Case: 22-1954    Document: 66    Page: 1    Filed: 03/27/2024




   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 

,
 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
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 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 or clearly indicate whether unauthorized tampering
 has occurred, or both.” ’003 patent, col. 1, lines 58–60. The
 so-called “tamper-resistant/evident” features “deter[] theft
 and prevent[] the loss of product and income for the seller,
 as well as instill[] consumer confidence in the integrity of
 the contents within the container and confidence in the
 ability of the seller and/or manufacturer to provide and
 maintain quality goods.” 

 col. 1, line 65, through col. 2,
 line 3. Figure 1 illustrates an embodiment:
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 4                INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




     The patents describe tamper-resistant features that
 make the containers physically difficult to open: The con-
 tainers are “configured and dimensioned to render the out-
 wardly extending flange of the cover portion relatively
 inaccessible when the cover is closed.” 

 col. 2, lines 25–
 27. In one preferred embodiment, the claimed containers
 include “an upwardly projecting bead” that “is positioned
 to surround the outer edge” of a flange on the cover portion
 when the container is closed and thereby “physically im-
 pede[] access” to the cover portion “from fingers or any
 other object that might normally be used for leverage” to
 pry the cover open. 

 col. 5, line 65, through col. 6, line
 13; 

 fig.10. The patents also describe tamper-evident
 features that indicate whether the container has previ-
 ously been opened, for example, a “hinge” that “preferably
 includes a frangible section, which upon severing, provides
 a projection that extends out beyond the upwardly project-
 ing bead of the upper peripheral edge of the base portion to
 facilitate removal of the cover portion from the base por-
 tion.” 

 col. 2, lines 28–39.
     Claim 1 of the ’003 patent is representative:
     1. A tamper-resistant/evident container compris-
     ing:
         a) a plastic, transparent cover portion in-
         cluding an outwardly extending peripheral
         flange;
         b) a base portion including an upper pe-
         ripheral edge forming at least in part an
         upwardly projecting bead extending sub-
         stantially about the perimeter of the base
         portion and configured to render the out-
         wardly extending flange of the cover por-
         tion relatively inaccessible when the
         container is closed; and
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                 5



         c) a tamper evident bridge connecting the
         cover portion to the base portion.
 

 col. 8, lines 55–65.
                              B
     In August 2018, Inline filed a complaint in the United
 States District Court for the District of Massachusetts al-
 leging Lacerta’s infringement of the ’003, ’680, and ’756 pa-
 tents. J.A. 182–92. Later, Inline added allegations of
 infringement of the ’580 and ’640 patents. J.A. 231–45.
      The district court made several pretrial rulings of sig-
 nificance to the issues on appeal now. In December 2019,
 the district court issued an order construing the claim
 terms “upwardly projecting bead,” “relatively inaccessible,”
 “hinder access,” and “configured to substantially sur-
 round.” Inline Plastics Corp. v. Lacerta Group, Inc., 

, 258 (D. Mass. 2019) (Claim Construction Or-
 der); see also J.A. 6–13, 15–17, 19. In January 2021, the
 district court ruled on the parties’ cross-motions for sum-
 mary judgment regarding the issue of infringement (apart
 from invalidity): The court granted Inline summary judg-
 ment of Lacerta’s infringement of claims 1–3 and 6 of the
 ’640 patent, but it otherwise denied both parties’ motions.
 Inline Plastics Corp. v. Lacerta Group, Inc., 

 (D. Mass. 2021) (Summary Judgment Opinion); see
 also J.A. 2980–97.
     In January 2022, a few days before trial, the district
 court ruled on several motions in limine. It ruled that be-
 cause the expert report of Dr. MacLean (Lacerta’s expert)
 was silent on the objective indicia of nonobviousness, Dr.
 MacLean would not be allowed to testify as to the objective
 indicia at trial; and yet, because deposition testimony es-
 tablished that Dr. MacLean had “considered secondary
 considerations of non-obviousness in forming his opinion
 on the ultimate question of obviousness,” Dr. MacLean
 would be allowed to state his conclusion about the
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 6               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




