Luv N’ Care, Ltd., Nouri E. Hakim v. Lindsey Laurain, Eazy-PZ, LLC

Docket No. 2022-1905, -1970 (https://cafc.uscourts.gov/opinions-orders/22-1905.OPINION.4-12-2024_2300689.pdf)

REYNA, HUGHES, STARK

April 12, 2024

Brief Summary:  DC grant of LNC’s unclean hands defense affirmed; DC findings of no obviousness or inequitable conduct vacated and remanded.

Summary:   EZPZ appealed DC judgment against it for “unclean hands”, which the FC panel affirmed here.  LNC appealed DC judgment for EZPZ of no inequitable conduct (IE), which the FC panel vacated and remanded here.  The FC panel also vacated the DC’s grant of partial summary judgment (SJ) of invalidity for obviousness and order denying attorney fees and costs.  EZPZ’s patent-at-issue (US 9,462,903) is directed to a “rubberlike” (independent claim 1), “nontoxic polymeric” (independent claim 5), or “silicone” (independent claim 9, also including “wherein” clauses) “surface contact self-sealing dining mat integrated with tableware” (e.g., a bowl affixed to a mat). 

Regarding LNC’s unclean hands defense, the DC “found that EZPZ engaged in litigation misconduct, including by failing to disclose certain patent applications during discovery, attempting repeatedly to block LNC from obtaining Ms. Laurain’s prior art searches, stringing LNC along during settlement negotiations, and providing evasive and misleading testimony.”  Also, while the DC litigation was pending, EZPZ obtained a USPTO reexamination certificate but did not provide it to the DC (only after the judgment). The FC panel agreed (e.g. no “good faith justification for its delay”, “EZPZ tried to block LNC’s efforts to discover Ms. Laurain’s prior art searches”), citing Keystone Driller (US 1933) and Gilead (FC 2018) (“violations of conscience…affect the equitable relations”, “totality of the evidence”), and meaning EZPZ “no longer has the ability to enforce the ’903 patent against LNC’s accused products”.  For at least this reason, the FC panel vacated and remanded the attorney’s fee issue.

On IE, the DC “found that although Ms. Laurain and her patent agent, Benjamin Williams (“Williams”), made misrepresentations to the PTO – namely, that the prior art Platinum Pets mat did not exhibit self-sealing functionality – that misrepresentation was not but-for material to the patentability of the ’903 patent, given that the Platinum Pets mat itself had been disclosed to the PTO”, that other references “Ms. Laurain and Mr. Williams withheld from the PTO were also not material because they were cumulative of the Platinum Pets mat”, and that “their submission of declarations containing false or misleading information, did not demonstrate a specific intent to deceive the PTO.”  The FC panel vacated and remanded this judgment (e.g., actions “amounted to affirmative egregious misconduct and is, therefore, per se material”), citing Therasense (FC 2011, material information withheld “with the specific intent to deceive the PTO”; cumulative if “a reasonable examiner would consider to be taught by the prior art already before the PTO” (see also Cal. Inst. Tech., FC 2022), Aventis (FC 2012, “but-for materiality”), and TransWeb (FC 2016, “even disclosed reference may be but-for material where patentee mischaracterized it as non-prior art”).  The DC found the Platinum Pets mat disclosed the self-sealing functionality and that “Ms. Laurain and Mr. Williams misrepresented the Platinum Pets mat to the PTO as not possessing” that function.  The FC panel also found the DC did not apply the proper legal to determine whether intent could be inferred by the patentee’s “pattern of lack of candor” (Nilssen, FC 2007; Ohio Willow, FC 2013; Apotex, FC 2014) (and not “only…gross negligence” (Am. Calcar, FC 2014 (“partial disclosure…cannot absolve”); Semiconductor, FC 2000).  The DC’s IE judgment was therefore vacated and remanded.

The DC granted LNC’s motion for partial SJ for obviousness based on a combination of the Bass combined with the Webb Publication and the Webb Patent (together, the “Webb Prior Art”), because “it would have been ‘common sense to a person of ordinary skill in the art’ to make ‘the integrated tableware and dining mat disclosed in Bass out of the rubberlike, nontoxic material disclosed in the Webb Publication’” and a lack of convincing secondary considerations evidence.  The FC panel concluded that “the record contains sufficient evidence from which a reasonable factfinder could find that this disputed claim element is not disclosed by the Webb Prior Art”, “[a] reasonable factfinder might also choose to place weight on the fact that during the ex parte reexamination of the ’903 patent, the PTO considered the Webb Prior Art and found it does not teach self-sealing”, and there are questions regarding secondary considerations.  Therefore, the FC panel found, “there is a genuine dispute of material fact” and remanded this issue (citing Strathclyde (FC 2021), Perfect Web (FC 2009), and Plantronics (FC 2013) regarding the content of prior art; and Medtronic (FC 2023), Merck (FC 2005), and Pro-Mold (FC 1996) regarding secondary considerations)).

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.