Preemption Devices, Inc. v. Minnesota Min. & Mfg. Co., No. 86-690

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore DAVIS, SMITH and NIES; DAVIS
Citation803 F.2d 1170,231 USPQ 297
PartiesPREEMPTION DEVICES, INC., Appellant, v. MINNESOTA MINING & MANUFACTURING COMPANY, Appellee. Appeal
Decision Date24 September 1986
Docket NumberNo. 86-690

Page 1170

803 F.2d 1170
231 U.S.P.Q. 297
PREEMPTION DEVICES, INC., Appellant,
v.
MINNESOTA MINING & MANUFACTURING COMPANY, Appellee.
Appeal No. 86-690.
United States Court of Appeals,
Federal Circuit.
Sept. 24, 1986.

Page 1171

Roger W. Herrell and Robert G. McMorrow, Jr., Dann, Dorfman, Herrell and Skillman, Philadelphia, Pa., submitted for appellant.

Joel S. Goldhammer, Seidel, Gonda, Goldhammer & Abbott, P.C., Philadelphia, Pa., argued for appellee. With him on brief was Steven J. Rocci. Also on brief was Terryl K. Qualey, Minnesota Mining and Manufacturing Co., St. Paul, Minn.

Before DAVIS, SMITH and NIES, Circuit Judges.

DAVIS, Circuit Judge.

Preemption Devices, Inc. (PDI) appeals from the decision of the United States District Court for the Eastern District of Pennsylvania, 630 F.Supp. 463 (E.D.Pa.1985), holding it in contempt of that court's judgment order of March 19, 1983, as amended April 25, 1983, granting a permanent injunction against the infringement of United States Patent No. Re. 28,100 (the Long patent). We affirm-in-part, vacate-in-part, and remand.

Page 1172

I.

The Long patent, Re. 28,100 was originally U.S. Patent No. 3,550,078, which issued on Dec. 22, 1970 to William H. Long. The patented invention relates to systems for controlling vehicular traffic at street and highway intersections, and more particularly relates to means for remotely operating and effecting traffic control systems. For a detailed review of the patented invention, see the prior opinions of the District Court, Preemption Devices, Inc. v. Minnesota Mining and Mfg. Co., 559 F.Supp. 1250, 1253-54, 1262 (E.D.Pa.1983), affirmed by this court, 732 F.2d 903, 221 USPQ 841 (Fed.Cir.1984).

This action was originally initiated in 1980 by PDI against appellee, Minnesota Mining and Manufacturing Company (3M), seeking a declaration that the Long patent was invalid. 1 The District Court in a Memorandum Opinion dated March 18, 1983, as amended by the order dated April 25, 1983, found claims 1, 3-7 and 9-10 of the Long patent valid and infringed. The April 25, 1983 order provided in pertinent part:

That the plaintiff, its officers, employees and agents, are permanently enjoined from making, using or selling, or offering for sale, light activated traffic signal remote control systems or components in infringement of U.S. Letters Patent No. Re. 28,100, specifically including the components of such systems identified ... as "Phase Selector" ... "Two Way Optical Detector" ... and "Optical Emitter Controller"....

The components of PDI's infringing system specified in the injunction were, respectively, the model PSO-1 phase selector, the model OR-1/OR-2 optical detector and the model OE-29 optical emitter. Collectively, these components are called the PSO-1 phase selector system.

Sometime later, 3M began contempt proceedings against PDI, seeking sanctions for PDI's allegedly willful and knowing violation of the injunction, as amended April 25, 1983. Violations enumerated by 3M included (1) PDI's sales of the OE-29 optical emitter, the OR-1 and OR-2 optical detectors (OR detectors) 2 and the PSO-1 phase selector, into infringing systems; (2) PDI's offer for sale of its newly designed PD-1 and PD-2 preemptors, LS-164 optical emitters and OD-155 optical detectors; and (3) PDI's sales and offer for sale of a model 262 discriminator or preemption device. After a hearing, the District Court found PDI's sale and offer for sale of the OE-29 emitter and the OR detectors to be contemptuous conduct which violated the terms of the injunction prohibiting contributory infringement. PDI's sale and offer for sale of the PSO-1 phase selector systems was also held contemptuous. With respect to the modified LS-164 emitter and OD-155 optical detector, the District Court found that the devices were colorably the same as the OE-29 emitter and the OR detectors, respectively, and that they performed substantially the same function in substantially the same way as the earlier devices. On that ground, the District Court held contemptuous PDI's offer for sale of these modified devices. Finding that the PD-1 and the PSO-1 selectors perform substantially the same function in substantially the same way and that the selectors are colorably the same, the District Court also held contemptuous PDI's sale of the PD-1 device. 3 This appeal ensued.

II.

Civil contempt is one mechanism through which a court may enforce its proper powers, and is recognized as a severe remedy. In such a civil contempt

Page 1173

proceeding, the movant has the heavy burden of proving violation of the District Court's order by clear and convincing evidence. KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 1524, 227 USPQ 676, 677 (Fed.Cir.1985). If there is a fair ground of doubt as to the wrongfulness of the defendant's actions said to be in contempt, the District Court should not entertain the civil contempt proceeding or find contempt. MAC Corp. of America v. Williams Patent Crusher and Pulverizer Co., 767 F.2d 882, 885, 226 USPQ 515, 517 (Fed.Cir.1985). Here, the District Court correctly stated the standard of proof and correctly allocated the burden of proof to 3M. We now review the case to determine if, as PDI contends, the District Court clearly erred in finding that PDI's sales and offer for sale of certain PDI devices were in contempt of the April 25, 1983 injunction. 4

A. Devices specified in the injunction

The devices which were specified in the April 25, 1983 injunction and as to which PDI's subsequent offers for sale (or sales) were held by the District Court to be contemptuous included:

(1) the OE-29 optical emitter;

(2) OR detectors; and

(3) the PSO-1 phase selector.