 “ultimate question of obviousness,” which he had done in
 his expert report. Inline Plastics Corp. v. Lacerta Group,
 Inc., No. 18-cv-11631 (D. Mass. Jan 27, 2022), ECF No. 308
 (order granting in part and denying in part Inline’s motion
 in limine); see also J.A. 67. 1 The district court similarly
 allowed Dr. MacLean to testify about the indefiniteness of
 certain asserted claims, a topic addressed in his expert re-
 port. Inline Docket (Jan. 27, 2022), ECF No. 306 (order
 denying Inline’s motion in limine, ECF No. 203); J.A. 67;
 see also J.A. 8256–61 (Dr. MacLean’s report).
     The district court held a thirteen-day jury trial in Feb-
 ruary 2022. J.A. 67–72. On the twelfth day of trial, Inline
 voluntarily withdrew twenty-one of its asserted claims, 2
 leaving twenty-eight asserted claims. 3 The jury returned
 a general verdict regarding Inline’s remaining asserted
 claims, finding that (1) all of them were invalid and (2) La-
 certa did not infringe all claims for which the question of
 infringement was put to the jury (all but claims 1–3 and 6
 of the ’640 patent, for which Inline had already been
 granted summary judgment of infringement). J.A. 21–26.
     The district court then ruled on several relevant
 posttrial motions. Inline moved for entry of partial final


     1   We hereafter cite to certain items on the district
 court docket as Inline Docket, ECF No. ___.
     2   Those withdrawn claims are claims 6–7, 9, 17–20,
 and 25 of the ’003 patent; claims 4–5, 7, 9, 18–19, 21, and
 23 of the ’680 patent; claims 5 and 8 of the ’756 patent; and
 claims 2–3 and 15 of the ’580 patent. Inline Docket (May
 25, 2022), ECF No. 389 (order certifying a partial final
 judgment); see also J.A. 27–28.
     3   The remaining asserted claims are claims 1–3, 21–
 22, and 24 of the ’003 patent; claims 1–3, 6, 8, 17, 20, 25,
 and 27 of the ’680 patent; claims 1, 3, and 6–7 of the ’756
 patent; claims 1, 4, and 8–9 of the ’580 patent; and claims
 1–3 and 5–6 of the ’640 patent. 

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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                 7



 judgment under Federal Rule of Civil Procedure 54(b), a
 step reflecting the presence in the case of an unadjudicated
 affirmative defense of unenforceability for inequitable con-
 duct. The district court granted Inline’s motion, and the
 resulting judgment both embodied the jury’s verdict on the
 claims presented to it and “dismissed without prejudice”
 the twenty-one patent claims Inline had withdrawn (the
 “without prejudice” statement included over Lacerta’s op-
 position). Inline Docket (May 25, 2022), ECF Nos. 389, 390
 (order certifying a Rule 54(b) partial final judgment and
 judgment); see also J.A. 27–30, 3402–07. Subsequently, the
 district court denied Inline’s motions seeking judgment as
 a matter of law or a new trial on both validity and infringe-
 ment. Inline Docket (Aug. 31, 2022), ECF No. 422 (order
 denying Inline’s motions for judgment as a matter of law or
 for a new trial); J.A. 80. The district court also denied La-
 certa’s motion for attorney fees, finding the case not excep-
 tional, under 

. Inline Docket (Aug. 31,
 2022), ECF No. 421 (order denying Lacerta’s motion for at-
 torney fees); J.A. 31–32, 80.
     The district court had jurisdiction over this case under
 

 and 1338(a). The district court entered
 partial final judgment under Rule 54(b) on May 25, 2022.
 Inline filed a timely notice of appeal on June 23, 2022. J.A.
 78. The district court denied Inline’s relevant posttrial mo-
 tions and Lacerta’s § 285 motion on August 31, 2022. We
 reactivated Inline’s appeal on September 9, 2022, ECF No.
 7, and Lacerta filed a timely notice of cross-appeal on Sep-
 tember 27, 2022, J.A. 10877–78. We have jurisdiction to
 decide this appeal under 

(a)(1).
                              II
     We begin with the judgment of invalidity of the as-
 serted claims. Inline argues that it is entitled to judgment
 as a matter of law rejecting Lacerta’s obviousness chal-
 lenge to the asserted claims. It also argues that, if we do
 not award it the requested judgment of nonobviousness, we
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 8                INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




 should set aside the verdict of invalidity and order a new
 trial of the issue. We reject the first argument but agree
 with the second.
                                A
     “[W]e apply the law of the regional circuit in which the
 district court sits, here, the First Circuit, in reviewing . . .
 the denial of a motion for [judgment as a matter of law].”
 AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech,
 Inc., 

