Presidio Components, Inc. v. American Technical Ceramics Corp. , 702 F.3d 1351 ( 2012 )

United States Court of Appeals
for the Federal Circuit
__________________________
PRESIDIO COMPONENTS, INC.,
Plaintiff-Cross Appellant,
v.
AMERICAN TECHNICAL CERAMICS CORP.,
Defendant-Appellant.
__________________________
2010-1355, 2011-1089
__________________________
Appeals from the United States District Court for the
Southern District of California in Case No. 08-CV-0335,
Chief Judge Irma E. Gonzalez.
___________________________
Decided: December 19, 2012
___________________________
BRETT A. SCHATZ, Wood, Herron & Evans, L.L.P., of
Cincinnati, Ohio, argued for the plaintiff-cross appellant.
With him on the brief was GREGORY F. AHRENS.
MARVIN S. GITTES, Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, P.C., of New York, New York, argued
for the defendant-appellant. With him on the brief was
TIMUR E. SLONIM.
__________________________
PRESIDIO COMPONENTS v. AMERICAN TECH 2
Before RADER, Chief Judge, PLAGER and WALLACH, Circuit
Judges.
RADER, Chief Judge.
After a trial, the United States District Court for the
Southern District of California denied American Techni-
cal Ceramics Corporation’s (“ATC”) motions for judgment
as a matter of law (“JMOL”) and in the alternative a new
trial on validity and infringement of U.S. Patent No.
6,816,356 (“the ’356 patent”). Presidio Components, Inc.
v. Am. Technical Ceramics Corp., 723 F. Supp. 2d 1284(S.D. Cal. 2010); Presidio Components, Inc. v. Am. Techni-
cal Ceramics Corp., No. 3:08-CV-00335, 2010 WL 3070370(S.D. Cal. Aug. 5, 2010) (“Post-JMOL Order”). ATC
appeals these decisions. Presidio Components, Inc. (“Pre-
sidio”) cross-appeals the district court’s denial of a per-
manent injunction, JMOL on willfulness, and its ongoing
royalty rate and false marking determinations. Presidio,
723 F. Supp. 2d 1284; Post-JMOL Order, 2010 WL
3070370. This court affirms the vast majority of the
district court’s determinations set forth in its comprehen-
sive and attentive opinions with the exception of its
finding of no irreparable injury, the related denial of a
permanent injunction, and the ongoing royalty determi-
nation. This court also vacates the district court’s false
marking judgment due to an intervening change in law.
For the reasons below, this court affirms-in-part, vacates-
in-part, and remands.
I.
Presidio is a family-owned niche manufacturer of elec-
trical components for high-tech applications. It is oper-
ated by Dan Devoe and his two sons Alan and Lambert.
The Devoes are the three listed inventors on the ’356
patent, entitled “Integrated Broadband Ceramic Capaci-
tor Array.” ATC, a subsidiary of AVX Corporation, manu-
3 PRESIDIO COMPONENTS v. AMERICAN TECH
factures electrical components. ATC’s 545L capacitors, a
variety of monolithic broadband capacitors, compete with
Presidio’s Buried Broadband capacitor (“BB capacitor”).
At trial, Presidio asserted that ATC’s 545L capacitors
infringe the ’356 patent.
Capacitors are passive electronic components used in
numerous electrical systems including consumer electron-
ics, mobile phones, and audio amplifiers. These capaci-
tors typically filter ripples or spikes in a power supply and
store energy to provide a charge to other components on a
printed circuit board.
A traditional capacitor comprises two parallel metal
plates separated by a dielectric material, such as a ce-
ramic or air. Because the dielectric material is not con-
ductive, a positive charge accumulates on one plate with a
negative charge on the opposite plate. The capacitor may
release this stored energy by connecting the two plates
through a conductive path that closes the circuit. The
amount of energy a capacitor can store is its “capaci-
tance,” which depends on the orientation of the metal
plates and the properties of the dielectric material.
Frequently, multiple capacitors are combined to cre-
ate a “multilayer capacitor.” A multilayer capacitor has
several layers of conductive and non-conductive materials
stacked together. Each layer has its own electrical prop-
erties that affect the overall performance of the multilayer
capacitor. Capacitor design is a compromise between
capacitance, resistance, and inductance. These designs
become more complicated as operational frequencies
increase in broadband products. In addition to layering,
capacitor design typically must also accommodate mount-
ing on a circuit board. A capacitor designer must further
consider manufacturing costs and size restrictions. For
example, the capacitors in this dispute are tiny—about
PRESIDIO COMPONENTS v. AMERICAN TECH 4
the size of the tip of a sharpened pencil. They are rela-
tively inexpensive and produced in quantities of several
thousand per batch.
