Luv N' Care, Ltd v. Lindsey Laurain

United States Court of Appeals
for the Federal Circuit
______________________
LUV N' CARE, LTD.,
Plaintiff-Appellant
NOURI E. HAKIM,
Counter-Defendant-Appellant
v.
LINDSEY LAURAIN,
Defendant
EAZY-PZ, LLC,
Defendant/Counter-Claimant-Cross-Appellant
______________________
2022-1905, 2022-1970
______________________
Appeals from the United States District Court for the
Western District of Louisiana in No. 3:16-cv-00777-TAD-
JPM, Judge Terry A. Doughty.
______________________
Decided: April 12, 2024
______________________
CAROL WELBORN R EISMAN, Liskow & Lewis, New Orle-
ans, LA, argued for appellants. Also represented by
G EORGE D ENEGRE, J R., MELANIE D EREFINKO, CAREY
MENASCO; HARTWELL P OWELL M ORSE, III, Luv n' Care,
Ltd., Monroe, LA.
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LUV N' CARE, LTD. v. LAURAIN 2
J ENNIFER K ROELL F ISCHER , Fischer Law Firm, PC,
Denver, CO, argued for defendant/counter-claimant-cross-
appellant.
______________________
Before REYNA, HUGHES , and STARK, Circuit Judges.
STARK, Circuit Judge.
This appeal arises from a lawsuit between two manu-
facturers of dining mats for toddlers: Luv n’ care, Ltd. and
Nouri E. Hakim (collectively, “LNC”), on one side, and
Lindsey Laurain (“Laurain”) and Eazy-PZ, LLC (collec-
tively, “EZPZ”), on the other. After years of litigation, a
judge in the United States District Court for the Western
District of Louisiana (“Western District”) held a bench
trial. The trial court then issued an opinion finding that
LNC failed to prove EZPZ’s U.S. Patent No. 9,462,903 (the
“’903 patent”) is unenforceable due to inequitable conduct
but, at the same time, LNC succeeded in proving that EZPZ
was barred from obtaining relief due to its “unclean hands.”
Separately, the district court granted LNC’s motion for
partial summary judgment that the claims of the ’903 pa-
tent are invalid as obvious. The court also denied LNC’s
motion to recover its attorney fees and costs.
Both LNC and EZPZ now appeal. As explained below,
we (1) affirm the district court’s judgment for LNC on un-
clean hands; (2) vacate the judgment for EZPZ of no ineq-
uitable conduct; (3) vacate the grant of partial summary
judgment of invalidity; and (4) vacate the orders denying
attorney fees and costs. We remand for further proceed-
ings consistent with this opinion.
I
A
Many parents have experienced the “inconvenience of
having to clean up after their children’s mealtimes,” espe-
cially when those meals involve their children “dislodging
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LUV N' CARE, LTD. v. LAURAIN 3
and upturning their plates and bowls to spill foodstuffs and
beverages everywhere.” ’903 patent at 1:54-58. The ’903
patent provides a solution to this problem by introducing a
surface contact self-sealing dining mat integrated with ta-
bleware, thereby preventing the separation of tableware
from the dining mat, while also preventing the lateral dis-
placement and overturning of the dining mat. See id. at
1:59-64. An exemplary dining mat is depicted in Figure 1
of the ’903 patent, reproduced below.
The dining mat features “a planar portion . . . for seal-
able contact upon an underlying surface, wherein lateral
displacement . . . is preventable.” Id. at 1:66-2:2. “[A] par-
tial vacuum” is created “between the planar portion and
[the] underlying surface when attempts to lift the planar
portion away from [the] underlying surface are effected.”
Id. at 2:2-5. This “partial vacuum” “prevents separation of
the planar portion from the underlying surface except
when [the] planar portion is first peeled away . . . at an
outer edge of [the] planar portion.” Id. at 2:5-8. The upper
surface of the mat “includes a raised perimeter . . . defining
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LUV N' CARE, LTD. v. LAURAIN 4
a concavity [which] is contemplated to include at least one
receptacle wherein foodstuffs are storable, as desired, for
ingestion therefrom.” Id. at 2:41-45.
The ’903 patent contains nine claims. Claims 1, 5, and
9 are independent claims. Claim 1 recites:
1. A surface contact self-sealing integrated
tableware and dining mat comprising a rub-
berlike planar portion having a raised perim-
eter delimiting at least one concavity
surrounding at least one receptacle above an
upper surface and an entirely suffuse under-
surface disposed for sealable contact with an
underlying surface upon which said mat is
disposed, said sealable contact preventative of
lateral displacement of the planar portion
across the underlying surface, wherein said
sealable contact creates a partial vacuum
when attempts to separate the undersurface
from the underlying surface are made except
at an outer edge of the planar portion,
whereby removal of the planar portion from
the underlying surface is effective only by
peeling the undersurface from the underlying
surface starting first at the outer edge.
Id. at 5:17-30.
Claim 5 recites:
5. A surface contact self-sealing integrated
tableware and dining mat comprising:
a nontoxic polymeric planar portion;
an outer edge parametrically bounding said
planar portion;
an undersurface entirely suffuse upon the
planar portion, said undersurface disposed to
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LUV N' CARE, LTD. v. LAURAIN 5
sealably contact an underlying surface upon
which the planar portion is disposed;
an upper surface; and
a raised perimeter disposed within the upper
surface, said raised perimeter defining a con-
cavity wrought above the upper surface of the
planar portion to delimit at least one recepta-
cle upon the planar portion;
wherein the undersurface sealably contacts
an underlying surface upon which the planar
portion is disposed, said undersurface thereby
preventing lateral displacement of the planar
portion upon said underlying surface by fric-
tional engagement therewith and, further,
creation of a partial vacuum between the un-
dersurface and the underlying surface when
attempt is made to remove said planar portion
away from said underlying surface, whereby
foodstuffs are positional interior to the at
least one receptacle, said receptacle thence
maintained in desired position by action of the
planar portion contacting said underlying
surface, and removal of said planar portion
from said underlying surface is effective only
when said planar portion is lifted from said
underlying surface first at the outer edge of
the planar portion.
Id. at 5:42-6:14.
Claim 9 is identical to claim 5 except in two respects.
First, instead of a “nontoxic polymeric planar portion,”
claim 9 specifically recites a “silicone planar portion.” Id.
at 6:29. Second, the final “wherein” clause of claim 9, as
shown below, has several limitations that are different
from that of claim 5:
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LUV N' CARE, LTD. v. LAURAIN 6
wherein the undersurface sealably contacts
an underlying surface upon which the planar
portion is disposed, said undersurface thereby
preventing lateral displacement of the planar
portion upon said underlying surface by fric-
tional engagement therewith and, further,
creation of a partial vacuum between the un-
dersurface and the underlying surface when
attempt is made to separate said planar por-
tion from said underlying surface, whereby
foodstuffs are selectively positional interior to
the at least one receptacle, said receptacle
thence maintained in desired position upon
the underlying surface by action of the planar
portion contacting said underlying surface,
and removal of said planar portion from said
underlying surface is effective only when said
planar portion is separated from said under-
lying surface first at the outer edge of the pla-
nar portion.
Id. at 6:41-56 (emphasis added).
B
In June 2016, LNC filed a complaint in the Western
District against EZPZ, seeking injunctive and monetary re-
lief due to EZPZ’s alleged “acts of unfair competition.” J.A.
