Federal Circuit Tapes Off Claim Construction

• Published date: 13 April 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Brady Nash, Courtney A. Bolin, Adriana L. Burgy and Stacy Lewis

Holding

In Lowe v. ShieldMark, Inc., No. 2021-2164, 2022 WL 636100 (Fed. Cir. Mar. 4, 2022), the United States Court of Appeals for the Federal Circuit ("Federal Circuit") vacated and remanded a district court's decision granting summary judgment of noninfringement and affirmed the district court's dismissal of the plaintiff's declaratory judgment claim and denial of attorney fees.

Background

Lowe and ShieldMark both sell floor marking tape. Id. at *2. Each party owns a patent that covers its tape product. Id. Lowe owns U.S. Patent No. 10,214,664 ("the '664 patent"), which is directed to an improved tape with features that prevent floor cleaning devices or skids from unintentionally lifting or delaminating tape from the floor. Id. at *3. ShieldMark owns U.S. Patent No. 10,738,220 ("the '220 patent"), which is directed to a polymeric adhesive tape with features that prevent wearing, tearing, cracking, and breaking from heavy and repeated traffic. Id. at 5.

In April 2019, Lowe sued ShieldMark for infringement of certain claims of the '664 patent. In response, ShieldMark raised a defense of noninfringement. Id. at *6. In August 2020, after ShieldMark's '220 patent issued, ShieldMark amended its answer to add a counterclaim that Lowe infringed its newly issued patent. Id. at *7. In response, Lowe amended its complaint to include a declaratory judgment claim for invalidity and unenforceability of the '220 patent. Id.

Subsequently, Lowe altered the design of its marking tape such that "it arguably no longer infringe[d]" the '220 patent. Id. And ShieldMark, in turn, provided Lowe a covenant not to sue for any past or present infringement the '220 patent. Id.

In March 2021, after the covenant not to sue was in place, ShieldMark moved to (1) voluntarily dismiss with prejudice its '220 patent infringement suit against Lowe, and (2) dismiss Lowe's corresponding declaratory judgment claim for lack of subject matter jurisdiction. Id. at *7-8. Lowe opposed both motions and filed a motion for summary judgment of invalidity and unenforceability of the '220 patent. Id. at *8. In reviewing the parties' motions, the district court issued two decisions. First, the district court granted summary judgment that ShieldMark did not infringe Lowe's '664 patent claims. Id. Second, the district court dismissed all claims concerning ShieldMark's '220 patent. Id. at *9.

Subsequently, Lowe appealed the district court's decisions. Id.

Federal Circuit Decision

The Federal Circuit (1)...