The ’356 patent claims a capacitor design with a lower
frequency portion and a higher frequency portion, for use
in broadband applications. The patent teaches a multi-
layer integrated network of capacitors electrically con-
nected in series and in parallel. This network of
capacitors is disposed within a “substantially monolithic
dielectric body,” as shown in Fig. 10A. The invention
incorporates both electrical and mechanical aspects.
Conductive plates 10 and 11 extend from conductive
contacts 12 and 13 on opposite sides of a ceramic dielec-
tric body. This structure creates a capacitance between
the internal plate combinations 10 and 11 in the upper
section 60. At the same time a fringe-effect capacitance
arises between external contacts 72 and 74 in the lower
section 62 of the device. ’356 patent col. 7 ll. 20-60.
On the mechanical side, the invention uses a “one-
piece” design—an improvement over previous “two-piece”
designs. A two-piece design, such as shown in Fig. 8A,
5 PRESIDIO COMPONENTS v. AMERICAN TECH
had to be joined both together and to a circuit board
through soldering or an epoxy. This time-consuming
process yielded a less reliable product that in turn was
more difficult to use in mass production of end products.
Presidio asserted claims 1-5, 16, 18, and 19 of the ’356
patent against ATC. Independent claim 1 is representa-
tive and recites as follows:
1. A capacitor comprising:
a substantially monolithic dielectric body;
a conductive first plate disposed within the dielec-
tric body;
a conductive second plate disposed within the di-
electric body and forming a capacitor with the
first plate;
a conductive first contact disposed externally on
the dielectric body and electrically connected to
the first plate; and
a conductive second contact disposed externally on
the dielectric body and electrically connected to
PRESIDIO COMPONENTS v. AMERICAN TECH 6
the second plate, and the second contact being
located sufficiently close to the first contact to
form a first fringe-effect capacitance with the
first contact.
’356 patent col. 12 l. 59–col. 13 l. 5.
According to inventor Lambert Devoe, the ’356 patent
covers and protects one of Presidio’s main products, the
BB capacitor. The BB capacitor is a monolithic capacitor
used in fiber optic network amplifiers and other broad-
band frequency applications. Another inventor, Dan
Devoe, also testified that the ’356 patent covered the BB
capacitors. Based on this belief, Presidio marked the BB
capacitors with a reference to the ’356 patent. During
this litigation however, Presidio conceded that the ’356
patent did not cover the BB capacitors. Nonetheless,
Presidio maintains that the BB capacitors have a “sub-
stantially monolithic dielectric body,” as shown in Fig.
10A of the ’356 patent.
Presidio filed the application leading to the ’356 pat-
ent with the U.S. Patent and Trademark Office (“PTO”) in
April 2003. This application was a continuation-in-part of
an application filed in 2002. The ’356 patent issued in
November 2004. In September 2003, ATC filed a provi-
sional patent application for its work on the 545L broad-
band capacitor. After reviewing Presidio’s published
patent application in March 2004, ATC proceeded to file
its non-provisional application in September 2004.
In February 2006, the PTO rejected ATC’s applica-
tion, citing the ’356 patent as prior art. Nonetheless, ATC
started selling 545L capacitors in June 2006. In August
2006, ATC responded to the PTO’s rejection by arguing
that the ’356 patent did not teach “orientation insensitiv-
ity,” a claimed limitation of its application. This argu-
ment convinced the PTO examiner and ATC’s application
7 PRESIDIO COMPONENTS v. AMERICAN TECH
issued as U.S. Patent No. 7,248,458 (“the ’458 patent”) in
July 2007.
Presidio sued ATC in February 2008, alleging ATC’s
545L capacitors infringe the ’356 patent. ATC subse-
quently brought numerous counterclaims against Presi-
dio, including false marking of the BB capacitors with the
’356 patent. In July 2009, ATC requested ex parte reex-
amination of the ’356 patent. The PTO granted the
request, identifying substantial new questions of pat-
entability in light of nine prior art references identified by
ATC. In September 2011, the PTO issued a reexamina-
tion certificate confirming patentability of the asserted
claims without amendment.
The district court conducted a jury trial in December
2009. The jury found the asserted claims willfully in-
fringed, not invalid, and awarded Presidio $1,048,677 in
lost profits. The jury also found that Presidio’s marking
of the BB capacitors before its October 24, 2008 conces-
sion was not done for the purpose of deceiving the public.
