*1 so, we extend Now, did not do if Skinner INC., Plaintiff-Appellee, TIVO reject defendants capital
Osborne claim. process due substantive Plaintiffs CORPORATION, EchoStar ECHOSTAR Supreme Court recognize that We Corporation, Technolo- EchoStar DBS pos-
Osborne, open left by implication, EchoSphere Limited gies Corporation, might have defendant capital that a sibility Liability Company, Satellite execu- in traditional state liberty interest Corporation, LLC, and Dish Network process due clemency procedural tive Defendants-Appellants. Osborne, at 2319. 129 S.Ct. may protect. prisoner room for “left slim
Osborne No. 2009-1374. law denies state governing show Appeals, States Court United him Skin- process.” See due procedural Federal Circuit. Osborne, 1293; ner, 129 S.Ct. 131 S.Ct. 20, 2011. April today not decide But we need at 2321. process due procedural Plaintiffs
whether violated; Plaintiff has not
rights have been that Florida’s appeal in this
contended for access to DNA
statutory procedure as a matter of fed- inadequate
evidence is
eral law.
III. CONCLUSION has not established
Plaintiff federally protected violated a
state officers to no relief he is entitled
right, and facts of this case.7 courts on the
federal action court’s dismissal
The district
is affirmed.
AFFIRMED. evidence for the release of the to order today’s deci- nor Although it is immaterial execu- Plaintiff's sion, testing or not to authorize to seek executive Plaintiff remains free testing has been done. gover- until such asking tion clemency, including the Florida *5 Waxman,
Seth P. Wilmer Cutler Picker- Dorr, LLP, Washington, ing Hale and DC, on argued plaintiff-appellee for the rehearing en banc. him on the brief With Dumont, Daniel Vol- were Edward C. S. chok, coun- and Thomas G. Saunders. Of Chu, Morgan Joseph sel on the brief were Iancu, Perry Lipner, Goldberg, M. Andrei Manella, Byrd, Irell & and Christine W.S. Angeles, LLP of Los CA. Rosenkranz, Orrick, Herring- E. Joshua York, NY, Sutcliffe, LLP, & of New ton defendants-appellants argued for the on him on the brief rehearing en banc. With Joseph Evall and Alex V. Chachkes. counsel on the brief were Deanne E. Of Foerster, LLP, Morrison & Maynard, Dunner, DC, Washington, Wamsley, Donald R. Don bert C. Intellectual Property Puknys, Association, Burley, Finnegan, Erik R. Washington, Owners DC. Farabow, Dunner, Henderson, Garrett & Elaine Goldenberg, J. Jenner & Block DC, L.L.P., Washington, Rachel Kre- LLP, DC, curiae, of Washington, for amici vans, Crotty, and F. Jason A. Scott Llew- Law Professors Erwin Chemerinsky, et al. Foerster, LLP, ellyn, Morrison & of San on rehearing en banc. her With on the Francisco, CA. Of counsel was Tina E. brief were Marc A. Goldman and Jessica Hulse, Henderson, Farabow, Finnegan, Ring Amunson. Dunner, L.L.P., Alto, of Palo Garrett & Abate, LLP, Mark J. Goodwin Procter CA. York, NY, of New for amicus curiae New Tom, Counsel, K. Willard General Fed- York Property Intellectual Law Associa- Commission, eral Trade of Washington, tion on rehearing en banc. himWith DC, for amicus curiae Federal Trade Com- Carlson, the brief Dale L. Wiggin & rehearing mission on en banc. LLP, Haven, Dana of New CT. Of coun- Nelson, LLP, Howrey P. Parekh, William sel was Ankur P. GoodwinProcter Alto, CA, LLP, York, East Palo for amicus curiae SAP of New NY.
America, rehearing Inc. on en banc. Christopher Kelly, Mayer J. Brown Reines, Weil, LLP, DC,
Edward R. Washington, Gotshal & for amici curiae LLP, Manges Shores, CA, of Redwood for Professors of Property Intellectual curiae, amicus Prop- American Intellectual Competition Law and Economics on re- *6 erty Law rehearing Association on en hearing en banc. him With on the brief banc. With him on Israel, the brief were Amber Mayer LLP, were Sharon A. Brown Rovner, Weil, LLP, Houston, H. Manges Gotshal & of Baum, TX May- and Brandon Houston, TX, Kasper, LLP, Alto, and Alan J. Ameri- er Brown of Palo CA. Association, can Property Intellectual Law Huber, K. Kellogg, Michael Kellogg, Arlington, of VA. Hansen, Todd, Figel, P.L.L.C., Evans & of Hoffman, Gary M. DC, Dickstein Shapiro Washington, for amicus curiae Veri- LLP, DC, curiae, Washington, of for amici Communications, zon Inc. rehearing on en General Electric Co. and Johnson & John- banc. himWith on the brief was Aaron M. rehearing son on en banc. With him on Panner. Of counsel on the brief were the brief were Gallagher John T. and Ken- Levine, John Thorne and Gail F. Verizon neth W. Brothers. Inc., Communications of Arlington, VA. Schruers, Computer
Matthew Chambers, & Com- A.M. Scott Boggs Patton Industry (CCIA), LLP, munications McLean, VA, Association of for amicus curiae DC, Washington, of Greatbatch, for amicus curiae Inc. rehearing on en banc. Computer & Communications Industry As- himWith on the brief was Kevin M. Bell. rehearing sociation on en banc. Of counsel on the brief were Caroline Cook Maxwell, LLP, Boggs, Dallas, Patton of Taylor, Mintz, Levin, Cohn, Robert P. TX; Oparil Richard J. and David G. Hen- Ferris, Glovsky P.C., Popeo, and of Palo ry, LLP, Boggs Patton of Washington, Alto, CA, for amicus curiae Intellectual DC. Property Owners Association on rehearing
en banc. him With on the brief were Edward A. Pennington, Hanify King, & Douglas Rhodes, PC, K. Norman Boston, MA, and Kevin H. of for amicus curiae Property Association, Intellectual Owners Company rehearing Acushnet on en banc. Washington, of DC. Of counsel was Her- With him on the brief was Amanda M. Schwartz, Troy Rettig. Of counsel on brief was Robert S. Constantine Can- LLP, DC, Washington, R. Lester. non for amici Agricultural curiae Organizations on re- McGill, Gibson, D. Dunn & Matthew hearing en banc. him With on the brief LLP, DC, for Washington, Crutcher were D. Seth Greenstein and Mitchell L. Company, amici curiae Hewlett-Packard Stoltz. rehearing et al. on en banc. Clement, King Spalding, Paul D. & RADER, Before Judge, Chief and LLP, DC, Washington, for amicus curi- NEWMAN, MAYER, LOURIE, Finjan, rehearing ae Inc. on en banc. BRYSON, GAJARSA, LINN, DYK, Daryl him on the brief were L. With Josef- PROST, MOORE, O’MALLEY, and fer, Morrow, Erin E. and Adam Conrad. REYNA, Judges, Circuit rehearing on en banc. Lamken, LLP,
Jeffrey A.
MoloLamken
DC,
Washington,
for amicus curiae As-
Opinion
by
for the court filed Circuit
Competitive Technology
sociation for
LOURIE,
Judge
in which Circuit Judges
rehearing
him
en banc. With
on the brief
NEWMAN, MAYER, BRYSON, MOORE,
Pattillo,
was Michael G.
Jr. Of counsel
O’MALLEY,
join
full,
and REYNA
Raymond
Henry
Millien and Thomas
Judge
which Chief
RADER and Circuit
Jackson,
PLLC,
Group,
PCT Law
GAJARSA, LINN, DYK,
Judges
Washington, DC.
Al-A3(a).
join
parts
PROST
IL,
A. Epstein,
Chicago,
Richard
for
Dissenting-in-part opinion
filed
amici curiae Professors of Law and Eco-
DYK,
Judge
Circuit
in which Chief Judge
nomics,
McChesney,
Fred S.
et al. on re-
GAJARSA,
RADER and
Judges
Circuit
hearing en banc.
LINN,
join.
and PROST
Rodney A. Cooper, Protecting Assets of
LOURIE,
Judge.
