N OTE : This disposition is nonprecedential.



# United States **Court of Appeals**  **for the Federal Circuit**

______________________

UCP INTERNATIONAL CO MPANY LIMITED,
GLOBAL UNITED ENTERP RISES LIMITED, Plaintiffs

- Appellees

v.

BALSAM BRANDS INC., BALSAM
INTERNATIONAL UNLIMI TED COMPANY, Defendants

- Appellants

______________________

2018

- 1256

______________________

Appeal from the United States District Court for the
Northern District of California in No. 3:16

- cv

- 07255

- WHO, Judge William H. Or rick

, III.

______________________

S EALED O PINION I SSUED : September 19, 2019

P UBLIC O PINION I SSUED : October 7 , 2019 ∗

______________________

P ATRICIA L YNN P EDEN , Burke, Williams & Sorensen, LLP, Oakland, CA, argued for plaintiffs

- appellees. Also represented by B RYAN C HRISTOPHER S MITH , LeClairRyan,

∗ This opinion was originally filed under seal and has
been unsealed in full.UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 2

A Professional Corporation, Rochester, NY.

D EANNE M AYNARD , Morrison & Foerster LLP, Washington, DC, argued for defendants

- appellants. Also represented by S ETH W. L LOYD ; R OSE S. L EE , Los Angeles, CA;

M ICHAEL A LLEN J ACOBS , San Francisco, CA; M ARC N.

B ERNSTEIN , The Business Litigation Group, P.C. , San Francisco, CA.

______________________

Before W ALLACH

, C LEVENGER

, and T ARA NTO

, Circuit Judges.

C LEVENGER

, Circuit Judge.

Appellees UCP International Company and Global United Enterprises (collectively, “UCP”) sued Appellants
Balsam Brands Inc. and Balsam International Unlimited (together, “Balsam”) in the U.S. District Court for theNorthern District of California seeking a declaratory judgment of non

- infringement of all claims of Balsam’s U.S. Patent Nos. 8,062,718 (“the ’718 patent”) and 8,993,077 (“the ’077 patent”) (collectively, “the Patents

- in

- Suit”)

. The District Court gr anted UCP’s motion for summary judgment, holding that UCP’s product does not infringe , either literally or under the doctrine of equivalents, the Patents

- in

Suit

. The district court thereafter entered final judgment in favor of UCP and against Balsam. Ba lsam appeals from that judgment. For the reasons set forth below, we vacate the district court’s judgment and remand for proceedings consistent with this opinion.

B ACKGROUND

I

A

Balsam manufactures and sells invertible artificial Christmas trees. It owns the rights to the Patents

- in

- Suit, which were both issued to Bruce Schooley. The two patentsUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 3

share the same specification and they bear the same title,
“Invertible Christmas Tre e.” 1

The trees claimed by the Patents

- in

- Suit allow for easier set

- up and storage from year to year because, unlike previous artificial Christmas trees, the limbs of the patented tree s remain attached during storage

, and when the
tree is turned from the upside

- down to the right

- side

- up position, the limbs automatically deploy. The trees are also easy to deploy and collapse because they have two trunk portions

, a first portion that remains fixed to the movable stand, and a second portion that is connected to, and rotates about

, the fixed portion

. The two trunk portions are connected by what the patents refer to as a “pivot joint,” which allows an individual to reconfigure the tree from a collapsed to a deployed position “with a minimum of strength or dext erity.” ’718 patent, col. 2 ll. 7

– 8, 21.

The specification describes the second trunk portion as being “pivotably attached to the first trunk portion, at least indirectly, through at least one pivot joint.” Id.

, col. 2 ll.

2 0

– 2 1 . The “pivot joint” is “typically adjacent” to the upper end of the first trunk portion. Id.

, col. 2 ll. 2 1

– 2 4

. Further, the second trunk portion is “pivotably attached

. . . to the first trunk portion” at a part of the second trunk portion
“between a first end and a second end of the second trunk portion.” Id.

, col. 2 ll. 2 5

– 28

. The pivot joint “allows at least one second trunk portion to pivot substantially 180 ° from a
colla psed orientation

. . . to a deployed orientation .” Id. , col.
2 ll. 28

– 32.

Figures 18 through 21 of the Patents

- in

- Suit show different types of “pivot[s].” ’718 patent, col. 7 l. 51

. The specification explains that the “pivot 36 can be as simple as a

1 Because the Patents

- in

- Suit share a common specification, we cite to only the ’718 patent for ease of reference unless otherwise specified.UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 4

ho le passing laterally through the fixed trunk 30 with an axle 37 passing laterally through this hole .” Id.

, col. 7 ll.

3 1

– 3 3

. However, while the axle and hole pivot joint, shown below, “is perhaps the simplest embodiment for the pivot 36,” the specificati on explicitly allows for “ other embodiments

. . . including those depicted in FIGS. 18

- 21.” Id.

, col. 7 ll. 49

– 52.

Id

. , Fig. 9.

Fig ures 18 and 19 , reproduced below, “depict front andtop views of an alternate joint 136 with a bracket 138 pivotably attached ” to the fixed trunk portion and either pivotably attached or fixed to the rotating trunk portion. Id.

, col. 7 ll. 52

– 56. The rotation of the second, rotating tru nkin Fig. 18 occurs “by first moving along arrow C’, then moving along arrow C”” to achieve 180 ° of rotation. Id.

, col. 7
ll. 5 7

– 59

.UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 5

Id. , Figs. 19 and 20.

