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

Filing 238

ORDER denying 223 Motion for Attorneys' Fees. For the reasons stated in the attached Memorandum and Order, the court DENIES Plaintiffs' Motion for Attorneys' Fees. Plaintiffs have failed to demonstrate that this was an exceptional case, either with respect to the substantive strength of Presidio's litigating position, or its conduct throughout the case. Accordingly, there is no need to determine the amount of fees justified. Defendant is advised that the court may revisit the issue of fee-shifting should Defendant persist in certain questionable conduct and practices, of the nature discussed herein, both leading up and during the new trial. Ordered by Judge Kiyo A. Matsumoto on 9/23/2020. (Brasky, Michael)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------X
AMERICAN TECHNICAL CERAMICS CORP.
and AVX CORPORATION,
Plaintiffs,

MEMORANDUM & ORDER

-against-

14-CV-6544(KAM)(GRB)

PRESIDIO COMPONENTS, INC.,
Defendant.
----------------------------------X
MATSUMOTO, United States District Judge:
A unanimous jury rendered a verdict in favor of
plaintiffs, American Technical Ceramics Corp. (“ATC”) and AVX
Corporation (“AVX,” and together with ATC, “Plaintiffs”), and
found defendant, Presidio Components, Inc. (“Presidio” or
“Defendant”), liable for infringing United States Patent No.
6,144,547 (“‘547 Patent”), and United States Patent No.
6,337,791 (“‘791 Patent,” together with the ‘547 Patent, the
“Patents-in-suit”).1

As prevailing parties, Plaintiffs seek

attorneys’ fees from Presidio pursuant to 35 U.S.C. § 285,
totaling $367,078.29, as compensation for conduct that
“prolonged and complicated” this case.

For the reasons stated

below, Plaintiffs’ motion is DENIED.

1

Each party thereafter filed post-trial motions, which are the subject
of a Memorandum and Order issued earlier today. (See ECF No. 237.)

1

BACKGROUND
I.

The Parties
Plaintiffs commenced this action on November 6, 2014

(ECF No. 1, Complaint), accusing Presidio of infringing the
Patents-in-suit.

ATC is a wholly-owned subsidiary of the

publicly traded AVX Corporation, and is based in Huntington
Station, New York.

AVX owns the ‘547 Patent, which it licensed

to ATC in November 2014, and ATC owns the ‘791 Patent.
No. 79, First Claim Construction Order (“FCCO”) 2.)

(See ECF

Presidio is

a privately-owned company based in San Diego, California.
All parties manufacture electrical devices, including
capacitors, which are electronic components that store and
release energy within a circuit, and are used in a variety of
electrical systems, including consumer electronics.

(Id.)

Capacitors typically consist of two parallel conductive, usually
metal, plates separated by a non-conductive, insulating material
known as a “dielectric.”

(Id.)

The Patents-in-suit relate to

“multilayer ceramic capacitors” (“MLCCs”), which are created
through the combination of multiple capacitors by stacking
several layers of conductive material and non-conductive, or
dielectric, material.
MLCCs.

(Id. 3.)

(Id. 2-3.)

The parties make and sell

Presidio manufactures products known as BB

capacitors, which Plaintiffs contend practice, and as such,
infringe the Patents-in-suit.
2

II.

Claim Construction
A. First Claim Construction
On August 31, 2016, the court held a claim

construction, or Markman hearing, at which the parties presented
oral argument and expert testimony to explain their proposed
constructions of certain claims in the Patents-in-suit.
3.)

(FCCO

On November 7, 2016, the court entered its claim

construction order, setting forth how those disputed terms would
be construed.
In the FCCO, the court considered, inter alia, the
term “substantially L-shaped terminations,” which appears in all
claims of the ‘547 Patent and describes the appearance and
structure of the terminations that devices practicing the ‘547
Patent would have.

The court concluded that the term was to be

construed “in accordance with its ordinary meaning, i.e., as a
termination that is substantially or largely L-shaped, but not
wholly L-shaped.”

(Id. 20-21.)

In reaching this construction,

the court rejected Defendant’s argument that “substantially Lshaped” would not “sufficiently distinguish the structure from
U-shaped terminations,” and instead determined that
“[t]erminations having a U-shape are already excluded by the
ordinary meaning of substantially L-shaped, because a structure
with terminations that extend around the lateral sides of a

3

device body would not be L-shaped.”

(Id. 20 (internal quotation

marks omitted).)
Also relevant to Defendant’s motion, at the claim
construction stage, the court considered the ‘547 Patent’s
statement, recited in each of its claims, that the
“substantially L-shaped terminations” extend “negligibly over a
top surface” of the device body.

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.”

(FCCO 22.)

The court noted that “[b]y definition, the

top configuration [of the termination] must be smaller than the
bottom configuration in order for the top termination portion to
extend ‘negligibly,’ and for the terminations as a whole to
appear ‘substantially L-shaped.’”

(Id.)

The parties did not

include the term “terminations” in the Joint Disputed Claim
Terms Chart.

(See generally ECF No. 48-1, Joint Disputed Claim

Terms Chart (“JDTC”).)

Further, the parties agreed that terms

“not specifically identified” in the chart should be “given
their plain and ordinary meaning.”2

(ECF No. 48, Notice of

Filing of Joint Disputed Claim Terms Chart (“JDTC Notice”) 1.)

2

At the Markman Hearing, Dr. Stanley R. Shanfield, expert witness for
Plaintiffs, described terminations as “the things at the ends of the
capacitor,” and Dr. Michael S. Randall, expert witness for Defendant,
testified that the capacitor’s electrodes are connected to the termination
end. (ECF No. 80, Markman Hearing Transcript, 23:1-10 and 98:17-20.)

4

B. Summary Judgment
On March 27, 2018, the court issued a Memorandum and
Order granting in part, and denying in part, the parties’ crossmotions for summary judgment.

(See generally ECF No. 126,

Summary Judgment Order (“SJO”).)

Presidio moved for judgment

that the accused devices do not infringe the ‘547 Patent, as
they do not incorporate “substantially L-shaped terminations” or
“terminations . . . extending negligibly over a top surface of
the device body,” limitations required by all claims of the ‘547
Patent.

(ECF No. 120-1, Presidio’s Memorandum in Support of

Motion for Summary Judgment (“Def.’s MSJ”) 23-31.)
As the parties’ articulated and refined their
positions, it emerged that the proper construction of
“terminations” was “critically important to, if not dispositive
of” Presidio’s motion, in two respects. (SJO 46.)

First, the

scope of “terminations” was essential to determining whether the
accused products had “substantially L-shaped terminations,” as
required by the ‘547 Patent.

(Id.)

Presidio stated, without

dispute, that Plaintiffs’ infringement theory relied on
“external electrodes, or surface pads, which are located on the
bottom of the accused products, forming part of the device
termination and thereby constituting the lower portion of the

5

‘L.’”

(Id.)3

Embedded in this argument were two subsidiary

contentions, which Presidio believed were supported by the
record, including deposition testimony of two of Plaintiffs’
engineers, and the expert report Dr. Michael Randall, Presidio’s
technical expert.

(Def.’s MSJ 46-47.)

Presidio argued that the

capacitor’s surface pads could be considered part of the
termination.

(SJO 46.)

Presidio further argued that the

accused devices have U-shaped terminations, not L-shaped ones,
thereby implying that the “‘dipping process used for all of the
accused devices,’ which is not used to apply surface pads,
constitute[d] the sole means for applying terminations, at least
with respect to the accused products.”

(Id. 47.)

Plaintiffs

countered that “the surface pads or external electrodes of the
accused capacitors are terminations.”

(Id.)

Dr. Hillman,

Plaintiffs’ technical expert, opined that “the combined
structure including dipped end terminations and surface pads
form[ing] the capacitor’s termination structure.”

(Id.

(internal quotation marks and brackets omitted).)
Second, it also became clear that the proper
construction of “terminations” was critical to determining
whether the accused devices’ terminations extended “negligibly
over a top surface.”

(Id.)

As held in First Claim Construction

Order, “the top configuration must be smaller than the bottom

3

Unless stated otherwise, citations to the court’s prior orders omit
citations therein to the internal court record.

6

configuration in order for the top termination portion to extend
‘negligibly,’ and for the terminations as a whole to appear
‘substantially L-shaped.’”

(FCCO 22.)

Because the surface pads

are situated on the bottom of the accused products’ device body,
“a comparison of the top and bottom termination configurations
of the accused devices necessarily require[d] clarity as to
whether surface pads are part of the termination structure.”
(SJO 48.)
The infringement claims based on the ‘547 Patent thus
hinged on a proper construction of “terminations,” and the court
resolved to construe the term “objectively and without reference
to the accused device[s],” as a condition precedent to resolving
Presidio’s summary judgment motion.

(SJO 48-49 (quoting Vivid

Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
Cir. 1999)).)

