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

Filing 181

ORDER: For the reasons discussed in the attached Memorandum & Order, the parties' respective 164 169 motions in limine are granted in part and denied in part. Additionally, the court rules herein on the parties' remaining objections as detailed in 174 175 177 the parties' recent submissions. Ordered by Judge Kiyo A. Matsumoto on 5/31/2019. (Mazzurco, Vincent)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
--------------------------------------- X
:
AMERICAN TECHNICAL CERAMICS CORP.
:
and AVX CORPORATION,
:
:
Plaintiffs,
:
:
-against:
:
PRESIDIO COMPONENTS, INC.,
:
:
:
Defendant.
X
---------------------------------------

MEMORANDUM & ORDER
14-CV-6544(KAM)(GRB)

MATSUMOTO, United States District Judge:
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

Plaintiffs declined to proceed with their action as to all claims of
the ‘879 Patent which were cancelled by the U.S. Patent and Trademark Office.

1

1

seek damages from the alleged infringement, including attorneys’
fees and costs.
Presently before the court are the parties’ respective
motions in limine seeking various evidentiary rulings in advance
of trial.

(See ECF No. 164-1, Pls.’ Mem. Supp. Mot. Lim.

(“Pls.’ MIL”); ECF No. 165, Def.’s Opp’n Pls.’ Mot. Lim.
(“Def.’s Opp.”); ECF No. 166, Pls.’ Reply; ECF No. 169, Def.’s
Mot. Lim. (“Def.’s MIL”); ECF No. 170, Pls.’ Opp’n Def.’s Mot.
Lim. (“Pls.’ Opp.”); ECF No. 171, Def.’s Reply.)

The court

addresses plaintiffs’ motions first, followed by defendant’s
motions.

The court also rules in this Order on various

objections made by the parties to the remaining exhibits listed
on the parties’ pre-trial exhibits lists, (see ECF Nos. 174-75),
but not covered by the court’s decisions on motions in limine. 2

(ECF No. 126, Mem. & Order on Cross-Motions for Summ. J. (“Summ. J. Order”);
see also ECF No. 116-2, Pl. Summ. J. Mot. 2 n.1.) Also, plaintiffs only seek
injunctive relief as to the ‘791 Patent. (See ECF No. 157, Jt. Proposed
Pretrial Order 3.)
2
On March 1, 2019, pursuant to the court’s pre-trial scheduling order,
the parties filed a proposed Joint Pre-Trial Order that included, among other
things, a list of each parties’ offered exhibits, and a corresponding lengthy
list of the opposing party’s objections. (See ECF No. 157.) This
submission, from both parties, was entirely unacceptable as it included
literally hundreds of objections to exhibits not submitted for the court’s
review, and with limited legal justification. (See Docket Order dated April
5, 2019.) As such, the court ordered the parties to meet, confer, and revise
their respective exhibits lists and resolve the bulk, if not all, of their
evidentiary disputes before submitting revised lists setting forth their
remaining objections with a paragraph explanation setting forth the basis for
their objection. (Id.) Accordingly, the parties filed their revised lists,
(ECF Nos. 174-75), and clarified one further issue in response to a court
order, (ECF No. 177). The parties’ revised submissions were very useful in
distilling the essential evidentiary disputes between the parties and
preparing for an efficient and effective trial of the disputed issues in this
matter.

2

The court assumes familiarity with the procedural and
factual history of this case, as set forth most recently in the
court’s Memorandum and Order deciding the parties’ respective
expert evidentiary issues pursuant to Daubert v. Merrell Dow
Pharm., Inc., 509 U.S. 579 (1993).

(See ECF No. 179, Mem. &

Order on Daubert Mots. (“Daubert Order”).)
LEGAL STANDARD
“The purpose of an in limine motion is ‘to aid the trial
process by enabling the Court to rule in advance of trial on the
relevance of certain forecasted evidence, as to issues that are
definitely

set

for

trial,

interruption of, the trial.’”
141 (2d Cir. 1996).

without

lengthy

argument

at,

or

Palmieri v. Defaria, 88 F.3d 136,

“Evidence should be excluded on a motion in

limine only when the evidence is clearly inadmissible on all
potential grounds.”

United States v. Paredes, 176 F. Supp. 2d

179, 181 (S.D.N.Y. 2001).

Further, a district court’s ruling on

a motion in limine is preliminary and “subject to change when the
case unfolds.”

Luce v. United States, 469 U.S. 38, 41 (1984).

The admissibility of evidence at trial is governed by
the Federal Rules of Evidence.

Federal Rule of Evidence (“FRE”

or “Rule”) 402 provides that all relevant evidence is admissible
except as otherwise provided by the Constitution, Act of
Congress, or applicable rule.

Fed. R. Evid. 402.

Rule 401

defines relevant evidence as that which “has any tendency to
3

make a fact more or less probable than it would be without the
evidence,” so long as “the fact is of consequence in determining
the action.”

Fed. R. Evid. 401.

The Second Circuit has

characterized the relevance threshold as “very low.”

See United

States v. White, 692 F.3d 235, 246 (2d Cir. 2012) (quoting
United States v. Al-Moayad, 545 F.3d 139, 176 (2d Cir. 2008)).
To be relevant, evidence need not prove a fact in issue by
itself, but only have “any tendency to make the existence of any
fact that is of consequence to the determination of the action
more probable or less probable than it would be without the
evidence.”

McKoy v. North Carolina, 494 U.S. 433, 440 (1990)

(quoting New Jersey v. T.L.O., 469 U.S. 325, 345 (1985)).
Applicable Law
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 and evidentiary
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 what is relevant to a lost profits
determination, for example, are governed by Federal Circuit law,
while questions generally pertaining to evidentiary issues,
estoppel, or preclusion, are governed by Second Circuit law.

4

Federal Rule of Evidence 403
In addition to the relevance of the evidence that the
parties seek to offer or exclude in their motions, several other
Federal Rules of Evidence (the “Rules”) bear on the court’s
determination of admissibility.

Evidence that is otherwise

admissible under the Rules is generally subject to the
probative-prejudice balancing analysis provided in Rule 403.
Rule 403 permits the exclusion of relevant evidence, “if its
probative value is substantially outweighed by a danger of . . .
unfair prejudice, confusing the issues, [or] misleading the
jury.”

Fed. R. Evid. 403.

District courts wield broad

discretion in making decisions under this probative-prejudice
balancing test.

See Fiacco v. City of Rensselaer, 783 F.2d 319,

327-28 (2d Cir. 1986); see also United States v. Abu-Jihaad, 630
F.3d 102, 131 (2d Cir. 2010) (“We review a district court’s
evidentiary rulings deferentially, mindful of its superior
position to assess relevancy and to weigh the probative value of
evidence against its potential for unfair prejudice.”).

“In

making a Rule 403 determination, courts should ask whether the
evidence’s proper value ‘is more than matched by [the
possibility] . . . that it will divert the jury from the facts
which should control their verdict.’”

Bensen v. Am. Ultramar

Ltd., No. 92-CV-4420, 1996 WL 422262, at *6 (S.D.N.Y. July 29,
1996) (quoting United States v. Krulewitch, 145 F.2d 76, 80 (2d
5

Cir. 1944)).

