Southco, Inc. v. Fivetech Technology Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

SOUTHCO, INC.,
Plaintiff-Appellant

v.

FIVETECH TECHNOLOGY INC.,
also known as Wu Xiang Technology Company, Ltd.,
also known as 5tech,
Defendant-Appellee
______________________

2014-1390
______________________

Appeal from the United States District Court for the
Eastern District of Pennsylvania in No. 2:10-cv-01060-
MAM, Judge Mary A. McLaughlin.
______________________

Decided: April 10, 2015
______________________

BENJAMIN E. LEACE, Ratner Prestia, Berwyn, PA, ar-
gued for plaintiff-appellant. Also represented by BRIAN
SHERWOOD SEAL, ANDREW J. KOOPMAN, CHRISTOPHER H.
BLASZKOWSKI.

GLENN WALTHALL RHODES, Rhodes Attorneys at Law
P.C., San Francisco, CA, argued for defendant-appellee.
Also represented by HEATHER H. FAN; ELIZABETH S.
2 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

FENTON, Chamberlain, Hrdlicka, White, Williams &
Martin, P.C., West Conshohocken, PA.
______________________

Before MOORE, PLAGER, and WALLACH, Circuit Judges.
MOORE, Circuit Judge.
Southco, Inc. appeals from the orders of the United
States District Court for the Eastern District of Pennsyl-
vania granting summary judgment of noninfringement of
U.S. Patent Nos. 5,851,095; 6,280,131; and 6,468,012,
granting summary judgment of noninfringement of U.S.
Trademark Nos. 2,478,685 and 3,678,153, and denying a
motion to strike an expert declaration. For the reasons
set forth below, we affirm-in-part, reverse-in-part, vacate-
in-part, and remand.
BACKGROUND
Southco sued Fivetech Technology Inc., alleging that
Fivetech’s captive screws infringed various claims of the
asserted patents and trademarks. A captive screw is a
particular type of fastener for attaching two parts. The
patents at issue claim particular types of captive screws
that contain, among other things, a hollow piece, called a
ferrule, a screw within the ferrule, and a knob secured to
the head of the screw. The ferrule is configured to attach
to the first part and is configured so that the screw does
not fall out of the captive screw assembly while the cap-
tive screw is used to join the two parts.
The district court found that the accused products did
not infringe any of the asserted claims because the prod-
ucts did not meet limitations requiring that the knob and
ferrule be “attached,” that the screw have an “annual
chamfer,” that the knob and screw be “rigidly secure,” and
that “material from [the] knob [fill the annular] chamfer.”
The district court found that the accused products did not
infringe Southco’s trademarks because Fivetech had not
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 3

used the accused mark in commerce in the United States.
Southco appeals. We have jurisdiction over this appeal
under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the ultimate question of claim construction
de novo and factual findings underlying the ultimate
question for substantial evidence. See Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015).
Here, we review the district court’s claim constructions de
novo because the intrinsic evidence determines the proper
construction. Id. at 841. Under Third Circuit law, we
review a grant of summary judgment de novo. Keurig,
Inc. v. Sturm Foods, Inc., 732 F.3d 1370, 1372 (Fed. Cir.
2013) (citing Nicini v. Morra, 212 F.3d 798, 805–06 (3d
Cir. 2000) (en banc)). Summary judgment is appropriate
if “the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judg-
ment as a matter of law.” Fed. R. Civ. P. 56(a). At the
summary judgment stage, we credit the nonmovant’s
evidence and draw all justifiable inferences in its favor.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
I. ’095 and ’131 patents
The district court granted summary judgment that
Fivetech did not infringe claims 1–15 of the ’095 patent or
claims 1–15 of the ’131 patent. It concluded there was no
literal infringement based on its construction of the claim
term “attached.” It concluded that there was no in-
fringement under the doctrine of equivalents because the
all elements test was not met and the accused product
“uses a washer, which is entirely absent from the Southco
patents.” Southco, Inc. v. Fivetech Tech. Inc., No. 10-1060,
2012 WL 246253, at *5–6 (E.D. Pa. Jan. 25, 2012) (’095
and ’131 Order).
Figure 3 of the ’095 and ’131 patents shows a captive
screw having a screw head (24), threaded shaft (22),
4 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

hollow knob (30) and hollow ferrule (50). ’095 patent col.
3 ll. 3–8. Figure 2 shows the same captive screw when
the knob (30) is in the extended position and the threaded
shaft (22) is retracted. Id. col. 2 ll. 21–24. In this posi-
tion, the first annular flange (35) on the knob (30) and the
second annular flange (56) on the ferrule (50) are in
contact. Id. col. 5 ll. 32–34.
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 5

