Case 1:14-cv-02396-PGG-SN Document 201-1 Filed 11/26/19 Page 1 of 10
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`Exhibit A
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`Case 1:14-cv-02396-PGG-SN Document 201-1 Filed 11/26/19 Page 2 of 10
`American Technical Ceramics Corp. v. Presidio Components, Inc., Slip Copy (2019)
`2019 WL 5212802
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`2019 WL 5212802
`Only the Westlaw citation is currently available.
`United States District Court, E.D. New York.
`
`AMERICAN TECHNICAL CERAMICS
`CORP. and AVX Corporation, Plaintiffs,
`v.
`PRESIDIO COMPONENTS, INC., Defendant.
`
`14-CV-6544(KAM)(GRB)
`|
`Signed 10/16/2019
`
`Attorneys and Law Firms
`
`Brad Michael Scheller, Timur E. Slonim, Peter Francis Snell,
`Vincent M. Ferraro, Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C., New York, NY, Heather Repicky, Ronald
`E. Cahill, Nutter McClennen & Fish LLP, Boston, MA, for
`Plaintiffs.
`
`Brett Schatz, Charles H. Brown, Gregory Ahrens, Wood,
`Herron & Evans, L.L.P., Cincinnati, OH, Jeremy D.
`Richardson, Michelman & Robinson LLP, New York, NY, for
`Defendant.
`
`MEMORANDUM & ORDER
`
`MATSUMOTO, United States District Judge:
`
`*1 Plaintiffs American Technical Ceramics Corporation
`(“ATC”) and AVX Corporation (collectively, “plaintiffs”)
`commenced this action on November 6, 2014, against
`defendant Presidio Components,
`Inc.
`(“Presidio” or
`“defendant”), alleging infringement by Presidio of the
`following ATC patents: United States Patent No. 6,144,547
`(“the '547 Patent”), United States Patent No. 6,337,791
`(“the '791 Patent,” and together with the '547 Patent, the
`“patents-in-suit”), and United States Patent No. 6,992,879
`(“the '879 Patent”). (ECF No. 1, Compl.) Plaintiffs seek a
`determination that Presidio willfully infringed the patents-in-
`suit, and injunctive relief prohibiting Presidio from engaging
`in further infringement. 1 Plaintiffs also seek damages from
`the alleged infringement, including attorneys' fees and costs.
`
`After inter partes review (“IPR”), two claim construction
`hearings pursuant to Markman v. Westview Instruments,
`Inc., 517 U.S. 370 (1996), and cross-motions for summary
`
`judgment, the parties proceeded to trial. The court held
`a two-week trial in which plaintiffs tried to a jury their
`allegations that defendant infringed the patents-in-suit, and
`that it infringed the '791 Patent willfully. (See Minute Entries
`dated 6/10/2019 to 6/21/2019.) At trial, defendant presented
`evidence related to two defenses it now asserts for decision
`by the court: (1) that the '547 Patent was invalid because the
`claim term “negligibly over a top surface” was indefinite; and
`(2) that plaintiff had waived its right to sue for infringement of
`the '791 Patent. (See ECF No. 157, Prop. Jt. Pretrial Order 4.)
`Presently before the court is the parties' post-trial briefing on
`defendant’s asserted invalidity defense and equitable defense
`of waiver. (See ECF No. 206-1, Def. Mem.; ECF No. 207,
`Pls.' Opp. (“Opp.”); ECF No. 208, Def. Reply (“Reply”).)
`
`For the reasons discussed below, the court finds that defendant
`has failed to prove by clear and convincing evidence that the
`claim term “negligibly over a top surface” rendered the '547
`Patent invalid for indefiniteness, or that plaintiff ATC had
`waived its right to sue under the '791 Patent.
`
`BACKGROUND
`
`The court assumes familiarity with the procedural and factual
`history of this case, as set forth most recently in the
`court’s pre-trial Memorandum and Order deciding the parties'
`respective expert evidentiary issues pursuant to Daubert v.
`Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), (ECF No.
`179, Mem. & Order on Daubert Mots. (“Daubert Order”)),
`and the court’s Memorandum and Order deciding the parties'
`respective motions in limine, (ECF No. 181, MIL Order).
`
`After a two-week trial, the jury found that Presidio had not
`established by clear and convincing evidence that the '791
`Patent was invalid as anticipated, as obvious, or as indefinite.
`(See ECF No. 201, Jury Verdict 6.) The jury also found that
`Presidio had not established by clear and convincing evidence
`that the '547 Patent was invalid as anticipated or obvious, or
`that the claim term “substantially L-shaped terminations” was
`indefinite. (Id. at 7-8.) The jury, however, found by clear and
`convincing evidence that the claim term “negligibly over a
`top surface of said device body” is indefinite. (Id. at 8.) The
`parties dispute whether this finding by the jury is a general
`verdict and what weight the court should give the verdict. (See
`DM 2; Opp. 4; Reply 2.) Presidio characterizes the verdict
`as a “general verdict” without explaining the effect, while
`plaintiffs argue the verdict is merely advisory and should be
`afforded no weight.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`American Technical Ceramics Corp. v. Presidio Components, Inc., Slip Copy (2019)
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`*2 The jury also returned a verdict for plaintiffs as to
`infringement, finding all the accused products infringed either
`the '547 Patent or the '791 Patent. (Jury Verdict 3-4.) The jury
`found, however, that Presidio did not willfully infringe the
`'791 Patent. (Id. at 5.) Finally, in determining damages for
`Presidio’s infringement of the patents-in-suit, the jury found
`plaintiffs were not entitled to an award of lost profits as to
`either of the patents-in-suit, but that plaintiffs were entitled to
`a reasonable royalty as to both patents, awarding $58,334.75
`as to the '547 Patent, and $680,647.00 as to the '791 Patent.
`(Id. at 9.)
`
`LEGAL STANDARD
`
`In this patent case the court applies the law of the Federal
`Circuit to patent issues, and the law of its regional circuit, the
`Second Circuit, to non-patent issues. In re Cambridge Biotech
`Corp., 186 F.3d 1356, 1368 (Fed. Cir. 1999); see also Coconut
`Grove Pads, Inc. v. Mich & Mich TGR, Inc., 222 F. Supp.
`3d 222, 250 n.6 (E.D.N.Y. 2016). Thus, questions regarding
`indefiniteness and waiver, for example, are governed by
`Federal Circuit law. The court applies the foregoing analysis
`to the parties' pending motions and objections.
`
`DISCUSSION
`
`Defendant requests the court adopt the jury’s verdict that
`the '547 Patent’s claim term “negligibly over a top surface
`of said device body” is indefinite. (DM 1.) Defendant also
`requests the court find that plaintiffs waived their rights to
`sue for infringement under the '791 Patent because they had
`actual knowledge of Presidio’s alleged infringement for more
`than a decade. (Id.) Plaintiffs oppose, arguing that the jury’s
`indefiniteness verdict was merely advisory, (Opp. 1-2), that
`the claim term is nevertheless definite, and that plaintiffs did
`not possess actual knowledge of infringement of the '791
`Patent as defendant argues, (id. at 21-28).
`
`I. Invalidity
`Defendant argues that the '547 Patent’s claim term “negligibly
`over the top surface” is indefinite as evidenced by the
`testimony of both parties' experts and confirmed by the jury’s
`verdict. (DM 1.) Defendant also argues at length that the jury’s
`invalidity verdict represents a “general verdict” as “the jury
`was instructed to apply the law as provided by the Court”
`
`to the facts of the case. (Id. at 3 (citing Anderson Grp. LLC
`v. City of Saratoga Springs, 805 F.3d 34, 33 n.7 (2d Cir.
`2015)).) The jury found, defendant argues, that no reasonably
`certain standard existed for determining what constituted
`a “negligible” amount of termination material. (DM 5.)
