United States Court of Appeals 

for the Federal Circuit 

__________________________ 

OUTSIDE THE BOX INNOVATIONS, LLC (doing 

business as Union Rich USA), 

Plaintiff-Appellee, 

AND

BONAKA LIMITED BONAKA, PLASTIC 

MANUFACTURING CO., LTD., 

AND UNION RICH PLASTIC FACTORY, LTD., 

Counterclaim Defendants-Appellees, 

AND

CHRISTOPHER URE, MATT WILLIAMS, TERRY 

KINSKEY AND LYNN MARTINEAU, 

Counterclaim Defendants, 

v. 

TRAVEL CADDY, INC. 

Defendant/CounterclaimantAppellant, 

AND

ROOSTER PRODUCTS (doing business as The Rooster 

Group),

Defendant/Counterclaimant. 

__________________________ 

2009-1171 

__________________________ 
OUTSIDE THE BOX v. TRAVEL CADDY 2

Appeal from the United States District Court for the 

Northern District of Georgia in Case No. 1:05-CV-2482, 

Senior Judge Orinda D. Evans. 

___________________________ 

Decided: September 21, 2012 

___________________________ 

PATRICK D. MCPHERSON, Duane Morris LLP, of Washington, DC, argued for plaintiff-appellee and counterclaim 

defendants-appellees. On the brief were ROBERT L. BYER 

and MATTHEW C. MOUSLEY, of Philadelphia, Pennsylvania, 

and J. RODMAN STEELE, JR. and GREGORY M. LEFKOWITZ, of 

Boca Raton, Florida. Of counsel were WILLIAM BLAKE 

COBLENTZ, of Washington, DC, and BARRY P. GOLOB, of San 

Francisco, California; GREGORY L. HILLYER, Feldman Gale, 

P.A., of Philadelphia, Pennsylvania; and JEROLD I.

SCHNEIDER, Novak Druce + Quigg LLP, of West Palm 

Beach, Florida. 

TIMOTHY P.MALONEY, Fitch, Even, Tabin & Flannery, of 

Chicago, Illinois, argued for defendant/counterclaimantappellant. With him on the brief was MARK W. HETZLER. Of 

counsel on the brief were VANCE L.LIEBMAN, GLENN A. RICE, 

ORLEY MOSKOVITS DESSER, and SETH A.STERN, Funkhouser 

Vegosen Liebman & Dunn, Ltd., of Chicago, Illinois. 

__________________________ 

Before NEWMAN, PROST, and O’MALLEY, Circuit Judges. 

Opinion for the court filed PER CURIAM. Opinion concurring in part and dissenting in part filed by Circuit Judge 

NEWMAN. 
3 OUTSIDE THE BOX v. TRAVEL CADDY

PER CURIAM. 

This declaratory judgment patent suit was filed by Outside the Box Innovations, LLC, doing business as Union 

Rich USA (herein “Union Rich”) against Travel Caddy, Inc. 

and its distributor/sales agent for Travel Caddy’s patented 

tool carry cases, Rooster Products (doing business as The 

Rooster Group). The issues, duly presented by claim and 

counterclaim, were infringement, patent validity, enforceability, and unfair competition. 

The United States District Court for the Northern District of Georgia held that Travel Caddy’s United States 

Patent No. 6,823,992 (the ’992 patent) and its continuation 

Patent No. 6,991,104 (the ’104 patent) are unenforceable in 

their entirety, based on inequitable conduct in the United 

States Patent and Trademark Office (PTO). The district 

court sustained the validity of claims 5, 12, 23, and 30 of the 

’104 patent, but held the other claims of the ’104 patent and 

all the claims of the ’992 patent invalid on the ground of 

obviousness. The court held on summary judgment that the 

version of the Union Rich tool carry case called the Electricians Carryalls (Electricians Bag I) infringes various patent 

claims, but that a modified version called Electricians Bag 

II and the tool carry case called Heavy-Duty ProTool Bag do 

not infringe. The court also dismissed Union Rich’s unfaircompetition claims against Travel Caddy.1 On Travel 

Caddy’s appeal, we reverse the judgment of unenforceability 

based on inequitable conduct, vacate the rulings of invalid-

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

Inc., No. 05-cv-2482, 2007 U.S. Dist. LEXIS 102167 (N.D. 

Ga. Aug. 7, 2007) (Infringement); 2008 U.S. Dist. LEXIS 

123218 (N.D. Ga. Dec. 19, 2008) (Inequitable Conduct and 

Validity); 2009 U.S. Dist. LEXIS 131341 (N.D. Ga. Aug. 3, 

2009) (Reconsideration). 
OUTSIDE THE BOX v. TRAVEL CADDY 4

ity, affirm the rulings of noninfringement, and remand for 

further proceedings. 

We start with the district court’s rulings of inequitable 

conduct in the PTO, for these rulings voided all claims of 

both patents. 

I 

INEQUITABLE CONDUCT

The district court held the ’992 and ’104 patents unenforceable on the grounds that (1) Travel Caddy did not 

disclose to the PTO the existence of the litigation on the ’992 

patent during prosecution of the ’104 application, and (2) 

Travel Caddy paid small entity fees to the PTO but was not 

entitled to small entity status. 

To establish unenforceability based on inequitable conduct in the PTO, it must be shown that information material to patentability was withheld from the PTO, or material 

misinformation was provided to the PTO, with the intent to 

deceive or mislead the patent examiner into granting the 

patent. Therasense, Inc. v. Becton, Dickinson & Co., 649 

F.3d 1276, 1290-92 (Fed. Cir. 2011) (en banc). Withholding 

of material information and intent to deceive or mislead 

must be established by clear and convincing evidence. Id. at 

1287 (citing Star Scientific, Inc. v. R.J. Reynolds Tobacco 

Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008)). 

A. Non-disclosure of the ’992 litigation in the record of the ’104 application 

The district court held that Travel Caddy committed inequitable conduct in failing to notify the examiner of the 

’104 application that the parent ’992 patent was in litiga-
5 OUTSIDE THE BOX v. TRAVEL CADDY

tion. The district court held that Travel Caddy had the 

obligation to inform the ’104 examiner of the ’992 litigation, 

and that this was material information, citing Manual of 

Patent Examining Procedure (MPEP) §2001.06(c): 

 Where the subject matter for which a patent is 

being sought is or has been involved in litigation, 

the existence of such litigation and any other material information arising therefrom must be brought 

to the attention of the U.S. Patent and Trademark 

Office. Examples of such material information include evidence of possible prior public use or sales, 

questions of inventorship, prior art, allegations of 

“fraud,” “inequitable conduct,” and “violation of duty 

of disclosure.” Another example of such material information is any assertion that is made during litigation which is contradictory to assertions made to 

the examiner. 

The district court held that, although only infringement of 

the ’992 patent had been placed at issue, “it was clear that 

the issue of validity would likely arise in the litigation.” 

Inequitable Conduct and Validity op., at *39. The court 

inferred deceptive intent from the fact of non-disclosure, 

stating: 

The Court infers from the facts in evidence that 

Travel Caddy intended to deceive the PTO when it 

failed to disclose the current litigation during the 

pendency of the ’104 Patent. Nelson drafted the 

’104 and ’992 Patents, was the prosecuting attorney 

for both patents, and has been heavily involved as 

counsel in the current litigation. Furthermore, Nelson is clearly an experienced patent attorney and 

testified as to his awareness of Rule 56 and Section 

2001 of the MPEP. 
OUTSIDE THE BOX v. TRAVEL CADDY 6

Inequitable Conduct and Validity op., at *41. 

MPEP §2001.05 states that “[i]f information is not material, there is no duty to disclose the information to the 

Office.” Travel Caddy argues that it violated no law or 

regulation or rule, that there was no withholding of information material to patentability, and no intent to deceive 

the PTO. Travel Caddy points out that validity of the ’992 

patent had not been included in the Union Rich complaint 

nor otherwise placed at issue during the time when the ’104 

application was pending, and that no prior art or other 

information had been presented by Union Rich, even informally, during the brief period of overlapping pendency of the 

’104 application and the ’992 litigation. The ’104 application 

was filed on November 4, 2004, and this complaint was filed 

by Union Rich on September 23, 2005, requesting only a 

declaration of noninfringement. The ’104 patent was allowed on October 31, 2005 and issued on January 31, 2006. 

No information now asserted to be relevant to patentability of the ’104 application had been provided in the 

’992 litigation while the ’104 application was pending. No 

ground of invalidity was included in the complaint against 

the ’992 patent, or communicated informally despite Travel 

Caddy’s inquiries. Travel Caddy’s patent attorney Nelson 

testified that he did not file notice of the ’992 litigation in 

the prosecution of the ’104 application because “[t]here was 

nothing in there that was what I understood to be material 

under Rule 56. There was nothing that related to patentability, enforceability or validity.” T. Tr. 230:11-13 (Feb. 

