DCT
1:19-cv-00748
Lowe v. Shieldmark Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Clifford A. Lowe; InSite Solutions, LLC (North Carolina)
- Defendant: ShieldMark, Inc.; Advanced Plastics, Inc.; Crown Equipment Corporation (Ohio)
- Plaintiff’s Counsel: Renner, Kenner, Greive, Bobak, Taylor & Weber
- Case Identification: 1:19-cv-00748, N.D. Ohio, 10/27/2020
- Venue Allegations: Venue is alleged to be proper based on the Defendants’ residence in the judicial district, as each is an Ohio corporation, and because they have allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ Mighty Line® brand of industrial floor tape infringes a patent related to floor marking tape with tapered edges designed to improve durability and prevent delamination.
- Technical Context: The technology concerns durable, adhesive-backed tapes used for marking boundaries in industrial environments, such as warehouses, where they must withstand wear from forklift traffic and cleaning equipment.
- Key Procedural History: The filing is a Third Amended Complaint in an ongoing dispute. The case also involves a counterclaim by Defendant ShieldMark, which has asserted its own U.S. Patent No. 10,738,220. In this complaint, the Plaintiffs seek a declaratory judgment that they do not infringe the '220 patent and that it is invalid and unenforceable, alleging, among other things, that ShieldMark failed to disclose material prior art to the USPTO during the patent's prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2003-09-29 | U.S. Patent No. 10,738,220 Priority Date |
| 2005-04-22 | U.S. Patent No. 10,214,664 Priority Date |
| 2019-02-26 | U.S. Patent No. 10,214,664 Issue Date |
| 2020-08-11 | U.S. Patent No. 10,738,220 Issue Date |
| 2020-10-27 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,214,664 - Floor Marking Tape, issued February 26, 2019
The Invention Explained
- Problem Addressed: The patent’s background section identifies drawbacks with existing industrial floor tapes, including a tendency for the tape’s edges to be caught and lifted by cleaning devices or skids, and for the adhesive to be squeezed out from the sides, where it collects dirt and contributes to delamination from the floor (ʼ664 Patent, col. 1:26-35).
- The Patented Solution: The invention addresses these problems through a specific tape geometry. The patent describes a tape with smoothly beveled or tapered lateral edges, which create a gradual transition from the floor to the tape’s surface to limit unintentional lifting (’664 Patent, col. 1:47-49). The design shown in Figure 2 illustrates this tapered edge profile, intended to allow objects to slide over the tape rather than catching on a sharp edge (’664 Patent, Fig. 2).
- Technical Importance: This design aims to increase the durability and lifespan of floor markings in high-traffic industrial environments, offering an alternative to frequent re-painting or replacement of conventional tapes (’664 Patent, col. 1:47-49).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11 (Compl. ¶13).
- Independent Claim 1 recites a combination of a floor and a floor marking tape, with the tape comprising:
- a body with a longitudinal direction and first and second lateral edge portions;
- the lower surface of each lateral edge portion being a flat coplanar extension of the lower surface of the body;
- "the entire body of each lateral edge portion being tapered" with the upper surface extending to the lower surface;
- each lateral edge portion having a maximum height that is less than its width; and
- an adhesive securing the body to the floor.
- Independent Claim 11 recites a similar combination, but defines the tapered edge differently:
- "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 to meet at a first junction and the upper surface of the second lateral edge portion extending to the lower surface of the second lateral edge portion to meet at a second junction;" and
- "the first and second junctions disposed on the uppermost surface of the floor such that the floor marking tape limits unintentional lifting of the floor marking tape from the floor."
- The complaint reserves the right to assert dependent claims 2-6, 10, 12-16, 20, and 21 (Compl. ¶38).
III. The Accused Instrumentality
Product Identification
- The accused product is the Mighty Line® brand of floor marking tape (Compl. ¶14).
Functionality and Market Context
- The Mighty Line® tape is manufactured by Defendant Advanced Plastics and sold by Defendants ShieldMark and Crown for application to floors to create boundaries (Compl. ¶¶9-11). The complaint alleges that ShieldMark and Plaintiff InSite are direct competitors in the floor marking tape market (Compl. ¶58). Based on advertising materials referenced in the complaint, the product is promoted as having "beveled edges" that "increase durability for forklift traffic" (Compl. ¶60). The complaint references an advertising visual from Exhibit 2 that it alleges shows the Mighty Line® product. (Compl. ¶14, Exhibit 2). This visual, as described in the complaint, promotes the durability of the tape's "beveled edge" against "industrial wheel traffic." (Compl. ¶60, Exhibit 2).
