Considerations If Conceding Infringement Or Designing Around

A decision issued by the Federal Circuit earlier this year raises a few things to have in mind when considering whether to concede infringement and when planning to design around a patent.

In Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 109 U.S.P.Q.2d 1314 (Fed. Cir. 2014) Innovasystems, Inc. ("Innova") was sued by Proveris Scientific Corp. ("Proveris") for infringement of U.S. Patent No. 6,785,400 ("'400 patent"). The '400 patent is directed to "a mechanism for evaluating aerosol spray plumes" that "is used to observe the delivery of drugs that are administered through spray devices, such as inhalers or nasal sprays." Id. at 1315-1316. Specifically, Proveris accused Innova's Optical Spray Analyzer ("OSA") of infringing the '400 patent. While Innova conceded infringement of claims 3-10 of the patent, it challenged Proveris's allegations that it infringed claims 1 and 2 of the patent. Ultimately, a jury found that Innova did not infringe claims 1 and 2 of the patent. Nevertheless, in view of the fact that Innova conceded infringement of claims 3-10 of the '400 patent, the district court entered a permanent injunction that prohibited Innova from making, using, selling, offering for sale, or importing into the United States any Optical Spray Analyzer products. See id. at 1316.

Following entry of the injunction, Innova proceeded to redesign its Optical Spray Analyzer product and thereafter began to sell its Aerosol Drug Spray Analyzer. See id. Proveris, however, took issue with Innova's redesigned product and filed a motion to hold Innova in contempt for violation of the injunction that had been entered. Ruling in favor of Proveris, the district court entered an order finding that the Aerosol Drug Spray Analyzer was not "colorably different from the infringing OSA product and that it, too, infringed the '400 patent." Id.

Significantly, central to the infringement analysis was the meaning of the phrase "at a predetermined instant in time," which appeared in the preamble of claim 3 of the '400 patent. However, the district court reached its infringement ruling without first ruling on the meaning of this phrase. In particular, the district court explained that because Innova could have presented this disputed claim term during the claim construction phase of the case and chose not to, it would not interpret the phrase and it would not read the preamble as a limitation. Id.

Ultimately, the Federal Circuit ruled that the district...