Case: 21-2164 Document: 32 Page: 1 Filed: 03/04/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CLIFFORD A. LOWE, INSITE SOLUTIONS, LLC,
Plaintiffs-Appellants
v.
SHIELDMARK, INC., ADVANCED PLASTICS, INC.,
CROWN EQUIPMENT CORPORATION,
Defendants-Appellees
______________________
2021-2164
______________________
Appeal from the United States District Court for the
Northern District of Ohio in No. 1:19-cv-00748-JG, Judge
James S. Gwin.
______________________
Decided: March 4, 2022
______________________
RAY L. WEBER, Renner, Kenner, Greive, Bobak, Taylor
& Weber, Akron, OH, argued for plaintiffs-appellants. Also
represented by LAURA J. GENTILCORE.
RICHARD BURNS MEGLEY, JR., Lee Sheikh Megley &
Haan LLC, Chicago, IL, argued for defendants-appellees.
Also represented by DAVID J. SHEIKH; HOWARD WERNOW,
Sand, Sebolt & Wernow Co., LPA, Canton, OH.
______________________
Case: 21-2164 Document: 32 Page: 2 Filed: 03/04/2022
2 LOWE v. SHIELDMARK, INC.
Before LOURIE, BRYSON, and CUNNINGHAM, Circuit
Judges.
LOURIE, Circuit Judge.
Clifford A. Lowe and InSite Solutions, LLC (“Lowe”)
appeal from the decisions of the United States District
Court for the Northern District of Ohio (1) granting sum-
mary judgment following claim construction that Shield-
Mark, Inc. et al. (“ShieldMark”) does not infringe claims 1–
6, 10–16, and 20–21 of U.S. Patent 10,214,664 (“the ’664
patent”), (2) dismissing Lowe’s claim for a declaratory judg-
ment of invalidity and unenforceability of U.S. Patent
10,738,220 (“the ’220 patent”), and (3) denying attorney
fees. Lowe v. ShieldMark, Inc., No. 1:19-CV-748, 2021 WL
2530219 (N.D. Ohio June 21, 2021) (“Noninfringement De-
cision”); Lowe v. ShieldMark, Inc., No. 1:19-CV-748, ECF
No. 87 (N.D. Ohio May 19, 2021) (“Claim Construction Or-
der”), J.A. 1–18; Lowe v. ShieldMark, Inc., No. 1:19-CV-
748, ECF No. 104 (N.D. Ohio July 16, 2021) (“Dismissal”),
J.A. 27–31.
Because the district court erred in its claim construc-
tion, we vacate its decision granting summary judgment of
noninfringement and remand for further proceedings con-
sistent with this opinion. We affirm the court’s dismissal
of Lowe’s declaratory judgment claim and denial of attor-
ney fees.
BACKGROUND
Lowe and ShieldMark both sell floor marking tape, a
product used to mark boundaries on a floor. Each party
owns a patent that covers its tape product. Lowe owns the
’664 patent and sells its tape under the name “Superior
Mark.” J.A. 99. ShieldMark owns the ’220 patent and sells
its tape under the name “Mighty Line.” J.A. 383, 411. We
begin with a brief overview of both patents.
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LOWE v. SHIELDMARK, INC. 3
I
Lowe’s ’664 patent is directed to an improved floor
marking tape. The specification explains that existing tape
was “prone to being caught on floor cleaning devices or
skids.” ’664 patent, col. 1 ll. 28–30. The patented invention
purports to solve that problem by disclosing tape with fea-
tures that prevent it from “unintentional lifting and delam-
ination” from the floor. Id. Abstract. The “[t]ape 10
generally includes a body 20 having an upper surface 22
and a lower surface 24.” Id. col. 2 ll. 19–24. The body has
a “pair of lateral edges” that are “smoothly beveled,” thus
“prevent[ing] tape 10 from being unintentionally lifted.”
Id. col. 1 ll. 42–43; col. 2 ll. 23–27.
The specification further explains that “[i]n one embod-
iment,” the tape has shoulders “that define[] a recess” to
“hold[] the bulk of the adhesive.” Id. col. 1 ll. 56–59; see id.
