Digest of Southco, Inc. v. Fivetech Tech. Inc., No. 2014-1390 (Fed. Cir. Apr. 10, 2015) (non-precedential). On appeal from E.D. Pa. Before Moore, Plager, and Wallach.

Procedural Posture: Patentee and trademark holder Southco, Inc. appealed the District Court’s grant of summary judgment of non-infringement of U.S. Pat. Nos. 5,851,095; 6,280,131; and 6,468,012; summary judgment of non-infringement of U.S. Trademark Nos. 2,478,685 and 3,678,153; and denial of a motion to strike an expert declaration. CAFC affirmed-in-part, reversed-in-part, vacated-in-part, and remanded.

  • Claim Construction: CAFC affirmed District Court’s construction of the term “attached” in the ’095 and ’131 patents as requiring direct attachment, based on the term’s ordinary meaning and its use in the specification. CAFC reversed the District Court’s construction of the term “rigidly secure” in the ’012 patent and held that, based on the patent specification, it is properly construed as “the component parts are attached such that they do no separate during normal operation.” CAFC reversed the District Court’s construction of the term “material from said knob fills said chamfer” and held that it is properly construed as meaning that the material from the knob flows into the chamfer.
  •  Infringement:
    • Doctrine of Equivalents: CAFC affirmed District Court’s grant of summary judgment of non-infringement of the ’095 and ’131 patents under the doctrine of equivalents, finding that no reasonable jury could find equivalence between direct attachment and indirect attachment.
    • Untimely Expert Declaration: CAFC reversed the District Court’s denial of Southco’s motion to strike an expert declaration of non-infringement of the ’012 patent on the basis that it was untimely. Applying Third Circuit law, CAFC held that the District Court clearly erred by refusing to strike the expert declaration when it found that Plaintiff was not prejudiced, because Southco had not had the opportunity to depose the expert and provide a thorough rebuttal.
    • Material Fact: CAFC held that Southco presented evidence showing a question of material fact concerning non-infringement of claims 7, 13, and 14 of the ’012 patent, and reversed the District Court’s grant of summary judgment. CAFC also reversed the District Court’s grant of summary judgment of non-infringement of claims 1-6 and 8-12 of the ’012 patent because the District Court did not properly construe the terms “rigidly secure” and “material from said knob fills said chamfer.”
  • Trademarks: CAFC affirmed District Court’s grant of summary judgment of non-infringement of Southco’s trademarks because Fivetech did not use them in commerce. CAFC found that Fivetech’s web-based catalog failed to raise a genuine factual dispute because it was not authenticated and further, the catalog alone did not prove that goods were used in commerce in the United States. CAFC also found that Fivetech’s trademark application was not a use in commerce, and that an offer of sale, without any evidence that goods were shipped to the United States, was not evidence of commerce either.