Appellants, Ricoh Company, Ltd. and Ri-coh Corporation (collectively Ricoh), appeal from the order of the Unitеd States District Court for the Western District of Pennsylvania denying Ricoh’s motion for a preliminary injunction against Appellee, International Communication Materials, Inc. (ICMI). Ricoh Co. v. Int’l Communication Materials, Inc., 93-1196 (W.D.Pa. Aug. 17, 1995). We affirm.
BACKGROUND
This litigation originated in 1993, when Ricoh sued ICMI for, inter alia, infringement of U.S. Patents Nos. 4,611,730 and 4,878,603 on toner cartridges for photocopiers (the ’730 and ’603 patents). The 1993 suit resulted in a permanent injunction, issued in 1994, against ICMI and a consent order whereby ICMI conсeded that the ’730 and ’603 patents were valid and infringed.
Shortly after the 1993 lawsuit was filed, ICMI began an effort to “design around the ’730 and ’603 patents.” In January of 1995, ICMI provided Ricoh with a prototype of its redesigned cartridge and informed Ri-coh that ICMI intended to market it. Ricoh was оf the opinion that ICMI’s redesign was an insubstantial modification of ICMI’s previous cartridges, which admittedly infringed Ricoh’s patents.
As a result of ICMI’s intention to market its redesigned cartridge, Ricoh’s attorney delivered an 8-page letter, on May 18, 1995, to United States District Judge Donald E. Ziegler, who issued the permanent injunction in 1994, requesting an “immediate conference” to address ICMI’s alleged violation of the permanent injunction. Ricoh informed Judge Ziegler that ICMI’s redesigned cartridge “infringes at a minimum claim 1 of the ’603 patent” and filed a motion to hold ICMI in contempt for violation of the 1994 injunction. In turn, ICMI, on May 19, 1995, filed a declaratory judgment action seeking a declaration of nоninfringement of the ’603 patent. Ricoh counterclaimed for patent infringement and moved for a preliminary injunction. .
The district cоurt held that the “clear weight of the evidence establishes that the modified cartridge of ICMI does not fall within the admitted and adjudicated scope of the claims.” Specifically, the court stated that the “evidence preponderates that *318 [ICMPs] redеsigned cartridge does not infringe claim 1 of the ’603 patent.” Therefore, Ricoh’s motion for a preliminary injunction was denied because, according to the court, Ricoh failed “to prove likely success on the merits.” Of particular importance, hоwever, is that the court also found “that there are substantial open issues and questions that must be litigated before a finding of infringement сan be made, including claim interpretation and whether rotation of less than the entire cartridge constitutes infringement.”
Ricoh аppeals the district court’s denial of its motion for a preliminary injunction, and its correctness is the sole issue now before us.
DISCUSSION
This case presents us with the following question: Did this district court abuse its discretion by deferring, at the preliminary injunction stage, final determination of the meaning of a patent claim when the court perceives that there are substantial issues and questions pertaining to сlaim construction that need to be litigated? We hold that it did not.
We have held that the standard of review of a district court’s denial of a preliminary injunction motion is narrow. As this court stated in
Smith International, Inc. v. Hughes Tool Co.,
Ricoh argues that the district court’s denial of its preliminary injunction motion “depended entirely on the court’s” erroneous construction of Claim 1 of the ’603 patent. Thе Supreme Court has recently held that claim construction is. a question for a judge to decide.
Markman v. Westview Instruments, Inc.,
— U.S. -, -,
Turning to the case bеfore us, the district court stated that ICMI’s “redesigned cartridge does not infringe claim 1 of the ’603 patent, because the redesigned cartridge does not rotate, as called for by the claim, and the mouth portion is not in sealing and rotational engagement with а cap-shaped receptacle.” This immediately followed the court’s statement that there are “substantial open issues and questions that must be litigated before a finding of infringement can be made, including claim interpretation
1
and whether rotation оf less than the entire cartridge constitutes infringement.” Furthermore, during oral argument, ICMI stated, and Ricoh did not dispute, that discovery was ongоing and the material presented to the district judge pertaining to claim interpretation was incomplete.
2
See Metaullics Sys. Co. v. Cooper,
It seems to us that where a district court judge, as in the present case, acknowledges that “there are substantial open issues and questions that must bе litigated” pertaining to claim construction and has made a determination that the movant is unlikely to succeed on the merits (рrove infringement), our role as an appellate court, absent an abuse of *319 discretion, should be to provide the district judgе and parties the opportunity to complete the picture. We do not regard it as our function under these circumstances to definitively construe claim 1 of the ’603 patent, or to review as if from final judgment the district court’s tentative construction without thе more complete record that the district court deemed necessary to its own final decision. Here, we review only the district court’s tentative claim construction and its resulting finding on the likelihood of successfully proving infringement, which form an adequate bаsis for our affirming its denial of the preliminary injunction.
AFFIRMED.
Notes
. For example, during oral argument, counsel for ICMI stated, and Ricoh did not dispute, that "сlearly there will be additional evidence [of claim interpretation] presented during the course of the motion for summary judgmеnt [currently pending before the district court] and, if the case goes to trial, there will be additional evidence presented thеn. That may include the testimony of experts, it may not.”
. In fact, during oral argument, counsel for ICMI stated that “I believe that if the [Federal Cirсuit] exercises claim interpretation at this point basically what it is doing is rendering an advisory opinion to Judge Ziegler, and at the present time there is a motion for summary judgment pending and ... the discovery period has not closed. So I believe such an opinion on claim construction would be premat ure."