Independent claim 1 of the ’718 patent is representative and recites:

A collapsible Christmas tree, comprising in combination:

a first trunk portion;

said first trunk portion having an elongate form extending between an upper end and a lower end, said upper end above said lower end when said first trunk portion is supported upon a floor;

a second trunk portion having an elongate form between a first end and a second end;

said second trunk portion including a plurality of limbs extending laterally therefrom;

a pivot joint coupling said first trunk portion to said second trunk portion in aUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 6

manner allowing pivoting of said second trunk portion relative to said first trunk portion ;
said pivot joint interfacing with said first trunk portion at a location closer to said upper end than to said lower end; and

said pivot joint interfacing with said second trunk portion at a location spaced from
both said first end and said second end of said second trunk portion.

Id . col. 17 ll. 9

– 29 (emphasis added)

.
B

UCP a lso manufacture s invertible artificial Christmas trees (“ the Accused Product ”). UCP is a Chinese manufacturer based in Hong Kong. UCP formally sold its invertibletrees to Frontage Marketing, Inc. and Cinmar, LLC (collectively, “Frontgate ”), until Balsam sued Frontgate in the
district court

, Balsam Brands Inc. v. Cinmar, LLC , No.

3:15

- cv

- 04829

- WHO (N.D. Cal.) (“the Frontgate Litigation”) , and obtained a settlement resulting in a stipulated
dismissal of the suit

. The relationship between UCP and Frontgat e did not continue after the suit was dismissed.

It is undisputed that the Accused Product also includes a stationary trunk and a movable trunk that are connected by a combination of a bracket, pins, and a slotted plate. UCP obtained a patent coverin g its Accused Product, which includes a figure, shown below, disclosing the slotted plate
inversion mechanism.UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 7

U.S. Patent No. 9,581,287, Fig. 1b.

II

In the Frontgate Litigation, Balsam sued Frontgate for its alleged infringement of the same p atents at issue in the current appeal. The Frontgate L itigation also took place in the same court and in front of the same judge as the action
below

. Balsam argued that Frontgate infringed the Patents

- in

- Suit by selling the artificial Christmas tree manufactured by UCP. Frontgate is Balsam’s closest competitor in the market for high

- end artificial Christmas trees.
While Balsam was aware that UCP manufactured Frontgate’s allegedly infringing trees, and that UCP agreed to defend and indemnify Frontgate, Balsam chose
not to sue UCP.

After a claim construction hearing, the district court issued a claim construction or der (“the Frontgate Order”) construing a number of limitations relating to the connection between the first and second trunks of the trees claimed by the Patents

- in

- Suit. See Balsam Brands Inc. v. Cinmar, LLC ( Frontgate ) , No. 15

- CV

- 04829

- WHO, 2016

WL 8346 172 (N.D. Cal. Sept. 1, 2016). The district court,adopting a slightly modified version of Frontgate’s proposed construction, construed “pivot joint” as “[a] joint allowing pivoting of the second trunk relative to the first trunk by a mechanical connectio n between the first trunk
and the second trunk from which the second trunk turnsUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 8

on a fixed point, changing the angle between the first and second trunk along their lengths.” Id. at *3. The district court, again adopting a slightly modified version of

Fr ontgate’s construction, construed “pivoting” as “[t]urning on a fixed point.” Id. at *10 . Consistent with Balsam’s construction, the district court construed “pivotably attached”and “pivotably joined” as “[a]ttached and permitting pivoting.” Id. at *11 . The district court also adopted Frontgate’s construction of “pivot joint element,” which construed the term as “[a] pivot joint that is placed on a separate spacing element to distance the pivot joint away from the end of the
second trunk.” Id. at *12. Rotating and rotation were construed as “turning around a fixed point” because the district court determined that the Patents

- in

- Suit used the terms “pivot” and “rotate” interchangeably. Id. at *13.

Shortly after the Frontgate Order issued, Balsam and Frontgate reached a settlement whereby Frontgate agreed to stop purchasing artificial Christmas trees from UCP (“the Agreement”). UCP was not part of the Agreement, and, in fact, the Agreement explicitly stated that it did not
release UCP from liability for infringement. J.A. 441 (“[T]he above release does not apply to or release UCP (asdefined above to include its Affiliates), or its officers, directors, shareholders, or agents.”). The parties filed a joint stipulation to dismiss th e case as a result of the Agreement.

On December 20, 2016, the same day that the district court dismissed Balsam’s suit against Frontgate pursuant to the joint stipulation, UCP filed the declaratory judgment action that is the subject of the current app eal

, UCP Int’l
Co. Ltd. v. Balsam Brands Inc. , No. 16

- CV

- 07255

- WHO (N.D. Cal

. )

. UCP sought a declaration of non

- infringement with respect to all claims of the Patents

- in

- Suit . Balsamfiled a motion to dismiss, claiming that there was no declaratory judgm ent jurisdiction because UCP’s c omplaintdid not allege that it was fearful of any legal action by Balsam, nor did it allege that Balsam threatened to sue UCP. In response, UCP amended its c omplaint, and Balsam filedUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 9

another motion to dismiss the amended c omplaint for the

same reasons a rticulated in its first motion to dismiss.

The district court denied Balsam’s motion because, despite the fact that Balsam contended that it had no interestin suing UCP, “Balsam’s representations and conduct concerning whether it wants to sue UCP are not the measure of Article III standing in a declaratory judgment case.”
UCP Int ’ l Co. Ltd. v. Balsam Brands Inc. ( Balsam I ) , 252 F. Supp. 3d 828, 833 (N.D. Cal. 2017)

. Because the district court found that “Balsam’s litigation against Frontgate
was an affi rmative act by Balsam to enforce its patent rights against alleged infringement by UCP’s Inversion Tree,” and because UCP “demonstrated that it has already engaged in, and plans to continue engaging in, activities that Balsam has alleged infringe its Flip T ree patents,” thedistrict court found that UCP had declaratory judgment jurisdiction. Id. at 833

– 35.

