Tivo, Inc. v. Echostar Corp.

                           NOTE: This order is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                        2009-1374


                                       TIVO INC.,

                                                        Plaintiff-Appellee,

                                            v.


                           ECHOSTAR CORPORATION,
                         ECHOSTAR DBS CORPORATION,
                    ECHOSTAR TECHNOLOGIES CORPORATION,
                    ECHOSPHERE LIMITED LIABILITY COMPANY,
                           ECHOSTAR SATELLITE LLC,
                       and DISH NETWORK CORPORATION,

                                                        Defendants-Appellants.

Appeal from the United States District Court for the Eastern District of Texas in case
no. 2:04-CV-01, Judge David Folsom.

Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, BRYSON,
GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.

PER CURIAM.

                                     ORDER

       Defendants-Appellants (“EchoStar Corporation et al.”) filed 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 rehearing 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 court has decided that the appeal warrants en banc consideration.

       Upon consideration thereof,

       IT IS ORDERED THAT:

      (1)    The petition of Defendants-Appellants EchoStar Corporation et al. for

             panel rehearing is denied.

      (2)     The petition of Defendants-Appellants EchoStar Corporation, et al. for

             rehearing en banc is granted.

      (3)    The court’s March 4, 2010 opinion is vacated, and the appeal is

             reinstated.

      (4)     The parties are requested to file new briefs addressing the following

             issues:

             a)     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?

             b)     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).

             c)     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




2009-1374                                    2
                   reasonable and good faith belief of noninfringement by the new
                   device, for a finding of contempt?

            d)     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?


     (5)    This appeal will be heard en banc on the basis of the originally filed briefs,

            additional briefing ordered herein, and oral argument.        An original and

            thirty copies of all originally filed briefs shall be filed within 42 days from

            the date of filing of this order. An original and thirty copies of new en banc

            briefs shall be filed, and two copies of each en banc brief shall be served

            on opposing counsel. The Defendants-Appellants shall file their new en

            banc brief within 42 days from the date of filing of this order.          The

            response brief of the Plaintiff-Appellee is due within 42 days from the date

            of service of the Defendants-Appellants’ brief.       The reply brief of the

            Defendants-Appellants, if any, is due within 28 days from the date of

            service of the response.. Briefs shall adhere to the type-volume limitations

            set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit

            Rule 32.

     (6)    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.

     (7)    Oral argument will be held at a time and date to be announced later.




2009-1374                                  3
                                        FOR THE COURT


 May 14, 2010                           /s/ Jan Horbaly
     Date                               Jan Horbaly
                                        Clerk


cc:   Seth P. Waxman, Esq.
      E. Joshua Rosenkranz, Esq.
      Robert Patrick Merges, Esq.
      Raymond Millien, Esq.




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