United States Court of Appeals 

for the Federal Circuit ______________________ 

LITE-NETICS, LLC,

Plaintiff-Appellant

v.

NU TSAI CAPITAL LLC, DBA HOLIDAY BRIGHT 

LIGHTS,

Defendant-Appellee

______________________ 

2023-1146

______________________ 

Appeal from the United States District Court for the 

District of Nebraska in No. 8:22-cv-00314-BCB-CRZ, Judge 

Brian C. Buescher.

______________________ 

Decided: February 17, 2023

______________________ 

VINCENT J. ALLEN, Carstens, Allen, & Gourley, LLP, 

Plano, TX, argued for plaintiff-appellant. Also represented 

by JORGE MIGUEL HERNANDEZ. 

 ROBERT GREENSPOON, Dunlap Bennett & Ludwig 

PLLC, Chicago, IL, argued for defendant-appellee. Also 

represented by WILLIAM W. FLACHSBART; THUAN TRAN,

Leesburg, VA. 

 ______________________ 

Before LOURIE, TARANTO, and STARK, Circuit Judges.

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2 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

TARANTO, Circuit Judge. 

Lite-Netics, LLC competes with Nu Tsai Capital, LLC 

d/b/a Holiday Bright Lights (HBL) in the market for holiday string lights. Lite-Netics brought a patent-infringement action against HBL in the United States District 

Court for the District of Nebraska. It also sent two notices, 

one before filing suit and one after, to its customers (in particular, stores that sell the lights), some of which were also 

HBL customers, informing them of allegedly infringing 

competitors in the market and stating Lite-Netics’s intent 

to enforce its patent rights. Lite-Netics did not name such 

competitors in the first notice, but in the second notice, it

identified HBL as an allegedly infringing competitor. After 

the second notice was sent, HBL, in the infringement action, simultaneously filed counterclaims, including for 

state-law torts, and moved for a temporary restraining order and a preliminary injunction, based on two of the statelaw counterclaims, against certain speech by Lite-Netics 

about its patents. The district court issued a preliminary 

injunction that bars Lite-Netics from suggesting that HBL 

is a patent infringer, that HBL has copied Lite-Netics’s 

lights, or that HBL customers might be sued. Lite-Netics, 

LLC v. Nu Tsai Capital LLC, 2022 WL 15523245 (D. Neb. 

Oct. 27, 2022). 

Lite-Netics appeals the district court’s preliminary injunction against its patent-related speech. We hold that 

the district court abused its discretion in issuing the preliminary injunction because the applicable speech-protective legal standards are not met. We vacate the 

preliminary injunction and remand.

I 

A 

Lite-Netics sells string lights for illuminating homes 

and businesses during the winter holiday season—specifically, string lights held by magnets to a surface such as 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 3

metal at a roof edge. Lite-Netics is the assignee of U.S. 

Patent Nos. 7,549,779 and 8,128,264, both of which are entitled “Magnetic Light Fixture” and describe and claim 

magnetic decorative lights. Lite-Netics, 2022 WL 

15523245, at *1. The ’779 patent issued in 2009, and the 

’264 patent issued in 2012 from a continuation in part of 

the application that became the ’779 patent.

The patents describe light-fixture assemblies (to be 

strung together), each assembly having a magnetic base of 

the light socket for easy mounting of the assembly to a 

metal surface. ’779 patent, col. 1, lines 5–9; ’264 patent, 

col. 1, lines 14–18. Figures 1 and 9A (the same in both patents) depict an embodiment of the claimed assembly, 

showing one disk magnet: 

’779 patent, Fig. 1; id., Fig. 9A (light socket base magnet 

labelled “1”); ’264 patent, Fig. 1; id., Fig. 9A. 

Independent claim 1 of the ’779 patent is representative for that patent. It recites:

1. A light fixture assembly, comprising:

(a) a light bulb socket with an opening at the 

first end for accommodating a light bulb and 

at least one opening at the second end, 

wherein the socket includes a conductor that 

places a light bulb inserted into the first end 

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4 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

in electrical contact with electrical wires inserted through the socket;

(b) a base attached to the second end of the light 

bulb socket; and

(c) a neodymium magnet embedded in the base 

wherein said magnet had a pull strength of 

at least five pounds.

’779 patent, col. 4, lines 51–63. Independent claim 1 of the 

’264 patent is representative for that patent. It recites:

1. A light fixture assembly, comprising:

(a) a light bulb socket with an opening at a first 

end for accommodating a light bulb and a 

second opening for insertion of electrical 

wires, wherein the socket includes two conductors that places a light bulb inserted into 

the first end in electrical contact with said 

electrical wires;

(b) a base integrally attached to the second end 

of the light bulb socket; and

(c) a magnet embedded in the base such that 

said magnet does not protrude outside of 

said base, wherein said magnet has sufficient pull force to hold said light fixture assembly to a ferrous object while said light 

fixture assembly is connected to a string of 

other light fixture assemblies.

