CAFC Grants En Banc Rehearing of Tivo, Dish Patent Dispute

The United States Court of Appeals for the Federal Circuit yesterday announced that they would take up the matter of Tivo, Inc. v. EchoStar Corp. en banc. The earlier panel decision, which was issued on March 4, 2010, is now vacated and the appeal is reinstated.  For more information about the original panel decision see TiVo Stock Surges Over 50% on Patent Decision in EchoStar Case.  While en banc rehearings are rare, it seems that the Federal Circuit is showing increased willingness to take high profile cases en banc.  Recently the Federal Circuit agreed to hear Hyatt v. Doll en banc, which relates to whether new evidence can be submitted in an appeal of a decision of the Board of Patent Appeals and Interferences to the United States Federal District Court for the District of Columbia.   See CAFC Grants En Banc Review of BPAI to District Court Appeal. Just weeks ago the Federal Circuit also agreed to hear important matters of inequitable conduct en banc, taking up Therasence, Inc. v. Becton Dickinson and Co. See Federal Circuit to Consider Inequitable Conduct En Banc.  Perhaps this may show an increased willingness to settle certain fundamental areas of law, which would be a welcome occurrence after what appears to be in-fighting among CAFC Judges on a variety of important issues.

The en banc appeal will be heard on the basis of the original filed briefs, additional briefing and oral argument, with the oral argument date and time to be determined. The Defendant-Appellant’s (“EchoStar Corporation et al.”) new briefs are due within 42 days from yesterday, and Plaintiff-Appellee’s (“Tivo”) response briefs are due 42 days after service of the EchoStar’s new briefs being served. The EchoStar’s reply brief, if any is to be filed, must be filed within 28 days after service of the Tivo’s response brief.  Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.

After the original panel decision EchoStar filed a request for reconsideration and a petition for rehearing en banc. The panel requested a response from Plaintiff-Appellee TiVo Inc.  The court granted Defendants-Appellants leave to file a reply in support of the petition.  The court also granted leave to Five Law Professors to file a brief as amici curiae in support of the petition. The petition for reconsideration was considered by the panel that heard the appeal, and thereafter the petition for rehearing en banc, the response to the petition, the reply, and the brief of the amici curiae were referred to the circuit judges who are authorized to request a poll on whether to rehear the appeal en banc. A poll was requested, taken, and the Federal Circuit decided that the appeal warrants en banc consideration.

The Federal Circuit has requested additional briefing on the following issues:

  1. 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?
  2. 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).
  3. 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?
  4. 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?

Oral argument will be held at a time and date to be announced later, likely sometime late Fall 2010.


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Join the Discussion

5 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 19, 2010 09:26 pm


    I typically agree with Judge Rader, and do here as well. I don’t really have an opinion on whether there is continued and ongoing infringement. I haven’t looked at the case close enough for formulate my own opinion, but I agree 100% with Judge Rader that summary contempt proceedings seem wholly inappropriate in this case. There was an attempted work-around and the theory of infringement looks different to me. If there is ongoing infringement then the patent owner should have to refile a patent infringement case again based on the work-around still infringing. Summary contempt proceedings are a short-cut and I just can’t see how they should be relied upon when there is a change in the underlying case that seemingly requires more evidence and new comparisons.

    I understand why you would think that the court might have just grown tired of the fighting, and maybe that is the case. I don’t know that is getting factored in though. I will follow the case and have a much better idea after seeing the briefs and listening to the oral arguments.

    Stay tuned!


  • [Avatar for EG]
    May 19, 2010 07:02 am


    As I said before, waiting for SCOTUS to issue the Bilski decision reminds me of the “padding” at the end of the message Nimitz sent Halsey about where his 3rd Fleet was in the Battle of Leyte Gulf while Kinkaid and Taffy 3 of the 7th Fleet tried to stave off annihilation by Kurita’s battleships in the Center Force: “THE [PATENT] WORLD WONDERS.”

  • [Avatar for Just visiting]
    Just visiting
    May 17, 2010 10:35 am

    Shut out on Bilski again today.

    Next chance is Monday, May 24 — that is the day I’m shooting for.

  • [Avatar for John Smythe]
    John Smythe
    May 16, 2010 02:26 pm


    I read your initial comments from the March 4 decision and you were so prescient. Do you have any thoughts on the outcome of the en banc review given your knowledge of the participants? I am not a lawyer but it looked like the majority judges had become annoyed with Dish/Echostar and its willingness to continue to litigate and extend proceedings on a financially weaker entity. From a public policy standpoint, Dish/Echostar said that a finding on their position would enhance innovation. But what about smaller players, even once they are granted patents, who get tangled forever in the courts and never reap the commercial benefits of their inventions—-how does that enhance innovation?

    John Smythe

  • [Avatar for Cheryl Milone]
    Cheryl Milone
    May 16, 2010 01:17 pm


    Your coverage of the Federal Circuit has been tremendous, including your recent interview with Judge Rader. The involvement of the U.S. Supreme Court and more activist role of the Federal Circuit comes at a time when greater certainty is needed on patent standards. My company and many practitioners for example await a decision on Bilski in order to determine business issues. Uncertainty makes for inefficient allocation of resources. With intangible assets accounting for about 78% of corporate assets, a solid basis for understanding those assets is very much needed.

    Thanks for the opportunity to participate on this topic.
    Cheryl Milone