Case: 22-1954 Document: 66 Page: 1 Filed: 03/27/2024
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`INLINE PLASTICS CORP.,
`Plaintiff-Appellant
`
`v.
`
`LACERTA GROUP, LLC,
`Defendant-Cross-Appellant
`______________________
`
`2022-1954, 2022-2295
`______________________
`
`Appeals from the United States District Court for the
`District of Massachusetts in No. 4:18-cv-11631-TSH, Judge
`Timothy S. Hillman.
`______________________
`
`Decided: March 27, 2024
`______________________
`
`DAVID SILVIA, McCarter & English, LLP, Stamford,
`CT, argued for plaintiff-appellant. Also represented by
`JAMES M. BOLLINGER; ERIK PAUL BELT, ALEXANDER
`HORNAT, Boston, MA.
`
` LAUREL M. ROGOWSKI, Hinckley, Allen & Snyder, LLP,
`Boston, MA, argued for defendant-cross-appellant. Also
`represented by DANIEL JOHNSON; CRAIG M. SCOTT, Provi-
`dence, RI.
` ______________________
`
`Before TARANTO, CHEN, and HUGHES, Circuit Judges.
`
`

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`Case: 22-1954 Document: 66 Page: 2 Filed: 03/27/2024
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`TARANTO, Circuit Judge.
`In this action, filed by Inline Plastics Corp. against La-
`certa Group, LLC, Inline alleges infringement of several of
`its patents, i.e., U.S. Patent Nos. 7,118,003; 7,073,680;
`9,630,756; 8,795,580; and 9,527,640, which describe and
`claim certain containers (having features that make them
`resistant to tampering and make tampering evident) as
`well as methods of making such containers using ther-
`moformed plastic. After the district court granted Inline
`summary judgment of infringement on a subset of claims,
`a jury determined that the remaining asserted claims were
`not infringed and that all the asserted claims (including
`those already held infringed) were invalid. The district
`court denied posttrial motions, found the case not excep-
`tional for purposes of attorney fees under 35 U.S.C. § 285,
`and entered a final judgment.
`Inline appeals on several grounds, including that it was
`entitled to judgment as a matter of law of no invalidity and
`that an error in the jury instructions requires a new trial
`on invalidity. Lacerta cross-appeals, challenging the de-
`nial of attorney fees and the judgment’s dismissal “without
`prejudice” of certain patent claims Inline voluntarily
`dropped from its asserted-claims list near the end of trial.
`We reject Inline’s argument for judgment as a matter
`of law of no invalidity, but we agree with Inline that the
`jury instruction on the objective indicia of nonobviousness
`constituted prejudicial legal error, so the invalidity judg-
`ment must be set aside. We affirm the judgment’s adoption
`of the verdict’s finding of no infringement, a finding sepa-
`rate from invalidity. We remand for a new trial on invalid-
`ity as to all Inline-asserted claims; damages (not yet
`adjudicated) also will have to be adjudicated for the claims
`already held infringed on summary judgment if newly held
`not invalid. We address Inline’s other arguments in a lim-
`ited manner given our new-trial ruling. On Lacerta’s cross-
`appeal, because there is no longer a final judgment, we
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`3
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`vacate the without-prejudice dismissal of Inline’s late-
`withdrawn claims and the denial of attorney fees.
`I
`A
`The ’003, ’680, and ’756 patents claim containers with
`certain properties, and the ’580 and ’640 patents claim
`methods of making such containers using thermoformed
`plastic. See J.A. 81–181. The patents are related and have
`materially similar specifications. The properties of signifi-
`cance are “features which either deter unauthorized tam-
`pering or clearly indicate whether unauthorized tampering
`has occurred, or both.” ’003 patent, col. 1, lines 58–60. The
`so-called “tamper-resistant/evident” features “deter[] theft
`and prevent[] the loss of product and income for the seller,
`as well as instill[] consumer confidence in the integrity of
`the contents within the container and confidence in the
`ability of the seller and/or manufacturer to provide and
`maintain quality goods.” Id., col. 1, line 65, through col. 2,
`line 3. Figure 1 illustrates an embodiment:
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`The patents describe tamper-resistant features that
`make the containers physically difficult to open: The con-
`tainers are “configured and dimensioned to render the out-
`wardly extending flange of the cover portion relatively
`inaccessible when the cover is closed.” Id., col. 2, lines 25–
`27. In one preferred embodiment, the claimed containers
`include “an upwardly projecting bead” that “is positioned
`to surround the outer edge” of a flange on the cover portion
`when the container is closed and thereby “physically im-
`pede[] access” to the cover portion “from fingers or any
`other object that might normally be used for leverage” to
`pry the cover open. Id., col. 5, line 65, through col. 6, line
`13; id., fig.10. The patents also describe tamper-evident
`features that indicate whether the container has previ-
`ously been opened, for example, a “hinge” that “preferably
`includes a frangible section, which upon severing, provides
`a projection that extends out beyond the upwardly project-
`ing bead of the upper peripheral edge of the base portion to
`facilitate removal of the cover portion from the base por-
`tion.” Id., col. 2, lines 28–39.
