Proveris Scientific Corp. v. Innovasystems, Inc.
739 F.3d 1367
| Fed. Cir. | 2014Background
- Proveris owns U.S. Patent No. 6,785,400, which claims an apparatus that produces image data representing sequential images of an aerosol spray plume to capture the time-evolution of the spray.
- Innova conceded infringement of several dependent claims (3–10 and 13) for its OSA product; the district court enjoined Innova from making, using, selling, offering for sale, importing or exporting the OSA; this court affirmed.
- Innova later introduced a modified product, the ADSA, which it contends differs because users select image ranges after the spray event rather than before; Proveris moved to hold Innova in contempt for violating the injunction.
- The district court declined to construe the disputed claim language (notably the preamble phrase “at a predetermined instant in time”), found the ADSA not more than colorably different from the OSA, held Innova in contempt, and awarded disgorgement sanctions; Innova appealed and Proveris cross‑appealed aspects of the sanctions ruling.
- The Federal Circuit reviewed the contempt finding de novo, applied the TiVo two-step test (colorable-difference then infringement), and identified that the district court erred by failing to construe the claim language because there was no prior claim construction in the case (Innova had conceded infringement).
- The court held that the preamble of claim 3 is limiting but remanded because the record lacks sufficient development to construe the disputed phrase “at a predetermined instant in time” and to re-evaluate infringement and sanctions under that construction.
Issues
| Issue | Proveris' Argument | Innova's Argument | Held |
|---|---|---|---|
| Whether ADSA is more than colorably different from the enjoined OSA | ADSA is functionally the same; no more than colorably different | ADSA removed the feature of selecting images “at a predetermined instant in time,” making it more than colorably different | ADSA is not more than colorably different (fact-based finding supported by user manuals); TiVo requires next-step analysis |
| Whether the preamble phrase “at a predetermined instant in time” imports a claim limitation | Preamble need not limit if not previously construed; contends prior proceedings settled scope | Innova contends the preamble was understood to require pre-spray selection, making ADSA noninfringing | Preamble is limiting and imports a limitation into claim 3, but the precise construction of the phrase must be decided on remand |
| Whether the district court could decline claim construction in contempt proceedings | Proveris: prior proceedings bound the parties; no new construction needed | Innova: fairness requires construction because it conceded earlier without an express construction | Court: when there was no prior claim construction (concession instead), the district court erred by refusing to construe the claim for contempt proceedings |
| Whether Innova may relitigate validity based on a new construction | Proveris: validity was litigated; Innova had full opportunity earlier | Innova: new construction of preamble affects prior validity analysis and should reopen validity defenses | Court: Innova may not present new invalidity arguments here because validity was litigated earlier; exception exists when a new claim construction would materially affect earlier invalidity ruling, which was not shown |
Key Cases Cited
- TiVo Inc. v. Echostar Corp., 646 F.3d 869 (Fed. Cir. 2011) (two-step test for enforcing injunctions against modified products)
- Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343 (Fed. Cir. 2009) (claim construction precedes infringement analysis)
- NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (when a preamble recites essential structure it may be limiting)
- Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) (preamble limiting when necessary to give life and meaning to the claim)
- Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) (specification references can make a preamble limiting)
- Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 154 F.3d 1345 (Fed. Cir. 1998) (validity and original-device infringement generally not relitigable in contempt proceedings)
- Nazomi Commc’ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364 (Fed. Cir. 2005) (remand required when district court provides no claim-construction reasoning)