The parties agree that claim 1 of the ’095 patent is
representative of the asserted claims of the ’095 and ’131
patents. Claim 1 recites:
6 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

1. A captive screw attachable to a panel, for at-
taching the panel to a surface, the surface hav-
ing a threaded hole, the captive screw
comprising:
a) a screw having a head portion and a threaded
shaft,
...
c) a thin-walled, cylindrical, hollow knob compris-
ing a first end having an annular top surface, a
second end, and an inner surface;
...
e) a hollow ferrule having a first end and a second
end through which the threaded shaft
slides, . . . and a threaded shaft captivation
means, said threaded shaft captivation means
adjacent the second end, wherein the second
end of the ferrule is slidably and rotatably at-
tached to the knob such that when the threaded
shaft is in a retracted position, the threaded
shaft captivation means prevents the ferrule and
the knob from separating and when the thread-
ed shaft is in an extended position, the flat, an-
nular bottom surface of the head portion of the
screw is in contact with the second end of the
ferrule.
’095 patent col. 6 ll. 2–32 (emphasis added).
A. Construction of “Attached”
The district court concluded that the asserted claims
of the ’095 and ’131 patents, which recite that the knob
and ferrule are slidably and rotatably “attached,” require
that the knob be directly connected to the ferrule. The
district court did not rely on extrinsic evidence in constru-
ing the claims. ’095 and ’131 Order, 2012 WL 246253, at
*4 n.7.
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 7

We agree with the district court’s construction.
Southco is correct that the ordinary meaning of “attached”
includes both direct and indirect attachment. However,
the claim requires more—namely that the ferrule and
knob are attached “such that when the threaded shaft is
in a retracted position, the threaded shaft captivation
means prevents the ferrule and the knob from separat-
ing.” ’095 patent col. 6 ll. 25–29. An indirect attachment
would not satisfy the limitation that the “the threaded
shaft captivation means prevents the ferrule and the knob
from separating” because if the ferrule and knob are
already separated—i.e., not directly attached—the
threaded shaft captivation means cannot prevent them
from separating.
Nothing in the specification compels a construction of
“attached” that includes indirect attachment. None of the
embodiments nor any discussion states that indirectly
attached parts are “attached.” Southco argues that two
passages in the specification support its position. We do
not agree. First, Southco argues that “attached” includes
indirect attachment because the patent discloses that
“[t]he screw is attachable to the first panel.” Id. col. 1 ll.
36–37. This passage does not support Southco because
the captive screw is directly attached to the first panel.
See id. col. 1 ll. 38–44 (“The captive screw has . . . a fer-
rule that attaches to the upper panel.”). Second, Southco
argues that “attached” includes indirect attachment
because the patent discloses that the screw “is used for
attaching the first panel to a lower surface . . . having a
threaded hole.” Id. col. 1 ll. 37–38. This passage does not
support Southco because the first panel and lower surface
touch. See id. Fig. 3. Accordingly, the specification’s use
of “attached” is consistent with its ordinary meaning as
used in the claim: direct attachment.
Although claim 1 of the ’131 patent uses “engaged” in-
stead of “attached,” both parties agree that the terms
should be construed similarly. We agree no separate
8 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

