flap and 

preventing water and debris from doing so.” Appellee’s Br. 

at 30. We agree with Fleet that the jury’s determination 

that Group B products did not directly infringe the ’755 patent was supported by substantial evidence. In particular, 

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14 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

the jury reasonably could have found that the Group B 

products lack the vertically extending vanes, channels, and 

slotted openings required by the claims. 

Surti further argues that even if the Group B products 

lacked the express structures recited in the ’755 patent 

claims, the jury still should have found infringement under 

the doctrine of equivalents. Appellant’s Br. ¶¶ 3, 6; see also

J.A. 54 (Verdict Form, finding that the Group B products 

did not infringe the asserted claims of the ’755 patent either “literally or under the doctrine of equivalents”). 

In determining equivalence, “[a]n analysis of the role 

played by each element in the context of the specific patent 

claim . . . inform[s] the inquiry as to whether a substitute 

element matches the function, way, and result of the 

claimed element, or whether the substitute element plays 

a role substantially different from the claimed element.” 

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 

17, 40−41 (1997). A patent owner must provide “particularized testimony and linking argument as to the ‘insubstantiality of the differences’ between the claimed 

invention and the accused device or processes, or with respect to the function, way, result test when such evidence 

is presented to support a finding of infringement under the 

doctrine of equivalents.” Tex. Instruments Inc. v. Cypress 

Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996). 

“Such evidence must be presented on a limitation-by-limitation basis.” Id.

Surti does not explain how the Group B products would 

have infringed under such a standard, or why the jury’s 

verdict of noninfringement lacks substantial evidence support. Fleet again argues that, at the very least, the jury 

could have reasonably found that the Group B products 

lack the vertically extending vanes, channels, and slotted 

openings required by the claims even when evaluated under the doctrine of equivalents. Appellee’s Br. at 48−53. In 

particular, Fleet points to the district court’s construction 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 15

of “vertically extending” as it pertains to the vanes, channels, and slotted openings of the mudflap to mean “perpendicular or at a 90 degree angle to the road surface.” Id.; see 

also J.A. 215. It is undisputed that the Group B products 

comprise four quadrants with vanes, channels, and slotted 

openings all oriented at diverging 45-degree angles. A reasonable jury could have found that components oriented at 

a 45 degree angle are not equivalent to components oriented at 90 degrees. The jury’s finding that the Group B 

products do not infringe the asserted claims under the doctrine of equivalents was therefore supported by substantial 

evidence. 

Surti next asserts that the jury verdict that he was not 

entitled to lost profits was not supported by substantial evidence. See Appellant’s Br. ¶¶ 2 (asserting error from 

“[d]enial of proper damages award”), 3 (asserting, generally, that the “damage awards should be calculated accordingly using proper formula and proper laws”), 6 (requesting 

that we “[a]ward the damages based on Surti being a manufacturing comp[e]titor who lost profit that he could have 

made by selling the product to the Plaintiff or to the industry”). According to Fleet, however, the jury should not have 

even been presented with the question of lost profits because Surti was a non-practicing entity who had no lost 

profits. Appellee’s Br. at 53−55. We agree with Fleet. 

Surti never assigned his patent to any company, including Mudguard, where he served as president. See J.A. 156. 

Nor is there any evidence to suggest that Surti entered into 

any licensing agreement that could have provided the right 

to recover lost profits at trial. Moreover, Surti has made 

no attempt to satisfy the Panduit factors, which require a 

showing of (1) a demand for the patented product, (2) the 

absence of acceptable non-infringing substitutes, (3) its 

manufacturing and marketing capability to exploit the demand, and (4) the amount of profit it would have made. 

Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1545 (Fed. 

Cir. 1995) (citing Panduit Corp. v. Stahlin Bros. Fibre 

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16 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)). The 

jury’s finding that Surti was not entitled to lost profits was 

therefore supported by substantial evidence.

Finally, Surti asserts that the jury verdict finding that 

Fleet’s infringement was not willful was not supported by 

substantial evidence. See Appellant’s Br. ¶¶ 2, 4, 6. 

“Whether infringement is willful is a question of fact, and 

the jury’s determination as to willfulness is therefore reviewable under the substantial evidence standard.” Braun 

Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 822 (Fed. Cir. 

1992) (citations omitted). Willful infringement must be 

proven by clear and convincing evidence and is determined 

by the totality of circumstances. Id.

Surti asserts that, not only was Fleet’s conduct “willful 

and wanton,” but further that he should have been 

awarded treble damages in view of that conduct. Appellant’s Br. ¶¶ 2, 6. Fleet responds that the jury’s finding of 

no willful infringement was supported by substantial evidence. In particular, Fleet notes that the actions to which 

Surti points to make his assertions of willful conduct occurred two years before the asserted patent first issued. 