’264 patent, col. 5, lines 19–32 (lettered indexing added). 

HBL, which for a time was a customer of Lite-Netics, 

also sells holiday string lights. See Lite-Netics, 2022 WL 

15523245, at *2. HBL sells a magnetic holiday string light

that it calls the “Magnetic Cord,” one of the two products 

on which Lite-Netics’s infringement allegations focus. It is 

undisputed for present purposes that the Magnetic Cord is 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 5

described (and claimed) in HBL’s U.S. Patent No. 

11,333,309, issued in 2022 based on a 2021 application. 

HBL’s Magnetic Cord uses two half-disk magnets, rather 

than the single, full-disk magnet shown in Lite-Netics’s figures, at the socket base. In distinguishing its claimed invention from prior art, including Lite-Netics’s ’779 patent, 

HBL’s ’309 patent relies on its inclusion of drain holes in 

its socket base and of at least two magnets protruding below the socket base, with a channel between them to help 

drain moisture—features that assertedly reduce the risk of 

corrosion and short circuiting. ’309 patent, col. 1, lines 33–

45, 53–60; see also id. col. 1, lines 16–17; id. col. 4, lines 1–

4. Figure 4 of the ’309 patent illustrates its socket base, 

one half-disk magnet shown as “20,” the other half-disk 

magnet removed: 

HBL sells a second product at issue here, the “Magnetic 

Clip” (introduced a few years before the Magnetic Cord),

which, when mounted on the socket, converts a non-magnetic light string to a magnetic one. 

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6 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

J.A. 5 (images of mounted and unmounted Magnetic Clips); 

J.A. 525 (black-and-white image of a mounted Magnetic 

Clip included in a cease-and-desist letter sent from LiteNetics to HBL). 

B 

On June 14, 2017, Lite-Netics, through counsel, sent 

HBL a cease-and-desist letter that referred to “U.S. Utility 

Patent No[s]. 7,549,779 and 8,128,264.” J.A. 525–26. The 

letter included a picture of the Magnetic Clip and requested that HBL stop “selling these products or any other 

products that infringe” Lite-Netics’s patents. J.A. 525–26. 

No further communication between the two companies occurred for almost five years. 

On April 12, 2022, Lite-Netics sent HBL another ceaseand-desist letter. This letter, referring to “U.S. Utility Patent Nos. 7,549,779 and 8,128,264,” included a picture of 

the Magnetic Cord and “demand[ed]” that HBL respond, 

either explaining why it was not infringing Lite-Netics’s 

patents through the sale of the Magnetic Cord and Magnetic Clip or indicating that HBL will stop selling these and 

any other allegedly infringing products. J.A. 528–29. HBL 

responded to Lite-Netics on April 19, 2022, asking LiteNetics to explain how HBL infringed its patents when the

Magnetic Cord has no single magnet with a pull strength 

of at least five pounds or that does not protrude outside the 

socket base. J.A. 531. On May 27, 2022, Lite-Netics replied 

to HBL with evidence that it said showed (a) that the combined pull strength of the pair of (half-disk) magnets in the 

Magnetic Cord exceeds five pounds and (b) that the Magnetic Cord’s magnets did not protrude from the perimeter 

of the base. J.A. 536–37. HBL wrote back on June 21, 

2022, reasserting its one-versus-two position and insisting 

that the non-protrusion requirement of the ’264 patent precludes not just protrusion from the perimeter of the base 

but also protrusion below the base. J.A. 539. 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 7

Communications between Lite-Netics and HBL ceased after this response. 

On August 31, 2022, Lite-Netics sued HBL in the District of Nebraska for infringement of the ’779 and ’264 patents by HBL’s making, selling, and other actions involving 

the Magnetic Cord and the Magnetic Clip. Lite-Netics asserted direct infringement, induced infringement, and contributory infringement under 35 U.S.C. § 271(a), (b), and 

(c). And it alleged that the infringement was willful.

Both before and after filing suit against HBL, LiteNetics communicated with its customers, some of which 

were also HBL customers, about allegedly infringing competitors in the market. Before filing suit, in May 2022, 

Lite-Netics notified its customers “of recent attempts by 

other companies to make and sell similar products” to those 

“protected by U.S. [P]atent Nos. 7,549,779 and 8,128,264” 

and of its intent to explore “all legal rights and remedies to 

stop” these companies (May Notice). J.A. 533; Lite-Netics, 

2022 WL 15523245, at *5. Lite-Netics did not accuse any 

particular competitor of infringement in the May Notice. 

