By Nicholas Kaster, J.D.
The court found that the claim term informed a POSITA as to the scope of the claimed invention to a reasonable certainty.
In an action for patent infringement in connection with certain electrical devices brought by American Technical Ceramics Corp. against Presidio, Inc., the federal district court in Brooklyn has found that a key patent claim term—"negligibly over a top surface"—was not invalid for indefiniteness. The court also found that the patent owner did not waive its right to sue for infringement of the patent by failing to enforce its rights for more than a decade after becoming aware of the alleged infringement(American Technical Ceramics Corp. V. Presidio Components, Inc., October 16, 2019, Matsumoto, K.).
American Technical Ceramics Corp. (ATC), owner or exclusive licensee of three patents relating to "multilayer ceramic capacitors" filed suit against Presidio, alleging that Presidio infringed U.S. Patent Nos. 6,144,547 (the ’547 Patent), 6,337,791 (the ’791 Patent), and 6,992,879 (the ’879 Patent). Both parties were manufacturers of electrical devices, including capacitors, which are electronic components used in various electric systems, including consumer electronics. ATC manufactured a product known as Accu-P capacitor. Presidio manufactured BB capacitors that ATC contended practiced, and therefore infringed, the patents-in-suit.
At trial, the jury found that Presidio had not established by clear and convincing evidence that the ‘791 Patent was invalid as anticipated, as obvious, or as indefinite. The jury also found that Presidio had not established by clear and convincing evidence that the ‘547 Patent was invalid as anticipated or obvious, or that the claim term "substantially L-shaped terminations" was indefinite. The jury, however, found by clear and convincing evidence that the claim term "negligibly over a top surface of said device body" was indefinite. The parties disputed whether this finding by the jury was a general verdict and what weight the court should give the verdict. Presidio characterized the verdict as a "general verdict" without explaining the effect, while ATC argued the verdict was merely advisory and should be afforded no weight. The jury also returned a verdict for plaintiffs as to infringement, finding all the accused products infringed either the ‘547 Patent or the ‘791 Patent. The jury found, however, that Presidio did not willfully infringe on the ‘791 Patent.
Presidio then requested the court, post-trial, (1) to adopt the jury’s verdict that the ‘547 Patent was invalid because the claim term "negligibly over a top surface" was indefinite and (2) to the find that ATC waived its right to sue for infringement of the ‘791 Patent.
Indefiniteness. In supporting its case for indefiniteness, Presidio argued that there was no limit specified in the patent’s intrinsic record, as evidenced by testimony of the parties’ respective experts at trial. Based on this testimony, Presidio argued that skilled artisans, purported POSITAs, could not identify the scope of the terms "negligibly" or "small," and that the patent itself offered no limitation for the terms.
The ‘547 Patent did, however, specify a reasonably certain limitation, the court found—that is, a negligible top termination must comprise a termination that is "substantially L-shaped." The jury found this term informed a POSITA as to the scope of the claimed invention to reasonable certainty. Presidio responded by arguing that "negligible" and "small" were not defined as any specific amount of termination material on the top surface that is less than the bottom surface. However, the court found that such specificity was not required.
Presidio’s argument required reading the term "negligibly" in a vacuum, the court stated. Federal Circuit precedent, however, does not permit this analysis without the benefit of context. Though the term "negligibly" itself is indeed vague as to its bounds, the court stated, reading the claim term in the context of the intrinsic record provided a ready limitation. The court found that the ‘547 Patent’s claim term "negligibly over a top surface" informed a POSITA as to the scope of the claimed invention to a reasonable certainty. Thus, Presidio failed to establish by clear and convincing evidence that the claim term "negligibly over a top surface" was invalid for indefiniteness.
Waiver. Presidio argued that ATC knew that Presidio’s BB capacitors had vias claimed in the ‘791 Patent in 2002, concluded that the BB capacitors were covered by a Monsorno BMC patent in 2004, and yet chose not to sue Presidio. Presidio characterized this as "actual knowledge of the infringement of the Monsorno patents." ATC responded that "actual knowledge" requires a single person to have knowledge that the BB capacitors contained vias and knowledge of the ‘791 Patent.
Based on this evidence, and plaintiffs’ expert, the court found that employees at ATC had knowledge that BB capacitors contained vias sometime between 2002 and 2004. However, the court stated, this allegation alone—that ATC’s employees, and possibly its management, knew the BB capacitors contained vias—was not sufficient to establish that ATC was aware the BB capacitors infringed the ‘791 Patent as early as 2002 or 2004. Presidio was required to tie the fact that BB capacitors contained vias to the ‘791 Patent to establish ATC’s waiver. Knowledge of the vias alone cannot do this.
Presidio attempted this connection by citing an email from ATC’s engineer that indicated he was aware of Presidio products that were covered by a Monsorno patent. However, the court found that the email left "significant room for dispute." The court found that Presidio failed to clarify the uncertainty surrounding this email with evidence sufficient to leave the court with a clear and abiding conviction that the ATC’s engineer was aware that the BB capacitors, as early as 2004, potentially infringed the ‘791 Patent. Thus, the court found that Presidio did not establish by clear and convincing evidence that ATC had, with full knowledge of its rights, intentionally waived its right to sue under the ‘791 Patent.
This case is No. 2:14-cv-06544-KAM-GRB.
Attorneys: Brad Michael Scheller (Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC) and Heather Repicky (Nutter McClennen & Fish LLP) for American Technical Ceramics Corp. and AVX Corp. Brett Schatz (Wood, Herron & Evans, L.L.P.) and Jeremy D. Richardson (Freeborn & Peters LLP) for Presidio Components, Inc.
Companies: American Technical Ceramics Corp.; AVX Corp.; Presidio Components, Inc.
MainStory: TopStory Patent NewYorkNews
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