Appellee’s Br. at 56−58. Although, as the district court observed, the evidence establishes that Fleet was aware of 

Surti’s patent application, J.A. 30, “[t]o willfully infringe a 

patent, the patent must exist and one must have 

knowledge of it. . . . [A]n application is no guarantee any 

patent will issue . . . . What the scope of claims in patents 

that do issue will be is something totally unforeseeable.” 

State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 

(Fed. Cir. 1985). 

The evidence adduced at trial, at best, may demonstrate 

Fleet’s knowledge of Surti’s patent issuing after Fleet was 

already selling its Group A products. Yet, even so,

knowledge of the asserted patent and evidence of infringement, although necessary, is not sufficient for a finding of 

willfulness. Bayer Healthcare LLC v. Baxalta Inc., 989 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 17

F.3d 964, 987 (Fed. Cir. 2021). Rather, willfulness requires 

deliberate or intentional infringement. Eko Brands, LLC 

v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 

(Fed. Cir. 2020). The jury was free to weigh the relevant 

evidence of record, which included evidence suggesting 

that Fleet intended to avoid patent infringement. Moreover, even if some evidence existed to draw the opposite conclusion, that does not mean that the jury’s finding of no 

willfulness was unsupported by substantial evidence. 

In its cross-appeal, Fleet argues that the jury verdict 

that its Group A products infringe the ’755 patent was not 

supported by substantial evidence. Appellee’s Br. at 76−79. 

To support that claim, Fleet repeats the arguments that it 

made in challenging the district court’s decision not to 

award JMOL in Fleet’s favor as to direct infringement. In 

particular, Fleet argues that the Group A products do not 

have vanes, vertically extended channels, or slotted openings to prevent the passage of water and debris through the 

mudflap as recited in the asserted claims. 

As construed by the district court, however, the “vanes” 

required by the claims are “relatively thin, rigid structure[s], like a blade, that [are] attached to another structure or surface.” J.A. 442–43. Neither party has 

challenged that construction on appeal. As we found in 

Fleet I, a reasonable jury could conclude that the corresponding structures in Fleet’s products are relatively thin 

and rigid and are attached as protrusions from the rear 

wall of the mudflap’s channels. Fleet I, 761 F. App’x at 992. 

We further found that a reasonable jury could find that the 

presence of some channels vertically extending across the 

bottom of the Group A products may satisfy the claims. Id.

at 993. Moreover, Fleet’s arguments ignore that the claims 

do not require complete blockage of water and debris from 

passing through the mudflap’s openings. See J.A. 218–20 

(Claim Construction Order, noting that the “specification 

explicitly anticipates that some water and debris may pass 

through the slotted openings”). A reasonable jury could 

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18 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

have found that the Group A products prevent sufficient 

amounts of water and debris from passing through, such 

that they directly infringe the asserted claims.

Fleet’s arguments on appeal amount to a mere disagreement with the jury’s findings. Such disagreement is insufficient to overturn a jury verdict that was otherwise 

supported by substantial evidence.

V 

Surti also appeals the district court’s finding that this 

case was not exceptional and did not merit an award of attorney fees, as well as the court’s decision denying Surti’s 

request for a permanent injunction. Appellant’s Br. ¶¶ 2, 

6.

A district court may, in exceptional cases, award reasonable attorney fees to the prevailing party under 

35 U.S.C. § 285. See Octane Fitness, LLC v. ICON Health 

& Fitness, Inc., 572 U.S. 545, 548−51 (2014) (interpreting 

the phrase “exceptional cases” and setting forth basic 

guidelines for determining whether or not a request for attorney fees in patent infringement cases may be granted). 

We review a district court’s decision not to award attorney 

fees under § 285 for abuse of discretion. Highmark Inc. v. 

Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 560–61

(2014).

As set forth by the district court, Surti has been proceeding pro se since 2015 and has provided no evidence of 

legal fees incurred before that date. J.A. 36–39. Instead, 

the record reflects that the two attorneys who represented 

Surti between 2013 and 2015 withdrew from the case after 

not being paid for their work. J.A. 246. Surti also failed to 

demonstrate that Fleet litigated this case in an unreasonable manner, asserted any plainly frivolous claims, or 

made any frivolous legal arguments during the course of 

this litigation causing the case to be exceptional. We therefore conclude that the court did not abuse its discretion in 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 19

determining not to award Surti attorney fees under § 285.

Regarding the requested permanent injunction, Surti 

asserts that the district court erred in its decision to deny 

issuing a cease-and-desist order against Fleet. Appellant’s 

Br. ¶¶ 2, 6. “The decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion.” 

eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). 

