NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

UCP INTERNATIONAL COMPANY LIMITED, 

GLOBAL UNITED ENTERPRISES LIMITED,

Plaintiffs-Appellees

v.

BALSAM BRANDS INC., BALSAM 

INTERNATIONAL UNLIMITED 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. Orrick, III.

______________________

SEALED OPINION ISSUED: September 19, 2019

PUBLIC OPINION ISSUED: October 7, 2019∗

______________________

PATRICIA LYNN PEDEN, Burke, Williams & Sorensen, 

LLP, Oakland, CA, argued for plaintiffs-appellees. Also 

represented by BRYAN CHRISTOPHER SMITH, LeClairRyan, 

 

∗ This opinion was originally filed under seal and has 

been unsealed in full.
2 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

A Professional Corporation, Rochester, NY. 

 DEANNE MAYNARD, Morrison & Foerster LLP, Washington, DC, argued for defendants-appellants. Also represented by SETH W. LLOYD; ROSE S. LEE, Los Angeles, CA; 

MICHAEL ALLEN JACOBS, San Francisco, CA; MARC N.

BERNSTEIN, The Business Litigation Group, P.C., San 

Francisco, CA. 

 ______________________

Before WALLACH, CLEVENGER, and TARANTO, Circuit 

Judges.

CLEVENGER, 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 the 

Northern 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 granted UCP’s motion for summary judgment,

holding that UCP’s product does not infringe, either literally or under the doctrine of equivalents, the Patents-inSuit. The district court thereafter entered final judgment 

in favor of UCP and against Balsam. Balsam 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.

BACKGROUND

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 patents 
UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC. 3

share the same specification and they bear the same title, 

“Invertible Christmas Tree.”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 trees 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 dexterity.” ’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. 

20–21. The “pivot joint” is “typically adjacent” to the upper 

end of the first trunk portion. Id., col. 2 ll. 21–24. 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. 25–28. The pivot joint “allows at least 

one second trunk portion to pivot substantially 180° from a 

collapsed 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.
4 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

hole passing laterally through the fixed trunk 30 with an 

axle 37 passing laterally through this hole.” Id., col. 7 ll. 

31–33. However, while the axle and hole pivot joint, shown 

below, “is perhaps the simplest embodiment for the pivot 

36,” the specification explicitly allows for “other embodiments . . . including those depicted in FIGS. 18-21.” Id., 

col. 7 ll. 49–52. 

Id., Fig. 9.

Figures 18 and 19, reproduced below, “depict front and 

top 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 trunk 

in Fig. 18 occurs “by first moving along arrow C’, then moving along arrow C”” to achieve 180° of rotation. Id., col. 7

ll. 57–59. 
UCP INTERNATIONAL COMPANY 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 a 
6 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

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 also manufactures invertible artificial Christmas 

trees (“the Accused Product”). UCP is a Chinese manufacturer based in Hong Kong. UCP formally sold its invertible 

trees 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 

Frontgate 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 covering its Accused Product, which 

includes a figure, shown below, disclosing the slotted plate 

inversion mechanism.
UCP INTERNATIONAL COMPANY 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 patents at issue in the 

current appeal. The Frontgate Litigation 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 order (“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 8346172 (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 connection between the first trunk 

and the second trunk from which the second trunk turns 
8 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

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 

Frontgate’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 (as 

defined above to include its Affiliates), or its officers, directors, shareholders, or agents.”). The parties filed a joint 

stipulation to dismiss the 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 appeal, 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. Balsam 

filed a motion to dismiss, claiming that there was no declaratory judgment jurisdiction because UCP’s complaint 

did 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 complaint, and Balsam filed 
UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC. 9

another motion to dismiss the amended complaint for the 

same reasons articulated in its first motion to dismiss. 

The district court denied Balsam’s motion because, despite the fact that Balsam contended that it had no interest 

in 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 affirmative 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 Tree patents,” the 

district court found that UCP had declaratory judgment jurisdiction. Id. at 833–35.

Prior to summary judgment, the 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 over how the documents from the Frontgate Litigation would be imported 

into UCP’s declaratory judgment action. The parties 

reached an agreement 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-07255-WHO, 

2017 WL 5068568, at *3 (N.D. Cal. Nov. 3, 2017). It found 

instead that, under Ninth Circuit law, collateral estoppel 
10 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

would apply to the Frontgate Order, and Balsam was 

therefore precluded from challenging the claim constructions in that Order. 

As part of its literal infringement analysis, the district 

court addressed Balsam’s expert’s opinion that UCP’s slotted plate design literally infringed the claimed pivot joint 

because (1) “the movable trunk portion turns on a fixed center on the slotted plate, 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, 2016 WL 8346172 at *3). More specifically, the 

district 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, it 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 literal 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

granted 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 COMPANY LTD. v. BALSAM BRANDS INC. 11

DISCUSSION

We review a district court’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, Balsam 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 district 

court 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 address the threshold question of whether the 

district 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 Declaratory Judgment Act 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 determination 
12 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

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 purpose of the Declaratory Judgment Act, 

as the Supreme Court has explained, is to ameliorate the 

dilemma 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 an 

opinion advising what the law would be upon a hypothetical state of facts.”

Id. at 127 (quoting Aetna Life Ins. Co. of Hartford, Conn. v. 

