United States Court of Appeals for the Federal Circuit 

2008-1375 

LINE ROTHMAN and GLAMOURMOM LLC, 

Plaintiffs-Appellants, 

v. 

TARGET CORP., 

KOHL’S DEPARTMENT STORES, INC., J.C. PENNEY COMPANY, INC., 

REDCATS USA, L.P. (doing business as Lane Bryant Catalog), 

ELIZABETH LANGE LLC (doing business as Liz Lange Maternity), 

and LEADING LADY, 

Defendants-Appellees, 

and 

MOTHERSWEAR INTERNATIONAL, 

 Defendant-Appellee, 

and 

FEDERATED DEPARTMENT STORES, MACY’S DEPARTMENT STORES, INC., 

K-MART CORP., and SEARS HOLDING CORPORATION, 

Defendants. 

 John F. Sweeney, Morgan & Finnegan, LLP, of New York, New York, argued for 

plaintiffs-appellants. 

 R. Terrance Rader, Rader, Fishman & Grauer PLLC, of Bloomfield Hills, Michigan, 

argued for all defendants-appellees. With him on the brief were Charles W. Bradley, 

Kristin L. Murphy, and James F. Kamp. 

Robert J. Schoenberg, Riker, Danzig, Scherer, Hyland & Perretti LLP, of 

Morristown, New Jersey, for defendant-appellee Motherwear International, Inc. 

Appealed from: United States District Court for the District of New Jersey 

Chief Judge Garrett E. Brown, Jr. 
United States Court of Appeals for the Federal Circuit 

 

2008-1375 

LINE ROTHMAN and GLAMOURMOM LLC, 

Plaintiffs-Appellants, 

v. 

TARGET CORP., 

KOHL’S DEPARTMENT STORES, INC., J.C. PENNEY COMPANY, INC., 

REDCATS USA, L.P. (doing business as Lane Bryant Catalog), 

ELIZABETH LANGE LLC (doing business as Liz Lange Maternity), 

and LEADING LADY, 

Defendants-Appellees, 

and 

MOTHERSWEAR INTERNATIONAL, 

Defendant-Appellee, 

and 

FEDERATED DEPARTMENT STORES, MACY’S DEPARTMENT STORES, INC., 

K-MART CORP., and SEARS HOLDING CORPORATION, 

Defendants. 

Appeal from the United States District Court for the District of New Jersey in case no. 

05-CV-4829, Chief Judge Garrett E. Brown, Jr. 

 

______________________________ 

DECIDED: February 13, 2009 

______________________________ 

Before RADER, FRIEDMAN, and BRYSON, Circuit Judges. 

RADER, Circuit Judge. 
By jury verdict, the United States District Court for the District of New Jersey 

found claims 1, 5, and 12 of U.S. Patent No. 6,855,029 (“the ‘029 patent”) invalid. In 

addition, the jury declined to find infringement by appellee Motherwear International 

(“Motherwear”). The jury also found the ‘029 patent unenforceable due to inequitable 

conduct. The district court sustained the jury’s verdict on all counts, denying Ms. 

Rothman’s and Glamourmom LLC’s (“Glamourmom’s”) motions for judgment as a 

matter of law (“JMOL”) and awarded costs to Appellees. Rothman v. Target Corp., Civ. 

No. 05-4829, slip op. at *1-2 (D.N.J. May 6, 2008) (“Final Judgment Order”). Because 

the district court erred in upholding the jury’s inequitable conduct finding, this court 

affirms-in-part and reverses-in-part. 

I 

The ‘029 patent claims a nursing garment “with invisible breast support for 

nursing mothers.” ‘029 patent col.1 ll.52-55 (filed June 30, 2003). The specification 

teaches a garment with a smooth appearance and no outer cups that conceals a fullysupportive nursing bra. Id. at col.1 ll.61-62, col.2 ll.5-6. The preferred embodiment of 

Ms. Rothman’s invention, depicted in Figures 2, 3, and 4, below, is a tank top or 

undershirt with a built-in nursing bra. 

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The critical components of the visible, external portion of the nursing garment are 

the “external nursing flaps” 3. These external nursing flaps extend upwards from the 

front section of the “stretch body wrap” 10A and “are attached to the internal nursing 

flaps 8A and to the shoulder straps 5 to give a smooth single garment appearance.” Id.

at col.3 ll.10-14. 

The concealed nursing bra derives its structure from “the elastic chest band 15, 

the soft cup frame 2, the internal nursing flaps 8A, and the back piece of fabric 8B.” Id.

at col.3 ll.21-24. The only external aspects of the nursing bra are the shoulder straps 5, 

and, in some embodiments, the fasteners 1 and 4. Id. at col.3 ll.8-10, 28-29. 

As shown in Figure 2, the wearer separates fasteners 1 and 4 and folds down the 

internal and external nursing flaps 8A and 3 to access the breast for nursing. Id. at col.3 

ll.39-44. After nursing, the wearer simply reattaches the flaps. Id.

Claim 1 is representative of the three independent claims at issue in this 

appeal: 

1. A nursing garment comprising: 

a shoulder strap having a front end and a back end; 

an elastic chest band having a front section and a back section; 

a soft cup frame having a base and a top, said soft cup frame attached at 

said base thereof to said front section of said elastic chest band and 

attached at the top thereof to said front end of said shoulder strap; 

a back piece having a base edge thereof attached to said back section of 

said elastic band and a top edge thereof attached to said back end of said 

shoulder strap; 

an internal nursing flap having a base and a top, said base thereof 

attached to said base of said soft cup frame; 

2008-1375 3
a first fastener attached to said top of said internal nursing flap, and a 

second fastener attached to the front end of said shoulder strap, said first 

fastener adapted to fasten said top of said internal nursing flap to said 

second fastener; and, 

an elastic stretch fabric body having a top front edge attached to said top 

of said internal nursing flap and a rear top edge attached to said back end 

of said shoulder strap. 

Id. at col.3 ll.45-67. 

A fledgling inventor, Ms. Rothman developed her garment to fill a perceived gap 

in market offerings. After the birth of her first child in March 2000, Ms. Rothman sought 

out a nursing garment that would conceal her stomach while providing easy nursing 

access and full breast support. Unable to locate anything more elaborate than “just 

basically nursing bras,” Ms. Rothman undertook the task of designing her own garment. 