 (Fed. Cir. 2014). The First Cir-
 cuit reviews the denial of such a motion without deference
 to the district court’s decision, “consider[ing] the evidence
 presented to the jury and all reasonable inferences that
 may be drawn therefrom in the light most favorable to the
 jury verdict” and reversing only “‘if the facts and inferences
 point so strongly and overwhelmingly in favor of the mo-
 vant that a reasonable jury could not have reached a ver-
 dict against that party.’” 

 at 1297 (quoting Osorio v. One
 World Technologies, Inc., 

 (1st Cir. 2011));
 see also Fed. R. Civ. P. 50. Applying that standard, we con-
 clude that the jury could reasonably have found obvious-
 ness. We reject Inline’s three arguments to the contrary.
      First, Inline argues that “Lacerta’s prior art references
 and expert testimony on obviousness were deficient.” In-
 line Opening Br. at 45 (capitalization omitted); see 

 at
 23–24, 45–46. Inline asserts that, of the six prior-art ref-
 erences, four were before the Patent and Trademark Office
 (PTO) during examination and the other two were “cumu-
 lative” of PTO-considered references or “taught away” and
 “[i]t was simply not feasible to combine” the relied-on ref-
 erences. 

 at 45–46. But Inline cites no authority that
 precludes a successful obviousness challenge that rests on
 PTO-considered references; Inline provides no elaboration
 of the “taught away” assertion separate from its conclusory
 feasibility assertion; and its brief descriptions of the prior
 art do not persuade us that it was unreasonable for the jury
 to credit the testimony about the feasibility of the argued
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                 9



 combination given by Lacerta’s expert, Dr. MacLean, see
 J.A. 1790–91, 1827, 1830.
      Second, Inline argues that Lacerta did not present le-
 gally sufficient evidence of the motivation to combine ref-
 erences. Inline Opening Br. at 46–49. But Dr. MacLean
 testified that there was a motivation to make the argued
 combination. See, e.g., J.A. 1824 (explaining the meaning
 and relevance of “motivation to combine”); J.A. 1789, 1791
 (motivation to combine to add “tamper resistance” features
 to a primary reference); J.A. 1790 (motivation to combine
 add a hinge feature to make product easier to “manipulate
 or handle”); J.A. 1795–96 (motivation to combine to create
 a single-piece plastic container); J.A. 1796 (motivation to
 combine to add “locking features” proximate to other sup-
 port structures); J.A. 1827 (motivation to combine features
 from two-piece and one-piece plastic containers). The as-
 serted prior-art references and product-design-related tes-
 timony from other witnesses provides additional support
 for finding a motivation to make the argued combination.
 See, e.g., J.A. 485–86 (explaining problems with prior-art
 tamper-resistant/tamper-evident plastic containers and
 Inline’s motivation to design containers that would func-
 tion “in a simpler, more effective way”); J.A. 492, 882–83,
 1079 (explaining the cost and efficiency advantages of a
 one-piece plastic container).
      “[T]his court has consistently stated that a court or ex-
 aminer may find a motivation to combine prior art refer-
 ences in the nature of the problem to be solved” and that
 “[t]his form of motivation to combine evidence is particu-
 larly relevant with simpler mechanical technologies.” Ruiz
 v. A.B. Chance Co., 

 (Fed. Cir. 2004).
 Moreover, “we have recognized that some cases involve
 technologies and prior art that are simple enough that no
 expert testimony is needed” regarding a motivation to com-
 bine. Intercontinental Great Brands LLC v. Kellogg North
 America Co., 

 (Fed. Cir. 2017). The ev-
 idence suffices to support the jury verdict in this case.
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 10               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




      Third, Inline argues that Lacerta’s challenge must fail
 because Dr. MacLean did not rebut or opine on Inline’s ob-
 jective-indicia evidence. Inline Opening Br. at 49–50. But
 we have never held that the challenger must present its
 own testimony on objective indicia or else the patentee’s
 evidence must be credited, much less must be credited as
 dispositive of the obviousness issue. See InTouch Technol-
 ogies, Inc. v. VGO Communications, Inc., 