`Claim 1 of the ’003 patent is representative:
`1. A tamper-resistant/evident container compris-
`ing:
`a) a plastic, transparent cover portion in-
`cluding an outwardly extending peripheral
`flange;
`b) a base portion including an upper pe-
`ripheral edge forming at least in part an
`upwardly projecting bead extending sub-
`stantially about the perimeter of the base
`portion and configured to render the out-
`wardly extending flange of the cover por-
`tion relatively
`inaccessible when the
`container is closed; and
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`c) a tamper evident bridge connecting the
`cover portion to the base portion.
`Id., col. 8, lines 55–65.
`
`B
`In August 2018, Inline filed a complaint in the United
`States District Court for the District of Massachusetts al-
`leging Lacerta’s infringement of the ’003, ’680, and ’756 pa-
`tents. J.A. 182–92. Later, Inline added allegations of
`infringement of the ’580 and ’640 patents. J.A. 231–45.
`The district court made several pretrial rulings of sig-
`nificance to the issues on appeal now. In December 2019,
`the district court issued an order construing the claim
`terms “upwardly projecting bead,” “relatively inaccessible,”
`“hinder access,” and “configured to substantially sur-
`round.” Inline Plastics Corp. v. Lacerta Group, Inc., 415 F.
`Supp. 3d 243, 258 (D. Mass. 2019) (Claim Construction Or-
`der); see also J.A. 6–13, 15–17, 19. In January 2021, the
`district court ruled on the parties’ cross-motions for sum-
`mary judgment regarding the issue of infringement (apart
`from invalidity): The court granted Inline summary judg-
`ment of Lacerta’s infringement of claims 1–3 and 6 of the
`’640 patent, but it otherwise denied both parties’ motions.
`Inline Plastics Corp. v. Lacerta Group, Inc., 560 F. Supp.
`3d 424 (D. Mass. 2021) (Summary Judgment Opinion); see
`also J.A. 2980–97.
`In January 2022, a few days before trial, the district
`court ruled on several motions in limine. It ruled that be-
`cause the expert report of Dr. MacLean (Lacerta’s expert)
`was silent on the objective indicia of nonobviousness, Dr.
`MacLean would not be allowed to testify as to the objective
`indicia at trial; and yet, because deposition testimony es-
`tablished that Dr. MacLean had “considered secondary
`considerations of non-obviousness in forming his opinion
`on the ultimate question of obviousness,” Dr. MacLean
`would be allowed to state his conclusion about the
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`“ultimate question of obviousness,” which he had done in
`his expert report. Inline Plastics Corp. v. Lacerta Group,
`Inc., No. 18-cv-11631 (D. Mass. Jan 27, 2022), ECF No. 308
`(order granting in part and denying in part Inline’s motion
`in limine); see also J.A. 67.1 The district court similarly
`allowed Dr. MacLean to testify about the indefiniteness of
`certain asserted claims, a topic addressed in his expert re-
`port. Inline Docket (Jan. 27, 2022), ECF No. 306 (order
`denying Inline’s motion in limine, ECF No. 203); J.A. 67;
`see also J.A. 8256–61 (Dr. MacLean’s report).
`The district court held a thirteen-day jury trial in Feb-
`ruary 2022. J.A. 67–72. On the twelfth day of trial, Inline
`voluntarily withdrew twenty-one of its asserted claims,2
`leaving twenty-eight asserted claims.3 The jury returned
`a general verdict regarding Inline’s remaining asserted
`claims, finding that (1) all of them were invalid and (2) La-
`certa did not infringe all claims for which the question of
`infringement was put to the jury (all but claims 1–3 and 6
`of the ’640 patent, for which Inline had already been
`granted summary judgment of infringement). J.A. 21–26.