Prior to summary judgment, t he district court also decided that it would use the same claim constructions entered in its claim construction order in the Frontgate Litigation. Neither party objected to the district court’s decision. Instead, the parties disagreed ove r how the documents from the Frontgate L itigation would be imported into UCP’s declaratory judgment action. The parties reached an agreemen t to import specific documents from
the Frontgate Litigation, and submitted to the court a joint stipulation to that effect.

Shortly thereafter, the parties submitted their summary judgment motions, and the district court granted UCP’s motion for summary judgment of non

- infringement. As an initial matter, the district court rejected Balsam’s argument that “collateral estoppel should not apply to the Frontgate claim construction order. ” UCP Int’l Co. Ltd. v.
Balsam Brands Inc. ( Balsam II ) , No. 16

- CV

- 0725 5

- WHO,
2017 WL 5068568 , at *3 (N.D. Cal. Nov. 3, 2017). It found instead that, under Ninth Circuit law, collateral estoppelUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 10

would apply to the Frontgate Order, and Balsam wastherefore precluded from challenging the claim constructions in that Order.

As part of its literal infringement analysis, the districtcourt addressed Balsam’s expert’s opinion that UCP’s slotted plate design literally infringed the claimed pivot jointbecause (1) “the movable trunk portion turns on a fixed center on the slotted pla te, and (2) the movable trunk portion turns on either pin in the slotted plate, and each pin is fixed relative to the movable trunk portion .” Id

. at 4. The district court did not credit that opinion because it “ignore[d] the express language from the Frontgate order construing ‘pivot joint’ as ‘a mechanical connection . . . from which the second trunk turns on a fixed point.’” Id. (quoting Frontgate

, 2 016 WL 8346172 at *3 ). More specifically, thedistrict court found that Balsam’s expert’s opinion “ignore[d] that the second trunk must be connected to the fixed point,” and that “[i]f there is no connection between the fixed point and the second trunk, i t is impossible for the trunk to ‘turn[] on a fixed point.’” Id

. Because, according to the district court, there was no connection between the fixed center of the slotted plate and the second trunk in the
Accused Product , Balsam’s expert’s opinion on lit eral infringement could not prevent granting summary judgment
in UCP’s favor.

The district court also rejected Balsam’s argument that the Accused Product infringed the Patents

- in

- Suit under the doctrine of equivalents. Therefore, the district court
grante d UCP’s summary judgment motion of non

- infringement.

Balsam now appeals from the district court’s decision granting UCP’s summary judgment motion. We have jurisdiction to decide this appeal under 28 U.S.C. § 1295(a)(1).UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 11

D ISCUSSION

We review a district cou rt ’ s grant of summary judgment under the law of the regional circuit, which , in this case, is the Ninth Circuit. MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc. , 816 F.3d 1374, 1376 (Fed. Cir. 2016)

.

“ The Ninth Circuit reviews the grant of summary judgment de novo. ” Id.

Four main issues are presented for our review. First, Balsam argues that the district court lacked jurisdiction over the suit because no controversy existed between the parties when UCP filed its declaratory judgment action. Second, B alsam contends that the district court erred in applying collateral estoppel to the Frontgate Order. Third,Balsam claims that, even if the Frontgate Order was binding, the district court either misapplied or improperly modified the constructions in that Order in its summary judgment opinion. Forth, Balsam argues that the districtcourt erred in granting UCP’s motion for summary judgment of non

- infringement under the doctrine of equivalents. We address each of those issues in turn below.

I

We first addr ess the threshold question of whether thedistrict court had jurisdiction under the Declaratory Judgment Act because, if it did not, there would be no need to consider the merits of Balsam’s appeal. See Microchip Tech. Inc. v. Chamberlain Grp., Inc. , 441 F.3d 936, 938(Fed. Cir. 2006) (vacating the district court’s grant of summary judgment and remanding with instructions to dismiss the case where the district court lacked jurisdiction
under the D eclaratory J udgment A ct to reach the merits of the action). Federal Circuit law governs that inquiry when, as here, the underlying merits of an action involve patent infringement and/or validity. Minnesota Min. & Mfg. Co.
v. Norton Co. , 929 F.2d 670, 672 (Fed. Cir. 1991). We review de novo a district court ’ s jurisdictional determinationUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 12

under the Declaratory Judgment Act. Vanguard Research, Inc. v. PEAT, Inc. , 304 F.3d 1249, 1254 (Fed. Cir. 2002).

The Declaratory Judgment Act provides that “[i]n a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” 28 U.S.C. § 2201(a). The purpo se of the Declaratory Judgment Act, as the Supreme Court has explained, is to ameliorate thedilemma posed by “putting the challenger to the choice between abandoning his rights or risking prosecution.” MedImmune, Inc. v. Genentech, Inc. , 549 U.S. 118, 129 (2007). While there is no bright

- line rule for whether a dispute presents a case of actual controversy, the Supreme Court’s decisions require:

[T]hat the dispute be “definite and concrete, touching the legal relations of the parties having adverse legal interests”; and that it be “real and substantial” and “admi[t] of specific relief through a decree of a conclusive character, as distinguished from anopinion advising what the law would be upon a hypothetical state of facts.”

Id. at 127 ( quoting Aetna Lif e Ins. Co. of Hartford, Conn. v.
Haworth , 300 U.S. 227, 240

– 41 (1937)). The D eclaratory
J udgment A ct thus allows a potential patent infringer to bring suit before the patentee does when “the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Id. (quoting Maryland Cas. Co. v. Pac. Coal & Oil Co. , 312 U.S. 270, 273 (1941)).

