Case Study

Problem: Travel Caddy pursued a patent infringement lawsuit involving two patents directed to tool bags manufactured from a unique combination of rigid panels, fabric panels, and a continuous loop binding. The district court found that Travel Caddy’s former attorneys had not advised the U.S. Patent and Trademark Office (USPTO) of the existence of the litigation when one of the two patents was still pending as an application. The court also found that Travel Caddy had improperly claimed small entity status when prosecuting the applications, due to the distribution agreement that it had entered into with an entity that had more than 500 employees. As a result, the district court declared both patents unenforceable as having been procured through inequitable conduct.

Solution: Fitch Even was retained to pursue an appeal in the Court of Appeals for the Federal Circuit seeking to have both findings of inequitable conduct reversed. Upon careful analysis of the trial court record, we identified specific grounds for challenging both rulings as lacking sufficient evidentiary support under the standards established by Federal Circuit precedent.

Result: Following the submission of appellate briefs and oral argument, the Federal Circuit reversed both rulings. The court first held that the existence of pending litigation involving the parent patent was not necessarily material to the related child patent because the litigation did not involve a challenge to patent validity. The court also held that intent to deceive the USPTO had not been established via clear and convincing evidence. With regard to the claim for small entity status, the court also reversed on the grounds that there was no clear and convincing evidence of intent to deceive the USPTO. A well-crafted and executed appellate strategy succeeded in removing the specter of fraud and restoring the enforceability of our client’s patents.