,
 1352 n.8 (Fed. Cir. 2014) (“We do not imply that a defend-
 ant must proffer an expert on objective indicia of nonobvi-
 ousness before the trier of fact may reject such evidence.”).
 After all, a jury may reasonably decide not to credit the pa-
 tentee’s evidence on objective indicia, or to assign it little
 weight, because of the weakness of that evidence on its
 own.
     In this case, Inline on appeal makes no substantial ar-
 gument on the facts of this case that a reasonable jury
 could not have decided to give Inline’s objective-indicia ev-
 idence little weight, considered on its own or in relation to
 Lacerta’s prima facie obviousness evidence. Inline is left,
 therefore, with its categorical argument based on the sim-
 ple absence of expert testimony on the point from Lacerta’s
 expert. That categorical argument is incorrect.
                               B
      Inline makes several arguments for a new trial on va-
 lidity. One argument is that the district court gave an in-
 correct jury instruction regarding the objective indicia of
 nonobviousness—mentioning only the objective indicia of
 commercial success and long-felt need, not other objective
 indicia for which there was evidence—and that this error
 was prejudicial, requiring a new trial on invalidity. We
 agree. As a result, we need not and do not reach Inline’s
 additional new-trial arguments. We vacate the district
 court’s judgment and remand to the district court with in-
 structions for further proceedings.
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                 11



                               1
     “[J]ury instructions must be both legally correct and
 sufficiently comprehensive to address factual issues for
 which there is disputed evidence of record.” Biodex Corp.
 v. Loredan Biomedical, Inc., 

, 853–54 (Fed.
 Cir. 1991). “The legal sufficiency of jury instructions on an
 issue of patent law is a question of Federal Circuit law
 which this court reviews de novo, ordering a new trial on
 that basis only when errors in the instructions as a whole
 clearly misled the jury.” Bettcher Industries, Inc. v. Bunzl
 USA, Inc., 

 (Fed. Cir. 2011). “‘[A] party
 seeking to alter a judgment based on erroneous jury in-
 structions must establish that (1) it made a proper and
 timely objection to the jury instructions, (2) those instruc-
 tions were legally erroneous, (3) the errors had prejudicial
 effect, and (4) it requested alternative instructions that
 would have remedied the error.’” 

 at 639 (quoting NTP,
 Inc. v. Research In Motion, Ltd., 

, 1311–12
 (Fed. Cir. 2005)).
     We conclude that the district court’s objective-indicia
 instruction was legal error. During the trial, Inline pre-
 sented evidence of industry praise for its products, J.A.
 502–507, 5670, 5680–83, evidence that it highlighted in its
 closing arguments, see Transcript of Jury Trial—Day 13 at
 10, 27–28, Inline Docket (Mar. 29, 2022), ECF No. 375. In-
 line also presented evidence earlier in the trial that, it rea-
 sonably asserts, has weight as evidence for additional
 objective indicia, such as copying and licensing. See, e.g.,
 J.A. 811–13, 852–54, 859–60, 865–67 (copying); J.A. 510,
 1238–40 (licensing). That evidence, taken together, called
 for an instruction, if properly requested, on the objective
 indicia to which the evidence pertains, so that the jury
 could assess its weight as objective indicia and—where the
 jury was asked for the bottom-line answer on obvious-
 ness—in relation to the prima facie case. The district court
 did not give such an instruction.
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 12               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




     Inline properly preserved its present argument about
 the inadequacy of the instructions given. Before trial, In-
 line (and Lacerta) specifically requested objective-indicia
 instructions that included mention of industry praise, cop-
 ying, and licensing, which also were part of the court’s draft
 instructions. See J.A. 3153–54 (Inline’s proposed instruc-
 tions); J.A. 10853 (Lacerta’s proposed instruction); J.A.
 11113 (district court’s draft jury instructions addressing
 additional objective indicia including industry praise, cop-
 ying, and licensing). When the portions now at issue were
 not read to the jury, Inline timely objected “to the Court’s
 elimination of several of the secondary considerations of
 nonobviousness from the instructions” after the instruc-
 tions were read and before deliberations. J.A. 2201; see
 also J.A. 2185 (the district court’s objective-indicia jury in-
 struction).
      The error in the objective-indicia instruction here was
 not harmless (whether under Federal Circuit or First Cir-
 cuit law). We cannot say that a proper instruction would
 have made no difference to a reasonable jury regarding in-
 validity. See, e.g., Avid Technology, Inc. v. Harmonic, Inc.,
 

