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Prime Delivery: Amazon Program Now Offers Personal Jurisdiction to Patent Holders

by | May 16, 2024 |

Addressing the issue of personal jurisdiction in the context of a declaratory judgment case involving a program for resolving patent infringement claims, the US Court of Appeals for the Federal Circuit concluded that a patent owner has personal jurisdiction in the forum of an alleged infringer when it files a program claim against the alleged infringer. SnapRays, dba SnapPower v. Lighting Defense Group, Case No. 23-1184 (Fed. Cir. May 2, 2024) (Moore, CJ. Lourie, Dyk, JJ.)

The Amazon Patent Evaluation Express (APEX) program helps resolve patent infringement claims against sellers on Amazon. Under APEX, a patent owner submits an APEX Agreement to Amazon that identifies the allegedly infringed patent claim and the Amazon listings with the alleged infringing products. Amazon then sends this APEX Agreement to the seller, who can do one of the following to avoid removal of their accused listings:

  • Opt into APEX and let a third party determine whether their product likely infringes
  • Resolve the claim directly with the patent owner
  • File a lawsuit for declaratory judgment of noninfringement. If the seller does nothing, its listings are automatically removed from Amazon within three weeks of receipt of the APEX Agreement.

Lighting Defense Group (LDG), a Delaware company whose principal place of business is in Arizona, submitted an APEX Agreement alleging that SnapPower’s Amazon products (electrical outlet covers with integrated technology) infringed one of its patents. SnapPower, a Utah company whose principal place of business is in Utah, then filed a declaratory judgment action against LDG in Utah. LDG then filed a motion to dismiss for lack of personal jurisdiction. The district court granted the motion, finding that SnapPower did not demonstrate that LDG purposefully directed activities at SnapPower in Utah and that there was no evidence that LDG reached out to Utah other than through responses to SnapPower’s communications. SnapPower appealed.

The Federal Circuit reversed, finding that LDG was subject to personal jurisdiction under the Court’s three-prong test because (1) LDG purposefully directed its activities at SnapPower in Utah, (2) LDG’s submission of the APEX Agreement was directed to SnapPower in Utah and aimed to affect activities in Utah and (3) it would not be unreasonable to find personal jurisdiction over LDG in Utah.

In assessing the first prong, the Federal Circuit found that LDG knew, via APEX’s terms, that Amazon would notify SnapPower of the APEX Agreement and that the options available to SnapPower included a claim for declaratory judgment. Further, the Court found that the APEX Agreement had more power than cease and desist letters because of the automatic removal of the listings after three weeks, which would affect sales and activities in Utah.

In assessing the second prong, the Federal Circuit found that personal jurisdiction comported with due process because LDG’s actions aimed to affect marketing, sales and other activities in Utah and because the suit arose out of LDG’s activities in the forum.

In assessing the final prong, the Federal Circuit rejected LDG’s argument that allowing personal jurisdiction would “open the [...]

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Stud-y Harder: Domestic Industry Must Be Established for Each Asserted Patent

by | May 16, 2024 |

Addressing a final determination by the US International Trade Commission of no violation of § 337, the US Court of Appeals for the Federal Circuit affirmed that the complainant had not satisfied the economic prong of the domestic industry requirement because it relied on aggregated evidence of investments across different products protected by different patents. Zircon Corp. v. ITC, Case No. 22-1649 (Fed. Cir. May 8, 2024) (Lourie, Bryson, Stark, JJ.)

In 2020, Zircon filed a complaint seeking a § 337 investigation based on alleged infringement of four patents covering electronic stud finders. The Commission instituted an investigation, naming Stanley Black & Decker as the respondent. Zircon withdrew one patent during the investigation and, in late 2021, the administrative law judge (ALJ) issued an initial determination finding no violation of § 337. The ALJ found some claims of one of the three patents to be valid and infringed but held that Zircon had failed to establish the economic prong of the domestic industry requirement because it had aggregated its investments across all 53 of its practicing products, of which only 14 practiced all three patents. On review, the Commission affirmed the finding of no violation, holding that all claims were either invalid or not infringed. The Commission also affirmed the domestic industry finding, holding that the aggregation prevented it from evaluating the significance of Zircon’s investments with respect to each of the three asserted patents. Zircon appealed.

