Proveris Sci. Corp. v. Innovasystems: Preamble Found Limiting during Suit for Contempt of an Injunction Order

Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor  
TitleProveris Sci. Corp. v. Innovasystems, Inc., No. 2013-1166 (Jan. 13, 2014).
IssueThe first question we must answer [in an infringement analysis during a contempt of an injunction suit] is whether the preamble is properly construed as importing a limitation into the claim.
Proveris Sci. Corp. at *7 (text added).
Holding[R]eading the patent as a whole, the inventors clearly relied on both the preamble and the body of claim 3 to define the claimed invention [because (i) the specification discusses essential features that are recited only in the preamble, and (ii) the body of the claims refers back to these features in the preamble]. Accordingly, the preamble of claim 3 should be construed as importing a limitation into the claim.
Id. at *9 (text added).

Procedural HistoryInnovasystems, Inc. (“Innova”) appeals from two final judgments of the U.S. District Court for the District of Massachusetts holding Innova in contempt of that court’s May 11, 2007 injunction and awarding sanctions in the amount of $878,205. Proveris Scientific Corp. (“Proveris”) cross-appeals the district court’s denial of sanctions for certain of Innova’s sales.
Proveris Sci. Corp. at *2.
Legal Reasoning (Lourie, Shall, Prost)
Factual Basis for Contempt Allegation[T]he district court granted Proveris a permanent injunction prohibiting
Innova from “making, using, selling, offering for sale or importing into or exporting out of the United States” the OSA product. We affirmed. [...] After that time, Innova modified its OSA product and began selling a new product known as the Aerosol Drug Spray Analyzer (“ADSA”) that it argues does not infringe independent claim 3 of the ’400 patent. […] It contends that this is a significant modification that renders the ADSA device non-infringing because the preamble of claim 3 specifies that the image data may be captured “at a predetermined instant in time.” Proveris disagreed with Innova’s interpretation of that claim language […]
Proveris Sci. Corp. at *3 (internal citations omitted).
Legal Standard: Violation of InjunctionIn evaluating whether an injunction against continued infringement has been violated by a newly accused product, courts must follow the two-step test outlined in TiVo Inc. v. Echostar Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc). First, a party seeking to enforce an injunction must show that “the newly accused product is not more than colorably different from the product found to infringe.” Id. at 882. The analysis should focus on “those aspects of the accused product that were previously alleged to be, and were a basis for, the prior finding of infringement, and the modified features of the newly accused product.” Id.
Id. at *4.
Claim 33. An apparatus for producing image data representative of at least one sequential set of images of a spray plume, each of the images being representative of a density characteristic of the spray plume (i) along a geometric plane that intersects the spray plume, and (ii) at a predetermined instant in time, comprising:

an illuminator for providing an illumination of the spray plume along at
least one geometric plane that intersects the spray plume; and,

an imaging device for generating the image data representative of an interaction between the illumination and the spray plume along the at least one geometric plane.

Id. at *8.
A. Colorable Differences
Legal Standard: Colorable DifferencesWhere one or more of the elements previously found to infringe has been modified or removed, the court must determine whether that modification is significant. Id. If so, the newly accused product is more than colorably different from the infringing product, and contempt is not the appropriate remedy. [...] Instead, a new infringement action must be brought regarding the newly accused product. If, however, the court concludes that the differences are not more than colorable, the court must then go on to the second step and determine whether the newly accused product in fact infringes the relevant
claims. [...]
Proveris Sci. Corp. at *4-5 (internal citations omitted).
The Enjoined OSA product and the Subsequent ADS product are Functionally Identical[T]he User Manuals for both products appear to instruct the user to select the range of images to be analyzed after the actual spray event takes place. Compare J.A. 204-05, 227 with J.A. 1054-55, 1099. Based on this evidence, the district court noted on the record that it was “quite clear” that Innova’s alleged redesign “was not truly an alteration at all.” J.A. 46-47. But regardless, even if Innova did make some small changes to the product’s software, a comparison of the User Manuals demonstrates that the two products are functionally identical. Thus, we agree with the district court that the ADSA product is not more than colorably different from the infringing OSA product.
Id. at *6.
B. Infringement / Claim Construction
Legal Standard: Infringement Inquiry during Contempt AnalysisAfter a finding that two products are not more than colorably different, a district court must go on to determine whether the newly accused product in fact infringes the original patent. TiVo, 646 F.3d at 883. In conducting an infringement analysis, a court must first determine the meaning of any disputed claim terms and then compare the accused device to the claims as construed. […]
Proveris Sci. Corp. at *6 (internal citations omitted).
Legal Standard: Effect of PreambleA preamble is generally construed to be limiting if it “recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” […] For example, the preamble may be construed as limiting when it recites particular structure or steps that are highlight- ed as important by the specification. Catalina Mktg., 289 F.3d at 808. Additionally, “[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” […]
Id. at *8 (internal citations omitted).
Analysis[T]he preamble is limiting in this case. First, the specification identifies the invention as producing a “sequential set of images” and focuses on the ability of the invention to capture “the time evolution of the spray.” […] However, the preamble of claim 3 is the only reference in any independent claim to the inventive concept of capturing a sequence of images in order to characterize the time evolution of the spray plume. This fact alone is likely sufficient to support a conclusion that the preamble is limiting. […] Moreover, the claim body itself supports this conclusion. Claim 3 discloses “an imaging device for generating the image data representative of an interaction between the illumination and the spray plume along the at least one geometric plane.” […] The phrase “the image data” clearly derives antecedent basis from the “image data” that is defined in greater detail in the preamble as being “representative of at least one sequential set of images of a spray plume.”
Id. at *8-*9 (internal citations omitted).
Remanded[W]e will remand the case to the district court to determine the proper construction of the disputed claim language. After construing the claim, the district court should then go on to re-evaluate whether the ADSA product in fact infringes claim 3 under the proper construction and therefore constitutes a violation of the injunction.
Id. at *10.
C. Invalidity
Cannot Raise Invalidity in Contempt SuitIn contrast to claim construction, validity was disputed in the underlying infringement lawsuit, so Innova has already had a full and fair opportunity to present its arguments relating to the invalidity of claim 3. Indeed, we have previously noted that “[i]n a contempt proceeding to enforce [an] injunction . . . , the only available defense for anyone bound by the injunction was that the [newly accused product] did not infringe . . . . Validity and infringement by the original device were not open to challenge.”
Proveris Sci. Corp. at *11.
D. Sanctions
Given our disposition of Innova’s appeal, it is premature at this juncture to address the issues raised in Proveris’ cross-appeal relating to sanctions.
Proveris Sci. Corp. at *12.
For the foregoing reasons, we vacate the district court’s contempt order and sanctions award and remand for further proceedings consistent with this opinion.
Proveris Sci. Corp. at *13.
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