AMS Sensors U.S. Inc. v. Renesas Elecs. Am.

Decision Date07 March 2022
Docket NumberCivil Action 4:08-cv-00451
PartiesAMS SENSORS USA INC. f/k/a TEXAS ADVANCED OPTOELECTRONIC SOLUTIONS, INC., Plaintiff, v. RENESAS ELECTRONICS AMERICA INC. f/k/a INTERSIL CORPORATION, Defendant.
CourtU.S. District Court — Eastern District of Texas
MEMORANDUM OPINION AND ORDER

AMOS L. MAZZANT, UNITED STATES DISTRICT JUDGE.

Pending before the Court is Plaintiff's Motion for Entry of Final Judgment (Dkt. #861). Having reviewed the motion and relevant pleadings, the Court finds it should be GRANTED.

BACKGROUND
I. The First Trial

On June 3, 2004, the parties entered into a letter “Confidentiality Agreement” to explore a possible business relationship. Pursuant to the terms of the letter “Confidentiality Agreement, ” the parties exchanged confidential information. However, the parties were ultimately unable to agree on the terms of a business relationship and discussions regarding Defendant Renesas Electronics America Inc. f/k/a Intersil Corporation's (“Renesas” f/k/a “Intersil”) acquisition of Plaintiff AMS Sensors USA Inc. f/k/a Texas Advanced Optoelectronic Solutions, Inc. (“AMS” f/k/a “TAOS”) ended.[1] AMS subsequently reached the conclusion that Renesas unfairly used AMS's confidential information to create a line of digital ambient light sensors that compete with AMS's ambient light sensors. As such on November 25, 2008, AMS sued Renesas for patent infringement, breach of contract, trade secret misappropriation, and tortious interference with prospective business relations.

On October 13, 2009, Renesas filed its original answer and counterclaims, asserting fourteen affirmative defenses and five counterclaims. After extensive summary judgment briefing, the case proceeded to a jury trial on February 9, 2015. At the conclusion of the trial on March 6, 2015, the jury found that (1) Renesas breached the Confidentiality Agreement with AMS, (2) Renesas misappropriated AMS's trade secrets, (3) Renesas' misappropriation of AMS's trade secrets resulted from Renesas' fraud, malice, or gross negligence, (4) Renesas did not prove that AMS must have known or must have been reasonably able to discover that Renesas used AMS's proprietary information to create competing products before November 25, 2005, (5) AMS proved that Renesas fraudulently concealed the facts upon which AMS's misappropriation of trade secrets claim was based, (6) Renesas intentionally interfered with AMS's prospective business relations with Apple, (7) Renesas' tortious interference was the result of fraud, malice, or gross negligence, (8) Renesas willfully infringed the '981 patent, (9) Renesas did not prove that any of the claims of the '981 patent were invalid due to obviousness, for failing to satisfy the written description requirement, or for failing to contain a sufficiently full and clear description of how to make and use the full scope of the claimed invention, (10) Renesas did not prove that its conduct was excused because of laches, and (11) Renesas did not prove that AMS had unclean hands (Dkt. #511).

The jury awarded AMS the following:

(a) $1.00 in nominal damages for Renesas' retention of AMS's confidential information under the Confidentiality Agreement;
(b) $12, 000, 000.00 as a reasonable royalty for Renesas' breach of the Confidentiality Agreement; (c) $48, 783, 007.00 as disgorgement of Renesas' profits for the misappropriation of AMS's trade secrets;
(d) $10, 000, 000.00 in exemplary damages for Renesas' trade secret misappropriation;
(e) $8, 000, 000.00 in lost profit damages arising from Renesas' intentional interference with AMS's prospective relations with Apple;
(f) $10, 000, 000.00 in exemplary damages for Renesas' tortious interference; and
(g) $73, 653.51 as a reasonable royalty for Renesas' infringement of the '981 patent. (Dkt. #511). Final judgment was entered on June 9, 2016 (Dkt. #596).
II. Appeal, Federal Circuit Mandate, Remand, Second Trial

Renesas appealed the final judgment to the United States Court of Appeals for the Federal Circuit on June 10, 2016 (Dkt. #598). The Federal Circuit affirmed in part, reversed in part, and vacated in part the final judgment and remanded the case. Texas Advanced Optoelectronic Sols., Inc. v. Renesas Elecs. Am., Inc., 895 F.3d 1304 (Fed. Cir. 2018) (hereinafter TAOS). The Federal Circuit affirmed liability for trade secret misappropriation, but only on the technical trade secret. Liability for the two financial trade secrets was vacated. The misappropriation damages were overturned. Id. at 1317. Finally, the Federal Circuit found that the patent infringement award was duplicative of the trade secret misappropriation award. Id. at 1328.

On August 9, 2019, Judge Schell[2] transferred this case to the undersigned (Dkt. #662).