`According to defendant, the trial evidence demonstrated by
`clear and convincing evidence that nothing in the '547 Patent
`informs a person of skill in the art (“POSITA”) regarding the
`limit or scope of the claim term. (Id.)
`
`Plaintiffs respond that the claim term’s scope is defined
`with reasonable certainty by the '547 Patent’s intrinsic
`record. (Opp. 1.) That is, the claim language “substantially
`L-shaped,”
`the distinguished prior art and example
`embodiments, and the patent’s prosecution history, support a
`finding of definiteness in light of Federal Circuit authority.
`Plaintiffs further argue that the jury’s verdict was advisory
`and that Presidio’s trial conduct violated the court’s in limine
`orders and thus compromised the jury’s verdict.
`
`Whether or not the verdict is characterized as general because
`the jury applied the law of invalidity to the facts of the case,
`the court must adopt the verdict in order for it to become
`binding. Indeed, there can be no confusion over how the
`parties intended to try defendant’s indefiniteness defense, and
`plaintiffs cite to a number of examples of representations
`by defendant. Most notable is defense counsel’s statements
`at the court’s Final Pretrial Conference, characterizing the
`jury’s verdict as to indefiniteness as advisory and indicating
`the court’s decision “would only come after the advisory
`verdict.” (ECF No. 207-2, Pls.' Ex. 3, Pretrial Conf. Tr. 27. 2 )
`Moreover, the parties' Joint Proposed Pretrial Order indicated
`Presidio’s defense of indefiniteness may need to be resolved
`by the court. (Jt. Prop. Pretrial Order 4.) Though the jury
`was instructed on the law of indefiniteness, and the court
`affords its verdict some weight, the court must nevertheless
`determine for itself whether defendant met its burden by clear
`and convincing evidence that the claim term “negligibly over
`a top surface” is indefinite.
`
`A. Legal Standard
`*3 “[A] patent is invalid for indefiniteness if its claims,
`read in light of the specification delineating the patent,
`and the prosecution history, fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the
`invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.
`Ct. 2120, 2124 (2014). Further, patents enjoy a “presumption
`of validity, a presumption not to be overthrown except by
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`clear and cogent evidence.” Microsoft Corp. v. I4I Ltd. P’ship,
`564 U.S. 91, 101 (2011) (quoting Radio Corp. of Am. v. Radio
`Eng'g Labs., 293 U.S. 1, 2 (1934)); see also 35 U.S.C. §
`282(a) (providing that a patent and each of its claims “shall
`be presumed valid,” and “[t]he burden of establishing the
`invalidity of a patent or any claim thereof shall rest on the
`party asserting such invalidity”). Thus, invalidity, including
`by reason of indefiniteness, must be proven by clear and
`convincing evidence. Microsoft, 564 U.S. at 95.
`
`The standard for definiteness affords some leeway for the
`“inherent limitations of language.” Teva Pharms. USA, Inc.
`v. Sandoz, Inc., 789 F.3d 1335, 1340–41 (Fed. Cir. 2015).
`“Some modicum of uncertainty is the ‘price of ensuring the
`appropriate incentives for innovation.’ ” Nautilus, 134 S. Ct.
`at 2128 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo
`Kabushiki Co., 535 U.S. 722, 732 (2002)). On the other hand,
`“a patent must be precise enough to afford clear notice of what
`is claimed, ‘thereby apprising the public of what is still open
`to them.’ ” Id. at 2129 (alteration omitted) (quoting Markman,
`517 U.S. at 373) (internal quotation marks omitted).
`
`Whether a claim term is indefinite is a question of law. Teva
`Pharms., 789 F.3d at 1341 (quoting Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1365-66 (Fed. Cir. 2011)). A
`particular term’s significance or meaning in the industry, to
`one of skill in the art, is a factual issue, however. Id. at 1342
`(“Understandings that lie outside the patent documents about
`the meaning of terms to one of skill in the art or the science
`or state of the knowledge of one of skill in the art are factual
`issues.”).
