Western Plastics, Inc. v. Dubose Strapping, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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WESTERN PLASTICS, INC.,
Plaintiff-Cross-Appellant
v.
DUBOSE STRAPPING, INC.,
Defendant-Appellant
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2021-1371, 2021-1372
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Appeals from the United States District Court for the
Eastern District of North Carolina in No. 5:15-cv-00294-D,
Chief Judge James C. Dever, III.
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Decided: February 25, 2022
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G LENN E. F ORBIS , Harness, Dickey & Pierce, P.L.C.,
Troy, MI, argued for plaintiff-cross-appellant. Also repre-
sented by J AMES BRADLEY L UCHSINGER.
G EORGE T HOMAS WILLIAMS , III, McGarry Bair PC,
Grand Rapids, MI, argued for defendant-appellant. Also
represented by ANTHONY J. B ILLER, Envisage Law, Ra-
leigh, NC.
______________________
Case: 21-1371 Document: 51 Page: 1 Filed: 02/25/2022

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WESTERN PLASTICS, INC. v. DUBOSE STRAPPING, INC. 2
Before M OORE, CHEN, and HUGHES , Circuit Judges.*
P ER CURIAM .
* Circuit Judge Newman and Circuit Judge Stoll are
recused, taking no position in this decision. Chief Judge
Moore and Circuit Judge Chen replaced Circuit Judge
Newman and Circuit Judge Stoll on the panel following the
court’s initial December 17, 2021 judgment. DuBose raised
a potential conflict of interest in its petition for rehear-
ing. That potential conflict was identified to the court more
than a month after argument and, in fact, after a judgment
was entered against DuBose. Counsel had all of the neces-
sary facts at the time of argument and should have brought
the potential conflict to the court’s attention at that
time. Delays under these circumstances are the “most
egregious.” Pendergraft v. Network of Neighbors, Inc., 745
F. App’x 517, 520 (5th Cir. 2018). As other circuit courts
have described, a litigant “should not be permitted to sand-
bag” the court while “hoping for a satisfactory resolution,
but retaining a ground of attack on the judge’s ruling.”
El Fenix de Puerto Rico v. The M/Y Johanny, 36 F.3d 136,
141 n.6 (1st Cir. 1994) (quoting James W. Moore &
Jo D. Lucas, Moore’s Federal Practice ¶ 63.07 (2d ed.
1993)); see also, e.g., Burke v. Regalado, 935 F.3d 960, 1053
(10th Cir. 2019) (“Most circuits require that [a motion for
recusal] be brought ‘at the earliest moment after
knowledge of the facts demonstrating the basis for such
disqualification.’ . . . This requirement guards against a
party’s withholding ‘a recusal application as a fall-back po-
sition in the event of adverse rulings on pending matters.’”)
(first quoting Travelers Ins. Co. v. Liljeberg Enters., Inc., 38
F.3d 1404, 1410 (5th Cir. 1994); and then In re IBM Corp.,
45 F.3d 641, 643 (2d Cir. 1995)). We expect parties and
counsel who appear before this court to have the utmost
candor including in issues of potential conflict.
Case: 21-1371 Document: 51 Page: 2 Filed: 02/25/2022

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WESTERN PLASTICS, INC. v. DUBOSE STRAPPING, INC. 3
DuBose Strapping, Inc. (DuBose) appeals the district
court’s denial of its motions for summary judgment and
judgment as a matter of law that U.S. Patent No. 8,080,304
(’304 patent) is invalid as obvious under 35 U.S.C. § 103.
Appellant’s Br. 2, 26. DuBose also appeals the jury’s award
of lost profits and finding of willful infringement. Id. at 2–
3, 43, 46. And, DuBose appeals the district court’s grant of
Western Plastics, Inc.’s (Western Plastics) motions for
summary judgment regarding inequitable conduct, written
description, and indefiniteness. Id. at 52, 62. Western
Plastics cross-appeals the district court’s denial of attor-
neys’ fees. Appellee’s Br. 68. For the following reasons, we
affirm each of the district court’s decisions and the jury’s
verdict.
DuBose’s arguments regarding invalidity, lost profits,
and willful infringement amount to asking this court to re-
weigh the evidence as to these fact-bound matters, but
DuBose has not demonstrated that the jury’s verdict is un-
supported by substantial evidence. Based on our review of
the record, in reaching its obviousness conclusion, a rea-
sonable jury could have relied on the relative absence of
evidence showing that a skilled artisan would have had a
sufficient reason or motivation to combine the prior art ref-
erences. DuBose similarly argues the merits of inequitable
conduct, written description, and indefiniteness without
identifying a genuine issue of material fact warranting jury
consideration. For example, we agree with the district
court that DuBose did not set forth evidence to meet the
high standard of establishing that the patent applicant in-
tended to deceive the Patent Office, as required to sustain
an inequitable conduct defense. Finally, Western Plastics
has not demonstrated that the district court abused its dis-
cretion in declining to award fees since a finding of willful-
ness does not alone compel such a result, and the district
court properly analyzed the relevant factors.
We also deny Western Plastics’s request for sanctions.
Case: 21-1371 Document: 51 Page: 3 Filed: 02/25/2022

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WESTERN PLASTICS, INC. v. DUBOSE STRAPPING, INC. 4
We have considered the parties’ remaining arguments
and find them unpersuasive.
The parties shall bear their own costs.
AFFIRMED
Case: 21-1371 Document: 51 Page: 4 Filed: 02/25/2022

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