Ms. Rothman’s inventive process lasted “a couple of days [to] a couple of 

weeks.” Then, one day, with her design in mind and her husband watching their child, 

she set to work in the family kitchen and stitched together her prototype. As starting 

materials, Ms. Rothman used an off-the-shelf Jockey tank top with a built-in shelf bra 

and an off-the-shelf Olga nursing bra. She combined these products, additional fabric, 

fasteners, and other sewing materials to arrive at her prototype. Applying the language 

of the ‘029 patent claims to her prototype, Ms. Rothman acknowledges that the Jockey 

tank top contributed the “back piece,” “internal nursing flap,” and “elastic stretch fabric 

body” set forth in claim 1. Ms. Rothman relied on the Olga nursing bra to serve as the 

“soft cup frame.” 

On July 12, 2000, several weeks after completing her invention, Ms. Rothman 

mailed herself a letter describing her invention. The letter explains that the “Topless 

2008-1375 4
Topnotch Nursing Top” “has a built in bra that opens up with a snap to release the cup 

for nursing.” The letter then describes the purpose and function of the garment: 

The name Topless is because you need to wear only one top whereas 

before with the same cover you needed to wear a nursing bra and a top 

over it that could stretch under the breast to open the bra. So it makes the 

woman feel free and topless. 

Eager to secure protection for her garment, Ms. Rothman contacted patent 

attorney Allan Jacobson to file a patent application. Mr. Jacobson filed a provisional 

patent application for Ms. Rothman’s garment on October 6, 2000, and a PCT 

application on October 3, 2001. During this time, Ms. Rothman and her husband, 

Michael Rothman, formed Glamourmom to produce, market, and sell her design. The 

‘029 patent issued on February 15, 2005. 

On October 7, 2005, Glamourmom filed this lawsuit alleging infringement of the 

‘029 patent by Appellees’ products. Appellees denied these infringement allegations 

and countered that claims 1, 5, and 12 -- the independent claims of the ‘029 patent -- 

were invalid due to anticipation and obviousness. Appellees also alleged prior 

inventorship by Leading Lady employee Haidee Johnstone and inequitable conduct 

during prosecution of the ‘029 patent. 

On January 22, 2007, the district court held a Markman hearing to construe the 

claims of the ‘029 patent. The district court entered its Markman Order on March 5, 

2007. A ten-day jury trial ensued with closing statements made on November 2, 2007. 

The jury returned its verdict on November 5, 2007. In that verdict, the jury concluded 

that each of Appellees’ accused products—with the exception of those made by 

Motherwear—infringed the ‘029 patent. The jury also found the ‘029 patent invalid. In 

particular, the jury determined that U.S. Patent No. 4,648,404 to Clark, U.S. Patent No. 

2008-1375 5
6,282,719 to Vera, and Leading Lady garment styles 460 and 438 anticipated the ‘029 

patent. The jury further found the ‘029 patent obvious in light of the prior art. Appellees 

also prevailed on their inventorship and inequitable conduct defenses. 

After trial, Glamourmom renewed its motions for JMOL that the ‘029 patent is not 

anticipated or obvious, and that it is indeed infringed by the Motherwear products. 

Glamourmom also renewed its motions for JMOL that Ms. Johnstone did not make the 

invention of the ‘029 patent before Ms. Rothman, and that no inequitable conduct 

occurred during prosecution of the ‘029 patent. The district court denied each of these 

motions and awarded costs to Appellees. Glamourmom now appeals the denial of each 

of its five motions for JMOL. This court has jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(1). 

II 

This court reviews the District of New Jersey’s denial of a motion for JMOL by 

applying the standard enunciated by the United States Court of Appeals for the Third 

Circuit. Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1341 (Fed. Cir. 2008). 

Under Third Circuit law, this court exercises “plenary review over a district court’s 

rulings on motions for JMOL, applying the same standard as the district court.” Id. 

Accordingly, this court may only grant a motion for JMOL where the non-moving party 

has benefited from a full hearing on the issue during a jury trial, and where a reasonable 

jury would not have a legally sufficient evidentiary basis to find for the non-moving party 

on that issue. See Fed. R. Civ. P. 50(a). This court “may not weigh the evidence, 

determine the credibility of witnesses, or substitute [its] version of the facts for the jury’s 

version.” Agrizap, 520 F.3d at 1342. 

2008-1375 6
In this case, Glamourmom’s unsuccessful challenge to the obviousness verdict 

renders superfluous its additional validity and infringement arguments. Accordingly, this 

court limits its discussion to that primary validity issue. 

In considering the district court’s denial of Glamourmom’s motion for JMOL of 

nonobviousness, “‘[t]his court reviews [the] jury’s conclusions on obviousness, a 

question of law, without deference, and the underlying findings of fact, whether explicit 

or implicit within the verdict, for substantial evidence.’” Dippin’ Dots, Inc. v. Mosey, 476 

F.3d 1337, 1343 (Fed. Cir. 2007) (quoting LNP Eng’g Plastics, Inc. v. Miller Waste Mills, 

Inc., 275 F.3d 1347, 1353 (Fed. Cir. 2001)). “Those factual underpinnings include the 

scope and content of the prior art, differences between the prior art and the claims at 

issue, and the level of ordinary skill in the art.” Id. at 1343. In undertaking this review, 

the factual inferences and credibility determinations predicate to the jury’s obviousness 

determination are drawn in favor of the verdict winner. See C.R. Bard, Inc. v. M3 Sys., 

Inc., 157 F.3d 1340, 1351-52 (Fed. Cir. 1998). The essential question is “whether the 

jury’s verdict is sustainable on the evidence presented, not whether [this court] could 

have or would have gone the other way on the evidence presented.” PharmaStem 

Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1375 (Fed. Cir. 2007). 

A 

Despite this court’s deferential role in reviewing factual findings made by a jury, 

Glamourmom offers a highlight reel of testimonial sound bites from Appellees’ 

witnesses in an effort to make the jury’s verdict seem unreasonable. The centerpiece of 

Glamourmom’s substantial evidence argument is an excerpt from the testimony of 

Appellees’ technical expert, Walter Burzynski. During cross-examination, Mr. Burzynski 

2008-1375 7
stated that Ms. Rothman’s invention was “not imaginable” to him at the time of 

invention. Glamourmom contends that this “admission” pulled the rug out from under 

Appellees’ obviousness argument because it is tantamount to a concession that a 

garment like Ms. Rothman’s was not conceivable, much less obvious, to one of skill in 

the art at the time of invention. Review of this court’s law and examination of Mr. 

Burzynski’s testimony undercuts that proffered conclusion. 