`
`The Federal Circuit has found a claim term indefinite where
`the patent’s intrinsic record did not disclose, with reasonable
`certainty, the particular method to be used for determining
`whether the term was satisfied. See Dow Chem. Co. v.
`NOVA Chem. Corp., 803 F.3d 620, 633 (Fed. Cir. 2015). For
`example, in Teva Pharms., 789 F.3d 1335, 1340–41 (Fed.
`Cir. 2015) the Federal Circuit found the relevant patents
`indefinite, as the patents did not specify how to calculate
`a measurement when there were admittedly multiple ways
`to do so that yielded different results. Teva Pharms., 789
`F.3d at 1344-45. Thus, claim terms must “ ‘provide objective
`boundaries for those of skill in the art’ when read in light
`of the specification and the prosecution history.” Liberty
`Ammunition v. United States, 835 F.3d 1388, 1395 (Fed. Cir.
`2016); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
`1370 (Fed. Cir. 2014). “Claim language employing terms of
`degree has long been found definite where it provided enough
`
`certainty to one of skill in the art when read in the context of
`the invention.” Nautilus, 783 F.3d at 1378.
`
`B. Findings of Fact
`Generally, the court is required to make findings of fact
`on an action tried without a jury or with an advisory jury
`pursuant to Federal Rule of Civil Procedure 52. As discussed
`above, however, the question of indefiniteness is a question
`of law that requires the court consider the intrinsic record of
`a patent. Teva Pharms., 789 F.3d at 1342 (“A party cannot
`transform into a factual matter the internal coherence and
`context assessment of the patent simply by having an expert
`offer an opinion on it.”). While “[e]xperts may explain terms
`of art and the state of the art at any given time, ... they cannot
`be used to prove the legal construction of a writing.” Id. at
`1339.
`
`*4 The parties offered testimony at trial from their respective
`experts, each a purported POSITA, concerning whether
`a POSITA could determine the scope of the claim term
`“negligibly over a top surface.” While the experts' opinions
`were properly admitted under Federal Rule of Evidence
`702, the question of indefiniteness is one of law left for
`the court to decide. The parties agree that answering the
`legal question of indefiniteness requires the court to look
`to the intrinsic record, and apparently do not dispute what
`comprises the intrinsic record. The factual testimony the
`parties offered concerned only the meaning, if any, a POSITA
`would assign to the terms “negligible” or “small,” and it is
`undisputed that neither phrase is a term of art. (Tr. 1817:1-9
`(Randall Testimony); Tr. 2255:22-25 (Shanfield Testimony).)
`Moreover, the parties' respective experts offered various
`opinions of whether the claim term “negligibly over a top
`surface” informed a POSITA as to the scope of the claimed
`invention. The court need not repeat or make factual findings
`regarding these offered opinions. The only factual finding
`the court must make regarding indefiniteness, as supported
`by trial testimony, is that the terms “negligibly” and “small”
`“ha[ve] no default meaning to one of skill in the art.” Teva
`Pharms., 789 F. 3d at 1341.
`
`C. Application
`
`1. Indefiniteness
`
`The parties generally do not dispute the law governing
`indefiniteness, only its application to the facts adduced at
`trial. Indeed, both plaintiffs and defendant appear to agree
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`American Technical Ceramics Corp. v. Presidio Components, Inc., Slip Copy (2019)
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`that courts look to the patents' intrinsic record, which includes
`the patent’s claims, specifications, and prosecution history, in
`determining whether the claim term informs a POSITA of the
`claim term’s scope with reasonable certainty. (See, e.g., DM
`4; Opp. 3.) The parties dispute amounts to whether defendant
`can point to clear and convincing evidence in the record that
`the claim term “negligibly over a top surface” is indefinite.
`The court finds that it has not.
