Luv N Care Ltd v. Laurain
3:16-cv-00777
W.D. La.Feb 19, 2020Background
- Plaintiff Luv n’ Care, Ltd. and Nouri E. Hakim sued to obtain a declaratory judgment that they do not infringe Eazy-PZ, LLC’s U.S. Patent No. 9,462,903 (the ’903 Patent), a self-sealing integrated tableware/dining mat patent.
- LNC moved for partial summary judgment seeking a declaration that the ’903 Patent is unenforceable for inequitable conduct based on (a) intentional nondisclosure/misleading disclosure of material prior art (Webb patent, Tommee Tippee Easi‑Mat, Platinum Pets mat) and (b) affirmative egregious misconduct (false/omitted declarations and survey results) during prosecution.
- LNC’s factual claims: inventor Lindsey Laurain and her patent agent Benjamin Williams knew of and inspected prior-art products (including Webb/Tommee Tippee and Platinum Pets), failed to disclose Webb to the USPTO despite listing it earlier, received an ISA report identifying Webb as a Y reference, and submitted numerous declarations and survey evidence the plaintiff says were false or coached.
- EZPZ disputed intent and materiality, arguing alternative explanations (e.g., duplicative prior art, inexperienced agent, declarations not unmistakably false) and emphasizing credibility disputes.
- The court applied the clear‑and‑convincing standard for inequitable conduct (intent + materiality; Therasense but-for standard; egregious misconduct can be per se material), found genuine disputes of fact about intent and credibility, and denied both of LNC’s partial summary judgment motions.
- The court set a bench trial on the inequitable‑conduct defense (previously scheduled; denial based on credibility issues that cannot be resolved on summary judgment).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the ’903 Patent is unenforceable for inequitable conduct by nondisclosure/misleading disclosure of prior art (Webb, Tommee Tippee, Platinum Pets) | Laurain/Williams knew of Webb and Tommee Tippee, concealed Webb (despite earlier listing), mischaracterized prior art; Webb was but‑for material; motive to conceal | Webb is cumulative/duplicative (e.g., Stravitz); agent inexperience and other plausible explanations; intent not proven | Denied — credibility and intent disputed; not resolvable on summary judgment |
| Whether the patent is unenforceable for egregious misconduct based on declarations and survey evidence submitted to the PTO | Declarations were drafted/coached by Laurain/Williams, contained material omissions/affirmative misstatements; surveys false; shows intent to deceive | Alleged falsities do not prove deliberate, unmistakable falsehoods; declarations not per se egregious; intent is factual | Denied — factual disputes over falsity, deliberateness, and credibility preclude summary judgment |
| Whether Webb was but‑for material as a matter of law (i.e., would have prevented allowance) | ISA report and written opinion identified Webb as Y; later analogous prosecution rejected claims in view of Webb, showing but‑for materiality | Webb was cumulative or addressable by other references; materiality contested | Denied — materiality contested and tied to credibility/role of examiner; trial required |
| Whether any alleged egregious acts eliminate need to show materiality | LNC: egregious acts (unmistakably false affidavits) would be per se material | EZPZ: asserted acts do not meet egregious standard; disputed facts | Denied — court cannot find egregious misconduct as a matter of law given factual disputes |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) (establishes inequitable‑conduct standard and but‑for materiality; egregious misconduct exception)
- Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343 (Fed. Cir. 2017) (discusses required showing of intent and deliberate withholding for nondisclosure cases)
- In re Rembrandt Techs. LP Patent Litig., 899 F.3d 1254 (Fed. Cir. 2018) (inequitable‑conduct elements and burden reiterated)
- Energy Heating, LLC v. Heat On‑The‑Fly, LLC, 889 F.3d 1291 (Fed. Cir. 2018) (clarifies clear‑and‑convincing standard for intent in inequitable conduct)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary‑judgment standard)
- Albert v. Kevex Corp., 729 F.2d 757 (Fed. Cir. 1984) (intent is a factual issue rarely resolvable on summary judgment)
- Balboa Ins. Co. v. United States, 775 F.2d 1158 (Fed. Cir. 1985) (credibility/summary judgment considerations)
- Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151 (Fed. Cir. 2004) (facts discrediting key witness create genuine issue for trial)