Patent Law

En Banc Federal Circuit: Adjudged Infringers and their "New" Products

By Dennis Crouch

TiVo v. EchoStar (Fed. Cir. 2010)

The Federal Circuit has announced an en banc rehearing of the TiVo appeal focusing on the process of chasing-down defendants to enforce an injunction — especially where the defendant has introduced a new device that is arguably infringing.  The patentee here has asked that the enforcement operate through a contempt proceeding while the accused infringer has demanded a new trial on the merits for the new device.

The questions on appeal include:

a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?

b) How does 'fair ground of doubt as to the wrongfulness of the defendant's conduct' compare with the 'more than colorable differences' or 'substantial open issues of infringement' tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).

c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer's efforts to design around the patent and its 2009-1374 2 reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?

d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

On-point amicus briefs are welcomed.

Full post as published by Patently Obvious on May 14, 2010 (boomark / email).