 (Fed. Cir. 2016) (collecting cases) (“Be-
 cause there was no separate jury determination of non-in-
 fringement on a distinct ground, the error in the
 instruction governing this central dispute at trial would be
 harmless only if a reasonable jury would have been re-
 quired by the evidence to [make the finding it made] even
 without the error.”); Costa-Urena v. Segarra, 

 (1st Cir. 2009) (determining that an instructional error
 was not harmless when “the evidence was sufficiently
 mixed that it would allow (though not compel) a reasona-
 ble, properly instructed jury to find” other than it did).
     For one thing, although the jury was presented with
 invalidity grounds in addition to obviousness, the jury, act-
 ing reasonably, could well have determined that at least
 some claims were invalid for obviousness only. Indeed, it
 is hard to see any other real possibility, because the jury
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                13



 held all asserted claims invalid, but the other grounds un-
 disputedly applied (together) to only some, not all, of the
 asserted claims. 4
     Moreover, the prima-facie-case part of the obviousness
 evidence in this case is not so strong that we are prepared
 to say that a reasonable jury, properly instructed to con-
 sider all the objective indicia for which Inline presented
 material evidence, including industry praise, copying, and
 licensing, had to find all asserted claims invalid for obvi-
 ousness. Nor are we are prepared to draw that conclusion
 just because the jury was instructed to consider Inline’s
 commercial-success and long-felt-need evidence and still
 found obviousness for at least some asserted claims. The
 criteria for giving weight, in the obviousness inquiry, differ
 among the objective indicia, even when some of the same
 facts bear on different indicia. For example, industry
 praise, copying, and licensing can convey, explicitly or im-
 plicitly, information about how competitors and fellow in-
 dustry members evaluated the merits of a new product,
 potentially even before the introduction of that product to
 the market, while commercial-success and long-felt-need
 evidence (particularly as presented by Inline in this case,
 J.A. 2024–32) may depend more on commercial reactions
 to a new product chiefly over a longer period after its



     4    Of the claims the jury determined invalid, the dis-
 trict court instructed the jury that the indefiniteness and
 written-description invalidity grounds applied only to
 claims 22 and 24 of the ’003 patent; claim 1 of the ’756 pa-
 tent; claim 1 of the ’580 patent; and claim 1 of the ’640 pa-
 tent, as well as any dependent claims. See J.A. 2182
 (written description); J.A. 2183 (indefiniteness). Yet the
 jury found invalid not only the just-mentioned claims but
 also claims 1–3 and 21 of the ’003 patent and claims 1–3,
 6, 8, 17, 20, 25, and 27 of the ’680 patent.
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 14               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




 introduction to the market. A reasonable jury could deter-
 mine that evidence evaluated within the former categories
 of objective indicia moves the needle materially toward
 nonobviousness, even while determining that evidence
 evaluated within the latter categories does not.
     Because the district court’s objective-indicia jury in-
 struction was prejudicial legal error, we vacate the district
 court’s judgment and remand for a new trial on the issue of
 invalidity.
                               2
      Having made that determination, we need not and do
 not decide the merits of Inline’s alternative arguments that
 a new trial on invalidity is required because the district
 court instructed the jury on written-description and indef-
 initeness invalidity grounds. Those arguments rest on the
 generally recognized principles under which trial courts
 “will refuse a request for an instruction that correctly
 states a legal abstraction that is not applicable to the facts
 of the case or that would submit to the jury a matter that
 the court should determine for itself.” 9C Charles Alan
 Wright & Arthur R. Miller, Federal Practice and Procedure
 § 2552 (3d ed. Apr. 2023 update) (footnotes omitted). On
 remand, the district court will hold a new invalidity trial.
 At that time, and in the proceedings leading to it, the dis-
 trict court should assess the appropriateness of giving such
 instructions in the new trial, considering what issues have
 been properly preserved, what instructions are warranted
 given the evidence presented to the jury, and how particu-
 lar issues are properly allocated between judge and jury. 5