IV. Analysis of Infringement Allegations
'664 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a floor having an uppermost surface; the uppermost surface of the floor configured to support personnel and equipment thereupon | The accused combination includes a floor to which the Mighty Line® tape is applied, which has an uppermost surface that supports personnel and equipment. | ¶15 | col. 6:5-8 |
| a floor marking tape having a body that has an upper surface and a lower surface | The Mighty Line® tape has an upper, visible surface and a lower, adhesive-covered surface. | ¶16 | col. 6:9-10 |
| first and second lateral edge portions disposed in the longitudinal direction; each of the first and second lateral edge portions having an upper surface and a lower surface | The Mighty Line® tape has lateral portions along its edges, each with an upper and lower surface. | ¶19 | col. 6:17-20 |
| 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... | The lateral edge portions of the Mighty Line® tape are tapered, with the upper surface extending to the lower surface. | ¶23 | col. 6:28-32 |
| each of the first and second lateral edge portions having a maximum height that is less than its width | The maximum height of the lateral edge portions of the Mighty Line® tape is less than its width. | ¶24 | col. 6:33-34 |
| an adhesive securing the lower surface of the body to the uppermost surface of the floor to establish a boundary | The Mighty Line® tape has an adhesive on its lower surface that secures it to a floor to establish a boundary. | ¶25 | col. 6:35-37 |
'664 Patent Infringement Allegations (Claim 11)
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 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...to meet at a first junction and the upper surface of the second lateral edge portion extending to the lower surface...to meet at a second junction | The lateral edge portions of the Mighty Line® tape are tapered, with the upper surface extending to the lower surface to meet at first and second junctions. | ¶33 | col. 6:23-31 |
| the first and second junctions disposed on the uppermost surface of the floor such that the floor marking tape limits unintentional lifting of the floor marking tape from the floor | The junctions of the Mighty Line® tape are disposed on the floor surface, and the purpose of these junctions is to inhibit unintentional lifting. | ¶34 | col. 6:32-36 |
- Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the definition of the tape's edge structure. The complaint alleges the accused product's "beveled edges" (Compl. ¶60) meet the claim limitations for a "tapered" edge portion (Claim 1) and a "tapered" edge that forms a "junction" on the floor (Claim 11). The litigation may focus on whether the term "tapered," as used in the patent, encompasses the specific profile of the accused product's "beveled edge," and whether that profile creates a "junction" with the claimed functional attributes.
- Technical Questions: The complaint's allegations regarding the "junction" in Claim 11 appear to rely on the "purpose" of the feature rather than its specific structure (Compl. ¶34). A key technical question will be what evidence demonstrates that the accused tape's edge meets the floor to form a distinct "junction" that performs the specific function of limiting "unintentional lifting," as required by the claim, beyond providing general durability.
V. Key Claim Terms for Construction
The Term: "the entire body of each lateral edge portion being tapered" (Claim 1)
- Context and Importance: The infringement analysis for Claim 1 hinges on this term. The complaint alleges that the accused product's advertised "beveled edges" satisfy this limitation. Practitioners may focus on this term because the court's interpretation will determine whether any angled or beveled edge meets the claim, or if a more specific geometry is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification's summary and background use the term "beveled edge" (’664 Patent, col. 1:48), which may suggest that "tapered" should be interpreted broadly to include various forms of angled edges.
- Evidence for a Narrower Interpretation: Figure 2 of the patent depicts a specific, smooth, and continuous slope for the edge. A party could argue that "tapered" is limited to this illustrated embodiment, distinguishing it from a simple chamfer or a different type of bevel. (’664 Patent, Fig. 2).
The Term: "junction" (Claim 11)
- Context and Importance: This term is a key differentiator for Claim 11 and introduces a specific structural and functional requirement not present in Claim 1. Infringement of Claim 11 depends entirely on whether the accused product's edge forms this "junction" on the floor.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "junction" in the specification. This may support an argument that the term should be given its plain and ordinary meaning, referring simply to the line of contact where the tapered edge meets the floor surface.
- Evidence for a Narrower Interpretation: The claim requires the "junction" to be "disposed on the uppermost surface of the floor" in a way that "limits unintentional lifting" (’664 Patent, col. 6:32-36). A party could argue this functional language limits the term to a structure that creates a specific, sharp interface, as arguably depicted in Figure 3, and that proof of this specific lifting-prevention mechanism is required.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement (Compl. ¶39). The inducement theory is based on Defendants' advertising and instructions, which allegedly encourage customers to apply the tape to a floor, thereby completing the infringing combination (Compl. ¶¶41-42, 44). The contributory infringement theory alleges the tape is a material component of the invention, is not a staple article of commerce, and is especially made for an infringing use (Compl. ¶¶45-47).
- Willful Infringement: The complaint does not explicitly use the word "willful" in its infringement count. However, it alleges pre-suit knowledge by stating that, upon information and belief, Defendants were "aware of the patent application that issued as the ‘664 patent, and have knowledge of the acts of infringement that are occurring" (Compl. ¶48). This allegation of knowledge could be used to support a later claim for enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence: does the "beveled edge" of the accused Mighty Line® tape, as advertised and sold, possess the specific geometric profile of the "tapered" lateral edge required by Claim 1, and does it further form a "junction" on the floor that performs the claimed function of limiting lifting as required by Claim 11?
- The case will likely involve a significant dispute over claim scope: will the court construe terms like "tapered" and "junction" broadly based on their plain meaning, or will they be narrowed to the specific structures depicted in the patent's figures and embodiments?
- A key evidentiary question will concern indirect infringement: because direct infringement is performed by the end-user who applies the tape to a floor, the case against the manufacturer and distributors will depend on the sufficiency of evidence proving their knowledge of the patent and specific intent to encourage infringement through their marketing and instructions.