Haworth, 300 U.S. 227, 240–41 (1937)). The Declaratory 

Judgment Act 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 learns 
UCP INTERNATIONAL COMPANY 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.” SanDisk Corp. v. 

STMicroelectronics, Inc., 480 F.3d 1372, 1380–81 (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 jurisdiction 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 suing 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 intent by Balsam to enforce its patent rights against UCP. According to 

Balsam, the district court, therefore, erred in finding that 

the 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 way 

that 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 represented

to both UCP’s counsel and the district court that it might 

sue UCP. Moreover, UCP contends that Balsam expressly 
14 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

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 a 

district court’s determination that it had declaratory judgment jurisdiction where a patent holder sued a declaratory 

judgment 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 to 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 

providing instructions to use a product in an infringing 

manner is evidence of the required mental state for induced

infringement, we held that there existed a substantial controversy regarding whether the declaratory judgment 

plaintiff induced 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 

Frontgate 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 infringement 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 imported 
UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC. 15

the[] infringing trees from UCP.” J.A. 626. During the 

Frontgate Litigation, Balsam also informed the district 

court 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 were going to bring UCP into it.”), and when 

Balsam 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 jurisdiction 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 ST 

would 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 relies 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 

jurisdiction. In Allied, however, we found that the totality 

of the circumstances did not support declaratory judgment 

jurisdiction because the patentee had never directed any 
16 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

actions toward the declaratory judgment plaintiff, and it 

had never litigated or threated litigation in the U.S. on its 

U.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 some point, probably decide to enforce its 

U.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 thus 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. During 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 inferred 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 reiterated 

that “the issue of whether there has been meaningful preparation to conduct potentially infringing activity remains 

an important element” to consider in a declaratory judgment jurisdiction analysis. Cat Tech LLC v. TubeMaster, 

Inc., 528 F.3d 871, 880 (Fed. Cir. 2008). “If a declaratory 

judgment plaintiff has not taken significant, concrete steps 
UCP INTERNATIONAL COMPANY 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 UCP 

filed 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 claims 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 declaratory 

judgment complaint. 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 its 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 

activity, which is all that is required.

Again, we agree with UCP. There is no requirement 

that 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 obtain 
18 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

a declaratory judgment of non-infringement.”). Thus, we 

find unpersuasive Balsam’s argument that UCP cannot establish declaratory judgment jurisdiction because it is no 

longer conducting 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 declaratory judgment complaint, UCP stated 

that it “intends to sell its inversion tree in the U.S., and is 

in 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 preparation 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 consideration 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 in 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 that “[l]ater events may not create jurisdiction where 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 amended complaint did 

not arise after filing, we may properly consider them in determining jurisdiction. 
UCP INTERNATIONAL COMPANY 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 declaratory judgment action. 

There is, therefore, a strong inference that UCP had 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 it 

lost 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 its 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 ) (holding that, where it was clear that 

Arkema wished to sell its product, and manufacturers 

wished to purchase that product, there was “no requirement that Arkema identify the particular manufacturers 

that will purchase [Arkema’s product]” for purposes of establishing 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

Turning 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 the 
20 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

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, it 

would 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 Roussel, 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, 1324 (Fed. Cir. 

2002). To the extent the district court relied on intrinsic 

evidence in construing the claim terms, we review the 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 can 

also 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 relied on extrinsic evidence to 

construe the claims, we must review those factual determinations for clear error. Teva Pharm., 135 S. Ct. at 838, 841.
UCP INTERNATIONAL COMPANY 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 construed “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. Balsam 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 (“Balsam 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 simple lever system, 

the load travels in a circle around the fulcrum? A[:] In this 

canonical representation, that would be roughly correct.”); 

id. (“A[:] . . . pivoting 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 own 
22 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

lexicographer when he used the terms “pivot” and “pivoting.” See Prima Tek 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 ordinary 

meaning 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 first 

and second trunk portions are attached in a way that allows for motion 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 point. 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-point 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-inSuit allow 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 added)). 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 both 
UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC. 23

rotational 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 accomplished, 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 attached 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 testimony 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 the Frontgate 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 direct 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 material fact, because 

it 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 is 
24 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

impossible for 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 Accused Product could not meet the “pivot 

joint” limitation as it was construed 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 requirement 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. UCP 

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 fixed 
UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC. 25

point” for the specific purpose of requiring a direct connection between the second trunk and the fixed point. 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 allowing 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, tentatively 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 trunk from which the second 

trunk 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 phrase “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, “movement 

around 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. Frontgate 
26 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

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 district 

court adopted Frontgate’s suggestion in its final construction. 

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 one 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 pivot 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 attachment. 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 a 

fixed 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 the 
UCP INTERNATIONAL COMPANY 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 out 

in 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 prior 

construction 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 matter 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 above 

a 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.”). We 

thus find error in the district court’s implicit direct connection requirement because it runs counter to the intrinsic 

evidence. 

As we mentioned above, the slotted plate and the pins 

in 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 literal 
28 UCP INTERNATIONAL COMPANY LTD. v. BALSAM BRANDS INC.

infringement and remand the case for a determination of 

whether 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 sufficient 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 clear to us how 

that 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.

CONCLUSION

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

COSTS

No costs.