Sitting by Designation, dissenting:
I respectfully dissent.
For convenience, the various devices involved in this litigation may be referred to as “plaintiff’s” (the device protected by the patent); “Dl” (the original, Wolf, device, conceded to infringe the patent); “D2” (the first alternate version of defendant’s prod*177uct, the subject of the earlier appeal to this Court); and “D3” (the second alternate version put forward by the defendant, the subject of the present proceeding).
The 1978 consent decree conclusively established, as between these parties, (1) that plaintiff’s patent is valid and enforceable; and (2) that Dl infringed the patent. The defendant was permanently enjoined from marketing Dl, or any other device which would infringe any of the claims of the patent.
When the defendant attempted to market D2, plaintiff sought an adjudication that defendant was violating the injunction, hence in contempt. The district court was confronted with two closely related issues, one procedural and one substantive: whether, as a matter of procedure, the issues presented could properly be resolved in a contempt proceeding, rather than in a plenary infringement action; and, whether defendant’s marketing of D2 did violate the injunctive decree. In reversing the district court’s determination that the defendant was not in contempt, this court ruled (as a matter of first impression in this circuit, but on the basis of firmly established precedent) that both the procedural and substantive issues merged into a single, decisive, question: Was D2 merely colorably different from Dl? And, as the court further noted, the doctrine of equivalents is properly invoked, in answering that question (“Interdynamics I”).
Thus, this court held that the district court had erred when it undertook a painstaking comparison between D2 and the claims of the plaintiff’s patent. Rather, the district court should merely have compared D2 with Dl. Such comparison, applying the Supreme Court’s formulation of the Doctrine of Equivalents (“If two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape”), Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950) led inexorably to the conclusion that D2 was merely a colorable differentiation from Dl, and that its marketing by the defendant was contumacious.
My review of the record of proceedings in the district court after the remand convinces me that the district court misconstrued certain portions of the panel opinion, particularly footnote No. 5, and believed that virtually any rear-window defroster kit marketed by the defendant would violate the injunction. As noted by the earlier panel, a new product may prove, after full-scale review, to infringe the patent, but if it is more than colorably different from the originally infringing device, contempt proceedings are not a permissible procedural vehicle for making the infringement determination. Conversely, if the two devices are merely colorably different, it is unnecessary to parse the claims of the patent before rendering a contempt adjudication. But this does not mean that equivalence is to be determined without reference to the patent, or that a defendant may be held in contempt for marketing a product which plainly does not infringe the patent.
It should be noted that the Interdynamics I opinion invokes the controlling precedent of Graver Tank & Mfg. Co. v. Linde Air Products Co., supra, in which the Supreme Court stated:
“What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum .... ” (339 U.S. at p. 609, 70 S.Ct. at pp. 856-57).
Moreover, the panel opinion cites with approval Siebring v. Hansen, 346 F.2d 474 (8th Cir.1965) in which the court stated:
“Having determined that the trial court properly ruled that the offending Siebring feeders were only colorably different from the enjoined feeders and the Hansen patent, it follows that the three offending feeders hereinabove referred to infringed the Hansen patent. The court was not, on this record, required to adjudicate the infringement issue in this contempt proceeding ... .” (346 F.2d at p. 480).
*178In the present case, the trial court’s “finding” that D3 is only colorably different from Dl appears in the record as follows:
“The Wolf product [Dl] did not do what the Interdynamics patent [plaintiff’s device] does. It lays down only two parallel, spaced strips at a time, and not the complete array. The parties agreed that this was an infringement, and the consent judgment so provides.
“Trans Tech’s next product [D2], which eliminated the cover sheet, also laid down only two parallel, spaced strips at a time, as did the Wolf product, and the court of appeals ruled that by applying the doctrine of equivalents, it was not more than colorably different than the Wolf product, and so its sale and use was a contempt of the permanent injunction, without regard to whether it infringed any claim of the 087 patent.
“Applying that test, which is binding here, the proposed new product is no more than colorably different in comparison with the Wolf product. The use of two rolls of adhesive-coated conductor, placed on a mandrel for mounting in a dispenser, will do the same work in substantially the same way to accomplish the identical same results, i.e., to lay down a parallel pair of conductors, at a predetermined spacing, on the rear window, to build a rectangular array to serve as a heating element.” (App. 327-328).
In my view, this court’s opinion in Inter-dynamics I does not mean that the defendant is precluded from marketing any device which lays down parallel heating strips at a predetermined spacing. Plaintiff’s device, and Dl and D2, are all similar in that the spacing is accomplished by affixing the conductor strips to a sheet. Plaintiff’s device and Dl both used a “sandwich,” the upper layer of which is removed upon installation. D2 did not employ the upper, protective, layer, but accomplished the same result by merely rolling up the sheet. The device now under consideration, D3, does not use any sheets at all. The spacing of the heating elements is achieved by means of a mandrel-type dispenser. While it accomplishes a substantially similar result, namely, laying down parallel strips of heating element at a predetermined spacing, it plainly achieves that result by a totally different method. Moreover, it is arguable that D3 may represent a decided improvement, both in ease of application, and in increased flexibility.
Because the district court’s “finding” is squarely based upon an over-expansive reading of this court’s earlier opinion, it constitutes an error of law, subject to plenary review in this court. And, if it be deemed a finding of fact, in my view it is clearly erroneous. Indeed, in the district court, the plaintiff did not attempt to argue that D3 was substantially identical to Dl, contending only that D3 was not sufficiently concrete to permit exploration of the equivalency issue.
Thus, I would remand for the entry of an order determining that defendant’s new product does not fall within the injunctive provisions of the consent decree.1
. The majority has concluded that we have jurisdiction over this appeal because the district court’s order amounted to the entry of a final declaratory judgment, appealable under 28 U.S.C. §§ 2201 and 1291. I have some difficulty with the procedural implications of that holding, but I believe we plainly have jurisdiction under 28 U.S.C. § 1292(a)(1). The district court was asked to decide whether marketing D3 would violate its injunctive decree. When the court decided in favor of the plaintiff, it was either modifying the injunction to cover the new device, or refusing to modify it so as to exclude the new device. The net effect of a declaratory judgment that a proposed course of conduct would violate an injunction is, in my view, indistinguishable from a judgment enjoining that conduct.