J.A. 533; Lite-Netics, 2022 WL 15523245, at *5. In September 2022, however, after filing suit, Lite-Netics sent another letter to its customers (September Notice). J.A. 542–

43; Lite-Netics, 2022 WL 15523245, at *6. The September 

Notice stated that Lite-Netics’s magnetic string lights were 

protected by the ’779 and ’264 patents; that other companies were attempting to “copy” Lite-Netics’s patented products; that Lite-Netics had filed a “patent infringement 

lawsuit against [HBL]” to stop it from “making and selling 

infringing products”; and that Lite-Netics was “also considering including any known company using or reselling the 

HBL products as co-defendants in this lawsuit.” J.A. 542; 

Lite-Netics, 2022 WL 15523245, at *11. The September Notice included the first page of Lite-Netics’s complaint from 

its patent-infringement suit against HBL. J.A. 542; LiteNetics, 2022 WL 15523245, at *12. 

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8 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

On September 30, 2022, after Lite-Netics sent the September Notice, HBL filed a motion to dismiss Lite-Netics’s 

action for failure to state a claim and also asserted six counterclaims against Lite-Netics: (1) unfair competition and 

false advertising under federal law; (2) unfair competition 

under Nebraska law; (3) deceptive trade practices under

Nebraska law; (4) tortious interference with business relations and prospective business relations under Nebraska 

law; (5) defamation under Nebraska law; and (6) bad faith 

patent-infringement communications under Colorado law. 

Lite-Netics, 2022 WL 15523245, at *3. The same day, HBL 

filed a combined motion for a temporary restraining order 

and preliminary injunction, based on its tortious-interference and defamation claims, to bar Lite-Netics from making statements accusing HBL of copying Lite-Netics’s 

patented products and from suggesting to HBL customers 

that they may be subject to an infringement suit too. On

October 7, 2022, the district court granted HBL’s motion 

for a fourteen-day temporary restraining order, which the 

court extended for an additional fourteen days on October 

12, 2022.

On October 16, 2022, Lite-Netics filed an amended 

complaint. The amended complaint made explicit that its 

assertions of direct infringement (of both patents) were allegations of “literal infringement, the doctrine of equivalents, or both.” J.A. 688, 690. 

On October 27, 2022, after an evidentiary hearing 

three days earlier, the court issued an extensive opinion 

granting a preliminary injunction. Lite-Netics, 2022 WL 

15523245. As amended on November 8, 2022, the order 

enjoins Lite-Netics and “its officers, directors, shareholders, and other agents”

from making statements via letters, emails, Facebook, Twitter, or any other social media, mass media, direct marketing, robocalls, press releases, 

blogs, websites or otherwise suggesting “copying” 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 9

by HBL, suggesting HBL customers will be burdened as additional defendants in this or any lawsuit, or suggesting that HBL is a patent infringer. 

J.A. 73; see Lite-Netics, 2022 WL 15523245, at *36.1 In its 

opinion, the district court addressed (1) the likelihood of 

HBL’s success on the merits of its tortious-interference and 

defamation claims; (2) the likelihood of irreparable injury 

to HBL without the injunction; (3) the balance of equities; 

and (4) the public interest. Id. at *9 (citing Tumey v. Mycroft AI, Inc., 27 F.4th 657, 664 (8th Cir. 2022)). In considering the first factor, the court recognized that state-law

tort claims based on the communication of patent rights, 

such as HBL’s tortious-interference and defamation 

claims, “are preempted by federal patent laws, unless the 

claimant can show that the patent holder acted in bad 

faith.” Id. at *11 (internal quotation marks omitted) (quoting Energy Heating, LLC v. Heat On-The-Fly, LLC, 889 

F.3d 1291, 1304 (Fed. Cir. 2018)). The district court concluded that HBL’s state-law tort claims were not 

preempted here, centrally because it held that Lite-Netics’s 

infringement allegations were so clearly meritless that 

their assertion was in bad faith. Id. at *15, *21, *24, *25, 

*28. On that basis, the court ruled that HBL would likely 

succeed on its tortious-interference and defamation claims 

and that the preliminary injunction should issue, because 

the non-merits preliminary-injunction considerations favored issuance. Id. at *10–34. 

Lite-Netics timely appealed. We have jurisdiction under 28 U.S.C. § 1292(c)(1). On November 14, 2022, Lite1 Initially, the preliminary injunction also required 

Lite-Netics to send the preliminary injunction order to everyone that had received the September Notice, but the district court deleted that requirement on November 8, 2022, 

and explained two days later that its inclusion was a clerical error. J.A. 76–77. 

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10 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

Netics sought an emergency stay or dissolution of the preliminary injunction, a request we denied on November 30, 

2022. 

II

Regional circuit law—here, Eighth Circuit law—governs our standard of review of the district court’s grant of 

the preliminary injunction. Macom Technology Solutions 

Holdings, Inc. v. Infineon Technologies, 881 F.3d 1323, 

1328 (Fed. Cir. 2018). Under Eighth Circuit law, a grant

of a preliminary injunction is reviewed for “an abuse of discretion or misplaced reliance on an erroneous legal principle.” Pediatric Specialty Care, Inc. v. Arkansas Department 

of Human Services, 444 F.3d 991, 994 (8th Cir. 2004) (citation omitted); see Highmark Inc. v. Allcare Health Management System, Inc., 572 U.S. 559, 563 n.2 (2014) (stating 

that an abuse of discretion may be found where, e.g., a 

court relies on an erroneous view of the law or commits a 

factual error). When reviewing the grant of an injunction

that enjoins a patentee from giving notice of patent rights, 

“[w]e apply federal patent law and precedent relating to the 

giving of notice of patent rights.” Mikohn Gaming Corp. v. 

