Luv N' Care v. Laurain

LUV N' CARE v. LINDSEY LAURAIN, ET AL.

Civil Action No. 3:16-00777

United States District Court, W.D. Louisiana, Monroe Division

December 21, 2021

PEREZ-MONTES MAG. JUDGE

FINDINGS OF FACT AND CONCLUSIONS OF LAW

TERRY A. DOUGHTY UNITED STATES DISTRICT JUDGE

This is a patent infringement case in which Plaintiff Luv n' care, Ltd. and Nouri E. Hakim (collectively “LNC”) seeks a declaratory judgment that it does not violate any existing intellectual property right of Defendant Eazy-PZ, LLC (collectively “EZPZ”). The Court held an eight-day bench trial in this matter from August 25, 2021 to September 3, 2021.^[1] The parties submitted pre-trial and post-trial proposed Findings of Fact and Conclusions of Law.^[2]

Pursuant to Federal Rule of Civil Procedure 52(a), the Court makes these findings and conclusions with respect to LNC's inequitable conduct allegations and unclean hands allegations. In summary, LNC failed to meet its burden of proving that the '903 Patent should be rendered unenforceable due to inequitable conduct under any of its theories. LNC did prove by clear and convincing evidence that EZPZ engaged in reprehensible conduct in relation to the matter in controversy. Therefore, the Court concludes that EZPZ has forfeited its right to have the Court hear its claims under the equitable doctrine of unclean hands.

The Court's Findings of Fact and Conclusions of Law are detailed below. These Findings and Conclusions are based on a detailed consideration of the parties' evidence (testimony and exhibits). To the extent necessary, all Findings of Fact that are labeled herein as Conclusions of Law should also be considered Findings of Fact, and all Conclusions of Law that are labeled Findings of Fact should be considered Conclusions of Law.

As used herein, the following terms have the following meanings:

• “EZPZ” refers to Defendant Eazy-PZ, LLC.

• “D327 Patent” refers to U.S. Design Patent No. D745, 327 (Trial Exhibit 936).

• “'903 Patent” refers to U.S. Patent No. 9, 462, 903 (Trial Exhibit 220).

• “'682 Application” refers to U.S Patent Application No. 14/333, 682, filed on July 17, 2014 (Trial Exhibit 245).

• “'955 PCT Application” refers to PCT Patent Application No. PC/US2015/011955 filed on January 20, 2015 (Trial Exhibit 814).

• “'403 Application” refers to U.S. Patent Application No. 15/700, 403 filed on September 11, 2017 (Trial Exhibit 281).

• “'823 Application” refers to U.S. Patent Application No. 15/507, 823 filed on March 1, 2017 (Trial Exhibit 905).

• “'976 Application” refers to U.S. Patent Application No. 16/207, 976 filed on December 3, 2018 (Trial Exhibit 583).

• “'824 Application” refers to U.S. Patent Application No. 16/717, 824 filed on December 17, 2019 (Trial Exhibit 582).

TABLE OF CONTENTS

I. INEQUITABLE CONDUCT ........................................................................................... 5

a) Applicable Law .................................................................................................. 5

b) Findings of Fact: Background of Events Leading Up to the Filing and Prosecution of the '682 Application .................................................................. 22

c) Findings of Fact: Chronological Order of Prosecution of the '903 Patent. . ........ 28

d) Findings of Fact: Patent Applications Related to the '903 Patent ....................... 36

e) Findings of Facts: The Webb Publication and the Webb Patent (“Webb Prior Art”). . ............................................................................................................... 37

f) Conclusions of Law: The Webb Publication and the Webb Patent (“Webb Prior Art”) ................................................................................................................. 41

g) Findings of Fact: The Tommee Tippee Mat ...................................................... 45

h) Conclusions of Law: The Tommee Tippee Mat ................................................. 48

i) Findings of Fact: The Platinum Pets Mat .......................................................... 51

j) Conclusions of Law: The Platinum Pets Mat ..................................................... 58