Though the parties agreed to construe

“terminations” according to its “plain and ordinary meaning,”
(JDTC Notice 1), neither the record nor the parties
satisfactorily conveyed such meaning.

(SJO 49.)

In light of

these barriers to construction, not to mention Federal Circuit
case law frowning on judicial claim construction absent a
hearing, the court was disinclined to construe “terminations”
without affording the parties an opportunity to elucidate their
positions in a second Markman hearing.

7

(Id. 50.)

C. Second Claim Construction
The parties agreed in their proposed constructions
that “terminations” were “(i) structures that are (ii)
conductive and (iii) external to the capacitor device body.”
(ECF No. 136, Second Claim Construction Order (“SCCO”) 14.)

The

court rejected Presidio’s proposed additional limitation,
namely, that terminations must “provid[e] electrical and
mechanical connection to the device’s conductive
patterns/electrodes[.]”
omitted).)

(Id. 14-15 (internal quotation marks

The court reasoned that Presidio’s position lacked

support in the relevant claims’ language, neither of which
indicated that terminations provide electrical and mechanical
connection to the capacitor device’s conductive patterns or
electrodes.

(Id. 16.)

The court also considered the Patent’s

specification, and found Presidio’s reliance on it misplaced.
Presidio argued that the ‘547 Patent “expressly excludes
external plating, one of many types of conductive structures
arranged externally on the device body, from ‘terminations.’”
(Id. 21.)

Contra Presidio’s position, the court noted the lack

of express language in the ‘547 Patent excluding plating from
the termination structure.

(Id.)

Presidio’s remaining

arguments were also deemed unavailing, and Plaintiffs’
construction of “terminations” was adopted.

8

Presidio sought to leave to file a successive motion
for summary judgment after the Second Claim Construction Order
was entered.

(See Order dated Nov. 27, 2018.)

In letter

motions, the parties disputed whether there was a genuine issue
of fact that the accused devices incorporate “substantially Lshaped terminations” or “terminations . . . extending negligibly
on or over a top surface of the device body,” and thus, whether
a trial was necessary to determine if the accused devices
infringe the ‘547 Patent.

(See ECF No. 138, 139.)

denied Presidio’s motion in a docket order.

The court

(Docket order dated

Dec. 18, 2018.)
III.

Daubert Order
On May 30, 2019, the court ruled on the parties’

evidentiary motions pursuant to Daubert v. Merrell Dow Pharm.,
Inc., 509 U.S. 579 (1993) and Federal Rule of Evidence 702.
(ECF No. 179, Daubert Order.)

In pertinent part, Presidio

challenged the testimony of Plaintiffs’ technical expert, Dr.
Craig Hillman.

(Id. 2, 31.)

According to Presidio, Dr. Hillman

“evaluated a minimal and insufficient number of capacitors, no
more than 100,” out of the millions accused of infringement.
(Id. 31.)

Presidio contended that Dr. Hillman’s failure to

explain why the examined capacitors were representative of all
infringing units, precluded him from reliably opining that the
capacitor sample he reviewed was statistically sufficient to
9

establish the accused capacitors infringed as a whole.

(Id.)

Presidio asserted that Dr. Hillman’s analysis of thirty
capacitors out of approximately 15 million accused units,
represented too insignificant a number to support infringement.
In response, Plaintiffs countered by highlighting
Presidio’s own admissions and representations in the instant
litigation.

For example, Plaintiffs argued that Dr. Hillman

relied on Presidio’s representation in discovery that the
capacitors produced were “representative” samples.
Order 36.)

(Daubert

In addition, Presidio’s own expert, Dr. Randall,

repeatedly formed opinions of the accused products based on a
limited sample he deemed “representative,” and not by analyzing
every capacitor in each lot.

(Id. 38.)

The court ultimately rejected Presidio’s arguments.
Not only did Presidio fail to cite controlling authority “for
the proposition that a small sample size warrants exclusion by
law,” but its argument that each capacitor was so different that
no analysis for one or two samples could be extrapolated to
other capacitors was discarded as absurd.

(Id.)

Presidio’s

standard, the court noted, would effectively “require Dr.
Hillman to analyze all of the . . . accused capacitors to
provide an admissible opinion.”

(Id. 41.)

10

“Even more glaring” in the court’s view, was
Presidio’s attempt to nullify the reasonably clear meaning of
its own discovery response:
In response to plaintiffs’ request for ten samples of
BB and SL capacitors in each relevant case size,
Presidio stated “representative samples of Presidio’s
Surface Mount Buried Broadband capacitors” and “Single
Layer capacitors” had been produced.
At oral
argument, counsel for defendant stated “representative
samples” meant, in fact, “nothing,” but was hardpressed to explain this anomaly.
As such, Presidio
has not established that its manufacturing process is
so variable that each capacitor in a given lot is
materially different from the rest of the capacitors
in the lot and, furthermore, that plaintiffs were
aware of this variability
based on defendant’s
discovery responses.
(Daubert Order 43-44.)

In sum, the court found that Dr. Hillman

reliably extrapolated his analysis for each examined capacitor
to its respective lot, and in doing so, relied on Presidio’s own
discovery admissions, expert testimony, and corporate documents.
(See generally id. 44-48.)
Presidio also advanced a second theory for exclusion
based on Dr. Hillman’s purportedly unreliable methods.

Presidio

argued that Dr. Hillman took no measurements of the accused
capacitors to determine if each practiced the ‘547 Patent’s
limitation of “termination material extending negligibly over
the top surface.”

(Daubert Order 49.)

Presidio further argued

that Dr. Hillman was required to take measurements in the
millionths of an inch.

(Id. 49-50.)

11

The court found the

premise of Presidio’s contention, that “plaintiffs must prove
infringement through measurement of the terminations and
relevant dielectric layers,” as contrary to the construction of
the term “negligibly,” and other relevant claim terms, which did
not require a precise measurement.

(Id. 51-52.)

As for those

claims that did require an approximate numerical limit,
measurements could be ascertained by reference to Presidio’s
advertising materials, which listed uniform dimensions for the
accused capacitors and thus provided sufficient basis to
determine whether the accused products satisfied the claim’s
limitations.

(Id. 52.)

Presidio also disputed Dr. Hillman’s methodology for
determining whether the first and second dielectric layers are
“co-extensive,” i.e. extend over the same area, as required by
the ‘791 Patent.

(Daubert Order 53-54.)

Presidio found fault

with Dr. Hillman’s approach, which involved taking crosssections of two capacitors, one lengthwise and one widthwise,
and highlighting the first and second dielectric layers to
demonstrate that the layers share the same dimensions.
54.)

(Id.

This method was too narrow, Presidio argued, because it

ignored the possibility that there could be “a point along the
width of the capacitor where the width of the second dielectric
layer is different than that of the first dielectric layer,” in

12

which case, “the widths of the two layers would not be
coextensive.”

(Id.)

As with Presidio’s other challenge, its attack on Dr.
Hillman’s co-extensiveness analysis was thwarted by earlier
discovery responses, particularly its admission “that two layers
in a depicted capacitor’s cross-section were co-extensive,
without raising the arguments it does in the instant motion, and
without first requiring plaintiffs to provide the relevant
measurements of the two layers.”

(Daubert Order 56-57.)

Presidio’s attempt to cabin the damaging admission also failed.
Presidio maintained it had “not admit[ted] that every image of
that single capacitor shows the layers are coextensive.”
57 (emphasis omitted).)

(Id.

As before, the court refused to accept

the logical implications of Presidio’s position “that an
infringement analysis must consider the measurements at every
point along the relevant dielectric layer.”

(Id.)

This

approach, the court observed, “would require Dr. Hillman to have
measured the capacitors at innumerable points to determine if
the layers are coextensive.”

(Id.)

The court similarly

rejected Presidio’s argument that imperfections or defects in
the manufacturing process could render dielectric layers noncoextensive to preclude an infringement finding.
(Id.)

13

The court thus denied Presidio’s motion to preclude
Dr. Hillman’s testimony, but stipulated that Presidio could
still challenge him on cross-examination to probe his chosen
sample size, and the applicability of his analysis to unexamined
accused products.
IV.

(Daubert Order 58.)

Trial
After four-and-a-half years, the case proceeded to

trial in June 2019.

Plaintiffs impugn Presidio’s trial conduct

for unnecessarily prolonging the trial, and necessitating
multiple sidebars, sustained objections, and curative
instructions.

(Pls.’ Mot. 15.)

A. Supplemental Invalidity Contentions
On January 30, 2019, the court denied Presidio’s
motion to supplement its invalidity contentions regarding the
‘547 Patent with a new prior art reference.

(ECF No. 142, Order

Estopping Supplemental Invalidity Contention (“Estoppel
Order”).)

Pursuant to 35 U.S.C. § 315(e)(2), the Estoppel Order

barred Presidio from raising invalidity grounds in either
supplemental contentions or a revised expert report, that it did
not previously include in its petition for inter partes review
(“IPR”) to the U.S. Patent and Trademark Office (“PTO”).
3-4.)

