District Court Erred In Not Construing Claims For Contempt Motion Where There Was No Prior Claim Construction Because Infringement Had Been Conceded

In Proveris Scientific Corp. v. Innovasystems, Inc., Nos. 13-1166, -1190 (Fed. Cir. Jan. 13, 2014), the Federal Circuit held that the district court erred in failing to construe disputed claim language. The Court thus vacated the district court's order holding Innovasystems, Inc. ("Innova") in contempt of an injunction against continued infringement, vacated the accompanying award of sanctions, and remanded the case for claim construction and renewed contempt proceedings.

Proveris Scientific Corporation ("Proveris") holds U.S. Patent No. 6,785,400 ("the '400 patent"), which claims an apparatus for observing and analyzing aerosol spray plumes generated in the delivery of drugs through spray devices. Proveris previously sued Innova for infringement of the '400 patent, based on Innova's manufacture and sale of its Optical Spray Analyzer ("OSA") device. Innova conceded infringement of claims 3-10 and 13, but disputed infringement of claims 1 and 2. The district court found that the '400 patent was not invalid, and a jury found no infringement of claims 1 and 2, and that no damages had been proven. Based on the conceded infringement of other claims, however, the district court granted a permanent injunction against Innova, and the Federal Circuit affirmed.

Innova introduced a new product, the Aerosol Drug Spray Analyzer ("ADSA"), which Innova claimed did not infringe independent claim 3 of the '400 patent. According to Innova, where the OSA allowed a user to identify a range of images for analysis before activating the spray plume, the ADSA required that the spray plume be activated first, followed by the identification of images for analysis. Innova argued that the ADSA is noninfringing because the preamble of claim 3 specifies that image data may be captured "at a predetermined instant in time." Slip op. at 3.

Proveris filed a contempt motion based on Innova's manufacture and sale of the ADSA. During the contempt proceeding, the district court declined to construe claim 3, reasoning that Innova could have but did not raise claim construction issues in the underlying infringement action. Similarly, the district court did not allow Innova to raise any new invalidity arguments, reasoning that Innova had already attempted to challenge the validity of claim 3 during the underlying infringement action. The district court found that Innova's violation of the injunction was willful, entered a contempt order against Innova, and awarded sanctions...