k) Findings of Fact: The Remaining Prior Art Presented at the Bench Trail ........... 61

i. The Brinware Silicone Placemat .................................................................. 61

ii. The Momo Baby Skid-Proof Silicone Placemat .......................................... 62

iii. The Hot Iron Holster ................................................................................. 64

iv. The CIBO Stick Anywhere Placemat ......................................................... 66

v. The Bruno Patent ....................................................................................... 67

vi. The Lee Single Dog Bowl Mat .................................................................. 67

l) Conclusions of Law: The Remaining Prior Art Presented at the Bench Trail ..... 69

m) Findings of Fact: Declarations Attesting to a Lack of Marketing or Branding ... 72

n) Conclusions of Law: Declarations Attesting to a Lack of Marketing or Branding 85

o) Findings of Fact: Failure to Disclose the Relationship Between Certain Declarants and EZPZ ........................................................................................ 86

p) Conclusions of Law: Failure to Disclose the Relationship Between Certain Declarants and EZPZ ........................................................................................ 95

q) Findings of Fact: Survey Evidence .................................................................... 96

r) Conclusions of Law: Survey Evidence .............................................................. 96

II. UNCLEAN HANDS ..................................................................................................... 97

a) Applicable Law ................................................................................................ 97

b) Findings of Fact: EZPZ Failed to Disclose Pertinent Related Patent Applications to LNC and the Court ..................................................................................... 100

c) Findings of Fact: EZPZ's Failure to Disclose the '403 Application Deprived LNC and the Court of Pertinent Information Regarding Claim Construction ........... 102

d) Findings of Fact: EZPZ Repeatedly Blocked LNC's Efforts to Obtain Mrs. Laurain's Prior Art Search .............................................................................. 107

e) Findings of Fact: Mrs. Laurain's Evasive Testimony Regarding Whether She Had Seen Dog Bowls in her Prior Art Search .................................................. 109

f) Findings of Fact: EZPZ Strung LNC Along During Settlement Negotiations to File a Separate Lawsuit in Michigan .............................................................. 112

g) Findings of Fact: Witnesses Gave Evasive Testimony By Claiming an Inability to Understand Simple Questions and a Lack of Recollection Even With Documents Placed Before Them ..................................................................... 113

h) Findings of Fact: Other False or Inconsistent Testimony, and Misrepresentations 114

i) Conclusions of Law: Unclean Hands .............................................................. 117

III. CONCLUSION ........................................................................................................... 118

I.INEQUITABLE CONDUCT

a) Applicable Law

1. The public has “a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct…”^[3]

2. A patent by its very nature is affected with the public interest. “The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.”^[4]

3. It is well settled that patent applicants are required to prosecute patent applications “with candor, good faith and honesty.”^[5]

4. Advocacy cannot be chosen over candor. Patent agents and attorneys who “choose advocacy over candor” risk a finding of inequitable conduct, rendering the patent invalid and unenforceable.^[6]

5. There are two forms of inequitable conduct: (1) failure to disclose material information and (2) affirmative egregious misconduct. As regards the failure to disclose material information, “[t]he first step in an inequitable conduct inquiry is determining whether the patentee failed to disclose but-for material information to the PTO.”^[7].

6. “To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the [ USPTO].”^[8] “A finding that the misrepresentation or omission amounts to gross negligence or negligence under a ‘should have known' standard does not satisfy this intent requirement.”^[9]

7. “Because the party alleging inequitable conduct bears the burden of proof, the patentee need not offer any good faith explanation unless the accused infringer first proves a threshold level of intent to deceive by clear and convincing evidence.”^[10]

8. “[T]o meet the clear and convincing evidence standard, the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.'”^[11] “[W]hen there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found.”^[12] “The evidence ‘must be sufficient to require a finding of deceitful intent in the light of all the circumstances.'”^[13]

9. “Specific intent and materiality each have their own legal underpinnings. After Therasense, they...