Inline Plastics filed suit in this case in 2018, alleging that Lacerta infringed five patents related to tamper-proof seals on plastic containers. Lacerta was found to infringe one patent on summary judgment, and the jury found that none of the other patents were infringed. The jury further determined that all of the asserted claims from all of the patents (including the one on which infringement was found). On appeal, the non-infringement findings were upheld, but the invalidity portion was remanded for a new trial, along with the damages portion (should the infringed claim be found valid).
On remand, Inline asked the court to bifurcate the validity and damages portion of the case on the patent that was found to be infringed from validity claims on the other four patents, noting that there was no right to a jury trial on counterclaims of invalidity but that Inline had a right to a jury on the infringed patent. The court refused and instead scheduled all of the issues for a jury trial. In response, Inline sought a writ of mandamus from the Federal Circuit seeking an order requiring the court to remove the four non-infringed patents from the trial and to dismiss the validity counterclaims on those non-infringed patents as moot.
The Federal Circuit denied this request. Mandamus is reserved for extraordinary circumstances where there is no other adequate means to obtain the relief sought, the right to the relief is clear and indisputable, and the court believes the writ to be appropriate under the circumstances of the case. The Court noted that Inline did not meet this standard because it failed to show why an appeal following final judgment would be inadequate. With respect to the mootness argument, the Court found that Inline had not covenanted not assert these four patents against other Lacerta products, and that generally a judgment of noninfringement does not moot a declaratory judgment claim of invalidity. The Court further found that, while Lacerta did not have a right to a jury trial on its counterclaims, Inline did not itself have a right to a bench trial on this issue – instead it was at the discretion of the trial court.
Inline subsequently provided a covenant not to sue on these patents and the at the District Court, Judge Guzman dismissed the invalidity counterclaims with respect to these patents as moot. A trial was held on the infringed patent, and the jury found that three of the five asserted claims were invalid.
The court still must determine inequitable conduct issues related to all five patents. A hearing on that issue is scheduled for December.
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