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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA
PRESIDIO COMPONENTS, INC.,
Plaintiff, v.
AMERICAN TECHNICAL CERAMICS CORP.,
Defendant.
Case No.: 14-cv-02061-H-BGS
SCHEDULING ORDER
On September 2, 2014, Presidio filed a complaint for patent infringement against ATC, alleging infringement of U.S. Patent No. 6,816,356 (“the ’356 patent”). (Doc. No. 1, Compl.) The ’356 patent is entitled “Integrated Broadband Ceramic Capacitor Array.” U.S. Patent No. 6,816,356 B2, at 1:1-2 (filed Apr. 14, 2003). The patent issued on November 9, 2004 and claimed priority to an application filed on May 17, 2002. See id. (See Doc. No. 276-3 ¶ 4; Doc. No. 356-1 at 5.)
On December 8, 2015, the United States Patent and Trademark Office issued a reexamination certificate for the ’356 patent, amending certain claims of the patent.1 (Doc.
1 The PTO previously issued a reexamination certificate for the ’356 patent on September 13, 2011. (Doc. No. 170-1, FAC Ex. 1.) This reexamination certificate did not alter any of the claims at issue in the present action. (Id.)
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No. 170-2, FAC Ex. 2.) On December 22, 2015, Presidio filed a first amended complaint, alleging infringement of the ’356 patent as amended by the reexamination certificate. (Doc. No. 170, FAC.) Specifically, Presidio alleged that ATC’s 550 line of capacitors infringes claims 1, 3, 5, 16, 18, and 19 of the ’356 patent. (Id. ¶ 26.) On December 22, 2015, ATC filed a second amended answer and counterclaims to the first amended complaint, adding an affirmative defense of absolute and equitable intervening rights and an affirmative defense and counterclaim of unenforceability due to inequitable conduct. (Doc. No. 171.)
On January 12, 2016, the Court denied Presidio’s motions for: (1) summary judgment of definiteness; (2) summary judgment of infringement; (3) summary judgment of ATC’s equitable affirmative defenses; and (4) summary judgment of no acceptable non-infringing alternatives. (Doc. No. 210.) In the order, the Court also denied ATC’s motions for: (1) partial summary judgment of non-infringement; (2) summary judgment of indefiniteness; and (3) summary judgment of no willful infringement. (Id.) On February 10, 2016, the Court granted ATC’s motion for summary judgment of its affirmative defense of absolute intervening rights and held that Presidio is entitled to infringement damages only for the time period following the issuance of the reexamination certificate on December 8, 2015. (Doc. No. 234 at 28.) In that order, the Court also dismissed with prejudice ATC’s affirmative defense and counterclaim that the ’356 patent is unenforceable due to inequitable conduct. (Id. at 33.)
The Court held a jury trial beginning on April 5, 2016. (Doc. No. 297.) On April 18, 2016, the jury returned a verdict finding direct infringement and induced infringement of claims 1, 3, 5, 16, 18, and 19 of the ’356 patent by ATC as to all of the accused products in the action: the 550L, the 550S, the 550U, and the 550Z capacitors. (Doc. No. 328 at 2-3.) In addition, the jury found that Presidio had proven by clear and convincing evidence that ATC’s infringement of the asserted claims was willful. (Id. at 4.) The jury awarded Presidio $2,166,654 in lost profit damages. (Id.) The jury also issued an advisory verdict as to indefiniteness and found that ATC had failed to prove by clear and convincing
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evidence that claim 1 of the ’356 patent is indefinite.2 (Id. at 5.)
On June 17, 2016, the Court issued a memorandum decision finding in favor of Presidio and against ATC on all issues submitted to the Court, including indefiniteness, equitable intervening rights, equitable estoppel, and laches. (Doc. No. 368.) On June 17, 2016, the Court entered judgment in favor of Presidio on all causes of action and awarded Plaintiff $2,166,654 in damages. (Doc. No. 369.)
