Federal Circuit Giveth, and Taketh Away
In business, we often forget, the effect of an adverse (or favorable) court ruling can be drastic, and immediate. Today’s shining example of this effect is the ruling of the Court of Appeals for the Federal Circuit that it will reconsider, en banc, its March 4, 2010 ruling (in favor of TiVo) in Tivo Inc. v. Echostar Corp, et al. In that earlier decision, the Federal Circuit held (roughly) that Echostar’s attempts to design around TiVo’s DVR patents (after an earlier loss at trial) were properly found invalid by the district court, and upheld a more-than-$90 million award against Echostar. The decision and award have now been vacated, and the case will be decided anew.
TiVo’s stock dropped approximately 35% in the minutes after the Federal Circuit’s decision was announced today, wiping out grand amounts of book-money for TiVo’s shareholders. Before, however, anyone cries great tears for TiVo and its owners, please recall that this effect essentially restores the status quo. After the Federal Circuit’s March 4 ruling, TiVo’s stock price leapt more than 60%; today’s loss brings TiVo’s shares back to within a dollar of their pre-March 4th selling price.
For you legal nerds, the Federal Circuit’s order establishes that rehearing en banc will address the following issues:
- 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?
- 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).
- 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 reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
- 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?
Between this and the rehearing en banc order in Therasense, Inc. v. Becton, Dickinson and Co. there is a lot of amicus briefing fun to be had.