The opinion of the court was delivered by: Honorable Ronald S.W. Lew Senior, U.S. District Court Judge
ORDER Re: Plaintiffs' Motion to Enforce the Consent Judgment  On January 4, 2011, Plaintiffs' Motion to Enforce the Consent Judgment  came on for regular calendar before this Court. The Court, having reviewed all papers submitted pertaining to this Motion and having considered all arguments presented to the Court, NOW FINDS AND RULES AS FOLLOWS:
The Court hereby DENIES Plaintiffs' Motion to Enforce the Consent Judgment Order.
I. Background On September 20, 1994, Plaintiffs 3M Innovative Properties Company, 3M Unitek Corporation, and 3M Company (hereinafter, "Plaintiffs") were issued United States Patent No. 5,348,154 (hereinafter, "the 154 Patent"). The 154 Patent is directed to orthodontic or dental appliances that are coated with curable or tacky material and the packaging of these appliances. The 154 Patent also discloses a kit with a tray-based package designed to provide organization and storage of sets of these appliances.
Claim 1 of the 154 Patent is comprised of four elements, and provides as follows: an article comprising a) "a tray having at least two holes," b) "at least two substrates each having only one well with an opening only at the top thereof and a top surface that is removably retained in the hole of the tray," c) "a lid releasably attached to the top surface thereof," and d) "an orthodontic appliance having a tacky substance on an exterior surface" positioned in such a way that it does not separate from the appliance upon removal from the well. [Pls.' Corrected Compl. Ex. A.] Elements a and b are specifically at issue here in this Motion.
On January 25, 2010, Plaintiffs filed a Complaint against Defendant TP Orthodontics, Inc, (hereinafter, "Defendant") alleging a cause of action for Patent Infringement . Plaintiffs filed a Corrected Complaint for Patent Infringement on January 26, 2010, claiming that Defendant's product, the Invu with Readi-Base Pre-Applied Adhesive kit (hereinafter, "Invu Kit"), infringed on one or more claims of the 154 Patent .
On May 7, 2010, the Parties filed a Stipulation to Entry of Consent Judgment . This Stipulation stated that the Parties had agreed to settle all claims in this Action, and requested that the Court enter the Consent Judgment Order filed with this Stipulation.
On May 13, 2010 this Court entered the Consent Judgment Order . In this Order, the Court stated that Plaintiffs had exclusive license in the 154 Patent, and that Defendant acknowledged and agreed it had infringed on the 154 Patent in manufacturing, using, offering for sale and selling the Invu Kit as articles that incorporate every element of claims of the 154 Patent, in violation of 35 U.S.C. § 271. [Consent Judgment Order 2.] Accordingly, the Court issued a permanent injunction against Defendant, enjoining Defendant from making, using, offering to sell, selling or importing into the United States any articles that infringe on the 154 Patent. [Id.] This Court retained jurisdiction for purposes of enforcing the terms of the Consent Judgment and Settlement Agreement. [Id.]
After this Order was issued, Defendant began marketing and selling a new, modified Invu Kit (hereinafter, "current Invu Kit") that is thermoformed from a sheet of plastic and now consists of two elongated, open-ended channels or slots. [Decl. Intagliata ¶¶ 3,9.] Each channel includes a bottom wall and two upstanding walls. According to Defendant, one of these walls includes "pod positioning ridges to assist in locating each pod according to the prescribed tooth position," and the bottom of each hole contains a layer of sticky material that assists in holding an inserted pod in place. [Def.'s Opp. 5-6]
On December 3, 2010, Plaintiffs filed this present Motion, arguing the modified device still infringes on the 154 Patent .
A. Legal Standard If a patent owner is "confronted with another possible infringement by [the enjoined infringer] in the form of a modified device," the patent owner can "seek to invoke the power of the court to punish the adjudged infringer for contempt in violating the court's injunctive order." KSM Fastening Sys., Inc. v. H.A. Jones Co., Inc., 776 F.2d 1522, 1524 (Fed. Cir. 1985).
However, the Federal Circuit has held that before the district court can make a finding that the party is in "contempt of an injunction in a patent infringement case, [the court] must address two separate questions." Abbott Labs. v. TorPharm, Inc., 503 F.3d 1372, 1380 (Fed. Cir. 2007)(citing KSM Fastening Sys., Inc., 776 F.2d at 1532).
First, the court must determine "whether a contempt hearing is an appropriate forum in which to determine whether a redesigned device infringes, or whether the issue of infringement should be resolved in a separate infringement action." Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 154 F.3d 1345, 1349 (Fed. Cir. 1998). In order to do so, the court must compare the accused, modified device with the original, infringing device in light of the patent claims at issue in the action. See Tivo Inc. v. Dish Network Corp., 640 F. Supp. 2d 853, 869 (E.D. Tex. 2009).
A contempt hearing is only appropriate if the differences between these two devices are merely colorable. Additive Controls & Measurement Sys., Inc., 154 F.3d at 1349. Differences are more than colorable when there are "substantial open issue[s] with respect to [the modified device's] infringement." KSM Fastening Sys., Inc., 776 F.2d at 1532. When this is the case, "the presence of such disputed issues creates fair doubt that the decree has been violated," and a determination as to whether a party is in contempt due to the modified device's possible infringement is inappropriate. Id. However, if the court finds that the modified device represents no more ...