Arlington Industries, Inc. v. Bridgeport Fittings, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
ARLINGTON INDUSTRIES, INC.,
Plaintiff-Appellee,
v.
BRIDGEPORT FITTINGS, INC.,
Defendant-Appellant.
______________________
2013-1357
______________________
Appeal from the United States District Court for the
Middle District of Pennsylvania in No. 02-CV-0134,
Senior Judge A. Richard Caputo.
______________________
Decided: July 17, 2014
______________________
KATHRYN L. CLUNE, Crowell & Moring LLP, of Wash-
ington, DC, argued for plaintiff-appellee. With her on the
brief were AMIR D. KATZ; and JACOB Z. ZAMBRZYCKI, of
San Francisco, California. Of counsel on the brief were
CARTER G. PHILLIPS and RACHEL H. TOWNSEND, Sidley
Austin, LLP, of Washington, DC. Of counsel was SCOTT
BITTMAN, Crowell & Moring, LLP, of New York, New York
and ERIC SHUMSKY, Orrick, Herrington & Sutcliffe LLP,
of Washington, DC.
ALAN M. ANDERSON, Alan Anderson Law Firm LLC, of
Minneapolis, Minnesota, argued for defendant-appellant.
2 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
With him on the brief were MATTHEW R. PALEN and
AARON C. NYQUIST.
______________________
Before CHEN, CLEVENGER, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
Arlington Industries, Inc. owns U.S. Patent No.
6,335,488, which claims a method for connecting electrical
cables to a junction box using electrical fittings. Both
Arlington and Bridgeport Fittings, Inc. manufacture and
sell electrical connectors. After Arlington sued Bridgeport
in 2004, the parties entered into a settlement agreement
under which Bridgeport agreed to be enjoined from mak-
ing and selling certain products and their “colorable
imitations.” Bridgeport then redesigned its electrical
connectors, and Arlington sought a contempt order hold-
ing that these redesigned connectors violated the original
agreement. The district court entered an order finding
Bridgeport in contempt of the original injunction, but at
the time of appeal, had not yet determined any sanctions
for Bridgeport’s contempt. Bridgeport appeals the con-
tempt order. Because the contempt order is not a final
judgment or otherwise appealable, we dismiss this appeal
for lack of jurisdiction.
I
Arlington manufactured and sold a family of electrical
connectors that could be snapped into place, including the
Snap2It® brand connectors. Bridgeport sold a competing
line of quick-connect fittings called Snap-InTM and Speed-
SnapTM connectors.
In March 2001, Arlington brought an action against
Bridgeport’s entire line of Snap-InTM connectors, including
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 3
the 590-DCS and 590-DCSI Speed-SnapTM connectors,
alleging infringement of Arlington’s U.S. Patent Nos.
5,266,050 and 5,171,164. 1 Then, in January 2002, Arling-
ton filed the action-at-issue, alleging that Bridgeport’s
connectors also infringed claim 1 of the ’488 patent.
In April 2004, Bridgeport signed a settlement agree-
ment stating that the ’488 patent was not invalid, was not
unenforceable, and was infringed by Bridgeport’s 590-
DCS and 590-DCSI Speed-SnapTM products (collectively,
Old Connectors). In the settlement, Bridgeport also
agreed to be “permanently enjoined from directly or
indirectly making, using, selling, offering for sale or
importing . . . the Speed-SnapTM products identified in
this Action as Bridgeport’s 590-DCS and 590-DCSI or any
colorable imitations of such Speed-SnapTM Fittings” (2004
Injunction). J.A. 64 (emphasis added). The district court
dismissed the case without prejudice and maintained
jurisdiction to enforce the 2004 Injunction.
In late 2005, Bridgeport redesigned its connectors to
have a frustoconical leading edge. Bridgeport began
selling its frustoconical connectors, including the 38ASP
and 380SP connectors (collectively, New Connectors),
under the Whipper-Snap® brand.
In February 2012, Arlington filed a motion for con-
tempt, alleging that Bridgeport’s New Connectors violated
the 2004 Injunction. The district court held four days of
1 The at-issue patent, i.e., the ’488 patent, lists the
’164 patent as a cited reference. See ’488 Patent. The
’050 patent is a continuation of the ’164 patent and a
sibling of U.S. Patent No. 5,373,106, which the ’488
patent incorporates by reference. See ’488 Patent col. 4 ll.
6–10; see also ’050 Patent; J.A. 23–24.