The only “admission” Mr. Burzynski made in his testimony was that he personally 

did not think of the idea embodied in the ‘029 patent before Ms. Rothman. Taken in 

context, Mr. Burzynski’s testimony reveals merely that he did not conceive of a nursing 

tank top in the timeframe of Ms. Rothman’s invention, not that the invention would have 

been unimaginable to a person of ordinary skill in the field: 

Q: Okay. Mr. Burzynski, did you ever suggest a crossover garment 

which was a sexy tank top sportswear garment with an inner nursing 

feature? 

A: No. 

Q: Okay. That idea didn’t occur to you, correct? 

A: No, it didn’t. 

Q: Okay. And you didn’t appreciate any consumer need for such a 

product? 

A: No, not really. 

Q: In fact, that type of crossover product was not imaginable to you in 

your work, correct? 

A: Correct. 

A reasonable jury could, as this jury apparently did, fairly dismiss this testimony as little 

more than a concession that Mr. Burzynski did not beat Ms. Rothman to the inventive 

2008-1375 8
punch, rather than an admission that the invention would not have been obvious to an 

ordinary artisan. Indeed, had the jury reached the conclusion Glamourmom advocates, 

that conclusion would constitute reversible error. 

In Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1364 (Fed. 

Cir. 2001), this court overturned a district court’s dismissal of an obviousness defense in 

a preliminary injunction hearing precisely because it relied on an identical extrapolation. 

The district court in Amazon.com relied on an “admission” by Barnesandnoble.com’s 

expert, Dr. Lockwood that he personally had not thought of the claimed invention as 

grounds for finding that Barnesandnoble.com’s validity challenge “lacked sufficient merit 

to avoid awarding extraordinary preliminary injunctive relief to Amazon.” Id. at 1347. As 

the district court put it: 

The Court finds particularly telling Dr. Lockwood’s admission that it never 

occurred to him to modify his Web Basket program to enable single-action 

ordering, despite his testimony that such a modification would be easy to 

implement. This admission serves to negate Dr. Lockwood’s conclusory 

statements that prior art references teach to one of ordinary skill in the art 

the invention of the ‘411 patent. 

Amazon.com, Inc. v. Barnesandnoble.com, Inc., 73 F. Supp. 2d 1228, 1235-36 (W.D. 

Wash. 1999). 

This court reversed, finding that the district court erred as a matter of law, and 

noting the proper standard for evaluating obviousness: 

Whatever Dr. Lockwood did or did not personally realize at the time based 

on his actual knowledge is irrelevant. The relevant inquiry is what a 

hypothetical ordinarily skilled artisan would have gleaned from the cited 

references at the time that the patent application leading to the ′411 patent 

was filed. 

Amazon.com, 239 F.3d at 1364. This reasoning applies with equal force in the instant 

case. Mr. Burzynski’s testimony regarding his own inventive feats has little relevance to 

2008-1375 9
whether Ms. Rothman’s invention would have been obvious to a hypothetical person of 

ordinary skill in the field with attributed knowledge of the relevant prior art. 

Glamourmom also refers to the testimony of Joseph Kirsch and Mark Corrado 

about nursing tank top designs in an attempt to negate the jury’s obviousness verdict. 

Like the excerpt from the Burzynski testimony, these references are insufficient to 

negate the jury’s verdict. Neither Mr. Kirsch, a Vice President at Dan Howard, nor Mr. 

Corrado, President of Leading Lady, testified as an expert witness or an ordinarily 

skilled nursing garment designer. Rather, they each testified to their personal 

reactions—in their role as industry executives—to an accused infringing article made by 

Ms. Johnstone. In particular, in the 2000 timeframe, Mr. Kirsch dismissed Ms. 

Johnstone’s garment as “strange-looking” and “unusual,” while Mr. Corrado regarded it 

as “an innovative new design.” 

Glamourmom has not and does not now assert that Messieurs Kirsch and 

Corrado qualify as industry experts, or even as ordinary nursing garment artisans. 

Nevertheless, Glamourmom argues that as nursing and maternity industry “veterans,” 

Mr. Kirsch and Mr. Corrado could offer important testimony to show nonobviousness. 

While their testimony may have some bearing on the state of the prior art and various 

objective criteria for nonobviousness, Mr. Kirsch and Mr. Corrado do not offer anything 

that motivates this court to substantially question the jury’s verdict. Even if Messieurs 

Kirsch and Corrado were qualified as nursing garment industry experts, their testimony, 

amounting to personal opinions about the design of an accused infringing garment, falls 

into the same category as the testimony in Amazon.com. Id. Moreover, assuming 

Messieurs Kirsch and Corrado were in fact ordinarily skilled nursing garment designers, 

2008-1375 10
the jury would have been free to credit (or discredit) their testimony, and weigh it 

accordingly. In this case, however, the unelaborated statements of Messieurs Kirsch 

and Corrado about the novelty and oddity of an accused infringing product’s design do 

not deprive the jury of substantial evidence on which to base its verdict. 

B 

In addition to offering these snippets of testimony, Glamourmom also contends 

that Appellees did not supply the jury with substantial evidence to support the 

conclusion that one of ordinary skill in the nursing garment industry would have been 

motivated to combine a tank top and nursing bra at the time of Ms. Rothman’s invention. 

To the contrary, this invention falls into a very predictable field. In the predictable 

arts, a trial record may more readily show a motivation to combine known elements to 

yield a predictable result, thus rendering a claimed invention obvious. KSR Int’l Co. v. 

Teleflex Inc., 127 S. Ct. 1727, 1731, 1740-41 (2007) (listing “the effects of demands 

known to the design community or present in the marketplace” and “the background 

knowledge possessed by a person having ordinary skill in the art” as variables central to 

any obviousness analysis). 

Nursing garment design is a predictable art. As Ms. Rothman acknowledged in 

her testimony, “[a] shoulder strap is a shoulder strap.” Thus, it is hardly surprising that 

Ms. Rothman, in just one “day into the night” of sewing, combined an off-the-shelf 

Jockey tank top with a built-in shelf bra and an off-the-shelf Olga nursing bra to arrive at 

the claimed invention. Indeed, Ms. Rothman’s testimony confirms that the materials she 

combined performed as expected, with the Jockey tank top contributing the “back 

piece,” “internal nursing flap,” and “elastic stretch fabric body” set forth in her claims, 

2008-1375 11
and the Olga nursing bra serving as the “soft cup frame.” Of course, the “manner in 

which the invention was made” does not “negative[],” or negate, the invention’s 

patentability. 35 U.S.C. § 103(a). In this case, however, the inventive process shows 

the predictability and expectations in this field of art. 