481. LNC’s claims were brought pursuant to the Lanham
Act, 15 U.S.C. § 1125(a), and the Louisiana Unfair Trade
Practices and Consumer Protection Law (“LUTPA”), La.
Rev. Stat. § 51:1401 et seq. LNC also sought a declaratory
judgment that EZPZ’s U.S. Design Patent No. D745,327
(the “’327 design patent”) is invalid, unenforceable, and not
infringed.
On October 11, 2016, the United States Patent and
Trademark Office (“PTO”) issued the ’903 patent to Ms.
Laurain, who assigned her rights to EZPZ. LNC filed an
amended complaint, adding to its declaratory judgment
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LUV N' CARE, LTD. v. LAURAIN 7
claim a request that the ’903 patent be declared invalid,
unenforceable, and not infringed. In November 2016 and
January 2017, EZPZ filed counterclaims against LNC, in-
cluding for infringement of the ’327 design patent and the
’903 patent, as well as copyright, trademark, and trade
dress infringement, violation of LUTPA, and unjust enrich-
ment.
Following discovery, LNC moved for partial summary
judgment on the basis that the claims of the ’903 patent are
invalid. The district court granted LNC’s motion in May
2020, finding that all claims of the ’903 patent are obvious
over U.S. Patent Publication No. 2003/0152736 (“Bass”) in
view of U.S. Patent Publication No. 2008/0245947 (“Webb
Publication”) and U.S. Patent No. 8,251,340 (“Webb Pa-
tent”). We will refer to the Webb Publication and Webb
Patent together as the “Webb Prior Art.”
Bass discloses “a plate mat for use in restaurants and
homes,” having “an adhesive backing so it can be securely
affixed to a table top or tray.” J.A. 1085. Bass also teaches
an “enclosed space” integrated with “[t]he upper surface of
the mat.” Id. The Webb Publication discloses a mat “ar-
ranged to grip a support surface on which the mat portion
is laid, in use, by formation of at least a partial vacuum
between the mat portion and the support surface upon de-
formation of the mat portion.” J.A. 1088. The district court
did not separately discuss the Webb Patent, observing that
“[t]he Webb Publication and Webb Patent . . . generally
share the same specification.” J.A. 8.
The district court acknowledged that “Bass does not
disclose or specify a material for its integrated tableware
and dining mat,” but found 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.” J.A. 16, 19 (internal quotation marks omit-
ted). The court further found that “the showing of
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LUV N' CARE, LTD. v. LAURAIN 8
obviousness in this case is compelling and is not called into
doubt by the evidence of secondary considerations.” J.A.
27.
In June 2020, EZPZ moved for reconsideration of the
district court’s summary judgment ruling. The district
court denied the motion in October 2020, indicating that
“[a] [r]uling providing further reasoning will follow in due
course.” J.A. 2637. Before any such ruling was issued,
EZPZ requested ex parte reexamination of its ’903 patent
by the PTO. On August 5, 2021, EZPZ notified the district
court that it had been advised by the PTO that the agency
would soon issue an ex parte reexamination certificate con-
firming the patentability of the ’903 patent’s claims. The
PTO issued such a certificate on August 23, 2021, but EZPZ
did not provide it to the district court before or during the
bench trial that began on August 25, 2021.
Hence, during the bench trial, the district judge knew
that a reexamination certificate – reiterating the PTO’s
view that the claims of the ’903 patent were nonobvious –
would be forthcoming, but he did not have the certificate in
his record. The trial, which ultimately ran to eight days,
concerned only the issues of (i) whether inequitable con-
duct (which LNC had asserted as both a declaratory judg-
ment claim and an affirmative defense) had been
committed in connection with prosecution of the ’903 pa-
tent, and (ii) whether EZPZ’s conduct during the litigation
had amounted to unclean hands (which LNC had asserted
as an affirmative defense).
On December 21, 2021, the district court issued its
post-trial opinion. In it, the court held that LNC did not
meet its burden of proving that the ’903 patent is unen-
forceable due to inequitable conduct. Specifically, the dis-
trict court found that although Ms. Laurain and her patent
agent, Benjamin Williams (“Williams”), made misrepresen-
tations to the PTO – namely, that the prior art Platinum
Pets mat did not exhibit self-sealing functionality – that
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LUV N' CARE, LTD. v. LAURAIN 9
misrepresentation was not but-for material to the patenta-
bility of the ’903 patent, given that the Platinum Pets mat
itself had been disclosed to the PTO. The district court fur-
ther found that several other prior art references Ms.
Laurain and Mr. Williams withheld from the PTO were
also not material because they were cumulative of the Plat-
inum Pets mat. Additionally, the court found that Ms.
Laurain’s and Mr. Williams’ misrepresentation of the Plat-
inum Pets mat, as well as their submission of declarations
containing false or misleading information, did not demon-
strate a specific intent to deceive the PTO.
Turning to LNC’s unclean hands defense, the district
court determined that unclean hands barred EZPZ from ob-
taining relief on its then-remaining counterclaims. In par-
ticular, the court 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. The court
concluded that EZPZ “by deceit and reprehensible conduct
attempted to gain an unfair advantage” and, thus, “is not
entitled to the relief it seeks.” J.A. 189-90.
On the same day it issued its bench trial opinion, the
district court provided the parties with its follow-up rea-
soning for having denied EZPZ’s motion for reconsideration
of its grant of summary judgment of obviousness. In doing
so, the court observed: “[g]iven that the issues presented at
the bench trial required a full understanding of the prior
art and related evidence, the [c]ourt was provided with the
opportunity to gain a better understanding of this evidence
as it relates to EZPZ’s motion for reconsideration.” The dis-
trict court held that the challenged claims were invalid as
obvious over the combination of Bass and the Webb Prior
Art – the same grounds on which it had relied in the origi-
nal summary judgment opinion – and were also obvious
over a new combination consisting of Bass and the Tommee
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LUV N' CARE, LTD. v. LAURAIN 10
Tippee mat, the latter of which was described by the court
as “a commercial embodiment of the Webb Prior Art.” J.A.
35 n.4.
After the district court entered judgment, EZPZ moved
for amendment of the court’s findings of fact, conclusions of
law, and judgment relating to LNC’s unclean hands de-
fense. EZPZ argued that the court erred in considering cer-
tain facts relating to EZPZ’s litigation misconduct and that
it also lacked the requisite analysis of how EZPZ’s actions
had a necessary and immediate connection to the relief
EZPZ was seeking from the court. EZPZ also again sought
reconsideration of the grant of summary judgment of obvi-
ousness, this time based on the PTO’s issuance of the ex
parte reexamination certificate, which EZPZ provided to
the district court only after the entry of judgment.
The district court ruled on the motion relating to un-
clean hands on June 9, 2022, granting it in part and deny-
ing it in part and then issuing an amended bench trial
opinion. The court explained that it would, as EZPZ re-
quested, exclude from consideration certain facts – includ-
ing those relating to EZPZ’s deposition and trial testimony
and its conduct during settlement negotiations – in connec-
tion with its evaluation of LNC’s unclean hands defense.
In its amended opinion, the court also, for the first time,
expressly addressed the issue of the necessary and imme-
diate connection between EZPZ’s unclean hands and the
relief EZPZ was seeking from the court. Based on its re-
vised analysis, the court continued to find that unclean
hands barred EZPZ from obtaining relief on its counter-
claims.
