Presidio Components, Inc. v. Am. Tech. Ceramics Corp.
| Decision Date | 17 August 2016 |
| Docket Number | Case No.: 14-cv-02061-H-BGS |
| Parties | PRESIDIO COMPONENTS, INC., Plaintiff, v. AMERICAN TECHNICAL CERAMICS CORP., Defendant. |
| Court | U.S. District Court — Southern District of California |
PRESIDIO COMPONENTS, INC., Plaintiff,
v.
AMERICAN TECHNICAL CERAMICS CORP., Defendant.
Case No.: 14-cv-02061-H-BGS
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA
August 17, 2016
ORDER:
(1) DENYING DEFENDANT'S MOTIONS FOR JUDGMENT AS A MATTER OF LAW AND FOR A NEW TRIAL;
(2) GRANTING PLAINTIFF'S MOTION FOR A PERMANENT INJUNCTION;
(3) DENYING PLAINTIFF'S MOTION FOR ENHANCED DAMAGES AND ATTORNEY'S FEES; AND
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(4) GRANTING PLAINTIFF'S MOTION FOR SUPPLEMENTAL DAMAGES AND INTEREST
On June 22, 2016, Plaintiff Presidio Components, Inc. filed (1) a motion for a permanent injunction; (2) a motion for enhanced damages and attorney's fees; and (3) a motion for supplemental damages and interest. (Doc. Nos. 372, 373, 377.) On July 13, 2016, Defendant American Technical Ceramics Corp. filed its responses in opposition to Presidio's three motions. (Doc. Nos. 391, 393, 394.) On July 20, 2016, Presidio filed its replies in support of its motions. (Doc. Nos. 412, 414, 415.)
On July 15, 2016, ATC filed (1) a motion for judgment as a matter of law and new trial of no infringement; (2) a motion for judgment as a matter of law and new trial of no willfulness and no induced infringement; and (3) a motion for judgment as a matter of law and new trial of no lost profits. (Doc. Nos. 399, 400, 402.) On July 29, 2016, Presidio filed its responses in opposition to ATC's three motions. (Doc. Nos. 423, 424, 426.) On August 5, 2016, ATC filed its replies in support of its motions. (Doc. Nos. 432, 433, 434.)
The Court held a hearing on the matters on August 17, 2016. Gregory Ahrens and Brett Schatz appeared for Presidio. Peter Snell and Ronald Cahill appeared for ATC. For the reasons below, the Court: (1) denies ATC's motions for judgment as a matter of law and new trial; (2) grants Presidio's motion for a permanent injunction; (3) denies Presidio's motion for enhanced damages and attorney's fees; and (4) grants Presidio's motion for supplemental damages and interest.
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On September 2, 2014, Presidio filed a complaint for patent infringement against ATC, alleging infringement of U.S. Patent No. 6,816,356 ("the '356 patent"). (Doc. No. 1, Compl.) The '356 patent is entitled "Integrated Broadband Ceramic Capacitor Array." U.S. Patent No. 6,816,356 B2, at 1:1-2 (filed Apr. 14, 2003). The patent issued on November 9, 2004 and claimed priority to an application filed on May 17, 2002. See id. (See Doc. No. 276-3 ¶ 4; Doc. No. 356-1 at 5.)
A capacitor is a passive electrical component that stores and releases energy and is used in a variety of electrical devices. Presidio Components, Inc. v. American Technical Ceramics Corp., 702 F.3d 1351, 1355 (Fed. Cir. 2012). Generally, a capacitor comprises two parallel metal plates separated by a non-conductive material such as ceramic or air, known as a dielectric. Id. When a capacitor is connected to a power source, electricity passes through the metal plates, but not the dielectric, causing a positive charge to accumulate on one plate and a negative charge on the other. Id. "The capacitor may release this stored energy by connecting the two plates through a conductive path that closes the circuit." Id. "The amount of energy a capacitor can store is its 'capacitance.'" Id.
Multiple capacitors may be combined to create a "multilayer capacitor." Id. A multilayer capacitor is made of several layers of conductive and non-conductive materials stacked together. Id. Each layer in the multilayer capacitor has its own electrical properties affecting the overall performance of the capacitor. Id.
The '356 patent claims a multilayer capacitor design and teaches a multilayer integrated network of capacitors electrically connected in series and in parallel. Id.; Presidio Components, Inc. v. American Technical Ceramics Corp., 723 F. Supp. 2d 1284, 1289 (S.D. Cal. 2010), vacated on other grounds, 702 F.3d 1351 (Fed. Cir. 2012). This network of capacitors is disposed within a "substantially monolithic dielectric body," as shown below in Figure 10A. Presidio, 702 F.3d at 1355. The claimed multilayer capacitor creates capacitance between internal parallel plate combinations 10 and 11 while simultaneously creating fringe-effect capacitance between external contacts 72 and 74. Id.