After trial, the district court resolved a number of mo-
tions. It denied Presidio’s motions for a permanent in-
junction, enhanced damages, and attorney fees, but
granted Presidio $235,172.68 in supplemental damages.
In response to motions from ATC, the trial court vacated
the willfulness verdict and set an ongoing royalty rate of
12% of the 545L capacitor’s wholesale price. At the same
time, the trial court denied ATC’s motions for JMOL or a
new trial on noninfringement, anticipation, obviousness,
lack of enablement, lack of written description, indefi-
niteness, and inequitable conduct. The district court went
on to deny ATC’s motion for JMOL on the jury’s lost profit
damages award; and on false marking prior to October 24,
2008. However, the trial court fined Presidio $228,086.25
for false marking after that date. Presidio, 723 F. Supp.
PRESIDIO COMPONENTS v. AMERICAN TECH 8
2d at 1288, 1293–1342; Post-JMOL Order, 2010 WL
3070370 at *1–7.
Between ATC’s appeal and Presidio’s cross-appeal,
the parties have challenged the majority of the district
court’s determinations and numerous evidentiary issues.
ATC asserts error on over a dozen issues. This court
rejects ATC’s attempt to retry the case anew on appeal.
Presidio responded with at least five issues of its own on
appeal. The parties’ appeal strategy completely discounts
and overlooks the thorough, well-reasoned, and detailed
opinions of the district court. In nearly every respect, this
court detects no reversible error. This court has jurisdic-
tion over this appeal under 28 U.S.C. § 1295(a)(1).
II.
This court reviews JMOL determinations after a jury
verdict and new trial rulings as well under the same
standard applied by the trial court. Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009). The
United States Court of Appeals for the Ninth Circuit
reviews a motion for JMOL as a matter of law. Pavao v.
Pagay, 307 F.3d 915, 918 (9th Cir. 2002). “JMOL is
appropriate when ‘a party has been fully heard on an
issue and there is no legally sufficient evidentiary basis
for a reasonable jury to find for that party on that issue.’”
Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d
998, 1005 (9th Cir. 2004) (quoting Fed. R. Civ. P. 50(a)).
A district court in the Ninth Circuit “may grant a new
trial only if the verdict is against the clear weight of the
evidence.” Id. The resolution of a motion for a new trial
is reviewed for abuse of discretion. Id.III.
On the issue of infringement, the jury found that
ATC’s 545L capacitors literally infringe the asserted
9 PRESIDIO COMPONENTS v. AMERICAN TECH
claims of the ’356 patent. The district court had earlier
determined on summary judgment that ATC did not
infringe the patent indirectly or under the doctrine of
equivalents. ATC challenges the jury’s finding that the
545L capacitor meets the “substantially monolithic dielec-
tric body” limitation of the asserted claims.
To prove literal infringement, a plaintiff must show
that the accused device contains each and every limitation
of the asserted claims. Uniloc USA, Inc. v. Microsoft
Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). In infringe-
ment cases, the court first interprets the claims to deter-
mine their scope and meaning. Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en
banc). Next, the jury compares the properly construed
claims to the allegedly infringing device. Id. “If any
claim limitation is absent from the accused device, there
is no literal infringement as a matter of law.” Bayer AG v.
Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.
Cir. 2000). This court reviews a finding of infringement
for substantial evidence. Uniloc, 632 F.3d at 1301.
The district court materially adopted ATC’s proposed
construction of “a substantially monolithic dielectric body”
as “a dielectric body largely but not wholly without seams
from the inclusion of plates within the dielectric body.”
Presidio Components, Inc. v. Am. Technical Ceramics
Corp., No. 3:08-CV-00335, slip op. at 6–8 (S.D. Cal. June
11, 2008). On appeal, ATC asserts the 545L capacitors do
not contain seams and therefore the jury could not find
infringement. ATC’s contention focuses on the alleged
admission of Presidio’s expert, Dr. Huebner, that “there
are no seams” in the 545L capacitors. J.A. 990–91. To
the contrary, Dr. Huebner’s testimony, taken as a whole,
supports the jury’s infringement determination. Dr.
Huebner told the jury on direct examination that after
analyzing the 545L capacitor, he concluded that it was a
PRESIDIO COMPONENTS v. AMERICAN TECH 10
one-piece construction that exhibited a substantially
monolithic dielectric body. J.A. 946–48. On cross-
examination, when discussing “seams,” Dr. Huebner
indicated that the word “seams” is not used by persons of
ordinary skill in the art, thus he did not find “seams” in
the 545L capacitor. Dr. Huebner testified that if one were
to examine any ceramic multilayer capacitor that is
referred to as monolithic, one would find tiny voids pre-
sent in the solid. These tiny voids are referred to as
“porosity” in the art. He explained: “the term substan-
tially monolithic, to me, implies that the vast majority of
the component is solid, albeit there could be a percent or
two [of porosity], and the same is true for the 545L. There
is some tiny amount of porosity present.” J.A. 978–79.