Acres Gaming, Inc., 165 F.3d 891, 898 (Fed. Cir. 1998). 

HBL asserts that, with respect to the merits component of a preliminary-injunction analysis, its burden under

Eighth Circuit law is only to show a “fair chance” of prevailing. HBL Br. 14 (quoting Rodgers v. Bryant, 942 F.3d 

451, 455 (8th Cir. 2019)); see also Planned Parenthood Minnesota, North Dakota, South Dakota v. Rounds, 530 F.3d 

724, 732-33 (8th Cir. 2008). But when the requested injunction restricts speech, at least in the context of enjoining 

implementation of state and federal statutes, the Eighth 

Circuit has characterized the movant’s burden as more 

challenging, stating it as “likely to prevail on the merits.” 

See Rodgers, 942 F.3d at 455; Planned Parenthood Minnesota, 530 F.3d at 732 n.6. And in any event, even under the 

“fair chance” standard, it is Federal Circuit law that 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 11

determines what is required to meet that standard as to a 

patent-related claim, including, here, that HBL has 

demonstrated a “fair chance” of prevailing on its contention 

that Lite-Netics’s patent-infringement claims are objectively baseless. As we explain, HBL has not made such a 

showing.

A 

The district court granted the preliminary injunction

restricting Lite-Netics’s speech about its patent rights, basing the injunction on HBL’s tortious-interference and defamation claims, both of which stemmed from the September 

Notice that Lite-Netics sent to customers describing its patents, its related rights, and its intent to enforce them. 

Lite-Netics, 2022 WL 15523245, at *10, *27. The question 

of whether Lite-Netics may be so enjoined, like the question of whether it may be liable under state law for the September Notice, “raises considerations of federal law 

governing the giving of notice of patent rights.” Mikohn 

Gaming, 165 F.3d at 896. “National uniformity, in confluence with the national scope of the patent grant and the 

general federal exclusivity in patent causes, require that 

determination of the propriety of . . . giving notice of . . . 

patent rights is governed by federal statute and precedent 

and is not a matter of state tort law.” Id.

“We have held that federal patent law preempts statelaw tort liability for a patentholder’s good faith conduct in 

communications asserting infringement of its patent and 

warning about potential litigation.” Globetrotter Software, 

Inc. v. Elan Computer Group, Inc., 362 F.3d 1367, 1374 

(Fed. Cir. 2004); see also Mallinckrodt, Inc. v. Medipart, 

Inc., 976 F.2d 700, 709 (Fed. Cir. 1992), abrogated on other 

grounds by Impression Products, Inc. v. Lexmark International, Inc., 581 U.S. 360 (2017). HBL’s state-law claims 

here thus “can survive federal preemption only to the extent that those claims are based on a showing of ‘bad faith’ 

action in asserting infringement.” Globetrotter, 362 F.3d at 

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12 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

1374; see also Energy Heating, 889 F.3d at 1304 (“State tort 

claims based on enforcing a patent, including for tortious 

interference, are preempted by federal patent laws, unless 

the claimant can show that the patent holder acted in bad 

faith.”); Mikohn Gaming, 165 F.3d at 898 (“[F]ederal law 

requires a showing of bad faith in order to bar such communications.”); GP Industries, Inc. v. Eran Industries, Inc., 

500 F.3d 1369, 1373 (Fed. Cir. 2007); Myco Industries, Inc. 

v. BlephEx, LLC, 955 F.3d 1, 10 (Fed. Cir. 2020); SSI Technologies, LLC v. Dongguan Zhengyang Electronic Mechanical, Ltd., --- F.4th ----, 2023 WL 1944133, at *7 (Fed. Cir. 

Feb. 13, 2023). 

This requirement of a showing of bad faith as prerequisite to applying state tort law to speech about infringement rests partly on First Amendment principles. See 

Globetrotter, 362 F.3d at 1375–77. The First Amendment 

principles are particularly significant when an injunction 

against speech is at issue. See GP Industries, 500 F.3d at 

1373–74 (“[W]e wish to note the rarity of an injunction being granted against communicating with others concerning 

one’s patent rights. This is not a grant or denial of an injunction against infringement, but an injunction against 

communication, a much more serious matter. . . . [A]n injunction against communication is strong medicine that 

must be used with care and only in exceptional circumstances.”); BlephEx, 955 F.3d at 3 (noting that preliminary 

injunctions implicating “free speech” and restricting a patent holder’s communication of its rights requires particular consideration of “a district court’s authority to place 

prior restraints on that speech”); Mikohn Gaming, 165 F.3d 

at 895 (“When judicial discretion is exercised to restrain 

commercial communications, it is subject to special scrutiny.”). 