Applying the Supreme Court’s holding in MedImmune

,we have held that “declaratory judgment jurisdiction generally will not arise merely on the basis that a party learnsUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 13

of the existence of a patent owned by another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee.” S anDisk Corp. v. STMicroelectronics, Inc. , 480 F.3d 1372, 138 0

– 8 1 (Fed. Cir. 2007). Generally, an affirmative act by the patentee is “conduct that can be reasonably inferred as demonstrating intent to enforce a patent.” Hewlett

–Packard Co. v. Acceleron LLC , 587 F.3d 1358, 1363 (Fed. Cir. 2009); see Asia Vital Components Co. v. Asetek Danmark A/S , 837 F.3d 1249, 1253 (Fed. Cir. 2016) (same).

Balsam contends that the district court lacked juris diction over UCP’s declaratory judgment action because Balsam took no affirmative acts indicating that it intended to enforce its patent rights against UCP. Balsam argues that it never sued UCP, it never threatened to sue UCP, and it
had no intention of s uing UCP. It argues additionally that it never sent a notice letter, demanded royalties, or even spoke to UCP prior to UCP’s declaratory judgment action. Further, Balsam contends that, based on our precedent, the Frontgate Litigation cannot evidence an i ntent by Balsam to enforce its patent rights against UCP. According to Balsam, the district court

, therefore

, erred in finding thatthe Frontgate Litigation was enough to show an affirmative act taken towards UCP.

UCP counters that, on numerous occasions during the Frontgate Litigation, Balsam acted affirmatively in a waythat demonstrated Balsam’s intentions to enforce its patent rights, and in a way that implicated UCP as potentially liable for infringement. UCP points to the fact that

, in the Frontgate Litigation, Balsam ’s complaint identified UCP’s trees as the accused product , it submitted interrogatory responses accusing UCP of making infringing trees

, and it submitted claim charts comparing its patented trees
to UCP’s trees. UCP also claims that Balsam represent ed

to both UCP’s counsel and the district court that it might sue UCP. Moreover, UCP contends that Balsam expresslyUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 14

left UCP out of its settlement agreement with Frontgate, indicating that Balsam reserved the right to sue UCP.

We agree with UCP. We have previously affirmed adistrict court’s determination that it had declaratory judgment jurisdiction where a patent holder sued a declaratoryjudgment plaintiff’s customers in a prior suit, and submitted claim charts in that suit implying that the declaratory judgment plaintiff could be liable for indirect infringement.
See Microsoft Corp. v. DataTern, Inc. , 755 F.3d 899, 905 (Fed. Cir. 2014). In Microsoft , the claim charts cited to the declaratory judgment plaintiff’s software t o support the patent holder’s allegations of infringement by the declaratory judgment plaintiff’s customers. Id. The claim charts also cited to the declaratory judgment plaintiff’s user guides and documentation for every claim limitation. Id. Because

p roviding instructions to use a product in an infringing manner is evidence of the required mental state for induc ed infringement , we held that there existed a substantial controversy regarding whether the declaratory judgment plaintiff induce d infringement based on the patent holder’s allegations of direct infringement

. Id.

The facts of this case are even stronger than those in Microsoft because the claims at issue in this case are product claims, not method claims. Balsam’s entire suit against Frontgat e was based on its sales of UCP’s trees. There was therefore no need to infer UCP’s liability based on Frontgate’s liability. In fact, Balsam admitted in its motion to dismiss for lack of subject matter jurisdiction that accusing Frontgate’s trees of inf ringement necessarily meant it was accusing UCP’s trees of infringement. J.A.306 (“[B]y accusing Frontgate trees Balsam was necessarily accusing UCP trees.”). Balsam’s claim charts in the Frontgate Litigation demonstrated in detail how it believed UCP’s trees infringed its patents

, see J.A. 493 (recognizing UCP as the manufacturer of all of the accused trees cited in the claim charts), and its interrogatory responses stated that Frontgate “purchased and importedUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 15

the[] infringing trees from UCP.” J.A. 62 6. During the Frontgate L itigation, Balsam also informed the districtcourt that it might find it necessary to add UCP as a defendant in the infringement suit, see J.A. 766 (Case Mgmt. Tr.) (“THE COURT: . . . You told me in the last case that maybe you we re going to bring UCP into it .”), and whenBalsam and Frontgate decided to settle the suit, the settlement agreement explicitly excepted UCP from any waiver of liability for infringement.

Balsam’s counterarguments are unpersuasive. Balsam ’s assertion that declaratory judgment jurisdicti on cannot lie here because Balsam never sued

, threatened to sue

, or intended to sue UCP runs clearly counter to our precedent. See Arris Grp., Inc. v. British Telecommunications
PLC , 639 F.3d 1368, 1379 (Fed. Cir. 2011) (holding that “an express accusation [of infringement] is unnecessary”); Danisco U.S. Inc. v. Novozymes A/S , 744 F.3d 1325, 1330 (Fed.Cir. 2014) (“Article III does not mandate that the declaratory judgment defendant have threatened litigation or otherwise taken action to enforce its rights before a justiciable controversy can arise .”); SanDisk

, 480 F.3d at 1382

– 83 (“We decline to hold that Jorgenson ’ s statement that STwould not sue SanDisk eliminates the justiciable controversy created by ST ’ s actions, because ST has engaged in a
course of conduct that shows a preparedness and willingness to enforce its patent rights despite Jorgenson ’ s statement.”).