(Id.

The court also noted Presidio’s lack of specifics

concerning the new prior art it planned to introduce.

14

(Id. 4.)

At trial, while directly examining Mr. Alan Devoe,
Presidio’s President and corporate designee, defense counsel
attempted to introduce a new patent reference, U.S. Patent No.
5,740,010—“a patent of a capacitor [Presidio] made . . . in the
early ‘90s”—into evidence as Trial Exhibit FD.
Plaintiffs’ counsel objected.

(Id. 1116:4.)

(Tr. 1115:5-24.)4
At sidebar,

Plaintiffs questioned the relevancy of Exhibit FD, and suggested
that, based on its image, “this is just an attempt to end run
the Court’s order about not supplementing invalidity
contention[s].”

(Id. 1117:2-1118:5.)

Defendant claimed the

exhibit, which had been on Presidio’s exhibit list without
objection for a “long time,” was intended to demonstrate
Presidio’s “experience with terminations that are only three
sides and not all four sides[.]”

(Id. 1117:13-18.)

Sustaining Plaintiffs’ objection, the court agreed
that Exhibit FD was irrelevant because it had no demonstrated
relationship to the accused products, and further risked
confusion and delay by introducing a previously unheard-of

4

The caption “Tr. _” refers to the transcript for the trial held in this
action from June 10 through June 21, 2019. The transcript for each day’s
proceedings appears on the docket as follows: Day 1 – June 10, 2019 (ECF No.
209); Day 2 – June 11, 2019 (ECF No. 210); Day 3 – June 12, 2019 (ECF No.
211); Day 4 – June 13, 2019 (ECF No. 212); Day 5 – June 14, 2019 (ECF No.
213); Day 6 – June 17, 2019 (ECF No. 235); Day 7 – June 18, 2019 (ECF No.
219); Day 8 – June 19, 2019 (ECF No. 236); Day 9 – June 20, 2019 (ECF No.
204); Day 10 – June 21, 2019 (ECF No. 234). Citations to the trial record
herein refer to the relevant page and line number of the collective
transcript.

15

product to the jury.

(Tr. 1118:6-16.)

After the court ruled,

Presidio’s counsel had the following exchange with Mr. Devoe:
Q: And so in that situation, the termination would
just have three sides, not five, correct?
A: Yes.
Q: And so would that be something that [Presidio]
would make with a dipping process or by some other
method?
A: Oh, if we – if we wanted only three sides?
Q: Correct.
A: There was a product that we were making starting
about 1990 or ’91 that had this characteristic.
. . .
Plaintiffs’ Counsel: Objection, Your Honor.
The Court: Okay. Yes. I am going to sustain that
objection for the reasons discussed at sidebar.
(Id. 1120:22-1121:10.)
Plaintiffs’ counsel elaborated on his objection at
the ensuing sidebar:
Plaintiffs’ Counsel: Your Honor, I’m candidly shocked
that that testimony was just elicited after our
sidebar. I clearly articulated my concern about the
document they raised, and instead of showing the
document, they came and started testifying about it.
It’s highly prejudicial. It has no relevance to the
case. It’s an attempted end run on the Court’s prior
order denying a request to supplement invalidity
contentions, eliciting testimony that the accused
product has a termination structure that was present
in their own device in the 1990s. It’s highly
prejudicial, and I’m -The Court: What relief would you like? Should we start
sanctioning lawyers who disobey my order? I mean,
16

look. I’m not kidding around. I made a ruling. I
thought you understood the ruling. We have repeated []
disregard[] and disrespect of the efforts that we’ve
made to take time at sidebar to discuss the reasons
why objections are made and why they are either
sustained or overruled. This is not the first time
it’s happened. I expressed my concerns about this
behavior that has gone on throughout this trial,
indeed, through this litigation and how really, I will
say, sanctionable it is. But I really need you to put
a stop to this and have you all understand I am
serious. I am not one to scream and yell, but I will
sanction lawyers who repeated[ly] disobey rulings and
orders. And I don't know what else to tell you, except
that you have been warned. And if I’ve made a ruling,
do not contravene it, please. All right?
Defense Counsel: I understand. You –
The Court: I am not ascribing any intention to
anybody. It doesn’t matter to me what the inten[t]ion
is. I am concerned with the effect of having
evidentiary rulings made out of the presence of the
jury. Some of these took a lot of work on everybody’s
part, a lot of money for attorneys’ fees, and yet we
are going over again and again . . . . It becomes
very, very frustrating. And I know at least half of my
colleagues would have had you sanctioned long ago. I’m
trying to [be] tolerant, but I am reaching my end
point. All right?
(Tr. 1122:16-1124:6 (emphasis added)).)
B. “Negligibly over a top surface”
In the claim construction stage, the court interpreted
“negligibly over a top surface,” as recited in the ‘547 Patent,
as “a small amount of termination material is formed on the top
surface of the device body.”

(FCCO 21-22.)

The court also

foreclosed Presidio’s proposed limitation that, “the amount must
also be small in relation to the termination material extending
over a bottom surface of the capacitor device body.”
17

(Id. 21

(alteration omitted).)

As the case advanced, Presidio tried to

impose finite numerical boundaries on the permissible size of
the top termination material.

The court rebuffed these attempts

in the Daubert Order, and definitively foreclosed an extraneous
numerical limitation by holding “no expert may testify to
measurable limitations of termination material on the top
surface, as the court has declined to read a numerical limit
into the term ‘negligibly over a top surface.’”
11.)

(Daubert Order

The Daubert Order forbade Presidio’s expert from

testifying that Plaintiffs “promoted” a maximum of 0.05 mm of
termination material, or other determinate limitations, over the
top surface.

(Id. 11-12.)

On the other hand, the court made

clear it would countenance expert testimony describing the
termination material’s dimensions.

(Id. 12.)

Presidio came close to trespassing the permissible
bounds of argument at trial.

Presidio’s counsel averred in his

opening statement that “negligibly” refers to something that can
be neglected.

(Tr. 168:19.)

The next day, Plaintiffs’ counsel

sought a curative instruction to address Presidio’s apparent
effort to “reconstrue” the term “negligibly.”

(Tr. 229:3-19.)

The court agreed, noting the jury would receive a claim
construction charge before deliberations, and warned Presidio to
“avoid twisting ‘negligibly over the top surface’ to imply
neglectful behavior or neglect.”
18

(Id. 229:20-24.)

Presidio flew close to the proverbial sun several
times thereafter.

For example, on cross, Presidio’s counsel

asked Dr. Hillman if the ‘547 Patent’s specification discussed
“that the top lands typically will not exceed less than 2
mils[.]”

(Id. 865:17-19.)

Plaintiffs objected to the implied

numerical limitation as contravening the Daubert Order. (Id.
867:2-7; see also id. 867:9-13 (“This line of questioning is
objectionable because it’s designed to suggest to the jury that
the claims of the '547 Patent are not infringed, if the amount
of termination material on the top is greater than .05
millimeters.”).)

Presidio’s counsel insisted his question had

no bearing on infringement, but rather, was intended to develop
Presidio’s indefiniteness defense.

(Id. 867:20-868:1 (“[W]hat

we don't know is how far that claim term can stretch and if it
can stretch beyond what’s disclosed as an example in the
specification, and if he can't identify how far it can possibly
stretch, then it’s indefinite; and so it’s directly related to
that issue, and, I assure you, we will not suggest that to
infringe it has to be less or equal to this dimension .05
millimeters.”).)
Plaintiffs’ objection was sustained.

Although the

court found Presidio’s inquiry irrelevant to infringement, Dr.
Hillman’s expert subject matter, the door was left open for
defense counsel to inquire the same of Dr. Shanfield,
19

Plaintiffs’ expert witness on invalidity.

(Tr. 868:6-10 (“Why

don’t we save that for later then. [Dr. Hillman] shouldn’t be
testifying about this issue, if it goes to your indefiniteness
argument, and I don’t think he went much into this on his
direct.”).)

The court sustained further objections to

Presidio’s questioning of Dr. Hillman, including: (1) whether he
measured the top termination of any capacitor (id. 873:7-10);
(2) if “significant amount” is different than “negligible” (id.
934:22-935:7); and (3) whether he measured the top terminations
on the BB capacitors (id. 943:7-25).
Presidio’s expert, Dr. Randall, later testified
regarding the top termination “in the context of the 0.05
millimeter dimension,” prompting another objection from
Plaintiffs’ counsel.

(Tr. 1595:11-16.)

Presidio’s counsel

assured the court that Dr. Randall was merely describing the BB
capacitors in the context of the specification, and noted that
Dr. Randall had prefaced his testimony by acknowledging that the
relevant claim term had no numerical limit in particular.
1596:12-19.)

(Id.

