Contempt Of Injunction

  • BASICS: Contempt finding requires clear and convincing evidence that newly accused product (1) “is not more than colorably different from the product found to infringe” and (2) “the newly accused product actually infringes.” Colorable difference analysis must focus on differences between specific features accused and found in the initial proceeding as causing infringement vs. their modifications in the new product, including whether those modifications were innovative or obvious. TiVo (Fed. Cir. 04/20/11) (en banc) (aff’g part of contempt finding and award of $90 million in sanctions); see BASF Agro (Fed. Cir. 05/31/12) (contempt of a default judgment, with a new product); NCube (Fed. Cir. 10/10/13) (aff’g no contempt).
  • May Conduct Contempt Proceedings Without First Finding “No Colorable Differences”: not necessary to make “no colorable differences” finding before holding contempt proceedings. Rather, need only detailed allegations of the alleged violation. TiVo (Fed. Cir. 04/20/11) (en banc) (reversing 1985 Fed. Cir. precedent (KSM)).
  • Patent Invalidity Not Defense In Contempt Proceeding: May not assert invalidity in contempt proceeding even if there is a new claim construction. Proveris (Fed. Cir. 01/13/14).
  • Overbreadth And Vagueness Of Injunction Are Not Defenses To Contempt Finding: Time to challenge overbreadth of injunction, and vagueness (if based on a strained reading) is when appealing original judgment, not at contempt stage. TiVo (Fed. Cir. 04/20/11) (en banc).
  • Good Faith Belief In Non-infringement Not Defense To Contempt Finding: Good faith belief in non-infringement is a factor in assessing penalties, but is not a defense to contempt. TiVo (Fed. Cir. 04/20/11) (en banc).
  • Civil Contempt Sanctions Must Be Set Aside When Injunction Must Be Set Aside: Cancellation of claim per reexamination required that non-final injunction and civil contempt sanctions be set aside. EPlus (Fed. Cir. 07/25/14) (2-1) (noting different rule applies to criminal intent), en banc rehearing denied (Fed. Cir. 06/18/15) (6-4); ePlus (Fed. Cir. 06/18/15) (revised maj. Op.); but see Delorme Publishing (Fed. Cir. 11/12/15) (2-1) (distinguishing ePlus; later invalidation of claims does not erase ITC’s civil penalty for contempt of final consent order prohibiting infringement of those claims until they are invalidated or expire.)

Civil Contempt Sanctions Must Be Set Aside When Injunction Must Be Set Aside: Cancellation of claim per reexamination required that non-final injunction and civil contempt sanctions be set aside. EPlus (Fed. Cir. 07/25/14) (2-1) (noting different rule applies to criminal intent), en banc rehearing denied (Fed. Cir. 06/18/15) (6-4); ePlus (Fed. Cir. 06/18/15) (revised maj. Op.); but see Delorme Publishing (Fed. Cir. 11/12/15) (2-1) (distinguishing ePlus; later invalidation of claims does not erase ITC’s civil penalty for contempt of final consent order prohibiting infringement of those claims until they are invalidated or expire.)