Elaborating on the bad-faith requirement and its components, we have held: “Although bad faith in this context 

has both objective and subjective elements, the former is a 

threshold requirement.” Judkins v. HT Window Fashion 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 13

Corp., 529 F.3d 1334, 1338 (Fed. Cir. 2008). Thus, “a bad 

faith standard cannot be satisfied in the absence of a showing that the claims asserted were objectively baseless.” GP 

Industries, 500 F.3d at 1374; see Globetrotter, 362 F.3d at 

1377. A patent-infringement allegation is objectively baseless only if “no reasonable litigant could realistically expect 

success on the merits.” GP Industries, 500 F.3d at 1374

(internal quotation marks omitted) (quoting Professional 

Real Estate Investors, Inc. v. Columbia Pictures Industries, 

Inc., 508 U.S. 49, 60 (1993)). Subjective bad faith must be 

addressed if allegations are determined to be objectively

baseless, but not otherwise. See Judkins, 529 F.3d at 1338.

HBL suggests that, if the preliminary injunction at issue here is proper in its application to any speech, then it 

must be upheld in full. See Oral Arg. at 19:11–27; HBL’s

Br. at 14–16. HBL cites no precedent for such a rule of law, 

which would be contrary to the First Amendment principles that underlie the demanding requirements for a valid 

injunction against speech declaring the speaker’s view of 

its patent rights. Under the First Amendment, restrictions 

on protected speech, including injunctions (where allowed 

at all), must meet tailoring requirements aimed at ensuring that they do not burden speech more than necessary. 

See, e.g., Tory v. Cochran, 544 U.S. 734, 738 (2005); Douglas v. Brownell, 88 F.3d 1511, 1520 (8th Cir. 1996); Sindi 

v. El-Moslimani, 896 F.3d 1, 32–34 (1st Cir. 2018); United 

States v. Local 560 (I.B.T.), 974 F.2d 315, 342–46 (3d Cir. 

1992). Given the First Amendment principles that are part 

of the patent-preemption doctrine at issue here, we see no 

basis for a weaker tailoring requirement in the present context. We therefore reject HBL’s all-or-nothing defense of 

the preliminary injunction.

HBL has not argued that we should uphold some portions of the preliminary injunction even if we find other 

portions to be an abuse of discretion. In this case, with no 

such argument, we will not do so, but instead will vacate 

the injunction if it is based on an abuse of discretion. We 

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14 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

conclude that it is. For the reasons set forth next, we hold 

that the district court abused its discretion at least in finding that Lite-Netics’s infringement allegations with respect 

to the ’779 patent are objectively baseless—a determination at the core of the rationale for granting the preliminary injunction, with its prohibition on Lite-Netics 

communicating its view that HBL is infringing in its making and marketing of the Magnetic Cord and Magnetic 

Clip. We need not and do not address other issues.2

B 

Lite-Netics argues on appeal, among other things, that 

the district court erred in finding its infringement allegations concerning the ’779 patent, and its application to both 

accused products, to be objectively baseless. We agree. An 

incorrect allegation of patent infringement is not necessarily objectively baseless. “Indeed, a patentee, acting in 

good faith on its belief as to the nature and scope of its 

rights, is fully permitted to press those rights ‘even though 

2 For example, we do not address infringement of the 

’264 patent, with its requirement that the magnet “does not 

protrude outside of said base.” ’264 patent, col. 5, lines 28–

29. A claim-construction dispute exists over whether “protrude outside of” refers, in context, only to the base perimeter or also to the central long axis of the socket. As 

another example, we also do not rule on the issues (concerning direct or indirect infringement) raised by LiteNetics’s statement about suing HBL customers, and by the 

injunction provision addressing such speech, in light of our 

precedent about the sequencing of certain adjudications involving manufacturers and their customers. See In re Nintendo of America, Inc., 756 F.3d 1363, 1365 (Fed. Cir. 2014) 

(“When a patent owner files an infringement suit against a 

manufacturer’s customer and the manufacturer then files 

an action of noninfringement or patent invalidity, the suit 

by the manufacturer generally take precedence.”). 

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he may misconceive what those rights are.’” Mikohn Gaming, 165 F.3d at 897 (quoting Kaplan v. Helenhart Novelty 

Corp., 182 F.2d 311, 314 (2d Cir. 1950)). Because there was 

an objectively reasonable basis for many of Lite-Netics’s infringement allegations, the district court abused its discretion in finding that Lite-Netics could not have “realistically 

expect[ed] success on the merits” and, therefore, acted in 

bad faith. GP Industries, 500 F.3d at 1374 (internal quotation marks omitted) (quoting Professional Real Estate, 508 

U.S. at 60). 