`
`In deciding the parties' cross-motions for summary judgment,
`the court denied defendant’s motion as to the invalidity of the
`'547 Patent, finding that a genuine dispute of material fact
`existed. At summary judgment, defendant argued, as it does
`here, that the claim term “negligibly over a top surface” was
`indefinite and that no reasonable jury could find otherwise.
`(SJ Order 41-42.) The court, however, found that plaintiffs
`proffered sufficient evidence in the form of Dr. Shanfield’s
`expert report that the claim terms were not indefinite. (Id. at
`42-43.) The court also noted that both the PTAB and the court
`necessarily construed the term “negligibly over a top surface”
`in construing the '547 Patent’s claims and in conducting inter
`partes review. (Id. at 43.)
`
`The court construed “negligibly over a top surface” to mean
`“a small amount of termination material is formed on a top
`surface of the device body.” (Cl. Constr. Order 22.) Defendant
`argues that claim terms such as “small” and “large” are
`routinely found indefinite, citing to several district court cases
`from other circuits. (DM 5.) Plaintiffs point out, however, that
`claims using terms of degree are definite when the patent’s
`context informs a POSITA of the scope of the claims with
`reasonable certainty, citing to Nautilus, 783 F.3d at 1378.
`(Opp. 3.) As the parties agree, the court must look to the
`patent’s intrinsic record to determine definiteness, aided by
`the evidence presented at trial. Defendant’s citations to district
`court cases cannot establish a rule that terms of degree, like
`“small,” are generally found indefinite. Without citation to or
`an explanation of the intrinsic records of the patents at issue
`in those cases, defendant’s proposition of law is hollow and
`offers no analogous support. Analyzing claim terms alone,
`without the aid of the intrinsic record, is not helpful in
`determining whether the claim term at issue in this case is
`indefinite.
`
`In supporting its case for indefiniteness, defendant relies
`almost exclusively on trial or deposition testimony and
`on expert reports by the parties' respective experts and
`purported POSITAs. As the court noted in deciding the
`parties' summary judgment motions, there is at least a dispute
`
`as to whether the claim term is indefinite as the parties have
`both offered experts at trial on this issue, unsurprisingly
`offering competing conclusions. Defendant argues that there
`is no limit specified in the patent’s intrinsic record, as
`evidenced by testimony of the parties' respective experts at
`trial. Defendant points to the testimony of defendant’s expert,
`Dr. Randall; of plaintiffs' validity expert, Dr. Shanfield; and
`of plaintiffs' Rule 30(b)(6) corporate designee, Mr. Ritter.
`(DM 6.) Defendant cites this testimony to argue that skilled
`artisans, purported POSITAs, could not identify the scope of
`the terms “negligibly” or “small,” and that the patent itself
`offers no limitation for the terms.
`
`*5 The parties' experts, as noted above, at least agreed the
`terms “negligible” and “small” were not industry terms of art.
`(Tr. 1817:1-9; 2255:22-25.) Dr. Randall, defendant’s expert,
`testified that a POSITA would not know the scope of the terms
`“small” or “negligible.” (Tr. 1817:10-15.) He also testified
`that the '547 Patent contained no “numerical limitation of
`negligibly or small,” (Tr. 1817:21-24), though the court had
`already concluded that a numerical limitation is not required
`to construe this claim term.
`
`Defendant next points to Dr. Shanfield’s deposition testimony
`concerning the variability of solder creep, as contemplated
`in the '547 Patent. (ECF No. 206-2, Def.'s Ex. 5, Shanfield
`Dep. 26.) Dr. Shanfield acknowledged there was nothing
`in the patent that specified the extent to which the top
`termination material of the claimed capacitor would vary
`as a result of solder creep. (Id.) Defendant argues that this
`potential variability, and Dr. Shanfield’s inability to define its
`range, are evidence that the top termination has “no defined
`dimension.” (DM 7 (citing Randall Rept. ¶ 594).)