4 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
hearings before issuing its contempt order and memoran-
dum.
The district court acknowledged that the parties’ dis-
pute centered around two limitations of claim 1 of the ’488
patent, and construed those limitations in its memoran-
dum and contempt order. Additionally, the district court
found by clear and convincing evidence that the New
Connectors met the limitations of claim 1 of the ’488
patent and, thus, that Bridgeport directly and indirectly
infringed the ’488 patent.
Because it found the New Connectors not more than
colorably different from the Old Connectors, the district
court determined that Bridgeport had violated the 2004
Injunction and held Bridgeport in contempt. In its con-
tempt order, the district court also expressly enjoined the
sale of the New Connectors for the life of the ’488 patent
(2013 Injunction). The district court did not, however,
enter sanctions at that time. Bridgeport appeals the
district court’s contempt order, the claim constructions,
the infringement findings, the scope of the injunction, and
the determination that the New Connectors were not
more than colorable imitations of the Old Connectors.
II
Under 28 U.S.C. § 1295(a)(1), this court has exclusive
jurisdiction of an appeal from a “final decision” of a dis-
trict court in a case arising under any Act of Congress
relating to patents. Section 1292(c) further provides this
court with jurisdiction to review certain “interlocutory
decisions.” See 28 U.S.C. § 1292(c) (2012).
“It is axiomatic that the initial inquiry in any appeal
is whether the court to which appeal is taken has jurisdic-
tion to hear the appeal.” Entegris, Inc. v. Pall Corp., 490
F.3d 1340, 1343 (Fed. Cir. 2007) (quoting Woodard v.
Sage Prods., Inc., 818 F.2d 841, 844 (Fed. Cir. 1987) (en
banc)). “We apply our own law, rather than regional
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 5
circuit law, to questions relating to our own appellate
jurisdiction.” Int’l Elec. Tech. Corp. v. Hughes Aircraft
Co., 476 F.3d 1329, 1330 (Fed. Cir. 2007).
When this court has jurisdiction, it reviews findings of
colorable imitation and findings of infringement in con-
tempt proceedings for clear error. TiVo, Inc. v. EchoStar
Corp., 646 F.3d 869, 883 (Fed. Cir. 2011) (en banc). Claim
construction is an issue of law reviewed de novo. Lighting
Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744
F.3d 1272, 1276–77 (Fed. Cir. 2014) (en banc); Cybor
Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.
1998). And, with regard to injunctions, this court reviews
a district court’s grant or denial and scope of an injunction
for abuse of discretion. Joy Techs., Inc. v. Flakt, Inc., 6
F.3d 770, 772 (Fed. Cir. 1993).
III
In patent cases, 28 U.S.C. §§ 1292(a)(1) and (c)(1) pro-
vides for our exclusive jurisdiction over “interlocutory
orders of district courts of the United States . . . granting,
continuing, modifying, refusing or dissolving injunctions,
or refusing to dissolve or modify injunctions . . . .” 28
U.S.C. § 1292 (a)(1). And § 1292(c)(2) gives us jurisdiction
over “an appeal from a judgment in a civil action for
patent infringement which would otherwise be appeala-
ble . . . and is final except for an accounting.” 28 U.S.C.
§ 1292(c)(2). Bridgeport argues that we have jurisdiction
over its appeal under both § 1292(c)(1) and § 1292(c)(2).
Because the district court’s order simply interpreted the
2004 Injunction and is not an otherwise final, appealable
judgment, we dismiss the appeal for lack of jurisdiction.
A
We can exercise appellate jurisdiction under
§ 1292(c)(1) if the injunction has been modified. Entegris,
490 F.3d at 1344–45. Thus, we must determine whether
6 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
the district court’s order constitutes a modification, or is
simply an interpretation or clarification. Id.Because this is a question of our own jurisdiction,
Federal Circuit law applies. Id. (“We follow these rules
[regarding whether an order continues an injunction]
from the Ninth and First Circuits in this case, not because
we are bound to, but because we find them persuasive,
and thus, we adopt them as Federal Circuit law.”);
Woodard, 818 F.2d 841 (Federal Circuit law applies to
issue of jurisdiction over a denial of an injunction, because
“[w]hile in some matters of procedural or substantive law
this circuit has concluded that we will follow the law as
interpreted by the circuit in which the district court is
located, . . . such deference is inappropriate on issues of
our own appellate jurisdiction.”) (internal citation omit-
ted). Under Federal Circuit law, even when an order does
not on its face modify an injunction, we still have jurisdic-
tion over an appeal of that order if it effectively amounts
to a modification. Id.This is not the first time that this court has faced this
issue. In Entegris, an injunction was entered prohibiting
the sales of certain products or “any colorable imitation
thereof.” 490 F.3d at 1342. Following the sale of a new
design, the patentee brought a contempt motion, claiming
that the new product violated the injunction. The district
court agreed, finding that the new design was no more
than a colorable imitation of the enjoined product. Myk-
rolis Corp. v. Pall Corp., No. 03-10392, 2005 WL 81920, at
*4 (D. Mass. Apr. 30, 2004).