Abstract. The shoulders “prevent[] the adhesive from flow-
ing out to the outer edge of the tape.” Id. col. 1 ll. 57–59.
Figure 1, below, shows the tape (10) with shoulders (32), a
recess (30), and a lower surface (24). Id. col. 2 ll. 28–33.
Claims 1 and 11 are the only independent claims.
Claim 1 reads as follows:
1. A floor marking tape adhered to a floor wherein
the floor marking tape establishes a boundary on
the floor; the combination comprising:
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4 LOWE v. SHIELDMARK, INC.
a floor having an uppermost surface; the upper-
most surface of the floor configured to support per-
sonnel and equipment thereupon;
a floor marking tape having a body that has an up-
per surface and a lower surface; the lower surface
facing the uppermost surface of the floor to which
the floor marking tape is adhered such that the
body of the floor marking tape is disposed above the
uppermost surface of the floor;
the body of the floor marking tape having a longi-
tudinal direction;
the body of the floor marking tape having first and
second lateral edge portions disposed in the lon-
gitudinal direction; each of the first and second lat-
eral edge portions having an upper surface and a
lower surface;
each of the first and second lateral edge portions
having a width defined in a direction perpendicular
to the longitudinal direction;
the upper surface of each lateral edge portion
comprising an extension of the upper surface of the
body;
the lower surface of each lateral edge portion be-
ing a flat coplanar extension of the lower sur-
face of the body;
the entire body of each lateral edge portion being
tapered with the upper surface of the first lateral
edge portion extending to the lower surface of the
first lateral edge portion and the upper surface
of the second lateral edge portion extending to
the lower surface of the second lateral edge por-
tion;
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LOWE v. SHIELDMARK, INC. 5
each of the first and second lateral edge portions
having a maximum height that is less than its
width; and
an adhesive securing the lower surface of the body
to the uppermost surface of the floor to establish a
boundary.
Id. col. 5 ll. 2–36 (emphases added).
Claim 11 similarly recites a “a floor marking tape ad-
hered to a floor” with a “body” and tapered “lateral edge
portions.” Id. col. 6 ll. 1–36 (emphasis added).
Claims 10 and 20 depend from claims 1 and 11, respec-
tively. They each recite that the tape has “a central body
portion disposed between the first and second lateral edge
portions.” Id. col. 5 ll. 61–67 (emphasis added); col. 6 ll. 61–
67 (emphasis added).
All of the remaining asserted claims depend from one
of the above noted independent claims.
This appeal concerns one aspect of the claims: whether
they require the tape to have “shoulders” and a “recess”
such that it does not lie flat.
II
ShieldMark’s ’220 patent is directed to “a polymeric ad-
hesive tape” with features that purport to prevent “wear-
ing, tearing, cracking and breakage from heavy and
repeated traffic.” ’220 patent, col. 1 ll. 21–39.
The tape “usually comprises a layer of polymeric mate-
rial and at least one layer of adhesive material.” Id. col. 1
ll. 58–60. It “may optionally have an additional layer, such
as a laminating substrate on an outermost side of the above
adhesive layer.” Id. col. 1 ll. 63–65. The tape’s composition
allegedly provides “superior ductility, strength, tear re-
sistance[,] and abrasion resistance.” Id. col. 1 ll. 35–38.
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6 LOWE v. SHIELDMARK, INC.
Claim 1 of the ’220 patent is representative and reads
as follows:
1. A roll of an adhesive tape aisle marking system
comprising:
a layer of polyvinyl chloride having a Shore A
Hardness between 92 and 100 and a thickness be-
tween 20 mil and 65 mil;
a layer of adhesive physically contacting the layer
of polyvinyl chloride, where the layer of adhesive
has a thickness less than the thickness of the poly-
mer layer; and
a laminating substrate contacting the layer of ad-
hesive, where the adhesive tape aisle marking sys-
tem comprises a peel adhesion greater than 2.0
pounds per inch width when the laminating sub-
strate is removed and a sample of the adhesive tape
aisle marking system is adhered, the peel adhesion
measured under a test method including peeling
the sample of the adhesive tape aisle marking sys-
tem at a 90 degree angle after application to a
stainless steel panel.
