Inline Plastics Corp. v. Lacerta Grp., LLC
Authored by: Jeremy J. Gustrowsky
A recent decision highlights the importance of proper jury instructions in patent cases, especially when it comes to evaluating whether an invention is “obvious” in light of earlier technology. The dispute involved Inline Plastics Corp., which holds several patents (including U.S. Patent Nos. 7,118,003; 7,073,680; 9,630,756; 8,795,580; and 9,527,640) for tamper-resistant and tamper-evident plastic containers. Inline sued Lacerta Group, LLC, claiming infringement of these patents. While the district court initially found Lacerta infringed some claims, a jury later found all asserted claims invalid and most not infringed.
On appeal, the court found that the district court made a key mistake in its instructions to the jury about “objective indicia of nonobviousness”—factors that can show an invention is not just an obvious tweak of existing products. The jury was told to consider only commercial success and long-felt need, but there was also evidence of industry praise, copying, and licensing, which the jury should have been allowed to weigh. Because this error could have affected the outcome, the appeals court ordered a new trial on whether the patents are valid.
The court rejected Inline’s argument that it should win outright on validity, finding that Lacerta had presented enough evidence for a reasonable jury to find the patents obvious. However, the court affirmed the finding that Lacerta did not infringe certain claims and upheld the district court’s claim constructions, which clarified what the patent terms meant without making the requirements too strict.
Finally, the court vacated the district court’s dismissal of some late-withdrawn patent claims and its denial of attorney fees to Lacerta, sending those issues back for further consideration after the new trial. This case serves as a reminder that all relevant evidence must be considered by a jury when deciding if a patent is truly an inventive leap, not just a minor improvement.