Appellants (collectively, “EchoStar”) appeal from the district court’s decision
finding them in contempt of the court’s permanent injunction order. TiVo Inc. v. Dish
Network Corp., 640 F. Supp. 2d 853 (E.D. Tex. 2009). Because we find that the district
court did not abuse its discretion in imposing sanctions against EchoStar, we affirm the
finding of contempt.
The law firms on the losing side included Orrick, Herrington & Sutcliffe LLP,
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and
Morrison & Foerster LLP.
Of the background law:
We have held that a district court must make a two-part inquiry in finding a
defendant in contempt of an injunction in a patent infringement case. See KSM
Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1530 (Fed. Cir. 1985).
The court concluded that in essence the buffer modification was nothing
more than a change from eleven buffers to ten.
Finally, we reject EchoStar’s argument that evidence of its good faith suffices to
protect it from any finding of contempt. EchoStar argues that it paid 15 engineers to
spend 8000 hours on the redesign, which took a year. Similarly, it stresses the fact that
it obtained an opinion of noninfringement from a respected patent law firm. It further
contends that the redesign compromised performance in order to avoid infringement of
TiVo’s patent, giving it a product inferior to what it previously had. In light of this
evidence, EchoStar argues, the district court was prohibited from utilizing a contempt
hearing in this case.
We may reverse a finding of infringement only if we are left
with a definite and firm conviction that a mistake has been committed by the trial court.
Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1564 (Fed. Cir. 1991) (citations
We have no such conviction here.
The topic of judicial estoppel arises:
EchoStar argues that both parties have switched positions on this issue and
therefore that judicial estoppel prevents TiVo, the prevailing party, from taking a position
that is clearly inconsistent with its earlier position. We, like the district court, do not see
TiVo’s position on the PID filter component as being “clearly inconsistent” with the one
that it took at trial. See New Hampshire v. Maine, 532 U.S. 742, 750 (2001) (holding
that in order to invoke judicial estoppel, “a party’s later position must be ‘clearly
inconsistent’ with its earlier position”).
And one has an allusion to Clinton-esque word parsing:
“All” plainly means all.
“It is just as important that there should be a place to end as
that there should be a place to begin litigation.” Travelers, 129 S. Ct. at 2206
Of contempt matters:
See Abbott, 503 F.3d at 1383; see also KSM, 776 F.2d at 1524 (“A
civil contempt proceeding for violation of an injunction issued after patent litigation, while
primarily for the benefit of the patent owner, nevertheless, involves also the concept of
an affront to the court for failure to obey its order.”).
Judge Rader's dissent begins:
“Contempt . . . is not a sword for wounding a former infringer who has made a
good-faith effort to modify a previously adjudged or admitted infringing device to remain
in the marketplace. Rather, the modifying party generally deserves the opportunity to
litigate the infringement question at a new trial, ‘particularly if expert and other testimony
subject to cross-examination would be helpful or necessary.’” Arbek Mfg. Inc., v.
Moazzam, 55 F.3d 1567, 1570 (Fed. Cir. 1995) (quoting KSM Fastening Sys., Inc. v.
H.A. Jones Co., 776 F.2d 1522, 1531 (Fed. Cir. 1985)). Citing a broad injunctive
provision and a substantially-altered accused design, this court today punishes a good
faith design-around effort.
The CAFC in reviewing a TTAB case noted:
Lastly, Mr. Campbell expresses disagreement with the Board’s reliance on case
law apparently not cited in Bassani’s motion for summary judgment. Specifically, Mr.
Campbell contends that such reliance violated his due process rights. The Board,
however, is required to follow controlling precedent even if that precedent is not cited by
opposing counsel. Accordingly, we must reject Mr. Campbell’s argument.
In the case, the attempt to trademark X-Pipe evoked the earlier (and more significant) business over
trademarking cloud computing. Of the latter concept, see also
Ballmer Talks Clouds
This isn't exhaust pipes.