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Matthew Zinn

Senior Vice President, General Counsel & Chief Privacy Officer TiVo Inc.

Before joining TiVo, Matthew Zinn was Senior Attorney, Broadband Law and Policy for MediaOne in Denver, Colorado. Prior to holding that post, Matt served as Corporate Counsel for Continental Cablevision's Western Region, based in Los Angeles. Matt was also an associate with the Washington, D.C., law firm of Cole, Raywid & Braverman, where he represented cable operators before the Federal Communications Commission. Matt earned his J.D. at the George Washington University National Law Center and his B.A. in political science from the University of Vermont.

Intellirights sincerely thanks Matt Zinn for joining us to discuss the en banc case of TiVo Inc. v. EchoStar Corp., Fed. Cir., No. 09-1374, which will be argued Nov. 9, 2010,  at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.

At issue in this case is whether a contempt proceeding is the proper setting for determining whether a newly accused device infringes a patent in violation of an injunctive order. Here, EchoStar was permanently enjoined from further infringing Tivo’s “Multimedia Time Warping System” patent (6,233,389). The district court later found EchoStar in contempt of the injunction after determining that the company made only insubstantial changes to its accused device and continued to infringe the ‘389 patent. Though two Federal Circuit judges upheld the contempt finding, Judge Randall Rader, now Chief Judge of the Federal Circuit, dissented, arguing that the injunction was so ambiguously written that it could not have given EchoStar fair notice of what was actually prohibited.

The Federal Circuit agreed in a May 14 order to hear the case en banc and vacated its earlier panel decision.

EchoStar has sought two reexaminations of the ‘389 patent and review by the U.S. Supreme Court, all to no avail. To TiVo, EchoStar has been engaging in stall tactics to avoid paying damages and complying with the injunction. TiVo’s en banc brief insists that the “$215 million awarded … here in supposed compensation for three years of post-injunction infringement” is hardly adequate relief for “irreparable harm” it has suffered in terms of lost customers and market share. However, EchoStar’s opening brief and reply brief argue that substantial issues exist as to whether its modified device infringes and that a new trial is warranted.

The Federal Circuit has asked the parties to address the following questions:

Question (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?

Question (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).

Question (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 reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?

Question (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?


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