Specifically, the preliminary injunction is to a large extent based on three legal conclusions with respect to LiteNetics’s assertion of the ’779 patent: (i) that the claimed 

“magnet” is limited to a single magnet with a unitary structure; (ii) that Lite-Netics is estopped from asserting infringement under the doctrine of equivalents; and (iii) that 

the claim terms “attached” and “integrally attached” must 

be “something more than touching.” For reasons we will 

set out, we conclude that Lite-Netics’s position on all three 

of those disputes has not been shown, at this stage of the 

litigation (before, e.g., full claim-construction proceedings 

or possible expert reports on infringement), to be objectively baseless. That conclusion requires vacatur of the

preliminary injunction, without finally resolving the underlying disputes about claim construction, prosecution 

history estoppel, or other issues. 

1 

For the Magnetic Cord, the district court deemed LiteNetics’s allegations of direct infringement, including both 

literal infringement and infringement under the doctrine 

of equivalents, objectively baseless. In both respects, we 

conclude, the district court abused its discretion. 

Regarding literal infringement, the court ruled that 

Lite-Netics could not reasonably have believed that the 

Magnetic Cord infringed the ’779 patent because “the Magnetic Cord has two magnets, each with a pull strength less 

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16 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

than five pounds.” Lite-Netics, 2022 WL 15523245, at *15. 

Lite-Netics argued that the ’779 patent’s references to “a 

magnet” in both its specification and its claims properly encompassed an arrangement of two magnetic pieces that together had the five-pound pull strength. Id. at *15–16. 

That argument is at least reasonable.

On the record before us, we see no basis for deeming 

objectively unreasonable an assertion that two such pieces 

would be understood by a relevant artisan as a single “magnet,” whether as a matter of claim construction or as a matter of application. See Microprocessor Enhancement Corp. 

v. Texas Instruments Inc., 520 F.3d 1367, 1377 (Fed. Cir. 

2008) (“Claim terms must be given ‘the meaning that the 

term would have to a person of ordinary skill in the art in 

question at the time of the invention.’” (quoting Phillips v. 

AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en 

banc))); cf. Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1309 (Fed. Cir. 2005) 

(discussing related issue of whether a particular claimed 

structure had to be unitary). Independently of that possibility, decisions of this court lend strong support to the

proposition that, “in patent parlance,” at least in an openended “comprising” claim, use of “a” or “an” before a noun 

naming an object is understood to mean to “one or more” 

unless the context sufficiently indicates otherwise. Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 

(Fed. Cir. 2016); see, e.g., TiVo, Inc. v. EchoStar Communications Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008); Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 

1342 (Fed. Cir. 2008); KCJ Corp. v. Kinetic Concepts, Inc., 

223 F.3d 1351, 1356 (Fed. Cir. 2000). Here, none of the 

features of the claims or specification relied on by the district court, see Lite-Netics, 2022 WL 15523245, at *15–20,

sufficiently indicate otherwise, at least for purposes of the 

inquiry into whether Lite-Netics’s position was objectively 

baseless. 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 17

The patent uses “the” or “said” when referring back to 

an antecedent “a” phrase, but that usage does not itself suffice to demand the singular meaning because if the “a” 

phrase means “one or more,” so would the subsequent reference-back phrases. Baldwin, 512 F.3d at 1342. The patent never shows embodiments with more than one 

magnet, but we have generally rejected an inference of 

claim limitation on such a basis, where the embodiments 

are merely illustrative. See, e.g., Cross Medical, 424 F.3d 

at 1309; Phillips, 415 F.3d at 1319–20. There is no “present 

invention” or other specification language that restricts the 

invention to a single (or single-piece) magnet, and there are 

no structural limitations in the claims that implicitly demand such a configuration. See SciMed Life Systems, Inc. 

v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 

1343 (Fed. Cir. 2001) (“[T]he characterization of the . . . 

configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the 

opposite structure.”). Importantly, and more generally, 

nothing in the ’779 patent indicates that the evident purpose of the magnet on the socket base (to attach the light 

string to a metal surface) can be achieved only, or with 

specified effectiveness, through a single (or single-piece) 

magnet, rather than a plurality of magnets collectively 

having the specified pull force. See Corning Glass Works v. 

Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. 

Cir. 1989) (interpreting a patent to include “additional 

structural limitations . . . defined in the specification” 

based on restrictive specification language describing the 

purpose of the claimed invention). 

In these circumstances, we conclude that the district 

court’s determination of objective baselessness of the assertion of literal infringement rests on incorrect legal principles and cannot stand.

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18 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

2 

The district court’s application of the doctrine of equivalents to the Magnetic Cord is also flawed. Under the doctrine of equivalents, it generally suffices for an element of 

an accused device to be found to meet a claim limitation “if 

it performs substantially the same function in substantially the same way to obtain the same result” as the claim 

limitation, properly construed. Warner-Jenkinson Co., Inc. 

v. Hilton Davis Chemical Co., 520 U.S. 17, 38–39 (1997) 

(cleaned up); see Dolly, Inc. v. Spalding & Evenflo Cos., 16 

F.3d 394, 400 (Fed. Cir. 1994). “To be a ‘substantial equivalent,’ the element substituted in the accused device for the 

element set forth in the claim must not be such as would

substantially change the way in which the function of the 

claimed invention is performed.” Perkin–Elmer Corp. v. 