Simply put, he testified that no ceramic capacitor can
be 100% monolithic, which is why the patent claims a
“substantially monolithic” capacitor. Further, based on
his testimony that the 545L capacitor had 70 plates,
ATC’s counsel asked Dr. Huebner to assume that a seam
is the boundary between a plate and the dielectric. Dr.
Huebner testified that under this hypothetical, ATC’s
545L capacitor would have 140 seams and would thus be
largely, but not wholly, without seams. J.A. 991–95. As
this brief revisiting of Dr. Huebner’s testimony shows, he
did not admit without qualification that ATC’s capacitors
had no seams. Rather he tried to explain his concept of a
“substantially monolithic” capacitor. Even if Dr. Hueb-
ner’s direct and cross-examination are not entirely consis-
tent, the jury had the ultimate discretion to evaluate his
credibility and weigh his presentation. See Kinetic Con-
cepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010,
1024 (Fed. Cir. 2009) (noting a jury can accept the testi-
mony it finds most persuasive); see also Doan v. United
States, 202 F.2d 674, 680 (9th Cir. 1953) (“It was for the
jury who observed him and the manner and emphasis
11 PRESIDIO COMPONENTS v. AMERICAN TECH
with which he gave his answers on direct and cross-
examination to weigh and evaluate his testimony ….”).
ATC’s expert, Dr. Dougherty, also testified that the
545L capacitor has 70 plates and corresponding seams.
J.A. 1246. Presidio’s expert, Dr. Ewell further explained
to the jury that a substantially monolithic body some-
times has one seam per plate and sometimes each plate
would have two associated seams. J.A. 1654–55. Taken
together, this testimony also provides sufficient basis for
the jury’s conclusion that ATC’s 545L capacitor has a
substantially monolithic body.
This court affirms the district court’s finding that
substantial evidence supports the jury’s verdict that
ATC’s 545L capacitors infringe the asserted claims of the
’356 patent. This court has also considered ATC’s numer-
ous other arguments regarding the jury’s infringement
determination and finds no reversible error.
IV.
ATC challenges the district court’s denial of JMOL on
lost profit damages. At trial, Presidio presented both lost
profits and reasonable royalty damages theories. Presidio
asserted that ATC’s infringing sales of 545L capacitors
caused it to lose profits that it otherwise would have made
from the BB capacitors. The jury awarded Presidio
$1,048,677 in lost profits while finding a reasonable
royalty not applicable. J.A. 292.
Presidio advanced its lost profits theory under the
four-factor Panduit test, which requires Presidio to show:
(1) demand for the patented product; (2) absence of ac-
ceptable noninfringing substitutes; (3) manufacturing and
marketing capability to exploit the demand; and (4) the
amount of profit that would have been made. Depuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
PRESIDIO COMPONENTS v. AMERICAN TECH 12
1314, 1329 (Fed. Cir. 2009) (citing Panduit Corp. v.
Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th
Cir. 1978)). ATC argues Presidio did not establish the
first two Panduit factors. With respect to the first fac-
tor—demand for the patented product—ATC contends
Presidio’s BB capacitors are neither covered by the as-
serted patent, nor in direct competition with the infring-
ing 545L capacitors.
As an initial matter, the demand in question in the
first Panduit factor is not limited to demand for the
patented products. Rather, demand may also arise from a
product that “directly competes with the infringing de-
vice.” Depuy Spine, 567 F.3d at 1330 (citing Rite-Hite
Corp. v. Kelley Co., 56 F.3d 1538, 1548–49 (Fed. Cir. 1995)
(en banc)). Because Presidio conceded that the ‘356
patent does not cover its BB capacitors, this record must
show that the BB capacitors directly competed with ATC’s
545L capacitors.
ATC argues that the record does not link market de-
mand with the claimed fringe-effect capacitance limita-
tion. This argument fails because the first Panduit factor
“does not require any allocation of consumer demand
among the various limitations recited in a patent claim.”