Circuit
Mind,
CO,
Springs,
of Colorado
“EchoStar”)
Appellants (collectively,
*7
Distinguished
ap
amici curiae
Economists on
peal from the district
rehearing en banc.
court’s decision find
in contempt
EchoStar
of two separate
Lehman,
Bruce A.
International
Intel-
provisions of the
permanent injunc
court’s
Institute,
lectual Property
Washington,
of
tion order. See TiVo Inc. v. Dish Network
DC, for amicus curiae International Intel-
(E.D.Tex.2009).
Corp.,
Background Warping 6,233,389 ent”), which is entitled “Multimedia Time gy allows television TiVo Inc. System.” (“the (“TiVo”) '389 The patent” users owns U.S. Patent patented or “TiVo’s simultaneous- technolo- pat- buffer with said tomatically transform eo data into data streams and fills said [5] wherein said source object; flow streams; controlled object by is au said ly record and play (“time-shift”) television [6] providing a sink object, wherein using commonly object broadcasts what is known said sink obtains data stream (“DVR”). digital object as a A video recorder buffers from said transform fast-forward, rewind, outputs DVR allows users to and to a video said streams decoder; pause, pro- and a “live” and audio replay television [7] wherein said decoder converts had been found infringing by jury (the (2) display signals “infringement” provision) into and and to dis- said streams functionality existing to a able the re- signals display; sends said DVR [8] wherein said sink object is auto ceivers had already been placed with place- EchoStar’s customers and new matically by flow controlled said yet placed ments to be with object; transform [9] providing a control object, where EchoStar’s customers (the “disablement” provision). infringement provision The object control receives com said reads: user, mands from a said commands Defendant, officers, agents, Each
control the flow of the broadcast data servants, employees, attorneys, and through system; persons partic- those in active concert of object said control [10] wherein ipation with them who receive actual sends flow command events to said hereof, notice hereby are restrained and source, transform, objects. and sink enjoined, pursuant to 35 U.S.C. 283 and added). patent (emphases claim 31 '389 65(d), making, Fed.R.Civ.P. from using, 31, except to claim Claim 61 is similar sell, offering to selling, importing than apparatus pro- it recites an rather States, Infringing United Prod- cess. See id. claim 61. ucts, either alone or in with combination The accused satellite television product other and all other products broadly can into receivers classified two only colorably that are different there- categories processing chip based on the from in the context of Infringed employed by the receiver: the “50X” ser- Claims, individually whether or in com- ies and the “Broadcom” series. The dis- part bination with other or as a questions infringe- trict court submitted product, of another and from otherwise TiVo, invalidity jury. ment and Inc. infringing or inducing infringe others to Corp., v. Dish Network No. 2:04-CV- Infringed patent. Claims the '389 (E.D.Tex. Apr. ECF No. 690 J.A.162. The disablement reads: 2006) in- [hereinafter Form]. Verdict On Defendants hereby are FURTHER jury fringement, was asked whether (30) to, thirty days ORDERED within eight different models of EchoStar receiv- order, the issuance of this disable the ers, three of the 50X series and five (i.e., functionality DVR disable all stor- series, literally infringed Broadcom age playback to and from a hard disk pat- hardware or software claims of TiVo’s data) 192,- drive of television in all but jury “yes” ent. Id. at 2-3. The answered Infringing 708 units of the Products that claims, for each of the asserted for each of placed have end user or eight listed receivers. Id. It also i.e., functionality, subscriber. DVR found, evidence, convincing clear and storage playback disable all to and willful, that EehoStar’s data) hard disk drive of television [sic] approximately id. and awarded TiVo *9 in any place- shall be enabled new profits million lost and reasonable $74 Infringing ments of the Products. royalties, id. at 8. The district court en- injunction Id. The defines both the terms judgment tered on the verdict and issued a “Infringing “Infringing Claims” and Prod- permanent against EchoStar. ucts”: injunction, In its court ordered district (1) stop making, using, thereby judgment offer- enters [T]he
EchoStar: Court sell, selling against the receivers that for Plaintiff Defendants for will- permanent No. of the court’s of U.S. Patent oStar infringement ful 1, 5, 21, (“'389 6,233,389 injunction. conducting claims After a series of patent”), (“the 23, 32, 36, Infringed motion, and 61 hearings on TiVo’s district Claims”) following by Defendants’ DVR in contempt court ruled that EchoStar was (collectively “Infringing receivers injunc- provisions permanent of both of its DP-508; DP-510; Products”): DP-501; regard tion. With DP-921; DP-625; DP-721; DP-522; rejected the district court Ech- provision, and the DP-942. argument redesigned that it its oStar’s had court’s definition of infringing Id. 161. The district in a manner that ren- receivers listed the “Infringing Products” the term colorably dered them more than different jury in same model numbers infringing adjudged from the devices. infringing. verdict had found redesigned that it EchoStar contended had infringing software on both the 50X entry judgment by of final Following court, and the Broadcom receivers so that part, we affirmed the district part, “parsing” reversed in and remanded the dis limitation of claims 31 and 61 had ap trict court’s decision. EchoStar longer argued was no satisfied. EchoStar of claim construction and pealed issues replaced that was because it had the “start that infringement. found the district We feature, origi- code detection” which was incorrectly construed at least court had nally alleged parsing to meet the limita- one limitation of the hardware claims and tion, awith “statistical estimation” feature. portion judgment up reversed recordings comprised in a are Video DVR holding jury’s verdict that EchoStar’s sequential frames audio and video literally infringed DVRs the hardware data that are received as data stream TiVo, claims. Inc. v. EchoStar Commc’ns and stored to the hard drive of the DVR. (Fed.Cir. Corp., 516 F.3d 1304-05 The start code detection feature in the 2008). However, no error in the we found infringing parsed receivers for codes that district court’s construction of the software designated the start of each video frame jury’s claims and also affirmed the verdict and indexed those codes so as to allow the infringed that the EchoStar devices system precisely locate and access patent. software claims of the '389 Id. required frame from the data stream 1310. needed, during whenever such as rewind time, At appealed that EchoStar had not operations by and fast forward the user. grant permanent court’s of a district functionality EchoStar contended was injunction. opinion, our we noted that accomplished by using now a statistical injunction, the district court’s which had average estimation feature that relied on stayed during ap- the course of the been frame rate statistics estimate the loca- peal, following would take effect our deci- a given tion of video frame. EchoStar sion. Id. at 1312. remanded to the We argued further it had modified the district court to make a determination as infringing software on the Broadcom re- damages may additional that TiVo “automatically ceivers so that the flow con- stay per- have sustained while the limitation of claims 31 and 61 trolled” was manent had in effect. Id. longer point, no satisfied. On that EchoS- issued, mandate Our completely contention tar’s effective, April became eliminated the “record buffer” existed original provide in its software to flow
Following appeal, the decision on the *10 being control of that was transferred TiVo moved the district court to find Ech- data in pool from a of data buffers to the hard still be because it had failed to Thus, comply in with the plain language of the receiver. its modified of the drive dis- software, provision ablement in the argued, there was no district court’s requiring order it to control,” disable DVR function- thereby allowing “automatic flow ality completely from the specifically there for some data loss whenever was named receiver models adjudged to be in- overflow of data in one of the data buffers at trial. fringing EchoStar argued to the resulting from a difference in data transfer district court that because the disablement from the rates to and buffer. provision required it to “Infringing disable The district court evaluated the two Products,” merely required EchoStar was by modifications found and clear and con- infringing software, to disable DVR which vincing evidence that the modified DVR did not exist it redesigned once had colorably software was not more than dif- receiver software. The district court re- software, infringing ferent from the jected argument, reasoning that if infringe did continue to the software EchoStar believed that the infringing re- claims. On EchoStar’s contention that the entirety ceivers their subject were not met, “parsing” limitation was not the court to the order or that the order improperly receivers, held that the modified like the covered noninfringing practices, then Ech- ones, adjudicated “PID continued utilize oStar should have requested that the dis- filtering,” recog- which EchoStar itself had trict court modify its order or should have “parsing,” nized as and thus were not challenged the scope of the colorably more than different from the ad- appeal. Id. 874. The district court TiVo, judicated F.Supp.2d receivers. concluded that having failed to do either at at 870. As for EchoStar’s contention that issued, the time EchoS- it had eliminated the automatic flow con- tar had waived argument by removing trol limitation one of the buff- injunction was overbroad. Id. ers, court, looking at the actual amount In view of EchoStar’s software, of data loss the modified dis- order, court’s imposed district court claim, that, credited EchoStar’s and held against sanctions EchoStar in the amount essence, a change from eleven nearly million. Inc. TiVo v. Dish $90 ten, buffers to and did render Corp., F.Supp.2d Network colorably modified devices more than dif- (E.D.Tex.2009). The court also awarded ferent from original device. Id. at 871. damages to TiVo for the in- continued In the absence of more than a colorable fringement by redesigned EchoStar’s soft- original difference between EchoStar’s Further, ware. Id. the court amended its devices, modified the district court con- injunction, earlier requiring EchoStar to contempt proceedings cluded that were ap- approval seek the court’s imple- before propriate under our decision KSM. Id. menting future noninfringing workarounds at 871. Because it then found clear and to its DVR software. convincing evidence of continued infringe- ment of the software claims the modi- Discussion devices, fied the district court held EchoS- A. tar to be in violation of the injunction. Id. at 873. Contempt Violation Infringement Provision Moreover, the district court held if even EchoStar had achieved a nonin- begin by We providing clarification of fringing design-around, EchoStar would the standard to be used for determining *11 a lack intent to violate an alleged precedent, continued in- cases of
contempt in
infringer
alone cannot save an
argues that it was
EchoStar
fringement.