5, 2008), J.A. 5572. See Therasense, 649 F.3d at 1291 (information is material “if the PTO would not have allowed a 

claim had it been aware of the undisclosed prior art”).

The district court found that, “[g]iven the number of indicators that validity could arise as an issue and Nelson’s 
7 OUTSIDE THE BOX v. TRAVEL CADDY

involvement in both the application for the ’104 Patent and 

the current litigation, the Court finds it incredible that 

Nelson believed the current litigation to be irrelevant to the 

prosecution of the ’104 patent.” Inequitable Conduct and 

Validity op., at *42. However, the issue was not whether 

the ’992 litigation was irrelevant; the issue was whether the 

existence of the ’992 litigation was material to patentability 

of the ’104 application, when there was no citation of prior 

art, nor any pleading of invalidity or unpatentability in the 

’992 complaint as it existed during pendency of the ’104 

application. Although a later challenge to the validity of the 

’992 patent was surely possible, it did not then exist. We 

conclude that the district court’s ruling was in error, for 

there was not clear and convincing evidence of withholding 

of information material to patentability of the claims in the 

’104 application during the pendency of that application. 

Nor was there clear and convincing evidence of intent to 

deceive the examiner of the ’104 application. The district 

court stated that it “made this inference [of deceptive intent] 

because it found this inference to be the single most reasonable inference based on the evidence.” Reconsideration op., 

at *13. The district court stated that its “finding that Travel 

Caddy intended to deceive the PTO when it failed to disclose 

the current litigation to the PTO is in keeping with the law 

recited in Star Scientific.” Id. In Star Scientific the court 

held that to draw an inference of deceptive intent it must be 

“the single most reasonable inference able to be drawn from 

the evidence to meet the clear and convincing standard.” 

537 F.3d at 1366. There was no evidence on which to base 

an inference of deceptive intent. 

The court in Therasense sought to restore objectivity and 

consistency to the law of inequitable conduct, by requiring 

that “the accused infringer must prove that the patentee 

acted with the specific intent to deceive the PTO.” 649 F.3d 
OUTSIDE THE BOX v. TRAVEL CADDY 8

at 1290. Specific intent to deceive the PTO requires “knowledge and deliberate action”: 

 This requirement of knowledge and deliberate 

action has origins in the trio of Supreme Court cases 

that set in motion the development of the inequitable conduct doctrine. In each of those cases, the 

patentee acted knowingly and deliberately with the 

purpose of defrauding the PTO and the courts. 

Id. (citing Precision Instrument Mfg. Co. v. Auto. Maint. 

Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. 

Hartford-Empire Co., 322 U.S. 238 (1944); Keystone Driller 

Co. v. Gen. Excavator Co., 290 U.S. 240 (1933)). Here, the 

record contains no suggestion of how the withholding of the 

information concerning the ’992 litigation could have deceived the examiner and no suggestion of deliberate action 

to withhold it in order to deceive the examiner. Union Rich 

offered no such evidence, nor presented any support for any 

inference of intent to deceive. 

The district court ruled that the non-disclosure itself 

was material to patentability, although there was no suggestion of how Travel Caddy may have benefitted from the 

non-disclosure. Even on this erroneous ruling as to materiality, deceptive intent must be separately established by 

clear and convincing evidence. Therasense, 649 F.3d at 

1290. The district court rejected Travel Caddy’s argument 

that if notification of the existence of the ’992 suit were 

indeed required during prosecution of the ’104 application, 

any omission was due to oversight or error or negligence, 

not deceptive intent. Negligence, however, even gross 

negligence, is not sufficient to establish deceptive intent. 

See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 

F.2d 867, 876 (Fed. Cir. 1988) (en banc in relevant part) (“a 

finding that particular conduct amounts to ‘gross negligence’ 
9 OUTSIDE THE BOX v. TRAVEL CADDY

does not of itself justify an inference of intent to deceive”); 

see also Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 

628 F.3d 1359, 1379 (Fed. Cir. 2010) (“mistake or exercise of 

poor judgment . . . does not support an inference of intent to 

deceive”); Molins PLC v. Textron, Inc., 48 F.3d 1172, 1181 

(Fed. Cir. 1995) (“[T]he alleged conduct must not amount 

merely to the improper performance of, or omission of, an 

act one ought to have performed.”). 

There was not clear and convincing evidence of specific 

intent to deceive the examiner into granting the ’104 application. The district court’s ruling of inequitable conduct 

based on non-disclosure of the ’992 litigation cannot stand. 

That ruling is reversed. 

B. Incorrect claim of “small entity” status 

The district court held that Travel Caddy had also committed inequitable conduct by claiming small entity status 

and paying reduced PTO fees, and that this conduct rendered both the ’992 and ’104 patents permanently unenforceable. The court held that small entity status was not 

available to Travel Caddy, although it met the small entity 

definition of having fewer than 500 employees, because of 

Travel Caddy’s commercial arrangement with a large entity, 

The Rooster Group. 13 C.F.R §§121.801-805 defines a small 

entity as a concern whose employees, including affiliates, do 

not exceed 500 persons. The Rooster Group had more than 

500 employees counting its Mexican affiliate. 37 C.F.R. 

§1.27 provides for small entity status in the PTO when the 

entity: 

Has not assigned, granted, conveyed, or licensed, 

and is under no obligation under contract or law to 

assign, grant, convey, or license, any rights in the 

invention to any person, concern, or organization 
OUTSIDE THE BOX v. TRAVEL CADDY 10

which would not qualify for small entity status as a 

person, small business concern, or nonprofit organization. 

37 C.F.R. §1.27(a)(2)(i). 

Travel Caddy states that The Rooster Group is its distributor and seller of the patented tool cases, and is not a 

licensee. The district court found that the Rooster sales 

agreement is also a patent license, because the agreement 

authorizes Rooster to obtain the Travel Caddy products 

from other producers if Travel Caddy does not provide the 

products on the same terms. This agreement, entitled “An 

Agreement between Rooster Products International, Inc. 

and Travel Caddy Inc. dba as Travelon,” includes provisions 

relating to supply, delivery, price, quantity, and other terms 

appropriate to commercial sales and distribution arrangements. The sales rights are exclusive to Rooster, as provided in ¶4, provided that minimum sales volumes are met 

(¶5). 

¶4. . . . Travelon grants Rooster the Exclusive 

worldwide rights and license as provided in this 

Agreement, to the sale of the Products in the Channels. During the term of this Agreement, any current or future products within the Category 

developed or sourced by Travelon can only be sold to 

the Channels by Rooster with the exception of the 

specific products currently being distributed by 

other companies in the Channels that are listed in 

Attachment F. 

Paragraph 9 is cited by Union Rich as providing a patent 

license: 
11 OUTSIDE THE BOX v. TRAVEL CADDY

¶9. Rooster reserves the right to source the Products from other manufacturers upon timely notice of 

such sourcing to Travelon. Rooster will not contract 

for manufacture of the Product(s) directly or 

through any third parties with manufacturers who 

have made or are then currently making the Product(s) for Travelon. Travelon will always have the 

opportunity to meet the price, delivery terms and 

other terms for any Travelon designed items. 

Rooster will provide Travelon with the competing 

manufacturer’s price and a sample from that manufacturer for comparison at least 10 days prior to 

Rooster contracting with another third party manufacturer. If Travelon is unable to meet these prices 

and terms then Rooster will pay a Royalty of 2.5% 

for jointly owned products; 3% for non-patented 

Travelon designed items; and 5% for patented and 

patent pending items. If within three years from 

the date of first filing, the patent has not been approved on a patent pending item, then 1% of the 

Royalty (that is an amount equal to 20% of the 

original 5%) will be refunded to Rooster, provided 

that if the Patent is ultimately approved between 

three and four and one-half years from the date of 

first filing, then Rooster shall repay Travelon this 

additional 1% within 90 days of such approval. 

Royalty payments will be based on the Cost of 

Goods, that is, the Purchase Price to Rooster. Products that Rooster sources from other manufacturers 

pursuant to this paragraph will count toward the 

Minimum. 

Union Rich argues that the agreement is a patent license 

and Travel Caddy maintains that it is a distribution agreement with a fallback safeguard that permits Rooster to seek 

other sources of supply if Travel Caddy cannot supply 
OUTSIDE THE BOX v. TRAVEL CADDY 12

Rooster’s needs at a competitive price. Indeed, the district 

court had previously recognized that the agreement terms 

were insufficient to give Rooster standing to join in the suit. 