`The district court then ruled on several relevant
`posttrial motions. Inline moved for entry of partial final
`
`1 We hereafter cite to certain items on the district
`court docket as Inline Docket, ECF No. ___.
`2 Those withdrawn claims are claims 6–7, 9, 17–20,
`and 25 of the ’003 patent; claims 4–5, 7, 9, 18–19, 21, and
`23 of the ’680 patent; claims 5 and 8 of the ’756 patent; and
`claims 2–3 and 15 of the ’580 patent. Inline Docket (May
`25, 2022), ECF No. 389 (order certifying a partial final
`judgment); see also J.A. 27–28.
`3 The remaining asserted claims are claims 1–3, 21–
`22, and 24 of the ’003 patent; claims 1–3, 6, 8, 17, 20, 25,
`and 27 of the ’680 patent; claims 1, 3, and 6–7 of the ’756
`patent; claims 1, 4, and 8–9 of the ’580 patent; and claims
`1–3 and 5–6 of the ’640 patent. Id.
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`judgment under Federal Rule of Civil Procedure 54(b), a
`step reflecting the presence in the case of an unadjudicated
`affirmative defense of unenforceability for inequitable con-
`duct. The district court granted Inline’s motion, and the
`resulting judgment both embodied the jury’s verdict on the
`claims presented to it and “dismissed without prejudice”
`the twenty-one patent claims Inline had withdrawn (the
`“without prejudice” statement included over Lacerta’s op-
`position). Inline Docket (May 25, 2022), ECF Nos. 389, 390
`(order certifying a Rule 54(b) partial final judgment and
`judgment); see also J.A. 27–30, 3402–07. Subsequently, the
`district court denied Inline’s motions seeking judgment as
`a matter of law or a new trial on both validity and infringe-
`ment. Inline Docket (Aug. 31, 2022), ECF No. 422 (order
`denying Inline’s motions for judgment as a matter of law or
`for a new trial); J.A. 80. The district court also denied La-
`certa’s motion for attorney fees, finding the case not excep-
`tional, under 35 U.S.C. § 285. Inline Docket (Aug. 31,
`2022), ECF No. 421 (order denying Lacerta’s motion for at-
`torney fees); J.A. 31–32, 80.
`The district court had jurisdiction over this case under
`28 U.S.C. §§ 1331 and 1338(a). The district court entered
`partial final judgment under Rule 54(b) on May 25, 2022.
`Inline filed a timely notice of appeal on June 23, 2022. J.A.
`78. The district court denied Inline’s relevant posttrial mo-
`tions and Lacerta’s § 285 motion on August 31, 2022. We
`reactivated Inline’s appeal on September 9, 2022, ECF No.
`7, and Lacerta filed a timely notice of cross-appeal on Sep-
`tember 27, 2022, J.A. 10877–78. We have jurisdiction to
`decide this appeal under 28 U.S.C. § 1295(a)(1).
`II
`We begin with the judgment of invalidity of the as-
`serted claims. Inline argues that it is entitled to judgment
`as a matter of law rejecting Lacerta’s obviousness chal-
`lenge to the asserted claims. It also argues that, if we do
`not award it the requested judgment of nonobviousness, we
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`should set aside the verdict of invalidity and order a new
`trial of the issue. We reject the first argument but agree
`with the second.
`
`A
`“[W]e apply the law of the regional circuit in which the
`district court sits, here, the First Circuit, in reviewing . . .
`the denial of a motion for [judgment as a matter of law].”
`AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech,
`Inc., 759 F.3d 1285, 1295 (Fed. Cir. 2014). The First Cir-
`cuit reviews the denial of such a motion without deference
`to the district court’s decision, “consider[ing] the evidence
`presented to the jury and all reasonable inferences that
`may be drawn therefrom in the light most favorable to the
`jury verdict” and reversing only “‘if the facts and inferences
`point so strongly and overwhelmingly in favor of the mo-
`vant that a reasonable jury could not have reached a ver-
`dict against that party.’” Id. at 1297 (quoting Osorio v. One
`World Technologies, Inc., 659 F.3d 81, 84 (1st Cir. 2011));
`see also Fed. R. Civ. P. 50. Applying that standard, we con-
`clude that the jury could reasonably have found obvious-
`ness. We reject Inline’s three arguments to the contrary.
