Mighty Line proves to be the original industrial floor tape mfg. After a long fought battle the courts finally got it right! Be careful who you buy from they might be founded from a patent troll!!
ATENT—Fed. Cir.: Summary judgment affirmed in industrial marking tape dispute, (Mar 24, 2025)
Law Firms Mentioned:Lee Sheikh & Haan LLC | Taylor & Weber Co.
Organizations Mentioned:Crown Equipment Corporation | Shieldmark, Inc.
By Kevin M. Finson, J.D.
An award of attorneys’ fees based on failure to disclose the change of ownership of a patent during the pendency of an appeal was affirmed because it substantially delayed and extended the litigation.
Manufacturers, distributors, and sellers of floor marking tape showed that a patent asserted against them was invalid as anticipated, the U.S. Court of Appeals for the Federal Circuit has held. An award of fees for litigation conduct relating to failing to disclose a change of patent ownership was also affirmed (Lowe v. Shieldmark, Inc., No. 23-1786 (Fed. Cir. Mar. 24, 2025)).
Clifford A. Lowe was the named inventor of U.S. Patent No. 10,214,664 (the ’664 patent), which was directed to floor marking tape of the sort used in industrial facilities. Lowe and his licensee Spota, LLC (Spota) brought suit for infringement against Shieldmark Inc. (Shieldmark), Crown Equipment Corporation (Crown), and Advanced Plastics, Inc. (Advanced), alleging that they were involved in the manufacture, distribution, and sale of an infringing tape sold under the trade name “Mighty Line.” After a summary judgment ruling which was reversed and remanded, the trial court found that due to an intervening assignment, neither plaintiff possessed Article III standing. In the alternative, the court also held that the asserted claims were anticipated. The trial court granted an award of attorneys’ fees under its inherent power to sanction but declined to award fees for inequitable conduct. Both sides appealed.
Standing. While the case was on appeal the first time, Lowe executed an assignment to Spota that conveyed all of his rights, title, and interest in the ’664 patent, including his right to sue on any cause of action accruing prior to the assignment. Spota then executed a license with InSite Solutions, LLC (InSite), a non-party, under which InSite obtained a non-exclusive right to practice and sublicense the patent. This license agreement specifically excluded the right to enforce the patent as to any prior acts. The trial court had found this left no party with Article III standing. The court held that because Spota retained ownership and the right to enforce the patent, it still had standing, but Lowe lacked standing as he had assigned not just his ownership, but also his right to sue to Spota.
Anticipation. The trial court had held that even if either plaintiff had standing, the asserted claims were invalid as anticipated by a prior art patent for marking floors. The court reviewed the prior art patent and found that it clearly disclosed all of the disputed limitations, so there was no error in the trial court’s award of summary judgment in favor of the defendants.
Attorneys’ fees. The court affirmed the trial court’s award of attorneys’ fees under its inherent power to sanction based on the plaintiff’s failure to disclose the change in patent ownership, which caused delay. An award based on disclosure of a confidential expert’s report which was disclosed by the plaintiffs in violation of local patent rules lacked the necessary factual finding of bad faith, and so was reversed. Finally, the court found that the trial court did not err in finding that it had not been shown that Lowe deliberately hid the anticipatory prior art reference from the USPTO, at least not by the necessary clear and convincing standard.
The court affirmed the decision of the trial court except on the issue of attorneys’ fees for violation of the local patent rule covering disclosures of confidential information and remanded that issue for findings of fact.
The Case is No. 23-1786.
Judge: Bryson, W.
Attorneys: Ray L. Weber (Taylor & Weber Co.) for Clifford A. Lowe. David J. Sheikh (Lee Sheikh & Haan LLC) for Shieldmark, Inc.
Companies: Shieldmark, Inc.
Cases: Patent FedCirNews