Nonetheless, the court issued a curative

instruction to mitigate the risk of confusion:
The jury is instructed that you may not apply the
numerical
values
that
you
may
find
in
the
specification part of the ’547 to your analysis of
whether or not the BB capacitors violate the ’547
Patent with respect to the termination material
extending negligibly over the top surface. And
secondly, members of the jury, you may not conclude
20

that the BB capacitors do not infringe simply because
they have more than .05 millimeters of termination
material on the top.
(Id. 1605:2-11.)
C. “Substantially L-shaped terminations”
The court construed the term “substantially L-shaped,”
as recited in the ‘547 Patent, to mean “substantially or largely
L-shaped, but not wholly L-shaped.”

(FCCO 20.)

The Daubert

Order clarified that “Dr. Randall may not offer an opinion that
a capacitor with any termination material on the lateral sides
of the accused product would not be ‘substantially L-shaped’ and
thus could not infringe the ‘547 Patent.”
(emphasis in original).)

(Daubert Order 9

Dr. Randall was further precluded from

testifying that “termination material on the latter side of the
accused product renders the terminations not ‘substantially Lshaped.’”

(Id. 10.)
At trial, Presidio asked Dr. Hillman to confirm that,

as stated in the ‘547 Patent itself, “terminations 16 and 18 do
not extend around the lateral sides of device body 14.”

(Tr.

875:23-25; see ECF No. 224-15, ’547 Patent, col. 3 ll. 1-2; id.,
Figure 2.)5

Plaintiffs’ counsel objected, based on an apparent

5

For context, Presidio’s line of questioning referred to Figure 2 of the
‘547 Patent, depicted in the image below, with the device body designated as
14, and the terminations designated as 16 and 18:

21

suspicion that Presidio was “suggest[ing] to the jury that a
capacitor with termination material on the lateral sides cannot
infringe,” contra the court’s construction of “substantially Lshaped termination,” and the Daubert Order.

(Tr. 877:2-10.)

The court agreed and curatively instructed as follows:
[F]or Claim 1 there is no specific limitation on the
amount of termination material on either the top or
lateral sides. You’ll receive further instruction
before you deliberate, but right now we’re just trying
to make sure we stay focused on the things that
matter. You may proceed.
(Id. 882:9-14.)
Presidio later re-introduced the same disclosure
during Dr. Randall’s direct examination, causing Plaintiffs to
lodge yet another objection.

(Tr. 1808:21-24.)

Presidio’s

counsel maintained at sidebar that his inquiry sought only to
show the relevant claim term’s indefiniteness.

(Id. 1810:16-19

(“[A]ll I’m trying to demonstrate is that there is no
description in the patent as to the scope of how much
termination there can or cannot be on specific surfaces and that
is strictly related to the issue of indefiniteness.”).)
Presidio maintained the presence of side termination material

22

was at least relevant to the question of infringement, whilst
conceding that “the mere presence of the lateral side
terminations does not,” taken alone, “render a termination . . .
not substantially L-shaped.”

(Id. 1812-13.)

The court issued

another curative instruction, which incorporated the caveats
noted by Presidio.

(Id. 1815:3-13.)

D. Evidence from Prior Litigation
In a pre-trial motion in limine, Plaintiffs moved to
preclude Presidio from introducing evidence or eliciting
testimony regarding two prior litigations between the parties in
the Southern District of California, each of which concerned a
separate, unrelated patent: Presidio Components, Inc. v. Am.
Tech. Ceramics Corp., No. 08-cv-0335 (S.D. Cal. 2008) (“Presidio
I”) and Presidio Components, Inc. v. Am. Tech. Ceramics Corp.,
No. 14-cv-2061 (S.D. Cal. 2014) (“Presidio II,” and
collectively, with Presidio I, “California Litigations”).

(ECF

No. 181, Order re: Motions in Limine (“MIL Order”) 7-8.)
While cross-examining Plaintiffs’ damages expert,
Presidio’s counsel attempted to confront him with a damages
report from the California Litigations.

(Tr. 1041:7-17.)

Plaintiffs objected and requested a sidebar.

(Id. 1041:21-22.)

Presidio did not conceal the document’s source, but pointed out
that any indicia of its origins had been removed.
13.)

(Id. 1043:11-

Defense counsel further maintained that the document’s
23

sole purpose was to impeach Dr. Woods’ lost profits testimony,
by showing that he made a prior inconsistent statement about the
profit per unit of a given ATC capacitor.

(Id. 1043:7-10.)

Presidio pledged not to ask the witness about the context of the
document.

(Id. 1043:14-17.)

Plaintiffs nonetheless maintained

steadfast opposition to introducing the damages report for any
purpose.

The court sustained Plaintiffs’ objection, reasoning

that the use of the damages report ran afoul of the MIL Order’s
prohibition against references to the California Litigations.
(Id. 1044:23-1045:6.)
E. Other Unreasonable Conduct
Plaintiffs note other sustained objections at trial
regarding: (1) the manner of Presidio’s questioning, including
asking previously-answered questions (Tr. 381-82, 410, 419-20,
491-92, 493-97, 498-500, 845, 852, 943, 1027, 1048, 1058, 1510,
1868, 2258); (2) asking leading questions on direct examination
(id. 1279- 80, 1410, 1760, 1824, 2001); and (3) other
inappropriate behavior (id. 363 (“Let him finish. Manners,
okay.”), 417:19-418:2, 541-42 (“I think blindside is a better
word.”), 1016:11-20, 1035:2-14, 1920:41-1921:1, 2004:3-11).
LEGAL STANDARD
A “[district] court in exceptional cases may award
reasonable attorney fees to the prevailing party.”
285.

35 U.S.C. §

In Octane Fitness, LLC v. ICON Health & Fitness, Inc., the
24

Supreme Court held that an exceptional case is “one that stands
out from others with respect to the substantive strength of a
party’s litigating position (considering both the governing law
and the facts of the case) or the unreasonable manner in which
the case was litigated.”

572 U.S. 545, 554 (2014).

A district court undertakes the “exceptional case”
analysis in the case-by-case exercise of its discretion,
considering the totality of the circumstances.

Id.; Energy

Heating, LLC v. Heat On-The-Fly, LLC, 889 F.3d 1291, 1306 (Fed.
Cir. 2018).

“[T]here is no precise rule or formula” for

considering the totality of the circumstances.

Octane Fitness,

572 U.S. at 554 (internal quotation marks and alteration
omitted) (citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 534
(1994)).

A district court may weigh factors such as

“frivolousness, motivation, objective unreasonableness (both in
the factual and legal components of the case)[,] and the need in
particular circumstances to advance considerations of
compensation and deterrence.”

Id. at 554 n.6 (internal

quotation marks omitted) (citing Fogerty, 510 U.S. at 534 n.19).
Section 285 “imposes no specific evidentiary burden,” and is
instead “a simple discretionary inquiry[.]”

Id. at 557.

Only

once the court determines that the case is exceptional, can it
then determine whether an award of fees is justified.

MarcTec,

LLC v. Johnson & Johnson, 664 F.3d 907, 916 (Fed. Cir. 2012).
25

At bottom, “an award of attorney fees under § 285 is
not intended to be an ‘ordinary thing in patent cases,’ and []
it should be limited to circumstances in which it is necessary
to prevent a ‘gross injustice’ or bad faith litigation.”
BroadSoft, Inc. v. CallWave Commc'ns, LLC, No. CV 13-711-RGA,
2019 WL 3750817, at *6 (D. Del. Aug. 8, 2019) (quoting Forest
Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1329 (Fed. Cir.
2003), and Microsoft Corp. v. WebXchange Inc., 715 F. Supp. 2d
598, 603 (D. Del. 2010)).

Attorneys’ fees will not be imposed

as “a penalty for failure to win a patent infringement suit.”
Octane Fitness, 572 U.S. at 548.

After all, “[t]he legislative

purpose behind [35 U.S.C.] § 285 is to prevent a party from
suffering a gross injustice, not to punish a party for losing.”
Munchkin, Inc. v. Luv n’ Care, Ltd., 960 F.3d 1373, 1378 (Fed.
Cir. 2020) (citation and internal quotation marks omitted).
DISCUSSION
There is no dispute that Plaintiffs are prevailing
parties.

The jury held Presidio liable for all asserted

infringement claims, rejected its invalidity contentions,6 and
consequently, awarded Plaintiffs damages.

This motion thus

turns on whether or not Plaintiffs can establish that this was

6

The jury returned an advisory verdict finding one claim term indefinite
(ECF No. 220-9, Verdict Sheet, Question 12), but the court subsequently
determined that Presidio failed to prove indefiniteness at trial by clear and
convincing evidence. (See ECF No. 214, Memorandum and Order Denying Motion
to Vacate, dated October 16, 2019.)

26

an “exceptional case.”

For the reasons that follow, the court

finds they have not.
I.