`
`Defendant also cites to plaintiffs' expert Dr. Hillman’s
`testimony. At trial, Dr. Hillman declined to comment on
`what amount of termination material would be “significant”
`and what amount would be “small.” (Tr. 934-46.) Even
`if Dr. Hillman could not “offer an explanation of the
`difference between” a “ ‘small’ amount of termination from
`a ‘significant’ amount of termination” material, as defendant
`argues, the court is not bound by his inability. (DM 8 (citing
`Tr. 934-936).) Notably, Dr. Hillman framed his understanding
`of the term negligibly using the relative amounts of
`termination material, comparing the top termination to the
`bottom termination, to determine if the '547 Patent claims
`were met in evaluating the accused products. (See, e.g., Tr.
`940: 7-12.) Though he did not articulate as much at trial,
`this method is similar to the relational comparison required
`
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`by the claim term “substantially L-shaped,” which the court
`has previously found further clarifies the scope of the term
`“negligibly over a top surface” and obviated the need for any
`further construction or limitation. Dr. Shanfield explained as
`much at trial. (Tr. 2217-2218.)
`
`Though defendant relies heavily on expert testimony to
`support its indefiniteness case, plaintiffs' experts offered
`ample, credible, and competing opinions on the question of
`definiteness. In light of these competing, credible views, the
`trial testimony alone did not establish by a preponderance of,
`let alone by clear and convincing, evidence, that the claim
`term fails to inform a POSITA of the invention’s scope to a
`reasonable certainty. Thus, as it must, the court turns to the
`intrinsic record.
`
`Defendant’s only real citation to the intrinsic record is the '547
`Patent’s prosecution history and statements made by plaintiffs
`before the Patent and Trial Appeal Board (“PTAB”). (DM 8.)
`Plaintiffs' counsel represented that the “negligible top-land
`termination” could not “exceed 0.05 millimeters.” (ECF No.
`206-2, Def.'s Ex. 9, PTAB Tr. 50.) Similarly, defendant argues
`that Dr. Shanfield, plaintiffs' expert, testified at his deposition
`that the top-land terminations were “extremely likely not to
`have a dimension exceeding .1 millimeters” or a dimension
`of 0.1 millimeters. (DM 9 (citing ECF No. 206-2, Def.'s Ex.
`10, Shanfield Dep. 53).)
`
`Plaintiffs largely do not respond with citations to the trial
`transcript. Instead, plaintiffs rely heavily on the patent’s
`claim term “substantially L-shaped terminations” to argue
`that the scope of “negligibly” is reasonably certain because
`it “must operate to make the termination as a whole appear
`‘substantially L-shaped.’ ” (Opp. 3.) Plaintiffs also argue
`that the court relied on the “substantially L-shaped” claim
`language to construe the term “negligibly.” (Opp. 4 (citing
`Cl. Constr. Order 22).) Similarly, at summary judgment, the
`court noted that it previously construed the term “negligibly”
`without difficulty, and that the PTAB understood the scope of
`the term when it authorized the patent to issue. (SJ Order 43.)
`
`*6 Plaintiffs next cite to the '547 Patent’s specification and
`prosecution history to provide the upper and lower bounds
`of “negligibly.” (Opp. 5.) Plaintiffs first point to the patent’s
`specification which contrasted the '547 Patent with prior
`art capacitors that had top and bottom lands of the same
`size, likely referring to U-shaped terminations. (Id. (citing
`'547 Patent col.5 l.43).) As a lower bound, plaintiffs cite to
`the patent’s prosecution history which “distinguishe[d] the
`
`L-shaped terminations of the Galvagni prior art,” a patent
`claiming L-shaped terminations. Plaintiffs note that the patent
`examiner amended the '547 Patent’s claim terms finding that
`Galvagni “d[id] not disclose a portion of the terminations
`negligibly over the top surface.” (Opp. 5 (citing Pls.' Ex. 2,
`Examiner’s Am. 6-7).) Plaintiffs argue that such amendments
`weigh in favor of a finding of definiteness. (Id. at 6 (citing
`Tinnus Enters., LLC v. Telebrands Corp., 733 F. App'x 1011,
`1020 (Fed. Cir. 2018)).)