The court applies the foregoing analysis to the

parties’ pending motions and objections.
DISCUSSION
In the instant motions, plaintiffs move to preclude
defendant Presidio from: (1) referencing other litigations
between the parties; (2) referencing the parties’ inter partes
review (“IPR”) before the U.S. Patent and Trademark Office’s
(“USPTO”) Patent Trial and Appeal Board (“PTAB”); (3)
referencing proceedings before the USPTO involving patents other
than the patents-in-suit; (4) referencing patent claims that
have been dismissed from this case, namely the ‘879 Patent in
its entirety, and claim 1 of the ‘791 Patent; (5) referencing
the size and wealth of the parties; (6) relying on capacitors
that defendant has never produced; (7) offering evidence and
testimony concerning defendant’s equitable defense of waiver of
the ‘791 Patent; and (8) offering evidence and testimony that
the market for high-performance broadband capacitors was not a
two-supplier market.

(Pls.’ MIL 1.)

Defendant variously opposes plaintiffs’ motions but
concedes as to some as discussed below.

Additionally, defendant

moves to preclude plaintiffs from: (1) offering evidence or
argument relating to the PTAB’s IPR decisions; (2) offering
evidence relating to the issues tried by the court, specifically
plaintiffs’ request for a permanent injunction, enhanced
6

damages, and attorneys’ fees; (3) offering evidence or argument
concerning a patent’s presumption of validity; (4) offering
evidence or argument concerning plaintiffs’ alleged notice of
infringement to defendant prior to filing this lawsuit; (5)
offering evidence or argument related to plaintiffs’ allegations
of copying of the patents-in-suit; (6) offering evidence or
argument concerning any alleged willful infringement by Presidio
prior to May 6, 2002; (7) offering evidence or argument
concerning any alleged willful infringement conduct by Presidio
after this action commenced; (8) offering evidence or argument
that plaintiffs’ 500, 545L, and 550 capacitors are covered by
their own patents; (9) offering expert testimony not disclosed
in an expert report; (10) offering evidence or argument
concerning irrelevant testing by Dr. Hillman, plaintiffs’
technical expert; and (11) offering evidence or argument
concerning the relevant market based on irrelevant patents.
(See Def.’s MIL.)

Plaintiffs similarly oppose defendant’s

motions but concede as to some as outlined below.
PLAINTIFFS’ MOTIONS IN LIMINE
I.

Other Litigations Between the Parties
Plaintiffs move to preclude defendant from referring

to two prior litigations between the parties in the Southern
District of California, Presidio Components, Inc. v. Am. Tech.
Ceramics Corp., No. 08-cv-0335 (S.D. Cal. 2008) (“Presidio I”)
7

and Presidio Components, Inc. v. Am. Tech. Ceramics Corp., No.
14-cv-2061 (S.D. Cal. 2014) (“Presidio II”) concerning U.S.
Patent No. 6,816,356 (“the ’356 Patent”).

(Pls.’ MIL 3.)

Defendant concedes that the litigations involve a different
patent and different technology and arguments concerning the
same should be precluded.

(Def.’s Opp. 1.)

However, as

discussed in the court’s order disposing of the parties’ Daubert
motions, plaintiffs previously challenged defendant’s reliance
on lost profits judgments issued in both cases as irrelevant to
a lost profits determination in this case.
29-30.)

(See Daubert Order

The court has already ruled on this issue for the

reasons discussed in its previous order.

Thus, defendant’s

arguments in opposing this motion in limine are moot and
plaintiffs’ first motion in limine is GRANTED.

Neither party

shall make any reference to the parties’ other litigations.
II.

Inter Partes Review
Plaintiffs next move for the court to preclude

reference to, or evidence, testimony, or argument regarding, the
IPR proceedings concerning the patents-in-suit and the nowcancelled ‘879 Patent.

(Pls.’ MIL 7.)

Plaintiffs argue any

such evidence is irrelevant to the issues in this trial and
risks misleading the jury because of the different legal
standards employed during IPR pertaining to claim construction
and burdens of proof.

(Id.)

Defendant responds that
8

plaintiffs overreach because their motion would exclude relevant
evidence.

(Def.’s Opp. 5.)

That is, defendant argues IPR

proceedings comprise the file history of a patent, and that a
patentee cannot argue one way in support of patentability while
making contradictory arguments during an infringement action of
the same patent.

(Id.)

Plaintiffs first argue that IPRs entail different
legal standards that render the admitted evidence, analysis, and
conclusions irrelevant to a patent infringement case.
MIL 7.)

(Pls.’

For example, plaintiffs note, the PTAB and district

courts construe claim terms and consider patent validity using
different standards.

(Id. at 7-8.)

Plaintiffs further argue

that even if the underlying evidence or arguments presented
during IPR are deemed relevant, the disparate legal standards
would only serve to confuse the jury.

(Id. at 8.)

Plaintiffs

support this argument by citing to a number of non-binding
decisions where the trial court excluded reference to IPR
proceedings under FRE 403.

(Id.)

Defendant responds that plaintiffs’ motion is
overbroad and that the court should only preclude the final
decisions reached by the PTAB during IPR.

(Def.’s Opp. 5.)

Defendant relies on Aylus Networks, Inc. v. Apple Inc., 856 F.3d
1353, 1362 (Fed. Cir. 2017), for the proposition that statements
made by a patentee during IPR may be relied upon before the
9

district court to support a finding of disclaimer.

(Id.)

In

further support, defendant cites to two non-binding cases where
the district court declined to ban wholesale evidence and
argument presented at a related IPR proceeding, and
distinguishes plaintiffs’ cited authority.

(Id. at 6.)

Defendant’s argument for admission focuses on the
unfairness of permitting plaintiffs to make certain arguments
before the PTAB at IPR and contradictory arguments before this
court.

In Aylus Networks, defendant’s most apt case, the

Federal Circuit held that a patentee’s statements made during
IPR could form the basis of a prosecution disclaimer argument
during claim construction before the district court.
Networks, 856 F.3d at 1360-61.

Aylus

Plaintiffs respond that the

holding in Aylus Networks permits consideration of statements
made at IPR for the limited purpose of prosecution disclaimer
during claim construction hearings in the district court, but
not at trial.

(Pls.’ Reply 3.)

Moreover, plaintiffs argue,

Presidio mischaracterized the various court’s respective
decisions regarding evidence from reexamination proceedings.
(Id. at 4.)
It is well within the court’s discretion to admit or
preclude under FRE 403 evidence relating to IPR proceedings.
See Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed.
Cir. 2009) (“The district court did not abuse its discretion in
10

concluding that the prejudicial nature of evidence concerning
the ongoing parallel reexamination proceeding outweighed
whatever marginal probative or corrective value it might have
had in this case.”).

Aylus Networks is not to the contrary—that

case plainly considered claim construction and the doctrine of
prosecution disclaimer, not the broader admissibility of
evidence stemming from IPR in general.

The Federal Circuit has

explained that prosecution disclaimer “precludes patentees from
recapturing through claim interpretation specific meanings
disclaimed during prosecution.”
1359.

Aylus Networks, 856 F.3d at

But defendant does not explain why prosecution disclaimer

is an issue for trial, and the court has already construed the
disputed claim terms in this case.

Defendant’s attempt to

distinguish certain of plaintiffs’ cited cases as “outdated” due
to the intervening decision in Aylus Networks is thus
unavailing.
Given the absence of direct authority, the court will
be guided by the balancing test of FRE 403.

Defendant has

failed to specify what IPR evidence it will seek to present.
Without defendant’s specification in its opposition of the IPR
evidence it seeks to admit, defendant has failed to show that
evidence presented at IPR will be relevant to an issue in this
trial and, moreover, that such evidence, if relevant, will not
be substantially outweighed by the risk of confusing the jury.
11

Moreover, the court will not permit defendant to revisit the
scope of the claim terms before the jury as the court has
already construed the necessary claim terms.
Thus, plaintiffs’ motion is GRANTED.