The district court held that Surti did not provide sufficient evidence to support the issuance of a permanent injunction. J.A. 18−22; see also TEK Global, S.R.L. v. Sealant 

Sys. Int’l, Inc., 920 F.3d 777, 792 (Fed. Cir. 2019) (quoting 

eBay, 547 U.S. at 391) (setting forth the factors considered 

in determining whether or not to issue an injunction). 

A finding of infringement does not automatically entitle 

a patent holder to a permanent injunction. eBay, 547 U.S. 

at 391−93. Although Surti may have suffered an injury 

from the sale of an infringing product, that injury was not 

one of irreparable harm. See Robert Bosch LLC v. Pylon 

Mfg. Corp., 659 F.3d 1142, 1149 (Fed. Cir. 2011) (holding 

that, in the context of patent infringement cases, there is 

no presumption of irreparable harm when a party establishes liability for patent infringement). The district court 

did not err in determining that Surti’s injury was compensable through the reasonable royalty awarded by the jury. 

In deciding Surti’s motion for injunctive relief, the district court did not expressly address two of the eBay factors: 

the balance of the hardships between the claimant and the 

infringer and whether or not an injunction would serve the 

public interest. See eBay, 547 U.S. at 391. However, Surti 

did not independently argue those factors. See J.A. 21−22. 

The court therefore did not abuse its discretion in declining 

to issue a permanent injunction based only on the first two 

eBay factors.

Moreover, the purpose of an injunction is to prevent 

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20 FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC

future infringement. See Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1377−78 (Fed. Cir. 2020). 

There is no evidence in the record that Fleet continues to 

sell the infringing products. See J.A. 22. It was therefore 

not an abuse of discretion for the district court to have held 

that, without evidence of future harm, Surti had not sufficiently established entitlement to injunctive relief.

VI 

Surti additionally makes passing references to trade secrets and various contract violations. Appellant’s Br. ¶¶ 3, 

6. Those issues were previously raised and decided by the 

district court years ago. We then affirmed those decisions

in Fleet I. See 761 F. App’x at 994−95. The facts, law, and 

parties involved remain unchanged, and as Surti received 

a “‘full and fair’ opportunity to litigate” those claims, “the 

contemporary law of collateral estoppel leads inescapably

to the conclusion that” Surti is collaterally estopped from 

relitigating those issues. See Parklane Hosiery Co. v. 

Shore, 439 U.S. 322, 332–33 (1979); see also id. at 326 (“Collateral estoppel, like the related doctrine of res judicata, 

has the dual purpose of protecting litigants from the burden of relitigating an identical issue with the same party 

or his privy and of promoting judicial economy by preventing needless litigation.”).

Surti also makes passing references to other holdings 

involving damages and district court actions, such as allegedly “block[ing] the discussion of the opinion of the Federal 

Court as well as its own Claim Construction Opinion” that 

he desires to be reviewed on appeal. Appellant’s Br. ¶¶ 4, 

6. He further raises arguments that were not presented at 

the district court level, such as that he is entitled to additional damages “based on the mental stress this litigation 

has caused” him. Id. ¶¶ 2−4.

We recognize that Surti is not an attorney and that he 

is not fully acquainted with court rules and appellate procedures. However, the United States Supreme Court and 

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FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 21

the Sixth Circuit Court of Appeals have instructed courts 

to enforce procedural rules even against pro se litigants 

who are not familiar with them. See, e.g., McNeil v. United 

States, 508 U.S. 106, 113 (1993) (holding that the Court

“never suggested that procedural rules in ordinary civil litigation should be interpreted so as to excuse mistakes by 

those who proceed without counsel”); Pilgrim v. Littlefield, 

92 F.3d 413, 416 (6th Cir. 1996) (noting that “the lenient 

treatment generally accorded to pro se litigants has limits”). 

Our law is well established that an argument must be 

properly raised in a party’s opening brief in order to be considered on appeal. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Appeals to 

this court further operate under a general principal of forfeiture in view of a “failure to make timely assertion of the 

right before a tribunal having jurisdiction to determine it.” 

Boeing Co. v. United States, 968 F.3d 1371, 1380 (Fed. Cir. 

2020) (quoting Yakus v. United States, 321 U.S. 414, 444 

(1944)). Because Surti failed to raise the remainder of his

arguments adequately in his opening brief or at the district 

court prior to this appeal, we consider those arguments forfeited. 

CONCLUSION

We have considered both parties’ remaining arguments 

and find them unpersuasive. For the foregoing reasons, we 

affirm. 

AFFIRMED

COSTS

No costs.

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