Balsam’s reliance on our decision in Allied Mineral Prod., Inc. v. Osmi, Inc. , 870 F.3d 1337 (Fed. Cir. 2017) is also misplaced. Balsam reli es on Allied to support its argument that, without some form of communication between Balsam and UCP indicating that Balsam intended to enforce its patent rights against UCP, UCP cannot use the Frontgate Litigation to establish declaratory judgment jurisdi ction. In Allied , however, we found that the totality of the circumstances did not support declaratory judgment jurisdiction because the patentee had never directed anyUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 16

actions toward the declaratory judgment plaintiff, and it had never litigated or threa ted litigation in the U.S. on itsU.S. patent that was the subject of the declaratory judgment action. 870 F.3d at 1339. The patentee brought suit in Mexico, on its Mexican patent, against Mexican entities, based on alleged infringement that occurred in Mexico. Id.The declaratory judgment plaintiff, the American manufacturer of the allegedly infringing Mexican products,claimed a controversy sufficient to confer declaratory judgment jurisdiction based on an assumption that that the patentee would, at s ome point, probably decide to enforce itsU.S. patent in the U.S. court system against the manufacturer, an entity not related to the Mexican companies. Id. at 1341. Given the particular facts presented, we found too hypothetical that assumption, and thu s there was no controversy of sufficient immediacy and reality to establish declaratory judgment jurisdiction. Id.

Here, Balsam brought suit against Frontgate in a U.S.district court on the same patents at issue in the declaratory judgment action. Dur ing that suit, Balsam also explicitly stated that it might find it necessary to sue UCP. As we explained in Arris , jurisdiction does not turn on
whether the patentee specifically communicated with the declaratory judgment plaintiff

. See 639 F.3d at 1378 (“[D ] irect communication between a patentee and a declaratory plaintiff is not necessary to confer standing.”). Instead, the relevant inquiry is whether the patentee’s actions “can be reasonably infer red as demonstrating intent to enforce a patent.” Hewlett

– Packard , 587 F.3d at
1363. Balsam’s conduct demonstrates that intent.

In the wake of MedImmune , we have also reiteratedthat “the issue of whether there has been meaningful preparation to conduct potentially infringing activity remainsan important element” to consider in a declaratory judgment jurisdiction analysis. Cat Tech LLC v. TubeMaster,

In c. , 528 F.3d 871, 880 (Fed. Cir. 2008)

. “If a declaratory judgment plaintiff has not taken significant, concrete stepsUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 17

to conduct infringing activity, the dispute is neither ‘immediate’ nor ‘real’” and thus an actual controversy between the parties cannot exist for purposes of establishing declaratory judgment jurisdiction. Id.

Balsam claims that UCP failed to demonstrate that it was engaging in potentially infringing acts in the United States when it filed suit against Balsam. According to Balsam, UCP manufactures its trees in China, and when UCPfiled suit, it no longer had any U.S. sales or customers because its exclusive U.S. customer, Frontgate, stopped purchasing UCP’s trees as part of the Agreement with Balsam. Balsam further argues that, to the extent that UCP’s amended complaint alleged preparations to begin selling its artificial Christmas trees in the U.S. without Frontgate,those allegations were both vague and incapable of supporting jurisdiction at the time the action was filed. Balsam cla ims that those allegations could not have been true at the time of filing because UCP filed its declaratory judgement action only a few hours after losing its sole U.S.

customer.

UCP argues in response that it was already engaging in potentially infringing acts when it filed its d eclaratory j udgment c omplaint. UCP contends that the Frontgate Litigation clearly demonstrated that UCP had already finalized the design of its trees and sold those trees in the U.S.
market. UCP claims that it also demonstrated i ts intention to continue selling its trees to other U.S. customers besides Frontgate. Thus, regardless of whether it was currently making sales of its trees, UCP argues that it clearly showed meaningful preparation to conduct potentially infringing
activi ty, which is all that is required.

Again, we agree with UCP. There is no requirementthat a declaratory judgment plaintiff actually sell its potentially infringing products for jurisdiction to lie. See id.

at 881 (“[A] party need not have engaged in the actual manufacture or sale of a potentially infringing product to obtainUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 18

a declaratory judgment of non

- infringement.”). Thus, wefind unpersuasive Balsam’s argument that UCP cannot establish declaratory judgment jurisdiction because it is no longer conduc ting infringing activity after the Agreement with Frontgate.

We also find unpersuasive Balsam’s contention that
UCP failed to demonstrate that it was preparing to conduct infringing activity after losing Frontgate as a customer . In
its amended declarato ry judgment complaint, UCP stated
that it “intend s to sell its inversion tree in the U.S., and isin discussions with a potential customer who seeks to purchase UCP’s inversion tree.” J.A. 222. It stated additionally that it was “taking steps in preparat ion for making direct sales into the U.S,” and that it “has an inventory of inversion trees it is actively seeking to sell.” Id. ; J.A. 227.A declaration submitted by UCP’s Vice President of Production Management supported those allegations. Contrary to Balsam’s arguments, those allegations properly support UCP’s declaratory judgment jurisdiction.

This court has stated previously that “the proper focus in determining jurisdiction are ‘the facts existing at the time the complaint under consid eration was filed.’” Prasco, LLC v. Medicis Pharm. Corp. , 537 F.3d 1329, 1337 (Fed. Cir. 2008) (quoting GAF Bldg. Materials Corp. v. Elk Corp.