Westinghouse Electric Corp., 822 F.2d 1528, 1533 (Fed. Cir. 

1987). But where a particular structure has been “specifically identified, criticized, and disclaimed” in the patent’s 

specification or prosecution history, “the patentee cannot 

. . . invoke the doctrine of equivalents to ‘embrace a structure that was specifically excluded from the claims.’” 

SciMed, 242 F.3d at 1345; see Dolly, 16 F.3d at 400 (“[T]he 

concept of equivalency cannot embrace a structure that is 

specifically excluded from the scope of the claims.”); Augme 

Technologies, Inc. v. Yahoo! Inc., 755 F.3d 1326, 1335 (Fed. 

Cir. 2014) (“While we have recognized that literal failure to 

meet a claim limitation does not necessarily constitute a 

‘specific exclusion,’ we have found ‘specific exclusion’ where 

the patentee seeks to encompass a structural feature that 

is the opposite of, or inconsistent with, the recited limitation.” (internal citations omitted)). 

Before the district court, Lite-Netics argued that, even 

if “a magnet” in the claims meant a single (unitary-structure) magnet, “the two semicircular magnets in the Magnetic Cord light-fixture bases are equivalent to the one 

magnet” recited in its asserted patents. Lite-Netics, 2022 

WL 15523245, at *24. The court found this argument to be 

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 19

objectively baseless, without addressing the merits of 

whether the two magnets in the Magnetic Cord “perform[ed] substantially the same overall function or work, 

in substantially the same way, to produce substantially the 

same overall result,” Dolly, 16 F.3d at 400, as (by assumption now) the claimed single magnet. See Lite-Netics, 2022 

WL 15523245, at *22. Rather, the court extended its finding that there was a clear intention to limit “a magnet” to 

one singular magnet to be a surrendering and foreclosure 

of claim scope, such that considering if two magnets were 

substantially equivalent to one magnet in this case would 

impermissibly allow for the “recapture of surrendered 

claim scope . . . contrary to the clear intent of the patent 

holder at the time of patenting.” Id. at *25. 

There is nothing unreasonable about the allegation 

that HBL’s two half-disk magnets satisfy the function-wayresult formulation for equivalence with what we now assume, for purposes of this doctrine-of-equivalents analysis, 

to be the single (single-piece) magnet claimed by the ’779 

patent. Moreover, as set out above, the specification lacks 

language—whether a statement of purpose, a raising and 

rejection of the possibility of more than one magnet, or 

other language—that would make it clear that use of two 

or more magnets together having the required pull is “the 

opposite of, or inconsistent with,” Augme, 755 F.3d at 1335,

the ’779 patent’s limitations. In particular, HBL has not 

shown a counterpart in this case of the facts in Augme, 

where the language of the claims and specification itself 

recognized a distinction between the claim limitation at issue (“embedded code”) and what was asserted as equivalent (downloaded or retrieved code through links), making 

the latter the “opposite” of the former. See id. at 1335. The 

district court’s discussion of the specification does not identify anything sufficient to make Lite-Netics’s equivalence 

assertion baseless.

HBL argues that the prosecution history of the ’779 patent estops Lite-Netics from urging that the two half-disk 

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20 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

magnets of the Magnetic Cord meet the claim limitation

under the doctrine of equivalents. HBL made this argument to the district court, but the district court did not rule 

on it. We go no further here than to say that HBL has not 

shown in this court that, during prosecution, Lite-Netics 

made amendments or statements concerning the number 

of magnets (as opposed to the pull strength required, see 

J.A. 238) that make prosecution history estoppel so clearly 

applicable that it is objectively baseless for Lite-Netics to 

assert infringement under the doctrine of equivalents.

In these circumstances, we conclude that the district 

court’s determination of objective baselessness of the assertion of infringement under the doctrine of equivalents rests 

on incorrect legal principles and cannot stand.

3 

For the Magnetic Clip, as for the Magnetic Cord, the 

district court held that Lite-Netics’s infringement allegations are objectively baseless, considering the direct infringement (by end users) needed for indirect infringement 

(by HBL) under both a literal-infringement theory and a 

doctrine-of-equivalents theory. This conclusion, like the 

district court’s conclusions regarding the Magnetic Cord, 

rests on incorrect legal principles.