The Federal Circuit affirmed on the basis that Zircon failed to meet the second prong of the domestic industry requirement. The Court explained that where different groups of products practice different patents, the complainant must separately establish a domestic industry for each group of products. The Court agreed with Zircon that such a showing might not necessarily require breaking out investments on a per-patent basis but concluded that the complainant must ultimately show that the domestic industry requirement is met for each asserted patent. Because the Federal Circuit upheld the finding of no domestic industry, it found it unnecessary to reach the infringement and invalidity rulings.



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Say What? Recitation Entitled to Patentable Weight When Not “Communicative Content”

by | May 16, 2024 |

Addressing when claimed printed matter is entitled to patentable weight, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s ruling involving the printed matter doctrine, explaining that the claimed subject matter was not communicative content. IOEngine, LLC v. Ingenico Inc., Case No. 21-1227 (Fed. Cir. May 3, 2024) (Lourie, Chen, Stoll, JJ.)

Financial technology company Ingenico filed three petitions for inter partes review (IPR) of certain claims from three patents owned by IOEngine, all of which shared the same title and written description. The patents, titled “Apparatus, Method and System for a Tunneling Client Access Point,” claimed a “portable device” that was “configured to communicate with a terminal.” The challenged claims recited a memory that contained program code “configured in various ways to facilitate communication … with a communications network node.”

The Board issued final written decisions, which found the challenged claims to be unpatentable for obviousness or anticipation. The Board also found several claims to be anticipated after giving no patentable weight to certain claim recitations by application of the printed matter doctrine. The Board found that the terms “encrypted communications” and “program code” claim “only communicative content” (i.e., printed matter) and that these recitations were not entitled to patentable weight.

The Board concluded that the recitation of “encrypted communications” was subject to the printed matter doctrine because “nothing in the claim … requires anything beyond sending and receiving data, even if the data is in an encrypted form.” Similarly, the Board found that the recitation “program code” was subject to the printed matter doctrine because the “recital of ‘downloading’ of program code was limited to downloading (sending or transmitting) the code, which is a communication, and no other function is recited in the claim.”

IOEngine appealed, arguing that the Board erroneously construed the term “interactive user interface,” erred in its application of the printed matter doctrine, and erred in its anticipation and obviousness analysis.

The Federal Circuit affirmed the Board’s claim construction, finding IOEngine had forfeited its proposed construction because it did not present it to the Board during the IPR proceeding. Likewise, the Court affirmed the Board’s unpatentability determination of anticipation and obviousness for those claims where the Board did not invoke the printed matter doctrine.

However, the Federal Circuit reversed the Board’s determination that the recitations “encrypted communications” and “program code” were entitled to no weight under the printed matter doctrine.

The Federal Circuit explained that courts use a two-step test to determine whether a recitation should be accorded patentable weight under the printed matter doctrine. First, a court should determine “whether the limitation in question is directed toward printed matter.” Under step one, a limitation should be considered printed matter when the limitation “claims the content of information,” meaning that “the matter [is] claimed for what it communicates.” Only if the first step is met should the court proceed to step two. In the second step, the court considers “whether the printed matter nevertheless should be given patentable [...]

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When Is It Really Over? If Additional Proceedings Are Needed, Judgment Is Not Final

by | May 16, 2024 |

The US Court of Appeals for the Federal Circuit, factually distinguishing the concept of finality in this case from its earlier decision in Fresenius USA v. Baxter Int’l, vacated and remanded a district court’s amended final judgment with instructions to dismiss the case as moot in view of parallel proceedings that had found all patent claims invalid. Packet Intelligence LLC v. NetScout Systems, Inc., Case No. 22-2064 (Fed. Cir. May 2, 2024) (Lourie, Hughes, Stark, JJ.)

This dispute was originally before the Federal Circuit in 2020 when NetScout appealed a district court’s judgment that it willfully infringed multiple patents and that none of the patent claims were shown to be unpatentable or invalid. NetScout also appealed the district court’s damages award, which included enhancements. In the first appeal, the Federal Circuit reversed the damages award, vacated the enhanced damages and affirmed the remainder of the decision (Packet I). While the case was on remand to the district court, the Patent Trial & Appeal Board issued final written decisions in a series of inter partes reviews (IPRs) that had been initiated by third parties, finding all claims to be unpatentable as obvious. Packet appealed the Board’s decisions to the Federal Circuit. The district court issued an amended decision on May 4, 2022, after the Federal Circuit’s first decision remanding the case and after the Board’s final written decisions in the IPRs.