, 90 F.3d 479, 483 (Fed. Cir. 1996)). The Supreme Court has also said that “when a plaintiff files a complaint i n federal court and then voluntarily amends the complaint, courts look to the amended complaint to determine jurisdiction.”
Rockwell Int ’ l Corp. v. United States , 549 U.S. 457, 473

– 74 (2007). It is true tha t “[l]ater events may not create jurisdiction whe re none existed at the time of filing,” Spectronics Corp. v. H.B. Fuller Co. , 940 F.2d 631, 635 (Fed. Cir. 1991), abrogated on other grounds by Liquid Dynamics Corp. v. Vaughan Co. , 355 F.3d 1361 (Fed. Cir. 2004)

, but, as long as the facts alleged in an am ended complaint didnot arise after filing, we may properly consider them in determining jurisdiction.UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 19

There is no dispute that UCP was successfully selling a relatively large volume of potentially infringing trees in the U.S. prior to filing its declar atory judgment action.
There is

, therefore

, a strong inference that UCP ha d an inventory of potentially infringing trees, as it alleges, and
that it had planned to sell that inventory, either directly or through a distributor, into the U.S. at the time it filed its declaratory judgment action. Regardless of the fact that itlost Frontgate’s business shortly before filing its declaratory judgment action, there is no reason to believe that UCP was not soliciting other customers or looking for ways
to sell i ts product directly in the U.S. There is no requirement that UCP allege more than it did to establish a controversy for purposes of declaratory judgment jurisdiction. See Arkema Inc. v. Honeywell Int’l, Inc. , 706 F.3d 1351, 1358 (Fed. Cir. 2013 ) (holdin g that, where it was clear that Arkema wished to sell its product, and manufacturerswished to purchase that product, there was “no requirement that Arkema identify the particular manufacturersthat will purchase [Arkema’s product]” for purposes of establi shing declaratory judgment jurisdiction).

Considering the totality of the circumstances, we agree
with the district court that there is a substantial controversy of sufficient immediacy and reality to confer declaratory judgment jurisdiction.

II

Turnin g to the merits of Balsam’s appeal, Balsam first contends that summary judgment of non

- infringement
must be reversed because it is based on an incorrect claim construction imported from the Frontgate Litigation. According to Balsam, the district court in the Frontgate Litigation erred in construing “pivot joint” and “pivoting” to require that the second trunk of the invertible Christmas tree “turn on a fixed point.” Frontgate , 2016 WL 8346172 at *3, *10. The district court below applied the constructions from the Frontgate Order because it held that theUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 20

doctrine of collateral estoppel applied to that Order. Balsam argues that, contrary to the district court’s conclusion, the doctrine of collateral estoppel does not apply to the Frontgate Order , and thus it should not be precluded from challenging those constructions in its suit with UCP.

We find it unnecessary to address the parties’ arguments regarding collateral estoppel because, for the reasons discussed below, we find no error in the Frontgate
court’s constructions of the “pivot joint” and “pivoting” terms. Thus, even if we disagreed with the district court that collateral estoppel applied to the Frontgate Order, itwould not be a reason to reverse the district court’s judgment.

“[C]laim construction must begin with the words of the
claims themselves.” Amgen Inc. v. Hoechst Marion Rous

sel, Inc. , 457 F.3d 1293, 1301 (Fed. Cir. 2006). “The words used in the claims are interpreted in light of the intrinsic evidence of record, including the written description, the drawings, and the prosecution history

. . . . ” Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 132 4 (Fed. Cir. 2002)

. To the extent the district court relied on intrinsic evidence in construing the claim terms, we review th e district court’s analysis de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 841 (2015).

In addition to intrinsic evidence, district courts canalso look to extrinsic evidence in the form of expert testimony to, among other things “provide background on the technology at issue” or “establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.” Phillips v. AWH Corp. , 415 F.3d 1303,1318 (Fed. Cir. 2005). Extrinsic evidence is, however, generally viewed as less reliable than intrinsic evidence in determining the proper construction of a claim term. Id. To
the extent the district court relie d on extrinsic evidence toconstrue the claims, we must review those factual determinations for clear error. Teva Pharm., 135 S. Ct. at 838 , 841.UCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 21

In the Frontgate Order, the district court construed the claim terms “pivot joint” and “pivoting,” among others. For both terms, it adopted slightly modified versions of Frontgate’s constructions. It construe d “pivot joint” as “[a] joint allowing pivoting of the second trunk relative to the first trunk by a mechanical connection between the first
and the second trunk from which the second trunk turns on a fixed point, changing the angle between the first trunk and the second trunk along their lengths.” Frontgate , 2016
WL 8346172 at *3. It construed “pivoting” as “turning on
a fixed point.” Id. at *10. Both below and on appeal, Balsam takes issue with the “on a fixed point” aspect of those
constructions. Ba lsam contends that the “on a fixed point”limitation is not supported by the intrinsic evidence. Instead, Balsam argues that the intrinsic evidence describes “pivoting” more broadly as the relative motion a pivot joint permits between the first and second trunk. We disagree.

Neither Balsam nor its expert, Dr. McCarthy, dispute that, to a person having ordinary skill in the art(“PHOSITA”), the ordinary and customary meaning of pivoting requires movement around a roughly fixed point. See
Id. at *6 (“Balsa m does not dispute that Frontgate’s position on the ordinary and customary meaning of ‘pivot’ is generally accurate.”); J.A. 3784 (McCarthy Deposition) (“Q[:] Have you heard the fulcrum in a lever system also called a pivot? A[:] Yes. . . . Q[:] So in a si mple lever system, the load travels in a circle around the fulcrum? A[:] In this canonical representation, that would be roughly correct.”);
id. (“ A[:] . . . p ivoting around a point will describe a circular path .

. . .”); J.A. 3788 (McCarthy Deposition) (“ A[:] . . . [ a PHOSITA] might understand ‘pivoting’ as in a canonical
sense of . . . it rotates

-- something rotates around a shaft.”). It argues instead that the Patents

- in

- Suit use the term in
a broader sense. None of Balsam’s citations to the intrinsic evidence, however, undermine the presumption that “pivot” and “pivoting” are used in the customary sense, and there is no evidence that the patentee acted as his ownUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 22

lexicographer when he used the terms “pivot ” and “pivoting.” See Prima Te k II, L.L.C. v. Polypap, S.A.R.L. , 318 F.3d 1143, 1148 (Fed. Cir. 2003) (explaining that there is generally a “heavy presumption in favor of the ordinarymeaning of claim language as understood by one of ordinary skill in the art

, ” which can be overcome by the patentee’s lexicography only when the patentee “clearly set[s] forth an explicit definition for a claim term” ) . In fact, in every preferred embodiment in the specification “the firstand second trunk portions are attached in a way that allows for mot ion on a fixed point,” as the district court correctly found. Frontgate

, 2016 WL 8346172 at * 10.

