DCT
2:18-cv-00344
Shieldmark Inc v. Heskins LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ShieldMark, Inc. (Ohio)
- Defendant: Heskins LLC (Pennsylvania)
- Plaintiff’s Counsel: Fisherbroyles, LLP (Local Counsel); Sand & Sebolt (National Counsel)
- Case Identification: 2:18-cv-00344, W.D. Pa., 03/16/2018
- Venue Allegations: Venue is alleged to be proper in the Western District of Pennsylvania because Defendant resides in the district, has committed alleged acts of infringement there, and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s PermaStripe® brand of floor marking tape infringes a patent related to high-durability adhesive tape technology.
- Technical Context: The technology concerns industrial-grade adhesive tapes designed for marking floors in environments like factories and warehouses, where tapes must withstand heavy traffic and abrasion.
- Key Procedural History: The asserted patent, U.S. Patent No. 8,088,480, was the subject of an ex parte reexamination, which concluded with a certificate issued on December 3, 2013. The proceeding confirmed the patentability of the primary asserted claim (Claim 5), a fact that may be raised to suggest the claim's strength against certain validity challenges.
Case Timeline
| Date | Event |
|---|---|
| 2003-09-29 | U.S. Patent No. 8,088,480 Priority Date |
| 2012-01-03 | U.S. Patent No. 8,088,480 Issue Date |
| 2013-12-03 | Reexamination Certificate Issued for '480 Patent |
| 2018-03-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,088,480 - "Adhesive Tape"
- Issued: January 3, 2012
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional polymeric pressure-sensitive tapes used for floor marking in industrial settings often lack sufficient strength and hardness. This deficiency leads to "wearing, tearing, cracking and breakage from heavy and repeated traffic, such as from forklift trucks," as well as detachment due to poor adhesive quality (’480 Patent, col. 1:11-18).
- The Patented Solution: The invention is an adhesive tape constructed to overcome these durability issues. It combines a specific type of polymer layer (e.g., polyvinyl chloride) having a defined high hardness (Shore A 92-100) and thickness range with a layer of adhesive that provides a specified minimum peel strength (’480 Patent, Abstract; col. 2:12-25). This combination of material properties is described as providing "superior ductility, strength, tear resistance and abrasion resistance" (’480 Patent, col. 1:28-30).
- Technical Importance: The invention addresses a need for a more robust and long-lasting alternative to painting lines on industrial floors, which is described as a "time consuming and exacting practice" (’480 Patent, col. 1:25-26).
Key Claims at a Glance
- The complaint asserts independent Claim 5 and at least Claim 10 (Compl. ¶¶20, 26).
- Independent Claim 5 requires:
- An adhesive tape comprising: a polymer layer having a Shore A Hardness of between 92 and 100 and a substantially uniform thickness of between about 0.020" to 0.065";
- and a layer of adhesive attached to said polymer layer;
- where the adhesive tape comprises a peel adhesion greater than 2.0 lb/in width when peeled at a 90 degree angle under a modified PSTC-101 method where the modified PSTC-101 method comprises a dwell time of one hour.
- The complaint does not explicitly reserve the right to assert other claims, but its general infringement allegations could encompass them (Compl. ¶31).
III. The Accused Instrumentality
Product Identification
- The accused product is Defendant’s "PermaStripe® Floor Marking Tape" (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the Accused Product is a floor marking tape that Defendant advertises as "being designed to be the world's toughest floor marking tape" (Compl. ¶15).
- The complaint does not provide specific technical details, test data, or specifications for the Accused Product. It alleges that the product's properties meet the parameters of the asserted claims on "information and belief" (Compl. ¶¶21-25).
