Presidio Components Inc. v. American Technical Ceramics Corp..

• Decision Date: 13 April 2010
• Docket Number: Case No. 08-CV-335-IEG (NLS).
• Citation: 723 F.Supp.2d 1284
• Court: U.S. District Court — Southern District of California
• Parties: PRESIDIO COMPONENTS INC., Plaintiff, v. AMERICAN TECHNICAL CERAMICS CORP., Defendant.

723 F.Supp.2d 1284

PRESIDIO COMPONENTS INC., Plaintiff,

v.AMERICAN TECHNICAL CERAMICS CORP., Defendant.

Case No. 08-CV-335-IEG (NLS).

United States District Court,S.D. California.

April 13, 2010.

COPYRIGHT MATERIAL OMITTED.

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Brett A. Schatz, Gregory F. Ahrens, Wood Herron and Evans, Cincinnati, OH, Miles D. Grant, Grant and Zeko APC, San Diego, CA, for Plaintiff and Counter Defendant.

Marvin S. Gittes, Timur E. Slonim, Peter F. Snell, Mintz Levin Cohn Ferris Glovsky and Popeo PC, New York, NY, Benjamin L. Wagner, Mintz Levin Cohn Ferris Glovsky and Popeo PC, San Diego, CA, for Defendant.

ORDER:

(1) DENYING PRESIDIO'S MOTION FOR PERMANENT INJUNCTION [Doc. No. 306];

(2) GRANTING IN PART AND DENYING IN PART PRESIDIO'S MOTION FOR POST TRIAL REMEDIES [Doc. No. 307];

(3) DENYING ATC'S MOTION FOR JMOL OR FOR A NEW TRIAL WITH RESPECT TO PRESIDIO'S FALSE MARKING BEFORE OCTOBER 24, 2008 [Doc. No. 308];

(4) GRANTING IN PART AND DENYING IN PART ATC'S MOTION FOR JMOL AND FOR A NEW TRIAL [Doc. No. 309];

(5) GRANTING IN PART AND DENYING IN PART ATC'S MOTION FOR ENTRY OF ATC'S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW WITH RESPECT TO PRESIDIO'S FINES FOR FALSE MARKING [Doc. No. 310];

(6) DENYING ATC'S MOTION FOR ENTRY OF ATC'S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW REGARDING INDEFINITENESS [Doc. No. 311]; and

(7) DENYING ATC'S MOTION FOR ENTRY OF ATC'S PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW REGARDING UNENFORCEABILITY OF THE '356 PATENT FOR INEQUITABLE CONDUCT [Doc. No. 312].

IRMA E. GONZALEZ, Chief Judge.

Currently before the Court are the parties' post-trial motions. Having considered the parties' arguments, and for thereasons set forth below, the Court issues the following order.

BACKGROUND

I. The Technology

In this patent infringement case, Presidio Components Inc. (“Presidio”) alleges American Technical Ceramics Corp. (“ATC”) infringed U.S. patent number 6,816, 356 (“the '356 patent”), titled “Integrated Broadband Ceramic Capacitor Array.” A capacitor is a device conventionally comprising two metal plates separated by a non-conductor of electric current. This non-conductive material is known as the “dielectric,” which is usually composed of air or ceramic.

Capacitors are passive electronic components used in cellular phones, video cassette recorders, televisions, general purpose computers, and audio amplifiers. These devices use capacitors in one of two ways: (1) to filter out undesirable ripples or spikes in a power supply, or (2) to store energy and provide charge to transistors on a printed circuit board. ¹

A capacitor is charged by coupling its plates to an electrical source. Since electricity passes easily through the conductors, but not the dielectric, a positive electrical charge accumulates on one plate and a negative charge accumulates on the other plate. When charged, the capacitor stores energy that can be released by connecting the plates via an external path, permitting current to flow from one plate to the other. The electrons flow off the negatively charged plate and onto the positively charged plate, bringing the two plates to equal relative voltage. The amount of energy a capacitor stores is its “capacitance,” which depends on the orientation and spacing of the conductive plates, and the properties of the dielectric material.

Frequently, multiple capacitors are connected to form a capacitive network. One way to create a capacitive network is to build a “multilayer capacitor,” which is formed by layering multiple conductive and non-conductive materials. Each individual layer has a separate capacitance that effects the overall capacitance of the multilayer capacitor.

II. The '356 Patent

The '356 patent discloses and claims a multilayer capacitor consisting of a network of capacitors. The '356 patent has a total of thirty-four claims, but only claims 1-5, 16, and 18-19 are the asserted claims in this case. Out of those, only asserted claim 1 is an independent claim. ² The rest of the asserted claims are dependent claims. ³ Asserted claim 1 of the ' 356 patent claims:

A capacitor comprising:

a substantially monolithic dielectric body;

a conductive first plate disposed within the dielectric body;

a conductive second plate disposed within the dielectric body and forming a capacitor with the first plate; a conductive first contact disposed externally on the dielectric and electrically connected to the first plate; and

a conductive second contact disposed externally on the dielectric body and electrically connected to the second plate, and the second contact being located sufficiently close to the first contact to form a first fringe-effect capacitance with the first contact.