Balsam cites to its expert’s testimony to support its argument that the preferred embodiment shown in Figure 18
of the Patents

- in

- Suit discloses a pivot joint that allows for
both translational and rotational movement . According to Dr. McCarthy, that means that the pivot joint in Figure 18
has multiple axes of rotation , demonstrating that the second trunk is not limited to movement about any particular fixed p oint

. See J.A. 3023

– 25 (“[W]hen the body is translating (moving in space) at the same time it is rotating (changing in orientation), . . . there is no stationary, i.e. fixed, single axis of rotation . . . .”) . Thus, Balsam contends
that requiring fixed

- p oint rotational movement would read the preferred embodiment shown in Figure 18 out of the
claims , a fact that puts the construction squarely at odds
with a fundamental canon of claim construction.

Balsam’s argument is unpersuasive. The Patents

- in

Suit al low for an indirect connection between the first and
second trunks. See ’718 patent, col. 2 ll. 19

– 21 (“[A]t least one second trunk portion pivotably attached to the first trunk portion, at least indirectly , through at least one pivot joint.” (emphasis ad ded)). The preferred embodiment shown in Figure 18 discloses such an indirect connection.
That indirect connection between the first and second trunks does not, however, undermine the district court’s construction, regardless of whether it permits bothUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 23

r otational and translational movement. The bracket that indirectly couples the first and second trunks in Figure 18 is still attached to a fixed point at the top of the first, fixed
trunk. The movement of the second trunk relative to the
first trunk is ac complished, at least in part, by the bracket’s motion at its point of attachment, i.e., the “fixed point.” See ’718 patent, col. 7 ll. 52

– 59 (describing the bracket as pivotably attached to the fixed trunk portion, and as either fixed or pivotably attache d to the movable trunk). Therefore, in Figure 18 “the first and second trunk portions are attached in a way that allows motion on a fixed point,” satisfying the
district court’s claim construction. Frontgate

, 2016 WL
8346172 at * 10. Balsam’s expert test imony thus does nothing to undermine the fact that the terms “pivot” and “pivoting” are used in their ordinary sense, as the district court properly recognized in its construction.

III

Next, Balsam argues that, even if collateral estoppel applied to th e Fron t gate Order , or we found no error in the Frontgate constructions, summary judgment of non

- infringement must still be reversed because the district court misapplied or erroneously modified its construction of the “pivot” claim terms to require a direc t connection between
the first and second trunks.

In its decision granting UCP’s motion for summary judgment of non

- infringement, the district court found Balsam’s expert’s declaration unpersuasive, and therefore incapable of raising a genuine issue of mat erial fact, becauseit was “inconsistent with the express language and meaning of the Frontgate Order.” Balsam II

, 2017 WL 5068568
at *4. According to the district court, “[b]y describing the ‘fixed center on the slotted plate’ as consistent with the required ‘fixed point’ of a ‘pivot joint,’ McCarthy ignore[d] that the second trunk must be connected to the fixed point.”
Id. The district court explained that “[i]f there is no connection between the fixed point and the second trunk, it isUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 24

impossible f or the trunk to ‘turn[] on a fixed point .” Id. Because there was “no connection between the fixed center of the slotted plate and the second trunk ,” the district court
found that the A ccused P roduct could not meet the “pivot joint” limitation as it was c onstrued in the Frontgate Order. Id.

By requiring that there be a connection between the second trunk and the fixed point, and by finding that there existed no connection in the accused device, Balsam argues that the district court implicitly added a requ irement to the Frontgate construction that the second trunk be not just connected to the fixed point, but directly connected to that point. We agree.

In Dr. McCarthy’s declaration in support of Balsam’s opposition to UCP’s motion for summary judgment, he identified a fixed point on the first trunk of the Accused Product to which a “slotted plate” is attached. J.A. 1142. The second trunk is then attached to that slotted plate with a “bracket” and “pins.” J.A. 1145. Thus, the second trunk does appear to be connected to the fixed point, albeit indirectly. The district court therefore must have required a direct connection between the fixed point and the second trunk in order to find, without further analysis, that there
existed “no connection between the fixed center of the slotted plate and the second trunk .” Balsam II

, 2017 WL

5068568 at *4.

UCP argues in response that the district court’s construction of “pivot joint” always required a direct connection between the second trunk and the fixed point. U CP supports its argument by pointing to Frontgate’s proposed construction of “pivot joint,” which required “a mechanical
connection between the first trunk and the second trunk
from which the second trunk moves in a circle around a fixed point .” Frontgate

, 2016 WL 8346172 at *3

. According to UCP, the district court modified Frontgate’s proposed construction to include the language “turns on a fixedUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 25

point” for the specific purpose of requiring a direct connection between the second trunk and the fixed poin t. It claims therefore that the district court did not modify its construction at the summary judgment stage, and because collateral estoppel applies to the Frontgate Order , we should not consider Balsam’s arguments on this point. The record, however, does not support UCP’s argument.

