Every week or so we will continue to provide summaries of cases we think clients and others might find of interest. If you have any questions about the information provided in these case summaries or wish to discuss them further, please contact Peter Heuser at 503-796-2424 or pheuser@schwabe.com.

In re Gianelli, Fed. Cir. No. 2013-1167 (1/13/2014)‎

In this appeal from the PTAB, the Federal Circuit reversed a determination of obviousness based ‎on the ‎panel’s holding that “adapted to” is not synonymous with “capable of” when considering ‎whether one of ordinary skill would have thought to modify a prior art exercise machine to ‎arrive ‎at the claimed invention. Because these terms are commonly used claim terms, the court’s ‎holding is ‎one to closely consider.‎

The claim at issue ‎recites:‎

A row exercise machine comprising an input assembly including ‎a first handle ‎portion ‎adapted to be moved from a first position to ‎a second position by a pulling force exerted by a ‎user on ‎the first ‎handle portion in a rowing motion, the input assembly defining a ‎substantially linear ‎path for ‎the first handle portion from the first ‎position to the second position.‎ (emphasis added)

The claims were rejected under sections 102 and 103 based a ‘447 patent, which describes a ‎chest ‎press exercise machine in which the user ‎performs the exercise by pushing on the handles. ‎The PTAB affirmed the rejection, characterizing the dispositive ‎issue as ‎whether the chest press machine of the ‘447 ‎patent was “capable of being used by exerting a ‎pulling ‎force on the handles in a rowing motion.”‎

The panel noted that the phrase “adapted to”‘ is frequently used to mean “made to,” “designed ‎to,” ‎or “‎configured to.” Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 ‎‎(Fed. ‎Cir. ‎‎2012). Although the phrase can also mean “capable of” or “suitable for,” here ‎the ‎written ‎description makes clear that “adapted to,” as used in the subject application, has a ‎narrower ‎meaning, ‎viz., that the claimed machine is designed or constructed to be used as a ‎rowing ‎machine whereby a ‎pulling force is exerted on the handles.‎ “Consequently, the relevant ‎question before the Board was ‎whether the apparatus described in the ‎‎’447 patent was “‘made to,’ ‎‎‘designed to,’ or ‘configured to,'” ‎allow the user to perform a ‎rowing exercise by pulling on the ‎handles as claimed in the ‘261 ‎application.‎”‎

There was no question that the ‘447 patent does not ‎have ‎handles that are adapted to be pulled in a ‎rowing motion. The Board stated that using the ‘447 ‎patent ‎as a ‎rowing machine was a new intended use of the prior art apparatus. In the ‎context of the ‎claimed ‎rowing machine, however, the panel ruled that the mere capability of pulling the handles is not ‎the inquiry the ‎Board ‎should have made. Instead; it should have determined whether it would have ‎been obvious to modify ‎the ‎prior art to arrive at the claimed rowing machine. The panel felt it was not obvious to modify a machine ‎with ‎handles designed to be pushed to one with ‎handles adapted to be pulled. A chest press machine ‎is not ‎a rowing machine, nor has evidence ‎been shown that it is. ‎

Because the Board’s analysis began with the premise that “adapted to” meant “capable ‎of,” ‎its ‎affirmance of the rejection contained no explanation why or how a ‎person ‎having ‎ordinary skill in the art would modify the prior art chest press machine to arrive at the ‎claimed ‎apparatus. Because the initial burden was not met, under In re ‎Rijckaert, 9 ‎F.3d ‎‎1531, 1532 (Fed. Cir. 1993), ‎Giannelli was not obligated ‎to ‎submit ‎additional evidence to rebut the examiner’s findings of pulling capability. The Board thus ‎erred in ‎affirming the conclusion of the examiner that the ‘447 ‎patent apparatus rendered obvious the ‎claimed ‎invention of the ‘261 application.‎

This case shows that care should be taken in using “adapted to” in drafting a claim unless a narrow definition is intended, and may prove helpful to those arguing at the Markman stage that “adapted to” must be narrowly construed. ‎If a broader construction is intended, clear support for that construction must be included in the specification.

Proveris Scientific Corporation v Innovasystems, Inc., Fed. Cir. No. 2013-1166 (1/13/2014)‎

Innovasystems (“Innova”) appealed a judgment holding it in contempt of an injuction and awarding ‎‎$878,205 in sanctions. The Circuit vacated the contempt order and remanded the case because ‎the district court had not construed the claim language at issue. In so ruling, the panel discussed a ‎number of issues of interest: the tests to be applied in deciding whether a contempt order is ‎appropriate; when claim construction requires language in the preamble to be considered limiting; ‎whether a defendant that did not previously challenge validity is permitted to do so at the contempt stage; and whether overseas sales of component parts of a device found to directly ‎infringe and is the subject of an injunction should be the basis of a finding of contempt.‎

