Jury Instructions Must Describe All Relevant Objective Indicia of Non-obviousness

| Nefi R. OlivaNathan D. Reeves


Before Taranto, Chen, and Hughes.  Appeal from the United States District Court for the District of Massachusetts.

Summary: Jury instructions must instruct the jury to consider all relevant objective indicia of non-obviousness.

Inline Plastics Corp. (“Inline”) sued Lacerta Group, LLC (“Lacerta”) for infringement of several of its patents relating to tamper-proof containers.  At trial, the jury determined that the asserted claims at issue were invalid and not infringed.

Inline appealed, arguing (among other things) that the district court provided erroneous jury instructions. Specifically, Inline argued that the jury instructions had failed to describe and instruct the jury to consider several relevant objective indicia of non-obviousness.  For example, the instructions failed to mention the objective indicia of copying, licensing, and industry praise, although Inline had provided evidence of each of them.  Instead, the jury instructions only mentioned the objective indicia of commercial success and long-felt need.

The Federal Circuit agreed with Inline and remanded the case for a new trial on invalidity. The court ruled that the jury instructions were improper because they failed to describe all the relevant objective indicia.  Furthermore, the Federal Circuit found the error was not harmless because it was clear from the verdict that the jury relied only on obviousness to determine that at least some claims were invalid, and because the prima facie case of obviousness was not too strong for a reasonable jury to find that the objective indicia, taken as a whole, outweighed it.

Editor: Sean Murray