On the same day, the district court granted in part and
denied in part EZPZ’s motion directed to its summary judg-
ment ruling on obviousness. The court acknowledged that
the reexamination certificate was “evidence that it did not
have before it prior to the [o]bviousness [r]uling or in brief-
ing on reconsideration.” J.A. 197. Still, after reviewing the
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LUV N' CARE, LTD. v. LAURAIN 11
prosecution history, including the reexamination, the court
was “not persuaded that it requires or compels altering or
amending the [c]ourt ruling that the ’903 Patent is invalid.”
Id. The district court also denied LNC’s motion for attor-
ney fees and its request for costs.
The timely appeal and cross-appeal followed. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
II
LNC’s appeal and EZPZ’s cross-appeal together raise a
multitude of issues. We will address them in the following
order: (1) EZPZ’s appeal of the determination that the doc-
trine of unclean hands bars EZPZ from obtaining relief on
its claims; (2) LNC’s appeal of the court’s conclusion that it
failed to prove the ’903 patent is unenforceable due to in-
equitable conduct; (3) EZPZ’s appeal of the grant of sum-
mary judgment that the claims of the ’903 patent are
invalid as obvious; and (4) LNC’s appeal of the district
court’s denial of an award of attorney fees and costs.
A
We begin with EZPZ’s contention that the district court
erred in finding that the doctrine of unclean hands bars
EZPZ from obtaining its requested relief. We disagree with
EZPZ and affirm the district court.
A court may find unclean hands when the misconduct
of a party seeking relief “has immediate and necessary re-
lation to the equity that he seeks in respect of the matter
in litigation . . . for such violations of conscience as in some
measure affect the equitable relations between the parties
in respect of something brought before the court for adjudi-
cation.” Keystone Driller Co. v. Gen. Excavator Co., 290
U.S. 240, 245 (1933). “We review the district court’s ruling
[of unclean hands] for abuse of discretion, which means
that we review factual findings only for clear error.” Gilead
Scis., Inc. v. Merck & Co., 888 F.3d 1231, 1240 (Fed. Cir.
2018). We review “the totality of the evidence-supported
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LUV N' CARE, LTD. v. LAURAIN 12
misconduct [and] not individual elements alone.” Id. We
may affirm on any grounds that are adequately supported
by the evidence in the record and are not limited to those
bases for unclean hands expressly relied on by the district
court. See Jaffke v. Dunham, 352 U.S. 280, 281 (1957) (“A
successful party in the District Court may sustain its judg-
ment on any ground that finds support in the record.”);
Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1356 (Fed.
Cir. 2013) (“On judicial review, the correctness of the deci-
sion appealed from can be defended by the appellee on any
ground that is supported by the record.”).
In finding unclean hands, the district court thoroughly
analyzed EZPZ’s misconduct. For example, the district
court found that EZPZ failed to disclose to LNC patent ap-
plications related to the ’903 patent until well after the
close of fact discovery and dispositive motion practice, and
in some cases, only when required by court order, all with-
out any good faith justification for its delay. In particular,
EZPZ failed to disclose U.S. Patent Application No.
15/700,403 (the “’403 application”), the prosecution of
which involved claim construction relevant to a disputed
claim term also found in the ’903 patent.
The district court additionally found that EZPZ tried to
block LNC’s efforts to discover Ms. Laurain’s prior art
searches by falsely claiming she had conducted no such
searches and that all responsive documents had been pro-
duced. It further found that EZPZ witnesses – including
Ms. Laurain and Jordan Bolton, EZPZ’s former outside
counsel – repeatedly gave purposefully evasive testimony
during depositions and at trial. In particular, according to
the district court, Ms. Laurain repeatedly provided false
testimony that was directly contradicted by other contem-
poraneous evidence.
EZPZ argues on appeal that the record does not sup-
port the district court’s finding that the misconduct rose to
the level of “unconscionable acts” or had the requisite
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LUV N' CARE, LTD. v. LAURAIN 13
nexus to the ’903 patent infringement claims the district
court dismissed based on unclean hands. We are unper-
suaded. Instead, we find no clear error in the district
court’s findings, which fully support its conclusion that
EZPZ comes to the court with unclean hands.
The evidence in the record, including what we summa-
rized just above, supports the district court’s finding that
EZPZ “by deceit and reprehensible conduct attempted to
gain an unfair advantage” in seeking the relief it requested
in the litigation. J.A. 324. The district court did not clearly
err in finding this conduct to be “offensive to the integrity
of the [c]ourt,” resulting in the district court’s “loss of con-
fidence in [EZPZ’s] candor.” J.A. at 323-24.
Nor do we find clear error in the district court’s deter-
mination that EZPZ’s misconduct bears an immediate and
necessary connection to EZPZ’s claims for infringement of
its ’903 patent. The undisclosed patent applications and
their prosecution are directly relevant to the development
of LNC’s litigation strategy. Because EZPZ only provided
the ’403 application to LNC after the claim construction
phase of the litigation, EZPZ deprived both LNC and the
district court of the opportunity to understand the PTO’s
construction of a claim term that was also of importance to
this litigation.1
1 The claim term is “planar portion,” which appears
in all claims of the ’903 patent. The district court construed
it to mean “a part of an area relating to a plane,” which
largely tracked EZPZ’s proposed construction (“a part that
includes an area that relates to a plane”). J.A. 655, 659.
The court rejected LNC’s proposed construction of “plain
and ordinary meaning of a flat surface. A flat surface is
one that is not curved.” J.A. 655. During the prosecution
of the ’403 application, the examiner rejected certain pend-
ing claims as indefinite. These claims included a limitation
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LUV N' CARE, LTD. v. LAURAIN 14
EZPZ’s failure to disclose the prior art searches under-
mined LNC’s ability to press its invalidity and unenforcea-
bility challenges. There is no clear error in the district
court’s finding that Ms. Laurain’s prior art searches may
have supported LNC’s contention that she had located the
Webb Prior Art and other key references during her initial
searches, well in advance of filing the application that led
to the ’903 patent. Likewise, what the district court found
to be EZPZ witnesses’ evasive and false testimony during
depositions and at trial further deprived LNC of material
information for consideration by its experts, for use in con-
nection with dispositive motion practice, and as part of
both its declaratory judgment claim and its defense against
EZPZ’s counterclaims. See generally Gilead, 888 F.3d at
1244 (holding that “intentional testimonial falsehoods” can
qualify as misconduct supporting determination of unclean
hands). In at least all of these ways, the record supports a
finding of an “immediate and necessary” connection be-
tween EZPZ’s misconduct and its ’903 patent infringement
claim, leaving the district court’s finding on this point un-
tainted by clear error.
“wherein the planar portion is cambered,” and the exam-
iner found a contradiction between “planar portion” and
“cambered.” J.A. 5792 (examiner explaining that “[b]y def-
inition, [c]ambered means arched slightly or curved up-
ward in the middle, and planar means lying in a plane, or
flat”) (emphasis added). Similarly, in rejecting other pend-
ing claims for indefiniteness, the examiner stated that “the
undersurface of the planar portion appears to be completely
flat.” J.A. 5792-93 (emphasis added). It was not clear error
for the district court to conclude that LNC’s claim construc-
tion argument may have been strengthened had it been
provided, as it should have been, with this prosecution his-
tory of a related application.