The Magnetic Clip itself is not a light-fixture assembly,

but a dual-clip unit containing a (single) magnet that is designed to be put on the bottom of a light socket by clipping 

the unit to the wires coming out of the socket (which lead 

to adjacent sockets in the string), thus making the socket a 

magnetic one for adhering to an eave or other metal surface. Lite-Netics argued that when the Magnetic Clip is 

put on the bottom of the light socket, the Magnetic Clip 

forms the base within the claim requirement of a magnetcontaining base attached to the light socket, so that HBL’s 

selling of the Magnetic Clip induces and contributes to end 

users’ infringement of the ’779 patent. Lite-Netics, 2022 

WL 15523245, at *12–13. The district court rejected LiteCase: 23-1146 Document: 37 Page: 20 Filed: 02/17/2023
LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 21

Netics’s argument, ruling that the Magnetic Clip does not 

“attach” to the light fixture (so that a base with a magnet 

is not “attached” to the fixture); rather, in the district 

court’s view, it “pockets” the bottom of the socket because 

the arms of the Magnetic Clip attach to the wires on either 

side of the base. Id. at *13. 

There is no dispute that the Magnetic Clip, when 

mounted, touches the bottom of the light socket with some 

amount of pressure, as HBL’s counsel agreed at oral argument. Oral Arg. at 26:34–27:10 (Q: “How snugly [does] the 

clip fit to the base of the bulb-carrying unit?”; A: “[Mr. 

Genenbacher, in a declaration,] says correctly that the end 

of the preexisting socket presses against the bottom of the 

[clip].”); id. at 27:15–18 (Q: “But [the Magnetic Clip] 

presses against [the socket]?”; A: “Presses against.”). LiteNetics argued that, because of the “external ‘pressure,’” the 

Magnetic Clip was “attached” to the bottom of the socket. 

Lite-Netics, 2022 WL 15523245, at *13. The district court

rejected this contention because it understood “attached” to 

mean “something more than ‘touching’”—something along 

the lines of fixed or fastened. Id. (citing Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. 

Cir. 2021)).

Even if a claim-construction analysis may ultimately 

support this interpretation, Lite-Netics’s view is not objectively baseless. Decisions of this court offer support to LiteNetics’s construction of “attach” as broad enough to cover 

connecting without fastening. See Tinnus Enterprises, 

LLC v. Telebrands Corp., 846 F.3d 1190, 1197, 1204 (Fed. 

Cir. 2017) (determining that the construction of “attached,” 

under its plain and ordinary meaning, to mean “connected 

or joined to something” was reasonable); In re Cuozzo 

Speed Technologies, LLC, 793 F.3d 1268, 1279–80 (Fed. 

Cir. 2015) (determining that, under the “broadest reasonable interpretation standard,” the construction of the term 

“integrally attached” as “discrete parts physically joined together as a unit without each part losing its own separate 

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22 LITE-NETICS, LLC v. NU TSAI CAPITAL LLC

identity” was reasonable). And here the pressing-against 

connection on its face serves the evident purpose of allowing the socket to hold its position pointing out from the 

magnet when joined to a metal surface. Lite-Netics’s position on the linguistic issue is far from objectively baseless.

The district court also deemed Lite-Netics’s allegation 

of infringement regarding the Magnetic Clip to be objectively baseless because it concluded that, in the ’779 patent 

specification, Lite-Netics had disclaimed “clips” and “external ‘clips’ that attach to the electrical cord.” Lite-Netics, 

2022 WL 15523245, at *14–15. This too was error. It is, at 

the least, reasonable not to find a disclaimer in the specification that would exclude the Magnetic Clip. 

The specification of the ’779 patent (shared by the ’264 

patent) differentiates two pieces of prior art—U.S. Patent 

No. 5,388,802 (Dougan) and U.S. Patent Application Ser. 

No. 2006/0138293 (Clement)—that, according to the specification, required the installation of additional items to a 

light string. ’779 patent, col. 1, line 34 to col. 2, line 4; see

’264 patent, col. 1, line 39 to col. 2, line 2. The shared specification does not disclaim clips in the manner found by the 

district court; indeed, it recites clips in various embodiments. See, e.g., ’779 patent, col. 2, lines 15–27, 46–48, 54–

57. And both the ’779 patent and the ’264 patent expressly 

claim clips. See, e.g., ’779 patent, col. 6, lines 6–7; ’264 patent, col. 6, lines 16–17.

The district court interpreted the specification’s discussion of Dougan and Clement as a broad disclaimer of all 

“clips,” but the specification makes no such statement. The

distinguished “clips” are reasonably seen to be different 

from the Magnetic Clip, for the reasons just noted. Accordingly, Lite-Netics’s contention that it did not disclaim the 

Magnetic Clip is reasonable. In this circumstance, we conclude that the district court’s determination of objective 

baselessness of the assertion of infringement rests on incorrect legal principles and cannot stand.

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LITE-NETICS, LLC v. NU TSAI CAPITAL LLC 23

III

For the foregoing reasons, we vacate the district court’s 

order granting a preliminary injunction and remand the 

case for further proceedings consistent with this opinion. 

The parties shall bear their own costs.

VACATED AND REMANDED

Case: 23-1146 Document: 37 Page: 23 Filed: 02/17/2023