NCube (ARRIS) v. Seachange
July 31, 2009, ARRIS Group, Inc. (“ARRIS”) 1
filed a motion to hold SeaChange
International Inc. (“SeaChange”) in contempt of
a permanent injunction order .
The United States District Court for the District of
Delaware found that ARRIS failed to meet
its burden of showing contempt by clear
and convincing evidence and declined
to hold SeaChange in contempt. ARRIS appeals.
Because the district court did not abuse its discretion in
denying the contempt motion, we affirm
On a contempt motion, the party seeking to enforce
the injunction bears the burden of proving by clear and
convincing evidence “both that the newly accused product
is not more than colorably different from the product
found to infringe and that the newly accused product
TiVo Inc. v. EchoStar Corp. , 646 F.3d 869, 882 -
83 (Fed. Cir. 2011) (en banc).
ARRIS bore the burden of proving both that the modified ITV system is not more than colorably different from the ITV system found to infringe and that the modified ITV system actually infringes. TiVo, 646 F.3d at 882-83. The district court concluded that ARRIS proved neither.
Neither the Connection Table, nor the ClientID were removed from the infringing device. Rather, the ClientID was moved out of the Connection Table and placed elsewhere in the modi- fied system. The district court found this modification significant because the ClientID still performs the same relevant functions in both systems, but does so in a way
that all parties admit puts the ClientID outside the claim, i.e., not through updating in the Connection Table. That is a significant change to the system. The district court properly found that ARRIS “failed to prove, by clear and convincing evidence, that there is no colorable difference between the ClientID functionality in the infringing ITV system and the ClientID functionality in the modified ITV system.” nCube, 2012 WL 4863049, at *5.
As to the law
As the separation of the colorable-differences and infringement components in TiVo indicates, the colorable-differences standard focuses on how the patentee in fact proved infringement, not what the claims require. In this way, the TiVo standard preserves values of notice and preservation of trial rights by keeping contempt suitably limited. Here, as already described, ARRIS’s infringement proof focused specifically on the ClientID, not the Mac address or the SessionID, and—whether unnecessarily or not—stressed how the accused system actually used the ClientID, as to which the SessionID is colorably different.