Id. col. 4, ll. 34–52.
III
On April 4, 2019, Lowe sued ShieldMark, alleging that
ShieldMark’s Mighty Line tape infringes claims 1–6, 10–
16, and 20–21 of the ’664 patent. J.A. 70–80. In response,
ShieldMark raised a defense of noninfringement. J.A. 137.
According to ShieldMark, the ’664 patent claims require
the tape to have shoulders and a recess and thus cannot
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LOWE v. SHIELDMARK, INC. 7
cover its Mighty Line tape, which has a single, flat lower
surface without shoulders. 1
On August 11, 2020, ShieldMark’s own floor marking
tape patent issued—the ’220 patent. Accordingly, Shield-
Mark amended its answer to Lowe’s complaint, adding a
counterclaim against Lowe for infringing “at least claims
1–3, 9, 10 and 17–19” of the ’220 patent through sale of Su-
perior Mark tape. J.A. 362, 425. In response, Lowe
amended its complaint to include a declaratory judgment
claim for invalidity and unenforceability of the ’220 patent.
J.A. 662.
Subsequently, Lowe decided to alter the design of its
Superior Mark tape such that “it arguably no longer in-
fringes” the ’220 patent claims. Dismissal, slip. op. at 2;
J.A. 1413–14. In turn, ShieldMark provided Lowe with a
covenant not to sue. The signed covenant provided that:
ShieldMark . . . hereby unconditionally cove-
nants not to file or maintain any lawsuit any-
where in the world against Clifford A. Lowe or
Insite Solutions, LLC for the infringement or al-
leged infringement of the ’220 patent for any past
or present manufacture, use, sale, offer for sale, or
importation by Clifford A. Lowe or Insite Solutions,
LLC of floor marking tape currently marketed as
Superior Mark floor marking tape.
J.A. 1409 (emphasis added).
On March 8, 2021, in view of the covenant, ShieldMark
moved to (1) voluntarily dismiss with prejudice its ’220 pa-
tent infringement suit against Lowe under Federal Rule of
Civil Procedure 41(a), and (2) dismiss Lowe’s correspond-
ing declaratory judgment claim for lack of subject matter
1 Neither party disputes that ShieldMark’s Mighty
Line tape has a flat lower surface.
Case: 21-2164 Document: 32 Page: 8 Filed: 03/04/2022
8 LOWE v. SHIELDMARK, INC.
jurisdiction. Dismissal, slip. op. at 2. Lowe, however, op-
posed both motions. It also continued to pursue its declar-
atory judgment claim, filing a motion for summary
judgment of invalidity and unenforceability of the ’220 pa-
tent. J.A. 1762.
The district court reviewed the parties’ motions and is-
sued two decisions. The first decision addressed the ’664
patent claims and the second addressed the ’220 patent
claims.
With respect to the first decision, the district court
granted summary judgment that ShieldMark does not in-
fringe the ’664 patent claims. The court’s judgment was
based on its construction of the terms “lateral edge por-
tion,” “coplanar extension,” and “central body portion.”
The district court construed the term “lateral edge por-
tion” to mean “the portion of the floor marking tape from
the shoulder to the edge of the tape when viewed in cross
section.” Claim Construction Order, slip. op. at 9 (empha-
sis added). The court acknowledged that “the term ‘shoul-
der’ is not present in the ’664 [p]atent[] claims,” but
explained that it “appears repeatedly in the patent [s]peci-
fication[].” Id., slip. op. at 8.
The district court construed the limitation “the lower
surface of each lateral edge portion being a flat coplanar
extension of the lower surface of the body” to mean “a pla-
nar relationship exists between two or more things [that]
does not allow the entire lower surface of the tape body to be
one flat or planar surface.” Id., slip. op. at 10 (emphasis
added) (internal quotation marks omitted). Again, in sup-
port of its construction, the court pointed out that the tape
cannot have a flat lower surface because the specification
repeatedly describes “a [l]ower surface 24 [that] defines a
recess 30 bounded by a pair of shoulders 32.” Id., slip. op.
at 11.