NetScout appealed again, arguing that if the Federal Circuit affirmed the Board’s findings invalidating the patents at issue, then the claims at issue in the litigation would all be unpatentable, which would trigger an immediate issue preclusion that would leave Packet unable to collect on any outstanding monetary damages awarded by the district court. Therefore, the question before the Federal Circuit was whether the decision in Packet I rendered the case sufficiently final such that it would be immune to the Board’s subsequent determination of unpatentability.

The Federal Circuit determined that Packet’s infringement judgment was not final before the Federal Circuit affirmed the Board’s unpatentability judgments. The Court discussed its prior decisions on finality, focusing on its 2013 decision in Fresenius in which the Court considered a different concept of finality. In Fresenius, the Court explained that the finality at issue was not the potential res judicata effect on another litigation. Rather, Fresenius was concerned with “whether the judgment in this infringement case is sufficiently final so that it is immune to the effect of the final judgment in the PTO proceedings, as affirmed by this court.” The Federal Circuit stated that in accordance with this concept of finality (also the one at issue in NetScout’s appeal), a litigation is sufficiently final when it is “entirely concluded” so that the cause of action is merged into a final judgment and the final judgment leaves nothing for the court to do but execute the judgment.

Applying this standard to the facts of the case at issue, the Federal Circuit found that Packet’s cause of action remained pending and [...]

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How Close Are They? PTO Looking for “Significant Relationship” Between Sequential IPR Petitioners

by | May 9, 2024 |

Addressing the issue of whether to discretionally deny a petition for inter partes review (IPR) under the General Plastics factors when there is no “significant relationship” between the petitioners, the Director of the US Patent & Trademark Office (PTO) vacated the Patent Trial & Appeal Board’s decision denying institution. Videndum Prod. Sol., Inc. v. Rotolight Ltd., IPR2023-01218 (PTO-Ofc. of Dir., Apr. 19, 2024) (Vidal, PTO Dir.)

Videndum filed a petition requesting IPR challenging claims of a patent owned by Rotolight. In its Patent Owner’s Response, Rotolight argued to the Board that it should exercise its discretion to deny institution under 35 U.S.C. § 314(a), citing the Board’s 2017 precedential decision in General Plastic. Prior to Videndum’s petition, the Board instituted review of the same patent at the request of another party. However, one month prior to oral argument in that proceeding, the parties to that IPR proceeding jointly moved to terminate the proceeding on the basis of a settlement. The Board granted the parties’ joint petition.

In the present case, a split Board denied Videndum’s petition for institution, reasoning that Videndum’s petition was a “follow on” of the prior proceeding, and citied General Plastic even while conceding that the “Petitioner’s reliance on [the] earlier-filed petition …, even ‘as a menu and roadmap’” is not sufficient “to create ‘a significant relationship’ that favors denial under the first General Plastic factor.” The dissent agreed on that point but argued that the “General Plastic factors as whole weigh against exercising discretion to deny institution.”

Videndum requested Director review of the Board’s denial of institution based on an abuse of discretion argument. The Director granted review.

The Director found error with the Board’s application of the General Plastic factors in situations where the second-in-time petition is not by the same party that filed the first petition or by a party having a “significant relationship” with the first filer.

The General Plastic factors generally deal with how the Board should analyze whether to institute a subsequent petition on the same patent. Factor one explicitly asks whether the two petitioners are the same. However, the application of the General Plastic factors “is not limited solely to instances when multiple petitions are filed by the same petitioner.” But, when the factors are applied to different petitioners, they have been applied to petitioners who have a “significant relationship” with each other.

Here, both the parties and the Board agreed that there is not a “significant relationship” between the two petitioners. As the Director noted, the PTO has never extended the General Plastic factors “to any cases in which the first and second petitioners do not have a significant relationship.” The Director found the Board’s unprecedented extension of the General Plastics factors to be “improper[],” vacated the Board’s decision, and remanded the case with an instruction to the Board majority to “address the merits of the Petition.”

Practice Note: Patent owners fighting institution of an IPR by a subsequent petitioner should allege facts emphasizing the relationship between the two [...]

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Standing Ovation…Denied!

by | May 9, 2024 |

The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing. Intellectual Tech LLC v. Zebra Technologies Corporation, Case No. 22-2207 (Fed. Cir. May 1, 2024) (Prost, Taranto, Hughes, JJ.)

