The opinion of the court was delivered by: Judge Caputo
Presently before the Court are three motions in limine (Docs. 98, 100, & 104) pertaining to the scope of allowable evidence at the upcoming hearing on Plaintiff's Motion for Contempt, currently scheduled for October 25 & 26, 2012. This contempt motion is in regard to a January 18, 2012 confession of judgment in a continuing patent infringement dispute between Plaintiff Arlington Industries, Inc. and Defendant Bridgeport Fittings, Inc. For the reasons set out below, both parties' motions in limine will be granted in part and denied in part.
This action has a fairly elaborate history,*fn1 but the pertinent facts to the instant motion are relatively simple.
Arlington and Bridgeport both manufacture electrical conduit fittings which are used to connect electrical wiring and cable. Previously, connecting a cable into an electrical junction box required a threaded lock nut which was unwieldily and inconvenient. In 1992, Arlington developed a connector that could simply be snapped into the junction box. Tools, however, were still required to secure the incoming cable to the connector, but Arlington eliminated this problem in 1998 with a patented connector that allowed a cable to be snapped into the connector, which together could then be snapped into the junction box. In 1999, Bridgeport released a similar product line of quick-connect fittings.
On March 19, 2001, Arlington brought an action in this district, No. 3:01-cv-0485 ("the '0485 Action"), for infringement of U.S. Patents Nos. 5,266,050 ("'050 Patent") and 5,171,164 ("'164 Patent") against Bridgeport Fittings, Inc.'s ("Bridgeport") entire line of Snap-In connectors. That action was assigned to the Honorable Judge Christopher C. Conner. Shortly thereafter, on January 28, 2002, Arlington filed the instant action for infringement of United States Patent No. 6,335,488 (the "'488 Patent") against a subset of Bridgeport's products accused in the '0485 Action, namely the 590-DCS and 590-DCSI Speed-Snap connectors (the "Enjoined Connecters"), which was assigned to me. Although the '0485 action proceeded further than the instant action, both were settled as part of an April 17, 2004 settlement agreement.
Following settlement, Bridgeport released a new line of connectors which Arlington found similarly infringing including the connectors currently at issue in this case: the Whipper-Snap 380SP and 38ASP connectors (the "Accused Connectors"). Judge Conner then reopened the '0485 Action and entered a confession of judgment on June 30, 2006. A jury subsequently found that 29 of those new products literally infringed the '050 Patent, that one infringed under the doctrine of equivalents, and that 26 of them were colorable imitations. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 692 F. Supp. 2d 487, 497 (M.D. Pa. 2010). Judge Conner entered a permanent injunction, which expired on December 4, 2011 along with the '050 Patent. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., CIVA 3:01-CV-0485, 2010 WL 817519, at *8 (M.D. Pa. Mar. 9, 2010).
With the expiration of the '050 Patent, Arlington returned its attention to the instant matter which had been dormant for almost eight years.*fn2 It informed Bridgeport that--while it was liberated to sell some of the products previously enjoined by the '050 Patent--that the two Accused Connectors were infringing on the '488 Patent (which remains valid until 2018). Bridgeport nevertheless began selling the Accused Connectors, and, on January 18, 2012, Arlington filed an Unopposed Motion to Enter Defendant's Confession of Judgment and Injunction. (Doc. 44.) This motion was granted, the matter was reopened, and the Clerk of Court was directed to enter the Confession of Judgment and Injunction. (Doc. 46.) That Confession of Judgment merely provided "that Claim 1 of United States Patent No. 6,335488, which is not invalid and not unenforceable, is infringed by the manufacture, sale and offer of sale of the following Bridgeport's Speed-SnapTM products with external and internal spring steel rings: 590-DCS and 590 DCSI." (Confession at ¶ 1, Doc. 47.)
In order to prohibit the sale of the Accused Connectors, on February 13, 2012, Arlington filed a motion for contempt for violating the above Confession of Judgment. (Doc. 51.) In particular, Arlington moves the Court to hold Bridgeport in contempt for violating the injunction through the sale of the Accused Connectors, to issue an injunction on the Accused Connectors, and to award Arlington two times its lost profits as well as attorney fees.
While the motion for contempt is scheduled for hearing in October, the parties have each filed motions in limine to narrow the evidence that will be presented to the Court at that hearing. These three pending motions in limine are explored below.
