DCT

3:17-cv-01168

American Technical Ceramics Corp v. Presidio Components Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:17-cv-01168, E.D.N.Y., 10/11/2016
  • Venue Allegations: Plaintiffs allege venue is proper because Defendant solicits and conducts business in the district, markets its products to New York customers, and maintains specific "design-in location codes" for customers in the region.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their 560L series multilayer ceramic capacitor does not infringe Defendant’s U.S. Patent No. 6,816,356.
  • Technical Context: The lawsuit concerns ultra-broadband, multilayer ceramic capacitors, which are fundamental passive components used to manage electrical signals in high-frequency electronic systems.
  • Key Procedural History: This action follows two prior lawsuits where Defendant Presidio successfully asserted the same patent against Plaintiffs' earlier-generation capacitors (the "545L" and "550 series"). Those cases resulted in jury verdicts of infringement and permanent injunctions against the accused products. The patent-in-suit also survived two separate ex parte reexamination proceedings at the U.S. Patent and Trademark Office, which may inform the scope of its claims.

Case Timeline

Date Event
2002-05-17 ’356 Patent Priority Date
2004-11-09 ’356 Patent Issue Date
2008-01-01 Prior litigation filed ("335 Case") re: 545L capacitor (approximate)
2009-12-01 Jury finds infringement by 545L capacitor (approximate)
2011-09-13 First Reexamination Certificate for ’356 Patent issued
2013-09-01 Permanent injunction entered against 545L capacitor (approximate)
2014-09-02 Second prior litigation filed ("2061 Case") re: 550 series
2015-01-01 Plaintiffs begin selling the 560L capacitor (approximate)
2015-12-08 Second Reexamination Certificate for ’356 Patent issued
2016-04-01 Jury finds infringement by 550 series capacitor (approximate)
2016-08-17 Permanent injunction entered against 550 series capacitors
2016-10-11 Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,816,356 - "Integrated Broadband Ceramic Capacitor Array," issued Nov. 9, 2004

The Invention Explained

  • Problem Addressed: The patent’s background section describes a fundamental trade-off in capacitor design: components optimized for high capacitance perform poorly at high frequencies due to parasitic resistance and inductance, while low-capacitance, high-frequency components are not effective at low frequencies. (’356 Patent, col. 1:36-54). Combining separate discrete capacitors to cover a wide frequency band was described as physically cumbersome and prone to performance gaps or "resonances." (’356 Patent, col. 4:5-14).
  • The Patented Solution: The invention is a single, monolithic capacitor structure that integrates two types of capacitors into one body. It combines a traditional multilayer capacitor (for low-frequency, high-capacitance performance) with a high-frequency, low-capacitance structure. (’356 Patent, Abstract). One key embodiment achieves the high-frequency capacitance by placing external conductive contacts in close proximity to one another, creating a "fringe-effect capacitance" between their edges, as illustrated by the relationship between plates 66, 68 and external plates 72, 74 in Figure 9A. (’356 Patent, col. 6:38-49; Fig. 9A).
  • Technical Importance: This integrated design allows a single, compact, and cost-effective component to provide stable capacitor performance across a very broad frequency spectrum, a critical need for modern wideband electronics. (’356 Patent, col. 4:26-34).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement of independent claims 1 and 35 (Compl. ¶¶44, 46).
  • The essential elements of asserted independent claim 1 include:
    • a substantially monolithic dielectric body;
    • a first and second conductive plate disposed within the body, forming a capacitor;
    • a first external contact connected to the first plate;
    • a second external contact connected to the second plate;
    • the second contact being located sufficiently close to the first contact in an edge to edge relationship to form a first fringe-effect capacitance.
  • The complaint notes that independent claim 35 contains a similar limitation regarding a fringe-effect capacitance (Compl. ¶46).
  • The complaint also references dependent claims 3, 5, 16, 18, 19, 37, 39, 50, 52, and 53, seeking a declaration of non-infringement for them as well (Compl. ¶49; Prayer for Relief ¶A).

III. The Accused Instrumentality

Product Identification

Plaintiffs' 560L (or T-2000) ultra-broadband, multilayer ceramic capacitor (Compl. ¶4).