- Plaintiff alleges that sales of the Accused Product have a "direct impact on ShieldMark's market share" (Compl. ¶28).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’480 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a polymer layer having a Shore A Hardness of between 92 and 100 | On information and belief, "the Accused Product includes a polymer layer having a Shore A Hardness of between 92 and 100." | ¶22 | col. 2:16-18 |
| and a substantially uniform thickness of between about 0.020" to 0.065" | On information and belief, "the Accused Product includes a substantially uniform thickness of between about 0.020" to 0.065"." | ¶23 | col. 2:19-21 |
| and a layer of adhesive attached to said polymer layer | On information and belief, "the Accused Product includes a layer of adhesive attached to said polymer layer." | ¶24 | col. 2:40-43 |
| where the adhesive tape comprises a peel adhesion greater than 2.0 lb/in width when peeled at a 90 degree angle under a modified PSTC-101 method...a dwell time of one hour | On information and belief, "the Accused Product includes a peel adhesion greater than 2.0 lb/in width when peeled at a 90 degree angle under a modified PSTC-101 method where the modified PSTC-101 method comprises a dwell time of one hour." | ¶25 | col. 4:13-26 |
Identified Points of Contention
- Evidentiary Questions: The complaint's infringement allegations are conclusory and track the claim language without providing specific facts. A central question will be whether discovery produces evidence (e.g., product specifications, internal testing) demonstrating that the PermaStripe® tape actually possesses a polymer layer with the claimed Shore A hardness, thickness, and peel adhesion values when measured according to the specified test methods.
- Technical Questions: The claim requires peel adhesion to be measured "under a modified PSTC-101 method" with a specific one-hour dwell time (’480 Patent, col. 4:50-59). The analysis will question whether the Accused Product meets the "greater than 2.0 lb/in" threshold under this exact testing protocol, or if Defendant’s internal testing or product characteristics rely on a different standard.
V. Key Claim Terms for Construction
The Term: "about 0.020" to 0.065""
- Context and Importance: This term defines the thickness of the polymer layer. The scope of "about" will be critical in determining whether accused products with thicknesses falling near, but not precisely at, the endpoints of the range are infringing. Practitioners may focus on this term because its construction can expand or contract the literal scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of "about" itself suggests the patentee did not intend to be limited to the exact numerical endpoints. The specification refers to the thickness as "about, for example, 0.020" to 0.065"" (’480 Patent, col. 2:20-21), which could be argued to reinforce the term's breadth.
- Evidence for a Narrower Interpretation: A defendant may argue that the specific example in the patent, which produced a "0.065 thick" layer (’480 Patent, col. 3:37-38), suggests the range is tied to specific, successfully tested embodiments and should not be expanded significantly beyond the stated values.
The Term: "substantially uniform thickness"
- Context and Importance: This term describes a physical characteristic of the polymer layer. Its definition is crucial because many manufacturing processes may result in minor variations in thickness. The dispute will likely center on how much variation is permissible before the thickness is no longer "substantially uniform."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a numerical tolerance for uniformity, which may suggest that the term should be given its ordinary meaning, allowing for normal manufacturing variances.
- Evidence for a Narrower Interpretation: The patent describes achieving a textured surface on the polymer layer (’480 Patent, col. 2:19), which inherently creates non-uniformity. A party could argue that "substantially uniform" must be interpreted in light of this textured surface, but the complaint provides no basis for this analysis. The complaint does not provide sufficient detail for further analysis of this term.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation that Defendant has "contributed to, and/or induced infringement" but alleges no specific facts to support the knowledge and intent elements required for such claims, such as referencing user manuals or advertising that instructs on an infringing use (Compl. ¶31).
- Willful Infringement: The complaint alleges that Defendant's infringement "has been and continues to be knowing, willful, intentional and deliberate" (Compl. ¶32). It does not, however, plead any specific facts to support this claim, such as allegations of pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidence: can the Plaintiff, through discovery, produce factual evidence (such as product testing or internal specifications) to support its conclusory allegations that the Accused Product meets the specific quantitative thresholds for hardness, thickness, and peel adhesion required by Claim 5?
- The case may also turn on a question of claim scope: how will the court construe the term "about" in the context of the claimed thickness range? The interpretation of this term could be determinative of whether the accused tape, if its thickness is near the boundaries of the 0.020" to 0.065" range, literally infringes.
- A third question relates to procedural history: to what extent will the court weigh the fact that the asserted claim (Claim 5) survived an ex parte reexamination, and will this procedural posture influence settlement discussions or arguments regarding patent validity?