      5  Though the district court granted Inline summary
 judgment of Lacerta’s infringement of claims 1–3 and 6 of
 the ’640 patent, Summary Judgment Opinion, at 438, that
 determination clearly did not adjudicate invalidity issues
 (which went to trial for even those claims), and it cannot
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                15



                               3
      We also need not and do not decide the merits of an-
 other argument for a new trial on invalidity made by In-
 line. This argument challenges the district court’s decision
 to permit Dr. MacLean to testify on the ultimate issue of
 obviousness at trial, despite—in a ruling not challenged on
 appeal by Lacerta—barring him from testifying about ob-
 jective indicia of nonobviousness (a topic on which his ex-
 pert report was silent). Although we draw no definitive
 conclusion about whether that combination of rulings
 would require a new trial, we note the seriousness of In-
 line’s challenge and conclude that, on remand, the district
 court should consider its ruling anew.
      In InTouch, we recited the familiar standards for obvi-
 ousness from Graham v. John Deere Co., 

, 17–18
 (1966): “Obviousness is a question of law based on under-
 lying factual findings: (1) the scope and content of the prior
 art; (2) the differences between the claims and the prior art;
 (3) the level of ordinary skill in the art; and (4) objective
 indicia of nonobviousness.” InTouch, 

 (cit-
 ing Graham). We added that when “an expert purports to
 testify, not just to certain factual components underlying
 the obviousness inquiry, but to the ultimate question of ob-
 viousness, the expert must consider all factors relevant to
 that ultimate question.” 

 at 1352 n.8; see also High Point
 Design LLC v. Buyers Direct, Inc., 

 (Fed. Cir. 2013) (“[A]n expert’s opinion [on the ultimate is-
 sue of obviousness] may be relevant to the factual aspects
 of the analysis leading to that legal conclusion.”). We did
 not say that the requirement of “consider[ation]” of all




 fairly be read, contrary to Inline’s present arguments, In-
 line Opening Br. at 40, as precluding a later-raised indefi-
 niteness challenge to those claims in particular (if such a
 challenge was properly preserved and presented).
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 16               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




 factors may be met without documentation of the consider-
 ation in an adequate expert report.
      Here, in allowing Dr. MacLean to testify on the ulti-
 mate issue of obviousness at trial, the district court con-
 cluded, based on Dr. MacLean’s deposition, that there was
 sufficient record evidence that Dr. MacLean had “consid-
 ered” the relevant obviousness factors, including objective
 indicia, even though the court had barred him from testify-
 ing about the objective indicia of nonobviousness because
 he did not provide the required pretrial notice in the form
 of an adequate expert report on the issue. Inline Docket
 (Jan 27, 2022), ECF No. 308; J.A. 11024 (MacLean deposi-
 tion); J.A. 8185–275 (MacLean invalidity expert report).
 The net result was to allow him to state a conclusion with-
 out a timely, proper disclosure of the factual bases for a
 component of that conclusion. On remand, the district
 court should consider anew whether Dr. MacLean should
 be limited to testifying only about the first three Graham
 factors—the factors adequately discussed in his report—
 rather than the ultimate question of obviousness, given
 that the bottom-line conclusion depends in part on an ob-
 jective-indicia analysis that was missing from his expert
 report.
                               III
      We turn to the issue of infringement (viewed here as
 separate from invalidity). Inline argues that it is entitled
 to a new trial on infringement, first, because the district
 court erred in its claim constructions and, second, because
 the district court improperly admitted evidence of a La-
 certa-owned patent as relevant to the issues of willfulness
 and damages. We find these arguments unpersuasive and
 affirm the district court’s denial of Inline’s motion for a new
 trial on the issue of infringement.
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC               17



