Patent Law

The following is excerpted from an Amster, Rothstein & Ebenstein Patent Law Alert by David A. Boag and Charles R. Macedo:

On May 14, 2010, the U.S. Court of Appeals for the Federal Circuit agreed to rehear en banc the decision of the three judge panel in TiVo Inc. v. EchoStar Corp., 597 F.3d 1247 (Fed. Cir. 2010) relating to the standards for evaluating contempt of an injunction in a patent case. The decision of the full Federal Circuit could have far-reaching implications for companies who elect to design around a patent after facing an injunction at the conclusion of a patent trial.

The Questions On Review

The Federal Circuit vacated its prior decision and identified the following questions for en banc review:

1. Following a finding of infringement 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?
2. What is the proper test for evaluating the newly accused device against the adjudged infringing device?
3. Where a contempt proceeding is proper, (a) what burden of proof is on the patentee to show that the newly accused device infringes and (b) what weight should be given to the infringer?s efforts to design around the patent and its reasonable and good faith belief of non-infringement by the new device, for a finding of contempt?
4. 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?

The Court has invited briefs of amici curiae from the interested public and it is likely that numerous parties from divergent fields will weigh in on this important issue.

Read the full Patent Law Alert here.