Functionality and Market Context

The 560L is described as an ultra-broadband, multilayer ceramic capacitor with external terminations (Compl. ¶29). It was developed and marketed by Plaintiffs as an alternative to their 550 series capacitors after the 550 series was found to infringe the ’356 Patent and was enjoined from the market (Compl. ¶¶22, 37). The complaint alleges that a key physical characteristic of the 560L is that the gap between its external terminations is "typically 12 mils" (Compl. ¶29). This dimension is alleged to be "at least twice as large" as the gap on the previously-infringing 550 series capacitors and "more than ten times greater" than the gap on the 545L capacitors, which were also found to infringe in an earlier case (Compl. ¶29). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment, the core allegations are assertions of non-infringement. The analysis focuses on the Plaintiffs' asserted basis for why their product does not meet the patent's claim limitations.

’356 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a conductive second contact disposed externally on the dielectric body . . . being located sufficiently close to the first contact in an edge to edge relationship . . . to form a first fringe-effect capacitance . . . The 560L capacitor does not have external contacts located "sufficiently close" to form the required "fringe-effect capacitance." (Compl. ¶48). This assertion is factually supported by the allegation that the gap is a relatively large 12 mils. ¶48, ¶29 col. 13:57-64

Identified Points of Contention

  • Scope Questions: The central dispute revolves around the claim term "sufficiently close." Given the prior litigations where capacitors with smaller gaps (allegedly 1 mil and 5 mils) were found to infringe, a primary question for the court will be whether the scope of this term can extend to the accused 560L capacitor's much larger alleged gap of 12 mils. The complaint suggests that the 560L was designed specifically to fall outside the boundary of infringement established in the prior cases (Compl. ¶¶29, 32, 40).
  • Technical Questions: A key factual question is whether the 560L's structure, with its 12-mil gap, actually forms a "fringe-effect capacitance that is capable of being determined by measurement," as required by the claim. The case may turn on competing expert testimony and technical evidence regarding the measurement and significance of any fringe capacitance generated across this larger gap.

V. Key Claim Terms for Construction

  • The Term: "sufficiently close"
  • Context and Importance: This term is the lynchpin of the non-infringement argument. Its construction will likely be dispositive. Practitioners may focus on this term because its meaning has been contested in two previous jury trials involving the same patent but different products with progressively larger gaps between their external contacts. The present case tests the outer boundary of what "sufficiently close" can mean in the context of this patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not provide a specific numerical range for the term. The claim language only requires the contacts to be close enough "to form a first fringe-effect capacitance." A patentee could argue that this is a functional, not a strictly dimensional, limitation, and that any proximity that results in a measurable fringe-effect capacitance meets the claim.
    • Evidence for a Narrower Interpretation: The specification discloses an embodiment where the contact ends "may be separated by only 0.002 of an inch" (2 mils) and suggests using an insulating coating in the gap, which may imply the invention is directed to very small separations where shorting is a concern (’356 Patent, col. 13:10-16). An accused infringer could argue this example cabins the term to dimensions on that order, and that a 12-mil gap is well outside the scope envisioned by the inventors.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration that Plaintiffs have not and are not actively inducing infringement of the asserted claims (Compl. ¶49; Prayer for Relief ¶A). The basis for this is the primary assertion that there is no direct infringement to induce.
  • Willful Infringement: While not alleged by Plaintiffs, the extensive litigation history between the parties makes willfulness a significant background issue. Plaintiffs' filing for declaratory judgment appears to be a proactive measure to establish a good faith belief of non-infringement for their new 560L product, potentially mitigating future claims of willful infringement from the Defendant (Compl. ¶40).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim scope and estoppel: Following two prior infringement verdicts on the same patent, what is the outer boundary of the term "sufficiently close"? The court will need to determine if this term, previously applied to products with smaller gaps, can be construed to read on the 560L capacitor’s alleged 12-mil gap, and whether arguments or constructions from prior cases limit what the patentee can now assert.
  • A central question will be one of technical fact-finding: Does the accused 560L capacitor, as a matter of physics and electrical engineering, possess external contacts that form a "fringe-effect capacitance" as functionally required by the claims? This will likely require a battle of expert evidence and analysis regarding the electrical properties of a 12-mil gap in this specific capacitor design.