On November 25, 2019, AMS moved for Entry of Final Judgment (Dkt. #672). The Court denied the motion on March 27, 2020 (Dkt. #682). AMS moved for reconsideration (Dkt. #686). The Court denied the motion and reiterated it was bound by the law of the case as determined by the Federal Circuit (Dkt. #696).

On April 5, 2021, AMS and Renesas appeared before the Court for a jury trial on damages. On April 16, 2021, the jury returned a verdict (Dkt. #824). The jury provided an advisory opinion on the issue of disgorgement for trade secret misappropriation.

III. Election of Remedies, Findings of Fact and Conclusions of Law, Current Motion

At the Court's request, on April 30, 2021, AMS filed its election of remedies (Dkt. #842). AMS requested the Court award:

1. Disgorgement of profits from sales of the ISL29003 to Apple for use in the iPod Touch and to non-Apple customers through March 2008 in the amount of $8, 546, 000.00;
2. Disgorgement of profits from sales of the ISL29003 to Apple for use in the iPhone 3G in the amount of $3, 090, 000.00;
3. Exemplary damages for trade secret misappropriation in the amount of $23, 272, 000.00;
4. Royalty on all sales of Derivative Products in the amount of $6, 637, 693.00; and
5. Royalty on residual sales of Primary Products in the amount of $1, 457, 693.00

(Dkt. #842). Essentially, AMS sought to recover in part under both the trade secret misappropriation and breach of contract claims, which Renesas objected to in its Motion to Strike Plaintiff's Election of Remedies (Dkt. #843). The Court granted Renesas' motion in part, denied in part, and ordered AMS to file an amended election of remedies in compliance with the Court's decision (Dkt. #853).

Accordingly, on August 24, 2021, AMS filed its amended election of remedies (Dkt. #854). AMS asked the Court to award:

1. Disgorgement of profits from sales of the ISL29003 to Apple for use in the iPod Touch and to non-Apple customers through March 2008 in the amount of $8, 546, 000.00;
2. Exemplary damages for trade secret misappropriation in the amount of $17, 092, 000.00; 3. Royalty on all sales of Derivative Products in the amount of $6, 637, 693.00; and
4. Royalty on residual sales of Primary Products (excluding ISL29003) in the amount of $613, 014.00

(Dkt. #854).

On December 14, 2021, the Court entered its Findings of Fact and Conclusions of Law (Dkt. #855). The Court agreed with the jury's advisory findings that the ISL29003 used AMS's trade secret, such trade secret became properly accessible in January of 2006, and that there was a 26-month head start period (Dkt. #855). The Court also found AMS was entitled to recover disgorgement of Renesas' profits in the amount of $8, 546, 000 (Dkt. #855 at p. 43). The Court ordered the parties to file a proposed final judgment.

On December 22, 2021, AMS moved for entry of final judgment (Dkt. #861). Renesas responded on January 12, 2022 (Dkt. #864). AMS filed its reply on January 21, 2022 (Dkt. #867). Renesas filed its sur-reply on January 28, 2022 (Dkt. #868).

LEGAL STANDARD

Federal Rule of Civil Procedure 58 governs the entry of final judgment. While Rule 58(b)(1) details the circumstances under which the clerk of the court must enter judgment “without awaiting the court's direction, ” Rule 58(b)(2) outlines those circumstances under which the Court must approve final judgment before such can be entered by the clerk. Specifically, Rule 58(b)(2) provides that:

[T]he court must promptly approve the form of judgment, which the clerk must promptly enter, when:
(A) the jury returns a special verdict or a general verdict with answers to written questions; or
(B) the court grants other relief not described in this subdivision (b).

Fed. R. Civ. P. 58(b)(2).

ANALYSIS

In its request for entry of final judgment, AMS requests the Court award:

1. Damages for equitable disgorgement in the amount of $8 546, 000.00;
2. Exemplary damages for trade secret misappropriation in the amount of $17, 092, 000.00;
3. Pre-judgment interest on the disgorgement award in the amount of $5, 592, 361.92;[3]
4. Post-judgment interest on the trade-secret disgorgement award;
5. Costs incurred through June 20, 2016, in the amount of $299, 239.86 pursuant to the parties' Agreed Bill of Costs (Dkt. #603);
6. Reasonable royalty damages for breach of contract related to the Derivative Products in the amount of $6, 637, 693.00;
7. Royalty on residual sales of Primary Products (excluding ISL29003) in the amount of $613, 014.00;
8. Pre-judgment interest on the breach-of-contract award in the amount of $9, 489, 486.94;[4] and
9. Post-judgment interest on the breach of contract award

(Dkt. #861). AMS also requests the Court reserve ruling on attorneys' fees until AMS submits its motion for attorneys' fees pursuant to Federal Rule of Civil Procedure 54(d)(2) (Dkt. #861 at p. 7).

Renesas does not contest AMS's request for damages for equitable disgorgement, post-judgment interest, or costs (Dkt. #864). However, Renesas argues AMS is not...

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