analysis is necessary. As used in the asserted claims of
the ’095 and ’131 patents, “attached” means direct at-
tachment and “engaged” means direct engagement.
B. Infringement
The district court concluded that Fivetech does not
literally infringe under its construction because the knob
and ferrule in Fivetech’s products are not directly con-
nected. ’095 and ’131 Order, 2012 WL 246253, at *4–5.
Southco does not challenge the district court’s conclusion
of no literal infringement under the district court’s con-
struction.
The court concluded that Fivetech does not infringe
under the doctrine of equivalents because the attachment
between the knob and ferrule required by the claims is
absent in the products, and the all elements rule was not
satisfied. Id. at *5–6. Southco’s doctrine of equivalents
argument is similar to its claim construction argument:
direct attachment includes indirect attachment. No
reasonable jury could find equivalence here because doing
so would require determining that parts not directly
attached are equivalent to parts that are directly at-
tached—the very thing that the construction excludes.
See Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1335
(Fed. Cir. 2014). Because the claim language differenti-
ates between direct attachment and indirect attachment,
we agree with the district court that Fivetech’s captive
screws are not equivalent to the claimed invention. We
therefore affirm the district court’s grant of summary
judgment of noninfringement as to the ’095 and ’131
patents.
II. ’012 Patent
The district court granted summary judgment that
Fivetech does not infringe claims 1–14 of the ’012 patent.
Relying on a late-disclosed expert opinion, it determined
that Fivetech’s products do not satisfy the “annular
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 9

chamfer” limitation. Based on its constructions of “rigidly
secure” and “material from said knob fills said chamfer,”
it determined that Fivetech’s products do not satisfy
claims reciting those limitations.
A. “Annular chamfer”
The district court concluded that Fivetech does not in-
fringe claims 2–5 and 7–14 of the ’012 patent because the
accused products do not meet the limitation that the
captive screw include a screw head with an “annular
chamfer.” Southco, Inc. v. Fivetech Tech. Inc., No. 10-
1060, 2013 WL 5298576, at *6–7 (E.D. Pa. Sept. 20, 2013)
(’012 Order). Figure 10 of the ’012 patent shows an em-
bodiment of a captive screw with a chamfer (29). ’012
patent col. 4 ll. 24–26.

Exemplary claim 7 recites:
7. A captive screw attachable to a panel, for at-
taching the panel to a surface, the surface hav-
10 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

ing a threaded hole, the captive screw compris-
ing:
a) a screw having a head portion and a shaft hav-
ing at least a threaded portion, said head por-
tion having a top surface and a bottom surface,
said head portion further having an annular
chamfer peripheral to said bottom surface of
said head portion;
b) a knob secured to said head portion; and
c) a ferrule having a first end and a second end
through which said shaft extends, said ferrule
having a panel attachment means at said first
end to secure the captive screw to the panel.
’012 patent col. 7 ll. 3–16 (emphasis added).
Fivetech’s motion for summary judgment, and the
court’s decision, relied on an expert declaration from
Fivetech’s expert Dr. David Dornfeld. Fivetech did not
disclose Dr. Dornfeld’s noninfringement opinion until
moving for summary judgment, after the deadline for
disclosing expert reports under the court’s scheduling
order. Accordingly, Southco moved to strike the Dornfeld
Declaration as untimely and prejudicial, arguing that it
did not have an opportunity to depose Dr. Dornfeld. The
Court denied Southco’s motion to strike because the late
disclosure was not prejudicial. Southco, Inc. v. Fivetech
Tech. Inc., No. 10-1060, J.A. 46–48, 47 (E.D. Pa. Nov. 12,
2013) (Motion to Strike Order).
Under Third Circuit law, we review a decision to ad-
mit evidence for abuse of discretion. Energy Transp.
Group, Inc. v. William Demant Holding A/S, 697 F.3d
1342, 1355 (Fed. Cir. 2012); Pineda v. Ford Motor Co., 520
F.3d 237, 243 (3d Cir. 2008). The Third Circuit has held
that, in considering the exclusion of untimely disclosed
evidence, it considers the factors listed in Meyers v. Pen-
nypack Woods Home Ownership Ass’n, 559 F.2d 894 (3d
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 11

