Heralding a busy en banc season for Judge Rader’s first year as chief judge, the U.S. Court of Appeals for the Federal Circuit has issued its second en banc order in less than a month, this time vacating its panel decision in TiVo v. EchoStar (see IP Update, Vol. 13, No. 3), and taking up Judge Rader’s dissent on the issue of when a contempt holding, as applied to a design-around by an enjoined party, is appropriate. TiVo Inc. v. EchoStar Communications Corp., Case No. 09-1374 (en banc order) (per curiam).

In its order, the Court asked for additional briefing on the following four 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 (U.S. Supr. Ct., 1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. ,1985).
  • If a contempt proceeding is proper, what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and 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?
  • Is it proper for a district court to hold an enjoined party in contempt if there is a substantial question as to whether the injunction is ambiguous in scope?

The Court invited briefs of amici curiae.