Exceptional Case
As noted above, a prevailing party seeking attorneys’

fees under the Patent Act must demonstrate that the underlying
litigation was an exceptional case.

See 35 U.S.C. § 285.

Octane Fitness established a two-pronged disjunctive test to
establish the exceptional case requirement.

The prevailing

party can demonstrate entitlement to fees, either by detailing
the substantive weakness of the non-movant’s overall litigation
position, or by showing that the non-movant litigated the case
in an unreasonable manner.
demonstrated neither.

The court finds Plaintiffs have

As this case is not exceptional,

Plaintiffs are not entitled to an award of attorneys’ fees.
A. Substantive Strength of Litigation Position
Plaintiffs all but concede that their request for
attorneys’ fees rests entirely on Presidio’s litigation conduct.
(ECF No. 225, Pls.’ Reply 9-10.)

Notwithstanding this

concession, the nature of this case warrants further
contemplation.

Doing so heeds the Supreme Court’s admonishment

to consider the totality of circumstances when shifting fees
under § 285.
As it often is with patent litigation, this case was
“long, expensive, and complex.”

TNS Media Research LLC v. TiVo
27

Research & Analytics, Inc., No. 11-CV-4039 (KBF), 2018 WL
2277836, at *4 (S.D.N.Y. May 18, 2018) (record citation and
internal quotation marks omitted).

In the six years since

Plaintiffs commenced suit, there have been, inter alia, two
claim constructions, a stay pending IPR, cross-motions for
summary judgment, thoroughly-briefed evidentiary and Daubert
motions, not to mention extensive discovery.

This all

culminated in a contentious and complex ten-day jury trial.

The

verdict did not end matters, however, a point made obvious by
the flurry of post-trial motions that followed.
220-234.)

(See ECF Nos.

Notably, the court has ordered a new trial limited to

the issue of damages based on a reasonable royalty, which
forestalls a definitive resolution to this case for perhaps
another year, if not more.
Presidio has generally advanced litigation positions
that, if not always successful, were almost uniformly colorable.
Critically, Presidio notched several notable victories
throughout the case.

Plaintiffs originally claimed infringement

of United States Patent No. 6,992,879 (“‘879 Patent”), but
Presidio successfully voided all claims relating to the ‘879
Patent in IPR, as well as Claim 1 of the ‘791 Patent.

Presidio

obtained another favorable result in the Daubert Order, which
precluded Plaintiffs’ damages expert, Dr. Woods, from opining on
a specific royalty rate at trial.
28

Then, at trial, Presidio

persuaded the jury to deliver a highly favorable damages
verdict.

The jury awarded Plaintiffs zero lost profits, even

though Plaintiffs sought almost $19 million by that measure.7

In

addition, the jury found that Presidio did not willfully
infringe the Patents-in-suit, removing the specter of enhanced
damages, and rendered an advisory verdict finding the term
“negligibly over a top surface of said device body” indefinite.8
Presidio also emphasizes, without dispute, that during the life
of this case, “there were no motions to compel, no discovery
sanctions, . . . no allegations that evidence was altered in an
improper manner,” and “timely compli[ance] with all of the
Court’s deadlines, including those pertaining to expert
discovery and trial.”

(Def.’s Opp. 1.)9

7

Although the jury’s royalty verdict is due to be re-tried, the lost
profits verdict stands. (See ECF No. 237.)
8

As noted above, the court subsequently discarded the advisory verdict
and held, as a matter of law, that the claim term was not indefinite. (ECF
No. 214.)
9

Exceptionality often lies where litigation, at conception, was
motivated by extortive factors, but Plaintiffs have not otherwise attributed
any foul motives to Presidio. See Eliya, Inc. v. Steven Madden, Ltd., No.
15CV1272DRHSIL, 2019 WL 5694315, at *6 (E.D.N.Y. Aug. 5, 2019), report and
recommendation adopted, No. CV151272DRHSIL, 2019 WL 4593451 (E.D.N.Y. Sept.
23, 2019) (“[U]nlike many cases in the Second Circuit and elsewhere where an
exceptionality finding was made in light of various plaintiffs’ exploitive
attempts to extract nominal settlements through serial litigation, such
circumstances do not exist here.”). See, e.g., Hockeyline, Inc. v. STATS LLC,
2017 WL 1743022, at *5 (S.D.N.Y. Apr. 27, 2017) (“The need for the deterrent
impact of a fee award is greater when there is evidence that the plaintiff .
. . has engaged in extortive litigation.”) (citations omitted); Auto-Kaps,
LLC v. Clorox Co., No. 15-cv-1737, 2017 WL 6210846, at *3 (E.D.N.Y. Mar. 27,
2017), aff’d, 715 F. App’x 1025 (Fed. Cir. 2018) (declining to find a case
exceptional where the record did not indicate that the plaintiff was “the
type of serial filer that vexatiously litigates to extract nuisance-value
settlements”).

29

To be clear, Presidio’s generally commendable conduct
throughout the case does not excuse otherwise unreasonable
behavior elsewhere in the case, particularly during the jury
trial.

“[A] district court has discretion, in an appropriate

case, to find a case exceptional based on a single, isolated
act.”

Intellectual Ventures I LLC v. Trend Micro Inc., 944 F.3d

1380, 1384 (Fed. Cir. 2019).

But the Supreme Court has also

made clear that the court’s assessment of a single, isolated
act, ought not be divorced altogether from the case’s broader
context.

Rather, “[t]he district court must determine whether

the conduct, isolated or otherwise, is such that when considered
as part of and along with the totality of circumstances, the
case is exceptional . . . .”
U.S. at 554) (emphasis added).

Id. (quoting Octane Fitness, 572
This mandate derives from the

plain text of § 285, which preconditions attorneys’ fees awards
on a showing that the case itself was exceptional, and not
merely the defeated adversary’s discrete act, or set of acts.
Just last year, the Federal Circuit crystallized this
point in Intellectual Ventures I LLC v. Trend Micro
Incorporated, an appeal of a district court order awarding
defendant attorneys’ fees after prevailing at trial.

The award

centered principally on the plaintiff’s expert, who changed his
opinion at trial, and claimed he reversed course based on his
preparation with plaintiff’s trial lawyers.
30

Id. at 1382.

Plaintiff lost at trial, but asserted post-trial that the expert
had not actually changed his opinion, despite clear testimony to
the contrary.

Id.

Although the district court did not find the

case exceptional overall, defendant was awarded attorneys’ fees
“solely with respect to this collection of circumstances
regarding [its expert’s] changed testimony.”

Id. (record

citation omitted).
The Federal Circuit vacated the award in Intellectual
Ventures, and explained that:
[C]ourts frequently award attorney fees under § 285 in
an
amount
related
to
particular
conduct
and
circumstances
that
stood
out
and
made
a
case
exceptional, even when the entirety of the conduct in
the case was not exceptional from start to finish. . .
. For example, . . . we [have] explained that after
determining that a case is exceptional, a court must
award fees in an amount that “bear[s] some relation to
the extent of the misconduct.” But in all such cases
we have required a finding of an exceptional case—not
a finding of an exceptional portion of a case—to
support an award of partial fees.
Because the
district court did not find that the case overall was
exceptional, we vacate its finding of exceptionality
under § 285.
Id. at 1384 (emphasis in original).
Taking stock of Presidio’s litigation position, and
general conduct over nearly six years, the court now considers
Presidio’s isolated transgressions, and whether they warrant an
award of fees under the totality of circumstances.

31

B. Manner in Which the Case Was Litigated
As noted above, the court may exercise its discretion
to find the case exceptional based on isolated acts, although
the Federal Circuit urges a more holistic view of the entire
case.

Based on the factors set forth by Octane Fitness and its

progeny, the court does not find Presidio’s discrete
transgressions merit an award of fees.

At the outset,

Plaintiffs challenge only two pre-trial actions by Presidio.
The remainder concern Plaintiffs’ sustained trial objections.
1. Claim Construction
It became clear during summary judgment that a proper
construction of “terminations” was essential to determining
whether the accused products have “substantially L-shaped
terminations,” and whether the accused devices’ terminations
extend “negligibly over a top surface.”

(SJO 46-48.)

Presidio

contended that Plaintiffs’ infringement theory was contingent on
defining “terminations” to include external electrodes, or
surface pads, which are located at the bottom of the accused
device, i.e., the lower portion of the “L.”

(Id. 46.)

Presidio

asserted that the deposition testimony of Plaintiffs’ engineers
and Dr. Randall belied such an expansive definition.

Presidio

also implied that the “dipping process” used for the accused
devices, which was not used to apply surface pads, constituted
the sole means for applying terminations in the accused devices.
32

(Id. 47.)

Plaintiffs asserted that surface pads were indeed

part of the termination structure, relying on Dr. Hillman’s
expert report in support.

(Id.)

The annotated image from the ‘547 Patent, below,
illustrates the stakes of the dispute.