In 2011, OnAsset granted Main Street Capital a security interest in a patent owned by OnAsset. In 2013, Main Street notified OnAsset that it was in default and, in 2017, OnAsset and Main Street entered into a forbearance agreement. Around the same time, Intellectual Tech was formed as a subsidiary of OnAsset and was assigned the patent in which Main Street had security interest. Intellectual Tech entered into its own patent security interest agreement with Main Street. Later, like OnAssett, Intellectual Tech defaulted.

Intellectual Tech sued Zebra Technologies for patent infringement, asserting the patent that was the subject to the security interest. Zebra moved to dismiss for lack of standing since Intellectual Tech had defaulted with respect to the Main Street security interest agreement. The district court denied Zebra’s motion, affirming Intellectual Tech’s ownership over the patent and its right to enforce it against Zebra. Zebra argued that Main Street gained exclusive rights over the patent when OnAsset defaulted back in 2013. The district court disagreed but nevertheless granted Zebra’s motion regarding constitutional standing, concluding that Main Street still had a right to grant a license to the patent to Zebra. Despite Intellectual Tech’s efforts to cure the standing defect by joining Main Street to the lawsuit, the district court deemed it incurable and dismissed Intellectual Tech’s claims without prejudice. Intellectual Tech appealed.

The Federal Circuit reversed, determining that Intellectual Tech had an exclusionary right in the patent when it filed a complaint against Zebra. Zebra contended that Main Street’s authority to license the patent, as per the forbearance agreement, stripped Intellectual Tech of all exclusionary rights. Zebra presented two licensing-related arguments: Main Street’s exclusive licensing ability upon default nullified Intellectual Tech’s exclusionary rights, and even if both Main Street and Intellectual Tech could license upon default, Main Street’s nonexclusive capability still deprived Intellectual Tech of its rights.

The Federal Circuit disagreed, finding that the forbearance agreement did not suggest that, without further action from Main Street, the mere activation of Main Street’s options automatically divested Intellectual Tech of its rights. By rejecting this exclusive-rights contention, the Court did not evaluate whether Intellectual Tech would maintain constitutional standing under the interpretation.

The Federal Circuit distinguished exclusive and nonexclusive licensing contexts in explaining why the jurisprudence cited by Zebra (the Federal Circuit’s 2010 decision in WiAV Sols. LLC v. Motorola, Inc.) did not control. According to the Court, this differentiation underscored the importance of distinguishing between patent owners and licensees, as ownership typically entails baseline exclusionary rights, contrasting with a licensee’s limited freedom from suit.

Moreover, the Federal Circuit’s analysis also underscored the necessity to assess patent agreements thoroughly, particularly regarding assignment clauses. Zebra argued that Main Street’s option [...]

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Clean Up on Aisle PTAB: Clarification of Discretionary Denial Practice

by | May 2, 2024 |

The US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking (NPRM) for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial & Appeal Board, seeking to codify existing precedent and guidance regarding the Board’s discretionary considerations in denying IPR or PGR petitions. 89 Fed. Reg. 28693 (Apr. 19, 2024).

The NPRM follows a 2020 request for comments and an April 2023 Advance Notice of Proposed Rulemaking (ANPR) that the PTO had hoped to finalize in terms of rulemaking by fall 2023. However, proposals in the ANPR hit a snag following criticism from Congress and more than 14,500 comments from stakeholders and the public, including charges that the PTO Director was overstepping her authority.

The newly proposed rules address:

  • Briefing on motions for discretionary denial
  • Factors for discretionary denial
  • Termination and settlement agreements

Briefing on Motions for Discretionary Denial

A significant aspect of the proposal provides for a separate briefing schedule between a patent owner’s preliminary response (POPR) and a request for discretionary denial, which must be filed no later than one month prior to the deadline for the POPR for briefing on its merits. Under the proposal, the discretionary denial arguments would be excluded from the preliminary response unless otherwise authorized by the Board and are intended to avoid encroaching on the wordcount limits for briefing on the merits. Under the proposed briefing process, there would be a 10-page limit for a patent owner’s request for discretionary denial and for the petitioner opposition, and a five-page limit for the patent owner’s sur-reply.

