We will be discussing two recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, April 25, 2011.  The first case sets forth a new standard for judging contempt in patent cases. The second case deals with the propriety of adding claims in reissue.  A brief synopsis of the cases is presented below.

Tivo, Inc. v. Echostar Corp., 2009-1374 (Fed. Cir. April 20, 2011) (attached).  This case deals with Echostar’s response to an injunction from a prior case involving these parties.  Echostar started selling products that it believed incorporated a work-around.  Tivo sued for contempt claiming that Echostar’s work-around was insufficient and won.  Echostar appealed and lost, then sought rehearing en banc to address the standard for contempt proceedings and to assert that the injunction itself was overbroad and vague.

The Federal Circuit concluded that the prior contempt standard in patent cases, set forth in KSM Fastening Systems was unsound and set forth a revised standard.  The “more than colorable differences” test remains, but the Federal Circuit eliminated a “preliminary” inquiry as to whether contempt proceedings were proper and indicated that contempt proceedings are a severe remedy.  The decision also emphasized that the colorable difference should focus on those aspects of the product that were changed in an attempt to work-around, not the product as a whole.

The case was remanded for consideration in view of this guidance and the damage award was vacated.  The court affirmed the contempt for Echostar’s failure to disable DVR functionality and rejected Echostar’s assertions of overbreadth and vagueness.

In Re Tanaka, 2010-1262 (Fed. Cir. April 15, 2011) (attached).  Mr. Tanaka sought to utilize the reissue process to add a dependent claim to his patent.  The examiner rejected the new claim, the Board of Patent Appeals and Interferences rejected and then a panel of the BPAI affirmed stating that this was not an amendment to correct a “partially inoperative” patent under Section 251. Mr. Tanaka appealed to the Federal Circuit claiming that this was contrary to clear precedent and a suitable use of the reissue process.

The Federal Circuit agreed with Mr. Tanaka.  Section 251 is available to aid an inventor who “claimed more or less” than he had a right.  One case in the Court of Customs and Patent Appeals had this exact holding.  A patentee does retain a right to file narrower claims in a reissue application if 1) the original patent is wholly or partially inoperative or invalid and 2) the defect was made through error without deceptive intent.  Both are present here.

The Board also asserted that the omission of a narrower dependent claim did not render the patent inoperative.  The Federal Circuit rejected this notion as well because each claim is a separate statement of the patented invention and because dependent claims are less vulnerable to invalidity attacks.  The Federal Circuit also rejected assertions that this was substantially the same as a “no defect” reissue.  For all of these reasons, the Board was reversed and the case remanded.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, April 25, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.