Proveris Scientific Corp. v. Innovasystems, Inc., 2013-1166, -1190 (Fed. Cir. Jan. 13, 2014) (appeal of 05-CV-12424 (D. Mass.) (Young, D.J.)) [Contempt; Permanent Injunctions; Claim Construction].

The Federal Circuit recently vacated a contempt order related to the enforcement of a permanent injunction entered by the U.S. District Court for the District of Massachusetts (Young, D.J.). The contempt order resulted from an alleged violation by Innovasystems, Inc. (“Innova”) of a permanent injunction previously granted to Proveris Scientific Corporation (“Proveris”). The Federal Circuit vacated the contempt order because it determined that Judge Young should have engaged in claim construction for a previously undisputed claim as part of the determination regarding whether a newly accused product violated the injunction against continued infringement.

The Court had entered a permanent injunction prohibiting Innova from “making, using, selling, offering for sale or importing into or exporting out of the United States” a device known as the Optical Spray Analyzer (“OSA”). The OSA device and the patent at issue, U.S. Patent No. 6,785,400 (the “‘400 patent”), relate to inhalers and nasal sprayers, and more specifically to triggering a spray plume and collecting data on the plume via an illumination device and an imaging device. The injunction issued after Innova conceded infringement of claims 3-10 and 13 of the ‘400 patent and lost its invalidity arguments related to those claims.1

Innova then modified its OSA device and began selling a new device known as the Aerosol Drug Spray Analyzer (“ADSA”). Innova claimed that its ADSA device was significantly different than the OSA device and that the ADSA device did not infringe claim 3 of the ‘400 patent. Proveris disagreed, and filed a contempt motion based on Innova’s manufacture and sale of the ADSA device. The Court agreed with Proveris and entered a contempt order against Innova. Innova appealed the contempt order and related sanctions, while Proveris cross-appealed certain aspects of the related sanctions ruling.

The Court engages in a two-step test to evaluate whether an injunction against continued infringement has been violated by a newly accused product. First, a party seeking to enforce the injunction must show that “the newly accused product is not more than colorably different from the product found to infringe.” That is, the Court must determine if the modification or removal of elements of the product previously found to be infringing is significant. If the newly accused product is colorably different from the product previously found to infringe, then the patent owner must bring a new infringement action. If it is not colorably different, then the second step—determining whether the newly accused product in fact infringes the relevant claims—is undertaken.

With respect to the first step of the two-step test, the Federal Circuit agreed with the District Court’s finding that the ADSA device was not colorably different from the OSA device, and in fact concluded that the two devices were functionally identical. However, the Federal Circuit departed from the District Court’s decision with respect to the second step of the test.

The second step dispute related to language in the preamble of claim 3. During the first litigation, infringement of claim 3 was conceded, and thus no terms of claim 3 were construed. However, now the parties dispute whether language in the preamble imported a limitation into the claim, and if so, whether that language resulted in non-infringement of the ‘400 patent.

Innova asserted that the portion of the claim 3 preamble reciting “An apparatus for producing image data representative of at least one sequential set of images of a spray plume…at a predetermined instant in time” imported limitations into the claim. It was Innova’s position that the OSA device was found to infringe this recitation because it allowed a user to identify what range of images he or she wanted to analyze before activating the spray plume, i.e., “a predetermined instant in time,” but that the ADSA device did not infringe this limitation because the ADSA device requires that the user first activate the spray plume and then later determine what range of images to analyze.

The Federal Circuit disagreed with the District Court, which found that, because Innova could have raised claim construction issues in the underlying infringement action but did not, claim 3 should not be construed and could not have its preamble import a limitation into the claim. The Federal Circuit noted that in contempt proceedings the District Court is bound by any prior claim constructions it performed, however, because there were no prior claim constructions for claim 3, the Court erred by failing to engage in a claim construction analysis. Further, the Federal Circuit agreed with Innova and found that the preamble imports a limitation into the claim both because it recites essential structure or steps, and because terms in the preamble are relied upon for antecedent basis.

The Federal Circuit did not construe the meaning of any terms in the preamble because it did not have enough information on the record to resolve the issue in view of the fact that no Markman hearing had been conducted. Thus, the Federal Circuit vacated the contempt order and remanded the case back to the District Court for claim construction and infringement determinations. Regarding the other issues heard by the Federal Circuit on appeal, it determined that: (1) Innova was barred from presenting new invalidity arguments against claim 3 because it already had a full and fair opportunity to present such challenges; and (2) it was premature to address the issues raised in Proveris’s cross-appeal relating to sanctions, although the Federal Circuit indicated that it did not appear that the district court erred in its damage awards.