finding
contempt.
a
Additive Con-
court to decide
for the district
improper
Sys.,
Measurement
Inc. v. Flowda-
infringement
continued
trols &
relating to
issues
(Fed.Cir.1998)
ta, Inc.,
1345,
in a
154 F.3d
modified software
sum-
by EchoStar’s
(“The
contempt
in
general
rule
civil
is
mary contempt proceeding,
opposed
merits,
party
a
need not intend to violate an in-
and to find
a new trial on
contempt.”).
in
infringement
junction
to be found
contempt
in
EchoStar
contempt]
civil
is
injunction. According
purpose [of
“Since
provision of the
remedial, it
intent
EchoStar,
infring-
matters not with what
its modifications
prohibited
the defendant did the
act....
software rendered the modified
ing DVR
colorably
An act does not cease to be a violation of a
more than
different
receivers
infringing
prior
merely
may
in
law and of a decree
because it
from the one found
Moreover,
contends,
innocently.”
jury trial.
EchoStar
have been done
McComb
Co.,
187, 191,
Paper
it
a “Herculean” effort in rede-
Jacksonville
336 U.S.
undertook
(1949).
software in its receivers
these factors in considered assess- Faith a Good as Defense ing penalties, a matter as to which the Contempt to Civil court has district considerable discretion. See, Servs., e.g., Test Masters Educ. arguments We first consider EchoStar’s (5th Cir.2005); Singh, 428 F.3d improper “where the de- Davol, Inc., Stryker Corp. v. 234 F.3d in engaged diligent, good fendant faith ef- (Fed.Cir.2000). However, comply forts to with the and had in rejecting district court was correct Ech- objectively an reasonable basis to believe good arguments deciding oStar’s faith that it ar- compliance.” EchoStar whether a violation had occurred. gues employed engineers it complete 8000 hours to the software rede-
sign,
year. Similarly,
Propriety
Contempt
which took
2. The
of a
opin-
the fact that it
Proceeding
Infringement
stresses
obtained
respected
from a
noninfringement
ion
times,
In
required
recent
we have
dis-
patent
firm.
It further contends that
law
two-part
trict courts make a
inquiry
loss,
redesign, by allowing
for data
of an in-
finding
defendant
compromised performance in order
junction in patent
infringement cases.
patent, giving
avoid
of TiVo’s
Fastening Sys.,
KSM
Inc. v. H.A. Jones
it a
what it
product
previously
inferior to
(Fed.Cir.1985).
Co.,
1530-32
evidence,
light
had.
of this
First, the court must
whether a
determine
argues, the district court was incorrect in
contempt hearing
appropriate setting
is an
contempt.
it in
adjudge infringement by
in which to
disagree
redesigned product.
and conclude that
Id. at 1532. The
We
may
by comparing
have
the ac-
EchoStar misreads the law. We
do this
that,
Supreme
product
adjudged infringing
made it clear
under
cused
with the
Court
*12
violated,
if
to determine
there is “more
at issue is both enforceable and
product
and whether the
imposed
than a colorable difference” between the
sanctions
were
proper. Allegations
contempt
product
adjudged infring-
pro-
accused
and the
ceedings
improper
were
the first
in-
ing product
open
such
“substantial
stance do not state a
to contempt.
defense
respect
infringement”
issues with
exist.
question
As to the
whether an
the court finds that to be the
Id. Where
against
case,
patent infringement has been vio-
necessary
a new trial is
to determine
lated, courts
employ
should continue to
a
may
further
and the court
“more than colorable differences” standard
finding.
a
proceed
contempt
not
with
Id.
as discussed below.
Only
cases where the court is satisfied
inquiry
threshold
of the appropri-
Thus, we decline to address EchoS-
contempt proceeding
ateness of a
can a
court,
argument
tar’s
that the district
ap
inquire
redesigned
whether
standard,
plying the old KSM
improperly
product
infringe
continues to
the claims as
contempt
case,
held
proceedings in this
previously construed. Id.
although
may
we note that there
be cir
cumstances which the initiation of con
conclude that
We
KSM’s two-
tempt proceedings would constitute an
step inquiry has been unworkable and now
abuse of
by
discretion
the district court.
holding
overrule that
of KSM. KSM
holding today,
Under our
we find no abuse
special
patent infringe
crafted a
rule for
of
discretion
the district court in pro
cases,
required
ment
in that it
a threshold
ceeding to contempt. TiVo moved the dis
inquiry
propriety
initiating
on the
a
trict court to find
in contempt.
EchoStar
contempt proceeding.
recognize
We
now
Having
computer
reviewed the
source code
inquiry confuses the merits
of the modifications to the infringing soft
contempt
propriety
initiating
with the
ware,
asserted to
TiVo
the district court
Moreover,
contempt proceedings.
as a
that the modified
receiver
soft
matter,
practical
district
do not sep
courts
colorably
ware was not more than
different
arately
propriety
determine the
of a con
one,
original
from the
and thus that Ech
tempt proceeding
proceeding
before
was in violation
the infringement
oStar
result,
contempt
merits of the
itself. As a
injunction.
permanent
telescope
will
the current
we
two-fold
familiarity
parties,
Given its
with the
one,
inquiry
eliminating
sep
KSM
into
issue,
patent at
infringing prod
contempt
arate determination whether
ucts, we
do
find
abuse of discretion
proceedings
properly
initiated. That
in the district court’s decision to hold con
hold,
question, we
is left
to the broad
tempt proceedings.
discretion of the trial court to be answered
presented.
based on the facts
Additive
3. The “More than Colorable
Controls,
(The
F.3d
district
Differences” Test
court “has broad discretion to determine
(a) Discussion of the Law
injunctive
best
to enforce its
de
how
crees.”).
a
required
adjudicating
What is
district
The criteria for
a
contempt proceeding
prohibition against
court to hold a
a
violation
a
continued
injured party
infringement by
party
detailed accusation from the
whose
setting
alleged
constituting
already
adjudged
infring
forth the
facts
have
to be
contempt.
appeals
As
from find
is a matter of Federal
law.
Circuit
law,
ings
Supreme
of civil
in other areas of
has cautioned that
The
Court
only
remedy,
will
we
review whether
“is
severe
should
Co.,
Paving
a fair
to where there is
Cal.
Stone
U.S.
not be resorted
Artificial
wrongfulness
analysis
as to the
must
ground of doubt
S.Ct. 618.
*13
randomly
conduct.” Cal.
not on differences
the defendant’s
focus
between
Artificial
Molitor,
609,
113
Paving Co. v.