Neither party

may offer evidence of the decisions rendered by the PTAB in the
IPR related to the patents-in-suit.

To the extent defendant

argues that plaintiffs should be estopped from taking positions
in other proceedings that are contrary to those it would take at
trial, it argues for an application of the judicial estoppel
doctrine but does not apply the proper standard as discussed
below in addressing plaintiffs’ eighth motion in limine.
III.

USPTO Proceedings Involving Other Patents
Plaintiffs next move the court to preclude any

reference to, or evidence, testimony and arguments from, any
USPTO proceedings concerning patents that are not at issue in
this case.
motion.

(Pls.’ MIL 9-10.)

(Def.’s Opp. 8.)

Defendant does not oppose this

Plaintiffs’ motion is hereby GRANTED.

Neither party shall make reference at trial or offer evidence or
attorney argument concerning proceedings before the USPTO
relating to patents unrelated to this case.
IV.

Patent Claims No Longer in Case
Plaintiffs next move the court to preclude any

reference to the ‘879 Patent or to claim 1 of the ‘791 Patent.
(Pls.’ MIL 10.)

In support plaintiffs argue that the dismissed
12

patent claims bear no relevance to the infringement and
invalidity issues to be tried to the jury in this case, and that
any probative value is substantially outweighed by a risk of
confusing the issues and misleading the jury.

(Id.)

Defendant

responds that such motion is overbroad and that, in connection
with its opposition to plaintiffs’ second motion in limine,
defendant should be permitted to refer to plaintiffs’ past
patentability arguments that are inconsistent with arguments
plaintiffs will make at trial to demonstrate infringement or
validity.

(Def.’s Opp. 9.)
Defendant has not explained, and the court does not

understand, how evidence stemming from IPR of the ‘879 Patent or
claim 1 of the ‘791 Patent would be relevant to the issues to be
tried by the jury.
V.

Thus, plaintiffs’ motion is GRANTED.

Size and Wealth of the Parties
Plaintiffs next move the court to preclude Presidio

from referring to or offering evidence of the size and wealth of
the parties, and specifically from “characterizing th[e] dispute
as a battle between David and Goliath.”

(Pls.’ MIL 11.)

Defendant responds that plaintiffs’ motion is “impermissibly
vague” and that plaintiffs’ own expert refers to the parties’
respective size and wealth in opining on damages.
10.)

(Def.’s Opp.

Plaintiffs dispute that their request would preclude

reference to sales and revenue data of the accused products or
13

plaintiffs’ competing products.

(Pls.’ Reply 5.)

Plaintiffs

explain that reference to the “but-for” world to determine lost
profits damages would not require any mention that plaintiff AVX
is a “large publicly-traded company” or that Presidio is a
“small family-owned business.”

(Id.)

Plaintiffs argue that evidence of a party’s net worth
creates the potential for jurors to use their verdict to express
biases against big business, citing to the United States Supreme
Court case State Farm Mut. Auto. Ins. Co. v. Campbell, 538 U.S.
408 (2003).

(Pls.’ MIL 11.)

Plaintiffs also point out that

AVX, and its parent corporation, Kyocera Electronics
Corporation, are large, publicly-traded companies that could be
perceived “unfavorably or as bullies” when compared to “small,
family-owned” Presidio.

(Id.)

In support of their arguments,

plaintiffs cite to a number of non-binding cases in which
various district courts excluded evidence of the parties’
relative wealth under FRE 401 and FRE 403.

(Id. at 12-13.)

Defendant responds that production and financial
information germane to patent infringement cases necessarily
illuminates the size and wealth of the parties.
10.)

(Def.’s Opp.

Moreover, defendant argues, plaintiffs’ damages expert

relied on and disclosed information regarding the size and
wealth of the parties including sales and revenue data for the
accused products; a comparison of the parties’ respective
14

production of relevant capacitors; ATC’s capacity to produce;
incremental costs for ATC’s hypothetical increased production;
and defendant’s revenue and profitability for its allegedly
infringing sales.

(Id.)

Defendant also points out that

background information concerning the parties, their general
business operations, and the industry will be helpful to the
jury in understanding complex questions of fact.
11.)

(Id. at 10-

As an example, defendant notes that a Presidio witness

should be permitted to offer background information to the jury
as to why Presidio operates in a particular manner or to explain
its conduct based on Presidio’s status as a small, family-run
business.

(Id.)

Defendant also notes an apparent conflict in

plaintiffs’ motion, which seeks to preclude “any reference” to
the size and financial status of the parties, evidence of which
could be relevant to a determination of plaintiffs’ lost
profits, by consideration of the production capacity of
plaintiffs, or a reasonable royalty rate which may consider a
hypothetical negotiation between the patentee and alleged
infringer.
After considering the parties arguments, the court
GRANTS the motion as follows: neither party will be permitted to
refer to the parties’ wealth, size, or finances to the extent it
is irrelevant and characterizes the dispute as one of David
versus Goliath.

Financial and production capacity evidence
15

necessary to support a determination of damages will be
admitted.

For instance, the parties’ relative market positions

may be relevant to a reasonable royalty determination, to the
extent such has been properly disclosed in an expert report.
But, a comparison of the relative ownership structure and wealth
of the parties would not be relevant to a determination of a
reasonable royalty.
VI.

Capacitors Not Produced During Discovery
Plaintiffs next move to preclude defendant from

relying on evidence or testimony concerning capacitors that
defendant failed to produce.

(Pls.’ MIL 13.)

Specifically, the

capacitors in question are BB0201 capacitors identified as PCI
170116-28 and PCI 170217-88.

(Id.)

These capacitors were at

issue in plaintiffs’ Daubert motion, and at oral argument
defendant conceded it would not offer the non-produced
capacitors or related testimony or evidence at trial.
Daubert Order 14.)
VII.

(See

Plaintiffs’ motion is thus GRANTED.

Evidence Concerning Presidio’s Equitable Defense
Plaintiffs move to preclude any evidence or testimony

concerning Presidio’s equitable defense case which will be tried
to the court, not the jury.

(Pls.’ MIL 15.)

Presidio does not

object, (Def.’s Opp. 15), and the motion is therefore GRANTED.

16

VIII.

High-Performance Broadband Capacitor Market
Plaintiffs’ final motion in limine concerns its

damages case and the relevant capacitor market for proving lost
profits.

Plaintiffs seek an order prohibiting defendant from

arguing that the parties are not the only suppliers in the highperformance, broadband capacitor market.

(Pls.’ MIL 16.)

That

is, in order to prove that plaintiffs would have made the
capacitor sales that it lost due to defendant’s alleged
infringement, plaintiffs may establish that the relevant market
was a “two-supplier market,” with defendant and plaintiffs as
the only suppliers, such that all consumers would have turned to
plaintiffs in the “but-for” case that defendant’s infringing
products were unavailable.

(Id. at 16-17 (citing Micro Chem.,

Inc. v. Lextron, Inc., 318 F.3d 1119, 1122 (Fed. Cir. 2003)).)
In support, plaintiffs first cite to deposition
testimony from Presidio’s co-owner, Chief Financial Officer, and
product manager, Lambert Devoe, in which he admitted that “no
other capacitor manufacturers are competitive with Presidio,
ATC, and AVX in the market for high-performance broadband
capacitors.”

(Pls.’ MIL 17 (citing ECF No. 164-7, Ex. 5, L.

Devoe Dep. 34:8-12).)

Plaintiffs also rely on the doctrine of

judicial estoppel and point to Presidio’s winning arguments in
Presidio I and II.

(Id. at 18.)