Outside the Box Innovations, LLC v. Travel Caddy, Inc., No. 

05-cv-2482, 2007 U.S. Dist. LEXIS 96069, at *23-26 (N.D. 

Ga. Mar. 27, 2007) (denying Union Rich’s motion for joinder 

pursuant to Rule 19 of the Federal Rules of Civil Procedure). 

The district court held, however, that this agreement 

was a patent license for purposes of 37 C.F.R. §1.27(a)(2). 

The court rejected Travel Caddy’s description of ¶9 as a 

contingency provision, and held that ¶9 was a license, 

although never invoked, and that this deprived Travel 

Caddy of its small entity status. Thus the court found that 

“Travel Caddy’s false claim of small entity status was undoubtedly material,” and found intent to deceive because 

“Nelson, an experienced patent attorney, is responsible for 

being familiar with such standards. Under these circumstances, the Court finds that an inference of Travel Caddy’s 

intent to deceive the PTO has been established.” Inequitable Conduct and Validity op., at *55-56. 

As noted, materiality and intent are two separate and 

distinct requirements in a proper inequitable conduct analysis, and both must be shown by clear and convincing evidence. We turn first to the level of materiality required. In 

this court’s recent Therasense decision – which issued 

during the pendency of this appeal – the court held that, “as 

a general matter, the materiality required to establish 

inequitable conduct is but-for materiality.” 649 F.3d at 

1291. The court recognized an exception to this general 

rule, however, stating that: “[w]here the patentee has 

engaged in affirmative acts of egregious misconduct, such as 

the filing of an unmistakably false affidavit, the misconduct 

is material.” Id. at 1292 (citations omitted). In other words, 

a false affidavit or declaration is per se material. Although 
13 OUTSIDE THE BOX v. TRAVEL CADDY

on its face, it appears that a false declaration of small entity 

status would fall within the definition of an “unmistakably 

false affidavit,” particularly since a party that claims entitlement to small entity status does so in a sworn written 

declaration, we need not decide that question.2 Even if a 

false assertion of small entity status were per se material, 

the requirements of Therasense are not met here because 

there was no clear and convincing evidence of intent to 

deceive the PTO. Specifically, there was no evidence that 

anyone involved in the patent prosecution knew that a 

patent license had been granted to a large entity and deliberately withheld that information in order to pay small 

entity fees. It was not unreasonable for Travel Caddy to 

view the Rooster agreement as a distributorship of products 

made by Travel Caddy, with protection to Rooster to obtain 

alternative supply if Travel Caddy failed to provide the 

product. 

Where there is no evidence that small entity status was 

deliberately falsely claimed, a finding of unenforceability is 

inappropriate. Importantly, the regulations do not contemplate that an incorrect claim of small entity status, with no 

evidence of bad faith, is punishable by loss of the patent. 

Instead, 37 C.F.R. §1.28 provides that good faith mistakes 

can be remedied by making a deficiency payment.3 In other 

 2 Indeed, when asked whether he agreed that “the nature of the certification is essentially an affidavit,” counsel 

for Travel Caddy responded “I do. It’s a sworn statement. I 

do your honor.” Oral Argument at 11:30, available at

http://www.cafc.uscourts.gov/oral-argument-recordings

/2009-1171/all.

3 37 C.F.R. §1.28 states that: 

(c) How errors in small entity status are excused. If 

status as a small entity is established in good faith, 

and fees as a small entity are paid in good faith, in 
OUTSIDE THE BOX v. TRAVEL CADDY 14

words, the regulations specifically contemplate that there 

can be good faith errors in asserting entitlement to small 

entity status. Thus, where, as here, there is no specific 

intent to deceive, underpayment of the fee can be remedied 

by payment of the deficiency, not by eradication of the 

patent. 

The district court erred in holding the Travel Caddy 

patents unenforceable based on Travel Caddy’s purported 

loss of small entity status. The ruling of inequitable conduct 

on this ground is reversed. 

II 

VALIDITY

The district court held claims 1-4 (all the claims) of the 

’992 patent, and claims 1-4, 6-11, 13-22, 24-29, and 31-32 of 

the ’104 patent, invalid on the ground of obviousness. The 

court relied on various combinations of five references: U.S. 

Patents Nos. 6,161,665 (“Hoover”), 5,813,445 (“Christman”), 

 

any application or patent, and it is later discovered 

that such status as a small entity was established in 

error, or that through error the Office was not notified of a loss of entitlement to small entity status as 

required by §1.27(g)(2), the error will be excused 

upon: compliance with the separate submission and 

itemization requirements of paragraphs (c)(1) and 

(c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section . . . . 

The regulations state that the deficiency payment “is the 

difference between the current fee amount (for other than a 

small entity) on the date the deficiency is paid in full and 

the amount of the previous erroneous (small entity) fee 

payment.” 37 C.F.R. §1.28(c)(2)(i). The provision for deficiency payment does not include a penalty amount. 
15 OUTSIDE THE BOX v. TRAVEL CADDY

D474,891 (“Huang”),4 2,960,136 (“Ziff”), and 5,813,530 

(“Kornblatt”). The district court excluded the testimony of 

Travel Caddy’s technical expert, and ruled that Travel 

Caddy’s patents are invalid on the ground of obviousness. 

Obviousness is a question of law, KSR International Co. 

v. Teleflex Inc., 550 U.S. 398, 427 (2007), based on four 

factual inquiries: the scope and content of the prior art, the 

differences between the prior art and the claimed invention, 

the level of ordinary skill in the field of the invention, and 

any relevant objective considerations. Id. at 406 (citing 

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). The 

Court in Graham explained that these factual inquiries 

promote “uniformity and definiteness,” for “[w]hat is obvious 

is not a question upon which there is likely to be uniformity 

of thought in every given factual context.” 383 U.S. at 18. 

The patent challenger must establish obviousness by clear 

and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 

_ U.S. _, 131 S. Ct. 2238, 2242 (2011). 

The district court ruled that Travel Caddy’s structure 

“was an obvious solution to simple problems inherent in the 

prior art patents.” Inequitable Conduct and Validity op., at 

*76. Travel Caddy argues that the prior art does not show 

all of the elements and limitations set forth in the claims, 

and that it would not have been obvious to a skilled artisan 

to select assorted parts of the various references to arrive at 

the novel structures and solutions in the ’992 and ’104 

patents. Travel Caddy states that such selection and combination is achieved only with the hindsight knowledge of 

the Travel Caddy structures and the advantages that they 

 4 Travel Caddy states that the Huang reference is not 

prior art, because the patent priority date antedates the 

reference. 
OUTSIDE THE BOX v. TRAVEL CADDY 16

achieve. Union Rich responds that the district court did not 

err in fact or law. 

A. Exclusion of expert witness 

The determination of obviousness requires determination of whether the invention as a whole would have been 

obvious “to a person having ordinary skill in the art to 

which said subject matter pertains.” 35 U.S.C. §103(a). 

Union Rich argued that the invention was obvious, and 

presented attorney argument of several prior art references. 

 Travel Caddy sought to rebut this argument through the 

testimony of a witness having experience in this technical 

field, Mr. Michael Korchmar. The district court excluded 

Mr. Korchmar from testifying, stating: 

Well, I’m going to rule out Mr. Korchmar’s testimony as an expert, and it’s not -- I do believe that 

he is very knowledgeable about the products in his 

field, but I do know not see how he would be able to 

address what claims mean if he’s not a lawyer. It 

seems to me that is within the province of a lawyer. 

T.Tr. 328:9-14 (Feb. 5, 2008), J.A. 5670. Travel Caddy 

requested reconsideration, and the district court repeated 

that: 

This Court found that because Korchmar is not a 

lawyer, he was not qualified as an expert to testify 

as to what the prior art teaches and the correct interpretation of patent claims in the prior art. This 

ruling was not error under Sundance [Sundance, 

Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 

(Fed. Cir. 2008)]. 

Reconsideration op., at *22. In Sundance this court held 

that it was an abuse of discretion to permit an attorney to 
17 OUTSIDE THE BOX v. TRAVEL CADDY

testify as an expert on issues of infringement and validity, 

when the attorney was not qualified as an expert in the 

technical subject matter. Travel Caddy argues that Sundance reinforces the position that it was an abuse of discretion to disqualify the technical expert because he is not a 

lawyer. 

Applying the procedural law of the regional circuit, the 

Eleventh Circuit reviews the exclusion of expert testimony 

on the ground of abuse of discretion. Deference is given to 

the district court’s discretion in trial management “unless 

the ruling is manifestly erroneous.” United States v. Frazier, 387 F.3d 1244, 1258 (11th Cir. 2004) (en banc) (quoting 

Gen. Elec. Co. v. Joiner, 522 U.S. 136, 142 (1997)). The 

Eleventh Circuit has explained that “basing an evidentiary 

ruling on an erroneous view of the law constitutes an abuse 

of discretion per se.” United States v. Henderson, 409 F.3d 

1293, 1297 (11th Cir. 2005). 