On appeal, we were required to consider whether the
district court’s interlocutory contempt order could be
immediately appealed pursuant to § 1292(c)(1). We began
by observing that the Supreme Court has instructed that
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 7
the exception in 1292(a)(1) should be construed narrowly.
Entegris, 490 F.3d at 1344 (citing Carson v. Am. Brands,
Inc., 450 U.S. 79, 84 (1981)). 2 Then, after noting that the
district court’s contempt order did not “on its face, modify
or continue an injunction,” we looked to whether the order
“effectively amounts to either a modification or a continu-
ation . . . .” Id. Explaining that there is a difference
between an order “that modifies an injunction and one
that clarifies or interprets an injunction,” we found that
the district court’s order was an interpretation and,
therefore, not immediately appealable. Id. at 1345. In
reaching that decision, we relied on the district court’s
clear statement that it was not modifying the original
injunction and the district court’s finding that the new
design “was a ‘colorable imitation’ of the [enjoined prod-
uct], which was expressly covered by the original prelimi-
nary injunction.” Id.
The facts in this case parallel Entegris. And relying
on that precedent, we similarly conclude that we lack
jurisdiction to consider Bridgeport’s appeal because the
district court’s order simply interpreted or clarified its
original 2004 injunction.
The focus of the clarification-or-modification analysis
is whether there were changes to the original injunction
that “actually altered the legal relationship between the
parties.” Aevoe Corp. v. AE Tech Co., 727 F.3d 1375, 1382
(Fed. Cir. 2013); Motorola, Inc. v. Computer Displays,
Int’l, Inc., 739 F.2d 1149, 1155 (7th Cir. 1984). Because
clauses of both injunctions are almost identical in wording
and are congruent in meaning, the legal relationship
between the parties is not altered.
2 Section 1292(c)(1) provides jurisdiction for our
court to review certain interlocutory orders, as described
in section 1292(a).
8 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
The 2004 Injunction and the 2013 Injunction are di-
rected to the same parties, apply to the same activities,
and are in force for the same time period. Compare J.A.
64 ¶ 2, with J.A. 29–30 ¶ 5. Similarly, the injunctions
apply to the same products even though the actual word-
ing in each injunction differs slightly. Compare J.A. 64 ¶
2 (“Speed-SnapTM products identified in this Action as
Bridgeport’s 590-DCS and 590-DCSI”), with J.A. 29–30 ¶ 5
(“Whipper-Snap 380SP and 38ASP model connectors”).
Because the 2004 Injunction applies to “any colorable
imitations” of the Old Connectors, J.A. 64 ¶ 2 (emphasis
added), and the district court found that the New Con-
nectors were colorable imitations of the Old Connectors,
the district court’s express inclusion of the New Connect-
ors in the 2013 Injunction simply clarifies what was
already implicit in the 2004 Injunction. See Aevoe, 727
F.3d at 1382–83 (determining that the district court’s
reinsertion of “colorable imitation” language and explicitly
naming a previously enjoined party did not alter the legal
relationship of the parties and was thus a clarification).
Accordingly, because the injunctions cover the same
parties, activities, products, and time periods, the slight
word differences do not rise to the level of altering the
parties’ legal relationship.
Bridgeport argues that the 2013 Injunction changed
the scope of the 2004 Injunction. For example, Bridgeport
points out that the 2004 Injunction was part of a global
settlement implicating multiple product and method
patents, but the 2013 Injunction relates to a single meth-
od patent. Appellant’s Br. 26. And, according to Bridge-
port, the 2013 Injunction enjoins Bridgeport from selling
the New Connectors for any use, not just when used as
part of the claimed method. Thus, Bridgeport argues that
the district court’s broadening of the scope of enjoined
behavior alters the legal relationships between the par-
ties.
