PROVERIS SCIENTIFIC CORPORATION (formerly known as Image Therm Engineering, Inc.), Plaintiff-Cross-Appellant,
INNOVASYSTEMS, INC., Defendant-Appellant.
[Copyrighted Material Omitted]
Susan Hanmer Farina, Proveris Scientific Corporation, of Marlborough, MA, argued for plaintiff-cross-appellant. With her on the brief was Victor H. Polk, Jr., Greenberg Traurig LLP, of Boston, MA.
Joseph F. Posillico, Fox Rothschild, LLP, of Philadelphia, PA, argued for defendant-appellant. With him on the brief was Frank T. Carroll.
Before LOURIE, SCHALL, and PROST, Circuit Judges.
PROST, Circuit Judge.
Innovasystems, 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. Because we conclude that the district court erred in failing to construe the disputed claim language, we vacate the contempt order and remand for claim construction and renewed contempt proceedings.
Proveris is the owner of U.S. Patent No. 6,785,400 (" '400 patent" ). The ' 400 patent relates to a mechanism for evaluating aerosol spray plumes. The apparatus claimed therein is used to observe the delivery of drugs that are administered through spray devices, such as inhalers or nasal sprays. The invention involves triggering a spray plume and collecting data on the plume via an illumination device and an imaging device.
Innova previously made and sold a device known as the Optical Spray Analyzer (" OSA" ). In 2005, Proveris filed a patent infringement lawsuit against Innova, alleging that the OSA product infringed the '400 patent. Innova conceded infringement of claims 3-10 and 13, but disputed infringement of claims 1-2. The district court excluded the testimony of Innova's experts and consequently ruled in favor of Proveris on invalidity. After a jury trial
on the remaining issues, the jury found that Innova did not infringe claims 1 or 2, and that no damages had been proven. However, based on the conceded infringement of claims 3-10 and 13, the 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. Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 1256 (Fed.Cir.2008).
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. Innova claims that the OSA product allowed a user to identify what range of images he or she wanted to analyze before activating the spray plume, while the ADSA device requires the user to first activate the spray plume and then later determine what range of images he or she would like to analyze. 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 and in March 2010 filed a contempt motion based on Innova's manufacture and sale of the ADSA product. The district court initially scheduled a Markman hearing to construe the disputed claim term, but ultimately ruled that, because Innova could have raised claim construction issues in the underlying infringement action, the court would not construe claim 3 or import a limitation from the preamble of claim 3. The district court also said that, because Innova had already attempted to challenge the validity of claim 3 during the underlying infringement action, it could not now raise new invalidity arguments during the contempt proceedings. On the merits, the district court entered a contempt order against Innova, thereby implicitly finding that the ADSA product was not more than colorably different from the infringing OSA product and that it, too, infringed the '400 patent.
A bench trial was then held on the issue of sanctions. The court found that Innova's violation of the injunction had been willful and ordered disgorgement of any profits Innova had acquired from sales of the ADSA product. Proveris also sought to recover profits from Innova's sale of various component parts to overseas locations, but the district court ruled that those actions did not fall within the scope of the injunction, so Proveris would have to establish liability in a separate action before damages could be awarded for those sales.
Innova has appealed both the contempt order and the ensuing sanctions. Proveris has cross-appealed certain aspects of the ...