TiVo Inc. v. EchoStar Corp.
646 F.3d 869
| Fed. Cir. | 2011Background
- TiVo owns the '389 patent covering DVR time-shifting technology and asserted claims 31 and 61 (software and apparatus) against EchoStar.
- A jury found EchoStar infringed the software claims and willfully infringed, leading to damages and a permanent injunction.
- In the injunction, EchoStar was barred from infringing products and ordered to disable DVR functionality in eight named receiver models within 30 days, with further disablement of DVR in new placements.
- TiVo sought contempt whenever EchoStar redesigned its receivers; the district court found contempt for both infringement and disablement provisions.
- On appeal, the Federal Circuit en banc vacated the contempt for infringement and remanded for a colorable-differences determination, but affirmed contempt for the disablement provision and the corresponding sanctions.
- Dissenting judge contends the disablement ruling and sanctions were improper due to lack of clear injunction scope and misapplication of colorable-differences analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether contempt for continued infringement is proper under the new standard | TiVo contends modified EchoStar devices remain infringing. | EchoStar argues colorable-differences analysis and lack of clear infringement guidance undermine contempt. | Remanded to assess colorable differences; infringement contempt vacated. |
| Whether the 'more than colorable differences' standard should be overhauled | TiVo relies on original limitations; modifications may still infringe. | EchoStar asserts previous KSM framework correctly guided contempt. | KSM overruled; new standard requires comparing modified and original features per claim limitations. |
| Whether the disablement provision is vague/overbroad and enforceable | TiVo argues explicit disablement of infringing DVR functionality applies to named models. | EchoStar contends ambiguity and overbreadth invalidate contempt. | Waiver and vagueness defenses rejected; disablement provision upheld as enforceable. |
| Whether sanctions based on infringement contempt can be sustained after remand | TiVo seeks damages for continued infringement. | EchoStar argues sanctions were inappropriate if infringement contempt is vacated. | Sanctions affirmed only to the extent tied to the valid disablement contempt; infringement-based sanctions remanded. |
Key Cases Cited
- KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522 (Fed.Cir.1985) (two-step 'colorable differences' approach for contempt in patent cases)
- Abbott Labs. v. TorPharm, Inc., 503 F.3d 1372 (Fed.Cir.2007) (colorable differences and clarity in injunctions; explicit notice requirement)
- Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609 (U.S. 1885) (fair ground of doubt required for contempt; injunctions must be clear)
- McComb v. Jacksonville Paper Co., 336 U.S. 187 (U.S. 1949) (intent not required for civil contempt; lack of clarity not a defense when decree clear)
- Granny Goose Foods, Inc. v. Teamsters, 415 U.S. 423 (U.S. 1974) (need for clear and definite injunction terms to support contempt)
- International Longshoremen's Ass'n v. Philadelphia Marine Trade Ass'n, 389 U.S. 64 (U.S. 1967) (clarity requirement for injunctions; fair notice)
- State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226 (Fed.Cir.1985) (design-around incentives considered in patent contexts)
- Travelers Indemnity Co. v. Bailey, 129 S. Ct. 2195 (Supreme Court 2009) (limits on collateral attacks and scope of injunctions)
- Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770 (Fed.Cir.1993) (injunctions must be tailored to prevent infringement; overbreadth concerns)