Prior to issuing the Frontgate Order, the district court issued a tentative claim construction ruling to focus the parties’ arguments. Frontgate proposed the following construction for “pivot joint”: “A joint al lowing pivoting of the second trunk relative to the first trunk by a mechanical
connection between the first trunk and the second trunk
from which the second trunk moves in a circle around a fixed point.” Frontgate Litigation, ECF No. 106. The
court, ten tatively adopting a slightly modified version of Frontgate’s construction, construed the “pivot joint” term as “[a] joint allowing turning of the second trunk relative to the first trunk by a mechanical connection between the
first trunk and the second tru nk from which the secondtrunk moves around a fixed point, changing the angle between the first trunk and the second trunk along their lengths.” Id.

At the claim construction hearing, Frontgate took issue with the district court’s decision to remove the p hrase “in a circle” from Frontgate’s proposed construction

. Frontgate argued that the “pivot joint” claims were “structural claim[s]” that required “a physical pivot.” J.A. 3947. It noted additionally that the “pivot joint” claims included a
“functional limitation” in that the “pivot joint” must “allow[] pivoting of the second trunk relative to the first trunk.” J.A. 3949. According to Frontgate, “movementaround a fixed point when it’s pivoting is defined by a circle.” J.A. 3947. Thus, removing “in a circle” created a possible ambiguity, according to Frontgate, that the
movement of the two trunks relative to each other could encompass movement other than pivoting. FrontgateUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 26

explained that the court did not need to include the phrase
“in a circle” so long as its construction indicated by some other means that the two trunks were pivoting relative to each other. Frontgate suggested that the phrase “on a fixed point” alleviated the problem created by the district court’s
tentative construction because it would require an attachment between the fixed point and the second trunk such
that the movement of the second trunk would be confined to circular movement around the fixed point. The districtcourt adopted Frontgate’s suggestion in its final constructi on.
In the Frontgate Order, the district court recognized that the patents’ specification described the invention as including “at least one second trunk . . . portion pivotably attached to the first trunk portion, at least indirectly, through at least o ne pivot joint.” ’718 patent, col. 2 ll. 17

–21. The district court did not, however, find that the indirect attachment disclosure undermined its proposed “on a fixed point” construction because it said “nothing about the sort of motion allowed by the piv ot joint.” Frontgate

, 2016
WL 8346172 at * 10. According to the district court, even in the case of an indirect attachment, the second trunk was still “pivotably attached .

. . through a pivot joint,” and thus the trunks were still attached “in a way that allow[ed] for motion on a fixed point,” as required by the district court’s
construction. Id.

It is therefore clear that, in adopting a construction of “pivot joint” that included “turn[ing] on a fixed point,” the Frontgate court never intended that construction to limit the type of attachment between the first and second trunks
to a direct attachm ent. Instead, based on the arguments made during the claim construction hearing and the court’s analysis in the Frontgate Order, it appears that the “on afixed point” language was adopted to ensure that the movement at the “pivot joint” was restricted to pivoting, as opposed to other types of rotational movement. Because the direct connection requirement was added to theUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS INC

. 27

construction of “pivot joint” at summary judgment, collateral estoppel

— assuming without deciding that it applies to the Frontgate Order

— does not preclude Balsam from challenging that new requirement.

Now that we have determined that the district court modified the original construction of “pivot joint” laid outin the Frontgate Order, we must analyze whether the district court committed error in adopting that modified construction. We review a modification to a court’s priorconstruction the same way we review the original construction : de novo. Exxon Chem. Patents, Inc. v. Lubrizol Corp.

, 64 F.3d 1553, 1556 (Fed. Cir. 1995) (“No matte r when or how a judge performs the Markman task, on appeal we review the issue of claim interpretation independently without deference to the trial judge.”).

The intrinsic evidence here is dispositive. As the district court itself recognized, the Patents

- in

- Suit’s specification explicitly contemplates an indirect connection between
the first and second trunks. See ’718 patent, col. 2 ll. 17

–20 (“[T]he trunk includes at least two trunk portions including a first trunk portion adapted to be supported abovea floor and at least one second trunk portion pivotably attached to the first trunk portion, at least indirectly, through at least one pivot joint.”); id. col. 7 ll. 52

– 56 (“FIGS. 18 and 19 depict . . . a bracket 138 pivotably attached to the upper end 34 of the fixed trunk 30 and an end of the bracket 138 opposite the upper end 34 of the fixed trunk 30 either fixed or pivotably attached to the rotating trunk.”). Wethus find error in the district court’s implicit direct connection requirement because it r uns counter to the intrinsic
evidence.

As we mentioned above, the slotted plate and the pinsin the accused device appear to provide an indirect connection between the second trunk and a fixed point where the slotted plate is fastened to the first trunk. We therefore must vacate the district court’s finding of no literalUCP INTERNATIONAL CO MPANY LTD

. v. BALSAM BRANDS IN C

. 28

infringement and remand the case for a determination ofwhether the Accused Product meets the “pivot” claim limitations as those limitations were construed in the Frontgate Order without the erroneous direct connection modification added at summary judgment.

IV

Last, Balsam contends that the district court erred in granting summary judgment of non

- infringement under the doctrine of equivalents

. Balsam argues that it presented sufficien t evidence from which a reasonable factfinder could find the “pivot” claim limitations met under the doctrine of equivalents. Because we find error in the
district court’s modified construction of “pivot joint” at summary judgment, and because it is not c lear to us howthat error may have affected the court’s doctrine of equivalent’s analysis, we must also vacate the district court’s finding of no infringement under the doctrine of equivalents and remand for proceedings consistent with this opinion.

C ONCLU SION

For the reasons stated above, we hold that the district
court erred in its modified construction of “pivot joint” at summary judgment. We therefore vacate the district
court’s determination that the Accused Product does not infringe, either literally or under the doctrine of equivalents,
the asserted claims of the Patents

- in

- Suit. We remand the case for proceedings consistent with this opinion.

VACATED AND REMANDED

C OSTS

No costs.