It depicts an accused

capacitor, in which the red marking signifies the surface pads,
and the yellow marking reflects the portion of termination
material not in dispute:

(Pls.’ Mot. 1-2 (annotated cross-sectional image of a Presidio
BB capacitor).)

Presidio’s construction of “terminations” would

have omitted the red marking (i.e., surface pads) from the
termination structure, thereby rendering the termination
substantially “C-shaped” or “U-shaped,” but not “L-shaped.”
(See SCCO 3 (“According to defendant, the surface pads cannot be
considered part of the termination structure, and therefore must
be disregarded in determining whether the terminations are
substantially L-shaped.”).)

33

Likewise, Presidio’s favored construction would have
brought the accused devices’ top configuration into parity with
the bottom configuration.

In other words, according to

Presidio, the accused product’s “termination” would not extend
“negligibly over a top surface,” as the ‘547 Patent requires.
Thus, Presidio’s construction would have been fatal to
Plaintiffs’ theory of infringement regarding the ‘547 Patent.
Given the stakes, the court felt impelled to refrain from
construing “terminations” without developing a record that could
help determine its plain and ordinary meaning.

(Id. 52.)

Ultimately, the court adopted Plaintiffs’ construction,
incorporating surface pads into the scope of “terminations,”
(see SCCO), and denied Presidio’s successive motion for summary
judgment.
As an initial matter, the Federal Circuit has observed
that it is not uncommon for the court to construe a term in a
patent litigation, “only to have [the parties] dispute evolve to
a point where they realize that a further construction is
necessary.”

GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d

1304, 1310 (Fed. Cir. 2014).

Here, at summary judgment, the

parties could only point the court to two items of information
in the record, both from the Markman hearing, that elucidated
the “plain and ordinary meaning” of “terminations”: Dr.
Shanfield’s statement that terminations are “the things at the
34

ends of the capacitor,” and Dr. Randall’s testimony that
electrodes are connected to the termination end.

(SJO 50.)

The

court declined to construe the term on such a bare record, and
concluded that both parties had “put the proverbial cart, i.e.,
determining whether the accused products practice a limitation,
before the horse, i.e., properly construing that limitation.”
(Id.)
Notwithstanding, Plaintiffs allege that Presidio knew
in early 2015 that it would be necessary to interpret
“terminations” to avoid infringement (see Pls.’ Mot. 1-2), but
for reasons never stated or surmised, did not pursue a
construction of the term.

The smoking gun, Plaintiffs imply,

lies in Plaintiffs’ April 15, 2015 response to Presidio’s
Interrogatory No. 11, regarding infringement.

There, Plaintiffs

identified cross-sectional images of capacitors to show that
Presidio’s BB capacitors have the “substantially L-shaped
terminations” claimed in the ’547 Patent.

(Id. 1; ECF No. 223-

3, Plaintiffs’ Responses to Presidio’s First Set of
Interrogatories, No. 11.)

Among the images Plaintiffs produced

was Bates No. ATC001167, annotated above.

But, whereas the

annotated image of the capacitor specifically designates the
surface pad in red marking, the image Plaintiffs actually
produced on April 15, 2015, is not nearly so conspicuous:

35

(ECF No. 223-4.)

In other words, the court does not think the

exemplar Plaintiffs produced in 2015 was so overt, that it may
be presumed Presidio knew the accused device’s termination
structure included the capacitor’s surface pads.
As Presidio also notes, Plaintiffs’ discovery response
did not explicitly state that “terminations” comprised external
pads.

(Def.’s Opp. 14.)

Though this is true, literally

speaking, it does not to rule out the possibility that Presidio
may have known that “terminations” included surface pads, nor
does it absolve Presidio for failing to make that deduction.
Nevertheless, the court declines to impute to Presidio the
knowledge that Plaintiffs presume, as it would require improper
speculation.

Cf. Pragmatus Telecom LLC v. Newegg Inc., No. CV

12-1533-RGA, 2016 WL 675529, at *3 (D. Del. Feb. 18, 2016)
(court “decline[d] to find a nefarious motive” for purposes of §
285, “as doing so would require a quite speculative
inference.”).

36

Plaintiffs further argue that Presidio failed to
identify “terminations” as requiring construction when the
parties exchanged claim terms and proposed constructions on
October 30, 2015.

(Pls.’ Mot. 2.)

In addition, Plaintiffs

detected the “latent claim construction dispute” with respect to
“terminations” in their first claim construction reply,
insisting the matter “should be addressed” at the time of the
first Markman hearing.

(Id. 2-3.)

According to Plaintiffs, the

blame for this lapse ought to fall squarely on Presidio’s
shoulders, for remaining silent at the August 2016 Markman
hearing.
Plaintiffs neglect to explain, however, why the fault
for not seeking an earlier construction of “terminations” should
lie exclusively with Presidio.

Just as Presidio failed to

identify “terminations” for construction when the parties
initially exchanged terms, so too did Plaintiffs.

Plaintiffs

credit themselves with identifying the potential claim
construction dispute in a reply brief.

The question begs, what

further steps did Plaintiffs take to have the issue addressed at
the first Markman hearing, and decided in the First Claim
Construction Order, in order to avoid a second round of claim
construction?

None, at least as far as the court is aware.

The

hearing transcript contains only vague allusions to the issue,
but no overt pursuit of the matter by Plaintiffs, which is
37

surprising given that Plaintiffs supposedly recognized how
critical the construction of “terminations” was to the case.
Plaintiffs identify no other efforts to bring this “latent”
dispute to the fore prior to summary judgment.
“In considering the totality of the circumstances in a
[s]ection 285 analysis, the court can consider the conduct of
the movant[.]”

Barry v. Medtronic, Inc., 250 F. Supp. 3d 107,

122 (E.D. Tex. 2017) (citing Gaymar Indus., Inc. v. Cincinnati
Sub–Zero Prod., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015)); see
also Power Mosfet Techs., LLC v. Siemens AG, 378 F.3d 1396, 1415
(Fed. Cir. 2004) (affirming denial of fees where district court
“credited each of the parties with some share of the bad
behavior” and reasoned that an award would “tend to reward other
wrongdoers.”).

Here, Plaintiffs took a lackadaisical approach

to construing “terminations,” and failed to meaningfully pursue
the matter prior to summary judgment.

Presidio should not bear

sole responsibility for the resulting eight-month delay.

Here,

the fault appears to be mutual.
In support of their motion, Plaintiffs cite Hunter
Douglas, Inc. v. Great Lake Woods, Inc., an “illustrative” case
in which the plaintiff was awarded fees from a defendant who,
among other things, failed to identify two claim terms for
construction.

No. 15-CV-00106-REB-KLM, 2019 WL 1375675, at *1

(D. Colo. Mar. 27, 2019).

In Hunter, defendants initially
38

identified 13 claim terms that purportedly required
construction, and proposed that the terms “front tilt cord” and
“rear tilt cord” be construed as “front tilt cables” and “rear
tilt cables.”

Id. at *15.

Yet defendants never actually sought

construction of “front tilt cord” or “rear tilt cord.”

Id.

At

trial, however, defendants contested the meaning of these terms.
Id.

Thus, Hunter may be readily distinguished from this case as

an instance where the defendant clearly knew, and affirmatively
acknowledged, that certain terms were ripe for construction, but
still allowed a latent dispute to fester until trial, causing
needless delay.

The blame, therefore, was appropriately placed

squarely on the Hunter defendants’ shoulders.
The claim construction lapse in Hunter was also just
the tip of the iceberg of defendants’ misconduct.
myriad

Defendants’

transgressions coalesced to make the case exceptional:

defendants had no objectively reasonable basis to contend they
did not infringe; made no effort to understand the underlying
patent they were accused of infringing; failed to proffer any
significant evidence to support their non-infringement defense;
pursued a legally untenable and objectively meritless invalidity
claim; and left the court with the overall impression that
defendants were strategically protracting the litigation to
force their adversary to spend more money.

39

Id. at *15-16.

The

totality of the circumstances thus warranted an exceptionality
finding in Hunter.

The facts here are not comparable.

2. Daubert Motion
Plaintiffs find two faults with Presidio’s
unsuccessful challenge to Dr. Hillman’s opinions.

First,

Plaintiffs contend that Presidio lacked any basis to argue that
Dr. Hillman’s infringement opinions were based on
unrepresentative samples.

(Pls.’ Mot. 12.)

Second, Plaintiffs

decry Presidio’s “specious assertion” that Dr. Hillman’s
infringement opinions for the ‘791 Patent were insufficient and
unreliable based on Dr. Hillman’s purported failure to measure
the length and width of the dielectric layers for each BB
capacitor, without accounting for local defects and cornerrounding.

(Id. 14.)
Presidio’s Daubert challenge did not represent the

finest lawyering.