Following the Court’s entry of judgment, the parties filed various post-trial motions. On August 17, 2016, the Court issued an order ruling on the parties’ post-trial motions. (Doc. No. 440.) In the order, the Court denied ATC’s Rule 50(b) motions for judgment as a matter of law and Rule 59(e) motions for a new trial. (Id. at 7-27.) The Court also granted Presidio’s motion for a permanent injunction; denied Presidio’s motion for enhanced damages and attorney’s fees; and granted Presidio’s motion for supplemental damages and interest. (Id. at 27-48.) On August 27, 2016, the Court entered the permanent injunction. (Doc. No. 441.)
The parties cross-appealed to the Federal Circuit. (Doc. Nos. 443, 453.) On November 21, 2017, the Federal Circuit issued an opinion in the above case: (1) affirming the Court’s finding of definiteness, grant of absolute intervening rights, and denial of enhanced damages; (2) reversing the award of lost profits and instructing that on remand, the damages award should be limited to a reasonable royalty, and a new trial should be conducted as necessary to determine the reasonable royalty rate; and (3) vacating the permanent injunction and remanding with instructions to consider the relevant evidence and determine whether Plaintiff Presidio has establish irreparable injury. Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1384 (Fed. Cir. 2017).
On February 14, 2018, the Court held an appeal mandate hearing and a telephonic
2 The verdict form initially had the “Yes” box marked in response to question No. 6 “Has ATC proved by clear and convincing evidence that claim 1 of the ’356 patent is indefinite?” (Doc. No. 328 at 5.) During the reading of the verdict in open court, the jurors agreed that checking the “Yes” box in response to question No. 6 was a clerical error and then amended the verdict form to reflect that the “No” box should be checked. (See id.; Doc. No. 333 at 8-11.)
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status conference. (Doc. No. 464.) Gregory Ahrens and Brett Schatz appeared for Presidio. Ronald Cahill, Peter Snell, and Heather Repicky appeared for ATC. In accordance with the matters discussed at the telephonic status conference and for good cause shown, the Court issues the following scheduling order:
1. On or before March 23, 2018, Defendant must provide Plaintiff with sufficient discovery to show the total units of accused products sold during the period from the prior trial up to the current date.
2. The parties must file and submit to the Court’s e-file inbox a juror questionnaire, including a question regarding time-screening for trial, on or before April 2, 2018.
3. On or before April 6, 2018, Plaintiff must serve Defendant with a supplemental damages expert report setting forth an updated accounting of the total units of accused products sold by Defendants. Plaintiff’s supplemental damages report must be solely for the purpose of setting forth an updated accounting of the total units of accused products sold by Defendant. Plaintiff’s supplemental damages report must not include any new substantive damages analysis.
4. On or before April 13, 2018, Defendant must serve on Plaintiff any rebuttal supplemental damages expert report. Defendant’s rebuttal supplemental damages report must be solely for the purpose of rebutting Plaintiff’s updated accounting of the total units of accused products sold. Defendant’s rebuttal supplemental damages report must not include any new substantive damages analysis.
5. The parties may conduct a settlement conference in accordance with Patent Local Rule 2.1(c). If the parties decide to do so, the parties must contact the magistrate judge assigned to this case to arrange a date for the settlement conference.
6. Counsel must file their Memoranda of Contentions of Fact and Law in compliance with Civil Local Rule 16.1(f)(2) on or before April 23, 2018.
7. Counsel must comply with the pretrial disclosure requirements of Federal Rule of Civil Procedure 26(a)(3) on or before April 23, 2018. Failure to comply with these
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disclosure requirements could result in evidence preclusion or other sanctions under Federal Rule of Civil Procedure 37.
