VendingData sells a product, PokerOne, that shuffles and deals hands of cards. According to VendingData, PokerOne doesn't form a hand of cards until the delivery of the cards, not within the PokerOne device. '684 claim 20 requires "forming at least one set of cards within the apparatus". So, VendingData argued, its PokerOne does not meet that claim limitation, and so does not infringe.

Following arguments by counsel regarding the request for a preliminary injunction, the district court issued an injunction barring the sale of the Poker One. Although the question of the proper construction of claim 20 was clearly in dispute, the court did not address the claim construction arguments made by VendingData and did not provide an explicit construction of the critical claim language. Rather, the court simply concluded that Shuffle Master was likely to succeed on the merits in proving that the operation of the PokerOne infringes Shuffle Master’s rights under claim 20 of the ’684 patent.

As its principal ground for appeal, VendingData asserts that this case turns on the proper construction of the limitation that requires the formation of “at least one set of cards within the apparatus.” Accordingly, VendingData contends, the district court’s failure to provide any explicit construction of that claim language renders the preliminary injunction improper.

We have held that a district court does not have to conduct a comprehensive and final claim construction in a preliminary injunction proceeding. Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996). Similarly, it is not necessary for a court to conduct an explicit claim construction if the claim construction issue is a simple one that needs no analysis, or in which there is no reasonable ground for dispute as to claim meaning. Toro Co. v. Deere & Co., 355 F.3d 1313, 1322 (Fed. Cir. 2004). However, a district court in a preliminary injunction proceeding has the duty to determine whether the movant is likely to prevail on the merits, and if that question turns on a contested issue of claim construction, the court must give the claim construction issue the attention necessary to determine the likelihood of success. In this case, the dispute over the meaning of the “set of cards” limitation is central to determining whether Shuffle Master is likely to prevail on the merits of its infringement claim. The district court was therefore required to provide some form of claim construction, even if abbreviated, preliminary, or tentative.

[R]esolution of the claim construction issue framed by the parties is of critical importance to the issue of infringement.

Without sufficient evidence, the CAFC declined to resolve the claim construction issue.

While claim construction is a question of law, the district court’s analysis is important to the process of claim construction, and in this context, as in others, we decline to construe the claim without the guidance of the district court’s construction.

Remanded back to district court for claim construction, with the preliminary injunction vacated.