Although this court has sustained the absence of expert 

testimony in appropriate cases, see Union Carbide Corp. v. 

Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984) (prior art 

references and the appellant’s invention were “easily understandable without the need for expert explanatory testimony”), the exclusion of a technical expert for the reason 

that he is not a lawyer is contrary to Federal Rule of Evidence 702 and the benefits of technological assistance in 

resolution of technological issues. 

Despite the complexity of patent law, patents are not for 

inventions of law; they are for inventions of technology. The 

exclusion of a technical expert may deprive the decisionmaker of knowledge and perspective relevant to the adjudication, as recognized in Rule 702: 
OUTSIDE THE BOX v. TRAVEL CADDY 18

R. 702. A witness who is qualified as an expert by 

knowledge, skill, experience, training, or education 

may testify in the form of an opinion or otherwise if: 

(a) the expert’s scientific, technical, or other knowledge will help the trier of fact to understand the 

evidence or to determine a fact in issue; 

(b) the testimony is based on sufficient facts or data; 

(c) the testimony is the product of reliable principles 

and methods; and 

(d) the expert has reliably applied the principles and 

methods to the facts of the case. 

In Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. 

Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997), the court stated 

that “[i]t is of course nonsense to contend that only lawyers 

or patent lawyers can be expert witnesses in a patent suit.” 

In Sundance the court stated: 

 Admitting testimony from a person such as [attorney] Bliss, with no skill in the pertinent art, 

serves only to cause mischief and confuse the factfinder. Unless a patent lawyer is also a qualified 

technical expert, his testimony on these kinds of 

technical issues is improper and thus inadmissible. 

Because Mr. Bliss was never offered as a technical 

expert, and in fact was not qualified as a technical 

expert, it was an abuse of discretion for the district 

court to permit him to testify as an expert on the issues of noninfringement or invalidity. 

550 F.3d at 1362. 
19 OUTSIDE THE BOX v. TRAVEL CADDY

The courts have recognized that, although advances in 

technology may in retrospect appear obvious to a judge, 

stimulated by advocacy, it is relevant that the advance 

eluded persons in the field. The distortions flowing from 

judicial hindsight have often been remarked. See Diamond 

Rubber Co. of NY v. Consol. Rubber Tire Co., 220 U.S. 428, 

435 (1911) (“Knowledge after the event is always easy, and 

problems once solved present no difficulties, indeed, may be 

represented as never having had any . . . .”). The foil to 

judicial hindsight is the testimony of persons experienced in 

the field of the invention. 

The exclusion of Mr. Korchmar’s expert testimony cannot be reconciled with the Federal Rules and the guidance of 

precedent. To be sure, many lawyers have technical training, but it is technological experience in the field of the 

invention that guides the determination of obviousness, not 

the rhetorical skill or nuanced advocacy of the lawyer. We 

conclude that the exclusion of Mr. Korchmar’s testimony 

because he is not a lawyer was an abuse of discretion, and 

may have materially affected the district court’s ruling of 

obviousness. 

B. The ruling of obviousness 

Union Rich argues that any error was harmless because, 

whatever Mr. Korchmar might have presented if he had 

been allowed to testify, the claims are invalid for obviousness. The Eleventh Circuit guides that errors in admission 

or exclusion of evidence may be tolerated unless they affect 

the substantial rights of the parties; that is, unless the 

errors “have a ‘substantial influence’ on the outcome of a 

case or leave ‘grave doubt’ as to whether they affected the 

outcome of a case.” Frazier, 387 F.3d at 1266 n.20 (quoting 

Kotteakos v. United States, 328 U.S. 750, 764-65 (1946)). 28 

U.S.C. §2111 states that courts “shall give judgment after 
OUTSIDE THE BOX v. TRAVEL CADDY 20

an examination of the record without regard to errors or 

defects which do not affect the substantial rights of the 

parties.” See also Fed. R. Evid. 103(a) (“A party may claim 

error in a ruling to admit or exclude evidence only if the 

error affects a substantial right of the party . . . .”). In 

Medtronic Inc. v. Intermedics, Inc., 799 F.2d 734, 741 (Fed. 

Cir. 1986), this court sustained the district court’s exclusion 

of some testimony of the defendant’s expert on issues of 

obviousness and infringement, for although the district 

court excluded the testimony on the criticized ground that 

the expert “did not personally have knowledge of the prosecution of the patents in suit,” the exclusion was not prejudicial because the testimony was cumulative. 

In contrast, all of the testimony of Mr. Korchmar was 

excluded. The testimony related to evidence that could have 

affected the outcome, for the patents were held invalid on 

the very ground for which Mr. Korchmar’s testimony was 

proffered. There is no suggestion that the excluded testimony was cumulative. A substantial right was indeed 

affected, for obviousness depends on evidentiary facts found 

and evaluated from the viewpoint of a person in the field of 

the invention, as of the time of the invention. Precedent 

recognizes the pitfalls of judicial hindsight exercised at the 

time of litigation, the Court cautioning in KSR that “[a] 

factfinder should be aware, of course, of the distortion 

caused by hindsight bias and must be cautious of arguments 

reliant upon ex post reasoning.” 550 U.S. at 421. See also, 

e.g., Diamond Rubber, 220 U.S. at 434-35 (“Many things, 

and the patent law abounds in illustrations, seem obvious 

after they have been done, and, in the light of the accomplished result, it is often a matter of wonder how they so 

long eluded the search of the discoverer and set at defiance 

the speculations of inventive genius.” (quotation omitted)); 

Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 

956 (Fed. Cir. 1997) (“Good ideas may well appear ‘obvious’ 
21 OUTSIDE THE BOX v. TRAVEL CADDY

after they have been disclosed, despite having been previously unrecognized.”). 

In determining whether it would have been obvious to 

structure the Travel Caddy tool carry cases by selecting and 

combining components from nearly half a dozen different 

designs, the perspective of a person in this field of technology can be significant. For example, the patents state that 

these tool carry cases are structured to carry heavy tools, 

and attribute this strength to the novel use of a continuous 

closed-loop binding, an adaptation that the district court 

found to be described by the continuous beading in the Ziff 

reference, which is not concerned with heavy tools. Travel 

Caddy points to its combination of structural strength with 

economical assembly and a pleasing appearance, the commercial success of its product, and the ultimate tribute of 

copying by a competitor. 

Travel Caddy’s offer of proof stated that Mr. Korchmar 

would have testified that the cited references not only did 

not show all the elements of the claims, but also that they 

did not suggest the selection and combination achieved by 

Travel Caddy. T.Tr. 329:3 to 331:7 (Feb. 5, 2008), J.A. 5671-

73. Such evidence is relevant to the question of obviousness 

particularly in crowded fields, where small differences may 

produce a nonobvious advance and commensurate commercial success. Such pragmatic considerations are better 

understood by artisans in the field, than by judges. See In 

re Meng, 492 F.2d 843, 848 (CCPA 1974) (“[S]implicity, 

particularly in an old and crowded art, may argue for rather 

than against patentability. Progress in the crowded arts, 

usually made in small increments, is as important as it is in 

arts at the pioneer stage.” (citation omitted)). See also

Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360-61 

(Fed. Cir. 2011) (the inquiry under §103 is not whether the 
OUTSIDE THE BOX v. TRAVEL CADDY 22

claimed invention is “sufficiently simple to appear obvious 

to judges after the discovery is finally made”). 

The Court has explained that “[t]he emphasis on nonobviousness is one of inquiry, not quality” of the advance. 

Graham, 383 U.S. at 17. The uniform thread of such inquiry is that it must be made in the context of the field of 

the invention. While “the common sense of those skilled in 

the art demonstrates why some combinations would have 

been obvious where others would not,” Leapfrog Enters., Inc. 

v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) 

(citing KSR, 550 U.S. at 416), the determination is made not 

after observing what the inventor actually did, but in light 

of the state of the art before the invention was made. 

Travel Caddy argues that, although many others have 

designed tool carry cases, the design achieved by Travel 

Caddy provided characteristics new to this crowded field, 

characteristics that were recognized by the market success 

of these products. To properly weigh that argument, evidence of commercial response may be the most probative. 

See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 

776 F.2d 281, 306 (Fed. Cir. 1985) (“Secondary considerations may be the most pertinent, probative, and revealing 

evidence available to the decision maker in reaching a 

conclusion on the obviousness/nonobviousness issue.”). 

