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Am. Tech. Ceramics Corp. v. Presidio Components, Inc.

United States District Court for the Eastern District of New York

January 30, 2019, Decided; January 30, 2019, Filed

14-CV-6544 (KAM)(GRB)



MATSUMOTO, United States District Judge:

Plaintiffs American Technical Ceramics Corp. ("ATC") and AVX Corporation ("AVX," and together with ATC, "plaintiffs") initiated the instant action by filing a complaint ("Compl." or the "complaint," ECF No. 1) on November 6, 2014, alleging infringement by defendant Presidio Components, Inc. ("Presidio" or "defendant") of the following patents held by plaintiffs: United States Patent No. 6,144,547 (the "'547 Patent"), United States Patent No. 6,337,791 (the "'791 Patent," together with the '547 Patent, the "patents-in-suit"), and United States Patent No. 6,992,879 (the "'879 Patent"). (See generally Compl.; see also Compl. Ex. 1, ECF No. 1-3 (annexing '547 Patent, '791 Patent, and '879 Patent).)

After motion practice, two rounds of claim construction by this court, and an inter partes review ("IPR") proceeding initiated by Presidio before the Patent Trial and Appeal Board ("PTAB") of the U.S. Patent and Trademark Office ("PTO"), (see ECF No. 74, Joint Motion to Stay at 2), the remaining claims of infringement before this court concern all but claim 1 of the '791 Patent, and the '547 Patent in its entirety, the '879 Patent having been found unpatentable by the [*3]  PTAB. (See ECF No. 126, Summary Judgment Order at 81 (dismissing plaintiffs' claims for infringement of the '879 Patent and of claim 1 of the '791 Patent after IPR); ECF No. 79, First Claim Construction Order dated November 7, 2016; ECF No. 136, Second Claim Construction Order dated November 2, 2018.)

After the court issued its second claim construction decision, dated November 2, 2018 and construing the term "terminations," the parties submitted a joint status letter dated November 16, 2018, in which plaintiffs requested a trial date and defendant requested to supplement its invalidity contentions as to the '547 Patent, exchanged pursuant to this District's Local Patent Rules. (ECF No. 137, Joint Status Letter dated November 16, 2018 ("JSL") at 1, 3.) Additionally, Presidio requested leave to renew certain portions of its summary judgment motion, which the court previously denied without prejudice, pending further claim construction of the term "terminations." (Id. at 3; ECF No. 126, Summary Judgment Order at 53.) Having construed "terminations," (see ECF No. 136, Claim Construction Order at 26), the court found that a genuine dispute of material issues of fact prevented it from ruling as a matter of law on Presidio's renewed [*4]  motion, and thus denied the motion. (See Amended Minute Entry dated December 20, 2018.)

Pending before the court now is Presidio's request to supplement its invalidity contentions regarding the '547 Patent. Plaintiffs object, stating that Presidio is estopped from raising in this proceeding any invalidity ground that it "raised or reasonably could have raised during [the IPR]" proceeding challenging the '547 Patent, citing 35 U.S.C. § 315(e)(2). (JSL at 2.) Presidio responds by relying on Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), to argue that because it did not petition the PTAB on the invalidity grounds it now seeks to amend to its invalidity contentions, it necessarily could not have raised the grounds during the IPR and is thus not estopped. (JSL at 4, 5-6.) Plaintiffs argue in the alternative that, even if Presidio is not estopped, it has failed to show good cause to reopen discovery for the purposes of serving supplemental invalidity contentions and a supplemental expert invalidity report.

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2019 U.S. Dist. LEXIS 14873 *; 2019 WL 365709


Prior History: Am. Tech. Ceramics Corp. v. Presidio Components, Inc., 2016 U.S. Dist. LEXIS 154292, 2016 WL 6583637 (E.D.N.Y., Nov. 7, 2016)


invalidity, estoppel, patent, non-petitioned, estopped, non-instituted, infringement