Viewing the claimed invention in its prior art setting, this court observes that Mr. 

Burzynski offered evidence suggesting that the prior art would motivate one of ordinary 

skill in the nursing garment industry to combine a tank top with a nursing bra to obtain a 

nursing tank top. As he explained, “[a]ny one with any training in the field could have 

picked up two garments manufactured in any store, and put them together.” Mr. 

Burzynski further testified that “all the elements that form the claims at issue here are in 

the prior art,” and that in combination “all the elements still continued to operate just as 

they had previously.” Indeed, he proceeded element-by-element through the features of 

the claimed invention, concluding that each element functioned in an ordinary and 

expected way in the ‘029 patent. Mr. Burzynski went on to show that Ms. Rothman’s 

garment was obvious “[b]ecause it was common practice to use this kind of construction 

or combination [in 2000]. In the industry overall, not just by me.” This testimony, 

combined with Mr. Burzynski’s analysis of prior art garments (presented in connection 

with Appellees’ anticipation arguments), provides ample support for the jury’s 

conclusion that the ‘029 patent would have been obvious at the time of invention. 

Moreover, the record is replete with evidence that one of ordinary skill would 

have been motivated and able to combine an existing tank top with an existing nursing 

bra to arrive at the claimed invention. For example, Ms. Johnstone, offered by 

Appellees as a person of ordinary skill, testified that she arrived at the design for the 

2008-1375 12
Leading Lady 460 garment—which the jury found to anticipate the ‘029 patent—by 

combining her preexisting tank top and shelf bra design with her preexisting nursing bra 

design. [A5044-45] (“[A]nd then I made my nursing bra tank, Style Number 460, from 

the combination of these two bras [Ms. Johnstone’s D338 and 438 designs] and my 

original idea of combining it with a tank.”). Describing the simplicity of her purportedly 

infringing invention, Ms. Johnstone stated, 

The first time I designed, I have never changed it, and it has remained 

unchanged since the initial concept. It’s just too easy. It was a tank with a 

shelf bra and a sling. I had the sling—I had the shelf bra. I just put a tank 

on it. That was it. There was no reason for it to be any different. 

Ms. Johnstone also explained the motivation for one of ordinary skill in the 

nursing garment industry to combine a tank top with a nursing bra. She explained that 

by the summer of 1997, tank tops with built in shelf bras were ubiquitous in the women’s 

clothing industry. She added that, during the late 1990s, pregnant and nursing mothers 

had transitioned from relatively sedentary lifestyles and a preference for loose-fitting 

clothing to a more active and visible existence. “[T]he transition was that they [pregnant 

women] were now exercising, exercising when they were nursing, and they were less 

likely to not want to show off that they were exercising.” Thus, the market demanded 

apparel like the claimed invention. Finally, Ms. Johnstone explained that part of her job, 

as an ordinary nursing garment artisan “is to look at trends and try to have available to 

my customers the same things that are on the market or as close as possible with the 

adaptations I have to make for nursing.” This evidence of a motivation to combine a 

tank top with a nursing bra, together with expert testimony that each of the elements of 

the claimed invention was known in the prior art and functioned as expected in the 

2008-1375 13
claimed invention, supplies substantial evidence to sustain the jury’s obviousness 

verdict. See KSR, 127 S. Ct. at 1731, 1740-41. 

Glamourmom attempts to overcome this evidentiary cornucopia by cherry-picking 

individual prior art references and arguing that their combination into a viable nursing 

tank top would require “numerous creative leaps.” This strategy does not rebut the 

jury’s findings. For example, Glamourmom contends that the “closest possible 

combination of elements” to the ‘029 patent would use the body of U.S. Patent No. 

4,648,404 to Clark (“Clark patent”) and the shoulder straps of U.S. Patent No. 6,282,719 

to Vera (“Vera patent”). But according to Glamourmom, even that combination would 

not render the ‘029 patent obvious, because the Clark patent claims a “nursing slip,” 

rather than an “outerwear nursing garment.” 

Clark patent, Fig. 1 Vera patent, Fig. 2 

The first and most obvious difficulty with Glamourmom’s position is that the ‘029 

patent does not claim an “outerwear nursing garment,” but simply refers to a “nursing 

garment” in the preamble of the independent claims. Even hypothetically granting some 

merit to Glamourmom’s analysis of a Clark-patent-Vera-patent combination, one 

particular improbable combination of prior art references does not show that the entire 

2008-1375 14
body of prior art does not render the ‘029 patent obvious. Appellees proffered 

numerous prior art references during trial—four of which the jury credited as sufficient to 

anticipate the ‘029 patent. The jury fairly could have relied on any combination of these 

references in reaching its obviousness verdict. Moreover, the jury rightfully could have 

relied on testimony from Mr. Burzynski and Ms. Johnstone that an ordinarily skilled 

nursing garment designer would have been able and motivated to combine an existing 

nursing bra with an existing tank top to arrive at the claimed invention. See KSR, 127 

S. Ct. at 1741 (“[T]he analysis need not seek out precise teachings directed to the 

specific subject matter of the challenged claim, for a court can take account of the 

inferences and creative steps that a person of ordinary skill in the art would employ.”). 

Equally unavailing is Glamourmom’s contention that the Clark patent teaches 

away from the claimed invention because it teaches a separable nursing bra and slip. 

Despite Glamourmom’s conjecture, the verdict gives no indication that the jury 

predicated its obviousness ruling on the teachings in Clark. Furthermore, Appellees 

presented sufficient evidence to permit the jury to conclude that an ordinarily skilled 

nursing garment designer would have recognized the possibility and desirability of 

modifying the Clark design into a unified garment. 

C 

In a final attempt to avoid invalidation of the ‘029 patent, Glamourmom turns to 

secondary indicia of nonobviousness as support for its motion for JMOL. In particular, 

Glamourmom proffers industry willingness to license Ms. Rothman’s invention, 

commercial success, customer and industry praise for the claimed invention, and 

copying by Appellees as objective evidence of nonobviousness. This court, of course, 

2008-1375 15
“has repeatedly explained, [that secondary consideration evidence] is not just a 

cumulative or confirmatory part of the obviousness calculus but constitutes independent 

evidence of nonobviousness.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. 520 F.3d 

1358, 1365 (Fed. Cir. 2008). Nonetheless, this factual component of the obviousness 

calculus is uniquely within the province of the jury. 