Presidio’s argument relied, largely, on

efforts to squirrel its way out of representations it made to
Plaintiffs, and which Plaintiffs reasonably relied on.
Plaintiffs requested samples of every accused product throughout
discovery, and with each production Presidio represented that
the samples it produced were “representative.”

(See, e.g., ECF

No. 223-5, Presidio’s Responses to Plaintiffs’ First Set of
Requests for Production of Documents and Things, dated April 15,
2015, at 9; ECF No. 223-6, Presidio’s Responses to Plaintiffs’
40

Second Set of Requests for Production of Documents and Things,
dated September 7, 2016, at 3-4.)

Presidio then belatedly

sought to “clarify” its representations, perhaps recognizing
that its unsolicited description of the capacitors as
“representative” made it all the easier for Plaintiffs’ expert
to render an infringement opinion.
Presidio’s correspondence in 2017 was a prelude to its
Daubert motion argument that “each capacitor within a given lot
is so different that an [infringement] analysis of one or two
cannot form the basis of an opinion as to the remainder of the
lot.”

(See Daubert Order 40.)

In a letter to Plaintiffs, dated

January 4, 2017, Presidio proclaimed that “representative
samples” did not mean “the samples that have been produced are
the same in all respects as other capacitors.”

(ECF No. 224-24,

Letter from Brett A. Schatz, Esq. to Brad M. Scheller, Esq.,
dated Jan. 4, 2017, ECF pp. 2-4.)

Two weeks later, Presidio

tried again to disclaim its use of the word “representative.”
(Id., Letter from Brett A. Schatz, Esq. to Brad M. Scheller,
Esq., dated Jan. 17, 2017, ECF pp. 5-7.)
continued into February.

Presidio’s disavowals

(E.g., id., Email from Brett Schatz,

Esq. to Brad M. Scheller, Esq., et al., dated Feb. 22, 2017, ECF
p. 8.)

Throughout, Plaintiffs steadfastly, and reasonably, held

Presidio to its earlier representation.

41

The dispute boiled over in Daubert briefing, and the
related hearing, as Presidio persistently maintained that Dr.
Hillman’s failure to test a sufficient sample size of capacitors
rendered his infringement opinion fatally deficient.

At the

Daubert hearing, however, the flimsiness of Presidio’s assertion
became manifest.

Plaintiffs highlight the following exchange as

emblematic of Presidio’s frivolous argument:
The
Court:
Did
you
represent
that
representative samples of your product?

they

were

Defense Counsel: No. No. I will say, as they requested
ten capacitors in this case size, a statement in the
response to production said: Representative samples
have been sent. Then there was a dispute over what
that meant. We made it very clear that it did not mean
that they were the same as all the other capacitors,
nor –
The Court:
samples?

What

did

you

mean

by

representative

Defense Counsel: You know, nothing. Actually, it was
we are handing over—
The Court: You are just a lawyer who uses words that
mean nothing? I mean, you are representing in a
federal
court
litigation
that
you
are
sending
representative samples but that word didn’t mean
anything? Seriously?
Defense Counsel: Your Honor, we made it very clear, in
response to interrogatories, that that did not mean
that they were the same.
The Court: What did it mean?
Defense Counsel: Your Honor, to be honest, we were
just
saying
here’s
samples
and
the
word
“representative” did not mean they are exactly the
same in every aspect, and that became a dispute
42

amongst the parties and we made it very clear, and
that led to the production of more capacitors.
The Court: Okay, what else do you have? Let’s wrap
this up.
(ECF No. 223-10, Transcript of Daubert Hearing, held May 7,
2019, Tr. 72:22-73:10.)

The Daubert Order closed the door on

this “unpersuasive line of attack,” rejecting Presidio’s
challenge to Dr. Hillman’s opinion, and with it, Presidio’s
“attempts to construe plaintiffs’ relevant discovery requests as
seeking documents concerning ‘why each and every capacitor is
different.’”

(Daubert Order 40-42 (emphasis added).)

The court wants to be clear: Presidio’s attempt to
renege on its own admissions merits rebuke.

And if § 285

authorized the award of fees based on “exceptional arguments” or
“exceptional motions,” intended to sanction any foolish act, the
court might well have granted Plaintiffs’ motion.
not.

But it does

The court must consider Presidio’s conduct in the broader

context of the case, and even the Daubert motion itself, under
the totality of the circumstances.

In addition to Presidio’s

otherwise professional conduct throughout the litigation,
mitigating factors militate against an exceptionality finding.
First, although Presidio’s arguments may have been objectively
unreasonable, it does not appear that dilatory or pernicious
motives were at play.

Presidio began disavowing its admission

in January 2017, three months before Dr. Hillman completed his

43

expert report.

(See ECF No. 146-2, Expert Report of Dr. Craig

Hillman, dated April 19, 2017.)

There was thus sufficient time

for Plaintiffs to apprise Dr. Hillman of Presidio’s disavowal,
and for Dr. Hillman to account for Presidio’s contention before
serving his expert report.
Second, Presidio advanced other, more colorable lines
of attack against Dr. Hillman’s opinion.

For instance, Presidio

challenged Dr. Hillman’s opinion that the accused devices
feature “co-extensive” first and second dielectric layers, as
disclosed in the ‘791 Patent.

In a Request for Admission,

regarding an image of an accused device, Plaintiffs asked
Presidio whether “the length and width dimensions of the
dielectric material” above the capacitor’s electrode were “coextensive” with the corresponding dimensions for the dielectric
material below the electrode.

(ECF No. 223-7, Presidio’s

Responses to Plaintiffs’ First Set of Requests for Admissions,
dated Sept. 5, 2015, at 20-21.)
(Id.)

Presidio replied, “Admitted.”

Later, however, Presidio contended that its admission

only applied to the specific dimensions displayed in the image,
but that “if there is a point along the width of the capacitor
where the width of the second dielectric layer is different than
that of the first dielectric layer, then the widths of the two
layers would not be coextensive.”

44

(Daubert Order 54.)

Although Presidio’s Daubert challenge was undone by
this admission, it was at least arguably plausible that Presidio
did not expect its concession concerning a single capacitor to
apply to each and every device accused of infringing the ‘791
Patent.

Critically, neither the RFA nor Presidio’s response

affirmatively stated the capacitor was “representative” of other
capacitors in the same lot.

Presidio certainly promoted a weak

argument, and if Presidio believed additional data points were
required to fairly assess the “co-extensive” requirement, its
counsel should have crafted its discovery responses with more
precision.

But not every instance of shoddy lawyering merits

sanction, or makes a case exceptional.

Effective and zealous

advocacy sometimes requires attorneys to modify their case
theory, and cabin prior representations.

That is essentially

what Presidio tried to do here, albeit unsuccessfully.

The

court does not find that a single motion, even an exceedingly
weak one, warrants an exceptionality finding, absent
demonstrably foul motives, significant prejudice, or other
aggravating circumstances identified by the Supreme Court in
Octane Fitness.
Moreover, Presidio’s less colorable Daubert
arguments should not be considered in isolation, but rather in
tandem with Presidio’s successful challenge to Dr. Woods’ expert
opinion.

In granting Presidio’s motion to strike Dr. Woods’
45

reasonable royalty opinion, the court concluded that Dr. Woods’
treatment of Plaintiffs as a single entity for the purposes of a
hypothetical licensing negotiation, see Georgia-Pacific Corp. v.
U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970),
“could not be untangled in a reliable way.”
72.)

(Daubert Order 71-

Presidio thus secured a critical victory: the court deemed

Dr. Woods’ royalty rate conclusion inadmissible.

(Id. 73.)

Third, Plaintiffs cite no authority reasonably
susceptible to supporting an exceptionality finding based on a
single errant motion.

For example, Plaintiffs rely on

AdjustaCam, LLC v. Newegg, Inc., in which the Federal Circuit
reversed a denial of the defendant’s § 285 motion.
1353, 1361 (Fed. Cir. 2017).

861 F.3d

The Federal Circuit held it was

error for the district court to deem the case unexceptional even
though “no reasonable factfinder could conclude that
[defendant’s] products infringe.”

Id.

The Federal Circuit also

found that the case was litigated in an unreasonable manner
because plaintiff, among other things, repeatedly used afterthe-fact declarations, served a new expert report on defendant
the day of that expert’s deposition, and filed supplemental
declarations making new infringement arguments for the first
time to the Federal Circuit on appeal.
clearly distinguishable.

Id.

Adjustacam is

The non-movant not only maintained an

untenable position, unlike Presidio, but also sandbagged its
46

adversary by serving a last-minute expert report.

Here,

Presidio disavowed its position three months before Dr. Hillman
served his expert report, which indicates non-dilatory motives.
Plaintiffs also cite BroadSoft, Inc. v. CallWave
Communications, LLC, a non-controlling opinion decided in the
Delaware District Court.