`
`Defendant appears, once again, to urge on the court that a
`specific limit is required to render “negligibly” a definite
`term. Though defendant appears to have abandoned its
`argument that a numerical limitation is required, the court
`has already declined to read in a numerical limitation in
`construing the term. Defendant’s only citation to the intrinsic
`record is the inter partes review transcript where plaintiffs'
`counsel stated 0.05 millimeters served as an upper limit of the
`negligible top-land termination material. The court declined,
`however, to import this specific limitation during claim
`construction and again declines to find that the prosecution
`history renders the scope of the claim indefinite to a POSITA.
`
`The '547 Patent does, however, specify a reasonably certain
`limitation that the defendant seeks. That is, a negligible top
`termination must comprise a termination that is “substantially
`L-shaped.” The jury found this term informed a POSITA as
`to the scope of the claimed invention to reasonable certainty;
`defendant does not dispute this finding or further challenge
`it. Defendant only earnestly meets plaintiffs' argument that
`“substantially L-shaped” provides an objective criterion by
`arguing “negligible” and “small” are not defined as any
`specific amount of termination material on the top surface that
`is less than the bottom surface. (Reply 7-8.) Such specificity
`is not required.
`
`It is undisputed that “negligible” and “small” are not terms
`of art that clarify the scope of the claim term at issue. It
`is also undisputed, however, that L-shaped and U-shaped
`terminations are terms of art. (See Tr. 2219:1-2.) Still, industry
`terms of art are not necessary to clarify the scope of the
`claim term negligibly, as the term, read in the context of the
`patent as a whole, must contribute to terminations that are
`substantially L-shaped. Any more than a negligible amount
`of top termination material, would render the termination not
`“substantially L-shaped,” as the court has repeatedly found.
`
`Defendant’s argument requires reading the term “negligibly”
`in a vacuum. Federal Circuit precedent, however, does not
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`permit this analysis without the benefit of context. Indeed, in
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, the
`court found that the claim language, coupled with illustrations
`and specifications of the patent at issue provided “sufficient
`clarity to skilled artisans as to the bounds of th[e] disputed
`term.” 783 F.3d at 1382-83. Though the term negligibly itself
`is indeed vague as to its bounds, reading the claim term in the
`context of the intrinsic record provides a ready limitation. The
`court finds that the '547 Patent’s claim term “negligibly over a
`top surface” informs a POSITA as to the scope of the claimed
`invention to a reasonable certainty. Defendant did not carry
`its burden by clear and convincing evidence.
`
`2. Misconduct
`
`*7 Before the court considers defendant’s waiver argument,
`plaintiffs' argument that the court should not afford the
`advisory verdict any weight because of misconduct at
`trial by Presidio bears some discussion. (Opp. 12.) As
`an initial matter, the court ultimately did not consider
`defendant’s alleged misconduct in reaching its decision on
`indefiniteness. According to plaintiffs, Presidio violated the
`court’s evidentiary orders throughout trial by repeatedly
`suggesting “negligibly” had a numerical limitation and
`improperly objecting during plaintiffs' witness examination.
`(Id.) Plaintiffs argue this misconduct confused and misled
`the jury. Plaintiffs contend Presidio’s efforts contravened
`the court’s construction of the claim term, which included
`no numerical limit, (Cl. Constr. Order 22), and violated
`the court’s in limine rulings, (MIL Order 10-11). Although
`Presidio’s counsel was admonished for statements made
`during opening statements, plaintiffs contend Presidio
`continued in this vein throughout trial. For example,
`counsel for Presidio repeatedly asked, over objection,
`plaintiffs' expert Dr. Hillman whether he had measured top
`termination material on Presidio’s BB capacitors. (Opp. 14
`(citing Tr. 865:17-21; 871:21-872:1; 873:7-10; 934:22-935:7;
`943:7-25).) Presidio’s examination of its own expert witness,
`Dr. Randall, also drew a curative instruction from the
`court that the jury “may not apply the numerical values”
`found in the specifications of the '547 Patent in its
`infringement analysis of the top termination material. (Tr.