Specifically, plaintiffs

represent that Presidio’s position in those previous disputes
17

was that its BB capacitors and plaintiffs’ 545L and 550
capacitors, the accused products in Presidio I & II,
respectively, were the only products available in the highperformance, broadband capacitor market.

(Id.)

Plaintiffs argue that the elements of judicial
estoppel are all met in this case, citing to New Hampshire v.
Maine, 532 U.S. 742, 750-51 (2001).

(Pls.’ MIL 18.)

Plaintiffs

first contend that Presidio’s position in this case is clearly
inconsistent with its earlier positions that the highperformance market consisted only of the parties.

(Id.)

Second, plaintiffs argue the courts accepted defendant’s twosupplier market argument in Presidio I and II as Presidio
received an award of lost profits on this theory.

(Id.)

Finally, plaintiffs argue they would suffer unfair detriment if
Presidio is allowed to contradict its earlier position by
arguing there are other suppliers in the high-performance market
in this case.

(Id. at 18-19.)

Defendant responds that the record evidence in this
case confirms there were other capacitor suppliers besides the
parties during the relevant damages period.

(Def.’s Opp. 15.)

Defendant further disputes that high-performance broadband
capacitors constitute the relevant market for this case, and
that the relevant markets between this case and the previous two
litigations are necessarily different.
18

(Id.)

Defendant

contends that the courts in the parties’ previous litigations
only found that the parties were “direct competitors” and
supplied products to the same customers or potential customers,
not that the parties were the only two suppliers in the highperformance market.

(Id. at 17.)

Defendant cites to lengthy portions of two of its
experts’ reports to argue that there is substantial evidence in
the record that the relevant market is not a two-supplier
market.

(Id. at 16 (citing ECF No. 165-12, Ex. L, Randall Rept.

281-331; ECF No. 165-13, Ex. M, Thomas Rept. 22-27).)
Accordingly, defendant argues that the relevant market in this
case is defined by AVX’s Accu-P product and that plaintiffs have
not credibly disputed defendant’s expert testimony establishing
as much.

(Id.)

Defendant’s response appears to focus on

whether there are multiple suppliers that offer products that
compete in the disputed relevant market, not whether the highperformance, broadband capacitor market is a two-supplier market
or, more importantly, whether its previous positions are
inconsistent with the one it takes now.
Whether or not the record establishes multiple
suppliers in the relevant market in this case, under the
doctrine of judicial estoppel, defendant may be bound by
positions it took in a different litigation.

Though Presidio

may be hard-pressed to dispute or explain its representative’s
19

deposition testimony as to the number of suppliers in the highperformance market, such testimony alone does not bind a party
to the preclusion of contradictory arguments or explanations.
The court must determine if Presidio’s earlier positions are
indeed inconsistent with the position it seeks to take in this
litigation, potentially triggering judicial estoppel.

Even if

the parties dispute the suppliers in the relevant market for
purposes of damages in this case, plaintiffs’ motion seeks to
estop defendant from inconsistently arguing that a particular
market, the high-performance, broadband capacitor market,
includes only the parties.

Thus, it is apparent that the court

need not rule on what constitutes the relevant market at this
juncture in order to dispose of plaintiffs’ motion in limine.
Judicial estoppel “prevents a party from asserting a
factual position in a legal proceeding that is contrary to a
position previously taken by [that party] in a prior legal
proceeding.”

Mitchell v. Washingtonville Cent. Sch. Dist., 190

F.3d 1, 6 (2d Cir. 1999) (citing Bates v. Long Island R.R. Co.,
997 F.2d 1028, 1037 (2d Cir. 1993)).

“It is a ‘rare remedy’

used to avoid inconsistent outcomes and to prevent litigants
from abusing the power of the court.”

In re Initial Pub.

Offering Secs. Litig., 383 F. Supp. 2d 566, 574 (S.D.N.Y. 2005)
(citing cases).

A party invoking judicial estoppel must show:

(1) that the party against whom the estoppel is asserted took an
20

inconsistent position in a prior proceeding; and (2) the party’s
initial position was adopted by the first tribunal in some
manner.

Mitchell, 190 F.3d at 6.

In addition, courts in the

Second Circuit often consider “whether the party seeking to
assert an inconsistent position would derive an unfair advantage
or impose an unfair detriment on the opposing party if not
estopped.”

Am. Mfrs. Mut. Ins. Co. v. Payton Lane Nursing Home,

Inc., 704 F. Supp. 2d 177, 192–93 (E.D.N.Y. 2010) (internal
quotation marks omitted) (quoting Uzdavines v. Weeks Marine,
Inc., 418 F.3d 138, 147 (2d Cir. 2005)).

Within the Second

Circuit, the “application of judicial estoppel is limited to
situations where the risk of inconsistent results threatens the
integrity of the judicial process.”

Simon v. Safelite Glass

Corp., 128 F.3d 68, 72–73 (2d Cir. 1997).

That is, the previous

purported inconsistent statement must have a material effect on
the outcome of the subsequent proceeding.

Id. at 72–73; see

also Negron v. Weiss, No. 06-CV-1288, 2006 WL 2792769, at *4
(E.D.N.Y. Sept. 26, 2006) (noting that judicial estoppel does
not apply “if the statements or positions in question can be
reconciled in some way”).
A review of the decisions in Presidio I and II, and
especially the portions cited by plaintiffs, does not
conclusively establish that Presidio argued the highperformance, broadband capacitor market was a two-supplier
21

market.

The court agrees with defendant that the Federal

Circuit in Presidio I only concluded that the parties competed
“head-to-head” and that there were no acceptable, non-infringing
alternatives.

A conclusion that there are no non-infringing

alternatives when two suppliers compete head-to-head does not
necessarily mean that the high-performance market had only twosuppliers during the relevant period.

That is especially so

when the patent at issue in Presidio I is different than the
patents-in-suit and available, non-infringing alternatives to
that patent may be different than the products at issue here.
Moreover, the court doubts that the Presidio I decision, and
Presidio’s argument seeking such affirmance, concerned a twosupplier market, because the Federal Circuit, in reaching its
decision, referred only to the Panduit four-factor lost profits
test, not the collapsed, two-supplier market test articulated by
State Indus., Inc. v. Mor–Flo Indus., Inc., 883 F.2d 1573, 1578
(Fed. Cir. 1989).

Accord Micro Chem., 318 F.3d at 1124.

Thus,

it is not readily apparent that defendant’s position before the
trial court or Federal Circuit in Presidio I, as adopted by
those courts, is inconsistent with its position in this case
that the high-performance broadband capacitor market is not a
two-supplier market.
The same is true for Presidio II, except there the
district court for the Southern District of California
22

considered competition between the parties in the context of an
irreparable harm analysis.

A review of that decision likewise

does not establish that Presidio took the position, or that the
court ultimately adopted Presidio’s position, that the highperformance broadband capacitor market is a two-supplier market.
Thus, judicial estoppel is not applicable, and the court DENIES
plaintiffs’ eighth motion in limine.
DEFENDANT’S MOTIONS IN LIMINE
I.

Decisions in Related IPR Proceedings
Defendant seeks to preclude the decisions rendered by

the PTAB during IPR for the patents-in-suit as prejudicial and
irrelevant.

(Def.’s MIL 1.)

In ruling on plaintiffs’ motions

in limine, the court has already precluded evidence of the
PTAB’s decisions during IPR, thus, defendant’s first motion is
DENIED as moot.
II.

Issues to be Tried by the Court
Presidio next moves the court to preclude plaintiffs

from offering evidence related to plaintiffs’ request for a
permanent injunction, an award of enhanced damages, and an award
of attorneys’ fees and costs.

(Def.’s MIL 4.)