                              A
     Inline argues that the district court erroneously con-
 strued four claim terms: (1) “upwardly projecting bead,”
 construed to mean “[r]aised portion of the upper peripheral
 edge that substantially surrounds the outer edge of the out-
 wardly extending peripheral flange”; (2) “relatively inac-
 cessible,” construed to mean “[p]hysically impedes access
 from fingers or any other object to separate the cover por-
 tion from the base portion”; (3) “hinder access,” construed
 to mean “[p]hysically impedes access from fingers or any
 other object to separate the cover portion from the base por-
 tion”; and (4) “configured to substantially surround” (a
 term present in two construed limitations), construed to
 mean “[c]onfigured to physically impede access to . . . when
 the container is closed.” Claim Construction Order, at 250–
 58; J.A. 6–13, 15–17, 19.
      Inline’s principal argument on appeal is that the dis-
 trict court’s constructions of those four terms, taken to-
 gether, “permitted the jury to conclude ‘100% inaccessible’
 was actually required,’” Inline Opening Br. at 51, though
 that requirement, says Inline, is not specified by the claim
 language as understood by a relevant artisan after reading
 the specification. We decide the proper claim construction
 and address the intrinsic-evidence aspects of a claim-con-
 struction analysis de novo, while we review for clear error
 any subsidiary factual determinations based on extrinsic
 evidence made by the district court. Teva Pharmaceuticals
 USA, Inc. v. Sandoz, Inc., 

, 331–33 (2015).
     We see no error in the district court’s constructions of
 the claim limitations at issue. They fit the claim terms’
 ordinary meanings, and they align with the specification.
 One key purpose of the invention (reflected in the relevant
 claim limitations) is to “deter unauthorized tampering,” in-
 cluding “theft,” and “the loss of product and income for the
 seller” through structural features that make the claimed
 containers physically difficult to open. ’003 patent, col. 1,
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 18               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




 line 56, through col. 2, line 3. Claim 1 of the ’003 patent,
 for example, states that the “upwardly projecting bead”
 both “extend[s] substantially about the perimeter of the
 base portion” and is “configured to render the outwardly
 extending flange of the cover portion relatively inaccessible
 when the container is closed.” 

 col. 8, lines 55–65. The
 specification, similarly, describes how the upwardly pro-
 jecting bead surrounds and renders the flange inaccessible,
 

 col. 2, lines 15–27, particularly (in a preferred embodi-
 ment) to fingers or other objects, 

 col. 5, line 65, through
 col. 6, line 13; 

 fig.10.
     The district court’s constructions clarify the scope of
 the claimed structures in light of that stated purpose, while
 being careful not to impose unclaimed structural or func-
 tional requirements or the extreme view Inline suggests.
 See Claim Construction Order, at 249 n.5 (“The court re-
 jects the suggestion that physically blocking access to
 something makes it 100% inaccessible.”); 

 at 251–52, 252
 n.7; 

 (“Lacerta offers no support . . . for including
 height and proximity limitations to any construction of this
 term.”). Further, the district court emphasized in its jury
 instructions that its constructions “do[] not mean that ac-
 cess [to the cover portion and flange] is impossible.” J.A.
 2176, lines 16–17, 21–22. We therefore reject Inline’s ar-
 gument on appeal that the district court’s constructions
 “permitted the jury to conclude ‘100% inaccessible’ was ac-
 tually required.” Inline Opening Br. at 51.
                                B
     Inline argues for a new trial on infringement on a dis-
 tinct ground: It contends, as we understand its argument,
 that the district court allowed Lacerta to introduce evi-
 dence of a Lacerta patent for its relevance to the issues of
 willfulness and damages and that such evidence had an ad-
 verse effect on the jury’s infringement finding. Inline
 Opening Br. at 62–63. “[W]e apply the law of the regional
 circuit in which the district court sits, here, the First
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC                  19



 Circuit, in reviewing . . . challenges to a district court’s ev-
 identiary rulings.” AbbVie, 

. In the First
 Circuit, “[c]hallenges to a district court’s evidentiary rul-
 ings are . . . reviewed under an abuse of discretion stand-
 ard,” with the reviewing court considering “‘whether the
 error was harmless’” and “‘whether exclusion or admission
 of the evidence affected plaintiff’s substantial rights.’” 

 at 1302 (quoting Lynch v. City of Boston, 

 (1st
 Cir. 1999)).
     Inline has not pointed to legal authority establishing
 that Lacerta’s patent was inadmissible as irrelevant, as a
 matter of law, to the issues of willfulness or damages. And
 as Inline itself observes, the district court gave a limiting
 instruction to the jury, on two occasions, clarifying that the
 jury should consider Lacerta’s patent only on the issues of
 willfulness and damages but not on the issue of infringe-
 ment. J.A. 1474–76, 2174; see Inline Opening Br. at 63.
 We do not see reversible error in these circumstances. We
 do not foreclose the district court from reconsidering the
 issue in the context of retrying damages (for the claims
 held infringed on summary judgment).
                               IV
     On its cross-appeal, Lacerta argues that the district
 court erred by dismissing Inline’s late-withdrawn patent
 claims without prejudice (instead of with prejudice) and by
 denying its motion for attorney fees under 