Proveris sued Innova for infringement of a patent directed to an apparatus for evaluating the delivery ‎of drugs via aerosol spray. Innova conceded infringement of independent claim 3, among other claims, ‎by its Optical Spray Analyzer (“OSA”). The district court ‎ruled in favor on Proveris on validity, and granted Proveris a permanent injunction prohibiting Innova ‎from selling the OSA, and from importing it into or exporting it out of the U.S. The Circuit affirmed this ‎order in 2008. ‎

Innova subsequently modified its product, which it now called the Aerosol Drug Spray Analyzer ‎‎(“ADSA”). Innova claimed the OSA product had 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 determine what range of images he or she would ‎like ‎to analyze. Innova contended this was 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 and filed a ‎motion for contempt. The district ‎court ‎ruled that, because Innova could ‎have raised claim construction issues in the earlier ‎infringement action, the court would not construe ‎claim 3 or import ‎the “at a ‎predetermined instant in time” limitation from the ‎preamble of claim 3. The ‎district court also said that, because Innova had unsuccessfully challenged the validity of claim 3 ‎during the infringement action, it could not raise ‎new invalidity arguments in the contempt ‎proceeding. The district court thus ‎entered a contempt order, implicitly finding that the ADSA product ‎was ‎not more than colorably different from the infringing OSA product and that it, too, infringed the ‎patent.‎ The court found that Innova’s ‎violation of the injunction had been willful and ordered ‎disgorgement of any profits Innova ‎made from sales of the ADSA product. Proveris also sought to recover ‎profits from Innova’s ‎sale of component parts to overseas customers, but the district court ruled that ‎those ‎actions did not fall within the scope of the original injunction and therefore refused to include ‎those sales in its contempt order or in the award of profits.‎‎

In evaluating whether the contempt order was appropriate, the panel cited 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.” 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.” Where one or more of the ‎elements ‎previously found to infringe has been modified or removed, the court must determine ‎whether ‎that modification is significant. If so, the newly accused product is more than ‎colorably ‎different from the infringing product, a contempt ruling is not appropriate, and a ‎new ‎infringement action must be brought. If, however, the differences are not more than colorable, the ‎court must then go on to a ‎second step and determine whether the newly accused product in fact ‎infringes the ‎claims.‎

Colorable Difference

Innova argued that the OSA product was admitted to infringe claim 3 in part because that device ‎had ‎the ability to specify which images should be captured “at a predetermined time,” meaning ‎before the ‎spray plume was activated. Thus, following the TiVo analysis, Innova argued that the ‎ADSA product was ‎more than colorably different from the OSA. The panel disagreed with Innova’s reading of TiVo, ‎as TiVo ‎makes clear that the court must still determine whether that modification was significant. The ‎panel found that the modification was not significant because the User Manuals for both the OSA and ‎the ADSA products instruct the user to select the range of images to be analyzed after the actual spray ‎event ‎takes place. Given this, the panel agreed with the district court that the two ‎products are ‎functionally identical and therefore not more than colorably different.‎


The panel then turned to the issue of whether the ADSA product infringes the original patent, which ‎requires construction of the disputed claim terms. Here, the ‎district court declined to construe the ‎disputed claim language because it felt that any arguments about the ‎construction of claim 3 should ‎have been raised in the earlier infringement action. The panel agreed that in contempt proceedings, ‎‎”out of fairness, the ‎district court is bound by any prior claim construction that it had performed in the ‎case.” However, here, there was no prior claim construction because Innova had ‎conceded ‎infringement. Thus, it simply cannot be said that it was the “law of the case” that the ‎preamble was ‎not a claim limitation. ‎

The panel then determined for itself whether the preamble should be imported as a ‎limitation in the claim. ‎

Claim 3 reads:‎

‎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.‎

‎The panel looked to NTP, Inc. v. Research In ‎Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005), which ‎stated: “A 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.” 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.” ‎

Both of those considerations support the conclusion that the 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.”‎ 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. The claim body also supports importing the preamble as limiting because the phrase ‎‎”the image data” in the body of the claim derives antecedent basis from ‎the “image data” that is defined in greater ‎detail in the preamble.” The panel thuse held that the preamble here should ‎be ‎construed as importing a limitation into the claim.‎

The panel determined that it did not have enough information to resolve other claim construction issues in the claim‎. Although claim ‎construction is a question of law, where a district court ‎has offered no reasoning to review, ‎the panel noted it may decline to construe the claims in the first ‎instance. Thus, the case was remanded to the district court to determine the proper construction ‎of ‎the disputed claim language, and then decide whether the ADSA product infringes claim 3 ‎and ‎therefore constitutes a violation of the injunction.‎


The panel also instructed the district court that regardless of what claim construction the court ‎adopts on ‎remand, Innova is not entitled to present new invalidity arguments at the contempt stage. ‎In 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.‎


The panel noted that it saw no error in the court’s denial of sanctions for Innova’s ‎overseas sales of ‎component parts, since liability for those sales is premised on 35 U.S.C. § ‎‎271(f), while the underlying ‎infringement action alleged direct infringement by sales of ‎whole products. Because of this ‎substantive difference, the panel held that the court did not err in concluding that a contempt ruling ‎was not appropriate as to those sales.‎

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