Although Union Rich asks this court to decide the question 

of nonobviousness on our own, the exclusion of the expert’s 

testimony leaves us with no better basis for decision than 

was available to the trial court. Thus we remand for redetermination of the issue of obviousness, on the entirety of 

the evidence includingexpert testimony.5 The district 

 5 On appeal, Travel Caddy argues that it was deprived of its right to trial by jury on the factual issues 

underlying the court’s obviousness determination. Specifically, Travel Caddy argues that the district court sua sponte
23 OUTSIDE THE BOX v. TRAVEL CADDY

court’s rulings of invalidity of all of the claims of the ’992 

patent and claims 1-4, 6-11, 13-22, 24-29, and 31-32 of the 

’104 patent are vacated. 

III 

INFRINGEMENT

A. Electricians Bag I 

Union Rich conceded that its first tool carry case, Electricians Bag I, infringes the Travel Caddy patents. Since 

some claims were held valid and are not disputed, the 

remedy for infringement remains to be determined for 

Electricians Bag I. 

B. The ProTool Bag and Electricians Bag II 

Travel Caddy appeals the district court’s summary 

judgment of noninfringement by the Union Rich ProTool 

 

ordered a non-jury evidentiary hearing on obviousness and 

inequitable conduct. The record reveals that both Union 

Rich and Travel Caddy requested trial by jury in their 

respective pleadings and that, on August 20, 2007, Travel 

Caddy requested an evidentiary hearing before the court on 

inequitable conduct prior to a jury trial on the remaining 

issues. The record also reveals that: (1) the district court 

ordered a non-jury evidentiary hearing on validity and 

enforceability of Travel Caddy’s Patents; (2) Travel Caddy 

actively participated in the two-day hearing, presenting 

evidence and arguments on validity; and (3) it was not until 

January 6, 2009 – eleven months after the hearing – that 

Travel Caddy filed a motion for reconsideration alleging 

that it was deprived of its right to a jury trial on validity. 

See J.A. 6008. Given our decision to remand with respect to 

obviousness, we need not address this issue on appeal. 

Travel Caddy is free to reassert its right to trial by jury 

upon remand. 
OUTSIDE THE BOX v. TRAVEL CADDY 24

Bag and the succeeding model of tool carry bags, the Electricians Bag II (CarryAlls Bag). The record shows the 

Travel Caddy patent drawings and the accused ProTool Bag 

and Electrician Bag: 

Travel Caddy Br. 10. 

Travel Caddy challenges the district court’s claim construction and argues that even if that construction were 

correct, summary judgment of noninfringement was improperly granted. The grant of summary judgment receives 

plenary review on appeal. 
25 OUTSIDE THE BOX v. TRAVEL CADDY

The district court construed thirteen terms in the asserted claims: “between,” “connecting between,” “joined 

between,” “extending substantially entirely between the . . . 

side edges,” “intermediate,” “continuous, closed loop binding,“ “flexible fabric . . . panel,” “generally rigid, fabric 

covered . . . panel,” “generally semi-rigid, fabric-covered . . . 

panel,” “three-sided generally rigid fabric covered box,” 

“sewn into,” “margin,” and “rectangular perimeter shaped.” 

Outside the Box Innovations, LLC v. Travel Caddy, Inc., No. 

05-cv-2482, 2006 U.S. Dist. LEXIS 100640 (N.D. Ga. Sept. 

18, 2006) (Claim Construction). On this appeal the parties 

dispute only the terms shown in boldface, for example, in 

claims 1 and 19 of the ’104 patent: 

1. A case for carrying tools or other items comprising, in combination: 

 [a] planar, generally rigid, fabric covered first 

end panel having a generally rectangular lower section with a bottom side edge, a front side edge and a 

back side edge and a generally triangular upper section; 

 a second, planar, generally rigid, fabric covered 

end panel having a configuration congruent with 

the first end panel and parallel to and spaced from 

the first end panel and with a bottom edge, a front 

side edge and a back side edge; 

 a planar, generally rigid, fabric covered, rectangular bottom panel connecting between the first 

and second panels to form a three sided, generally 

rigid fabric covered box; 
OUTSIDE THE BOX v. TRAVEL CADDY 26

a first, flexible, fabric front panel having a 

top edge and joined between the front side edges 

of the first and second end panels; 

 a second, flexible fabric back panel having a 

top edge and joined between the back side edges 

of the first and second end panels; 

 a single continuous, closed loop binding joining 

the fabric covering the generally rigid panels and 

the flexible panels, said binding extending over the 

joined fabric and stitched thereto along the side 

edges and bottom edges of the end panels and the 

top edges of the flexible panels. 

19. A case for carrying tools or other items comprising, in combination: 

a planar, fabric covered first end panel having a 

generally rigid lower section with a bottom side 

edge, a front side edge and a back side edge, and an 

upper section; 

a second, planar, fabric covered end panel constructed substantially identical to the first end 

panel and having a configuration generally congruent with the first end panel and parallel to and 

spaced from the first end panel and, said second 

panel also including a bottom edge, a front side edge 

and a back side edge; 

a planar, generally rigid, fabric covered, rectangular perimeter shaped, bottom panel between the 

first and second end panels to form a generally 

three sided, generally rigid, fabric covered box with 

the first and second end panels extending upwardly 

from the bottom panel, said bottom panel including 
27 OUTSIDE THE BOX v. TRAVEL CADDY

a front edge, a back edge, and first and second side 

edges; 

a first, flexible, fabric front panel having a 

top edge and joined between the front side edges 

of the first and second end panels; 

a second, flexible fabric back panel having a 

top edge and joined between the backside edges of 

the first and second end panels; and 

a continuous, closed loop binding extending over 

fabric covering the bottom panel and the flexible 

panels, said binding stitched thereto along the side 

edges of the bottom panel and the side edges and 

top edges of the flexible panels. 

This court had previously reviewed the construction of these 

terms, in an interlocutory appeal from the denial of Travel 

Caddy’s request for a preliminary injunction. Outside the 

Box Innovations, LLC v. Travel Caddy, Inc., 260 F. App’x 

316 (Fed. Cir. 2008). 

On appeal, Union Rich argues that the claim construction then presented to and accepted by the Federal Circuit 

is the law of this case, and is not subject to further review. 

In response, Travel Caddy contends that the district court’s 

previous claim construction was not final and that “claim 

construction rendered on appeal from a preliminary injunction ruling is not binding on this Court.” Travel Caddy 

Reply Br. 25. 

As a general rule, the law of the case doctrine “prohibits 

a court from revisiting an issue once it has been decided in 

pending litigation.” Transonic Sys., Inc. v. Non-Invasive 

Med. Techs. Corp., 75 F. App’x 765, 774 (Fed. Cir. 2003) 
OUTSIDE THE BOX v. TRAVEL CADDY 28

(citing Arizona v. California, 460 U.S. 605, 618 (1983)). The 

doctrine provides that 

as a matter of sound judicial practice, . . . a court 

generally adheres to a decision in a prior appeal in 

the case unless one of three “exceptional circumstances” exists: “the evidence on a subsequent trial 

was substantially different, controlling authority 

has since made a contrary decision of the law applicable to such issues, or the decision was clearly erroneous and would work a manifest injustice.” 

Smith Int’l, Inc. v. Hughes Tool Co., 759 F.2d 1572, 1576 

(Fed. Cir. 1985) (citations omitted); see also Mendenhall v. 

Barber-Greene Co., 26 F.3d 1573, 1582 (Fed. Cir. 1994) 

(“The law of the case does not involve preclusion after final 

judgment, but rather it regulates judicial affairs before final 

judgment. It is a doctrine resting on the need for judicial 

economy. A court will not generally revisit an issue once 

decided in the litigation.”) (citation omitted). 

The Supreme Court has made clear that “findings of fact 

and conclusions of law made by a court during a preliminary 

injunction proceeding are not binding on the court during 

trial.” Transonic, 75 F. App’x at 774 (citing Univ. of Tex. v. 

Camenisch, 451 U.S. 390, 395 (1981)). Consistent with this 

principle, we have previously held that “a claim construction 

reached during an appeal from a grant of preliminary 

injunction is tentative and is not binding on the district 

court in subsequent proceedings.” Id.; see also Glaxo Grp. 

Ltd. v. Apotex, Inc., 376 F.3d 1339, 1346 (Fed. Cir. 2004) 

(“An appellate court’s preliminary injunction opinion has no 

conclusive bearing at the trial on the merits and is not 

binding on a subsequent panel.”). 
29 OUTSIDE THE BOX v. TRAVEL CADDY

This issue most often arises in cases where the district 

court engages in an initial, tentative claim construction 

specifically for purposes of the preliminary injunction without a hearing and without significant discovery. See Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 (Fed. 