Depuy Spine, 567 F.3d at 1330. Next, ATC argues that
the record does not show that the BB capacitors and the
545L capacitors are sufficiently similar. According to
ATC, the two capacitors have different characteristics and
served different markets. ATC contends that the 545L
capacitors have a lower insertion loss, 0.3 dB at 40GHz,
and were designed to compete in a higher performance
market than the BB capacitors with their higher insertion
loss of 0.9 dB at 40GHz. Thus, ATC asserts the jury could
not have found that Presidio established the first Panduit
factor.
13 PRESIDIO COMPONENTS v. AMERICAN TECH
To the contrary, Presidio’s BB capacitor and ATC’s
545L capacitor are both one-piece broadband capacitors
with a substantially monolithic design. Presidio’s dam-
ages expert, Mr. Newman, testified that the two products
compete “head-to-head” in the one-piece capacitor market
for the same customers and for the same applications.
J.A. 1035–36, 1043. Mr. Newman supported his conclu-
sion using third-party market studies and ATC’s internal
documents. He stated these sources showed customer
demand moving from a two-piece design to a one-piece
design, resulting in substantial sales of one-piece capaci-
tors. For example, one ATC document compares the 545L
capacitor to the BB capacitor’s electrical performance
while highlighting the 545L’s “[o]ne-piece construction,
with its inherently higher reliability.” J.A. 1037–38,
2720–21. Mr. Newman further testified that by 2008,
ATC was selling several hundred thousand 545L capaci-
tors per year while Presidio was selling over one million
BB capacitors per year.
The record also contains Lambert Devoe’s explanation
that the BB and 545L capacitors are the same type of
broadband capacitor used in the same applications, which
are different from ATC’s other products like its previous
generation 540L capacitors. J.A. 682–684. Finally, one
ATC witness testified that at least some of its 545L ca-
pacitor customers also purchased BB capacitors. J.A.
1136.
In sum, substantial evidence supports the jury’s find-
ing that demand existed for Presidio’s BB capacitors and
that they directly competed with the infringing 545L
capacitor. See Depuy Spine, 567 F.3d at 1330. This court
therefore affirms the district court’s finding that Presidio
satisfied the first Panduit factor.
PRESIDIO COMPONENTS v. AMERICAN TECH 14
With respect to the second Panduit factor—absence of
acceptable noninfringing substitutes—ATC argues the
prior art ATC 540L capacitors and DLI’s Opticap capaci-
tors were available substitutes for the BB capacitors
during the relevant period. ATC states that customers
would have chosen its 540L capacitors with their stan-
dard 0402 size and lower insertion loss at 40GHz, com-
pared to Presidio’s BB capacitors with their allegedly non-
standard 0502 size and higher insertion loss at 40GHz.
Once again, a review of the record overcomes these asser-
tions.
“A patentee need not negate every possibility that the
purchaser might not have purchased a product other than
its own, absent the infringement.” Rite-Hite, 56 F.3d at
1545; accord King Instrument Corp. v. Otari Corp., 767
F.2d 853, 864 (Fed. Cir. 1985) (“[A patentee] need not
meet the impossible burden of negating every possibility
that a purchaser might not have bought another product
or might not have bought any comparable product at
all.”). Here, Presidio “need only show that there was a
reasonable probability that the sales would have been
made ‘but for’ the infringement.” Rite-Hite, 56 F.3d at
1545. Moreover, the “[m]ere existence of a competing
device does not make that device an acceptable substi-
tute.” TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 901
(Fed. Cir. 1986). In some instances, as is true in this case,
products lacking the advantages of the patented invention
“can hardly be termed a substitute acceptable to the
customer who wants those advantages.” Id. at 901–02
(quoting Panduit, 575 F.2d at 1162).
The record shows that the proposed non-infringing
substitutes are not adequate substitutes in the same
market at all. ATC’s 540L capacitors are broadband
capacitors of a two-piece design. They were the previous
generation capacitor replaced by ATC’s 545L. After the
15 PRESIDIO COMPONENTS v. AMERICAN TECH
545L capacitor was released, ATC’s 540L capacitor sales
decreased, while its 545L capacitor sales increased to
significant levels. As noted above, two-piece capacitors
had inferior reliability and performance results compared
to one-piece capacitors. Two ATC employees testified that
the 540L product suffered from drawbacks common with
two-piece capacitors. The markets are also different
because most assembly machines accept a single compo-
nent, not a two-piece assembled component like the 540L.
Indeed, delicate two-piece capacitors break if set in place
with too much force. J.A. 6656–6657.