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LUV N' CARE, LTD. v. LAURAIN 15
EZPZ additionally contends that the district court
failed to find any misconduct bearing a necessary and im-
mediate connection to its design patent and trade dress
claims. Hence, in its view, at least these two claims should
not have been dismissed due to unclean hands. On this
point, the district court explained:
[T]here is an “immediate and necessary rela-
tion” between the unclean hands findings and
the dismissed claims. EZPZ’s design patent
and trade dress infringement claims were
pled at the outset, the subject of LNC’s writ-
ten discovery, addressed at depositions and
the subject of motion practice. After five years
of litigation, EZPZ’s conduct with respect to
its pursuit of the ’903 Patent infringement
claim cannot be cordoned off from its conduct
with respect to its pursuit of its other claims.
For example, the Court’s finding that EZPZ
knowingly deprived it of important infor-
mation during claims construction cuts across
all claims. The Court’s loss of confidence in a
party’s candor cannot be overcome with re-
spect to other theories of recovery.
J.A. 323 (internal citations omitted). We find no clear error
in this analysis.
In sum, the district court did not clearly err in its as-
sessment that the totality of the evidence demonstrated
that EZPZ engaged in misconduct rising to the level of un-
conscionable acts, enhancing EZPZ’s litigation positions
and undermining those of LNC, creating immediate and
necessary connections between EZPZ’s misconduct and the
relief it was seeking from the court. Thus, the district court
did not abuse its discretion in finding that unclean hands
barred EZPZ from seeking relief for alleged infringement
of its ’903 patent, its ’327 design patent, or its trade dress.
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LUV N' CARE, LTD. v. LAURAIN 16
We affirm the district court’s judgment with respect to un-
clean hands.
B
We turn next to LNC’s appeal from the district court’s
finding that it failed to prove the ’903 patent is unenforce-
able due to inequitable conduct.
Inequitable conduct renders a patent unenforceable
and is, therefore, an affirmative defense to an allegation of
patent infringement. To prove inequitable conduct, a party
must show that the patentee withheld material infor-
mation from the PTO, and did so with the specific intent to
deceive the PTO. See Therasense, Inc. v. Becton, Dickinson
& Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc). Both
requirements must be proven by clear and convincing evi-
dence. See id. at 1287. Moreover, deceptive intent must be
the single most reasonable inference based on the evidence.
See id. at 1290.
We review the district court’s fact findings as to mate-
riality and deceptive intent for clear error, see Regeneron
Pharms., Inc. v. Merus N.V., 864 F.3d 1343, 1351 (Fed. Cir.
2017), and its ultimate determination of inequitable con-
duct based on those findings of fact for an abuse of discre-
tion, see Energy Heating, LLC v. Heat On-The-Fly, LLC,
889 F.3d 1291, 1299 (Fed. Cir. 2018).
The district court held that LNC failed to prove inequi-
table conduct by the requisite burden of proof. We vacate
this portion of the district court’s holding and remand for
further proceedings.
1
We first address LNC’s arguments on materiality.
LNC contends that Ms. Laurain and Mr. Williams misrep-
resented the self-sealing functionality of the Platinum Pets
mat to the PTO and that these misrepresentations are per
se material. As we have previously explained, “in cases of
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LUV N' CARE, LTD. v. LAURAIN 17
affirmative egregious misconduct,” materiality is estab-
lished per se, without need to prove its impact on the PTO’s
patentability determination. Therasense, 649 F.3d at 1292;
see also Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d
1324, 1334 (Fed. Cir. 2012) (“[B]ut-for materiality is the
standard for evaluating the materiality prong of the [ineq-
uitable conduct] analysis unless there is affirmative egre-
gious misconduct.”). We are unable to discern from the
district court’s trial opinion whether it made findings as to
affirmative egregious misconduct and per se materiality.
The district court’s analysis of those issues seems to have
been embedded with its assessment of deceptive intent. In-
tent and materiality, however, are separate requirements,
both of which must be proven to establish inequitable con-
duct. See Therasense, 649 F.3d at 1290. On remand, the
district court should determine whether Ms. Laurain’s and
Mr. Williams’ misrepresentation of the self-sealing func-
tionality of the Platinum Pets mat amounted to affirmative
egregious misconduct and is, therefore, per se material.
If the court finds there is no affirmative egregious mis-
conduct, it must then reassess its prior determination that
LNC failed to prove the misrepresentations to the Board
were but-for material. An undisclosed prior art reference
is but-for material “if the PTO would not have allowed a
claim had it been aware of” the reference. Id. at 1291. The
district court appears to have concluded that the Platinum
Pets mat could not be found but-for material because it
“was disclosed to” the PTO, and the PTO “had the oppor-
tunity to consider” it before granting the ’903 patent. J.A.
268. LNC points out, however, that the district court found
Ms. Laurain and Mr. Williams “misrepresented the char-
acteristics of the Platinum Pets [m]at” by describing it
falsely to the PTO (i.e., as a prior art device that does not
practice self-sealing) and by withholding a video showing
that the mat “does in fact self-seal to an underlying sur-
face.” J.A. 264-67. On remand, in connection with its eval-
uation of the totality of evidence before it, the district court
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LUV N' CARE, LTD. v. LAURAIN 18
must evaluate whether the PTO’s patentability decision
may have differed if Ms. Laurain and Mr. Williams had de-
scribed the Platinum Pets mat accurately and had dis-
closed the withheld video to the PTO. See TransWeb, LLC
v. 3M Innovative Props. Co., 812 F.3d 1295, 1304 (Fed. Cir.
2016) (holding that even disclosed reference may be but-for
material where patentee mischaracterized it as non-prior
art).
LNC argues that the district court also erred in finding
several other prior art references Ms. Laurain and Mr. Wil-
liams failed to disclose to the PTO – the Hot Iron holster,
the CIBO “Stick Anywhere” placemat, the Momo baby skid-
proof silicone placemat, and the Brinware silicone place-
mat – were not material because they are cumulative of the
Platinum Pets mat. A prior art reference that is otherwise
material “is not but-for material if it is merely cumulative.”
Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 991 (Fed.
Cir. 2022). “A reference is cumulative when it teaches no
more than what a reasonable examiner would consider to
be taught by the prior art already before the PTO.” Regen-
eron, 864 F.3d at 1350 (internal quotation marks omitted).
The district court found that each of the prior art ref-
erences listed by LNC discloses “the surface contact self-
sealing characteristic.” J.A. 278-79. It also found Ms.
Laurain and Mr. Williams misrepresented the Platinum
Pets mat to the PTO as not possessing the self-sealing func-
tionality. See J.A. 264-68. Because the district court may
find, on remand, that these undisclosed prior art references
would have taught more than what a reasonable examiner
would have considered to have been taught by the misrep-
resented Platinum Pets mat, we vacate the district court’s
finding that the Hot Iron holster, the CIBO “Stick Any-
where” placemat, the Momo baby skid-proof silicone place-
mat, and the Brinware silicone placemat are not material.
2
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LNC next contends that the district court erred in its
handling of the deceptive intent requirement. LNC first
argues that the district court failed to consider Ms.
Laurain’s and Mr. Williams’ “overall conduct,” which in
LNC’s view “unequivocally established a pattern of deceit.”