Plaintiffs

concede they will not offer evidence relevant only to decisions
reserved for the court.

Plaintiffs represent they will not

offer such evidence before the jury but seek to ensure they will
not be precluded from offering their damages case or evidence of
23

the harm plaintiffs allegedly suffered due to Presidio’s alleged
infringement.

(Pls.’ Opp. 3.)

Defendant responds that

plaintiffs should not be permitted to offer evidence of
irreparable or reputational harm related to its requested
permanent injunction to prove damages.

(Def.’s Reply 2-3.)

Defendant’s motion is GRANTED regarding evidence of
plaintiffs’ request for injunctive relief, enhanced damages, and
attorneys’ fees and costs.

This order does not, however, impact

plaintiffs’ ability to present their damages case related to the
economic harm caused by defendant’s alleged infringement.

It is

not clear to the court why reputational harm or irreparable harm
would be relevant to an issue put to the jury, as both are for
the court to consider when deciding whether to issue a permanent
injunction of the ‘791 Patent.

See Celsis In Vitro, Inc. v.

CellzDirect, Inc., 664 F.3d 922, 930 (Fed. Cir. 2012) (“Price
erosion, loss of goodwill, damage to reputation, and loss of
business opportunities are all valid grounds for finding
irreparable harm.”).
III.

Presumption of Validity
Presidio next seeks to preclude plaintiffs from

offering evidence or attorney argument related to the statutory
presumption of validity that attaches to issued patents as
irrelevant and as potentially confusing.

(Def.’s MIL 6.)

Plaintiffs respond that the jury will be instructed on
24

defendant’s burden of proving invalidity by clear and convincing
evidence, and that the presumption necessarily explains why the
law imposes such a burden of proof.

(Pls.’ Opp. 4-5.)

Plaintiffs further assert that the American Intellectual
Property Law Association’s model patent jury instructions
expressly references the presumption of validity, contrary to
defendant’s assertion.

(Id. at 5-6.)

This reference, however,

is included with preliminary jury instructions, not with
instructions given after the close of evidence on a defendant’s
invalidity contentions or the burden of proof.

(See ECF No.

170-2, Pls.’ Opp., Ex. 1, Am. Intell. Prop. Law Assoc. Model
Patent Jury Instrs. 3.)

Defendant points to other reputable

aids, including the Federal Circuit Bar Association’s Model
Patent Jury Instructions, which do not reference the presumption
in its model instructions.

(Def.’s MIL 8 (citing Fed. Cir. Bar

Assoc. Model Patent Jury Instrs. Handbook § B.4.1)); but see,
e.g., 7th Cir. Pattern Jury Instrs. (Patents) § 11.3.1 (“Each of
the claims of the ____ patent(s) is presumed to be valid.”).
Importantly, the Committee Note to one of defendant’s cited
treatises, the National Jury Instruction Project’s Model Patent
Jury Instructions, indicates either approach is consistent with
Federal Circuit law, and that an instruction that includes the
presumption of validity is the “more traditional approach.”

25

Nat’l Jury Instr. Project Model Patent Jury Instrs. § 5.1
committee’s note.
Defendant is correct that the presumption is not
evidence to be weighed by the jury.

However, as with the

presumption of innocence in a criminal trial, it will be helpful
and not at all confusing to a jury to understand why the
particular party bears the burden of proof, and that the burden
is greater than a preponderance of the evidence.

The Federal

Circuit authority defendant cites to in support of its argument,
Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258-59 (Fed.
Cir. 2004), did not hold that trial courts must refrain from
instructing jurors on the presumption of validity.

Instead, the

Federal Circuit held that district courts do not err in
declining to instruct the jury on the presumption of validity.
Id.

It does not follow that courts must preclude all mention of

the presumption.

Moreover, the court does not accept

defendant’s assertion of juror confusion, and instead views the
presumption and the burden of proof as “different expressions of
the same thing—a single hurdle to be cleared.”

Id. (quoting Am.

Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360
(Fed. Cir. 1984)) (internal quotation marks omitted).

26

The court will instruct the jury on the presumption of
validity and the parties are permitted to reference it in their
closing arguments. 3
IV.

Defendant’s motion is therefore DENIED.

Pre-Suit Notice of Infringement
Defendant next moves to preclude evidence of

plaintiffs’ purported notice to defendant of any alleged
infringement prior to commencing this lawsuit.

(Def.’s MIL 10.)

Plaintiffs respond that they will not present evidence that they
informed Presidio of the alleged infringement before filing this
suit.

(Pls.’ Opp. 6.)

Plaintiffs note that evidence that goes

to damages or willfulness should not be precluded by defendant’s
motion.

(Id.)

As the parties appear to agree, defendant’s

motion is GRANTED.

Plaintiffs may not reference or offer

evidence concerning any pre-suit notice to Presidio of the
alleged infringement in this case.
V.

Alleged Copying
Presidio next moves to preclude evidence concerning

any alleged copying by it of plaintiffs’ products.
11.)

(Def.’s MIL

Defendant argues that plaintiffs have never practiced, or

sold a product that practiced, the patents-in-suit, and
furthermore that plaintiffs did not disclose any copying

The court views this dispute as one more appropriate for the final
charging conference, and notes that the parties have indicated this dispute
in their joint requests for jury instructions. (See ECF No. 173-7, Ex. G,
Joint Requested Final Jury Instructions 16.)

3

27

allegations to Presidio during discovery.

(Id.)

Defendant

specifically seeks to preclude evidence that it was aware of
ATC’s 500 capacitor.

(Id. at 12.)

In responding to Presidio’s

Interrogatory No. 11, which sought all information supporting
plaintiffs’ willful infringement allegation, plaintiffs failed
to raise or describe any copying by Presidio.

(Def.’s MIL 11

(citing ECF No. 169-2, Ex. B, Pls.’ 2d Supp. Resps. Def.’s
Interrogs. 3).)

This failure, defendant argues, warrants

preclusion under Federal Rules of Civil Procedure 26 and 37.
(Id. at 11-12.)
Plaintiffs respond that defendant’s request is vague
as it does not identify specific evidence to be precluded and
that evidence of Presidio’s analysis of the 500 capacitor is
relevant to damages.

(Pls.’ Opp. 7.)

Plaintiffs further

respond that they were not in a position to include “copying”
allegations in its interrogatory responses because Presidio had
designated such information “Attorneys’ Eyes Only” during
discovery, and did not de-designate the relevant information
until after the close of discovery.

(Id. at 7-8.)

As such,

plaintiffs’ corporate representative was unaware of the
documents forming the basis for a copying allegation when he
verified plaintiffs’ interrogatory responses.

(Id. at 8.)

Furthermore, plaintiffs argue that their failure to assert their
copying allegation is harmless because Presidio controlled the
28

evidence at issue, it was raised in depositions with Presidio’s
witnesses, and it was also addressed by the parties during
summary judgment.

(Id.)

Defendant also invokes FRE 403, arguing that the
evidence related to the 500 capacitor is not probative of a
claim of copying and would only serve to confuse or mislead the
jury.

(Def.’s MIL 13.)

Defendant argues that even if it copied

ATC’s 500 capacitor, it is undisputed that the 500 capacitor “is
not covered by a patent, much less either of the patents-insuit.”

(Def.’s Reply 5-6.)
Plaintiffs respond that they should be permitted to

reference Presidio’s analysis of ATC’s 500 capacitor to
contradict Presidio’s argument that vias, as recited in claim 2
of the ‘791 Patent, are not important or valuable to the ‘791
Patent.

(Pls.’ Opp. 8.)