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LOWE v. SHIELDMARK, INC. 9
Finally, the district court construed “central body por-
tion” to mean “the portion of the tape body between the
shoulders of the two lateral edge portions.” Id., slip. op. at
10 (emphasis added).
In view of its claim construction, the district court
granted summary judgment of noninfringement. Nonin-
fringement Decision, 2021 WL 2530219, at *4. The court
explained that, because the claims require the tape to have
shoulders and a recess, they cannot encompass Shield-
Mark’s Mighty Line tape, which has a completely “flat
lower surface” and no shoulders. Id. at *3–4. For the same
reasons, the district court also held that ShieldMark’s
Mighty Line tape does not infringe the remaining asserted
dependent claims. Id.
With respect to the second decision, the district court
dismissed all claims concerning the ’220 patent.
First, the district court granted ShieldMark’s motion to
dismiss its ’220 patent infringement suit pursuant to Fed-
eral Rule of Civil Procedure 41. Dismissal, slip. op. at 5.
The court conditioned its dismissal on ShieldMark’s contin-
uing consent to abide by the covenant. Id. The court also
dismissed Lowe’s declaratory judgment claim for invalidity
and unenforceability of the ’220 patent. The court did not
expressly state on what ground it was dismissing the de-
claratory judgment claim. Id.
Second, the court denied as moot ShieldMark’s motion
to dismiss Lowe’s ’220 patent declaratory judgment claim
for lack of subject matter jurisdiction. The court also held
that each party should bear its own attorney fees. Id.
Lowe appealed the district court’s decisions concerning
the ’664 and ’220 patents. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
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10 LOWE v. SHIELDMARK, INC.
DISCUSSION
Lowe raises three arguments on appeal. Specifically,
Lowe argues that the district court erred (1) in granting
summary judgment that ShieldMark does not infringe the
’664 patent, (2) in dismissing Lowe’s declaratory judgment
claim for invalidity and unenforceability of the ’220 patent,
and (3) in denying attorney fees. We address each argu-
ment in turn.
I
We turn first to Lowe’s argument that the district court
erred in granting summary judgment of noninfringement.
According to Lowe, the court’s judgment stemmed directly
from its erroneous construction of the terms “lateral edge
portion” (claims 1 and 11), “coplanar extension” (claim 1),
and “central body portion” (claims 10 and 20). We thus fo-
cus our analysis on the court’s construction of those three
terms.
We review a district court’s grant of summary judg-
ment according to the law of the regional circuit. Lanard
Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1341 (Fed. Cir.
2020) (citing Kaneka Corp. v. Xiamen Kingdomway Grp.
Co., 790 F.3d 1298, 1303 (Fed. Cir. 2015)). The Sixth Cir-
cuit reviews a grant of summary judgment de novo. ETW
Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 919 (6th Cir.
2003).
Claim construction is ultimately an issue of law, which
we review de novo. Shire Dev., LLC v. Watson Pharm., Inc.,
787 F.3d 1359, 1364 (Fed. Cir. 2015). We review de novo
the district court’s findings of fact on evidence “intrinsic to
the patent,” and review for clear error all other subsidiary
findings of fact. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 841 (2015). Although infringement is a
question of fact, Lucent Techs., Inc. v. Gateway, Inc., 580
F.3d 1301, 1309 (Fed. Cir. 2009), we review de novo the dis-
trict court’s grant of summary judgment of
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LOWE v. SHIELDMARK, INC. 11
noninfringement, Unwired Planet, LLC v. Apple Inc., 829
F.3d 1353, 1356 (Fed. Cir. 2016).
A
Lowe first asserts that the district court erred in con-
struing the term “lateral edge portion” to mean “the portion
of the floor marking tape from the shoulder to the edge of
the tape when viewed in cross section.” Claim Construc-
tion Order, slip. op. at 9 (emphasis added). Lowe contends
that the court erroneously imported the term “shoulder”
from the specification into the claim language. According
to Lowe, the claimed invention does not require the tape to
have shoulders. Rather, the shoulders are merely part of
one embodiment. Thus, Lowe argues, the lateral edge por-
tions are simply “a portion of the tapered edges of the tape
body.” Appellants’ Br. 19. ShieldMark responds that the
court correctly construed the term “lateral edge portion.”
