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On Friday, April 12, 2024, LuLu Reisman, George Denegre, Carey Menasco, and Melanie Derefinko secured a significant appellate victory for Luv n’ care, Ltd. (“LNC”), an international manufacturer of baby products, against Eazy-PZ, LLC (“EZPZ”) in a patent and trade dress infringement case. 

In a precedential opinion, the Federal Circuit upheld the district court’s (W.D. La. (Doughty, J.)) wholesale dismissal of EZPZ’s utility patent, design patent, and trade dress infringement claims against LNC based on EZPZ’s unclean hands during the litigation.  The Federal Circuit rejected EZPZ’s claims that, at most, only its utility patent infringement claims should have been dismissed, thereby foreclosing any possibility of liability on the part of LNC to EZPZ on remand. 

Additionally, the Federal Circuit agreed with LNC that the district court had abused its discretion in finding the conduct of EZPZ’s owner and patent agent before the PTO did not amount to inequitable conduct.  The Federal Circuit found the district court had applied the wrong legal standard in evaluating both materiality of prior art references and deceptive intent of the owner and patent agent as part of the inequitable conduct analysis.  Notably, the Federal Circuit found the district court erred in finding the owner and patent agent’s “misrepresentations [to the PTO] … amounted only to gross negligence,” because “[s]uch purposeful omission or misrepresentation of key teachings of prior art references may, instead, be indicative of a specific intent to deceive the PTO.”  The Federal Circuit also found the district court erred in considering each act of the owner and agent in isolation, when it should have considered the “collective weight of the evidence regarding each person’s misconduct as a whole.” For these and other reasons, the Federal Circuit reversed and remanded to the district court with instructions to revisit its ruling on inequitable conduct consistent with the Federal Circuit’s opinion.

Finally, the Federal Circuit declared, contrary to the district court’s ruling, that LNC was the prevailing party in this matter, regardless of what happens on remand.  The Federal Circuit therefore reversed and remanded the district court’s denial of attorney’s fees and costs to LNC for further consideration.  This ruling leaves open the possibility that LNC will be entitled to recover from EZPZ all or some portion of the millions of dollars of fees and costs LNC incurred in this multi-year intellectual property proceeding.

If you have questions about this case, please contact LuLu Reisman, George Denegre, Carey Menasco, and Melanie Derefinko. To learn more about Liskow’s intellectual property practice group, click here.

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