U.S.
product
Stone
chosen features of the
found to
(1885);
618,
618,
The primary question on con if the merely determine modification em tempt newly should whether ploys already ac or combines elements known product cused prior is so different from the in the art in a manner that would product previously found to that it infringe person ordinary have been obvious to a ground raises “a fair of doubt art skill at the time the modification wrongfulness of the defendant’s conduct.” was made.1 A nonobvious modification where, cases, suggest single 1. We do not that the law on obvious- in most a limitation that binding contempt proceedings, infringer ness is has been modified is at issue. may in finding well result of more than a applies to both and colorable useful, colorable difference. Where a dis differences.2 As with other factual deter- may expert trict court seek testimony minations, findings both are reviewed for making the determination. See Abbott clear error. Where the court finds viola- Labs., (allowing the use of sanctions, tion and awards such a sanctions testimony expert on the colorable differ award is reviewable for an abuse of discre- question). ences analysis may also tion. policy
take account of the that legitimate *14 (b) Application of the “More Than design-around always efforts should en Colorable Differences” Test couraged path spur as a further innova to This Case tion. State Indus. Inc. v. A.O. Smith 1226, (Fed.Cir.1985) Corp., 751 F.2d 1236 Applying case, test this one of the (“One of the benefits of a patent system is features of EchoStar’s original receivers ‘negative so-called incentive’ ‘design that TiVo relied upon prove infringe- competitor’s around’ a products”). But an jury ment to the was the start code detec- assertion that one has permissibly de tion argued, feature. TiVo jury and the signed patent around a should not be used accepted, that feature “pars- satisfied the to mask infringement. continued Deter ing” limitation found the software mining the requisite level of difference is a It undisputed claims. that EchoStar question of fact. replaced that feature with a statistical esti- mation feature. In finding contempt of Conversely, when a court con the infringement provision of the injunc- cludes that there are no more than color- standard, tion under our KSM al- TiVo able differences adjudged between the in leged, and the to, district court looked a fringing product and modified product, a different feature of EchoStar’s modified finding that the newly product accused devices, viz., filter, the PID meeting continues to infringe the relevant claims is parsing limitation of the software additionally claims. essential for a violation of an Although parties disputed prior their against KSM, infringement. positions on whether the PID Thus, per- filter F.2d 1528. the court is re “parsing,” forms quired unequivocally TiVo never evaluate the modified elements alleged prior to the newly contempt stage of the product against accused claim, the PID filter asserted on a met that claim limitation limitation. limitation basis, However, That was a new allegation. to ensure that each limitation contin be- ues to be met. cause the district making this court concluded that infringe evaluation, ment fairness, out of EchoStar had itself conceded that dis the PID trict by any performs court is bound filter prior type claim of parsing, the court construction performed that it had held that in the EchoStar’s modified devices con- case. The patentee bears the infringe claims, burden of tinued to the software proving violation of the by clear that EchoStar was in contempt of the in- evidence, convincing fringement burden that provision. However, AMF, 1992); Jewett, significance the innovative of the 711 F.2d light modification is viewed in (1st best Cir.1983); Haines, Stringfellow v. existing perspective art and from the of one of (2d Cir.1962); 309 F.2d Telling ordinary skill in the art. Co., Bellows-Claude Neon 77 F.2d (6th Cir.1935). See, KSM, 1524; e.g., 776 F.2d at Martin v. Indus., Inc., (5th Trinity Cir. devices,3 the two able differences between found no need
The district newly designed statistical EchoStar is entitled to a new to evaluate whether feature to determine estimation proceeding.4 from the start different significantly the district Consequently, we also vacate feature, the feature code detection awarding per TiVo court’s order “$1.25 by TiVo to alleged previously had been interest,” total- per plus month subscriber limitation, and claim parsing meet million, for EchoS- ing approximately $110 feature continued to replaced whether the infringement by EchoStar’s tar’s continued limitation of the software parsing meet the stay during the software modified today requires that holding claims. Our court’s order injunction and the district on remand be determined those issues be preclearance requiring EchoStar to seek feature is the statistical estimation cause attempts design around future had for a feature that replacement remand, the district court patent. On alleged infringing. to be previously *15 calculate and required separately is noted, court’s determination the district As at the rate of damages award TiVo “$1.25 in are in fact that the modified devices interest” per per plus subscriber month ques irrelevant fringing would be infringing soft- original for the use of the has vio injunction the tion whether stay injunction. of the during ware the the two lated if the differences between significant, at issue are indeed features than rendering the new devices more
thus
B.
original
ones.
colorably different from
Contempt
Violation
that,
infringe
in a new
possible
It is also
Disablement Provision
could con
proceeding,
ment
a fact finder
that
the PID filter
EchoStar’s
clude
arguments
consider next EchoStar’s
We
lim
“parsing”
meets the
redesigned device
injunction
is unenforceable either
that
the devices continue to
itation and
overly
vague
it
broad or it is too
because
is
claims,
that
but
infringe
asserted
actually
fair
of what it
provide
notice
contempt pro
in a
should
be decided
prohibits.
arguments unper-
find both
We
ceeding.
suasive.
vacate the district court’s
We therefore
of the
for violation
Vagueness
provision and remand to the
infringement
only
that
argues
EchoStar
district court to make that factual determi-
phrase
“disable the
reading
natural
that
have
guidance
nation under the
we
functionality
Infring
...
in ...
DVR
provided today.
If the district court de-
that
than
Products” is that EchoStar was re-
termines
there are more
color-
between
statistical estima-
feature to determine if
difference
3. EchoStar asserts
its
significant.
methodology
subject
the two is
tion
of a U.S.
is
alone,
suggests,
patent. That fact
EchoStar
prima
as
evidence of colorable
holding
serves
facie
to how a district
4. We make no
as
disagree.
proceed
differences. We
The colorable dif-
court should
new
before,
analysis
on the
proceeding.
ferences
should be based
we have stated
As
specific
principles
independent evaluation of
dif-
to utilize
court’s
district court
is able
(res judicata)
original
preclusion
and the modi-
ferences between
claim and issue
Here,
products.
compare
were settled
fied
the court must
determine what
issues
newly developed
original
fea-
and what issues would have
statistical estimation
suit
KSM,
original
We
EchoStar’s argument
shall not
any
place-
be enabled in
new
that vagueness
operate
can
as a defense to ments of the Infringing Products.” Ech-
holding
contempt
the district court’s
argues
sentence,
oStar
this second
here. Under the Federal Rules of Civil
it
because
references
placements,
new
re-
Procedure, “[e]very
granting
order
an in
quires that the term “Infringing Products”
junction ...
specific
shall be
terms
be
referring only
read as
to infringing
detail,
all,
shall describe in
functionality.
[and]
reasonable
After
EchoStar contin-
ues,
and not
reference to
complaint
or
one does not disable a function that
document,
other
the act or
sought
yet
acts
to
has
to be
or
devised
installed. As for
65(d).
be restrained.” Fed.R.Civ.P.
Rule
the court’s definition of the term “DVR
65(d)
designed
prevent uncertainty
“was
to
functionality,”
argues
EchoStar
and
part
confusion
of those faced definition
storage
“all
to and playback
orders,
injunctive
and to avoid the
from”
merely
refers
to the entire infring-
possible founding
Moreover,
of a contempt
citation on
function.
EchoStar argues
vague
a decree too
to be
provision
requires
understood.”
that a
such detailed
Lessard,
473, 476,
Schmidt v.
diagramming”
U.S.
“sentence
to arrive at the
(1974).
Thus,
S.Ct.
on its
postpone compliance
pre-
to
and
in order
so.
done
specifically
have
should
contempt.
party
clude
with EchoS-
agree
We do
...
duty
counsel have a
ascer-
and his
reading of the dis
tar that the stretched
order entered
tain the terms
allows
proposes
that it
ablement
against
party”).
the district court’s
collaterally attack
it to
reading of the disablement
EchoStar’s
proceedings.
stage
at this
contrary to the most natural
provision is
in certain circumstances
agree that
We
it would neces-
reading
provision,
as a defense to
operate
can
vagueness
injunction vague on its
sarily render the
Goose, 415
Granny
U.S.
contempt.
injunction clearly defines the
face. The
this,
In a case such as
S.Ct.