According to ShieldMark, because the specification uni-
formly describes the claimed invention as requiring a tape
with shoulders, the court correctly included the term
“shoulders” in its construction.
We agree with Lowe that the district court erred in con-
struing the term “lateral edge portions.” We have repeat-
edly “cautioned against limiting the claimed invention to
preferred embodiments or specific examples in the specifi-
cation.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002) (quoting Comark Commc’ns,
Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998)).
Here, the court did just that. Specifically, it determined
that, because the term “shoulders” “appears repeatedly in
the patent specification[],” the claimed invention must in-
clude shoulders. Claim Construction Order, slip. op. at 8.
But, as is clear from the claim language and the specifica-
tion, the asserted claims are not so limited.
Starting with the claim language, neither claim 1 nor
claim 11 recites that the tape has shoulders demarcating a
recess. In fact, neither claim even mentions the word
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12 LOWE v. SHIELDMARK, INC.
“shoulders.” Moreover, claim 7, which depends from claim
1, does recite that the tape has a recess and (by implication)
shoulders that demarcate the recess. ’664 patent, col. 5
ll. 50–52. Thus, if we were to construe the claims as Shield-
Mark proposes, claim 7 would be superfluous. See Wi-LAN
USA, Inc. v. Apple Inc., 830 F.3d 1374, 1391 (Fed. Cir.
2016) (“A construction that would cause two differently
worded claims to cover exactly the same claim scope would
render one of the claims superfluous, so we apply a pre-
sumption against such constructions.”).
The specification provides further evidence that the as-
serted claims are not as narrow as ShieldMark contends.
For example, it states that tape with shoulders and a recess
is just “one embodiment” of the claimed invention. ’664 pa-
tent, Abstract; col. 1 ll. 56–59 (emphasis added). It further
explains that “[o]ther structures combined with body 20
may also be used in place of . . . shoulders 32.” Id. col. 2
ll. 33–36 (emphasis added). The specification goes on to de-
scribe additional “embodiments” or “configurations” of
tape, several without shoulders. Id. col. 1 ll. 38–46; col. 1
ll. 60–64; col. 2 ll. 64–67; see Poly-Am., L.P. v. API Indus.,
Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (“[T]he standard
for disavowal is exacting, requiring clear and unequivocal
evidence that the claimed invention includes or does not
include a particular feature.” (citing Openwave Sys., Inc. v.
Apple Inc., 808 F.3d 509, 513–14 (Fed. Cir. 2015))).
The parent of the ’664 patent, U.S. Patent 8,883,290,
also supports our determination. Both the ’664 and ’290
patents share a specification and recite claims directed to
floor marking tape. Importantly, however, unlike the ’664
patent claims, the ’290 patent claims expressly recite that
the tape has “shoulders” and “a recess.” ’290 patent, col. 4
l. 62–col. 5 l. 15. Accordingly, the patentee knew how to
claim tape with shoulders and a recess when specifically
intended. Thus, as is clear from the evidence, the claimed
invention is not as narrow as ShieldMark asserts.
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LOWE v. SHIELDMARK, INC. 13
ShieldMark makes several additional arguments, all
unpersuasive.
First ShieldMark contends that, because every figure
of the ’664 patent shows an embodiment of tape with shoul-
ders, the claimed invention must have shoulders.
We disagree. ShieldMark is correct that every figure
in the specification depicts tape with shoulders. Im-
portantly, however, that does not necessarily require us to
narrowly limit the claimed invention to those figures. As
explained above, the specification describes various embod-
iments of the tape, several without shoulders.
Second, ShieldMark asserts that Lowe’s proposed con-
struction, which omits the word “shoulders,” would violate
35 U.S.C. § 112. Specifically, ShieldMark contends that,
without the word “shoulders” in the construction, it is un-
clear “where the lateral edge portions begin and other parts
of the tape end.” Appellees’ Br. 28.
