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

Filing 577

ORDER granting 576 Joint Motion to dissolve August 13, 2018 permanent injunction. Signed by Judge Marilyn L. Huff on 11/09/2020. (jpp)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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PRESIDIO COMPONENTS, INC.,
Plaintiff,

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Case No.: 14-cv-02061-H-BGS
ORDER GRANTING JOINT
MOTION TO DISSOLVE AUGUST
13, 2018 PERMANENT INJUNCTION

v.
AMERICAN TECHNICAL CERAMICS
CORP.,

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[Doc. No. 576.]

Defendant.

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On September 2, 2014, Plaintiff Presidio filed a complaint for patent infringement

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against Defendant ATC, alleging infringement of U.S. Patent No. 6,816,356 (“the ’356

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patent”). (Doc. No. 1, Compl.) The ’356 patent is entitled “Integrated Broadband Ceramic

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Capacitor Array.” U.S. Patent No. 6,816,356 B2, at 1:1-2 (filed Apr. 14, 2003). The patent

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issued on November 9, 2004 and claimed priority to an application filed on May 17, 2002.

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See id. (See Doc. No. 276-3 ¶ 4; Doc. No. 356-1 at 5.)

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On December 8, 2015, the United States Patent and Trademark Office issued a

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reexamination certificate for the ’356 patent, amending certain claims of the patent. 1 (Doc.

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The PTO previously issued a reexamination certificate for the ’356 patent on September 13, 2011.
(Doc. No. 170-1, FAC Ex. 1.) This reexamination certificate did not alter any of the claims at issue in this
action. (Id.)
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No. 170-2, FAC Ex. 2.) On December 22, 2015, Presidio filed a first amended complaint,

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alleging infringement of the ’356 patent as amended by the reexamination certificate.

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(Doc. No. 170, FAC.) Specifically, Presidio alleged that ATC’s 550 line of capacitors

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infringes claims 1, 3, 5, 16, 18, and 19 of the ’356 patent. (Id. ¶ 26.) On December 22,

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2015, ATC filed a second amended answer and counterclaims to the first amended

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complaint, adding an affirmative defense of absolute and equitable intervening rights and

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an affirmative defense and counterclaim of unenforceability due to inequitable conduct.

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(Doc. No. 171.)

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On January 12, 2016, the Court denied Presidio’s motions for: (1) summary

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judgment of definiteness; (2) summary judgment of infringement; (3) summary judgment

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of ATC’s equitable affirmative defenses; and (4) summary judgment of no acceptable non-

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infringing alternatives. (Doc. No. 210.) In the order, the Court also denied ATC’s motions

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for: (1) partial summary judgment of non-infringement; (2) summary judgment of

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indefiniteness; and (3) summary judgment of no willful infringement. (Id.) On February

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10, 2016, the Court granted ATC’s motion for summary judgment of its affirmative defense

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of absolute intervening rights and held that Presidio is entitled to infringement damages

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only for the time period following the issuance of the reexamination certificate on

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December 8, 2015. (Doc. No. 234 at 28.) In that order, the Court also dismissed with

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prejudice ATC’s affirmative defense and counterclaim that the ’356 patent is unenforceable

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due to inequitable conduct. (Id. at 33.)

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The Court held a jury trial on Presidio’s infringement claim beginning on April 5,

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2016. (Doc. No. 297.) On April 18, 2016, the jury returned a verdict finding direct

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infringement and induced infringement of claims 1, 3, 5, 16, 18, and 19 of the ’356 patent

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by ATC as to all of the accused products in the action: the 550L, the 550S, the 550U, and

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the 550Z capacitors. (Doc. No. 328 at 2-3.) In addition, the jury found that Presidio had

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proven by clear and convincing evidence that ATC’s infringement of the asserted claims

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was willful. (Id. at 4.) The jury awarded Presidio $2,166,654 in lost profit damages. (Id.)

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On June 17, 2016, the Court issued a memorandum decision finding in favor of
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Presidio and against ATC on all issues submitted to the Court, including indefiniteness,

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equitable intervening rights, equitable estoppel, and laches. (Doc. No. 368.) On June 17,

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2016, the Court entered judgment in favor of Presidio on all causes of action and awarded

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Presidio $2,166,654 in damages. (Doc. No. 369.)

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Following the Court’s entry of judgment, the parties filed various post-trial motions,

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including Presidio’s motion for a permanent injunction. (Doc. No. 373.) On August 17,

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2016, the Court issued an order ruling on the parties’ post-trial motions. (Doc. No. 440.)