“Infringing Products” in terms of
term
however,
bypassed op
party
has
where
models,
eight
specifically
actual receiver
vague
portunities
present
its asserted
If the
listing each model number.5
term
appeal
through
or
a motion
ness claim on
“Infringing Products”
the disablement
injunction,
clarify
modify the
or
merely
provision were to refer
disregard the
party cannot
functionality,
containing infringing
being
held in
object
then
term, immediately
definition of the
court’s
injunc
when the courts conclude
provision, as a
preceding the disablement
party’s
conduct.
tion
covered
eight
directly
list of
receiver models would
McComb,
336 U.S.
69 S.Ct.
understanding
contradict EchoStar’s
petitioned
have
(“Respondents could
If
in-
term.
that were the case and the
modification, clarifica
for a
District Court
junction
facially vague
were in fact
They
tion or construction of
order....
susceptible
readings,
of two alternative
to make their own determina
undertook
clearly on
to seek
burden was
They
meant.
tion of what
the decree
clarification modification
the dis-
*17
they
peril.”);
knew
acted at their
see also
McComb,
192,
at
trict court.
336 U.S.
69
Assocs.,
Nowotny,
P.C. v.
470
Chaganti &
neither. Nor did
S.Ct. 497. EchoStar did
(8th
1215,
Cir.2006);
1224 n. 2
F.3d
Szabo
functionality in
it ever disable
DVR
714,
Corp.,
Marine
819 F.2d
718
U.S.
single
receiver that had been found
even
(7th Cir.1987) (“Not having appealed from
by
jury.
unilaterally
It
de-
infringing
injunction,
grant
of the
U.S. Marine
downloading
cided that
modified software
argue
vague
cannot
it is too
to be
sufficient to
infringing
to its
receivers was
Fashions,
”);
enforced....
Polo
injunction.
comply with the district court’s
698,
Int’l, Inc., 760 F.2d
700
Buyers
Stock
(“The
(6th Cir.1985)
at
McComb,
defendants acted
employers
In
faced with an
by failing
own risk
to seek the court’s
their
violating any pro-
from
barring
order
them
injunction
they
of the
if
had
interpretation
vision of the Fair Labor Standards Act
any good
meaning
overtime,
faith doubt as to its
or
wage,
minimum
relating to
that,
by failing
they
to have it set aside or amended
keeping argued
record
because
defective.”);
they thought
changed
computing
if
had
their methods of
Perfect
Indus.,
Co., Inc.,
worked,
Quilting
v. Acme
the modified
Fit
Inc.
hours
because
Cir.1981) (“[A]
(2d
enjoined,”
party
practices
specifically
808
were “not
646 F.2d
they
contempt pro-
maintain a
immune from
permitted
to an action is not
infringe
proceeding
It is notable that
the district court’s defini-
earlier
"Infringing
Products”
is consistent
See Verdict Form
patent.
tion of
at 2-3.
TiVo’s
by
jury
found
in the
with
(“There
roundly
ceedings.
disagreed,
being
violate,
The Court
no order to
condemning
give
a rule that “would
tre District
in holding
Court erred
the Union
impetus
program exper
to the
mendous
Thus,
in contempt.”).
we find Granny
imentation with disobedience of the law.”
inapplicable
Goose
to the factual circum-
that a
requiring
Id. The Court stated
rule
presented
stances
here.
in contempt
the conduct at issue
to have
Longshoremen,
International
“specifically enjoined”
“pre
would
record of the lower court proceedings
accountability
persistent
vent
contuma
abundantly
made it
alleged
clear that the
here,
cy.” Id.
position
EchoStar’s
es
contemnor did not understand the terms of
sence,
that it
arguing
“specifically
was not
order,
repeatedly telling the district
enjoined”
downloading
modified DVR
court, “I don’t know what
this order
in place
infringing
software
of the
soft
means,” but receiving no clarification. ware,
different,
very
is not
and we find the
70-71,
Indeed,
U.S.
junction, it sought could have district court spring ambiguity now its defense to avoid clarification.”). contempt on the of its self-serving basis by The cases cited argu- EchoStar interpretation injunction. of the court’s ment that it is vague- entitled raise the impose To hold otherwise would indeed an inapposite. ness defense this time are unnecessarily heavy burden on district Supreme Court’s in Granny decision courts draft immaculate orders —a bur- parte temporary Goose involved an ex re- den that neither the federal rules nor the order, that, straining such unlike EchoS- Supreme Court mandate —and would radi- tar, the defendants were not involved in cally constrict district courts’ inherent proceedings leading the to the issuance of power to enforce their orders. We decline Moreover, the order. Supreme Court to do so and conclude that EchoStar has order, only considered the duration of the vagueness waived its arguments. not whether terms the order were vague so as to precedent make unenforceable. The dissent cites our and sev- Goose, 445, Granny 415 argue U.S. 94 S.Ct. eral cases from our sister circuits to 888 may where it specific in the circumstances even improper,
that
a defense to
vagueness
to allow
proper
if the contem
appeal,
aof
direct
absence
orders
parte
as with ex
interpretation
contempt,
such
propose
nor can later
against non-parties
conduct on being
allows the
enforced
injunction that
Saccoccia,
see,
order,
433 F.3d
allegation
e.g.,
is based.
U.S. v.
which
(1st Cir.2005);
19,
Telephone
EchoStar’s
N.Y.
nature of
21-22
the strained
Given
Am.,
reading
provi
of the disablement
445 F.2d
v.
Workers
proposed
Co. Commc’ns
notice
ample
(2d Cir.1971);
that it had
39,
the fact
or consent decrees
sion and
injunction as
of the
terms
proposed
of the
notice to the
provide adequate
not
that did
to liti
opportunity
full and fair
see,
as a
Danbury
well
e.g., Perez v.
enjoined party,8
issue,7
not find the law
we do
(2d
gate
Cir.2003);
419, 422
Hosp., 347 F.3d
on the facts
persuasive
by
cited
the dissent
(9th
Shinn,
463,
98 F.3d
Gates
the cited cases ad
before us. Some
Cir.1996);
City of Phila.,
Harris v.
F.3d
simply could not have
that
dress conduct
(3d Cir.1995).
1342,
important
More
issue,
thus
no
the order at
violated
presented
that the facts
here
ly, we decide
See, e.g., Abbott
to this case.
application
holding
squarely
fall
within
Labs.,
cover
at 1383 Others
503 F.3d
McComb,
persuaded
and we are
to meet
truly inadequate
orders
Supreme Court
we are inconsistent with
to the one
of Rule
similar
the mandate
precedent.
See, e.g.,
Longshoremen.
in International
Regulatory
Nuclear
Cause v.
Common
2. Overbreadth
(D.C.Cir.
Comm’n,
926-27
674 F.2d
that even if the
argues
Co.,
1982);
Nat’l Fric
H.K.
Porter
reading
court’s
of the disablement
district
(7th
Corp.,
tion Prods.
one,
proper
is the
the order
provision
Cir.1977).
would still be unenforceable because
Moreover,
noninfringing activity
is un
prohibition
most of the cases
simply
that it
very
lawful. EchoStar contends
with situations
different
cited deal
noninfringing software to
presented here and address
downloaded
from the one
argues
of careful consideration
the district
6.
the district court
result
The dissent
"Infringing Products” in the
read the term
court.
provisions
disablement
two
inconsistently in
to find EchoStar
order
decrees,
generally 8. With consent
it is
contempt. We need not reach that issue be-
summarily approves
case that a district court
a clear definition of that term at
cause there is
parties
agreement
reach. Where
beginning
that contradicts
of the order
cases,
disputes
in such
the court is
later arise
proposed reading
EchoStar's
of the term.
time,
interpret
required,
first
and determine the intent
letter of the contract
Injunction
Proposed
7.
Permanent
TiVo's
Thus,
cases, contempt
parties.
in such
May
JA 7820-24.
submitted on
party
where the
had no
can be disfavored
*19
wording
the merits and the
of the in-
Both
alleged
con
notice that the decree barred
fully
junction were
briefed and were
sub-
determining
alleged
duct.
In
notice to the
28,
hearing
ject of a
held on June
contemnor, courts are limited to the four cor
Thereafter,
a
the district
issued
thor-
&
the decree. United States v. Armour
ners of
ough
addressing
eBay factors and
order
1752,
Co.,
673, 682, 91 S.Ct.