`1593:22-1605:12.) Finally, plaintiffs point to Presidio’s series
`of objections during plaintiffs' expert Dr. Shanfield’s direct
`examination, in which Presidio’s counsel argued that the
`court’s in limine orders precluded any relational analysis
`comparing the extent of the top and bottom terminations,
`which the court concluded it did not. (Opp. 15 (citing Tr.
`
`2192:2-2193:22; 2213:17-2214:25).) While much of this final
`exchange occurred at sidebar, plaintiffs contend Presidio’s
`objections at least distracted the jury. (Opp. 16.)
`
`Presidio’s conduct at trial indeed pushed the limits of the
`court’s in limine rulings and claim construction, though
`the court cannot say it crossed the line into affirmative
`misconduct, but, rather, came close. Counsel for Presidio
`appeared, at times, either to disregard or not to understand
`the court’s rulings on plaintiffs' objections to questions
`eliciting testimony regarding termination measurements and
`numerical limits. These interruptions were at least distracting
`to the jury, and the litigants, and disruptive to the flow of trial,
`but it is not clear they misled or confused the jury such that
`the court’s curative instructions were ineffective. In any event,
`the court does not find this trial conduct so infected the jury’s
`advisory verdict such that the court must completely disregard
`it.
`
`II. Waiver
`Defendant next argues that the court should find plaintiffs
`waived their right to sue for infringement of the '791
`Patent by failing to enforce their rights for more than a
`decade after becoming aware of the alleged infringement.
`Defendant contends that plaintiffs analyzed Presidio’s BB
`capacitors as early as 2002 and determined that those
`capacitors were covered by ATC’s patents. (DM 11.) Plaintiffs
`respond that, although they had determined Presidio’s BB
`capacitors contained vias, no witness possessed the requisite
`knowledge for the court to find, by clear and convincing
`evidence, that plaintiffs intentionally relinquished their rights
`to enforce the '791 Patent “with full knowledge of the material
`facts.” Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004,
`1019-1020 (Fed. Cir. 2008).
`
`The Federal Circuit has suggested the applicability of two
`equitable doctrines of waiver in patent actions: “true waiver”
`and “implied waiver.” Qualcomm, 548 F.3d at 1020 (Fed.
`Cir. 2008). Implied waiver applies where a patent owner
`has intentionally failed to disclose the existence of a patent
`“in the face of a duty to speak,” and is inapplicable to the
`instant action. Id. at 1021. The Federal Circuit has further
`suggested, but does not appear to have expressly endorsed
`the view, that “true waiver” consists of a “voluntary or
`intentional relinquishment of a known right.” Id. at 1019.
`Additionally, although the Federal Circuit does not appear
`to have expressly ruled on the standard of proof required
`for waiver, it has upheld a finding of implied waiver where
`there was “clear and convincing evidence.” See id. at 1021-22.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
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`

`

`Case 1:14-cv-02396-PGG-SN Document 201-1 Filed 11/26/19 Page 8 of 10
`American Technical Ceramics Corp. v. Presidio Components, Inc., Slip Copy (2019)
`2019 WL 5212802
`
`Defendant does not specify which doctrine it believes applies
`to plaintiffs' conduct, though the parties appear to dispute
`whether plaintiffs held full knowledge of its rights and
`nevertheless intentionally waived, referring to “true waiver.”
`Defendant does not argue as to what burden applies to its
`waiver defense and plaintiffs assert that the burden is clear
`and convincing without citation to legal authority.
`
`The court previously denied plaintiffs' motion for summary
`judgment based on defendant’s asserted equitable defense of
`waiver. The court found that plaintiffs had not demonstrated
`an absence of disputed material facts concerning defendant’s
`equitable defense of waiver as to the '791 Patent. (SJ
`Order 76.) That is,