A Massachusetts federal judge determined Thursday that five Inline Plastics Corp. food packaging patents asserted against Lacerta Group Inc. are unenforceable due to inequitable conduct because Inline omitted information about joint inventors when applying for the patents.

Following a bench trial held last year, U.S. District Judge Margaret R. Guzman issued an opinion finding Inline's patent applications failed to name two people from another company who "made significant contributions" to the inventions. She held that the most reasonable inference is that Inline did that with the intent to deceive the U.S. Patent and Trademark Office.

"Balancing the substance of the proven elements and all the equities of the case, the court concludes that Inline's conduct before the PTO warrants rendering the patents-in-suit unenforceable due to inequitable conduct," the judge wrote. She added that "the taint of this finding spreads to render unenforceable all related patents in the same technology family."

Judge Guzman said her decision was based in part on what she called "evasive and non-credible testimony" given at the trial by Thomas Orkisz, the owner, president and CEO of Inline.

The judge noted a finding of inequitable conduct — that someone associated with the filing of a patent application misrepresented or withheld material information with an intent to deceive the patent office — is known as the "'atomic bomb' of patent law" because it renders entire patents unenforceable.

The ruling came in a long-running case that began in 2018, when Inline, the maker of a line of tamper-resistant plastic food containers called Safe-T-Fresh, filed a lawsuit alleging Lacerta's competing Fresh N' Sealed containers infringe five of its patents.

The court agreed with Lacerta's assertion that the patents are unenforceable due to Inline's inequitable conduct related to its work with a company called 4Sight Inc. on new packaging concepts.

A key feature of the patents is a "tear strip" that serves as evidence that the container has been tampered with. Judge Guzman found the evidence showed that two 4Sight employees were the ones who devised that feature but Inline did not mention them as inventors when it filed patent applications.

According to the ruling, 4Sight laid out the details of the feature in design drawings that were dated before the inventors who were named on the patent applications began work on the project, and that Inline ceased contact with 4Sight immediately before filing the patent applications.

The judge also said Orkisz "attempted to minimize 4Sight's role" during the bench trial and gave vague and inconsistent answers, even though she found that there was evidence of 4Sight's important contributions to the patents.

Judge Guzman concluded that Inline aimed to deceive the USPTO by deliberately omitting the true inventors and submitting false declarations stating that other people devised the inventions.

"The conduct here was not a minor misstep or an act of minimal culpability. Rather, it amounts to a deliberate scheme to exclude joint inventors after obtaining valuable design concepts from them," according to the opinion.

The judge concluded that "the severity of the conduct, combined with Mr. Orkisz's evasive and noncredible testimony designed to obscure the truth ... warrants rendering the patents unenforceable."

Lacerta had also argued the patents are unenforceable because Inline misrepresented the teachings of an earlier German patent to the U.S. patent office.

However, Judge Guzman determined that while she had "concerns" about how Inline characterized that patent, she was not persuaded that those statements were material to why the USPTO granted the patents, finding no inequitable conduct on that ground.

The case has gone before juries twice, including a November 2024 retrial that was held concurrently with the inequitable conduct bench trial.

Prior to the first trial, a different judge granted summary judgment to Inline that Lacerta infringed several claims of one Inline patent. A jury then found in 2022 that the remaining patent claims were not infringed, and that all the asserted claims are invalid, including those that the judge found to be infringed.

The Federal Circuit partly vacated that decision last year. It found that the invalidity verdict was based on an erroneous jury instruction, but left intact the noninfringement verdict.

On remand, the case was reassigned to Judge Guzman, who oversaw a retrial on the validity of the claims in one patent that the prior judge found to be infringed.

That trial ended with a November 2024 verdict that Lacerta had shown that some of those claims are invalid, but failed to show that others are invalid. Thursday's inequitable conduct ruling means none of the five patents can be enforced.

Counsel for the parties could not immediately be reached for comment.

The patents at issue are U.S. Patent Nos. 7,118,003; 7,073,680; 8,795,580; 9,527,640 and 9,630,756.

Inline is represented by Erik Paul Belt, Wyley S. Proctor, Leah R. McCoy, Alexander T. Hornat, David J. Silvia and James M. Bollinger of McCarter & English LLP.

Lacerta is represented by Craig M. Scott and Laurel M. Rogowski of Hinckley Allen & Snyder LLP.

The case is Inline Plastics Corp. v. Lacerta Group Inc., case number 4:18-cv-11631, in the U.S. District Court for the District of Massachusetts.