Appellant’s Br. at 34.
Acts which are not “per se unreasonable when consid-
ered in isolation” may still demonstrate “repeated attempts
to avoid playing fair and square with the patent system”
and, collectively, support a finding of deceptive intent.
Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1235 (Fed.
Cir. 2007). When a person having a duty of candor and
good faith has engaged in serial misconduct during the
prosecution of the same or related patents, it is not enough
for a court to consider each individual act of misconduct
without also considering the collective whole. See Ohio
Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1351 (Fed.
Cir. 2013) (concluding “collective weight” of evidence of
“several misrepresentations . . . made to the PTO” sup-
ported finding of deceptive intent); Paragon Podiatry Lab’y,
Inc. v. KLM Lab’ys, Inc., 984 F.2d 1182, 1190 (Fed. Cir.
1993) (deceptive intent “must generally be inferred from
the facts and circumstances surrounding the applicant’s
overall conduct”). Because an intent to deceive the PTO
can be inferred from a person’s “pattern of lack of candor,”
a district court must consider the person’s multiple acts of
misconduct “[i]n the aggregate.” Apotex Inc. v. UCB, Inc.,
763 F.3d 1354, 1362 (Fed. Cir. 2014).
Here, the district court did not apply this legal stand-
ard and, thereby, abused its discretion. The district court
considered each of Ms. Laurain’s and Mr. Williams’ indi-
vidual acts of misconduct in isolation and failed to address
the collective weight of the evidence regarding each per-
son’s misconduct as a whole. Hence, we vacate the district
court’s findings on deceptive intent. On remand, the dis-
trict court must reevaluate Ms. Laurain’s deceptive intent
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LUV N' CARE, LTD. v. LAURAIN 20
based on her misconduct in the aggregate, and must do the
same with respect to Mr. Williams.
We further agree with LNC that the district court
wrongly found Ms. Laurain’s and Mr. Williams’ misrepre-
sentations about the self-sealing functionality of the Plati-
num Pets mat amounted only to gross negligence, which is
insufficient to support a finding of deceptive intent. In-
stead, the district court’s findings that Ms. Laurain and
Mr. Williams made a conscious choice to misrepresent the
Platinum Pets mat as lacking the self-sealing functionality
– despite them having “observed [it] self-sealing to the un-
derlying surface to some extent,” J.A. 267 – should not have
been discounted by the district court as merely gross negli-
gence. Such purposeful omission or misrepresentation of
key teachings of prior art references may, instead, be indic-
ative of a specific intent to deceive the PTO. See, e.g., Am.
Calcar, Inc. v. Am. Honda Motor Co., 768 F.3d 1185, 1190
(Fed. Cir. 2014) (“Partial disclosure of material information
about the prior art to the PTO cannot absolve a patentee of
intent if the disclosure is intentionally selective.”); Apotex,
763 F.3d at 1362 (finding deceptive intent where inventor’s
misrepresentations about disclosed prior art “were factual
in nature and contrary to the true information [the inven-
tor] had in his possession”); Semiconductor Energy Lab’y
Co. v. Samsung Elecs. Co., 204 F.3d 1368, 1376 (Fed. Cir.
2000) (finding deceptive intent where patentee made “se-
lective and misleading disclosure” about prior art reference
by providing PTO with partial translation of reference that
omitted material disclosure). On remand, the district court
should analyze whether Ms. Laurain’s and Mr. Williams’
misrepresentations relating to the Platinum Pets mat, con-
sidered in aggregate with their other acts of misconduct,
demonstrate that these individuals intended to deceive the
PTO.
LNC further alleges that Ms. Laurain and Mr. Wil-
liams acted with deceptive intent in submitting declara-
tions to the PTO purportedly containing false statements
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LUV N' CARE, LTD. v. LAURAIN 21
regarding “advertising,” “marketing,” “branding,” and “pro-
motional activity,” as well as the impact these actions had
on product sales. LNC also faults these declarations for
failing to disclose the financial interests of the declarants.
The district court analyzed the intent of the declarants
themselves but did not expressly address Ms. Laurain’s
and Mr. Williams’ intent, other than broadly concluding
that the two “did not commit inequitable conduct by sub-
mitting these declarations to the USPTO.” J.A. 305. On
remand, the district court must make findings as to Ms.
Laurain’s and Mr. Williams’ intent with respect to submit-
ting these declarations, as part of the evaluation of the ev-
idence regarding each person’s misconduct as a whole. See
generally Ferring B.V. v. Barr Lab’ys, Inc., 437 F.3d 1181,
1191 (Fed. Cir. 2006) (“[T]he question of intent is directed
to the applicant’s intent, not to the intent of the declarants.
Thus, that the declarants may have had no intent to de-
ceive is entirely irrelevant.”).
Accordingly, we vacate the district court’s finding that
LNC failed to prove inequitable conduct and we remand for
further proceedings, including to allow the district court to
revisit its findings on materiality and deceptive intent, con-
sistent with this opinion.
C
We turn next to EZPZ’s appeal from the district court’s
grant of summary judgment that the claims of the ’903 pa-
tent are invalid due to obviousness. Because genuine dis-
putes of material fact are evident from the record, we
vacate the district court’s judgment and remand for further
proceedings.
We review a grant of summary judgment in accordance
with the law of the regional circuit, here the Fifth Circuit.
See Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865,
868 (Fed. Cir. 2015). The Fifth Circuit reviews grants of
summary judgment de novo. See Keelan v. Majesco Soft-
ware, Inc., 407 F.3d 332, 338 (5th Cir. 2005). Summary
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LUV N' CARE, LTD. v. LAURAIN 22
judgment is appropriate where there is no genuine dispute
of material fact and the moving party is entitled to judg-
ment as a matter of law. See Johnson v. World All. Fin.
Corp., 830 F.3d 192, 195 (5th Cir. 2016). A dispute is gen-
uine where a reasonable fact finder could find for the non-
moving party. See id. In assessing whether a dispute is
genuine the court must “view the evidence and all factual
inferences from that evidence in the light most favorable to
the party opposing the motion” and must resolve “all rea-
sonable doubts about the facts . . . in favor of the nonmov-
ing litigant.” Bryan v. McKinsey & Co., 375 F.3d 358, 360
(5th Cir. 2004).
Obviousness is a question of law based on underlying
facts. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427
(2007). The underlying facts to be found include: (1) the
scope and content of the prior art; (2) differences between
the prior art and the claims at issue; (3) the level of ordi-
nary skill in the pertinent art; and (4) secondary consider-
ations such as commercial success, long felt but unsolved
needs, and failure of others. See Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). A determination of obviousness
“requires consideration of all four Graham factors, and it is
error to reach a conclusion of obviousness until all those
factors are considered.” Apple Inc. v. Samsung Elecs. Co.,
839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc). “Objective
indicia of nonobviousness must be considered in every case
where present.” Id.
1
We agree with EZPZ that the district court impermis-
sibly made findings of fact regarding the disclosures of the
Webb Prior Art. Taking the evidence in the light most fa-
vorable to EZPZ as the nonmoving party, a reasonable fact-
finder could find – but alternatively, and crucially, could
also not find – that the Webb Prior Art discloses the self-
sealing functionality claimed in the ’903 patent. Because
the record contains sufficient evidence from which a
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LUV N' CARE, LTD. v. LAURAIN 23
reasonable factfinder could find that this disputed claim el-
ement is not disclosed by the Webb Prior Art, there is a
genuine dispute of material fact. It was, thus, error for the
district court to determine that the challenged claims
would have been obvious to a person of ordinary skill in the
art based on the combination of the Webb Prior Art and
Bass.