PDI challenges the District Court's findings with respect to these devices as clearly erroneous. The argument is that 3M failed to prove direct infringement by PDI's transactions and that, despite the requirements of 35 U.S.C. Sec. 271(c), 3M failed to show that PDI knowingly supplied components into infringing systems.

Direct Infringement: The District Court recognized the well-settled principle stated in Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 590 (1961) (Aro I ), that contributory infringement cannot exist in the absence of a showing of direct infringement....

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33 practice notes
  • Wyeth v. Sandoz Inc, No. 5:07-CV-234-D.
    • United States
    • United States District Courts. 4th Circuit. Eastern District of North Carolina
    • July 15, 2010
    ...Direct infringement is a prerequisite to finding contributory infringement. Preemption Devices, Inc. v. Minn. Mining & Mfg. Co., 803 F.2d 1170, 1173 (Fed.Cir.1986). Where an ANDA is involved, contributory infringement claims may be brought under section 271(e)(2). Cf. Allergan, Inc., 324 F.......
  • Biagro Western Sales, Inc. v. Helena Chemical Co., CIV. F. No. 01-5014 OWW DLB.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Eastern District of California
    • May 7, 2001
    ...or commodity of commerce suitable for substantial non-infringing use." Id.; Preemption Devices v. Minnesota Page 1132 Mining & Mfg. Co., 803 F.2d 1170, 1174 A finding of contributory infringement first requires a finding of direct infringement. Plaintiff has not presented facts showing a re......
  • Veritas Operating Corp. v. Microsoft Corp., No. C06-0703-JCC.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Western District of Washington)
    • February 20, 2008
    ...combination [and] is not a staple article suitable for substantial noninfringing use." Preemption Devices v. Minn. Mining & Mfg. Co., 803 F.2d 1170, 1174 (Fed.Cir.1986). See Grokster, Ltd., 545 U.S. at 932, 125 S.Ct. 2764 ("This analysis reflected patent law's traditional staple article of ......
  • Nartron Corp. v. Borg Indak, Inc., Case No. 06-10683
    • United States
    • United States District Courts. 6th Circuit. United States District Court (Eastern District of Michigan)
    • January 26, 2012
    ...suitable for substantial noninfringing use.C.R. Bard, Inc., 911 F.2d at 673. Preemption Devices, Inc. v. Minnesota Mining Mfg. Co., 803 F.2d 1170, 1174 (Fed. Cir. 1986), aff'd, 824 F.2d 977 (Fed. Cir. 1987), cert. denied, 389 U.S. 830 (1987) (contributory infringement requires knowledge of ......
  • Request a trial to view additional results
34 cases
  • Wyeth v. Sandoz Inc, No. 5:07-CV-234-D.
    • United States
    • United States District Courts. 4th Circuit. Eastern District of North Carolina
    • July 15, 2010
    ...Direct infringement is a prerequisite to finding contributory infringement. Preemption Devices, Inc. v. Minn. Mining & Mfg. Co., 803 F.2d 1170, 1173 (Fed.Cir.1986). Where an ANDA is involved, contributory infringement claims may be brought under section 271(e)(2). Cf. Allergan, Inc., 324 F.......
  • Biagro Western Sales, Inc. v. Helena Chemical Co., CIV. F. No. 01-5014 OWW DLB.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Eastern District of California
    • May 7, 2001
    ...or commodity of commerce suitable for substantial non-infringing use." Id.; Preemption Devices v. Minnesota Page 1132 Mining & Mfg. Co., 803 F.2d 1170, 1174 A finding of contributory infringement first requires a finding of direct infringement. Plaintiff has not presented facts showing a re......
  • Veritas Operating Corp. v. Microsoft Corp., No. C06-0703-JCC.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Western District of Washington)
    • February 20, 2008
    ...combination [and] is not a staple article suitable for substantial noninfringing use." Preemption Devices v. Minn. Mining & Mfg. Co., 803 F.2d 1170, 1174 (Fed.Cir.1986). See Grokster, Ltd., 545 U.S. at 932, 125 S.Ct. 2764 ("This analysis reflected patent law's traditional staple article of ......
  • Nartron Corp. v. Borg Indak, Inc., Case No. 06-10683
    • United States
    • United States District Courts. 6th Circuit. United States District Court (Eastern District of Michigan)
    • January 26, 2012
    ...suitable for substantial noninfringing use.C.R. Bard, Inc., 911 F.2d at 673. Preemption Devices, Inc. v. Minnesota Mining Mfg. Co., 803 F.2d 1170, 1174 (Fed. Cir. 1986), aff'd, 824 F.2d 977 (Fed. Cir. 1987), cert. denied, 389 U.S. 830 (1987) (contributory infringement requires knowledge of ......
  • Request a trial to view additional results

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