Cir. 1977), overruled on other grounds by Goodman v.
Lukens Steel Co., 777 F.2d 113 (3d Cir. 1985). In re TMI
Litig., 193 F.3d. 613, 721 (3d Cir. 1999). Although the
district court did not articulate the Pennypack factors in
its decision, it considered whether the late disclosure
prejudiced Southco—which is the first Pennypack factor.
Pennypack, 559 F.2d at 904 (“(1) the prejudice or surprise
in fact of the party against whom the excluded witnesses
would have testified”). Specifically, the court found that
there was no prejudice because Southco responded to the
Dornfeld Declaration in opposition to Fivetech’s motion
for summary judgment. Motion to Strike Order, at J.A.
47.
We hold that the district court clearly erred in finding
Southco was not prejudiced. Fivetech did not disclose Dr.
Dornfeld’s opinion in an expert report as required by both
the Federal Rules of Civil Procedure and the district
court’s scheduling order. When Fivetech supported its
summary judgment motion with Dr. Dornfeld’s declara-
tion, Southco objected because Dr. Dornfeld’s opinion was
untimely. And, even though Southco did not have the
opportunity to depose Dr. Dornfeld to learn about his
tests and opinions, it presented expert testimony that Dr.
Dornfeld’s testing procedures were improper and his
conclusions unsupported. The court denied the motion to
strike, reasoning that Southco was not prejudiced because
it responded to Fivetech’s motion for summary judgment.
At the same time, the court granted Fivetech’s motion for
summary judgment, in part because it determined that
Southco’s expert’s response was conclusory. ’012 Order,
2013 WL 5298576, at *7. The district court abused its
discretion by failing to give Southco an opportunity to
depose Dr. Dornfeld, relying on his declaration, and then
faulting Southco for failing to rebut his opinion. There-
fore, we reverse the denial of the motion to strike the
Dornfeld Declaration. We need not, and do not, however,
decide whether the prejudice could be cured on remand.
12 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

Turning next to the grant of Fivetech’s motion for
summary judgment of noninfringement, we hold that
Southco presented evidence raising a question of material
fact. Fivetech produced engineering drawings of the
accused product that Southco argues depict an annular
chamfer. In opposing summary judgment, Southco’s
expert testified that the drawing shows “that there is a
chamfer on the screw head peripheral to the bottom
surface.” J.A. 3583. A drawing—produced by the defend-
ant—plausibly showing that a product includes a claim
limitation and testimony confirming the same is sufficient
evidence to present a question of material fact. Although
Southco carries the burden for proving infringement,
Fivetech carries the burden of showing there is no genu-
ine dispute of material fact when moving for summary
judgment. Thus, we reverse the grant of summary judg-
ment with respect to claims reciting an “annular cham-
fer.”
B. “Rigidly secure”
The district court determined that Fivetech does not
infringe claims 1, 6, 8–10, and 14 of the ’012 patent be-
cause the accused products do not meet the limitation
that the captive screw includes a knob that is rigidly
secured to the screw head. ’012 Order, 2013 WL 5298576,
at *9. In rendering its noninfringement judgment, the
district court concluded that “rigidly secure” requires
displacing knob material. The district court noted the
term “rigidly secure” is not defined in the claims or in the
specification of the ’012 patent but concluded that “rigidly
secure” required displacement because the specification
provides that “‘the screw head with the protrusions rigidly
secures the screw head to the inner surface of the knob
and provides a press-fit of the screw to the inner surface
of the knob.’” Id. at *8 (quoting ’012 patent col. 1 ll. 53–
56).
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 13

Figure 4 shows a portion of a captive screw with pro-
trusions (26). ’012 patent col. 2 ll. 33–34. According to
the specification, the screw (20) can be rigidly secured to
the knob by the protrusions (26), which provide a press-fit
whereby material in the knob is displaced by the protru-
sions. ’012 patent col. 3 ll. 31–38.

Exemplary claim 1 recites:
1. A captive screw attachable to a panel, for at-
taching the panel to a surface, the surface hav-
ing a threaded hole, the captive screw
comprising:
a) a screw having a head portion and a shaft hav-
ing at least a threaded portion, said head por-
tion having an outer perimeter and a plurality
of protrusions provided on said outer perimeter
of said head portion;
b) a knob having an inner surface, wherein said
protrusions rigidly secure said head portion to
said inner surface of said knob; and
14 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