2019 WL 3750817, at *1.

The Broadsoft

court generally observed that “[c]ourts imposing exceptional
case status due to litigation conduct generally find that the
nonmoving party took positions contrary to its own evidence or
prior statements,” but concluded the record before it did not
support a fee award for plaintiff because defendant only
modified its contentions in response to the plaintiff’s own
supplementation of the record, and maintained an overall
reasonable litigation position.

Id. at *6.

Broadsoft based the

above observation on two other cases, but each one, in turn,
merely reinforces the need to assess the non-movant’s litigation
conduct in totality, rather than at its nadir.

First, in Bayer

CropScience AG v. Dow AgroSciences LLC, the Federal Circuit
found the district court had not abused its discretion by
granting defendant fees under § 285.
2017).

851 F.3d 1302 (Fed. Cir.

The district court principally based the fee award on

Bayer’s failure to conduct a diligent pre-suit investigation,
“at least of its own easily-obtainable evidence,” which, would
have made plain the futility of its lawsuit.
47

Id. at 1307.

Bayer’s whole case was buttressed by a contract interpretation
that was “directly contradicted” by evidence obtained through
early discovery, and a pre-suit investigation would have
uncovered that “no witness supported Bayer’s construction.”
at 1305.

Id.

Bayer CropScience therefore belongs in an entirely

separate category than this case.

The former litigation would

not have been filed but for Bayer’s assertions in contradiction
to the record.

Presidio’s disavowal of its prior admission was

one, dubious act, in an otherwise colorable, and partially
successful motion, and part of an overall meritorious defense.
The other case cited in Broadsoft, Intendis GmbH v.
Glenmark Pharms. Ltd., actually undermines Plaintiffs’
contention.

117 F. Supp. 3d 549 (D. Del. 2015).

Intendis, as

the prevailing party in a patent infringement suit, sought fees
for, among other things, defendants’ repeated shifting of
positions on key issues throughout the litigation, including
positions that were contrary to expert testimony and its own
prior statements.

Id. at 581.

The court rejected Intendis’ §

285 application, however, finding that even if “some of
defendants’ arguments were unsupported or contradictory,” their
conduct did not rise to the level of “exceptional.”

Id.

The

court particularly noted the “considerable efforts” needed to
reach an infringement determination, suggesting ”that defendants
were [not] so lacking a good faith belief of non-infringement as
48

to merit” an award of fees under § 285.

Id.

Likewise, taking

into account Presidio’s questionable Daubert argument, this case
does not rise to the level of exceptional, given Presidio’s
apparently good faith conduct throughout the balance of the
litigation.
3. Trial Objections
On balance, Presidio’s trial behavior does not warrant
fee-shifting, though it came close.

Although Presidio pushed

boundaries to the point where the court discussed—but did not
impose—sanctions, defense counsel’s conduct was not so vexatious
or lacking in good faith as to make this case exceptional.
Plaintiffs list a series of infractions that appeared
to defy the court’s orders.

For example, the court sustained

Plaintiffs’ objection to the introduction of defense Exhibit FD,
a patent of a Presidio capacitor from the early 1990s, based on
the pre-trial Estoppel Order, which prohibited Presidio from
supplementing its invalidity contentions.

Plaintiffs accused

Presidio at sidebar of attempting to end-run around the Estoppel
Order, but defense counsel denied the charge, claiming the
document was introduced solely to establish Presidio’s
experience with certain terminations.

After Plaintiffs’

objection to Exhibit FD was sustained, Presidio’s witness, who
was not present at the sidebar, commented on the prior art
reference in the very exhibit that had been excluded just
49

moments prior, prompting an immediate objection from Plaintiffs’
counsel.

Although the court mentioned the possibility of

sanctions at the time, in retrospect, it is less than clear that
defense counsel intentionally elicited the objectionable
testimony from the witness.

Counsel appears to have been

inquiring about Presidio’s experience with three-sided
terminations broadly, which, apparently prompted the witness to
mention the patent in Exhibit FD.

Presidio’s counsel should

have prepared the witness not to violate the Estoppel Order and
prefaced his question by warning the witness not to mention the
specific exhibit that had just been precluded.

But defense

counsel’s lapse is more suggestive of carelessness than
intentional defiance of the court’s rulings.
Defense counsel also skated on thin ice in his opening
statement, when he remarked that “negligibly” refers to
something that can be neglected.

Plaintiffs’ counsel asserted

at trial that this was an improper attempt to reconstrue the
term “negligibly,” as relating to neglect or neglectful
behavior.

The court agreed, but refrained from a curative

instruction, choosing instead to clarify matters in its final
instructions to the jury.

Elsewhere, defense counsel inquired

about the specific measurements of the top termination material,
prompting Plaintiffs to object that Presidio was conflating
“negligibly” with a determinate numerical limitation, a
50

construction rejected by the court.

These objections were

sustained, but Presidio asserted that questions concerning the
top termination’s numerical limits were asked, not for the
purpose of challenging infringement, which the First Claim
Construction and Daubert Orders forbade, but rather, for the
permissible purpose of advancing Presidio’s indefiniteness
contention.

Presidio even elicited testimony from its own

witness that the numerical limitation had no bearing on
infringement, lending some credence to Presidio’s good faith.
Though the court issued a curative instruction to avoid juror
confusion, it did not necessarily do so as an indictment of
counsel’s behavior.
Presidio perhaps strayed closest to a direct violation
of the court’s orders when it introduced a damages report from
the California Litigations.

The MIL Order expressly precluded

Presidio from introducing evidence or eliciting testimony
regarding Presidio’s earlier cases against ATC in the Southern
District of California.

While cross-examining Dr. Woods

regarding his lost profits opinion, defense counsel introduced
the damages report, purportedly to show that Dr. Woods made a
prior inconsistent statement about ATC’s profits per unit for
given capacitor.

But even if the document contained a prior

inconsistent statement, the document was not admissible.
Presidio also assured Plaintiffs and the court that any
51

reference to the California Litigations was removed from the
exhibit, and that defense counsel would not ask Dr. Woods about
the document’s origins.

On the one hand, Presidio’s reliance on

semantics to evade the MIL Order suggests a degree of
insincerity.

On the other hand, the issue was resolved with a

brief sidebar, and Plaintiffs incurred no prejudice.
The court does not take issue with Presidio’s line of
questioning concerning the “substantially L-shaped terminations”
limitation in the ‘547 Patent.

The First Claim Construction and

Daubert Orders generally precluded testimony and argument that
the presence of termination material on the lateral sides of the
capacitor barred infringement per se, but they did not
altogether bar evidence of termination material on the lateral
sides.

At trial, Presidio inquired about Figure 2 of the ‘547

Patent, depicting a “substantially L-shaped termination,” first
while cross-examining Dr. Hillman, and then on direct
examination of Dr. Randall.

Plaintiffs objected each time,

concerned about the implication that lateral termination
material was incompatible with the “substantially L-shaped
termination” limitation.

Defense counsel insisted he was simply

eliciting testimony to support Presidio’s indefiniteness
defense, and also that lateral termination material was
potentially probative of infringement.

Even though Plaintiffs’

objections were sustained, the court’s ultimate curative
52

instruction incorporated the very caveats noted by Presidio.
The court sees no reason to construe the relevant conduct as
anything other than zealous advocacy.

If anything, the sequence

of objection, sidebar, and curative instruction adhered to
appropriate trial practice.

Plaintiffs’ counsel, advocating for

its own clients, rightly worried that that the jury could
misinterpret the testimony Presidio sought to elicit, and
objected.

Confronted by equally colorable arguments, the court

took the step most likely to mitigate error by the jury.
Nothing in this sequence implicated Presidio as a bad faith or
unreasonable actor.

See RMH Tech LLC v. PMC Indus., Inc., 352

F. Supp. 3d 164, 206 (D. Conn. 2018) (“A patentee’s vigorous
prosecution of its property rights or an accused infringer's
dogged defense of its product should not result in a finding
that a case is exceptional as a matter of course.”)
Finally, the court has considered Plaintiffs’
miscellaneous allegations of trial misconduct.

Plaintiffs

scarcely explain how the documented “misconduct” is anything
other than commonplace, adversarial trial practice.

Having

undertaken an independent review of the record, the court finds
nothing particularly untoward, much less exceptional, about
defense counsel’s trial conduct, notwithstanding the unfortunate
need to conduct numerous sidebars.

53

CONCLUSION
For the foregoing reasons, the court DENIES
Plaintiffs’ Motion for Attorneys’ Fees.

Plaintiffs have failed

to demonstrate that this was an exceptional case, either with
respect to the substantive strength of Presidio’s litigating
position, or its conduct throughout the case.

Accordingly,

there is no need to determine the amount of fees justified.
Defendant is advised that the court may revisit the issue of
fee-shifting should Defendant persist in certain questionable
conduct and practices, of the nature discussed herein, both
leading up and during the new trial.

SO ORDERED.
Dated:

September 23, 2020
Brooklyn, New York
/s/
Kiyo A. Matsumoto
United States District Judge

54