"[T]he party seeking to enforce the injunction must prove both that the newly accused product is not more than colorably different from the product found to infringe and that the newly accused product actually infringes." TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 882 (Fed. Cir. 2011). In particular:
The analysis must focus not on differences between randomly chosen features of the product found to infringe in the earlier infringement trial and the newly accused product . . . but 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. Specifically, one should focus on those elements of the adjudged infringing products that the patentee previously contended, and proved, satisfy specific limitations of the asserted claims. Where one or more of those elements previously found to infringe has been modified, or removed, the court must make an inquiry into whether that modification is significant. If those differences between the old and new elements are significant, the newly accused product as a whole shall be deemed more than colorably different from the adjudged infringing one, and the inquiry into whether the newly accused product actually infringes is irrelevant. Contempt is then inappropriate.
Id. (citation omitted, emphasis added). Thus, "[t]he primary question on contempt should be whether the newly accused product is so different from the product previously found to infringe that it raises 'a fair ground of doubt as to the wrongfulness of the defendant's conduct.'" Id. (quoting Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885)).
II. Plaintiff Arlington Industries, Inc.'s Motion in Limine to Exclude Bridgeport's Arguments and Evidence Concerning Unmodified Features of the Accused Products and Bridgeport's Waived Defenses (Doc. 100)
In this motion in limine, Arlington seeks to preclude Bridgeport from "re-litigat[ing] the legal and factual basis for the original controversy between the parties despite its admission of infringement and the entry of judgment of infringement by this Court." (Pl.'s Br. at 4, Doc. 101.) As noted, the earlier Confession of Judgment states only that the '488 Patent "is infringed by the manufacture, sale and offer of sale" of the Accused Connectors. (Doc. 47.)
A. Unmodified Features are Irrelevant
Claim 1 of the '488 Patent contains seven specific limitations. The purported differences between the Enjoined and Accused Connectors do not impact five of these seven limitations.*fn3 Yet, Bridgeport seeks to raise non-infringement defenses to the five unaffected limitations. Arlington argues that this is contrary to settled law, and that allowing Bridgeport to argue as such would be a waste of judicial resources.
As explained, "[u]nder TiVo, contempt requires proof that (1) the newly accused product is no more than colorably different from the previously adjudged infringing product, and (2) the newly accused product actually infringes the asserted patent." Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). Thus, the analysis first looks to "the differences between the features relied upon to establish infringement and the modified features of the newly accused products."*fn4 TiVo, 646 F.3d at 882. If such differences are merely colorable, "the court is required to evaluate the modified elements of the newly accused product" to ensure that the accused product actually infringes. Id. at 883.
Bridgeport is not entitled to raise arguments pertaining to unmodified features of the Accused Connectors. A contempt hearing must be limited to only the alterations between the infringing and modified products because a finding of infringement "necessarily and conclusively establishe[s] that [Plaintiff] met each limitation recited in the asserted claims of the . . . patent." Merial, 681 F.3d at 1300. Opening the analysis to such unchanged features would amount to a collateral attack of the underlying matter, which is impermissible as "a contempt proceeding does not open to reconsideration the legal or factual basis of the order alleged to have been disobeyed and thus become a retrial of the original controversy." TiVo, 646 F.3d at 889 (quoting Maggio v. Zeitz, 333 U.S. 56 at 69 (1948)); Merial, 681 F.3d at 1300 ("infringement by an originally accused product are generally not open to challenge in contempt proceedings."). It would not make sense to allow a party to admit patent infringement, to make subsequent changes to some aspects of the admittedly infringing product, and to then argue that the unchanged components were never proven to infringe and are still at issue. Therefore, Bridgeport will be precluded from presenting arguments of non-infringement pertaining to any limitation unaffected by the redesign of its connectors.
Applying this principle, Arlington specifically avers that Bridgeport should be precluded from raising non-infringement arguments as to limitations four through seven and one in Claim 1, which sets out the following:
A method for attaching an armored or metal clad electrical cable to a junction box comprising:
(1) providing a junction box having an aperture;
(2) providing a member having a leading end with an external cylindrical surface and a trailing end with an inner diameter;
(3) providing a spring steel adapter surrounding said leading end external cylindrical surface for snap fitting into said aperture;
(4) providing a spring steel loading rind inserted into said trailing end inner diameter;
(5) restricting rearward withdraw motion of said spring steel locking ring from said member;
(6) receiving and armored or metal clad cable in said steel locking ring; and
(7) preventing removal of said armored or metal cable in a rearward direction from said spring steel locking ring.
U.S. Patent No. 6,335,488 col.9 l. 27 - col. 10 l. 12 (issued Jan. 1, 2002).
Bridgeport articulates only four core changes between the Accused and Enjoined Connectors: (1) the lack of a "lip" on the Accused Connectors; (2) the lack of a cylindrical surface on the Accused Connectors; (3) the lack of a smooth surface on the leading end of the Accused Connectors; and (4) the lack of an adaptor "surrounding" of the leading end surface. Since these changes only potentially implicate ...