That is, after Presidio analyzed ATC’s

500 capacitor, as evidenced by handwritten notes attached as
Exhibit 2 to plaintiffs’ opposition, Presidio added vias to its
BB capacitors in 2001 to address design deficiencies.

(Id.

(citing ECF No. 170-3, Ex. 2, Devoe Notebook 7).)
As to plaintiffs’ claim that ATC’s 500 capacitors are
relevant to damages, defendant contends that the evidence
related to ATC’s 500 capacitor is from 2000 or 2001, and that
plaintiffs’ damages claims are limited to 2008 and later.
(Def.’s Reply 6.)

Defendant further disputes that the 500
29

capacitor is relevant to lost profits or a reasonable royalty,
and points out that plaintiffs’ own expert fails to mention the
500 capacitor in his report.

(Def.’s MIL 13.)

However, it

appears plaintiffs will attempt to use the disputed evidence to
counter defendant’s attack on the value of the claimed vias in
the ‘791 Patent, not to establish lost profits of the 545L or
550 capacitors.
Defendant’s motion is vague and likely overbroad if it
seeks to preclude all evidence of copying without pointing to
specific evidence.

Though plaintiffs will be held to their

discovery responses, the copying that appears to be the subject
of this disputed motion in limine concerns ATC’s 500 capacitor.
Defendant’s undisputed representation that ATC’s 500 capacitor
does not practice either of the patents-in-suit casts doubt that
the alleged copying of the 500 capacitor is probative of willful
infringement of the patents-in-suit.

Moreover, “there is

significant prejudice associated with [copying] evidence, as a
jury may use evidence of copying to unfairly conclude that
Defendant's products infringe the patents-in-suit.”

Finjan,

Inc. v. Blue Coat Sys., Inc., No. 13–CV–3999, 2015 WL 4129193,
at *6 (N.D. Cal. July 8, 2015); see also Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1366 (Fed. Cir. 2001)
(“[E]vidence of copying [the patentee's product] is legally
irrelevant unless the [product] is shown to be an embodiment of
30

the claims.”).

Consequently, plaintiffs are precluded from

offering proof of copying related to the 500 capacitor to prove
willful infringement of the patents-in-suit.

Defendant’s motion

to preclude copying evidence regarding the ATC 500 capacitor is
thus GRANTED.
The court, however, understands that plaintiffs seek
to present evidence of ATC’s 500 capacitor to establish damages
by proving the value of the patented technology.

The court

notes that it is unclear from the submissions, including the
attached notes to plaintiffs’ Exhibit 2, (ECF No. 170-3), how
Presidio’s inspection of ATC’s via-less 500 capacitor would
compel Presidio to introduce vias into its BB capacitors;
defendant describes this leap as “illogical[],” certainly
reducing the risk that the jury might make such an inference.
(Def.’s Reply 5.)

Plaintiffs, however, have failed to

sufficiently explain the relationship between defendant’s
awareness of the via-less 500 capacitor and Presidio’s alleged
decision to incorporate vias into its BB capacitors.

Thus,

defendant’s motion to preclude any evidence that it was aware of
the 500 capacitor is GRANTED.
VI.

Willful Conduct Prior to May 6, 2002
Defendant next seeks to preclude plaintiffs from

offering evidence related to its claims of willful infringement
of the ‘791 Patent stemming from conduct that occurred prior to
31

May 6, 2002.

(Def.’s MIL 13-14.)

According to defendant,

plaintiffs have not pointed to any evidence that an individual
at Presidio was aware of the ‘791 Patent prior to May 6, 2002.
(Id. (citing ECF No. 169-3, Ex. C, Def.’s 8th Supp. Resps. Pls.’
1st Interrogs. 27-28 (“Presidio was aware of the ‘791 patent no
later than May 6, 2002.”)).)

In the alternative, defendant

notes that it could not possibly be a willful infringer prior to
January 8, 2002, when the ‘791 Patent issued, such that any
evidence pre-dating the ‘791 Patent’s issue would be irrelevant.
(Id.)

Defendant argues that any activities prior to January 8

or May 6, 2002 would only serve to cast it in a negative light
and should thus be excluded under FRE 403.

(Id.)

Plaintiffs

respond that defendant’s motion is once again vague because it
fails to specifically identify the evidence to be excluded.
(Pls.’ Opp. 9.)

Plaintiffs further argue that evidence

predating May 6, 2002 includes evidence of Presidio’s decision
to incorporate vias in its BB capacitors as early as 2000 which
is relevant at least to damages.

(Id.)

First, Presidio’s discovery response is fairly read to
be an admission that the latest date on which it became aware of
the ‘791 Patent was May 6, 2002, not the earliest.

Thus, the

court will not rely on that date as the earliest time for which
defendant can be held liable for willful infringement of the
‘791 Patent.

But the court also agrees with defendant that
32

evidence of conduct occurring before the ‘791 Patent issued is
not probative of willful infringement of the ‘791 Patent.
State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236
(Fed. Cir. 1995) (“To willfully infringe . . . the patent must
exist and one must have knowledge of it.”).

Thus, and as with

defendant’s fifth motion in limine, evidence pre-dating the ‘791
Patent’s issue may not be offered to prove willful infringement.
To the extent plaintiffs seek to offer evidence of acts
occurring between January 8, 2002 and May 6, 2002 to prove
willful infringement, the parties may raise this issue and
present the offered exhibits or testimony during the Final
Pretrial Conference so that the court may rule ahead of trial.
Plaintiffs are also permitted to offer evidence prior to May 6,
2002 that demonstrates the value of the claimed vias to prove
damages.

Defendant’s motion is therefore GRANTED in part and

DENIED in part.
VII.

Willful Conduct After Commencement of the Action
Defendant next argues plaintiffs should be precluded

from referencing or introducing evidence to prove willful
infringement after the filing of this lawsuit.

(Def.’s MIL 14.)

Defendant argues that under Federal Circuit law, enhanced
damages for willful infringement are not available for
infringement after the suit is commenced if the patentee did not
first seek a preliminary injunction.
33

(Id. at 14-15 (citing In

re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007)).)
Because plaintiffs are not entitled to damages for willfulness
post-filing, defendant argues, evidence of willful conduct
occurring after this action was filed is irrelevant.
15.)

(Id. at

Moreover, defendant argues, plaintiffs failed during

discovery to identify any post-filing conduct that they would
rely on to prove willful infringement.

(Id.)

Finally,

defendant argues that under FRE 403, the minimal probative value
of such evidence risks confusing the jury as to infringement,
and further risks casting Presidio in a negative light.

(Id.)

Plaintiffs respond that defendant misstates Federal
Circuit law.

(Pls.’ Opp. 9.)

According to plaintiffs, the

Federal Circuit clarified that there is “‘no rigid rule’ that a
patentee must seek a preliminary injunction in order to seek
enhanced damages.”

(Id. (citing Mentor Graphics Corp. v. EVE-

USA, Inc., 851 F.3d 1275, 1295-96 (Fed. Cir. 2017)).)
Plaintiffs appear to address only the more general question of
whether a patentee must seek an injunction to claim willful
infringement at all, not whether conduct after a complaint is
filed can be used to prove willfulness if the patentee fails to
seek such injunctive relief.

Defendant responds that Mentor

Graphics dealt only with pre-suit acts and does not apply to the
facts of this case.

(Def.’s Reply 7.)

The Federal Circuit in

Mentor Graphics, however, was quite clear that “[the district
34

court] erred in concluding that [the patentee] could not present
evidence of post-filing willful infringement because [it] did
not seek a preliminary injunction,” Mentor Graphics, 851 F.3d
1295, exactly the relief that Presidio requests now.

