Outside the Box Innovations, LLC v. Travel Caddy, Inc.

To render a patent unenforceable due to inequitable conduct, both the materiality of a nondisclosure or misrepresentation and intent to deceive the USPTO must be proven.

Opinion (Per Curiam): Travel Caddy, Inc. appealed the judgment for Outside the Box Innovations, LLC, doing business as Union Rich USA (“Union Rich”) over patent infringement claims regarding their respective tool carrying bag products. The most notable issue on appeal was the lower court’s holding that Travel Caddy’s ‘992 and ‘104 patents on tool bags were unenforceable due to Travel Caddy’s inequitable conduct toward the USPTO. However, the court did not find any suggestion of how Travel Caddy’s withholding of the ‘992 patent litigation represented material information that would have prevented PTO from allowing the ‘104 claim. The lower court also erred in inferring Travel Caddy’s intent to deceive. The court found that the case law required the accuser to prove specific intent to deceive through evidence of knowledge and deliberate action, and that no such evidence existed in the record. The judgment of inequitable conduct was REVERSED, therefore the ruling of the ‘992 and ‘104 patents as invalid was VACATED, and the issues of obviousness of the ‘992 and ‘104 patents were REMANDED for determination. The court AFFIRMED infringement by Electricians Bag 1, but REMANDED that issue for the determination of a remedy.