We disagree with ShieldMark that construing the
claims without reference to the word shoulders would ren-
der them invalid. The claim language itself details the po-
sition of the lateral edge portions: they are at the tapered
edges of the floor marking tape, without reference to shoul-
ders. More specifically, claim 1 recites that the lateral edge
portions (1) are tapered 2; (2) are disposed in the longitudi-
nal direction; (3) have an “upper surface” “comprising an
2 We decline to consider Lowe’s argument that the
district court erroneously construed the term “tapered.”
Lowe fails to explain how the court’s construction would af-
fect our infringement analysis. See Jang v. Bos. Sci. Corp.,
532 F.3d 1330, 1336 (Fed. Cir. 2008) (resolving claim con-
struction issues “that do not actually affect the infringe-
ment controversy between the parties” would result in an
impermissible advisory opinion).
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14 LOWE v. SHIELDMARK, INC.
extension of the upper surface of the body;” and (4) have a
“maximum height that is less than [their] width.” ’664 pa-
tent, col. 5 ll. 2–36. That description speaks for itself. We
thus reject ShieldMark’s argument.
B
Lowe next asserts that the district court erred in con-
struing the limitation “lower surface of each lateral edge
portion being a flat coplanar extension of the lower surface
of the body” to mean “a planar relationship exists between
two or more things [that] does not allow the entire lower
surface of the tape body to be one flat or planar surface.”
Claim Construction Order, slip. op. at 10 (internal quota-
tion marks omitted). First, Lowe argues that the court
should have construed the limitation to mean “the bottom
surfaces of the lateral edge portions are flat, lie in the same
plane, and define an extension of the lower surface of the
body.” Appellants’ Br. 20. In other words, Lowe contends
that “coplanar” refers to the relationship between the two
lateral edge portions. Second, Lowe argues that the court
again limited the claimed invention to one embodiment in
the specification: tape with shoulders and a recess. Specif-
ically, Lowe points out that if the tape cannot lie flat, then
by implication, it must have shoulders and a recess. Id. at
23.
ShieldMark responds that the court’s construction was
correct. It first asserts that, “‘coplanar extension’ neces-
sarily implies a reference to two distinct points that a con-
tinuous flat line does not have.” Appellees’ Br. 29. It also
asserts that, because the claimed invention is limited to
tape with shoulders and a recess, the tape cannot have one
flat lower surface. Moreover, according to ShieldMark, in
an earlier decision denying institution of post-grant review
for the ’664 patent, the U.S. Patent and Trademark Office
Patent Trial and Appeal Board (the “Board”) allegedly de-
termined that the term “coplanar extension” cannot encom-
pass a single, flat lower surface.
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LOWE v. SHIELDMARK, INC. 15
We agree with Lowe that the district court’s construc-
tion was incorrect. Claim 1 simply recites that the lateral
edge portions are (1) flat, (2) coplanar with each other, and
(3) extensions of the lower surface of the body. Contrary to
ShieldMark’s assertion, claim 1 does not “necessarily
impl[y] a reference to two distinct points that a continuous
flat line does not have.” Appellees’ Br. 29 (internal quota-
tions marks omitted). Moreover, in construing the term
“coplanar extension,” the district court erroneously im-
ported limitations from the specification into the claims.
For example, it observed that “the specification language”
“weighs heavily against [Lowe’s] proposed construction”
because it “describe[s] ‘a [l]ower surface 24 [that] defines a
recess 30 bounded by a pair of shoulders 32.’” Claim Con-
struction Order, slip. op. at 11. But for the reasons ex-
plained above, the asserted claims are not so limited.
Nor are we persuaded by ShieldMark’s argument re-
garding the post-grant review. ShieldMark misreads the
Board’s decision. The Board did not, as ShieldMark ar-
gues, construe the claims to exclude a single, flat lower sur-
face. Rather, it simply held that the claims do not require
“the lower surface of the lateral edge portions to be copla-
nar with the lower surface of the tape body defined by re-
cess 30.” J.A. 1109. The Board further explained that the
lower surfaces of the first and second lateral edge portions
“1) are flat, 2) are coplanar with each other, and 3) define
an ‘extension of the lower surface of the body.’” Id. Thus,
the Board’s construction did not speak to whether the tape
must have shoulders with a recess.