402 U.S.
parties’ arguments
related thereto. TiVo
(1971) (”[T]he scope
a consent
L.Ed.2d 256
Corp., 446
Inc. v. EchoStar Commc'ns
cor
short,
decree must be discerned within its four
(E.D.Tex.2006).
F.Supp.2d 664
In
ners,
by
might
and not
reference to what
intimately
pro-
parties
involved in the
parties
satisfy
purposes
of one of the
ceedings leading up
injunction,
well
as
it.”).
very
here is
different.
wording,
injunction
The situation
and the
was the
as its
that it
placed
receivers
had
with consum-
Supreme
precedent
Court
is clear
argues
ers. EchoStar
that
the district
on the issue. The
appeal
time to
scope
injunction
prohibit
court’s
cannot
such
injunction
of an
is
down,
when it is handed
noninfringing design-arounds.
Because not when
party
a
is later found to
inbe
injunction
such an
unlawfully
would be
Zeitz,
contempt. Maggio
56,
333 U.S.
overbroad, EchoStar
contends
69,
(1948).
68 S.Ct.
We
Conclusion
of the district
overbreadth
arguments on
sum,
holding of
In
we vacate the court’s
by its
injunction have been waived
court’s
infringement provision
contempt of the
Had EchoS-
them earlier.
failure to raise
make a find-
remand for the court to
and
on the
an
brought
appeal
tar
difference be-
concerning any colorable
ing
issued,
arguing
time that
adjudicated infring-
previously
tween the
overbroad,
could have
we
injunction was
newly
and
accused devices.
ing devices
The time to do
legitimacy.9
addressed its
damages awarded
part
We vacate
just
impor-
“It is
long passed.
so has
infringement. We affirm the
for continued
place
be a
to end as
tant that there should
finding
contempt
court’s
of
district
begin litiga-
place
be a
that there should
injunc-
the court’s
provision
disablement
(cita-
Travelers,
was made GAJARSA, LINN, join, and PROST separate pro- of either of the two violation dissenting-in-part. injunction, dealing that with visions of the A(l)-(3)(a) join I of the ma- While Parts dealing with disablement and the other A(3)(b) decision, I jority parts dissent from TiVo, F.Supp.2d infringement.10 See B. In I dissent from the particular, and (stating that the alterna- “[i]n majority’s uphold finding decision to tive, found that EchoStar had the Court provision. of the disablement directives of comply plain failed to with view, my provision the disablement does order,” awarding the “additional [its] not bar the installation of modified soft- com- promote sanction to EchoStar’s $1.00 non-infring- orders.”). ware renders devices Although we pliance with [its] and, if un- ing, provision even the in- finding vacate the clear, injunction cannot be the an unclear con- fringement provision, majority’s hold- contempt. basis for tempt of the disablement has clarity provides that lack of no defense no been affirmed. We therefore have ba- law re- modifying the amount of the sanc- is inconsistent established sis for flected in numerous decisions of the Su- tion. note, that, however, agree sugges although We with the dissent's 9. We we have do not judicial provision” is limit strongly discouraged of non- tion that the "disablement restraint activities, only placed infringing Hopkins ed that had been Johns Univ. CellPro, Inc., (Fed.Cir. Dissent at 892-93. On the 152 F.3d with end users. 1998), outright contrary, parties and the we the district court have never barred it directives of repeatedly that district have thus far referred to both instead have stated i.e., provision, relating to position units courts are in the best to fashion remedy placed prevent in with end users as well as on new tailored to Techs., Flakt, Inc., together fringement. Joy placements, as the "disablement See 1993). (Fed.Cir. imposed provision,” Because it is and the district case, of the entire "dis we make no en sanctions for the violation not before us in this provision.” holding ablement banc on that issue. *21 court, Court, our own preme cisely our sister drawn notice of injunction what the actually prohibits.” circuits. majority The has dis- regarded principles both predictably with majority’s I also dissent the deci- unhappy consequences for the innovation to to to sion remand the district court community. determine whether EchoStar violated the my view, infringement provision. A provision plainly Finally, was not violated. A crucial question any contempt pro-
I
majority’s
dissent from the
affirmance of
ceeding is
award,
injunction
whether the
million sanctions
which was
bars
$90
“interpretation
accused conduct. The
part
of
based
on the
injunction
the terms of an
a question
is
infringement provision.
If the con-
law we review
novo.”
de
Abbott
v.
tempt finding is set aside with
to
Labs.
respect
TorPharm, Inc.,
(Fed.
infringement provision,
the sanctions
Cir.2007).
provision
The
award must also be set
disablement
aside.
provided:
here
I
hereby
Defendants are
FURTHER
to,
(30)
thirty
ORDERED
within
days
today’s majority
Before
up-
decision—
order,
the issuance of this
disable
holding contempt of the
provi-
disablement
(i.e.,
functionality
DVR
disable all stor-
sion based on an
de-
apparently successful
to
age
playback
a
from hard disk
sign-around
principles seemed well
—two
data)
drive of television
... of
In-
established. The first of these was that
fringing Products that
placed
have been
infringers
encouraged
accused
de-
to
end user or subscriber.
sign
patent
around
claims to achieve non-
added).
(emphasis
J.A. 162
Because other
infringing products and methods. As this
provisions
pertinent,
are also
the entire
has recognized, “designing
new and
injunction is included
Appendix
as an
possibly better or cheaper
functional
opinion.
this
equivalents
competitor’s
a
product]
[of
is
the stuff of which competition is made.”
TiVo and
essentially
the district court
State Indus. Inc. v. A.O.
Corp.,
Smith
interpret
provision
this
barring
as
design-
(Fed.Cir.1985).1
F.2d
(i.e.,
1235-36
arounds
the substitution of non-in-
second was that contempt sanctions could fringing software for software
found
imposed
for the
an infringe
violation of
in the devices
installed
custom-
homes).
provide
that failed to
sufficient
ers’
In its
briefing
panel,
clarity. As
Supreme
Court stated
TiVo characterized the
pro-
Foods,
Teamsters,
Granny Goose
Inc. v.
hibiting the
“continued
of DVR
423, 444,
415 U.S.
through
S.Ct.
functions
previous-
exact units
(1974),
L.Ed.2d 435
principle
ly
infringe
“basic
found to
they
or not
—whether
into
built
Rule of
[Federal
Procedure]
Civil
purportedly
have
been modified by the
against
65 is that
injunc-
those
whom an
downloading of new software.” Br. of Pl.-
tion is issued should
fair
TiVo,
21, TiVo,
receive
and pre- Appellee
Inc. at
Indus.,
1. See also State
By using the same both as well. “In- the terms provi- and enablement fringing the disablement Products” and “DVR functionali- sions, injunction ty” it is clear that extends must be interpreted consistently only infringing throughout injunction. It would to software. Under such a construction, to of con- contrary principles provision established the disablement give language necessarily permit struction identical dif- would the replacement meaning provision than infringing ferent one software new non- other. Nor can use of the term infringing “DVR software. functionality,” with the notation “disable Third, injunction does not explicitly storage all to and from a hard playback design-arounds, address the issue of data,” distinguish disk drive television TiVo’s proposed interpretation clearly is provision pro-
the disablement from other contrary policy established in favor in which the term “Infringing visions of design-arounds discussed above. There provi- Products” is used. enablement whether, is question indeed a serious as to sion also uses the term “DVR functionali- in light policy, of this strong the district ty” it in the manner and describes same court authority would even have (“i.e., the disablement disable all injunction barring design-arounds. issue an storage playback to and from a hard disk This has repeatedly instructed that data”). drive of television J.A. 162. injunctions in patent context must be construction, statutory
In the context of
designed
limited to restraints
to prevent
language
infringement.
identical
assumed
have
further
is
See Riles v. Shell
See,
Co.,
meaning.
e.g.,
Exploration
1302,
same
v. Mar
Clark
Prod.
298 F.3d
tinez,
378,
716,
371,
(Fed.Cir.2002);
Hopkins
543 U.S.
125
160 1311-12
S.Ct.
Johns
CellPro, Inc.,
(2005);
1342,
Dept.
734
Revenue
Univ.
152
L.Ed.2d
F.3d
Indus., Inc.,
332,
(Fed.Cir.1998);
Techs.,
Joy
Or. v. ACF
510
341- 1366-67
U.S.
