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TiVo, Inc. v. EchoStar Corp.

United States Court of Appeals for the Federal Circuit

646 F.3d 869, 98 U.S.P.Q.2d 1413 (2011)

Facts

Tivo, Inc. (plaintiff) owned United States Patent No. 6,233,389 (the 389 patent). The 389 patent disclosed certain features of digital video recorders. Tivo sued EchoStar Corporation (defendant) in federal court for infringement of the 389 patent. The jury found that EchoStar’s receivers infringed the 389 patent. The district court issued a permanent injunction barring EchoStar from making or selling receivers that infringed the 389 patent. After EchoStar designed and sold a new receiver, Tivo moved for the district court to initiate contempt proceedings against EchoStar. EchoStar argued that the new receiver’s software was modified to no longer infringe the 389 patent. In the initial patent-infringement case, EchoStar’s start-code-detection feature was found to infringe the parsing limitation of the 389 patent’s software claims. EchoStar’s new software removed the start-code-detection feature and instead implemented a statistical-estimation feature. The district court found the new and infringing receivers were not more than colorably different but did not compare the statistical-estimation feature against the start-code-detection feature. The court held that the statistical-estimation feature violated the injunction’s prohibition against infringement and found EchoStar in contempt. EchoStar appealed.

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Holding and Reasoning (Lourie, J.)

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