.
 We review both of those rulings for an abuse of discretion.
 See Doe v. Urohealth Systems, Inc., 

 (1st
 Cir. 2000) (Rule 41); Klunder v. Brown University, 

 (1st Cir. 2015) (Rule 15); Highmark Inc. v. Allcare
 Health Management System, Inc., 

 (2014)
 (“[A]n appellate court should review all aspects of a district
 court’s § 285 determination for abuse of discretion.”). In
 light of our rulings above, we vacate both the without-prej-
 udice dismissal of Inline’s late-withdrawn claims and the
 district court’s denial of fees under § 285.
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 20               INLINE PLASTICS CORP. v. LACERTA GROUP, LLC




                               A
      We vacate the district court’s without-prejudice dismis-
 sal of Inline’s late-withdrawn claims. We first note that
 Lacerta has made facially substantial arguments that In-
 line’s late withdrawal of a number of its asserted claims
 warranted dismissal with prejudice. Although, as the dis-
 trict court noted, Lacerta did not object to the withdrawal
 of the claims at the trial, Inline Docket (May 25, 2022), ECF
 No. 389; J.A. 1806, it never consented to withdrawal “with-
 out prejudice,” and it objected to that qualifier in its oppo-
 sition to Inline’s proposed Rule 54(b) judgment, J.A. 3402–
 07.
     We think that further consideration of whether the dis-
 missal must be with prejudice in the circumstances here is
 warranted and that it is best for that consideration to occur
 on remand after we vacate the judgment in this respect.
 We do not suggest (and Inline has not argued) that the
 withdrawn claims should, or even can, be reinserted into
 the case. But we see no need for a definitive ruling on the
 “without prejudice” issue now, and we seek to avoid any
 risk that a final judgment on these claims now would ad-
 versely affect the further adjudication of the many claims
 that have to be retried in part. Such an unintended effect,
 a matter not briefed before us, can be avoided by vacating
 this dismissal and returning the issue to the district court
 on remand.
                               B
     We vacate the district court’s denial of Lacerta’s motion
 for an exceptional-case determination and attorney fees
 under 

. We review the district court’s de-
 termination that this case was not “exceptional” under
 § 285 deferentially. See University of Utah v. Max-Planck-
 Gesellschaft zur Foerderung der Wissenschaften e.V., 

 (Fed. Cir. 2017). Although we see no re-
 versible error in that determination, we vacate it because
 a threshold requirement for fees under § 285 is no longer
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 INLINE PLASTICS CORP. v. LACERTA GROUP, LLC               21



 met now that we are vacating aspects of the district court’s
 judgment and ordering a new trial on invalidity (and dam-
 ages, as noted). Lacerta is no longer the (almost fully) pre-
 vailing party it was when the Rule 54(b) judgment was
 entered. We will vacate the exceptional-case determina-
 tion, permitting a redetermination of that matter to be
 made once the remand litigation reaches an appropriately
 final stage. See DH Technology, Inc. v. Synergystex Inter-
 national, Inc., 

 (Fed. Cir. 1998) (“Be-
 cause the case has not yet been resolved and the prevailing
 party has not yet been determined, we necessarily vacate
 the district court’s decision regarding exceptional case sta-
 tus.”).
                              V
      We have considered Inline and Lacerta’s additional ar-
 guments and find them unpersuasive. We affirm the dis-
 trict court’s denial of Inline’s motion for judgment as a
 matter of law of validity, vacate the district court’s judg-
 ment of invalidity and remand for a new trial on invalidity
 (and damages, as noted), affirm the district court’s judg-
 ment to the extent it found noninfringement of various
 claims by Lacerta, vacate the without-prejudice dismissal
 of Inline’s late-withdrawn claims, and vacate the district
 court’s denial of Lacerta’s motion for attorney fees under
 § 285.
     The parties shall bear their own costs.
    AFFIRMED IN PART, VACATED IN PART, AND
                  REMANDED