(1994). Flakt,
(Fed.Cir.
Inc.,
114
127
165
6
S.Ct.
L.Ed.2d
F.3d
772-73
Clark,
1993);
Medtronic, Inc.,
Lilly
held
Supreme Court
that
Eli
& Co. v.
(Fed.Cir.1990).
provi
identical
in two
language
separate
Specifi
F.2d
sions of
statute must be
interpreted
cally,
recognized
this court
“an
has
only
the same
even though
proper
manner
the two
is
it is
extent
provisions
prevent
had
‘to
se
purposes.
right
different
violation
”
378-380,
Lilly,
by patent.’
U.S. at
In order
Supreme
to understand the
did nothing
McComb
McComb,
to discard the “fair
holding in
Court’s
is essential
ground of doubt”
set forth
standard
more
to understand
facts of
the case. The
*25
sixty years
than
before in
original
enjoined
decree
violations
the
Arti-
California
189,
618,
Paving.
Fair Labor
Act.
Stone
113
Standards
Id. at
See
U.S. at
ficial
explicitly
497.
It
899
McComb,
suggested
Apart
that
the failure to
held
take
from its reliance on
the
appeal or
an
seek modification before the majority attempts
deal
to
with this estab-
contempt
proceeding constituted
waiver
authority
lished
in part
discussing cases
requirement
injunction
of the
that
the
validity
dealing with
overly
the
of an
clearly prohibit
the accused conduct. In
injunction,
broad
which are distinct from
Abbott,
deed,
in our
own decision
such
cases involving
requirement
the
that
the
taken,
appeal
injunc
had been
and the
injunction clearly prohibit the accused con-
affirmed, yet
had
tion
we reversed
Birming-
Walker v.
duct. For
example,
contempt
ground
the
the
ham,
317,
307,
388
1824,
U.S.
18
S.Ct.
injunction
clearly prohibit
the
did not
the
(1967),
L.Ed.2d 1210
the Supreme Court
conduct on which
allegation
the
rejected a validity challenge, but affirmed
See Thus,
founded.
at
was
1377.
the contempt finding because
injunc-
“[t]he
party
burden lies on
seeking
the
the
to
tion in all
clearly prohibited
events
[the
the
enforce
order to “establish that
...
the
Id. accused
conduct].”
87 S.Ct.
comply
order the contemnor failed to
1824.8 Here
dealing
we are
with a chal-
..," King
unambiguous
is clear and
lenge to
application
the
injunction,
the
Ltd.,
(2d
Vision
Allied
F.3d
not a challenge
validity.
to its
Where the
Cir.1995),7 and
equity
“[t]he failure
majority does
discuss
cases recogniz-
to
out
spell
court
in a decree’s text
clarity
lack of
is a
to
defense
obligations resting
specific
upon the de
contempt,
it is
to
litigant
meaningfully
feated
is fatal
to
unable
dis-
Porter,
H.K.
proceeding,”
tinguish
Ironically, fact than the com majority’s party’s error must based on a failure to strates the on which the very circuit cases that specific underlying the ply with a clear and the essential majority recognize relies (emphasis quo and order.” added internal improper contempt is where principle that omitted). In the support, tation marks clearly prohibit the the does not decision in Inter prior court cited its own even The cases charac- accused conduct. Electrical national Brotherhood Work of “well settled.” See principle terize this 409, 293 Corp., ers v. Electrical F.3d Hope Indus., Quilting Acme Fit Perfect (8th Cir.2002), also specifically 418 which (2d Cir.1981). Co., Inc., 800, F.2d 808 646 must be recognized “contempt orders Fit, argued Acme example, For Perfect party’s comply based on a failure it had contempt improper was because order,” specific underlying and clear and injunc- the knowledge no of terms contempt finding the because affirmed tion, copies the having received the clarity no lack of within ... the could “find by injunction mailed the court. Id. The underlying sought orders to be enforced.” rejected argument, Acme’s Second Circuit Chaganti, finding contempt In the was (in by ma- noting language quoted the the only affirmed after the court found that 21) litigant “a jority page at has “the had district court’s settlement order of an duty progress action follow specificity required clarity and to be himself of an inform terms by contempt sanctions.” Cha enforced against Id. at 805. [entered him].” order at The ganti, 470 F.3d 1224.10 Sixth Cir time, explicitly But at same the court Fashions, cuit, Buy in Polo Inc. v. Stock well recognized that is indeed settled “[i]t (6th Int’l, ers Inc. 760 700 F.2d Cir. contempt that a cannot be held person 1985) (cited 883), by at majority page ... terms the order order if injunc recognized validity that “the are Id. at ambiguous.” unclear 808 ... contempt [pro tion is not an issue in added). (emphasis support, In the court that an ceedings],” but also Longshoremen’s, cited International 389 “sufficiently specific must be clear 75-76, at and its own U.S. S.Ct. provide contempt.” the basis for ... Ward, F.2d prior decision Powell v. af (2d finding only was affirmed Cir.1981), similarly which rec- preliminary ognized [contempt] power may that “the ter the court found that “the if properly only be exercised the order is sufficiently specif clear and unambiguous.” Applying clear and this King ic.” v. Shrimp Id. Co. Gulf standard, (5th Cir.1969) the court in Fit affirmed Wirtz, Perfect only because it found (cited 884), page by majority vague.” that the order was not “too clarity re explicitly recognized court F.2d at 809-10. quirement and the contempt affirmed find determining re ing only after
Similarly, Chaganti the court in & As socs., quirement 1215, 1223 Specifically, was met. Nowotny, P.C. F.3d (8th Cir.2006) (cited majority stated: *30 opin- language upon by majority the is the text the The relied inconsistent with both of
10. footnote, appears confusing Fit, in in a which the explicitly ion and both of which Perfect erroneously Fit cites for the recognize contempt improper that is where Perfect proposition alleged "had contemnor clearly reach the order does not the accused obligation the seek clarification of conduct. at 2. order.” Id. 1224 n. This footnote court’s injunction con- II also find that the We requirements the formed majority The vacates the district court’s 65(d). 65(d) requires Rule F.R.Civ.P. finding of for contempt violation of the specificity so injunction that an have infringement provision and the remands to it constrained to follow will that those district court to determine colorable differ- guidance. want The not my view, infringement. ences and In re- question lacking clarity. not in Its is wholly mand unnecessary is it is because oppressive interdiction of child labor is clear that there are colorable differences vague, not and its command that Gulf upon between the features relied to estab- King keep preserve and is clear- records infringement lish and the modified fea- ly understandable. newly tures of products. the accused majority correctly describes the col- omitted). (internal It Id. at citations requirement orable differences as involv- only the suffi- was after comparison specific between the fea- ciently possi- clear that court noted the upon tures relied infringement to establish injunction. of an bility appeal Id. and newly the modified features urges permit- Finally, majority that product limitation-by-limita- accused on clarity to be addressed in ting tion party seeking basis. The to enforce impose an un- proceedings “would indeed bears the burden of demon- necessarily heavy on district burden courts strating products what and features Maj. Op. at to draft immaculate orders.” products infringe. those were found I district suggest 887. do not Here, is undisputed the feature orders, perfect that it court must draft but satisfy “parsing” found to limitation— required to draft orders that are suffi- the start-code-detection feature —was re- ciently provide clear to notice of “what the moved from products. EehoStar’s modified it meant require court intends to what Further, argue TiVo does not Longshoremen’s, to forbid.” Int’l 889 U.S. merely start-code detection feature was 76, 88 a requirement, S.Ct. Such with a replaced solution that was known 65(d), is in Rule in no which itself reflected prior art. The statistical-estimation fea- way already placed alters burden ture, replaced the which start-code-detec- only Not is this level of district courts. feature, present tion in original was clarity required injunctions generally, software and was not earlier viewed is especially important but it the context being capable performing TiVo as injunctions patent where fact, required In function. TiVo had earli- injunctions remain the need to ensure er characterized the start-code detection against must be balanced enforceable feature, removed, as “required which was innova- design-around need ineentivize Therefore, for a viable DVR.” J.A. 1556. tion. it is clear that the statistical-estimation substantially feature more than different sum, obligated to show that TiVo from the start-code-detection feature. injunction clearly the sub- prohibited noninfringing stitution of new software. It Because the sole feature accused of sat- remotely satisfy isfying parsing this limitation was removed did not burden. Un- circumstances, product is im- replaced der the modified such substantially a fair with a feature that is both proper because there is least ground wrongfulness as to the of different and a solution not known in doubt art, necessarily prior the two are EchoStar’s conduct. *31 902 specifically The referenced on the basis district colorably different than