Factors for Discretionary Denial

The proposed rules address denial of institution for “parallel petitions” or “serial petitions” to provide a framework for considering whether previously presented art or arguments provide grounds for denial. The proposed rules also address treatment of joinder petitions, particularly in relation to already instituted petitions. Parallel petitions are defined in the proposed rule as two or more petitions by the same petitioner challenging the same patent that are filed on or before the filing of a POPR to any of the petitions or on or before the due date for filing a POPR to the first petition. Serial petitions are defined as challenged claims of the same patent overlapping with those in a previously filed petition for IPR, PGR or covered business method patent review.

According to the proposed rules, a parallel petition would not be instituted without a good cause showing of why more than one petition is necessary. Factors for a good cause showing include:

  • A petitioner’s ranking of desired petitions for consideration
  • An explanation of differences and materiality between the petitions
  • The number of challenged patent claims, including those asserted by the patent owner in district court litigation
  • A priority date dispute
  • Alternative claim constructions requiring different prior art references on mutually exclusive grounds
  • Knowledge of asserted claims at the time of filing a petition
  • Complexity of the technology

Similar considerations would also apply to joinder petitions.

[...]

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Cross-Appeals Fail to Strike a Chord

by | May 2, 2024 |

In the latest development in the ongoing litigation saga between competitors Sonos and Google, the US Court of Appeals for the Federal Circuit affirmed the US International Trade Commission’s determination that the original accused audio players and controllers infringed the asserted patents while redesigned products did not. Sonos, Inc. v. Int’l Trade Comm’n, Case No. 22-1421 (Fed. Cir. Apr. 8, 2024) (Stark, Dyk, Reyna, JJ.) (nonprecedential).

Sonos filed a complaint against Google at the Commission, asserting that Google’s importation of certain audio players and controllers infringed Sonos’s patents generally directed to connecting and controlling wireless speakers. The chief administrative law judge made an initial determination that Google’s originally accused products infringed each of the asserted patents but also found that Google’s redesigned products were noninfringing alternatives. After declining the parties’ petitions for review, the Commission issued a final determination adopting the chief administrative law judge’s initial determination and entered a limited exclusion order. Sonos appealed the Commission’s determination concerning the redesigned products, and Google cross-appealed the Commission’s determination concerning the original products.

Sonos argued that the Commission misconstrued disputed claim terms and lacked substantial evidence for its noninfringement findings. First, Sonos argued that the Commission misconstrued claim language reciting “at least a second message containing network configuration parameters,” which “comprise an identifier of the secure WLAN . . . and a security key.” The Commission construed this language as requiring a single second message with both the claimed identifier and security key while Sonos contended that the claim language contemplated multiple second messages that collectively contain the identifier and security key. The Federal Circuit disagreed with Sonos, noting that the specification provided strong support for the Commission’s construction. Because Google’s redesigned product transmitted the identifier and the key in separate messages, the Federal Circuit affirmed the Commission’s conclusion that Google did not infringe.

Sonos next took issue with the Commission’s determination that Google’s redesigned product, which included an incrementing integer counter for synchronizing playback among devices, did not infringe a claim requiring synchronization through “time clock information.” While Sonos framed the issue as one of claim construction, the Federal Circuit reasoned that it was actually a factual issue (whether the accused redesign infringed), which is reviewed for substantial evidence. Because Google’s experts explained that an incrementing counter does not represent a time value, the Court concluded that the Commission’s determination was supported by substantial evidence.

Finally, Sonos contested the Commission’s construction of “equalization” as requiring “alteration of the relative strength of certain frequency ranges in the audio data” by adjusting certain properties of a speaker driver, adjusting amplifier gain in a playback device or using a filter. Finding this construction too narrow, Sonos argued that “equalization” should include any modification to output audio data, including the changing of a channel output without altering strengths of a frequency range. The Federal Circuit agreed with the Commission’s construction, which was based on expert testimony and dictionaries demonstrating that “equalization” is a well-known audio technique used to enhance or diminish specific frequency ranges. [...]

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Patent Venue: VENUE Act Would Expand Scope of Venue

by | May 2, 2024 |

As part of proposed legislation intended to address several procedural issues related to judicial proceedings, a recent section titled the Venue Equity and Non-Uniformity Elimination Act of 2024 (VENUE Act) seeks to expand the number of jurisdictions in which a patent infringement suit can be brought under 28 U.S.C. § 1404(b). The bill, S 4095, is almost identical to a 2016 bill introduced by then-Senator Jeff Flake.