The record also includes Lambert Devoe’s testimony
that the BB capacitor did not have any competing devices
until introduction of ATC’s 545L capacitors in 2006. In
fact, the BB capacitors were the only one-piece solution on
the market when introduced in 2003. It took Presidio, a
small niche competitor, a few years to generate significant
demand for the BB capacitors. Lambert Devoe further
testified that the growth rate of the BB capacitor sales
started to decline upon introduction of the 545L capacitor.
The jury also heard Presidio’s expert, Mr. Newman,
explain that products other than the BB capacitors could
not have met the demand if 545L capacitors were re-
moved from the marketplace. Mr. Newman testified that
sales of ATC’s two-piece 540L capacitors were declining
prior to ATC’s launch of the 545L capacitor. He further
discussed how both Presidio and ATC recognized that the
market was moving from two-piece to one-piece designs.
ATC argues customers would have turned to the two-
piece DLI Opti-Cap capacitor had they not purchased
545Ls. Mr. Newman testified that ATC did not view the
Opti-Cap as competition for itself or Presidio. ATC com-
munications show that during development of the 545L,
ATC had not found any customers who liked DLI’s prod-
PRESIDIO COMPONENTS v. AMERICAN TECH 16
uct because “[m]echanially, it is difficult to work with and
electrically, it does not perform as well as competitive
devices (specifically ours and Presidio’s). So for all practi-
cal purposes, DLI is not a major concern.” J.A. 1047–48,
2384.
The record contains substantial evidence to support
the market’s migration away from a two-piece design,
thus supporting the jury’s finding of no acceptable nonin-
fringing substitutes. See Rite-Hite, 56 F.3d at 1545. This
court therefore affirms the district court’s finding that
Presidio satisfied the second Panduit factor. In sum, the
record supports the jury’s lost profits verdict with sub-
stantial evidence. This court has considered the remain-
der of ATC’s arguments and does not find reversible error.
V.
On cross-appeal, Presidio contends the district court
erred in denying a permanent injunction in light of its
finding that the ’356 patent is not invalid and infringed by
ATC’s 545L capacitors. Presidio and ATC both challenge
the district court’s ongoing royalty determination,
awarded in light of the court’s denial of a permanent
injunction. Based on the four-factor test for permanent
injunctions, the district court denied Presidio’s request for
a permanent injunction. Specifically the trial court
detected no irreparable injury or inadequacy of monetary
damages. The court also found that the balance of hard-
ships favored injunction, while the public interest tipped
in ATC’s favor. The trial court noted that “substantial
evidence supported the jury’s finding that demand existed
for the BB capacitors, which compete with the 545L
capacitors.” With this direct competition in the same
market, the district court still opined that ATC was not a
direct competitor for purposes of finding irreparable
injury. Presidio, 723 F. Supp. 2d at 1326, 1336–37. The
17 PRESIDIO COMPONENTS v. AMERICAN TECH
tension created by acknowledging competition for one
purpose but not for another, combined with Presidio’s
other evidence showing irreparable injury, shows that the
district court clearly erred by dismissing the irreparable
injury evident on this record.
Of course the axiomatic remedy for trespass on prop-
erty rights is removal of the trespasser. See 35 U.S.C.
§ 154(a)(1) (“Every patent shall contain … a grant to the
patentee … of the right to exclude others from making,
using, offering for sale, or selling the invention ….”).
However, particularly with an eye to protecting the public
interest, the decision to deny a permanent injunction
remains within the equitable discretion of the district
courts. eBay Inc. v. MercExchange, LLC, 547 U.S. 388,
391 (2006). A trial court, though, can misapply and abuse
that discretion with “a clear error of judgment in weighing
relevant factors or . . . an error of law or clearly erroneous
factual findings.” lnnogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1379 (Fed. Cir. 2008) (quoting Joy Techs., Inc.
v. Flakt, Inc., 6 F.3d 770, 772 (Fed. Cir. 1993)). “To the
extent the court’s decision is based upon an issue of law,
we review that issue de novo.” Sanofi-Synthelabo v.
Apotex, lnc., 470 F.3d 1368, 1374 (Fed. Cir. 2006).
Equity sets forth the four-factor test for removal of a
trespasser from property infringement. eBay, 547 U.S. at
391. This analysis proceeds with an eye to the “long
tradition of equity practice” granting “injunctive relief
upon a finding of infringement in the vast majority of
patent cases.” Id. at 395 (Roberts, C.J., concurring). This
historical practice of protecting the right to exclude
through injunctive relief is not surprising given the
difficulties of protecting this right solely with monetary
relief. Indeed, a calculating infringer may thus decide to
risk a delayed payment to obtain use of valuable property
without prior negotiation or the owner’s permission.