c) a ferrule having a first end and a second end
through which said shaft extends, said ferrule
having a panel attachment means at said first
end to secure the captive screw to the panel.
’012 patent col. 6 ll. 14–28 (emphasis added).
We hold that the district court improperly limited the
claims of the ’012 patent to one method of rigid secure-
ment described in the specification. Claim 1 requires “a
knob having an inner surface, wherein said protrusions
rigidly secure said head portion to said inner surface of
said knob.” ’012 patent col. 6 ll. 21–23. Rigidly secure
has an ordinary meaning, namely that the component
parts are attached such that they do not separate during
normal operation. As the district court recognized, “rigid-
ly secure” is not defined in the intrinsic record and noth-
ing in the intrinsic record clearly and unmistakably
redefines the term.
Fivetech’s argument that the claim is limited by the
specification is unavailing. “The standards for finding
lexicography and disavowal are exacting.” GE Lighting
Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
(Fed. Cir. 2014). The abstract simply identifies a specific
way of making parts of the captive screw rigidly secure.
’012 patent, Abstract (stating that captive screw has
“protrusions integral to the outer perimeter of the head
portion of the screw to rigidly secure . . . the screw to the
inner surface of the knob . . . where the screw is pressed
into the knob from the underside of the knob”). Similarly,
the Summary of the Invention does not require displace-
ment for parts to be rigidly secure. Id. col. 1 ll. 41–44, 53–
55 (“The captive screw of the present invention has a
unique configuration in the means by which the screw
portion of the captive screw is mounted to the knob of the
captive screw” and that “the screw head with the protru-
sions rigidly secures the screw head to the inner surface
of the knob and provides a press-fit of the screw to the
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 15

inner surface of the knob.”). Finally, the embodiments in
the specification regarding the advantages of press-
fitting, meaning pushing the screw head into the knob,
are inapposite because the claim requires the parts be
rigidly secure, not press-fitted. Accordingly, we hold that
“rigidly secure” means “the component parts are attached
such that they do not separate during normal operation.”
C. “Material from said knob fills said chamfer”
The district court determined that Fivetech does not
infringe claims 2–5, 11, and 12 of the ’012 patent because
the accused products do not meet the limitation that
material from the knob fills the chamfer of the screw head
in the captive screw. ’012 Order, 2013 WL 5298576, at *8.
The district court construed “material from said knob fills
said chamfer” to require that knob material be displaced
into the chamfer.
Figure 11 shows the assembly of the captive screw af-
ter the screw is press-fitted into the knob (30). ’012
patent col. 2 ll. 65–67, col. 3 ll. 59–65. Figure 11 shows
how material (39) from the knob (30) flowed into the
chamfer (29). Id.

Exemplary claim 2 recites:
16 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

2. The captive screw according to claim 1, wherein
said head portion has a top surface and a flat,
annular bottom surface, said head portion fur-
ther has an annular chamfer peripheral to said
annular bottom surface of said head portion,
and material from said knob fills said chamfer.
’012 patent col. 6 ll. 28–33 (emphasis added).
We hold that the district court improperly limited
“material from said knob fills said chamfer” to a preferred
embodiment. Claim 2 requires that “said head portion
further has an annular chamfer peripheral to said annu-
lar bottom surface of said head portion, and material from
said knob fills said chamfer.” ’012 patent col. 6 ll. 31–33.
The ordinary meaning of this phrase is clear—material
from the knob flows into the chamfer. As the district
court noted, the word “displace” is not used in the claims
or specification with relation to the chamfer. Even though
the specification discloses a method of pressing a screw
with protrusions into the knob and such a method would
displace knob material, the claims do not require dis-
placement. Rather, the claims require that knob material
fill the chamfer, without specifying how the material does
so. Further, even though Southco argued in the reexami-
nation of the parent ’095 patent that the protrusions are
“a significant limitation” and pointed to the specification’s
language that the protrusions are satisfactory for the
purposes of the present invention, neither of those state-
ments clearly requires displacement to fill a chamfer. We
hold that “material from said knob fills said chamfer”
means that material from the knob flows into the cham-
fer.
* * *
We vacate the grant of summary judgment as to
claims 1–6 and 8–12 of the ’012 patent because the dis-
trict court did not apply the correct constructions for
“rigidly secure” and “material from said knob fills said
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 17

chamfer.” We reverse the grant of summary judgment as
to claims 7, 13, and 14 of the ’012 patent, which require
an “annular chamfer,” because Southco presented evi-
dence raising a genuine dispute of material fact.
III. The ’153 and ’685 Trademarks
The ’153 (left) and ’685 (middle) trademarks depict “a
circle of segmented curved lines.” E.g., Registration No.
3,678,153. The trademarks are placed on the knob of
Southco’s captive screws. The mark on the right is placed
on the knob of some of Fivetech’s captive screws. J.A.
269–81.