`First, Inline argues that “Lacerta’s prior art references
`and expert testimony on obviousness were deficient.” In-
`line Opening Br. at 45 (capitalization omitted); see id. at
`23–24, 45–46. Inline asserts that, of the six prior-art ref-
`erences, four were before the Patent and Trademark Office
`(PTO) during examination and the other two were “cumu-
`lative” of PTO-considered references or “taught away” and
`“[i]t was simply not feasible to combine” the relied-on ref-
`erences. Id. at 45–46. But Inline cites no authority that
`precludes a successful obviousness challenge that rests on
`PTO-considered references; Inline provides no elaboration
`of the “taught away” assertion separate from its conclusory
`feasibility assertion; and its brief descriptions of the prior
`art do not persuade us that it was unreasonable for the jury
`to credit the testimony about the feasibility of the argued
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`combination given by Lacerta’s expert, Dr. MacLean, see
`J.A. 1790–91, 1827, 1830.
`Second, Inline argues that Lacerta did not present le-
`gally sufficient evidence of the motivation to combine ref-
`erences. Inline Opening Br. at 46–49. But Dr. MacLean
`testified that there was a motivation to make the argued
`combination. See, e.g., J.A. 1824 (explaining the meaning
`and relevance of “motivation to combine”); J.A. 1789, 1791
`(motivation to combine to add “tamper resistance” features
`to a primary reference); J.A. 1790 (motivation to combine
`add a hinge feature to make product easier to “manipulate
`or handle”); J.A. 1795–96 (motivation to combine to create
`a single-piece plastic container); J.A. 1796 (motivation to
`combine to add “locking features” proximate to other sup-
`port structures); J.A. 1827 (motivation to combine features
`from two-piece and one-piece plastic containers). The as-
`serted prior-art references and product-design-related tes-
`timony from other witnesses provides additional support
`for finding a motivation to make the argued combination.
`See, e.g., J.A. 485–86 (explaining problems with prior-art
`tamper-resistant/tamper-evident plastic containers and
`Inline’s motivation to design containers that would func-
`tion “in a simpler, more effective way”); J.A. 492, 882–83,
`1079 (explaining the cost and efficiency advantages of a
`one-piece plastic container).
`“[T]his court has consistently stated that a court or ex-
`aminer may find a motivation to combine prior art refer-
`ences in the nature of the problem to be solved” and that
`“[t]his form of motivation to combine evidence is particu-
`larly relevant with simpler mechanical technologies.” Ruiz
`v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004).
`Moreover, “we have recognized that some cases involve
`technologies and prior art that are simple enough that no
`expert testimony is needed” regarding a motivation to com-
`bine. Intercontinental Great Brands LLC v. Kellogg North
`America Co., 869 F.3d 1336, 1348 (Fed. Cir. 2017). The ev-
`idence suffices to support the jury verdict in this case.
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`Third, Inline argues that Lacerta’s challenge must fail
`because Dr. MacLean did not rebut or opine on Inline’s ob-
`jective-indicia evidence. Inline Opening Br. at 49–50. But
`we have never held that the challenger must present its
`own testimony on objective indicia or else the patentee’s
`evidence must be credited, much less must be credited as
`dispositive of the obviousness issue. See InTouch Technol-
`ogies, Inc. v. VGO Communications, Inc., 751 F.3d 1327,
`1352 n.8 (Fed. Cir. 2014) (“We do not imply that a defend-
`ant must proffer an expert on objective indicia of nonobvi-
`ousness before the trier of fact may reject such evidence.”).
`After all, a jury may reasonably decide not to credit the pa-
`tentee’s evidence on objective indicia, or to assign it little
`weight, because of the weakness of that evidence on its
`own.
`In this case, Inline on appeal makes no substantial ar-
`gument on the facts of this case that a reasonable jury
`could not have decided to give Inline’s objective-indicia ev-
`idence little weight, considered on its own or in relation to
`Lacerta’s prima facie obviousness evidence. Inline is left,
`therefore, with its categorical argument based on the sim-
`ple absence of expert testimony on the point from Lacerta’s
`expert. That categorical argument is incorrect.
