On or about September 6, 2011, United States District Court Judge William G. Young will hold a hearing to issue sanctions against InnovaSystems for contempt of court, having ruled that Innova has violated a permanent injunction against sales of its optical spray analyzing system. The hearing will be the latest milestone in a long-running legal dispute between InnovaSystems and Proveris that began when Proveris sued Innova for infringement of patents related to systems for measuring plume geometry and spray pattern for nasal sprays and metered dose inhalers (MDIs).
For nearly six years, Proveris Scientific Corp vs. InnovaSystems, Inc has been occupying lawyers on both sides, setting new legal precedents, and leaving some OINDP researchers questioning whether they have the right to use laboratory equipment they already own. While Innova is thanking their “many customers in this field” for their “solid support” and guaranteeing that “InnovaSystems will continue to be the leader in the spray data analysis field with respect to both advanced technologies and customer service,” Proveris is warning that any use of an Innova spray analysis system constitutes infringement on the part of the laboratory using the analyzer.
The case involves US Patent No. 6,785,400, issued to Proveris (then known as Image Therm Engineering) in 2004 for “a spray data acquisition system” for the purpose of characterizing aerosol spray patterns from metered dose inhalers and nasal spray pumps and using “systems and methods that illuminate an aerosol spray plume and utilize optical-techniques to characterize the associated spray pattern.“ After receiving the patent, Proveris began marketing the system under the name SprayView.
By the next year, says Proveris Founder and CEO Dino Farina, his company had discovered that InnovaSystems was selling a system called the “Optical Spray Analyzer,” or OSA, that Proveris considered substantially similar to the SprayView. According to Farina, he discovered that a customer had provided Innova with access to one of the Proveris machines and to all of the documentation associated with it and had commissioned Innova to make a copy.
When Proveris confronted the customer with evidence of the violation of the company’s confidentiality agreement, Farina says, senior level executives at the company “were absolutely beside themselves that someone in their ranks had done this,” and the two companies resolved the issue between themselves quickly. By that time, however, he says, “Innova was well on their way to doing what they were doing.” In December 2005, Proveris filed suit against Innova for patent infringement.
In response, Innova took a novel tack, arguing that it was protected by the Hatch-Waxman act safe harbor provision which holds that it is not infringement to “make, use, offer to sell, or sell within the United States a patented invention . . .solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use or sale of drugs or veterinary biological products.” Proveris responded that the safe harbor provision applied only to patents on drug products, medical devices, and other products subject to FDA regulation, not to laboratory equipment.