The Webb Prior Art discloses embodiments in which an
elastomeric deformity of the mat pulls the underside of the
mat away from the support surface and creates a vacuum
to maintain the mat in position. This mechanism of oper-
ation, according to EZPZ, is “mutually exclusive” from the
self-sealing functionality claimed in the ’903 patent. Ap-
pellee’s Br. at 54. EZPZ’s contention is supported by the
testimony of two experts, Michael Henley and John Ken-
nedy, both of whom opine that the Webb Prior Art does not
teach self-sealing. See, e.g., J.A. 1731 (Henley: “[T]he Webb
patent and Tommee Tippee product also fail to disclose the
surface contact self-sealing attribute [of] the ’903 Patent
and invention. . . . [I]t is my opinion that the Webb patent
and the commercialized Tommee Tippee product examples
both fail to anticipate or render obvious the ’903 Patent
Claims.”); J.A. 1837 (Kennedy: “Webb does not teach at
least the recited operations of ‘causing surface contact self-
sealing upon an underlying surface by placing [the mat
upon the underlying surface]’ and ‘causing creation of a
partial vacuum . . . .’”) (brackets in original). In evaluating
whether LNC is entitled to summary judgment, EZPZ’s ev-
idence on this material point must be credited. See Ander-
son v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (“The
evidence of the non-movant is to be believed, and all justi-
fiable inferences are to be drawn in his favor.”). Doing so,
it is evident that one of ordinary skill could find that the
Webb Prior Art does not disclose the self-sealing limitation
of the claims of the ’903 patent and, hence, could conclude
that those claims have not been proven obvious.
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LUV N' CARE, LTD. v. LAURAIN 24
The district court similarly erred by finding as a fact
that the Webb Prior Art’s disclosure of “sticky” materials
means that a person of ordinary skill in the art would nec-
essarily read those prior art references as teaching self-
sealing. On this point, too, the record contains sufficient
evidence, taken in the light most favorable to EZPZ as the
non-moving party, to support a finding that the Webb Prior
Art nonetheless does not teach self-sealing. See, e.g., J.A.
1837 (EZPZ’s expert, Kennedy, opining that Webb Prior
Art “sticks to the surface only because the plate was origi-
nally pushed downward onto the suction cup . . . , and the
suction area . . . was engaged with the table, . . . [which] is
a fundamentally different method of operation” from that
of ’903 patent). Whether prior art discloses a claim limita-
tion is a question of fact, see Fleming v. Cirrus Design
Corp., 28 F.4th 1214, 1221-22 (Fed. Cir. 2022), and the dis-
trict court should not have resolved this dispute in favor of
the moving party, LNC, on summary judgment.
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. See J.A. 15975 (ex-
aminer explaining reasons for patentability as including
that Webb Prior Art mat “does not self-seal”). The decision
whether to admit evidence of reexamination at trial is left
to the discretion of a district court. See generally Callaway
Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir.
2009) (finding district court did not abuse its discretion in
excluding evidence regarding non-final reexamination de-
terminations from jury). Nevertheless, where, as here,
reexamination evidence is offered by a patentee in connec-
tion with opposing summary judgment of invalidity (or re-
consideration thereof), and is neither excluded nor deemed
inadmissible by the district court, it is error to find a lack
of a genuine dispute of material fact by ignoring,
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LUV N' CARE, LTD. v. LAURAIN 25
dismissing, or discounting the probative value of the reex-
amination evidence in the record.2
LNC’s arguments for affirmance are unpersuasive. Re-
lying on Union Carbide Corp. v. Am. Can Co., 724 F.2d
1567, 1573 (Fed. Cir. 1984), LNC argues that where prior
art references are “readily understandable,” the district
court may construe them without expert testimony and
may then determine there is no genuine issue of material
fact as to what they show. Even accepting that this is
sometimes possible, here the testimony of EZPZ’s experts
is, as we have explained, in direct conflict with the district
court’s understanding of the Webb Prior Art. This creates
a genuine dispute of material fact.
LNC’s focus on a single sentence in the specification of
the Webb Prior Art, purportedly mandating that Webb be
understood as disclosing a self-sealing embodiment, also
2 LNC’s reliance on Exmark Manufacturing Co. v.
Briggs & Stratton Power Products Group, LLC, 879 F.3d
1332 (Fed. Cir. 2018), does nothing to alter our conclusion.
In Exmark, we vacated a grant of summary judgment of no
invalidity that had been based solely on a reexamination
certificate confirming patentability. See id. at 1340-44.
This is consistent with our holding today that, in evaluat-
ing LNC’s motion for summary judgment of invalidity,
EZPZ’s reexamination certificate might have been consid-
ered as evidence of validity – although it is not dispositive
of whether LNC can prove invalidity by clear and convinc-
ing evidence. See generally Fromson v. Advance Offset
Plate, Inc., 755 F.2d 1549, 1555 (Fed. Cir. 1985) (stating
that district courts are not bound by PTO reexamination
decisions although they “must consider” such decisions as
evidence “in determining whether the party asserting in-
validity has met its statutory burden by clear and convinc-
ing evidence”).
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LUV N' CARE, LTD. v. LAURAIN 26
lacks merit.3 LNC’s contention requires us to draw an in-
ference against EZPZ from the disclosure of the Webb Prior
Art, which is improper on summary judgment, especially
in light of contrary evidence in the record. See, e.g., J.A.
1837.
Finally, LNC points to what it contends is a contradic-
tion between the bench trial testimony and the report of
EZPZ’s expert, Mr. Henley, on the matter of whether the
Webb Prior Art discloses self-sealing. Compare J.A. 51,
14575-78 (district court finding Mr. Henley testified that
Webb “discloses every element recited in independent
claim 1 [of the ’903 patent] except an integrated tableware
with a receptacle”) with J.A. 1730-31 (Mr. Henley opining
Webb also “fail[s] to disclose the surface contact self-seal-
ing attribute [of] the ’903 Patent and invention”). The
seeming inconsistency in the views expressed by EZPZ’s ex-
pert does no more for LNC than show a genuine dispute of
material fact, making summary judgment unwarranted.
Moreover, EZPZ’s second expert, Mr. Kennedy, opined that
the Webb Prior Art does not disclose self-sealing, see J.A.
3 The sentence reads as follows:
By creating the small volume 38 which is a
vacuum or at least a partial vacuum, this
serves further to hold the mat 10 against the
surface 12, thereby increasing the efficiency of
the holding action of the mat 10 upon the sur-
face 12 and in particular, enhancing the suc-
tion effect of the concavity 31.
J.A. 1099 (emphasis added). The district court concluded
that “further” requires the disclosed embodiment to self-
seal, as the word “would not be necessary if the mat had
not already adhered or self-sealed to the underlying surface
before the small volume 38 was created.” J.A. 59-60.
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LUV N' CARE, LTD. v. LAURAIN 27
1837, and LNC identifies no purportedly contradictory po-
sition espoused by him.