’153 Trademark ’685 Trademark Fivetech’s Mark

The district court granted Fivetech’s motion for sum-
mary judgment of noninfringement of the ’153 and ’685
trademarks because Fivetech did not use the trademarks
“in commerce.” Southco, Inc. v. Fivetech Tech. Inc., 982 F.
Supp. 2d 507, 511–12 (E.D. Pa. 2013) (Trademark Order).
Opposing summary judgment, Southco identified three
potential acts of infringement. First, it identified publica-
tion of Fivetech’s website, which includes a catalog depict-
ing captive screws with Fivetech’s mark. Second, it
identified Fivetech’s filing of a trademark application
March 25, 2010, in which Fivetech described its mark as
“a pattern of 5 wider ridges along the outer circumference
with a circle of 5 segmented curved lines interrupted by 5
18 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

pentagon shapes” and stated that the mark was “first
used in commerce at least as early as 03/10/2010, and is
now in use in such commerce.” J.A. 273–74. The applica-
tion was withdrawn and abandoned three months after it
was filed. Third, Southco identified Fivetech’s submission
of a quotation list to a customer in the United States that
identified part numbers, prices, quantities and lead times
for three Fivetech products.
The district court granted summary judgment of non-
infringement, determining that the Lanham Act did not
apply, concluding that “neither Fivetech’s website, prod-
uct catalogue, nor price quotes . . . can constitute ‘use in
commerce’ of [Fivetech’s mark because] [n]one of these
involved [Fivetech’s mark] being sold or transported in
United States commerce.” Trademark Order, 982 F.
Supp. 2d at 511–12. In addition, the district court found
that while “Southco’s argument that the offer to sell goods
in the United States can constitute infringement under
the Lanham Act is correct,” the defendant’s actions here
do not bring them within the purview of the Act because
there was no evidence that Fivetech shipped marked
products to the United States. Id. at 512.
The Lanham Act applies to “use in commerce” of “any
reproduction, counterfeit, copy, or colorable imitation of a
registered mark in connection with the sale, offering for
sale, distribution, or advertising of any goods or services
on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§ 1114(1)(a). Under the Act, “commerce” means “all
commerce which may lawfully be regulated by Congress.”
Id. § 1127. “[A] mark shall be deemed to be in use in
commerce—(1) on goods when—(A) it is placed in any
manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes such place-
ment impracticable, then on documents associated with
SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 19

the goods or their sale, and (B) the goods are sold or
transported in commerce.” Id.
The district court correctly granted summary judg-
ment of noninfringement. The district court properly
found that none of Southco’s evidence raised a genuine
question of material fact that Fivetech’s mark was not
used in United States commerce. The district court
properly found that Fivetech’s web-based catalog failed to
raise a genuine factual dispute regarding use of the
trademark in United States commerce because the print-
out of the catalog was an exhibit attached to Southco’s
Complaint without any authentication. Trademark
Order, 982 F. Supp. 2d at 510. Further, the catalog alone
does not prove that goods were used in commerce in the
United States. The district court properly found that
Fivetech’s trademark application is not a use in com-
merce. Although the application stated that products
were used in commerce, Southco has not provided any
evidence that Fivetech shipped infringing parts to the
United States. Finally, Southco’s evidence of an offer for
sale, via a quotation list including allegedly infringing
parts does not raise a genuine dispute of material fact
because there is no evidence that Fivetech ever shipped
parts bearing Fivetech’s mark to the United States.
To the extent Southco argues that the district court
erred by relying on an incorrect legal definition of “use in
commerce,” we disagree. None of the actions identified by
Southco include shipping infringing products to the
United States. Accordingly, Southco has not put forth
sufficient evidence to raise a genuine factual dispute
regarding the use of the accused trademark in United
States commerce.
CONCLUSION
We hold that the district court properly granted
summary judgment of noninfringement as to the ’095 and
’131 patents, improperly granted summary judgment of
20 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC.

noninfringement as to the ’012 patent because Southco
presented evidence raising a genuine question of material
fact as to noninfringement, improperly construed the
terms “rigidly secure” and “material from said knob flows
into said chamfer,” and properly granted summary judg-
ment of noninfringement as to the asserted trademarks.
Accordingly, the decision of the United States District
Court for the Eastern District of Pennsylvania is
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
No costs.