Cir. 2002) (district courts can “engage in a rolling claim 

construction,” particularly where the issues involved are 

complex and that construction at the preliminary injunction 

stage may evolve at later stages because “motions for a 

preliminary injunction may come for decision before significant discovery has occurred”); see also Transonic, 75 F. 

App’x at 774 (“A district court therefore is at liberty to 

change the construction of a claim term as the record in a 

case evolves after a preliminary injunction appeal.”). In 

contrast, where the district court has conducted a separate 

full Markman hearing prior to rendering its claim construction at the preliminary injunction stage, and there is no new 

evidence that would alter that construction, arguments 

concerning the preliminary or tentative nature of the claim 

construction are less availing. See Ecolab Inc. v. JohnsonDiversey, Inc., 95 F. App’x 322, 331 (Fed. Cir. 2004) 

(recognizing that, “in a preliminary injunction proceeding, 

claim construction is often tentative and is subject to revision following more plenary proceedings” and that “further 

proceedings in this case, such as a claim construction hearing, may shed additional light on the claim construction 

inquiry”). 

Although the general rule is that tentative claim construction for preliminary injunction purposes does not 

remove the issue from later review after the facts are elaborated, here, the district court’s claim construction decision 

issued after a full Markman hearing, and the parties have 
OUTSIDE THE BOX v. TRAVEL CADDY 30

not identified any new factual findings.6 Given this posture, 

there is some force to Union Rich’s position that this court’s 

prior decision affirming the district court’s claim construction constitutes law of the case. We need not decide this 

issue, however, because, even if the law of the case doctrine 

does not apply, we find that the district court correctly 

construed the disputed claim terms.7

C. ProTool Bag

The district court construed the terms “between,” 

“joined between,” and “connecting between,” and granted 

summary judgment of noninfringement. The court construed “between” to mean “[i]n the interval defined by two 

end points; here, the outer edge of the end panels of the 

case.” Infringement op., at *19 (quoting Claim Construction

op., at *3). The court construed “joined between” to mean 

 6 Tellingly, in its motion to stay proceedings pending 

appeal of the district court’s preliminary injunction decision, 

Travel Caddy argued that the district court’s claim construction constituted law of the case: 

In as much as the issues on appeal are directed to 

the Markman definitions adopted by the Court and 

their application to the accused products, a stay is 

appropriate. These definitions constitute the law of 

the case, are ripe for appeal as a matter of right and 

the outcome will directly affect any future trial. 

Outside the Box Innovations, LLC v. Travel Caddy, No. 1:05-

cv-2482 (N.D. Ga. April 5, 2007), ECF No. 399 at 3; J.A. 

4674. 

7 The dissent mischaracterizes our discussion of the 

law of the case, suggesting that we have somehow created a 

broad rule that claim construction at the preliminary injunction stage is always the law of the case. We have done 

no such thing. Because the dissent’s concerns are premised 

on inaccurate representations, we need not address them. 
31 OUTSIDE THE BOX v. TRAVEL CADDY

“[f]astened in and through the interval defined by two end 

points; here, the outer edge of the end panels of the case.” 

Id. The court construed “connecting between” to mean 

“[l]inking or bridging the interval defined by two end points; 

here, the outer edge of the end panels of the case.” Id. The 

district court held that this means that all of the asserted 

claims of the ’992 and ’104 patents require that the bottom 

and front and back panels do not extend beyond the end 

panels, and found that “[t]he bottom panel, as well as the 

front and back panels, of the ProTool Bag, all extend beyond 

the edges of the end panels.” Infringement op., at *20. 

On appeal, Travel Caddy argues that the district court’s 

construction of “between,” “joined between,” and “connecting 

between” is erroneous, and that these terms, correctly 

construed, encompass the structure of the ProTool Bag. 

Specifically, Travel Caddy argues that: (1) “between” actually means “between and extending beyond”; and (2) Figure 

10 of the ’104 patent embodies a bag where the bottom panel 

extends beyond the end panel.8

 8 Travel Caddy argues that Union Rich’s technical expert, Dr. Radhakrishnaiah Parachuru, admitted that Figure 

10 shows a bag with a bottom panel extending beyond the 

end panels and labeled the diagram with the words “extension of bottom panel.” Parachuru Dep. 235:10-236:15 (June 

6, 2006), J.A. 2194-2195. In response, Union Rich argues 

that “Dr. Parachuru’s mark-up of Fig. 10 is consistent with 

this Court’s explanation of Fig. 4 as an explanation that the 

binding wraps around a terminal portion of the front panel 

that is coterminous with the terminal portion of the fabriccovered bottom panel.” Union Rich Br. 52. Regardless of 

whose theory they support, Dr. Parachuru’s deposition 

testimony and handwritten notation are insufficient to 

overcome the language in the specification which, as explained below, identifies the area in question as the binding. 
OUTSIDE THE BOX v. TRAVEL CADDY 32

The prior panel addressed these same issues and found 

that, although “Travel Caddy is correct that the preposition 

‘between’ could be used to describe something that extends 

beyond the bounds of the objects of the preposition . . . the 

written description and drawings of the ’104 patent do not 

support such a broad interpretation of the term ‘between’ in 

the claims.” Outside the Box, 260 F. App’x at 319. We 

agree. 

A careful review of the relevant patent figures and the 

corresponding written description reveals that the portion of 

Figure 10 that seems to protrude beyond the end panel is 

not part of the bottom panel but instead is the binding 

connecting the fabric panels, as shown in Figure 4. 

The written description for the embodiment in Figure 10 

provides that “[a]ll of the described panels are fabric covered, preferably by two layers of fabric which are sewn 

together and retained along their edges by a binding 210.” 

’104 Patent, col.6, ll.11-14. The written description further 

indicates that the binding used “is substantially similar to 
33 OUTSIDE THE BOX v. TRAVEL CADDY

or the same as previously described with respect to the 

other embodiments of the invention.” Id. at col.6, ll.39-43. 

Figure 4 of the ’104 patent is the only figure depicting 

the binding used in the claimed invention. The specification 

states that “[a]n important aspect of the invention is the 

utilization of a single closed loop binding 40 in FIG. 4 which 

serves to join all of the flexible fabric component panels or 

parts 20, 22, 28 of the carrying case.” ’104 patent, col.3, 

ll.36-39 (emphasis added). As Union Rich correctly notes, 

the specification does not disclose any other way to join the 

panels. Because Figure 4 is the only representation of 

binding of the panels, and the written description states 

that the binding used for the embodiment in Figure 10 is 

“substantially similar to or the same” as that previously 

described, it follows that the binding in Figure 10 is the 

same as that described in Figure 4. In other words, the 

portion of Figure 10 that appears to stick out from the end 

panel – which Travel Caddy points to as evidence that the 

bottom panel extends beyond the end panel – is actually the 

binding of the panels. 

Given the language in the specification, we agree with 

the district court’s construction of “between” to exclude 

embodiments where the bottom, front, or back panels extend 

beyond the edges of the end panels. We decline the dissent’s 

invitation to substitute its own claim construction for that of 

the district court and a prior panel of this court and to 

engage in appellate fact-finding. Because we find that the 

district court’s claim construction was correct, we affirm its 

decision granting summary judgment of noninfringement 

with respect to the ProTool bag. 
OUTSIDE THE BOX v. TRAVEL CADDY 34

D. Electricians Bag II

The district court granted summary judgment of no infringement as to Electricians Bag II; this is the modified 

design to which Union Rich switched after controversy arose 

concerning Electricians Bag I. The Electricians Bag II has 

“reinforced boards placed in between the fabric of the front 

and back panels.” Infringement op., at *6 n.2. These reinforced boards are made of plywood. The district court 

construed “flexible fabric . . . panel” to mean “[a] panel made 

of a fabric that is capable of being bent or flexed.” Id. at *22 

(quoting Claim Construction op., at *3), and held that the 

rigid plywood boards, although covered by fabric, precluded 

infringement by the Electricians Bag II. 

Travel Caddy argues that the district court’s construction of “flexible fabric front panel” is erroneous, for the front 

and back panels are made of fabric, and the use of “comprising” in the claim does not exclude the addition of plywood to 

the fabric panels. We do not discern such error, for we 

agree with the district court that “flexible fabric front panel” 

is not reasonably construed to include a plywood-stiffened 

fabric panel. Although “[i]t is fundamental that one cannot 

avoid infringement merely by adding elements if each 

element recited in the claims is found in the accused device,” 

A.B. Dick Co. v. Burroughs Corporation, 713 F.2d 700, 703 

(Fed. Cir. 1983), here the addition of plywood to the fabric 

panels removed the flexibility of the fabric. The usage 

“comprising” means that additional components may be 

present in the device, but does not change the elements that 

are stated in the claim. Power Mosfet Techs., L.L.C. v. 