In sum, there is a genuine dispute of material fact as
to whether the Webb Prior Art discloses the seal-sealing
functionality claimed in the ’903 patent. Such disputes
must be submitted to the trier of fact, not resolved as a
matter of law by the trial court on a motion for summary
judgment.
2
We agree with EZPZ that the district court also im-
properly resolved genuine disputes of material fact con-
cerning the Tommee Tippee mat. There is evidence from
which a reasonable factfinder could find that the Tommee
Tippee mat is not an embodiment of the Webb Prior Art.
See, e.g., J.A. 18709 (LNC’s expert opining: “In contrast to
some of the figures in both the Webb Pub. and Webb patent,
there is no small concavity or dimple whatsoever on the un-
dersurface of the Tommee Tippee planar portion.”); J.A.
14579 (EZPZ’s expert stating there is “a difference between
what was disclosed in the Webb patent and the Tommee
Tippee embodiment”). The record also contains evidence of
multiple versions of the Tommee Tippee mat, and the par-
ties genuinely dispute whether each version operates in the
same manner. See J.A. 42-44 (district court referencing
both blue Tommee Tippee mat, which was “included in the
market research summary document compiled by Mrs.
Laurain,” and pink Tommee Tippee mat, which was intro-
duced by LNC during bench trial). EZPZ’s expert, Mr. Hen-
ley, testified that the two mats were different, with the
“pink Tommee Tippee mat” being “better” than the “aqua
or blue Tommee Tippee mat.” J.A. 14569-70. Further pro-
ceedings will be required to enable a factfinder to make the
material factual determinations as to the relationship be-
tween the Tommee Tippee mat and the Webb Prior Art.
3
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LUV N' CARE, LTD. v. LAURAIN 28
On remand, more analysis may also be necessary on
the issue of motivation to combine. Whether a skilled arti-
san would have been motivated to modify or combine dis-
closures in the prior art is a question of fact. See Univ. of
Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160
(Fed. Cir. 2021). On this genuinely disputed point, the dis-
trict court found only that “it would have been common
sense to the hypothetical 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 the Tommee Tippee Mat.”
J.A. 58-59. “[O]n summary judgment, to invoke ‘common
sense’ or any other basis for extrapolating from prior art to
a conclusion of obviousness, a district court must articulate
its reasoning with sufficient clarity for review.” Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009); see also Plantronics, Inc. v. Aliph, Inc., 724 F.3d
1343, 1354 (Fed. Cir. 2013) (stating that obviousness find-
ings “grounded in ‘common sense’ must contain explicit and
clear reasoning providing some rational underpinning why
common sense compels a finding of obviousness”). The dis-
trict court has not yet met this obligation, which – depend-
ing on how it resolves other issues – it may need to confront
on remand.
4
Factual issues concerning the objective indicia of non-
obviousness further preclude the grant of summary judg-
ment.4 See Medtronic, Inc. v. Teleflex Innovations S.a.r.l.,
4 We do not agree with EZPZ that the district court
is required address the objective indicia of non-obviousness
before analyzing prima facie obviousness. See Adapt
Pharma Operations Ltd. v. Teva Pharms. USA, Inc., 25
F.4th 1354, 1372 (Fed. Cir. 2022) (“Although the district
court’s analysis of the objective indicia in the opinion
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LUV N' CARE, LTD. v. LAURAIN 29
70 F.4th 1331, 1339 (Fed. Cir. 2023) (“It is well established
that copying by a competitor . . . may be evidence that the
patented invention is nonobvious.”); Merck & Co. v. Teva
Pharms. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005)
(“Commercial success is relevant [to nonobviousness] be-
cause the law presumes an idea would successfully have
been brought to market sooner, in response to market
forces, had the idea been obvious to persons skilled in the
art.”). The district court was required to consider objective
indicia evidence in the record and to do so in the light most
favorable to EZPZ, drawing all reasonable inferences in fa-
vor of EZPZ, as the non-moving party. Instead, the district
court improperly resolved genuine disputes of material
fact, including whether a nexus exists between the com-
mercial success of EZPZ’s product and its patented fea-
tures. See, e.g., Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573-74 (Fed. Cir. 1996) (va-
cating summary judgment of obviousness because genuine
issue of material fact existed as to commercial success
nexus).
The record here is one that requires review by a fact-
finder, to determine which (if any) objective indicia are es-
tablished, and then to weigh those findings against the
affirmative evidence of obviousness introduced by LNC.
For instance, the record contains evidence from which a
reasonable factfinder might find that: (i) LNC copied
EZPZ’s technology, see, e.g., J.A. 15966; see also J.A. 15975
(PTO finding “[i]t is clear that the invention has been cop-
ied by many other entities”); and (ii) EZPZ’s product, em-
bodying its patent claims, enjoyed commercial success, see,
follows its discussion of the prima facie case of obviousness,
there is nothing inherently wrong with that.”). Our disa-
greement with EZPZ on this point does not, however, affect
our conclusion that summary judgment of obviousness
should not have been granted.
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LUV N' CARE, LTD. v. LAURAIN 30
e.g., J.A. 2365-66, J.A. 15975 (PTO finding “the invention
itself has le[d] to it[s] commercial success”). See also gen-
erally J.A. 15975 (PTO concluding during ex parte reexam-
ination of ’903 patent that “secondary considerations, when
looked at as a whole, provide sufficient evidence to support
non-obviousness”). In short, the evidence presented by
EZPZ creates a genuine dispute of material fact as to
whether the objective indicia of non-obviousness overcome
LNC’s prima facie case (assuming it has made out one) of
obviousness.
We recognize that in certain circumstances, for exam-
ple, where inventions represent “no more than the predict-
able use of prior art elements according to their established
functions, the secondary considerations” will prove to be
“inadequate to establish nonobviousness as a matter of
law.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.
Cir. 2010) (internal quotations marks omitted). Here, how-
ever, given the numerous genuine issues of material fact –
including whether the prior art references disclose essen-
tial claim elements – it cannot be said on the present record
that LNC has made out such a strong prima facie case that
obviousness can be determined as a matter of law, notwith-
standing the evidence of objective indicia of nonobvious-
ness. See, e.g., Plantronics, 724 F.3d at 1357 (reversing
summary judgment of obviousness because evidence per-
taining to objective considerations raised genuine issues of
material fact); Mintz v. Dietz & Watson, Inc., 679 F.3d
1372, 1379-80 (Fed. Cir. 2012) (vacating summary judg-
ment of obviousness where, among other things, district
court failed to properly consider evidence of secondary con-
siderations); Transocean Offshore Deepwater Drilling, Inc.
v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1305 (Fed.
Cir. 2010) (reversing summary judgment of obviousness be-
cause district court failed to consider objective evidence of
nonobviousness); Cont’l Can Co. USA, Inc. v. Monsanto Co.,
948 F.2d 1264, 1274 (Fed. Cir. 1991) (vacating summary
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LUV N' CARE, LTD. v. LAURAIN 31
judgment of obviousness because disputed fact issues ex-
isted regarding secondary considerations).
Accordingly, we vacate the district court’s grant of
summary judgment that the claims of the ’903 patent are
invalid as obvious and remand this issue for further pro-
ceedings.5
D
Finally, we address LNC’s appeal from the district
court’s denial of its motion for attorney fees under 35
U.S.C. § 285 and the related denial of its request for costs.
Pursuant to § 285, a court “in exceptional cases may
award reasonable attorney fees to the prevailing party.”