The court

explained that there is “no rigid rule” that a patentee must
seek a preliminary injunction in order to seek enhanced damages,
quoting Supreme Court precedent in support.

Id. at 1296 (citing

Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.Ct. 1923, 1934
(2016)).
The court agrees with plaintiffs that Federal Circuit
case law does not require a patentee to seek a preliminary
injunction before seeking willfulness damages based on post-suit
conduct.

Thus, evidence of post-suit willful infringement by

Presidio is not irrelevant.

Moreover, the court is not

persuaded the risk of confusion or prejudice substantially
outweighs the probative value of the post-suit conduct under FRE
403.

Defendant’s argument that plaintiffs did not disclose that

it would rely upon post-suit conduct to demonstrate willfulness
is also unpersuasive, as plaintiffs indicated in the same
discovery response that defendant’s own witnesses, Lambert and
Alan Devoe, have information concerning willful infringement.
Defendant’s motion is therefore DENIED.

35

VIII.

Plaintiffs’ Products Covered by Plaintiffs’ Patents
Presidio moves the court to preclude plaintiffs from

offering evidence that plaintiffs’ own products, that is, the
500, 545L, and 550 capacitors fall within the scope of the
claims of plaintiffs’ patents.

(Def.’s MIL 17.)

Presidio

points out that such proof would require an expert opinion, but
that plaintiffs have not disclosed an expert opinion to that
effect.

(Id.)

Plaintiffs respond that they will not offer such

an opinion or argument at trial.

(Pls.’ Opp. 10-11.)

Thus,

defendant’s motion as to this point is GRANTED.
Plaintiffs, however, note that defendant’s motion does
not seek to preclude evidence that plaintiffs possess patents
other than the patents-in-suit.

(Id. at 11.)

Plaintiffs argue

their witnesses, John Mruz and Andrew Ritter, former employees
of ATC and AVX, should be permitted to testify concerning their
development of the 545L and 550 capacitors and the related
patents that were awarded to plaintiffs and that named Mruz and
Ritter as inventors.

(Id.)

This testimony, plaintiffs contend,

is relevant to damages to demonstrate the value of the patentsin-suit.

Moreover, plaintiffs argue such testimony is relevant

to demonstrate Mruz’s and Ritter’s qualifications and
credibility.
The court does not agree that evidence of unrelated
patents naming Mruz and Ritter as inventors establishes their
36

respective credibility.

Moreover, if these two witnesses are

testifying as percipient, fact witnesses, plaintiffs need not
demonstrate their qualifications.

As to damages, citing the

existence of other patented technology does not demonstrate the
value of the patents-in-suit, and instead may risk juror
confusion.

Thus, the court precludes Mruz and Ritter from

testifying as to the existence of plaintiffs’ patents, other
than the patents-in-suit.
IX.

Undisclosed Expert Opinions
Next, in anticipation that plaintiffs will offer

expert testimony not contained in an expert report, Presidio
moves the court to preclude any such opinion under Federal Rule
of Civil Procedure 26.

(Def.’s MIL 17.)

Plaintiffs respond

that defendant’s motion is moot as their experts will testify
only to opinions disclosed in their reports.

(Pls.’ Opp. 12.)

Defendant attempts to clarify its motion by describing five
examples of opinions or testimony it anticipates plaintiffs’
experts will offer but did not disclose in their reports.
(Def.’s MIL 17.)

However, much of defendant’s concerns with

plaintiffs’ experts’ reports were already addressed when
defendant framed these arguments under Daubert to attack the
respective expert’s reliability.

The court has already ruled on

the parties’ motions pursuant to Daubert and will not revisit
its rulings.

The parties’ respective experts may only offer
37

testimony as described in their reports and as further limited
by the court’s Daubert decision.

Thus, defendant’s motion is

DENIED as moot.
X.

Irrelevant Testing
Presidio next moves in limine to preclude reference by

plaintiffs’ technical expert, Dr. Hillman, to testing that
Presidio claims is irrelevant.

(Def.’s MIL 22-23.)

Dr.

Hillman’s testing is irrelevant, according to Presidio, because
it does not reflect “ordinary use of the capacitors.”

(Id.)

Presidio argues, the mere fact Dr. Hillman undertook such
testing could confuse the issues for the jury and thus warrants
preclusion under FRE 403.

(Def.’s Reply 9-10.)

Plaintiffs’

respond that Dr. Hillman’s testing is relevant to prove damages,
and that Dr. Hillman’s testing replicated normal operating
conditions for the accused products. (Pls.’ Opp. 13-14.)
Dr. Hillman’s report indicates that he removed the
surface pads of certain BB capacitors to test the impact of the
claimed invention in the ‘547 Patent upon the BB capacitor’s
performance.

(ECF No. 146-2, Ex. 1, Hillman Rept. ¶ 53.)

After

“mechanically remov[ing]” the surface pads, Dr. Hillman tested
the insertion loss of the BB capacitors and concluded that the
insertion loss performance was “significantly worse with the
surface pads removed.”

(Id.)

As for the ‘791 Patent, Dr.

Hillman “simulate[d] damage to, or imperfections in, the
38

external surface pads,” for Presidio’s BB capacitors without
vias, and subsequently tested insertion loss performance for
these via-less capacitors.

(Id. ¶ 83.)

Dr. Hillman does not

specify what conditions or methods he used to remove the surface
pads or simulate damage to the same, but Presidio represents he
“microblasted” the capacitors to remove certain features.
(Def.’s MIL 22.)
The court understands that the purpose of Dr.
Hillman’s testing as described in paragraphs 53 and 83 of his
report is to demonstrate the impact of the patented technology
on the performance of the accused products, i.e. its value.

As

to the ‘547 Patent, whether or not the accused products’ surface
pads would be removed by “microblasting” in real world
conditions is irrelevant; what matters is how the surface pads,
or lack thereof, impact the performance of BB capacitors.

The

same is true for vias claimed in the ‘791 Patent, although Dr.
Hillman is less clear about the conditions under which the
surface pads would manifest imperfections or sustain damage.

In

any event, the value of the claimed invention, here vias, is
relevant to damages.

Dr. Hillman’s testing and resulting

opinion is admissible evidence that demonstrates value.

By

extension, plaintiffs’ damages expert is entitled to rely on Dr.
Hillman’s opinion in determining a reasonable royalty.

39

Defendant’s motion is thus DENIED as Dr. Hillman’s
conclusion and predicate testing are relevant.

Defendant,

however, may cross-examine Dr. Hillman on the realism of the
simulated damages and imperfections he introduced to test
insertion loss performance of the via-less BB capacitors, and,
in general, as to the efficacy of his insertion loss testing.
XI.

Scope of the Relevant Market
Defendant’s final motion in limine seeks to exclude

evidence and arguments proving the scope of the relevant market
through irrelevant patents.

(Def.’s MIL 23.)

Defendant

contends that only the patents-in-suit define the scope of the
market and that evidence regarding the scope of the market
pertaining to other patents, such as Presidio’s patents, is
irrelevant and should be excluded under FRE 403.

(Id.)

Plaintiffs respond that this motion is a “veiled attempt” to
avoid Lambert Devoe’s deposition testimony that the parties are
the only two suppliers in the high-performance broadband
capacitors market.

(Pls.’ Opp. 15.)

Plaintiffs also argue that

Presidio’s contention that the patent defines the market is
incorrect; instead, the infringing device that incorporates the
patented invention, and any competing products, define the
relevant market.

(Id. at 14.)

