Sequential Injunctions in Patent Litigation: The Gratuitous Novelty of TiVo v. EchoStar
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Description
On April 20, 2011, the Federal Circuit issued its long-awaited decision in TiVo v. EchoStar. The case revolved around the scope of injunctive relief in patent cases—but with a twist. In the conventional patent case of this sort, the usual question is whether to issue an injunction once it is found that the defendant has marketed or used an infringing device. In TiVo, the discussion swirled around a somewhat neglected variation on the main theme, which asks the question of what should be done with sequential injunctions. More precisely, the case asks how the system of injunctive relief should be administered the second time around, when the defendant, who is bound by the initial injunction, seeks to design around the original patent. Early in the case, the plaintiff TiVo obtained both an injunction and monetary damages against EchoStar for its breach of TiVo's patents. EchoStar then introduced into the market a workaround product, claiming it steered free of the TiVo patents; TiVo disagreed. The main issue in the TiVo case was whether the district court judge was correct in deciding to use a short-form trial, on the ground that there was a high probability that EchoStar's proposed workaround resulted in the creation of a second infringing device. In my view, the answer to that question should have been in the affirmative, so long as two questions were, as the district court urged, resolved for the plaintiff. The first of these was whether a comparison between “the adjudged product”—the defendant's original device—and the modified product—the product made in order to evade the injunction—were “more than colorably different,” at which point a full trial was required. Under KSM, answering this question lay within the sound discretion of the trial court. If the differences on the threshold question did not rise to that level, a contempt proceeding to enforce the injunction against the modified product was allowed if it could be shown that “the modified device has not been changed from the adjudged device in a way which affects an element of a claim.” Once that question was resolved, the plaintiff then had the burden to show by clear and convincing evidence that the second product still infringes the original patent, holding constant the construction of the original claim.
Source Publication
Intellectual Property and the Common Law
Source Editors/Authors
Shyamkrishna Balganesh
Publication Date
2013
Recommended Citation
Epstein, Richard A., "Sequential Injunctions in Patent Litigation: The Gratuitous Novelty of TiVo v. EchoStar" (2013). Faculty Chapters. 375.
https://gretchen.law.nyu.edu/fac-chapt/375