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On December 8, 2015, the United States Patent and Trademark Office issued a reexamination certificate for the '356 patent, amending certain claims of the patent.1 (Doc. No. 170-2, FAC Ex. 2.) Amended claim 1 of the '356 patent, the only independent claim asserted by Presidio in this action, is as follows:
1. 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 body 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 in an edge to edge relationship in such proximity as to form a first fringe-effect capacitance with the first contact that is capable of being determined by measurement in terms of a standard unit.
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U.S. Patent No. 6,816,356 C2, at 1:23-36 (Reexamination Certificate filed Dec. 8, 2015) (emphasis removed from original). The claims in the reexamination certificate were amended in order to overcome a final rejection by the PTO examiner, rejecting the claims at issue as anticipated by the AVX MLC Catalog reference, and in the alternative, as obvious over the AVX MLC Catalog reference in view of the Ceramic Capacitor Technology reference. (See Doc. No. 212-2, Slonim Decl. Exs. 1, 2, 8, 11.)
On December 22, 2015, Presidio filed a first amended complaint, alleging infringement of the '356 patent as amended by the reexamination certificate. (Doc. No. 170, FAC.) Specifically, Presidio alleged that ATC's 550 line of capacitors infringes claims 1, 3, 5, 16, 18, and 19 of the '356 patent. (Id. ¶ 26.) On December 22, 2015, ATC filed a second amended answer and counterclaims to the first amended complaint, adding an affirmative defense of absolute and equitable intervening rights and an affirmative defense and counterclaim of unenforceability due to inequitable conduct. (Doc. No. 171.)
On January 12, 2016, the Court denied Presidio's motions for: (1) summary judgment of definiteness; (2) summary judgment of infringement; (3) summary judgment of ATC's equitable affirmative defenses; and (4) summary judgment of no acceptable non-infringing alternatives. (Doc. No. 210.) In the order, the Court also denied ATC's motions for: (1) partial summary judgment of non-infringement; (2) summary judgment of indefiniteness; and (3) summary judgment of no willful infringement. (Id.) On February 10, 2016, the Court granted ATC's motion for summary judgment of its affirmative defense of absolute intervening rights and held that Presidio is entitled to infringement damages only for the time period following the issuance of the reexamination certificate on December 8, 2015. (Doc. No. 234 at 28.) In that order, the Court also dismissed with prejudice ATC's affirmative defense and counterclaim that the '356 patent is unenforceable due to inequitable conduct. (Id. at 33.)
The Court held a jury trial beginning on April 5, 2016. (Doc. No. 297.) During the trial, on April 8, 2016, ATC filed a motion for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a). (Doc. No. 307.) On April 18, 2016, the jury
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returned a verdict finding direct infringement and induced infringement of claims 1, 3, 5, 16, 18, and 19 of the '356 patent by ATC as to all of the accused products in the action: the 550L, the 550S, the 550U, and the 550Z capacitors. (Doc. No. 328 at 2-3.) In addition, the jury found that Presidio had proven by clear and convincing evidence that ATC's infringement of the asserted claims was willful. (Id. at 4.) The jury awarded Presidio $2,166,654 in lost profit damages. (Id.) The jury also issued an advisory verdict as to indefiniteness and found that ATC had failed to prove by clear and convincing evidence that claim 1 of the '356 patent is indefinite.2 (Id. at 5.)
On June 17, 2016, the Court issued a memorandum decision finding in favor of Presidio and against ATC on all issues submitted to the Court, including indefiniteness, equitable intervening rights, equitable estoppel, and laches. (Doc. No. 368.) On June 17, 2016, the Court entered judgment in favor of Presidio on all causes of action and awarded Plaintiff $2,166,654 in damages. (Doc. No. 369.)
By the present motions, ATC moves for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(b) or, in the alternative, for a new trial pursuant to Rule 59 on the following issues: (1) infringement; (2) induced infringement; (3) willful infringement; and (4) lost profits. (Doc. Nos. 399, 400, 402.) Presidio moves for: (1) a permanent injunction; (2) enhanced damages; (3) attorney's fees; (4) supplemental damages; and (5) prejudgment and postjudgment interest. (Doc. Nos. 372, 373, 377.)
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I. ATC's Motions for Judgment as a Matter of Law and for a New Trial
A. Legal Standard for a Rule 50 Motion for Judgment as a Matter of Law
In a patent case, a motion for judgment as a matter of law is governed by the regional circuit, here the Ninth Circuit. InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1338 (Fed. Cir. 2014). Under Federal Rule of Civil Procedure 50, a court should render judgment as a matter of law ("JMOL") only when "a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally...
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