`B
`Inline makes several arguments for a new trial on va-
`lidity. One argument is that the district court gave an in-
`correct jury instruction regarding the objective indicia of
`nonobviousness—mentioning only the objective indicia of
`commercial success and long-felt need, not other objective
`indicia for which there was evidence—and that this error
`was prejudicial, requiring a new trial on invalidity. We
`agree. As a result, we need not and do not reach Inline’s
`additional new-trial arguments. We vacate the district
`court’s judgment and remand to the district court with in-
`structions for further proceedings.
`
`

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`1
`“[J]ury instructions must be both legally correct and
`sufficiently comprehensive to address factual issues for
`which there is disputed evidence of record.” Biodex Corp.
`v. Loredan Biomedical, Inc., 946 F.2d 850, 853–54 (Fed.
`Cir. 1991). “The legal sufficiency of jury instructions on an
`issue of patent law is a question of Federal Circuit law
`which this court reviews de novo, ordering a new trial on
`that basis only when errors in the instructions as a whole
`clearly misled the jury.” Bettcher Industries, Inc. v. Bunzl
`USA, Inc., 661 F.3d 629, 638 (Fed. Cir. 2011). “‘[A] party
`seeking to alter a judgment based on erroneous jury in-
`structions must establish that (1) it made a proper and
`timely objection to the jury instructions, (2) those instruc-
`tions were legally erroneous, (3) the errors had prejudicial
`effect, and (4) it requested alternative instructions that
`would have remedied the error.’” Id. at 639 (quoting NTP,
`Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1311–12
`(Fed. Cir. 2005)).
`We conclude that the district court’s objective-indicia
`instruction was legal error. During the trial, Inline pre-
`sented evidence of industry praise for its products, J.A.
`502–507, 5670, 5680–83, evidence that it highlighted in its
`closing arguments, see Transcript of Jury Trial—Day 13 at
`10, 27–28, Inline Docket (Mar. 29, 2022), ECF No. 375. In-
`line also presented evidence earlier in the trial that, it rea-
`sonably asserts, has weight as evidence for additional
`objective indicia, such as copying and licensing. See, e.g.,
`J.A. 811–13, 852–54, 859–60, 865–67 (copying); J.A. 510,
`1238–40 (licensing). That evidence, taken together, called
`for an instruction, if properly requested, on the objective
`indicia to which the evidence pertains, so that the jury
`could assess its weight as objective indicia and—where the
`jury was asked for the bottom-line answer on obvious-
`ness—in relation to the prima facie case. The district court
`did not give such an instruction.
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`Inline properly preserved its present argument about
`the inadequacy of the instructions given. Before trial, In-
`line (and Lacerta) specifically requested objective-indicia
`instructions that included mention of industry praise, cop-
`ying, and licensing, which also were part of the court’s draft
`instructions. See J.A. 3153–54 (Inline’s proposed instruc-
`tions); J.A. 10853 (Lacerta’s proposed instruction); J.A.
`11113 (district court’s draft jury instructions addressing
`additional objective indicia including industry praise, cop-
`ying, and licensing). When the portions now at issue were
`not read to the jury, Inline timely objected “to the Court’s
`elimination of several of the secondary considerations of
`nonobviousness from the instructions” after the instruc-
`tions were read and before deliberations. J.A. 2201; see
`also J.A. 2185 (the district court’s objective-indicia jury in-
`struction).
`The error in the objective-indicia instruction here was
`not harmless (whether under Federal Circuit or First Cir-
`cuit law). We cannot say that a proper instruction would
`have made no difference to a reasonable jury regarding in-
`validity. See, e.g., Avid Technology, Inc. v. Harmonic, Inc.,
`812 F.3d 1040, 1047 (Fed. Cir. 2016) (collecting cases) (“Be-
`cause there was no separate jury determination of non-in-
`fringement on a distinct ground, the error in the
`instruction governing this central dispute at trial would be
`harmless only if a reasonable jury would have been re-
`quired by the evidence to [make the finding it made] even
`without the error.”); Costa-Urena v. Segarra, 590 F.3d 18,
`26 (1st Cir. 2009) (determining that an instructional error
`was not harmless when “the evidence was sufficiently
`mixed that it would allow (though not compel) a reasona-
`ble, properly instructed jury to find” other than it did).