8. Counsel must meet together and take the action required by Civil Local Rule 16.1(f)(4) on or before April 30, 2018. At this meeting, counsel must discuss and attempt to enter into stipulations and agreements resulting in simplification of the triable issues. Counsel must exchange copies and/or display all exhibits other than those to be used for impeachment. The exhibits must be prepared in accordance with Civil Local Rule 16.1(f)(4)(c). Counsel will note any objections they have to any other party’s Pretrial Disclosures under Federal Rule of Civil Procedure 26(a)(3). Counsel will cooperate in the preparation of the proposed pretrial conference order.
9. Counsel for Plaintiff will be responsible for preparing the proposed pretrial order in accordance with Civil Local Rule 16.1(f)(6)(a). On or before May 7, 2018, Plaintiff’s counsel must provide opposing counsel with the proposed pretrial order for review and approval. Opposing counsel must communicate promptly with Plaintiff’s attorney concerning any objections to form or content of the pretrial order, and both parties must attempt promptly to resolve their differences, if any, concerning the order.
10. The Proposed Final Pretrial Conference Order, including objections to any other party’s Federal Rule of Civil Procedure 26(a)(3) Pretrial Disclosures, must be served and e-mailed to the District Judge’s e-file inbox on or before May 14, 2018, in accordance with Civil Local Rule 16.1(f)(6).
11. The final pretrial conference and hearing on motions in limine will be held before the Honorable Marilyn L. Huff on Monday, May 21, 2018, at 9:00 a.m. All motions in limine must be filed on or before April 23, 2018. Absent further order of the Court, each side may file no more than five motions in limine.
12. If a party wishes to use deposition testimony in lieu of a live witness, if authorized under the rules, the party must submit the designations to opposing counsel by September 21, 2018. The parties must exchange counter-designations by September 28, 2018. If deposition testimony is used at trial in lieu of a live witness, the Court will
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determine the allocation of time against each party, but the time is assessed against the time limits authorized for trial.
13. The parties must submit proposed verdict forms by May 21, 2018.
14. The parties must submit proposed questions for the jury on or before May 21, 2018. The jury will consist of eight (8) jurors. Each party will have three challenges. The Court uses the Arizona blind strike method.
15. The Court orders the parties to file proposed jury instructions on or before
May 21, 2018. Copies of the jury instructions are to be filed with the Court’s Case Management/Electronic Case Filing (“CM/ECF”) system. Additionally, the Court orders the parties to send to chambers via the Court’s e-file e-mail address a clean copy of the requested jury instructions with “Court’s Instruction No. _____” behind each annotated instruction. The clean instructions must be sent to chambers by May 21, 2018. The clean instructions must be on pleading paper in Times New Roman, 14-point font, must be double-spaced, and must not have any header, footer, or page numbers. Further, the clean instructions must be fully completed and in a format that could be read to the jury if adopted by the Court. The parties must remove any brackets, fill in blanks, and make the necessary selections where applicable to any model instructions.
16. The Court schedules a status conference for Monday, May 21, 2018, at 9:00 a.m. Lead trial counsel must appear in person absent further order of the Court.
17. The Court orders the parties to provide separate exhibit lists to the Courtroom Deputy at the status conference on May 21, 2018. The exhibits must be premarked with Plaintiff using numbers and Defendant using letters in accordance with the Civil Local Rules. Exhibit stickers are available in the Clerk’s office. If a party wishes to use electronic or demonstrative equipment during trial, the Court directs the party to contact the Courtroom Deputy to schedule an appropriate time to setup the equipment before the trial begins and submit a proposed order by May 18, 2018, to allow the equipment to proceed through security.
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19. The Court orders the parties to meet and confer regarding a proposed discovery and briefing schedule and hearing date for Plaintiff’s renewed motion for a permanent injunction with the hearing to take place after the damages retrial. The parties must file their joint proposed schedule by April 13, 2018.
20. The Court will not modify the dates and times set forth in this order except for good cause shown.
IT IS SO ORDERED.
DATED: February 16, 2018
MARILYN L. HUFF, District Judge
