Boston, Massachusetts – The Federal Circuit recently overturned a judgment of invalidity and ordered a new trial in the case of Inline Plastics Corp. v. Lacerta Group, LLC. The court determined that the district court’s jury instruction on objective indicia of nonobviousness was a prejudicial legal error. The case revolved around patents for tamper-resistant and tamper-evident food containers.
In American civil litigation, jury instructions provide the legal rules and guidelines for jurors to follow when reaching a verdict. The judge’s role is to ensure these instructions accurately reflect the applicable law. Attorneys from both sides propose instructions and can object to those they find incorrect or incomplete. After the trial, if a party believes the jury instructions were legally erroneous or prejudicial, they can raise this issue on appeal.
The Federal Circuit reviews the legal accuracy of jury instructions and may order a new trial if it finds an error that was prejudicial. In the case of Inline Plastics Corp. v. Lacerta Group, LLC, the Federal Circuit determined that the district court’s omission of certain objective indicia of nonobviousness from the jury instructions constituted prejudicial legal error.
Obviousness is a mixed question of fact and law, and it is typically given to a jury to decide. In assessing obviousness, courts often consider various factors known as the Graham Factors. These factors include the comparison of relevant prior art against the claimed invention, as well as objective indicia of nonobviousness such as commercial success, copying, and industry praise.
Inline Plastics sued Lacerta for patent infringement relating to tamper-resistant and tamper-evident containers. The district court granted Inline summary judgment on some claims but found others not infringed and invalid. At trial, Inline presented evidence of objective indicia of nonobviousness, but the district court’s jury instruction only mentioned commercial success and long-felt need.
The Federal Circuit found that the district court’s instruction constituted a prejudicial legal error. It held that Inline had presented material evidence of objective indicia of nonobviousness, and the jury should have been instructed to consider this evidence. The court concluded that the error was not harmless and warranted a new trial.
The court also noted that the weight given to different objective indicia can vary. Factors like industry praise, copying, and licensing may provide insight into how competitors viewed the invention, while commercial success and long-felt need may depend on market reactions over time.
The defendant, Lacerta, argued that Inline had not properly preserved its objection to the jury instruction. However, the Federal Circuit rejected this argument, stating that Inline had requested an instruction on objective indicia and had objected to its omission. The court found that Inline had taken the necessary steps to preserve its challenge to the jury instructions.
The decision highlights the importance of providing comprehensive and accurate jury instructions. In this case, the failure to properly instruct the jury on all pertinent objective indicia led to prejudicial legal error and the need for a new trial. The district court will now need to empanel a new jury to decide the issue of obviousness.