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In the order, the Court denied ATC’s Rule 50(b) motions for judgment as a matter of law

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and Rule 59(e) motions for a new trial. (Id. at 7-27.) The Court also granted Presidio’s

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motion for a permanent injunction; denied Presidio’s motion for enhanced damages and

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attorney’s fees; and granted Presidio’s motion for supplemental damages and interest. (Id.

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at 27-48.) In granting Presidio’s motion for a permanent injunction, the Court denied

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ATC’s request to stay the injunction pending appeal, but included a 90-day sunset

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provision in the injunction. (Id. at 38-39.) On August 27, 2016, the Court entered the

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permanent injunction. (Doc. No. 441.)

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The parties cross-appealed to the Federal Circuit. (Doc. Nos. 443, 453.) On October

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21, 2016, the Federal Circuit granted a stay of the injunction until March 17, 2017 with

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respect to ATC’s customers that purchased the infringing capacitors prior to June 17, 2016.

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Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1375 (Fed. Cir.

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2017) (“Presidio II”). On November 21, 2017, the Federal Circuit issued an opinion in the

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above case: (1) affirming the Court’s finding of definiteness, grant of absolute intervening

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rights, and denial of enhanced damages; (2) reversing the award of lost profits and

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instructing that on remand, the damages award should be limited to a reasonable royalty,

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and a new trial should be conducted as necessary to determine the reasonable royalty rate;

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and (3) vacating the permanent injunction and remanding with instructions to consider the

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relevant evidence and determine whether Presidio has established irreparable injury. Id. at

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1384.

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Following the Federal Circuit’s decision on appeal in this case, on February 14,

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2018, the Court held an appeal mandate hearing and a telephonic case management

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conference. (Doc. No. 464.) On February 16, 2018, the Court issued a scheduling order

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setting forth dates and deadlines related to a damages retrial. (Doc. No. 466.) On March

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22, 2018, the Court issued a scheduling order setting forth dates and deadlines related to

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Presidio’s renewed motion for a permanent injunction. (Doc. No. 470.)

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On April 23, 2018, the Court granted the parties’ joint motion for the entry of

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judgment on the reasonable royalty rate for the accused products, and the Court vacated

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the scheduled damages retrial. (Doc. No. 485.) On August 13, 2018, the Court granted

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Presidio’s renewed motion for a permanent injunction, and the Court entered a permanent

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injunction. (Doc. Nos. 517, 518.)

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On August 15, 2018, the Court entered an amended judgment in favor of Presidio.

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(Doc. No. 519.) On September 6, 2018, Presidio filed a notice of appeal to the Federal

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Circuit. (Doc. No. 520.) On September 12, 2018, ATC also filed a notice of appeal to the

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Federal Circuit. (Doc. No. 521.) On October 30, 2018, the Court granted the parties’ joint

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motion for entry of a second amended judgment, and the Court entered a second amended

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judgment in favor of Plaintiff Presidio on all causes of action and awarded Presidio a

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reasonable royalty rate of $0.25 per unit for each 550 capacitor sold by Defendant from

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December 8, 2015 through August 16, 2018 in the amount due to Plaintiff by Defendant of

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$4,352,301, plus interest and costs as previously awarded by the Court and as allowed by

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law. (Doc. Nos. 537, 538.)

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On November 13, 2019, the Federal Circuit summarily affirmed the Court’s

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judgment and the Court’s permanent injunction. (Doc. No. 570.) On January 10, 2020,

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the Court held an appeal mandate hearing. (Doc. No. 569.) ATC has represented that it

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satisfied the final judgment in this action in full on January 15, 2020. (Doc. No. 573 at 8.)

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By the present motion, the parties jointly move for the Court to dissolve the August

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13, 2018 permanent injunction. (Doc. No. 576.) In the motion, the parties explain that

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they “have resolved fully and finally their disputes related to, among other things, the ’356
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patent and the 550 series of capacitors.” (Id. at 2.) In light of this resolution, the parties

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have agreed to release ATC from the August 13, 2018 permanent injunction and request

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that the Court enter an order dissolving the injunction. (Id.) The parties argue that, given

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the parties’ stipulations and agreements, the permanent injunction should be dissolved

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pursuant to Federal Rule of Civil Procedure 60(b)(5) or 60(b)(6). (Id.) As such, for good

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cause shown, the Court grants the parties’ joint motion, and the Court dissolves the August

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13, 2018 permanent injunction. See Fed. R. Civ. P. 60(b)(5); SEC v. Coldicutt, 258 F.3d

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939, 942 (9th Cir. 2001).

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IT IS SO ORDERED.
DATED: November 9, 2020
MARILYN L. HUFF, District Judge
UNITED STATES DISTRICT COURT

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