The law is quite clear as to what constitutes the
relevant market, and both parties cite to the correct authority
40

in Micro Chem., Inc. v. Lextron, Inc., 318 F.3d 1119 (Fed. Cir.
2003): “[t]he proper starting point to identify the relevant
market is the patented invention.”

Id. at 1124.

Also included

in the relevant market are other devices or substitutes similar
in physical and functional characteristics; devices that are
significantly different in price or characteristics are
excluded.

Id.

The court agrees with defendant that it would be

improper to define the relevant market by reference to other
patents.

The market is defined by the patented invention and

other devices or substitutes with similar physical and
functional characteristics, i.e., competing products.

It

remains unclear, though, what evidence offered by plaintiffs
Presidio seeks to exclude with this motion.
In any event, if the accused products are found to
infringe, i.e. practice the patented invention, they would
surely be included in the relevant market, as would any
substitutes similar in physical and functional characteristics.
Defendant’s motion is GRANTED, and neither party will be
permitted to offer evidence of other patents to argue for a
particular relevant market.

However, this does not mean that

other devices or substitutes for the patented invention that
also practice unrelated patents may not define the relevant
market.

41

REMAINING OBJECTIONS
I.

Plaintiffs’ Remaining Trial Objections
1.

Exhibits WK, WL, WO, WQ: sustained; admission of these
physical samples of capacitors labelled “UNTERMED”
risks prejudice to plaintiffs and confusing the jury
under FRE 403.

The presentation of “untermed”

capacitors or, as the court understands, capacitor
bodies without terminations applied, impermissibly
assumes the construction of the claim term and,
further, is of apparently minimal probative value.
2.

Relevant Market: The court denied plaintiffs’ eighth
motion in limine requesting application of judicial
estoppel, thus it rules on plaintiffs’ related
objections as follows:
i. Designated depositions: overruled;
ii. Exhibits IZ, JK, OH: overruled, plaintiffs’
internal descriptions of the characteristics of
their own products and their view of competition
and the market is relevant to damages;

3.

Other Litigations: The court granted plaintiffs’ first
motion in limine to preclude all reference to the
parties’ other litigations.

As such, it rules on

plaintiffs’ related objections as follows:

42

i. Mruz Dep. 154:8-23: sustained; though the
transcript on its face does not refer to the
parties’ other litigations, it also does not
appear to be relevant to issues in this case;
ii. Exhibits GF, GN: overruled; exhibits GF and GN
are internal AVX presentations that likewise do
not appear to refer to the parties’ previous
litigation, but do reference Presidio, and
plaintiffs’ views of Presidio’s products,
including their relative performance and
limitations.

With sufficient foundation, these

exhibits are potentially probative of whether
plaintiffs’ products are appropriate substitutes
for the accused products in determining lost
profits.
iii. Exhibits PL, PM, PN, PP, PS, PT, PX, QF:
sustained.

The remaining exhibits, PL, PM, PN,

PP, PS, PT, PX, and QF, are Presidio emails, both
internal and with prospective customers,
reflecting a desire by the customers to purchase
a replacement part from Presidio for plaintiffs’
GX capacitor.

The emails reference in passing

infringement by plaintiffs as the cause for these
purchasers to look elsewhere for capacitors.
43

It

is not immediately clear to the court how these
emails are probative of available non-infringing
substitutes on the market for purposes of
damages.

Moreover, the majority of these

exhibits appear to be hearsay.

Defendant’s

exhibits PL, PM, PN, PP, PS, PT, PX, and QF are
thus precluded.
4.

Exhibits K and Q related to the ‘879 Patent:
sustained; the court has already granted plaintiffs’
fourth motion in limine.

5.

Ritter’s deposition testimony re: L-Shaped
terminations: sustained, for reasons that should be
abundantly clear to defendant by this point in the
litigation.

6.

Exhibits BE and YF: overruled as to Exhibit BE,
defendant represents the exhibit is relevant to its
invalidity case, (ECF No. 175, Def.’s Notice 10-11);
reserved as to Exhibit YF, the manufacturing process
of the plaintiffs’ products is not relevant but the
document, with sufficient foundation, which is lacking
on its face, is probative of plaintiffs’ view of a
Devoe patent or invention and of the value of
plaintiffs’ patented technology with L-shaped
terminations; defendant may demonstrate why that view
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is relevant to its case at the Final Pretrial
Conference.
II.

Defendant’s Remaining Objections
1.

Evidence Presidio Copied Unrelated Products: The court
granted Presidio’s fifth motion in limine, which
sought to preclude evidence of copying to prove
willful infringement, and evidence that Presidio was
aware of ATC’s 500 capacitor.

Presidio’s objection is

thus, sustained.
2.

Presidio’s Awareness of Unrelated Patents: sustained;
the highlighted deposition testimony is not relevant
and risks prejudice; the court will not admit evidence
that Presidio was aware of other ATC or AVX patents as
it would invite the jury to find that Presidio
willfully infringed the patents-in-suit because it had
copied other patents in the past; as to plaintiffs’
offered Exhibit 97, this email does not appear to be
relevant to infringement in this case and is excluded.

3.

Presidio Purchase Orders, Terms & Conditions, Emails
and Brochures: sustained; plaintiffs seek to offer an
email discussion between Presidio employees
responsible for designing a brochure for Presidio
capacitors, including BB capacitors.

While the email

refers to defendant’s copying portions of an ATC
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brochure, this alone would not be probative of willful
infringement of the patents-in-suit, and instead may
risk the jury drawing impermissible inferences based
on unrelated conduct by defendant.

Moreover, evidence

of copying materials unconnected to commercial
embodiments of the patents-in-suit risks misleading
and confusing the jury or permitting the prejudicial
inference that defendant infringed the patents-in-suit
based on unrelated copying.

It appears to be

undisputed that plaintiffs have never practiced or
sold a product that practices the ‘791 Patent.

(See

Def.’s MIL 11; Pls.’ Opp. 10-11 (“Plaintiffs will not
present argument or evidence at trial that the 500,
545L, or 550 capacitors are within the scope of any
patent claims.”).)
4.

Unrelated Patents: The court has already granted
Presidio’s eighth motion in limine and precluded
testimony or evidence related to patents that are not
the patents-in-suit as irrelevant.

Thus, defendant’s

objection to plaintiffs’ trial Exhibits 11 and 12 is
sustained.
5.

Expert Reports: As stated in the court’s order
deciding the parties’ Daubert motions, the court will
not admit expert reports as documentary evidence.
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However, the exhibits disclosed in the parties’
respective expert reports that demonstrate expert
conclusions are generally admissible, if permitted by
the Federal Rules of Evidence, and may be used as
demonstratives at trial.

Thus, defendant’s objection

is sustained, and the court will not admit entire
expert reports.
6.

Slavitt Deposition Testimony: overruled; Presidio’s
challenge to Slavitt’s deposition testimony, in his
personal capacity and as plaintiffs’ corporate
designee, amounts to a challenge for lack of personal
knowledge.

Plaintiffs can establish at trial a

foundation for Slavitt’s personal knowledge.

The fact

that he is in-house counsel does not necessarily mean
he is not aware of plaintiffs’ marketing activity or
its sales and operations.
CONCLUSION
For the foregoing reasons the court grants in part and
denies in part the parties’ motions in limine.

Prior to the

Final Pretrial Conference, the parties must confer to attempt to
resolve any remaining evidentiary disputes and shall come

47

prepared to offer proof as to those exhibits only, specifically
defendant’s Exhibit YF and willful infringement evidence predating May 6, 2002.
SO ORDERED.
Dated: May 31, 2019
Brooklyn, New York
_________ /s/ _______
HON. KIYO A. MATSUMOTO
United States District Judge
Eastern District of New York

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