PRESIDIO COMPONENTS v. AMERICAN TECH 18
While a patentee is not entitled to an injunction in every
case, “it does not follow that courts should entirely ignore
the fundamental nature of patents as property rights
granting the owner the right to exclude.” Robert Bosch
LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1149 (Fed. Cir.
2011). This court reviews the district court’s decision to
impose an ongoing royalty, in light of its denial of a per-
manent injunction, for abuse of discretion. Paice LLC v.
Toyota Motor Corp., 504 F.3d 1293, 1315 (Fed. Cir. 2007).
As noted, the district court’s finding of no competition
for the purpose of irreparable harm conflicts with the
clear finding of competition for the purpose of awarding
damages. Indeed the record shows direct and substantial
competition between the parties. The trial court found
that ATC and Presidio shared some of the same custom-
ers, that the two products occupy the same markets, and
that Presidio was at times seen as ATC’s only true com-
petitor. Presidio, 723 F. Supp. 2d at 1336–37. Indeed, in
its damages award the jury also found this direct competi-
tion. Id. at 1327. As discussed above, the record contains
substantial evidence to support these findings. To briefly
recount, the record shows that Presidio and ATC were
competing for the same customers in the same markets.
In fact, ATC considered Presidio the most significant, if
not the only, competitor for the 545L capacitors. See, e.g.,
J.A. 1054, 1136, 2359, 2384. For example, during the
545L capacitor’s development, the named inventor of
ATC’s ’458 patent reported to ATC’s Vice President of RF
Engineering that “[u]nfortunately, our original belief that
Presidio was not a threat because of their small size and
limited production capability was totally wrong.” J.A.
2384.
In addition to the jury’s implicit finding of direct com-
petition, Presidio showed that it was unwilling to license
the ’356 patent. The district court correctly found Presi-
19 PRESIDIO COMPONENTS v. AMERICAN TECH
dio’s unwillingness to license favored finding irreparable
injury. In light of the record evidence of direct competi-
tion, the district court placed too much weight on Presi-
dio’s failure to practice the ’356 patent. While Presidio
conceded during this litigation that its BB capacitors do
not practice the ’356 patent, this does not prevent Presidio
from receiving injunctive relief, as the district court
properly noted. Even without practicing the claimed
invention, the patentee can suffer irreparable injury.
Direct competition in the same market is certainly one
factor suggesting strongly the potential for irreparable
harm without enforcement of the right to exclude. See
Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703
(Fed. Cir. 2008) (citations omitted).
Here, Lambert Devoe testified that the BB capacitor
is one of Presidio’s main products. Presidio also alleges
that ATC dissected and analyzed its BB capacitors while
developing the 545L capacitor. Independent of any al-
leged reverse engineering, ATC analyzed the published
’356 patent application during development of the 545L
capacitor before filing its non-provisional ’458 patent
application. Further, the PTO used Presidio’s ’356 patent
application as prior art against ATC’s application. This
indicates, as the jury implicitly found, the BB and 545L
capacitors embody similar technology and are close com-
petitors. The jury also awarded lost profit damages, while
expressly finding a reasonable royalty not applicable.
J.A. 292. Thus, the jury necessarily found ATC’s 545L
capacitor sales caused Presidio to lose BB capacitor sales.
This squarely supports a finding of irreparable harm.
The record shows that ATC did not present sufficient
evidence to overcome Presidio’s showing of irreparable
injury inflicted by ATC’s entry into the market. These
findings, combined with Presidio’s unwillingness to li-
cense the ’356 patent, reveal that the district court clearly
PRESIDIO COMPONENTS v. AMERICAN TECH 20
erred in finding no irreparable injury. See Robert Bosch,
659 F.3d at 1151 (holding district court erred in not
finding irreparable harm when the parties were direct
competitors, patentee showed lost market share and
access to potential customers, and defendant lacked
financial stability).
Because the district court clearly erred in finding no
irreparable injury, this court concludes that the district
court abused its discretion when it denied Presidio a
permanent injunction. See lnnogenetics, 512 F.3d at
1379. Accordingly, this court vacates the district court’s
denial of Presidio’s motion for a permanent injunction and
remands for a re-weighing of the four-factors consistent
with this opinion. This court also vacates the district
court’s ongoing royalty determination, which was predi-
cated on the district court’s denial of a permanent injunc-
tion.
VI.
