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. Case: 22-1954 Document: 66 Page: 2 Filed: 03/27/2024

2 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC

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 Case: 22-1954 Document: 66 Page: 3 Filed: 03/27/2024

INLINE PLASTICS CORP. v. LACERTA GROUP, LLC 3

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