Indeed, Glamourmom does not explicitly accuse the jury of disregarding its 

evidence of secondary considerations. Rather, Glamourmom suggests that “[t]he jury’s 

and district judge’s findings of obviousness are [] highly contrary to the record evidence 

and lack any reasonable support.” To the contrary, this court must presume that the 

jury adequately weighed this factual evidence and found it insufficient to support a 

finding of validity. 

Indeed, a strong prima facie obviousness showing may stand even in the face of 

considerable evidence of secondary considerations. See Leapfrog Enters., Inc. v. 

Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“The district court explicitly 

stated in its [bench trial] opinion that Leapfrog had provided substantial evidence of 

commercial success, praise, and long-felt need, but that, given the strength of the prima 

facie obviousness showing, the evidence on secondary considerations was inadequate 

to overcome a final conclusion that claim 25 would have been obvious. We have no 

basis to disagree with the district court’s conclusion.”); Motorola, Inc. v. Interdigital Tech. 

Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997) (“In reaching an obviousness 

determination, a trial court may conclude that a patent claim is obvious, even in the light 

of strong objective evidence tending to show non-obviousness.”). 

2008-1375 16
In this case, the district court unambiguously communicated the importance of 

secondary considerations to the jury. The lower court commanded that the jury “must 

consider” objective indicia of nonobviousness, such as commercial success, long felt 

need, copying, industry praise, and licensing activity in its instructions. The district court 

further cautioned that “[i]t is inappropriate to disregard any evidence relating to the issue 

of obviousness. While some parts of the evidence may weigh more heavily than others, 

your decision of obviousness should be held in abeyance until all of the evidence has 

been introduced.” Because the district court duly instructed the jury to consider and 

weigh evidence of secondary considerations, this court sees no reason to disturb the 

jury’s determination that this important factual evidence did not outweigh its assessment 

of obviousness in light of the prior art. See Motorola, 121 F.3d at 1472 (“However, the 

district court properly instructed the jury on these matters. Apparently, the jury rejected 

ITC’s arguments and evidence on the secondary indications of non-obviousness. In 

reaching an obviousness determination, a trial court may conclude that a patent claim is 

obvious, even in the light of strong objective evidence tending to show nonobviousness. The district court did not err by its refusal to second-guess the jury on this 

conclusion.” (citations omitted)). 

III 

Although this court’s affirmance of the district court’s rejection of Glamourmom’s 

challenge to the jury’s obviousness verdict vitiates the need to address Glamourmom’s 

remaining validity and infringement arguments, Glamourmom’s appeal from the jury’s 

inequitable conduct verdict remains viable. 

2008-1375 17
Inequitable conduct is an equitable defense to patent infringement most 

appropriately reserved for the court. See Baxter Healthcare Corp. v. Spectramed, Inc., 

49 F.3d 1575, 1584 (Fed. Cir. 1995) (noting that “inequitable conduct is a matter for the 

trial judge, and not the jury”). Nevertheless, district courts occasionally delegate 

aspects of the inequitable conduct inquiry to juries. See Herbert v. Lisle Corp., 99 F.3d 

1109, 1114 (Fed. Cir. 1996). In this case, the parties agreed to submit the pertinent 

factual inquiries as well as the ultimate question of inequitable conduct to the jury. 

Although not the preferred course, “[a]bsent a clear showing of prejudice, or failure to 

achieve a fair trial, the district court’s choice of procedure will not be disturbed.” Id. 

To prevail on an inequitable conduct charge, a defendant must present “evidence 

that the applicant (1) made an affirmative misrepresentation of material fact, failed to 

disclose material information, or submitted false material information, and (2) intended 

to deceive the [PTO].” Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. 

Cir. 2007). Both of these factual elements require proof by clear and convincing 

evidence. Id. 

The materiality of a prior art product turns on whether “a reasonable examiner 

would consider it important in deciding whether to allow the application to issue as a 

patent.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1297 (Fed. Cir. 

2008) (quotation omitted). In 1992, 37 C.F.R. § 1.56 was revised to more clearly 

articulate the materiality standard. Revised Rule 56 provides: 

[I]nformation is material to patentability when it is not cumulative of 

information already of record or being made of record in the application, 

and (1) it establishes, by itself or in combination with other information, a 

prima facie case of unpatentability of a claim; or (2) [i]t refutes, or is 

inconsistent with, a position the applicant takes in: (i) [o]pposing an 

2008-1375 18
argument of unpatentability relied on by the Office, or (ii) [a]sserting an 

argument of patentability. 

37 C.F.R. § 1.56(b) (2008). 

Intent to deceive, like intent evidence generally, often relies on evidence from 

surrounding circumstances, but that showing must at all times reach a threshold of 

“clear and convincing.” Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1329 (Fed. Cir. 

1998). Indeed this particular intent showing requires intent to deceive, not a mere 

showing that “that information was not disclosed; [rather] there must be a factual basis 

for a finding of deceptive intent.” Herbert, 99 F.3d at 1116. “[T]he involved conduct, 

viewed in light of all the evidence, including evidence indicative of good faith, must 

indicate sufficient culpability to require a finding of intent to deceive.” Kingsdown Med. 

Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc). Gross 

negligence, for instance, is not sufficient to show deceptive intent. Eisai Co. Ltd. v. Dr. 

Reddy’s Labs., Ltd., 533 F.3d 1353, 1359-60 (Fed. Cir. 2008). 

If a defendant succeeds in proving materiality and intent to deceive, the court (or 

in this case the jury) must weigh these findings in light of all of the circumstances and 

determine if there was inequitable conduct. See Purdue Pharma L.P. v. Boehringer 

Ingelheim GmbH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). “This requires a careful 

balancing: when the misrepresentation or withheld information is highly material, a 

lesser quantum of proof is needed to establish the requisite intent. In contrast, the less 

material the information, the greater the proof must be.” Purdue Pharma L.P. v. Endo 

Pharms. Inc., 438 F.3d 1123, 1128-29 (Fed. Cir. 2006) (citations omitted). 

Because the parties here agreed to submit the entirety of the inequitable conduct 

query to the jury, the applicable standard of review differs from the usual case. With 

2008-1375 19
respect to the factual inquiries relating to materiality and intent, this court “ascertain[s] 

whether the presumed factual findings of material withholding and deceptive intent were 

supported by substantial evidence at the trial.” Herbert, 99 F.3d at 1115. In evaluating 

the jury’s ultimate conclusion that inequitable conduct occurred, this court must 

“determine whether there was substantial evidence whereby a reasonable jury could 

have reached the verdict that was reached, on the entirety of the record and in light of 

correct instructions on the applicable law.” Id. 