The VENUE Act seeks to legislatively overrule the 2017 Supreme Court ruling in TC Heartland v. Kraft Foods Group Brands by significantly broadening the number of venues in which a suit can be brought. Under the current state of the law, venue for a patent suit is appropriate under 28 U.S.C. § 1400(b) only where a defendant resides (i.e., for a business, its state of incorporation) or where the defendant has infringed the patent and maintains a regular and established place of business. In the wake of TC Heartland, venue has become a contested preliminary issue in many patent litigations.

In addition to the already established venues for patent suits, the VENUE Act would include jurisdictions where an inventor conducted research or development underlying the patent-in-suit. It would also allow venue where the defendant business conducted research and development for the asserted patent, manufactures a product or performs a manufacturing process purportedly embodied by the asserted patent. The VENUE Act would limit a “regular and established place of business” to a “physical facility,” excluding the homes of a business’s teleworking employees.

Procedurally, the VENUE Act would codify – and potentially strengthen – the existing practice of challenging district court venue determinations by mandamus petitions. By statute, a court’s “clearly and indisputably erroneous” denial of a venue transfer or dismissal motion would constitute “irremediable interim harm,” which would have the effect of requiring the US Court of Appeals for the Federal Circuit to grant such petitions when warranted.

If enacted, the VENUE Act would create new statutory interpretation issues in its significant expansion of the number of districts in which venue may be sought. At the same time, however, the expansion might be significant enough that venue challenges would return to the rarity they once enjoyed.



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Unclean Hands Aren’t Just for Toddlers

by | Apr 25, 2024 |

In an action involving manufacturers of a self-sealing dining mat for toddlers, the US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the defendants were barred from obtaining relief on their counterclaims under the unclean hands doctrine, thereby vacating the district court’s other findings on inequitable conduct, obviousness, attorneys’ fees and costs. Luv N’ Care, Ltd. et al. v. Laurain et al., Case No. 22-1905 (Fed. Cir. Apr. 12, 2024) (Reyna, Hughes, Stark, JJ.)

Luv N’ Care and Nouri E. Hakim (collectively, LNC) filed suit against Lindsey Laurain and Eazy-PZ (EZPZ), asserting various claims for unfair competition under the Lanham Act and Louisiana law. LNC also sought declaratory judgment that EZPZ’s design patent was invalid, unenforceable and not infringed. After the suit was filed, the US Patent & Trademark Office (PTO) issued Laurain a utility patent directed toward self-sealing dining mats. Laurain subsequently assigned her rights to EZPZ, which then asserted counterclaims for utility patent, design patent and trademark infringement.

Following discovery, the district court granted LNC’s motion for summary judgment, finding all claims of EZPZ’s utility patent as obvious in view of three prior art references. EZPZ moved for reconsideration, which the district court denied, indicating that a “ruling providing further reasoning will follow in due course.” Before any such ruling issued, the PTO issued an ex parte reexamination certificate confirming the patentability of the utility patent claims two days before the district court’s bench trial began.

EZPZ did not provide this reexam certificate to the district court prior to the bench trial. During the bench trial, the district court found that EZPZ had not committed inequitable conduct but that EZPZ’s litigation conduct constituted unclean hands. After the district court entered judgment, EZPZ moved for reconsideration of summary judgment based on the ex parte reexamination certificate. The district court denied this motion and found that the evidence did not compel alteration of the prior ruling that the utility patent was invalid. It also denied LNC’s motion for attorneys’ fees and costs. EZPZ appealed.

The Federal Circuit affirmed the unclean hands determination but vacated the district court’s rulings on inequitable conduct, invalidity, attorneys’ fees and costs. As to unclean hands, the Court reasoned that EZPZ failed to disclose patent applications related to the utility patent until well after the close of discovery and dispositive motion practice. EZPZ also blocked LNC’s efforts to discover Laurain’s prior art searches by falsely claiming that she had conducted no such searches and that all responsive documents had been produced. It further found that EZPZ witnesses, including Laurain and EZPZ’s former outside counsel, repeatedly gave evasive testimony during depositions and at trial. The Court affirmed the district court’s determination that EZPZ’s misconduct bore an immediate and necessary connection to EZPZ’s claims for infringement because the undisclosed material was directly relevant to the development of LNC’s litigation strategy and undermined LNC’s ability to press its invalidity and unenforceability challenges. The Court found no clear error in the district court’s reasoning that [...]

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