`For one thing, although the jury was presented with
`invalidity grounds in addition to obviousness, the jury, act-
`ing reasonably, could well have determined that at least
`some claims were invalid for obviousness only. Indeed, it
`is hard to see any other real possibility, because the jury
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`held all asserted claims invalid, but the other grounds un-
`disputedly applied (together) to only some, not all, of the
`asserted claims.4
`Moreover, the prima-facie-case part of the obviousness
`evidence in this case is not so strong that we are prepared
`to say that a reasonable jury, properly instructed to con-
`sider all the objective indicia for which Inline presented
`material evidence, including industry praise, copying, and
`licensing, had to find all asserted claims invalid for obvi-
`ousness. Nor are we are prepared to draw that conclusion
`just because the jury was instructed to consider Inline’s
`commercial-success and long-felt-need evidence and still
`found obviousness for at least some asserted claims. The
`criteria for giving weight, in the obviousness inquiry, differ
`among the objective indicia, even when some of the same
`facts bear on different indicia. For example, industry
`praise, copying, and licensing can convey, explicitly or im-
`plicitly, information about how competitors and fellow in-
`dustry members evaluated the merits of a new product,
`potentially even before the introduction of that product to
`the market, while commercial-success and long-felt-need
`evidence (particularly as presented by Inline in this case,
`J.A. 2024–32) may depend more on commercial reactions
`to a new product chiefly over a longer period after its
`
`
`4 Of the claims the jury determined invalid, the dis-
`trict court instructed the jury that the indefiniteness and
`written-description invalidity grounds applied only to
`claims 22 and 24 of the ’003 patent; claim 1 of the ’756 pa-
`tent; claim 1 of the ’580 patent; and claim 1 of the ’640 pa-
`tent, as well as any dependent claims. See J.A. 2182
`(written description); J.A. 2183 (indefiniteness). Yet the
`jury found invalid not only the just-mentioned claims but
`also claims 1–3 and 21 of the ’003 patent and claims 1–3,
`6, 8, 17, 20, 25, and 27 of the ’680 patent.
`
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`introduction to the market. A reasonable jury could deter-
`mine that evidence evaluated within the former categories
`of objective indicia moves the needle materially toward
`nonobviousness, even while determining that evidence
`evaluated within the latter categories does not.
`Because the district court’s objective-indicia jury in-
`struction was prejudicial legal error, we vacate the district
`court’s judgment and remand for a new trial on the issue of
`invalidity.
`
`2
`Having made that determination, we need not and do
`not decide the merits of Inline’s alternative arguments that
`a new trial on invalidity is required because the district
`court instructed the jury on written-description and indef-
`initeness invalidity grounds. Those arguments rest on the
`generally recognized principles under which trial courts
`“will refuse a request for an instruction that correctly
`states a legal abstraction that is not applicable to the facts
`of the case or that would submit to the jury a matter that
`the court should determine for itself.” 9C Charles Alan
`Wright & Arthur R. Miller, Federal Practice and Procedure
`§ 2552 (3d ed. Apr. 2023 update) (footnotes omitted). On
`remand, the district court will hold a new invalidity trial.
`At that time, and in the proceedings leading to it, the dis-
`trict court should assess the appropriateness of giving such
`instructions in the new trial, considering what issues have
`been properly preserved, what instructions are warranted
`given the evidence presented to the jury, and how particu-
`lar issues are properly allocated between judge and jury.5
`
`
`5 Though the district court granted Inline summary
`judgment of Lacerta’s infringement of claims 1–3 and 6 of
`the ’640 patent, Summary Judgment Opinion, at 438, that
`determination clearly did not adjudicate invalidity issues
`(which went to trial for even those claims), and it cannot
`
`

`

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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
`
`15
`
`3
`We also need not and do not decide the merits of an-
`other argument for a new trial on invalidity made by In-
`line. This argument challenges the district court’s decision
`to permit Dr. MacLean to testify on the ultimate issue of
`obviousness at trial, despite—in a ruling not challenged on
`appeal by Lacerta—barring him from testifying about ob-
`jective indicia of nonobviousness (a topic on which his ex-
`pert report was silent). Although we draw no definitive
`conclusion about whether that combination of rulings
`would require a new trial, we note the seriousness of In-
`line’s challenge and conclude that, on remand, the district
`court should consider its ruling anew.