C
Finally, Lowe asserts that the district court erred in
construing the term “central body portion” to mean “the
portion of the tape body between the shoulders of the two
lateral edge portions.” Claim Construction Order, slip. op.
at 10 (emphasis added). According to Lowe, the court
should have construed the term “central body portion” to
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16 LOWE v. SHIELDMARK, INC.
mean the “portion of the tape that extends along and on
each side of the body’s centerline.” Appellants’ Br. 22.
ShieldMark responds, as it did before, that the court’s con-
struction was correct because the claimed invention re-
quires shoulders.
We agree with Lowe. Again, the court’s construction
improperly imported the term “shoulders” into the claims.
For the reasons explained above, that construction was er-
roneous. Except for claims 7 and 17 and the claims that
depend from them, the claims are not so limited.
In summary, because the district court erred in con-
struing “lateral edge portion,” “coplanar extension,” and
“central body portion,” we vacate its claim construction or-
der and adopt Lowe’s construction of those terms. Addi-
tionally, because the court granted summary judgment of
noninfringement based on its claim construction, we vacate
its summary judgment decision involving all of the as-
serted claims of the ’664 patent and remand for further pro-
ceedings consistent with this opinion.
II
We turn next to Lowe’s argument that the district court
erred in dismissing the declaratory judgment claim for in-
validity and unenforceability of the ’220 patent.
As an initial matter, the district court did not expressly
state on what ground it dismissed the declaratory judg-
ment claim. Dismissal, slip. op. at 5. However, “an appel-
late court may affirm a judgment of a district court on any
ground the law and the record will support [as] long as that
ground would not expand the relief granted.” Glaxo Grp.
Ltd. v. TorPharm, Inc., 153 F.3d 1366, 1371 (Fed. Cir.
1998). Because the record shows that the district court
lacked subject matter jurisdiction over Lowe’s declaratory
judgment claim, we affirm on that ground.
“Subject matter jurisdiction in a declaratory judgment
suit depends upon the existence of ‘a substantial
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LOWE v. SHIELDMARK, INC. 17
controversy, between the parties having adverse legal in-
terests, of sufficient immediacy and reality to warrant the
issuance of a declaratory judgment.’” Dow Jones & Co. v.
Ablaise Ltd., 606 F.3d 1338, 1345 (Fed. Cir. 2010) (quoting
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127
(2007)). Whether the district court had subject matter ju-
risdiction is a question we review de novo. Prasco, LLC v.
Medicis Pharm. Corp., 537 F.3d 1329, 1335 (Fed. Cir.
2008).
Here, Lowe fails to show that there remains a substan-
tial controversy between the parties.
First, ShieldMark voluntarily dismissed its infringe-
ment suit against Lowe with prejudice. It did so after
learning that Lowe had sold few Superior Mark products
and then created a noninfringing redesign.
Second, there was (and still is) only a speculative pos-
sibility that ShieldMark will sue Lowe again for infringing
the ’220 patent claims through sale of Superior Mark tape;
ShieldMark provided Lowe with a covenant not to sue for
past and present infringement of the ’220 patent claims.
J.A. 1409. And the district court conditioned its dismissal
on ShieldMark’s continuing consent to the covenant. Dis-
missal, slip. op. at 5. See Dow Jones, 606 F.3d at 1348 (“In
the case at bar, [patentee’s] covenant not to sue avowed
that” it would not sue “for any acts of infringement . . . .
The covenant therefore extinguished any current or future
case or controversy between the parties and divested the
district court of subject matter jurisdiction.”).
Still, Lowe emphasizes that, because the covenant co-
vers only past and present acts, if Lowe decides to keep
selling or manufacturing its original Superior Mark tape in
the future, ShieldMark will likely sue again for infringe-
ment of the ’220 patent claims. Lowe also points out that
“ShieldMark has yet another continuation application
pending,” and that it is “more probable than not” that
Case: 21-2164 Document: 32 Page: 18 Filed: 03/04/2022
18 LOWE v. SHIELDMARK, INC.
ShieldMark will sue Lowe for infringement once that pa-
tent issues. Appellants’ Br. 33.
