Federal Circuit IP
Inline Plastics Corp. v. Lacerta Group, LLC
Fed. Cir. 2022-1954, 2022-2295
March 27, 2024
(Taranto, Chen, Hughes; Precedential)
Summary: The Federal Circuit vacates the District Court for the District of Massachusetts’s judgment in favor of Lacerta because the district court gave incorrect jury instructions, which did not mention several objective indica of nonobviousness for which there was evidence.
Background
- In 2018, Inline asserted several patents against Lacerta related to tamper-resistant plastic containers.
- Inline presented evidence of commercial success, long-felt need, industry praise, copying, and licensing.
- The jury was only instructed to consider two objective indicia: commercial success and long-felt need.
- The jury found the asserted claims to be not infringed and invalid.
Key Issue
- Must a jury be instructed to consider each objective indicia of nonobviousness for which evidence was presented at trial?
Applicable Rule/Statute
- An error in jury instructions is not harmless when “the evidence was sufficiently mixed that it would allow (though not compel) a reasonable, properly instructed jury to find” other than it did. Cosa-Urena v. Segarra, 590 F.3d 18, 26 (1st 2009).
Holding
- The incorrect jury instructions constituted a legal error requiring a new trial on invalidity.
Reasoning
- A jury could have decided that some claims were invalid for obviousness only.
- Although the jury was instructed to consider two of the five objective indicia presented at trial, the jury could have given different weight to different objective indicia to reach a different conclusion.
Takeaways
- Each objective indicia of nonobviousness must be considered—considering only “some” objective indicia is not enough.