A 

Appellees’ inequitable conduct allegations rely in large part on the business 

relationship between Glamourmom and Leading Lady. Glamourmom first reached out 

to Leading Lady regarding Ms. Rothman’s nursing tank top in June 2002. Her curiosity 

apparently piqued, Leading Lady Senior Vice President Robin Polack requested that her 

colleagues examine Glamourmom’s website and review Ms. Rothman’s nursing tank 

top. Glamourmom sent a sample of Ms. Rothman’s design to Leading Lady in July 

2002, and a copy of Ms. Rothman’s published PCT application in August 2002. Some 

seven months later, in March 2003, Glamourmom and Leading Lady entered into 

licensing negotiations. 

Before negotiating with Glamourmom, Leading Lady cut a deal with appellee 

Target to supply nursing tank tops. Although Glamourmom did not participate in the 

Target negotiations, documentary evidence suggests that the Target deal related to Ms. 

Rothman’s design. For example, on April 23, 2003, Leading Lady sent Glamourmom a 

sample of the Target approved nursing tank. Just five days later, on April 28, Leading 

Lady lawyer Stanley Dub sent Glamourmom an email discussing the prospect of selling 

2008-1375 20
the nursing tank top at Target under the Glamourmom name, and the conditions of a 

minimum annual royalty agreement between Glamourmom and Leading Lady. With 

respect to a minimum royalty, Mr. Dub noted that Leading Lady felt “pretty assured of 

strong initial business with Target, but [it has] no guarantees beyond the first order,” 

suggesting that the Target agreement did in fact relate to the Glamourmom design. 

Nevertheless, Appellees argued at trial, as they argue now on appeal, that the Target 

agreement was for sales of a Leading Lady original design—Leading Lady style 460. 

Leading Lady did not disclose this competing nursing tank top design to Glamourmom 

at any time before or during their licensing negotiations. 

Negotiations between Glamourmom and Leading Lady broke down in July 2003, 

when Leading Lady began to question the viability of Glamourmom’s patent application. 

On July 14, 2003, Glamourmom attorney Mr. Jacobson sent Leading Lady a copy of the 

PCT examiner’s preliminary rejection of Ms. Rothman’s application. The very next day, 

Leading Lady forwarded an undated and undocumented sample garment identified 

simply as “JC Penney sport nursing bra” (Leading Lady style 438) to Mr. Jacobson. Mr. 

Jacobson examined the garment (though he never placed it on a mannequin), and 

determined that it in fact was a sports bra, rather than a torso-covering garment like Ms. 

Rothman’s design. 

On July 28, 2003, Mr. Dub sent Mr. Jacobson a letter formally cutting off 

licensing negotiations between Leading Lady and Glamourmom. In that letter, Mr. Dub 

also informed Mr. Jacobson that Leading Lady intended to go to market with its own 

nursing tank top design. Mr. Dub explained the chronology of Leading Lady’s product 

development as follows: “Sometime around the beginning of 2003, Leading Lady 

2008-1375 21
became aware of the [Glamourmom] ‘tank top with nursing bra’ product . . . Leading 

Lady subsequently produced its own prototype of a different tank top with nursing bra 

product” (Leading Lady style 460), which had since been ordered by its customers. 

Mr. Dub also asserted in that letter that Leading Lady had previously presented 

Glamourmom with prior art, Leading Lady style 438, and that Leading Lady style 460 

currently on offer was “essentially the same product,” “with only slight modifications.” 

Mr. Dub concluded his letter by stating that Leading Lady did not believe Glamourmom 

was entitled to a patent, but that it would still consider an “option license” to the pending 

patent, albeit at terms much less favorable to Glamourmom than previously discussed. 

On July 30, 2003, Mr. Jacobson sent the Leading Lady style 438 sports bra back 

to Mr. Corrado. In the accompanying note, Mr. Jacobson referred to the garment as a 

“prior sports bra product,” and disputed its relevance to Ms. Rothman’s patent 

application. Mr. Jacobson wrote, “As you are aware, there are two sides to every story. 

If you would like to discuss the relationship of this prior product to the new tank top 

product, and hear the reasoning behind the arguments for patentability, I remain 

available for consultation.” 

Mr. Dub again wrote to Mr. Jacobson on August 4, 2003. In that letter, he 

purported to correct a “misstatement” in the July 28 letter. In particular, Mr. Dub 

asserted that Target initiated discussions with Leading Lady in August 2002, and that 

those discussions concerned Leading Lady’s own design, conceived of by Leading 

Lady’s Director of Design without any prior knowledge of the Glamourmom product. 

Mr. Jacobson responded to this letter three days later, on August 7, 2003. In his 

response, Mr. Jacobson identified numerous perceived inaccuracies in Leading Lady’s 

2008-1375 22
version of events. For example, Mr. Jacobson asserted that Leading Lady received a 

sample of Glamourmom’s nursing tank on July 3, 2002, and that Mr. Rothman spoke 

with Ms. Polack, who expressed interest in the product on July 30, 2002, leading to the 

conclusion that Leading Lady knew of Glamourmom’s design even before the amended 

August 2002 meeting date with Target. In Mr. Jacobson’s view, this chronology 

suggests that “[i]t is likely that the product sample shown to Target in August 2002 was 

the Glamourmom Nursing Bra Tank sample that was delivered to Robin Polack at 

Leading Lady July 3, 2002.” 

Mr. Jacobson also explained in his letter that the “Leading Lady prior art product 

[style 438] is a standard nursing bra, adapted for sporting activities. It has no tank top 

body. The tank top product Leading Lady is proposing to sell to Target [style 460] is so 

substantially different from the prior art sports bra, the argument appears to be 

advanced in bad faith.” Also on August 7, Mr. Jacobson filed a “Petition to Make 

Special” with the PTO to expedite review of Ms. Rothman’s patent application. Mr. 

Jacobson included the letters from Leading Lady with the petition. However, Mr. 

Jacobson did not report Leading Lady styles 438 or 460 to the PTO as prior art or 

conduct any further investigation into the legitimacy of those garments. 

On December 3, Mr. Dub informed Mr. Jacobson that Leading Lady filed a 

provisional patent application on style 460. That application cited the ‘029 patent as 

prior art—even though style 460 purportedly came into being years before Ms. 