`In InTouch, we recited the familiar standards for obvi-
`ousness from Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966): “Obviousness is a question of law based on under-
`lying factual findings: (1) the scope and content of the prior
`art; (2) the differences between the claims and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective
`indicia of nonobviousness.” InTouch, 751 F.3d at 1347 (cit-
`ing Graham). We added that when “an expert purports to
`testify, not just to certain factual components underlying
`the obviousness inquiry, but to the ultimate question of ob-
`viousness, the expert must consider all factors relevant to
`that ultimate question.” Id. at 1352 n.8; see also High Point
`Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313
`(Fed. Cir. 2013) (“[A]n expert’s opinion [on the ultimate is-
`sue of obviousness] may be relevant to the factual aspects
`of the analysis leading to that legal conclusion.”). We did
`not say that the requirement of “consider[ation]” of all
`
`
`fairly be read, contrary to Inline’s present arguments, In-
`line Opening Br. at 40, as precluding a later-raised indefi-
`niteness challenge to those claims in particular (if such a
`challenge was properly preserved and presented).
`
`

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`Case: 22-1954 Document: 66 Page: 16 Filed: 03/27/2024
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`16
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
`
`factors may be met without documentation of the consider-
`ation in an adequate expert report.
`Here, in allowing Dr. MacLean to testify on the ulti-
`mate issue of obviousness at trial, the district court con-
`cluded, based on Dr. MacLean’s deposition, that there was
`sufficient record evidence that Dr. MacLean had “consid-
`ered” the relevant obviousness factors, including objective
`indicia, even though the court had barred him from testify-
`ing about the objective indicia of nonobviousness because
`he did not provide the required pretrial notice in the form
`of an adequate expert report on the issue. Inline Docket
`(Jan 27, 2022), ECF No. 308; J.A. 11024 (MacLean deposi-
`tion); J.A. 8185–275 (MacLean invalidity expert report).
`The net result was to allow him to state a conclusion with-
`out a timely, proper disclosure of the factual bases for a
`component of that conclusion. On remand, the district
`court should consider anew whether Dr. MacLean should
`be limited to testifying only about the first three Graham
`factors—the factors adequately discussed in his report—
`rather than the ultimate question of obviousness, given
`that the bottom-line conclusion depends in part on an ob-
`jective-indicia analysis that was missing from his expert
`report.
`
`III
`We turn to the issue of infringement (viewed here as
`separate from invalidity). Inline argues that it is entitled
`to a new trial on infringement, first, because the district
`court erred in its claim constructions and, second, because
`the district court improperly admitted evidence of a La-
`certa-owned patent as relevant to the issues of willfulness
`and damages. We find these arguments unpersuasive and
`affirm the district court’s denial of Inline’s motion for a new
`trial on the issue of infringement.
`
`

`

`Case: 22-1954 Document: 66 Page: 17 Filed: 03/27/2024
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`INLINE PLASTICS CORP. v. LACERTA GROUP, LLC
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`17
`
`A
`Inline argues that the district court erroneously con-
`strued four claim terms: (1) “upwardly projecting bead,”
`construed to mean “[r]aised portion of the upper peripheral
`edge that substantially surrounds the outer edge of the out-
`wardly extending peripheral flange”; (2) “relatively inac-
`cessible,” construed to mean “[p]hysically impedes access
`from fingers or any other object to separate the cover por-
`tion from the base portion”; (3) “hinder access,” construed
`to mean “[p]hysically impedes access from fingers or any
`other object to separate the cover portion from the base por-
`tion”; and (4) “configured to substantially surround” (a
`term present in two construed limitations), construed to
`mean “[c]onfigured to physically impede access to . . . when
`the container is closed.” Claim Construction Order, at 250–
`58; J.A. 6–13, 15–17, 19.
`Inline’s principal argument on appeal is that the dis-
`trict court’s constructions of those four terms, taken to-
`gether, “permitted the jury to conclude ‘100% inaccessible’
`was actually required,’” Inline Opening Br. at 51, though
`that requirement, says Inline, is not specified by the claim
`language as understood by a relevant artisan after reading
`the specificatio