InnovaSystems Requests Reexamination after being Held in Contempt for Violating Injunction not to Infringe Proveris Patent

Scott Daniels | March 24, 2011

In our post Friday we discussed the increasing possibilities for using reexamination to affect issues, in addition to patent validity, in parallel infringement cases.  The same day InnovaSystems requested reexamination of Proveris’ U.S. Patent No. 6,785,400 (95/001,578) which has been the subject of a five-year infringement dispute between the companies.  InnovaSystems’ request may have been filed for the purpose of responding to a contempt order issued against it in an infringement action.

That action began in December 2005 when Proveris sued InnovaSystems in Massachusetts for selling its Optical Spray Analyzer (OSA) (a high-speed digital camera with a low power laser designed to capture the image of a spray) that infringes the ‘400 patent.  In 2007 the trial judge issued a judgment of infringement and enjoined InnovaSystems from further acts of infringement.  InnovaSystems then undertook to modify its original OSA and soon began to market its Aerosol Spray Drug Analyzer (ADSA). 

Proveris took InnovaSystems back to court arguing that ADSA infringed the ‘400 patent.  The trial judge agreed and in June last year he held InnovaSystems in contempt: “because nothing more than merely colorable differences exist between the OSA and the ADSA, and because those differences do not affect any element of claims 3, Innova’s making, using, offering for sale, numerous sales, and exporting of the ADSA amount to contempt for which a significant sanction is warranted.”  The trial judge has not yet applied a specific sanction because InnovaSystems appealed the contempt order to the CAFC, thereby depriving him of jurisdiction until the case is returned to him by the CAFC.

The text of InnovaSystems’ reexamination request is not yet public, but the documents attached to its IDS show that it is relying, at least in part, on the various claim construction papers filed in Massachusetts and on papers filed in an opposition for a counter-part European patent.  Claim construction was the critical issue in both the original case and the contempt proceeding.  InnovaSystems may intend to use the reexamination to attack the validity of the ‘400 claims with Proveris’ claim construction from the litigation or to induce the PTO to adopt a claim construction contrary to that adopted by the trial judge.

The two primary issues in reexamination – claim construction and validity – are so integral to so many issues in infringement litigation, that it is inevitable that creative attorneys will develop more and more ways to use reexamination in their litigation.

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