Rothman’s invention. Leading Lady filed its non-provisional application on September 

24, 2004. However, Leading Lady expressly abandoned that application on January 19, 

2007, during the pendency of this case—despite receiving a notice of allowance. 

2008-1375 23
Leading Lady contends that it abandoned its application because it recognized that the 

patent would have been invalid under the public sales provision of § 102. 

At trial Appellees argued that Glamourmom’s failure to submit Leading Lady 

styles 438 and 460 to the PTO constituted inequitable conduct. Appellees also alleged 

that Mr. Jacobson engaged in inequitable conduct when he made unsubstantiated 

statements about how one of ordinary skill in the nursing bra field would interpret certain 

prior art references. 

Because the jury returned a general verdict that simply found that Glamourmom 

committed inequitable conduct, this court must assume that the jury found in Appellees’ 

favor on each count. See Newell COs. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. 

Cir. 1988) (“Judges must accept the factual findings, presumed from a favorable jury 

verdict, which are supported under the substantial evidence/reasonable juror 

standard.”). To prevail, Glamourmom must demonstrate that substantial evidence does 

not support any of Appellees’ inequitable conduct allegations. 

B 

Appellees’ first inequitable conduct charge, that Glamourmom improperly 

withheld Leading Lady style 438 from the PTO, fails because no substantial evidence 

shows that style 438 was material to Ms. Rothman’s application. 

A piece of prior art is not material to patent prosecution when it is cumulative of 

information already before the examiner. 37 C.F.R. § 1.56(b) (2008) (“[I]nformation is 

material to patentability when it is not cumulative of information already of record or 

being made of record in the application”); Star Scientific, Inc. v. R.J. Reynolds Tobacco 

Co., 537 F.3d 1357, 1367 (Fed. Cir. 2008) (“It is well-established, however, that 

2008-1375 24
information is not material if it is cumulative of other information already disclosed to the 

PTO.”). An applicant has no duty to disclose a reference to the PTO if it is cumulative of 

or less material than references already before the examiner. Halliburton Co. v. 

Schlumberger Tech. Corp., 925 F.2d 1435, 1443 (Fed. Cir. 1991) (“[T]he cited 

references were more pertinent to the Halliburton applications than were the withheld 

references. Halliburton had no obligation to disclose cumulative references.”). 

The file history for the ‘029 patent is replete with nursing bra disclosures, 

including numerous nursing bras similar to style 438. For example, Mr. Jacobson cited 

U.S. Patent No. 4,633,876 to Scullin for a “Nursing Bra” and U.S. Patent No. 4,911,677 

to White also for a “Nursing Bra” in an Information Disclosure Statement (IDS) received 

by the PTO on May 9, 2003. These nursing garments are similar in both style and 

coverage to Leading Lady style 438. Moreover, Appellees’ expert, Mr. Burzynski, 

admitted that style 438 uses “cut fabric,” or “a conventional outer fabric on [the] 

brassiere cup,” as seen in the prior art, rather than the torso-covering fabric body of the 

claimed invention. As even cursory consideration of the record makes plain, Mr. 

Jacobson disclosed a variety of prior art garments employing such “a conventional outer 

fabric.” For example, U.S. Patent No. 5,024,628 to Sanchez and U.S. Patent No. 

5,094,647 to Courtney disclose the “conventional” cut fabric design common in the prior 

art without any additional fabric body to cover the wearer’s torso. 

Critically, Mr. Burzynski admitted that at least some of the prior art references 

cited by Mr. Jacobson during prosecution of the ‘029 patent were “just as relevant” as 

style 438: 

Q: Do you know whether or not any of the references that the 

examiner considered in allowing all the brassieres patents that the 

2008-1375 25
examiner considered in allowing the ‘029 patent including the two-ply 

brassiere patents are just as relevant or more relevant than the JC 

Penney bra to this invention? 

A: Yes, they’re just as relevant. 

 Indeed, at least two of these references were substantially more probative of 

patentability than style 438. The Clark and Vera patents, which Mr. Jacobson disclosed 

to the PTO by May 9, 2003 and July 28, 2003, respectively, incorporate the nursing bra 

features of style 438 and the disclosed prior art with a torso-covering garment as 

described in the ‘029 patent. These references read on the preferred embodiment of 

the claimed invention, rather than on the bra component of the invention alone, and are 

more material than style 438. 

Thus, in light of the uncontested similarities between Leading Lady style 438 and 

the numerous garments Mr. Jacobson disclosed to the PTO, as well as Mr. Burzynski’s 

testimony that those references were “just as relevant” to the patentability of the claimed 

invention as style 438, no reasonable jury could have found style 438 material. 

Therefore, no reasonable jury could have relied on that garment to support a finding of 

inequitable conduct. 

C 

Appellees also advance Glamourmom’s failure to disclose Leading Lady style 

460 to the PTO as an alternative basis for the jury’s inequitable conduct verdict. 

Although style 460 is a nursing tank top similar to Ms. Rothman’s invention, no 

substantial evidence shows that Glamourmom withheld that garment from the PTO with 

deceptive intent. 

2008-1375 26
No reasonable jury could have found that Mr. Jacobson intended to deceive the 

PTO as to style 460 in light of Leading Lady’s sharp business practices and Mr. 

Jacobson’s submission of letters discussing style 460 to the PTO. Receipt of 

threatening letters containing vague descriptions of unsubstantiated prior art at the tail 

end of a souring business relationship does not create an automatic duty of disclosure. 

See Herbert, 99 F.3d at 1115-16. Otherwise, every potential patent licensee (and 

prospective infringer) could subject a patent applicant to the possibility of inequitable 

conduct sanctions on a whim. Leading Lady’s conduct in this case illustrates the point. 

Leading Lady had Glamourmom’s sample product in its possession for a year 

before it ever informed Glamourmom of the existence of style 460. Indeed, even though 

style 460 is purportedly prior art to the ‘029 patent, Leading Lady nevertheless engaged 

Glamourmom in licensing negotiations for the rights to the ‘029 patent before it issued. 

Then, seemingly overnight, Leading Lady morphed from interested suitor offering 

favorable royalty terms and expressing assurance of “strong initial business” with a 

major retailer to a patent-eviscerating prior art holder. This course of conduct suggests, 

as Mr. Jacobson concluded, that Leading Lady acted in bad faith. 