This inquiry “requires a two-step analysis. The district
court must determine whether the case is ‘exceptional;’ if it
is, then it is within the court’s discretion to award attor-
neys’ fees to the prevailing party.” J.P. Stevens Co. v. Lex
Tex Ltd., Inc., 822 F.2d 1047, 1050 (Fed. Cir. 1987). An
“exceptional” case is “simply one that stands out from oth-
ers with respect to the substantive strength of a party’s lit-
igating position (considering both the governing law and
the facts of the case) or the unreasonable manner in which
the case was litigated.” Octane Fitness, LLC v. ICON
Health & Fitness, Inc., 572 U.S. 545, 554 (2014). The de-
termination of whether a case is “exceptional” requires the
5 During argument, EZPZ suggested that a jury trial
on invalidity would not be necessary if the district court, on
remand, determines that inequitable conduct renders the
’903 patent unenforceable. See Oral Argument 24:50-25:17
(EZPZ conceding that finding of inequitable conduct would
be dispositive of entire case). We leave it to the district
court to decide which issues it wishes to proceed on first
and what impact the resolution of any remanded issue
should have on the remainder of the case.
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LUV N' CARE, LTD. v. LAURAIN 32
consideration of “the totality of the circumstances” on a
case-by-case basis. Id.
“We review a district court’s determination of whether
a litigant is a prevailing party under § 285 de novo, apply-
ing Federal Circuit law.” Dragon Intell. Prop., LLC v. Dish
Network LLC, 956 F.3d 1358, 1361 (Fed. Cir. 2020). “We
review a district court’s exceptional-case determination
and award of fees under § 285 for abuse of discretion.” In
re PersonalWeb Techs. LLC, 85 F.4th 1148, 1153 (Fed. Cir.
2023). “An abuse of discretion occurs when a district
court’s decision commits legal error or is based on a clearly
erroneous assessment of the evidence.” Raniere v. Mi-
crosoft Corp., 887 F.3d 1298, 1303 (Fed. Cir. 2018).
LNC argues that the district court committed legal er-
ror by failing to declare LNC is the prevailing party. We
agree.
For purposes of awarding attorney fees under § 285,
“there can be only one winner.” Shum v. Intel Corp., 629
F.3d 1360, 1367 (Fed. Cir. 2010). “[I]n identifying a pre-
vailing party, we must consider whether the district court’s
decision effects or rebuffs a plaintiff’s attempt to effect a
material alteration in the legal relationship between the
parties.” B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675,
679 (Fed. Cir. 2019) (internal quotation marks omitted).
We agree with LNC that it is the prevailing party.
LNC brought this case against EZPZ, requesting, among
other things, a declaratory judgment of non-infringement,
invalidity, and unenforceability of LNC’s ’903 patent. By
proving unclean hands – a decision we are affirming today
– LNC obtained the dismissal with prejudice of EZPZ’s
then-remaining counterclaims, including its claim for in-
fringement of the ’903 patent. See Highway Equip. Co. v.
FECO, Ltd., 469 F.3d 1027, 1035 (Fed. Cir. 2006) (“[T]he
dismissal with prejudice . . . has the necessary judicial im-
primatur to constitute a judicially sanctioned change in the
legal relationship of the parties . . . .”). Consequently, LNC
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LUV N' CARE, LTD. v. LAURAIN 33
successfully achieved a material alteration in its legal re-
lationship to EZPZ, which no longer has the ability to en-
force the ’903 patent against LNC’s accused products. See
United Cannabis Corp. v. Pure Hemp Collective Inc., 66
F.4th 1362, 1368 (Fed. Cir. 2023) (finding party prevailed
where opposing party “can never again assert the same pa-
tents against . . . [the] same accused products”).
It is true that LNC did not prevail on its LUTPA claims
and the district court dismissed its Lanham Act claims
without prejudice. It is further true that we are remanding
inequitable conduct and obviousness, so it may turn out
that LNC ultimately fails to prove the ’903 patent is unen-
forceable and obvious. But a party is not required “to pre-
vail on all claims in order to qualify as a prevailing party.”
Shum, 629 F.3d at 1367-68. Furthermore, nothing remain-
ing in this case could alter the reality that LNC has already
obtained the material alteration of its relationship with
EZPZ because, henceforth, EZPZ is barred by its unclean
hands from obtaining relief from LNC based on its remain-
ing counterclaims, including for infringement of the ’903
patent, the ’327 design patent, and trade dress.
LNC next contends that the district court abused its
discretion by not deeming this case exceptional. Evaluat-
ing whether a case is exceptional requires consideration of
the “totality of the circumstances,” including “the substan-
tive strength of a party’s litigating position” and the “man-
ner in which the case was litigated.” Octane Fitness, 572
U.S. at 554. While the district court is not required to ar-
ticulate its assessment of every consideration, “it must ac-
tually assess the totality of the circumstances.”
AdjustaCam, LLC v. Newegg, Inc., 861 F.3d 1353, 1360
(Fed. Cir. 2017).
Because this case is far from over – as explained above,
we are remanding for further proceedings to determine if
the claims of the ’903 patent are invalid for obviousness
and unenforceable due to Ms. Laurain and Mr. Williams
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LUV N' CARE, LTD. v. LAURAIN 34
committing inequitable conduct – and it is, accordingly, not
yet possible to assess the “totality” of circumstances, we re-
mand for the district court to evaluate whether this case is
exceptional at its conclusion; and, further, for the district
court to decide whether to exercise its discretion to award
attorney fees if it ultimately deems this case exceptional.6
We reach the same conclusion with respect to LNC’s
appeal of the district court’s decision to deny its request to
recover its costs pursuant to Federal Rule of Civil Proce-
dure 54(d). The Fifth Circuit, whose law governs this issue
in this case, applies “a strong presumption that the prevail-
ing party will be awarded costs.” Pacheco v. Mineta, 448
F.3d 783, 793 (5th Cir. 2006). A district court that denies
or reduces a cost award to a prevailing party must articu-
late justifications for so doing. See id. at 794.
Here, the district court denied LNC’s request for costs
due to (at least in part) the “close and difficult legal issues
presented in this case.” J.A. 333. While, as we have said,
LNC is the prevailing party – and will remain so no matter
how the remand turns out – the district court should have
an opportunity to reevaluate the closeness of the case, and
any other factors it deems pertinent to whether the “strong
presumption” in favor of awarding costs has been over-
come, after it resolves the issues we are remanding to it.
Accordingly, we vacate the district court’s order deny-
ing LNC’s motion for attorney fees and refusing to award
6 In saying this we do not mean to suggest that dis-
trict courts lack discretion to decide for themselves
whether to resolve § 285 motions before or after liability
issues are appealed. Moreover, because we are vacating
the finding of no exceptionality, we need not address LNC’s
contention that the district court failed to apply the correct
legal standard in assessing whether this is an exceptional
case.
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LUV N' CARE, LTD. v. LAURAIN 35
costs, and remand these matters for further consideration
consistent with this opinion.
III
We have considered LNC’s and EZPZ’s remaining ar-
guments and find them unpersuasive. For the foregoing
reasons, we affirm the district court’s judgment on the doc-
trine of unclean hands; vacate its judgment on inequitable
conduct, invalidity, attorney fees and costs; and remand for
further proceedings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
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