NOTE: This disposition is nonprecedential.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, argued 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 Pennsylvania 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, vacatein-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 captive 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 products 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 judgment 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 infringement 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 position, 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 attaching the panel to a surface, the surface having 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 comprising 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 attached 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 threaded shaft is in an extended position, the flat, annular 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 construing 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 separating.” ’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 ferrule 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” instead 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 attachment 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 connected. ’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 construction. 

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 attached—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 differentiates 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 infringe 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 embodiment 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 attaching the panel to a surface, the surface hav-
10 SOUTHCO, INC. v. FIVETECH TECHNOLOGY INC. 

ing a threaded hole, the captive screw comprising:

a) a screw having a head portion and a shaft having at least a threaded portion, said head portion 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 admit 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. Pennypack 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 declaration, 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. Therefore, 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 defendant—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 genuine dispute of material fact when moving for summary 

judgment. Thus, we reverse the grant of summary judgment with respect to claims reciting an “annular chamfer.”

B. “Rigidly secure” 

The district court determined that Fivetech does not 

infringe claims 1, 6, 8–10, and 14 of the ’012 patent because 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 protrusions (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 protrusions. ’012 patent col. 3 ll. 31–38. 

 

Exemplary claim 1 recites:

1. A captive screw attachable to a panel, for attaching the panel to a surface, the surface having a threaded hole, the captive screw 

comprising:

a) a screw having a head portion and a shaft having at least a threaded portion, said head portion 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 securement 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, “rigidly secure” is not defined in the intrinsic record and nothing 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 displacement 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 protrusions 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 pressfitting, 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 after 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 further 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 annular 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 displacement. Rather, the claims require that knob material 

fill the chamfer, without specifying how the material does 

so. Further, even though Southco argued in the reexamination 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 statements 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 chamfer. 

* * * 

We vacate the grant of summary judgment as to 

claims 1–6 and 8–12 of the ’012 patent because the district 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 evidence 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 summary 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 publication of Fivetech’s website, which includes a catalog depicting 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 application 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 noninfringement, determining that the Lanham Act did not 

apply, concluding that “neither Fivetech’s website, product 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 placement 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 judgment 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 printout 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 commerce. 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 judgment 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.