Both ATC and Presidio challenge portions of the dis-
trict court’s findings regarding ATC’s false marking
counterclaim under 35 U.S.C. § 292. ATC contends that
the district court erred in declining to grant JMOL over-
turning the jury’s finding of no false marking before
October, 24, 2008. Presidio asserts that the district court
erred in granting summary judgment of liability for false
marking after Presidio’s October 24, 2008 admission that
the BB capacitors are not covered by the ’356 patent.
ATC and Presidio both argue that the district court
abused its discretion in determining the fine for Presidio’s
false marking after October 24, 2008. This court reviews
false marking fines for abuse of discretion. Forest Group,
Inc. v. Bon Tool Co., 590 F.3d 1295, 1302 (Fed. Cir. 2009).
This court reviews the grant of summary judgment with-
21 PRESIDIO COMPONENTS v. AMERICAN TECH
out deference. Invitrogen Corp. v. Biocrest Mfg., L.P., 424
F.3d 1374, 1378 (Fed. Cir. 2005).
As an initial matter, this court must determine
whether recent changes to the false marking statute
apply to this appeal. While ATC’s appeal was pending
before this court, the President signed into law the Leahy-
Smith America Invents Act, Pub.L. No. 112–29, § 16, 125
Stat. 284, 329 (2011) (“AIA”). The AIA made several
changes to the false marking statute, 35 U.S.C. § 292,
including eliminating the qui tam provision supporting
ATC’s false marking claim. Id. Under the amended
statute, a person must show they have “suffered a com-
petitive injury” to recover false marking damages. Id.§ 16(b)(2); see also 35 U.S.C. § 292(b). ATC contends that
these AIA amendments do not apply to its false marking
counterclaim because the claim was not pending on
September 16, 2011, when these AIA amendments were
enacted.
Because the amendments to the false marking statute
apply retroactively, they cover this appeal. An Act must
clearly indicate its retroactive application. See Landgraf
v. USI Film Prods., 511 U.S. 244, 272-73 (1994). Section
16 of the AIA states in relevant part:
(b) FALSE MARKING—
(1) CIVIL PENALTY.—Section 292(a) of title 35,
United States, Code, is amended by adding at the
end the following: “Only the United States may
sue for the penalty authorized by this subsection.”
(2) CIVIL ACTION FOR DAMAGES.—Subsection
(b) of section 292 of title 35, United States Code, is
amended to read as follows: “(b) A person who has
suffered a competitive injury as a result of a viola-
tion of this section may file a civil action in a dis-
PRESIDIO COMPONENTS v. AMERICAN TECH 22
trict court of the United States for recovery of
damages adequate to compensate for the injury.”
…
(4) EFFECTIVE DATE.—The amendments made
by this subsection shall apply to all cases, without
exception, that are pending on, or commenced on
or after, the date of the enactment of this Act.
The statute’s “shall apply to all cases, without exception”
language shows a clear intent to preclude all private false
marking cases, including cases pending in this appellate
court. The AIA’s legislative history confirms that mean-
ing. 157 Cong. Rec. S1360–02 at S1372 (Sen. Kyl) (“It is
anticipated that courts will find the same clarity in the
language of section 2(k)(2) [of this law], and will apply the
revised section 292(b) to cases pending at any level of
appeal or review.”); see also generally Boumediene v.
Bush, 553 U.S. 723, 738–39 (2008) (employing legislative
history in determining whether legislation was intended
to deprive federal courts of jurisdiction to entertain cer-
tain habeas corpus actions pending at time of enactment).
In sum, this court applies the AIA’s false marking
amendments to this case. See Plaut v. Spendthrift Farm,
Inc., 514 U.S. 211, 226 (1995) (“When a law makes clear
that it is retroactive, an appellate court must apply that
law in reviewing judgments still on appeal that were
rendered before the law was enacted, and must alter the
outcome accordingly.”). Thus, ATC does not have a claim
under amended 35 U.S.C. § 292(a) because this statute
only allows the United States to bring a false marking
claim. This court does not reach the question whether
ATC has a claim under the amended § 292(b) because the
district court has not had an opportunity to address it in
the first instance. This court has reviewed ATC and
23 PRESIDIO COMPONENTS v. AMERICAN TECH
Presidio’s other arguments directed toward the district
court’s false marking findings and it finds no reversible
error.
Under the amendments to 35 U.S.C. § 292, ATC’s ap-
peal of its qui tam false marking counterclaim is moot.
This court vacates the district court’s judgment in favor of
ATC and against Presidio on ATC’s claim of false mark-
ing. This court does not disturb the district court’s under-
lying determinations supporting its false marking
judgment.
VII.
For the foregoing reasons, this case is remanded to
the district court for further proceedings consistent with
this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Presidio.