Siemens AG, 378 F.3d 1396, 1409 (Fed. Cir. 2004). The 

plywood is not simply an additional element, but a material 

change in the fabric panel. We agree that the plywood 

board is “an additional element [that] changed the structure 
35 OUTSIDE THE BOX v. TRAVEL CADDY

of the purported infringing object such that it could not 

infringe.” Outside the Box, 260 F. App’x at 321. 

The summary judgment of noninfringement as to Electricians Bag II is affirmed. 

SUMMARY

The judgment that the ’992 and ’104 patents are unenforceable for inequitable conduct is reversed. The rulings of 

invalidity of claims of the ’992 and ’104 patents are vacated; 

we remand for redetermination of the issue of obviousness 

of the ’992 patent and claims 1-4, 6-11, 13-22, 24-29, and 31-

32 of the ’104 patent.9 We affirm: (1) the unchallenged 

judgment of infringement by Union Rich’s Electricians Bag 

I; and (2) the judgment of noninfringement by the ProTool 

Bag and the Electricians Bag II. We remand for determination of remedy with respect to infringement by the Electricians Bag I. 

Each party shall bear its costs on this appeal. 

AFFIRMED IN PART, VACATED IN PART, 

REVERSED IN PART, and REMANDED 

 9 Of course, we recognize that, given our ruling regarding noninfringement, Union Rich may choose not to 

pursue its counterclaim of invalidity on obviousness 

grounds. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

OUTSIDE THE BOX INNOVATIONS, LLC (doing 

business as Union Rich USA), 

Plaintiff-Appellee, 

AND

BONAKA LIMITED BONAKA, PLASTIC 

MANUFACTURING CO., LTD., 

AND UNION RICH PLASTIC FACTORY, LTD., 

Counterclaim Defendants-Appellees, 

AND

CHRISTOPHER URE, MATT WILLIAMS, TERRY 

KINSKEY AND LYNN MARTINEAU, 

Counterclaim Defendants, 

v. 

TRAVEL CADDY, INC. 

Defendant/CounterclaimantAppellant, 

AND

ROOSTER PRODUCTS (doing business as The Rooster 

Group),

Defendant/Counterclaimant. 

__________________________ 

2009-1171 

__________________________ 
OUTSIDE THE BOX v. TRAVEL CADDY 2

Appeal from the United States District Court for the 

Northern District of Georgia in Case No. 1:05-CV-2482, 

Senior Judge Orinda D. Evans. 

__________________________ 

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part. 

I concur in much of the court’s decision, but respectfully dissent in three areas, summarized as follows: 

First, the panel majority states that misstatement of 

small entity status is per se material to patentability, and 

thus can render the patent permanently unenforceable for 

“inequitable conduct.” Although the panel majority 

correctly acts to reverse the district court’s factual finding 

of intent to deceive, my colleagues leave intact the district 

court’s flawed criterion of per se materiality. Thus the 

panel majority continues to endorse the principle of 

elimination of patent rights based on miscalculation of a 

fee. Statute, regulation, and precedent do not support 

this treatment. 

Second, the panel majority states that the pretrial 

claim construction on interlocutory appeal of a preliminary injunction is the “law of the case,” and cannot be 

reviewed on final appeal of the district court’s final judgment. However, a preliminary injunction ruling is based 

on likelihoods and equities, and does not insulate the 

issues from appeal of the final judgment. The panel 

majority is incorrect in suggesting that such preliminary 

rulings are the law of the case. 

Third, the panel majority construes the patent claims 

to exclude the preferred embodiment shown in Figure 10 

of the patent. The accused ProTool Bag is identical to the 

bag in Figure 10. However, the court construes the claims 

to exclude Figure 10, and thus to avoid infringement. 
3 OUTSIDE THE BOX v. TRAVEL CADDY

That construction is incorrect, as is the decision of noninfringement based on that construction. 

I 

THE SMALL ENTITY FEE

Travel Caddy has fewer than five hundred employees. 

However, the small entity fee-reduction regulation provides an exception to fee reduction when the small entity 

has licensed the patent to a large entity. Travel Caddy 

had a distributorship agreement with The Rooster Group, 

which was not a small entity when the employees of its 

Mexican subsidiary are counted. This distributorship 

agreement, in addition to the commercial terms of supply, 

price, payment, etc., authorized The Rooster Group to 

obtain the Travel Caddy products from an alternate 

source if Travel Caddy can not meet the alternative 

source’s price terms; the distributorship agreement provided that if this occurred “Rooster will pay a Royalty of . . 

. 5% for patented and patent pending items.” This contingent arrangement was held by the district court to defeat 

Travel Caddy’s small entity status. 

A 

On reviewing the district court’s ruling of inequitable 

conduct, the panel majority holds that “a false assertion of 

small entity status [is] per se material.” Maj. op. at 13. 

Although the panel majority also states that “we need not 

decide that question” of materiality, id., they do decide 

the question of materiality, for they decline to correct the 

district court’s ruling that improper payment of the small 

entity fee is material to patentability. 

On the question of intent to deceive, the panel majority correctly rules that deceptive intent was not established. The district court’s ruling that attorney error 

establishes deceptive intent when the attorney is experi-
OUTSIDE THE BOX v. TRAVEL CADDY 4

enced is surely not supportable as applied to the payment 

of an incorrect fee. The principle of Therasense, Inc. v. 

Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) 

(en banc) should be applied, for the “affirmative acts of 

egregious misconduct” contemplated in Therasense relate 

to the substance of patentability, not the payment of an 

incorrect fee. In addition, the policy embodied in 37 

C.F.R. §1.28(c) shows recognition of the possibility of 

error, and the intention that such error would be correctable without penalty. This court should be mindful of 

opening another path whereby “[l]eft unfettered, the 

inequitable conduct doctrine has plagued not only the 

courts but also the entire patent system.” Therasense, 

649 F.3d at 1289. 

My colleagues err in ruling that the filing of the small 

entity statement by affidavit renders the incorrect statement “per se material.” Immateriality of an affidavit that 

is not the basis of the patent grant was long ago established. In Corona Cord Tire Co. v. Dovan Chem. Corp., 

276 U.S. 358, 374 (1928), the Court stated the inappropriateness of extinguishing a patent for a misrepresentation 

that did not affect patentability, stating that 

the affidavits, though perhaps reckless, were not 

the basis for [the grant of the patent] or essentially material to its issue. The reasonable presumption of validity furnished by the grant of the 

patent, therefore, would not seem to be destroyed. 

The en banc court reiterated in Therasense that “this 

doctrine [inequitable conduct] should only be applied in 

instances where the patentee’s misconduct resulted in the 

unfair benefit of receiving an unwarranted claim.” 649 

F.3d at 1292; see id. (“[E]nforcement of an otherwise valid 

patent does not injure the public merely because of misconduct, lurking somewhere in patent prosecution, that 
5 OUTSIDE THE BOX v. TRAVEL CADDY

was immaterial to the patent’s issuance.”). The court’s 

equivocation on materiality and intent based on error in 

small entity status simply adds uncertainty when such is 

unwarranted. 

B 

The underlying question is whether a contingent patent license to a distributor, although not implemented, 

defeats small entity status as a matter of statutory interpretation. The district court so held. The panel majority 

does not discuss this holding; leaving it as a cloud on 

possibly many small businesses. This issue warrants 

review. 

II 

LAW OF THE CASE 

The “law of the case” does not apply to preliminary 

rulings made on pretrial motion. My colleagues hold that 

this court’s prior review of a pretrial denial of a motion for 

injunction pendente lite may be treated as the law of the 

case, without review of the information adduced at trial. 

That is not the rule, and for sound reason, as illustrated 

herein. The result of the majority’s shortcut is its failure 

to rethink the application of the claims to the patented 

tool bag leading to the majority’s retention of an erroneous claim construction. 

The district court’s ruling on motion for a preliminary 

injunction is based on likelihoods, equities, and discretion, 

and receives interlocutory review on those grounds. The 

preliminary decision and its premises are not the “law of 

the case,” and these issues cannot be refused appellate 

review on final judgment. See Glaxo Grp. Ltd. v. Apotex, 

Inc., 376 F.3d 1339, 1346 (Fed. Cir. 2004) (“An appellate 

court’s preliminary injunction opinion has no conclusive 

bearing at the trial on the merits and is not binding on a 
OUTSIDE THE BOX v. TRAVEL CADDY 6

subsequent panel.”); Mendenhall v. Barber–Greene Co., 26 

F.3d 1573, 1581 (Fed. Cir. 1994) (“[A] decision by an 

appellate court on an interlocutory appeal is no more final 

than the appealed decision itself.”); cf. Bio–Technology 

Gen. Corp. v. Genentech, Inc., 267 F.3d 1325, 1329 (Fed. 