('356 patent, col. 12:58-13:5.) Asserted claims 2 and 4 also add one or two “insulating layer[s]” disposed between the external contacts and “inhibiting electrical conduction” between those contacts. ( Id. col. 13:6-13:9, 13:17-13:25.)

III. Factual Background

The application process for the '356 patent spanned over two years. On May 17, 2002, Presidio submitted a parent application to patent the technology underlying the '356 patent with the United States Patent and Trademark Office (“USPTO” or “PTO”). This parent application resulted in U.S. patent number 6,587,327 (“the '327 patent”). On April 14, 2003, Presidio submitted the base application for the '356 patent, which was a continuation in part of the parent application. The USPTO issued the '356 patent on November 9, 2004.

During the pendency of Presidio's patent application, ATC initiated development of the 545L series of monolithic, multilayered capacitors. In September 2002, ATC engineers first expressed interest in developing a monolithic capacitor. During development, in April 2003, ATC allegedly dissected and analyzed Presidio's Buried Broadband Capacitors (“BB capacitors”). The BB capacitors were monolithic, multilayered capacitors developed for broadband usage. During the litigation, Presidio conceded the BB capacitors do not embody the claims of the '356 patent. Nonetheless, Presidio asserts the BB capacitors at the very least employ the “substantially monolithic dielectric body” as used in the claims of the '356 patent, and as such served as the background to the inventions ultimately claimed in the ' 356 patent.

In September 2003, ATC substantially completed the 545L capacitor's design and filed a provisional patent application. In March 2004, ATC reviewed Presidio's published patent application. The parties dispute the importance of ATC's review. Presidio asserts ATC engineers believed the patent application covered their capacitor. ATC asserts the engineers believed the '356 patent was both invalid and inapplicable to the 545L capacitor.

In September 2004, ATC filed a non-provisional patent application for the 545L capacitor. In February 2006, the USPTO rejected the application, citing the ' 356 patent as prior art. Notwithstanding this rejection, ATC began selling the 545L capacitor in June 2006. In August 2006, ATC requested the USPTO reconsider the application, arguing the '356 patent does not have orientation insensitivity, which is a feature of the 545L capacitor. That same month, the USPTO reconsidered and held the '356 patent did not bar ATC's application. On July 2007, the USPTO issued U.S. Patent No. 7,248,458 (“the '458 patent”) for the 545L capacitor.

Beginning in May 2007, Presidio began marking its BB capacitors with the '356 patent number. On October 24, 2008, Presidio admitted the BB capacitors were not covered by the '356 patent, but claims it marked the capacitors with a mistaken belief they embodied the patent. Prior to the marking, Presidio did not perform a legal analysis. Presidio continued to mark the BB capacitors with the '356 patent until some time in April 2009. ⁴On May 17, 2007, Presidio filed an action in this Court against ATC, alleging infringement of the '356 patent (the “2007 action”). On June 9, 2008, the Court granted a joint motion to dismiss the 2007 action without prejudice for lack of standing.

IV. Procedural Background

Presidio filed the complaint in this case on February 21, 2008, alleging ATC is infringing claims 1-5, 16, and 18-19 (“asserted claims”) of the '356 patent by producing the 545L capacitor. [Doc. No. 1]. ATC answered on May 28, 2008, bringing numerous counterclaims against Presidio. [Doc. No. 10]. On June 20, 2008, Presidio filed an answer to ATC's counterclaims. [Doc. No. 21].

On June 11, 2008, 2008 WL 2397488, the Court issued a Claim Construction Order, construing many of the disputed terms of the'356 patent. [Doc. No. 24]. Among others, the Court construed the term “a substantially monolithic dielectric body” as “a dielectric body largely but not wholly without seams from the inclusion of plates within the dielectric body.” The Court construed the term “the second contact being located sufficiently close to the first contact to form a first fringe-effect capacitance with the first contact” as “an end of the first conductive contact and an end of the second conductive contact are positioned in an edge-to-edge relationship in such proximity as to form a determinable capacitance.” On July 30, 2009, the Court granted ATC's Motion to Resolve a Fundamental Dispute over Claim Scope, finding “determinable capacitance” to mean “a capacity that is capable of being determined in terms of a standard unit.” (Order Resolving Fund. Dispute, at 5.) In doing so, the Court rejected Presidio's interpretation that attempted to use the term “insertion loss” as a proxy for a previously rejected term “high frequency performance.” ( Id. at 4.)

On August 25, 2008, 2008 WL 3925723, the Court issued an order denying ATC's summary judgment motion for a declaration of indefiniteness. [Doc. No. 32]. The parties then filed cross-motions for summary judgment. On April 30, 2009, the Court issued an order on the cross-motions for summary judgment,...