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 9
Contrary to Bridgeport’s argument, the 2013 Injunc-
tion does not broaden the scope of the 2004 Injunction. In
the 2004 Injunction, Bridgeport stipulated to infringe-
ment, and agreed to be permanently enjoined from “mak-
ing, using, selling, offering for sale or importing” the Old
Connectors or “any colorable imitations [thereof] during
the term of United States Patent No. 6,335,488.” J.A. 63–
64. Nothing has changed from that to which Bridgeport
agreed: In 2004 it agreed to be enjoined from making,
using, selling, etc., specific products which infringe the
method of claim 1 of the ’488 patent. The 2013 Injunction
still enjoins Bridgeport from making, using, selling, etc.,
what the district court determined to be colorable imita-
tions of products that infringe the method of claim 1 of the
’488 patent. Accordingly, the circumstances surrounding
the issuance of the 2013 Injunction did not alter the legal
relationships of the parties.
Also, just because the district court construed claim
terms for the first time in the 2013 Injunction, it does not
necessarily follow that the 2013 Injunction is transformed
into a modification of the parties’ relationship. Because
the 2004 Injunction was the result of a settlement agree-
ment, the district court did not need to analyze infringe-
ment and therefore did not need to issue any claim
constructions at that time. Later, the district court de-
termined that it needed claim constructions for its analy-
sis and issuance of a contempt order (which includes the
2013 Injunction). J.A. 20–25.
In expressly providing the claim constructions, the
district court simply interpreted or clarified the meaning
of those claim terms. See U.S. Surgical Corp. v. Ethicon,
Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim con-
struction is a matter of . . . clarify[ing] and when neces-
sary . . . explain[ing] what the patentee covered by the
claims . . . .”); see generally Markman v. Westview Instru-
ments, Inc., 517 U.S. 370 (1996) (describing claim con-
struction as an “interpretation” of claim terms). Between
10 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
the 2004 Injunction and the 2013 Injunction, the claim
language of the ’488 patent did not change. Thus, the
actual meanings of those claim terms did not change, and
the district court’s interpretation of the claim terms—
whether or not it was expressly provided—did not change
from one injunction to the next. Accordingly, the district
court simply clarified the meaning of the claim terms
implicated by both the 2004 Injunction and the 2013
Injunction.
Moreover, we have previously held that first-time
claim constructions provided in the course of contempt
proceedings were clarifications, not modifications, to an
injunction. In Aevoe the district court construed an at-
issue claim limitation for the first time in the contempt
order. Aevoe Corp. v. AE Tech Co., No. 12-cv-00053, 2012
WL 1559768, at *5 (D. Nev. May 2, 2012). On appeal, we
held that the reinsertion of the “colorable imitation”
language into the injunction and the related contempt
order’s claim construction were merely clarifications of
the original injunction. See Aevoe, 727 F.3d at 1382–83.
Similarly, in Additive Controls & Measurement Systems,
Inc. v. Flowdata, Inc., 154 F.3d 1345, 1350 (Fed. Cir.
1998), we held that it was “permissible for the [trial] court
to resolve the claim construction issue in the course of the
contempt proceedings and to conclude that the sale of the
[at-issue product] violated the injunction.”
For these reasons, the 2013 Injunction is not a modifi-
cation of the 2004 Injunction. 3 Thus, we cannot exercise
3 The 2013 Injunction was based on the district
court’s contempt finding, including its determination that
the New Connectors are not more than colorably different
from the Old Connectors. The contempt proceeding,
including issues as to the scope of the injunction, will be
appealable once the contempt proceedings have conclud-
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 11
jurisdiction over Bridgeport’s appeal under § 1292(c)(1).
This does not, however, end our jurisdictional inquiry.
B
To exercise jurisdiction under § 1292(c)(2), the appeal
must be “final except for an accounting.” To hold that this
appeal is final except for an accounting, we would have to
extend the narrow exception to the final judgment rule
laid out in § 1292(c)(2) to contempt orders. We decline to
do so.
As an exception to the final judgment rule,
§ 1292(c)(2) is to be interpreted narrowly. See Digital
Equip. Corp. v. Desktop Direct, Inc., 511 U.S. 863, 967–68
(1994) (“[W]e have . . . repeatedly stressed that the ‘nar-
row’ exception [to the final judgment rule] should stay
that way and never be allowed to swallow the general
rule, that a party is entitled to a single appeal, to be
deferred until final judgment has been entered . . . .”