more it calculations when alone. a re- and relied on TiVo’s As limitation parsing the of TiVo, Inc. v. Dish in- awarded sanctions. provision of the sult, infringement the 661, 666 Corp., F.Supp.2d Network and there is no junction was not violated (E.D.Tex.2009) (relying on the calculations for a remand. need (“Dkt. No. expert TiVo’s submitted Ill 947”), in its included the models which VIP majority calculations, the estima- support with to the court’s My disagreement final the million of award of affirmance of tion the total at a rate $90 $2.25 lies in the subscriber). the fact the the despite per Because VIP award DVR sanctions in the finding specifically of models not listed is based on were award majority injunction, plausible argument there is no majority that the reverses. respect the district court’s affirms that EchoStar’s activities with nonetheless entirety because these constituted a violation of the sanctions award in models Thus, provision. portion “award was made on the concludes the disablement i.e., for of the grounds, respect violation of the award with alternative sanctions provisions solely of the on EchoS- separate either of the two VIP models was based infringement at 890. The con- of injunction.” Maj. Op. tar’s violation alleged judgment imposed provision. and the sanctions tempt however, court, rest on two by the district Additionally, disablement findings contempt, of separate and distinct applied only products to those “that [had] alone standing of which is suffi- neither placed the end or subscrib- with user award. cient to sustain the sanctions J.A. er” the time issued. sanctions, motion calcu In its for TiVo But the sanctions award based damages on both the models lated based part acquired in on DVR subscribers after listed in EchoStar’s effective. the date the became (a group models” “VIP 666; TiVo, F.Supp.2d See TiVo’s infringe nor listed adjudged were at Ex. 4. Those Sanctions Calculations permanent injunction). See Decl. of obviously later were sanctions based Ugone, R. Support Keith Ph.D. alleged infringement violation Contempt for TiVo’s Motion for Sanctions injunction, provision of the not the disable- 4, TiVo, and Ex. Net at 3-5 Dish However, majority provision. ment (E.D.Tex. Corp., F.Supp.2d work respect reversed the 2009), ECF [hereinafter No. 947 TiVo’s thus, provision; it is infringement TiVo apparently Sanctions Calculations]. affirm inappropriate to sanctions viola- respect activities with viewed EchoStar’s provision.11 tion of that a violation VIP models as infringement provision because the Because it is clear that the sanctions VIP large colorably part more than dif award was based on EchoS- models “no tar’s violation of infringe. alleged ferent” from the models found suggests majority confusingly injunction by improperly en- 11. The violated the imposed district court sanctions for violation place- abling functionality new the DVR portion injunction prohibiting gener- Infringing Products. See ments functionality the enablement of DVR 853; ally Contempt Opinion, F.Supp.2d placements Infringing new Products. TiVo, Cotp., v. Dish Inc. Network Maj. Op. at 10. Nowhere does the 890 n. F.Supp.2d 661. court, however, suggest that district *32 provision, the award cannot sustained alleged violation the dis-
based on the said prejudgment interest in the total sum Even under the ablement alone. $5,367,544.001, together supple with view, is essential majority’s a remand in damages mental amount of sanctions award. recalculate the $10,317,108.00, together post-judg with
ment interest on entire sum calculated APPENDIX pursuant § to 28 U.S.C. The judgment amounts awarded this shall IN THE STATES DISTRICT UNITED judgment bear from the interest date of FOR THE EASTERN COURT DIS- and the lawful federal rate. OF MARSHALL DI- TRICT TEXAS IT ORDERED IS FURTHER THAT VISION Defendant, officers, agents, Each ser- INC., Plaintiff, TIVO vants, employees attorneys, and and those persons in participation active concert or with them who receive actual notice here- ECHOSTAR COMMUNICATIONS of, enjoined, are CORP., al., hereby restrained and et. Defendants. pursuant § to 35 U.S.C. 283 and Fed. 2:04-CV-l-DF 65(d), R.CivJP. from making, using, offer- selling States, to sell or in the United FINAL JUDGEMENT Products, the Infringing alone or in either AND PERMANENT any combination product with other and all INJUNCTION products only colorably other that are dif- Pursuant to Rule 58 of the Federal ferent therefrom the context the In- Rules of Procedure and accordance Civil Claims, fringed individually whether or in jury April with the verdict delivered combination other or with as a contemporane- the Court’s and with part product, of another and from other- orders, ously thereby filed the Court en- or infringing inducing wise others to in- against judgment ters for Plaintiff Defen- fringe Infringed Claims of the '389 Patent dants for of U.S. No. patent. (“'389 6,233,389 1, 5, 21, patent”), claims hereby Defendants are FURTHER OR- (“the 32, 36, Infringed 31 and 61 to, days DERED thirty(30) within Claims”) following Defendants’ DVR order, issuance of this disable DVR (collectively Infringing receivers “the (i.e., storage functionality disable all to and Products”): DP-501; DP-508; DP-510; playback from hard disk drive of televi- DP-625; DP-522; DP-721; DP-921; and data) 192,708 sion in all but units of the the DP-942. Infringing placed Products that have been IT THEREFORE ORDERED IS with an end user subscriber. DVR i.e., THAT shall and Plaintiff have recover functionality, storage disable all to and Defendants, severally, jointly playback from the to- from hard disk drive of televi- data) $73,991,964.00, together tal sion sum of shall be enabled new prejudgment prime, placements Infringing interest at the rate of Products. supplemental judgment prejudgment supplemental damages, 1. The interest interest damages prejudgment award herein cover the award do not time Court will additional period August supplemental damages from to the date interest and after re- entry ceipt of this Order. with the con- of additional information Plaintiffs Consistent damages temporaneously addressing pre- expert. filed order *33 provide writ- shall forthwith Defendants PAPIERFABRIK KOEHLER AUGUST injunc- and the judgment, this ten notice of America, Inc., and Koehler AG officers, herein, di- to: their ordered tion Plaintiffs-Appellants, servants, representatives, rectors, agents, and af- subsidiaries and attorneys, employees, filiates, active concert persons and those Corporation, International Mitsubishi them, including any participation or Flensburg Paper Hitec Mitsubishi distributors, manufacturers, retail- all and Paper GMBH, and Mitsubishi Hitec ers, who have been providers and service GMBH, Plaintiffs, Bielefeld making, using, selling, of- involved any importing Infring- of fering for sale or Defendant, STATES, UNITED Products; persons or to all other and way with the mak- any involved in entities and im- offering for sale or using, selling, ing, Commission, Trade International any Infringing Products. De- porting Defendant-Appellee, are shall take whatever means fendants necessary appropriate to ensure and complied properly this order is with. Papers Inc., Appleton Defendant- expi- run until This shall Appellee. patent.
ration '389 No. 2010-1147. jurisdictions De- This Court retains over all aspects and fendants enforce Appeals, Court United States Judgment Injunction. Permanent this and Federal Circuit. jurisdiction retains The Court further May 2011. supplemental Plaintiff for award amounts costs, interest, damages, attorneys fees may
and such other or further relief as
just proper. and specifically granted
All relief not herein All motions pending previ-
in denied. This a Final ously ruled are denied. is Bernstein, Attorney, Mark A. Office of Judgment appealable. Counsel, Inter- General United States Commission, day Washing- August, national Trade this 17th SIGNED ton, DC, panel for petition filed combined David Folsom /s/ rehearing en banc for defen- rehearing FOLSOM DAVID Trade Com- dant-appellee International DISTRICT JUDGE UNITED STATES petition him on mission. With Counsel, and Lyons,
James M. General Coun- Reynolds, Neal J. Assistant General for Litigation. sel Ferrin, Biddle & Richard P. Drinker DC, LLP, filed Washington, Reath response petition plaintiffs-ap-