Based on Leading Lady’s acknowledged conduct, no reasonable jury could 

attribute deceptive intent to Mr. Jacobson’s decision not to disclose style 460 to the 

PTO. Indeed, as a threshold matter, there was nothing to disclose. Had Leading Lady 

supplied Glamourmom with more information than the simple declaration that Leading 

Lady had its own prior nursing tank top, Glamourmom might be charged with a duty to 

investigate further. However, in this case, Leading Lady simply informed 

Glamourmom—belatedly—of its proprietary design without sending a sample, 

2008-1375 27
photograph, drawing, or description. Glamourmom cannot be charged with “culpable 

intent in withholding information that [it] did not have.” Herbert, 99 F.3d at 1116 (internal 

quotation omitted). The heightened duty to “look for and produce all relevant prior art” 

associated with a Petition to Make Special, Gen. Electro Music Corp. v. Samick Music 

Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994), does not demand that the applicant 

somehow obtain proprietary information about unsubstantiated potential prior art that he 

believes in good faith is immaterial. Mr. Jacobson’s letter to Mr. Corrado inviting further 

discussion regarding Leading Lady style 460 fully satisfied Glamourmom’s investigatory 

and reporting duties. 

Moreover, even crediting Leading Lady’s revised chronology of its inventive 

endeavors on style 460, Mr. Jacobson had a good faith belief that style 460 was not 

material prior art. For starters, the provisional patent application for style 460 that 

Leading Lady sent to Mr. Jacobson lists the ‘029 patent as prior art and includes figures 

from Ms. Rothman’s patent with the label “prior art.” Even Leading Lady’s amended 

inventive timeline buttresses the conclusion that style 460 came after Ms. Rothman’s 

invention. Leading Lady only asserted in its letters that it had its own nursing tank top 

by August 2002. It did not offer a date of invention or allege that style 460 came into 

being before Ms. Rothman’s design. Thus, Mr. Jacobson not only had a good faith 

basis for believing that style 460 was not prior art, but he had little basis on which to 

conclude that it was. See Herbert, 99 F.3d at 1116. 

Mr. Jacobson’s submission of Leading Lady’s letters discussing styles 438 and 

460 also belies the existence of any deceptive intent. Although he did not call the 

examiner’s attention to these garments as prior art, he nevertheless disclosed them to 

2008-1375 28
the PTO as part of his Petition to Make Special. Had Mr. Jacobson intended to conceal 

the existence of styles 438 and 460 from the PTO, he never would have included 

Leading Lady’s letters in his petition filings. 

Thus, the record contains no substantial evidence that Glamourmom intended to 

deceive the PTO in withholding Leading Lady style 460. Thus, no reasonable jury could 

base an inequitable conduct finding as to conduct regarding style 460 on this record. 

D 

The final grounds on which Appellees argue that the jury could have based its 

inequitable conduct verdict are purported misrepresentations of material fact contained 

in statements Mr. Jacobson made to the examiner during prosecution of the ‘029 patent. 

Because Mr. Jacobson’s statements were legitimate attorney argument this court 

rejects that contention. 

In response to an obviousness rejection by the examiner, Mr. Jacobson offered 

the following argument: 

Nursing garments are highly specialized garments that are designed 

produced and sold by a small segment of the clothing industry. Nursing 

garments, as distinguished from maternity garments, are not analogous 

prior art to women’s garments in general. A nursing bra has a detachable 

nursing flap, structural feature not found in a regular bra. Therefore, it is 

improper to combine a prior art reference from nursing garments with a 

prior art reference from garments generally, with no connection to nursing 

garments. 

Appellees challenge the propriety of these statements because Mr. Jacobson did not 

have any prior experience with nursing garments when he made them and because he 

did not consult anyone knowledgeable in the field before submitting them to the 

examiner. 

2008-1375 29
The boundaries on a patent attorney’s conduct are not so narrow, however. 

While the law prohibits genuine misrepresentations of material fact, a prosecuting 

attorney is free to present argument in favor of patentability without fear of committing 

inequitable conduct. See Young v. Lumenis, Inc., 492 F.3d 1336, 1348 (Fed. Cir. 2007) 

(“We therefore fail to see how the statements . . . which consist of attorney argument 

and an interpretation of what the prior art discloses, constitute affirmative 

misrepresentations of material fact.”). This court has little basis to find deceptive intent 

in the routine back and forth between examiner and applicant. Moreover, this court 

recognizes that the Patent Act gives the examiner the discretion to reject or accept an 

applicant’s arguments based on the examiner’s own conclusions regarding the 

prosecution record. See id. 

In this case, Mr. Jacobson’s remarks show an effort to persuade that does not 

even approach an effort to deceive the PTO or abuse the prosecution process. The first 

half of his commentary builds toward the point that nursing garments differ from regular 

women’s wear and maternity garments because nursing bras have “a detachable 

nursing flap, a structural feature not found in a regular bra.” This conclusion is plainly 

accurate and in no way misstates any material facts. 

Appellees find fault with the final sentence from the excerpt above. However, Mr. 

Jacobson’s conclusion that it is “improper to combine a prior art reference from nursing 

garments with a prior art reference from garments generally, with no connection to 

nursing garments” is nothing more than attorney argument based on the foregoing facts. 

Mr. Jacobson’s conclusion derives from his analysis that nursing garments are different 

from regular women’s wear. The examiner was free to analyze that conclusion based 

2008-1375 30
2008-1375 31

on the prior art and the nature of this predictable field. In any event, this type of 

conclusory analysis betrays no intent to deceive the PTO and obtain a patent with 

objectively false information. Rather, it is an attempt to characterize the prior art in a 

manner favorable to the attorney’s client—far from deception. No reasonable jury could 

rely on Mr. Jacobson’s statements as clear and convincing proof of inequitable conduct. 

Because Appellees did not present substantial evidence supporting the 

materiality of Leading Lady style 438, substantial evidence that Glamourmom intended 

to deceive the PTO by withholding style 438 or style 460, or substantial evidence that 

Glamourmom affirmatively misrepresented material facts during prosecution of the ‘029 

patent, this court reverses the jury verdict of inequitable conduct. 

Because the district court based its award of costs to Defendants on the finding 

of inequitable conduct, see Rothman v. Target Corp., Civ. No. 05-4829, 2008 WL 

4559698, at *3 (D.N.J. Oct. 8, 2008), this court vacates that award. Thus each party 

bears its own trial expenses.

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED, and REMANDED. 

COSTS 

Each party shall bear its own costs.