(internal citation omitted)); see also Coopers & Lybrand v.
Livesay, 437 U.S. 463, 474 (1978); Cobbledick v. United
States, 309 U.S. 323, 324–25 (1940). Extending
§ 1292(c)(2) to contempt orders would impermissibly
broaden the jurisdiction that the statute confers.
We have recognized that § 1292(c)(2) “confers jurisdic-
tion on this court to entertain appeals from patent in-
fringement liability determinations when a trial on
damages has not yet occurred.” Robert Bosch, LLC v.
Pylon Mfg. Corp., 719 F.3d 1305, 1317 (Fed. Cir. 2013) (en
ed. We need not and do not decide what standard would
govern an appeal of an injunction separate from and not
intertwined with a contempt order finding of no more
than colorable differences. We hold only that an appeal
from an injunctive order cannot be used as a way of
securing interlocutory review of the contempt order.
12 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
banc) (emphasis added); see Johannsen v. Pay Less Drug
Stores Nw., Inc., 918 F.2d 160, 162 (Fed. Cir. 1990) (“Sec-
tion 1292(c)(2) is straightforward to apply when the civil
action involves only claims for patent infringement.”).
Here, we are not considering a determination of patent
infringement; we have before us a civil contempt order.
And contempt proceedings and patent infringement cases
are not co-extensive. See KSM Fastening Sys., Inc. v. H.A.
Jones Co., 776 F.2d 1522, 1528 (Fed. Cir. 1985) (“[T]he
issue in contempt proceedings is violation vel non of the
injunction, not patent infringement.”), overruled on other
grounds by TiVo Inc. v. EchoStar Corp., 646 F.3d 869(Fed. Cir. 2011) (en banc). Thus, although Congress
created an exception to the final judgment rule in patent
cases via § 1292(c)(2), this patent carve-out does not
expressly include contempt orders. Accordingly,
§ 1292(c)(2) does not extend to contempt orders. See
Johannsen, 918 F.2d at 163 (“We see no reason why the
introduction of non-patent claims should trigger
§ 1292(c)(2) . . . .”).
Further, we have recognized that “[a] contempt order
interpreting or enforcing an injunction . . . is generally not
appealable until final judgment. This is particularly so
where no sanction ha[s] yet been imposed for that con-
tempt and proceedings with respect to that question
remained ongoing at the time the appeal before us [i]s
filed.” Aevoe, 727 F.3d at 1380–81 (internal citations
omitted); see LMK Enters., Inc. v. Perma-Liner Indus.,
Inc., 423 Fed. App’x 972, 973 (Fed. Cir. 2011) (“As a
general rule, an adjudication of civil contempt . . . is not
appealable until sanctions have been imposed.”).
Here, the district court has imposed sanctions, but on-
ly well after the record was fixed for appeal. See Arling-
ton Indus., Inc., v. Bridgeport Fittings, Inc., No. 02-CV-
0134, (M.D. Pa. June 23, 2014), ECF No. 284; Arlington,
No. 02-CV-0134, (M.D. Pa. July 2, 2014), ECF No. 288.
And Bridgeport filed notices of appeal after those later
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 13
decisions. Arlington, No. 02-CV-0134, (M.D. Pa. June 27,
2014), ECF No. 286; Arlington, No. 02-CV-0134, (M.D. Pa.
July 8, 2014), ECF No. 290. We normally cannot consider
documents outside of the record on appeal. Am. Standard
Inc. v. Pfizer Inc., 828 F.2d 734, 746 (Fed. Cir. 1987). And
even if we were to take judicial notice of these orders,
Bridgeport’s later notices of appeal suggest that its earlier
appeal was premature. See also Aevoe, 727 F.3d at 1380
(“A contempt order interpreting or enforcing an injunction
. . . is generally not appealable until final judgment. This
is particularly so where no sanction had yet been imposed
for that contempt and proceedings with respect to that
question remained ongoing at the time the appeal before
us was filed.”) (emphasis added); Szabo v. U.S. Marine
Corp., 819 F.2d 714, 717 (7th Cir. 1987) (finding no appel-
late jurisdiction where there was no final order when
notice of appeal was filed, but district court later deter-
mined attorneys’ fees).
IV
For the foregoing reasons, the appeal is dismissed for
lack of jurisdiction.
DISMISSED
COSTS
No costs.