Lowe’s arguments are unpersuasive. With respect to
the ’220 patent, ShieldMark has expressly stated that it
will not sue Lowe for future manufacture, sale, or use of
the original Superior Mark tape design. Oral Argument, at
23:06–26:40. With respect to the continuation application,
other than mere speculation, Lowe fails to point to any ev-
idence that ShieldMark intends to sue Lowe for infringe-
ment if and when the patent issues. Accordingly, Lowe
does not satisfy the “sufficient immediacy” requirement of
MedImmune. At best, Lowe has shown only that there is a
“a hypothetical ‘prospect of a second lawsuit.’” See Dismis-
sal, slip. op. at 4 (emphasis added). That is insufficient. A
“case or controversy must be based on a real and immediate
injury or threat of future injury . . . an objective standard
that cannot be met by a purely subjective or speculative
fear of future harm.” Asia Vital Components Co. v. Asetek
Danmark A/S, 837 F.3d 1249, 1253 (Fed. Cir. 2016) (quot-
ing Prasco, 537 F.3d at 1339). Because the record shows
that there was no remaining live controversy, we affirm the
district court’s dismissal of Lowe’s declaratory judgment
claim on the ground of lack of subject matter jurisdiction. 3
III
Finally, we address Lowe’s third argument that the
district court abused its discretion in denying attorney fees
following dismissal of the ’220 patent infringement suit.
3 Because we affirm the district court’s dismissal of
Lowe’s declaratory judgment claim for invalidity and un-
enforceability of the ’220 patent, we need not address
Lowe’s request that we reverse the district court’s decision
and remand with an instruction to grant summary judg-
ment of invalidity and unenforceability of the ’220 patent.
Case: 21-2164 Document: 32 Page: 19 Filed: 03/04/2022
LOWE v. SHIELDMARK, INC. 19
We review a district court’s denial of attorney fees un-
der 35 U.S.C. § 285 for abuse of discretion. Highmark Inc.
v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 564 (2014).
“Abuse of discretion is a highly deferential standard of ap-
pellate review.” Bayer CropScience AG v. Dow AgroSci-
ences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017). “Because
the district court lives with the case over a prolonged period
of time, it is in a better position to determine whether a
case is exceptional, and it has discretion to evaluate the
facts on a case-by-case basis.” Raniere v. Microsoft Corp.,
887 F.3d 1298, 1308–09 (Fed. Cir. 2018) (quoting SFA Sys.,
LLC v. Newegg Inc., 793 F.3d 1344, 1351 (Fed. Cir 2015)).
Lowe asserts that it was entitled to attorney fees be-
cause ShieldMark engaged in a variety of allegedly excep-
tional behavior. Specifically, Lowe contends that
ShieldMark voluntarily dismissed its ’220 patent infringe-
ment suit “only after being confronted with significant in-
validity and unenforceability contentions.” Appellants’
Br. 55. In other words, according to Lowe, ShieldMark
“ran from the fight.” Id. at 36. ShieldMark responds that
it acted reasonably throughout the litigation and that
Lowe’s allegations are factually unsupported.
We agree with ShieldMark that the district court did
not abuse its discretion in denying attorney fees. Here, the
court considered the record and the parties’ conduct and
reasonably concluded that ShieldMark’s behavior did not
warrant attorney fees. As the court explained, ShieldMark
had a “compelling” reason to voluntarily dismiss its in-
fringement suit: it learned that Lowe altered the design of
its Superior Mark tape so that it “arguably no longer in-
fringes” ShieldMark’s ’220 patent. Dismissal, slip. op. at 2,
4. The court further explained that ShieldMark did not de-
lay seeking a dismissal. Id., slip. op. at 4. Accordingly,
Lowe fails to persuade us that the court abused its discre-
tion in denying attorney fees.
Case: 21-2164 Document: 32 Page: 20 Filed: 03/04/2022
20 LOWE v. SHIELDMARK, INC.
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the foregoing reasons, we
vacate the district court’s decision granting summary judg-
ment of noninfringement and remand for further proceed-
ings consistent with this opinion. We affirm the court’s
dismissal of Lowe’s declaratory judgment claim and denial
of attorney fees.
VACATED-IN-PART, REMANDED-IN-PART, AND
AFFIRMED-IN-PART
COSTS
No costs.