Cir. 2001) (stating that the court was bound by two interlocutory appeals of the same issues of claim construction). 

Before final judgment, a court may “reconsider any 

portion of its decision and reopen any part of the case.” 

Marconi Wireless Tel. Co. v. United States, 320 U.S. 1, 47 

(1943). This rule recognizes that interim rulings may be 

appropriate as the proceedings unfold, although interim 

findings and conclusions may be changed by the revelations of trial. A pretrial motion for injunction pendente 

lite requires an estimation of likelihoods; it does not 

pretend to be a final decision. I need not belabor the 

judicial experience whereby witnesses and documents and 

argument may affect the outcome of a situation whose 

“likelihood” may have appeared otherwise at the pretrial 

preliminary injunction stage. 

Thus the Court has reiterated that findings of fact 

and conclusions of law at the preliminary injunction stage 

are not binding. Univ. of Texas v. Camenisch, 451 U.S. 

390, 395 (1981) (“The purpose of a preliminary injunction 

is merely to preserve the relative positions of the parties 

until a trial on the merits can be held. Given this limited 

purpose, and given the haste that is often necessary if 

those positions are to be preserved, a preliminary injunction is customarily granted on the basis of procedures that 

are less formal and evidence that is less complete than in 

a trial on the merits.”). This protocol recognizes that such 

motions are decided on likelihoods and equities before all 

the evidence is in. 
7 OUTSIDE THE BOX v. TRAVEL CADDY

Nonetheless, the panel majority declines to revisit 

this court’s pretrial ruling on claim construction. Precedent counsels otherwise. In SEB S.A. v. Montgomery 

Ward & Co., Inc., 594 F.3d 1360, 1368 (Fed. Cir. 2010), 

the court held that the “prior affirmance of the district 

court’s preliminary injunction order does not make the 

district court’s claim construction in its 1999 opinion the 

law of the case.” 

My colleagues propose to avoid precedent by stating 

that there was a Markman hearing and “the parties have 

not identified any new factual findings.” Maj. op. 29–30. 

However, this court in SEB v. Montgomery Ward rejected 

that position, for the district court in SEB had explained 

that “[t]he application for the preliminary injunction was 

combined with the Markman hearing.” 77 F. Supp. 2d 

399, 400 (S.D.N.Y. 1999), aff’d, 243 F.3d 566 (Fed. Cir. 

2000) (Table). My colleagues’ equivocal ruling today 

simply creates conflict with precedent, as well as moves 

patent cases further from standard litigation practices 

and safeguards. 

III 

INFRINGEMENT

The panel majority holds that the accused ProTool 

Bag, which is a copy of Travel Caddy’s bag shown in 

Figure 10 of the ’104 patent, does not infringe the claims 

directed to Figure 10. The panel majority construes the 

claims of the patents to exclude the bag in Figure 10, and 

thus to exclude infringement by the bag that Union Rich 

copied from Travel Caddy’s embodiment of Figure 10: 
OUTSIDE THE BOX v. TRAVEL CADDY 8

The question of infringement related principally to the 

terms “panels” and “continuous closed loop binding,” in 

claim 19 of the ’104 patent: 

19. A case for car[ry]ing tools or other items 

comprising, in combination: 

a planar, fabric covered first end panel having 

a generally rigid lower section with a bottom side 

edge, a front side edge and a back side edge, and 

an upper section; 

a second, planar, fabric covered end panel 

constructed substantially identical to the first end 

panel and having a configuration generally congruent with the first end panel and parallel to and 

spaced from the first end panel and, said second 

panel also including a bottom edge, a front side 

edge and a back side edge; 

a planar, generally rigid, fabric covered, rectangular perimeter shaped, bottom panel between 

the first and second end panels to form a generally three sided, generally rigid, fabric covered box 

with the first and second end panels extending 

upwardly from the bottom panel, said bottom 
9 OUTSIDE THE BOX v. TRAVEL CADDY

panel including a front edge, a back edge, and first 

and second side edges; 

a first, flexible, fabric front panel having a top 

edge and joined between the front side edges of 

the first and second end panels; 

a second, flexible fabric back panel having a 

top edge and joined between the backside edges of 

the first and second end panels; and 

a continuous, closed loop binding extending 

over fabric covering the bottom panel and the 

flexible panels, said binding stitched thereto along 

the side edges of the bottom panel and the side 

edges and top edges of the flexible panels. 

Viewing “panels” and “binding” as technical terms, “[a] 

technical term used in a patent document is interpreted 

as having the meaning that it would be given by persons 

experienced in the field of invention, unless it is apparent 

from the patent and the prosecution history that the 

inventor used the term with a different meaning.” 

Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 

1578 (Fed. Cir. 1996). 

Union Rich argued that the ProTool Bag does not 

have the claimed edges of the bottom panel and front and 

back panels as described in the specification as extending 

beyond the end panels. However, even Union Rich’s 

expert, Dr. R. Parachuru, agreed that Figure 10 shows a 

bag whose bottom panel extends beyond the end panel: 

Q. But as you sit here -- and would this portion 

that extends beyond the end panel that appears at 

the bottom of item 202 of Figure 10, does this appear to be a part of the bottom panel? 

A. Yes, to me, that’s part of the bottom panel. 
OUTSIDE THE BOX v. TRAVEL CADDY 10

Q. And again, it extends beyond the end panels? 

A. End panels, yes. 

Q. Is that a yes? 

A. Yes. 

Parachuru Dep. 235:10–20 (June 6, 2006), J.A. 2194. 

This is not complex technology, and the invention is 

illustrated in the drawing of the device that is the subject 

of the claims. The district court construed “continuous, 

closed loop binding” of claim 19 to mean “[a] binding that 

is folded over and stretched to provide a means to join the 

fabric edges of component parts of the case in a closed 

loop; a ‘continuous’ closed loop binding extends uninterrupted with no apparent beginning or ending point.” 

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

No. 05-cv-2482, 2006 U.S. Dist. LEXIS 100640, at *3 

(N.D. Ga. Sept. 18, 2006). The parties do not dispute this 

definition. The binding is defined in the specification as 

“extending over fabric covering the bottom panel and the 

flexible [front and back] panels” and stitched to the panels 

“along the side edges of the bottom panel and the side 

edges and top edges of the flexible panels.” ’104 patent, 

col.8 ll.57-61. It does not conflict with the description of 

the edges of the panels, as the patent drawings make 

clear. My colleagues’ view that the binding cannot be an 

edge is contrary to the rules of construction. 

The patent drawings illustrate the invention, and 

generally represent preferred embodiments of the invention. See Primos, Inc. v. Hunter’s Specialties, Inc., 451 

F.3d 841, 848 (Fed. Cir. 2006) (the patent drawings are 

evidence of the claimed invention). A claim construction 

that excludes a preferred embodiment “is rarely the 

correct interpretation; such an interpretation requires 

highly persuasive evidentiary support.” Modine Mfg. Co. 
11 OUTSIDE THE BOX v. TRAVEL CADDY

v. Int’l Trade Comm’n, 75 F.3d 1545, 1550 (Fed. Cir. 

1996). As stated in Hoechst, 78 F.3d at 1581 “it is 

unlikely that an inventor would define the invention in a 

way that excluded the preferred embodiment, or that 

persons of skill in this field would read the specification in 

such a way.” 

It is highly unusual to construe routine patent claims 

so as to exclude the embodiments in the drawings, when 

there is no prosecution disclaimer. The purpose of patent 

drawings is to focus the subject matter on which a patent 

is sought. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 

1277 (Fed. Cir. 2008) (rejecting claim construction that 

excluded the embodiment in the patent drawing); MBO 

Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 

1333 (Fed. Cir. 2007) (rejecting claim construction of 

“adjacent” to mean contiguous or connected when patent 

drawings illustrated parts next to each other but not 

connected); Funai Elec. Co. Ltd. v. Daewoo Elecs. Corp., 

616 F.3d 1357, 1371 (Fed. Cir. 2010) (declining to require 

that a series circuit junction point lie between the erasing 

heads when the patent drawing shows a series junction 

point not located between the two erasing heads); Primos, 

451 F.3d at 848 (declining to require the term “engaging” 

to mean interlocking when patent drawings illustrated 

touching). 

The panel majority’s claim construction to exclude the 

embodiment in Figure 10 is incorrect. On the correct 

claim construction, there is no dispute that the ProTool 

Bag infringes claim 19. I respectfully dissent.