## United States Court of Appeals for the Federal Circuit *Revised March 16, 2010 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.

Seth P. Waxman , Wilmer Cutler Pickering Hale and Dorr LLP, of Washington, DC, argued for plaintiff-appellee. With him on the brief were Edward C. DuMont , Daniel S. Volchokand Thomas Saunders . Of counsel on the brief were Morgan Chu , Andrew Iancu , Christine W.S. Byrd and Perry Goldberg , Irell & Manella LLP, of Los Angeles, California. E. Joshua Rosenkranz , Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for defendants-appellants. Wi th him on the brief were Joseph Evall and Alex V. Chachkes . Of counsel on the brief were Donald R. Dunner , Don O. Burleyand Erik R. Puknys , Finnegan, Henderson, Farabow , Garrett & Dunner, LLP, of Washington, DC, and Rachel Krevans , Jason A. Crottyand Scott F. Llewellyn , Morrison & Foerster LLP, of San Francisco, California. Of counsel was Tina E. Hulse , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of Palo Alto, California. Appealed from: United States District C ourt for the Eastern District of Texas Chief Judge David Folsom

* Correction of law firm name Door (“Dorr”)

## 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 LI ABILITY COMPANY, ECHOSTAR SATELLITE LLC, and DISH NETWORK CORPORATION, Defendants-Appellants., Appeal from the United St ates District Court for the Eastern District of Texas in case no. 2:04-CV-01,Chief Judge David Folsom.

____________________________ DECIDED: March 4, 2010

____________________________ Before MAYER, LOURIE, and RADER, Circuit Judges

. Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge RADER.
LOURIE, Circuit Judge

. Appellants (collectively, “EchoStar”) appeal from the district court’s decision finding them in contempt ofthe court’s permanent injuncti on order. TiVo Inc. v. Dish Network Corp. , 640 F. Supp. 2d 853 (E.D. Tex. 2009). Because we find that the district court did not abuse its discreti on in imposing sanctions against EchoStar, we affirm the finding of contempt.BACKGROUND TiVo, Inc. (“TiVo”) owns U.S. Pat ent 6,233,389 (“the ’389 patent” or “TiVo’s patent”), which is entitled “Mu ltimedia Time Warping System .” The patented technology allows television users to simultaneously re cord and play (“time-shift”) television broadcasts using what is commonly known as a digital video recorder (“DVR”). A DVR allows users to fast-forward , rewind, pause, and replay a “ live” television program while it is playing on the television set. TiVo’s pat ent covers various features essential to the working of a DVR. In 2004, TiVo sued EchoStar in the Unit ed States District Court for the Eastern District of Texas, alleging that its receiver s infringe “hardware” cl aims (claims 1 and 32) and “software” claims (claims 31 and 61) of the ’389 patent. The hardware claims are not at issue in this appeal. Claim 31 of the ’389 patent is the first of the two software clai ms. It provides as follows: A process for the simultaneous storage an d play back of multimedia data, comprising the steps of: [1] providing a physical data so urce, wherein said physical data source accepts broadcast data from an input device, parses video and audio data fr om said broadcast data, and temporarily stores said video and audio data; [2] providing a source object, wherein said source object extracts video and audio data from said physical data source; [3] providing a transform object, wherein said transform object stores and retrieves data streams onto a storage device; [4] wherein said source objec t obtains a buffer from said transform object, said source object converts video data into data streams and fills said buffer with said streams; [5] wherein said source object is automatically flow controlled by said transform object; [6] providing a sink object, wherein said sink object obtains

2009-1374 2data stream buffers from said transform object and outputs said streams to a video and audio decoder; [7] wherein said decoder converts said streams into display signals and sends said signals to a display; [8] wherein said sink object is automatically flow controlled by said transform object; [9] providing a control object, wherein said control object receives commands from a user, said commands control the flow of the broadcast dat a through the system; and [10] wherein said control obj ect sends flow command events to said source, transform, and sink objects. Claim 61 is similar to claim 31, except that it recites an apparatus rather than a
process. The accused EchoStar receivers can be broadly classified in two categories based on the processing chip employed by t he receiver: the “50X” series and the “Broadcom” series. The jury found that both the 50X receivers and the Broadcom receivers infringed the asserted hardware as well as software claims and awarded TiVo approximately $74 million in lost profits and reasonable royalt ies. The district court entered judgment on the verdict and issued a permanent injunction against EchoStar. In granting the injunction, the district court ordered EchoStar (1) to stop making, using, offering to sell, and selling the receivers that had been found infringing by the jury (the “infringement” provision) and (2) to disable t he DVR functionality in existing receivers, with the exception of select receivers that had alread y been placed with its subscribers (the “disablement” provision). Following the entry of final judgment by the district court, we affirmed in part, reversed in part, and remanded the district c ourt’s decision. EchoStar had appealed issues of claim construction and infringement to us. We found that the district court had incorrectly construed at least one limitation of the hardware claims and reversed the

2009-1374 3portion of the judgment upholding the jury’s verdict that EchoStar’s DVRs literally infringed the hardware claims. TiVo , Inc. v. EchoStar Commc’ns Corp. , 516 F.3d 1290, 1304–05 (Fed. Cir. 2008). Howeve r, we found no error in t he district court’s claim construction of the software claims and also affirmed the jury’s verdict that the EchoStar devices infringed the software cl aims of the ’389 patent. Id. at 1310. At that time, EchoStar did not appeal the district court’s grant of a permanent injunction. In our opinion, we noted that the district court’s injunction, which had been stayed during the course of t he appeal, would take effect fo llowing our decision. Id. at 1312. We advised the district court that it may make a determination as to any additional damages that TiVo may have sust ained while the stay of the permanent injunction had been in effect. Id. Following the decision on t he appeal, TiVo moved the district court to find EchoStar in contempt of the court’s permanent injunction. After conducting a series of hearings on TiVo’s motion, the district court ruled that EchoStar was in contempt of its earlier order. The district court rejected EchoStar’s argument that it had redesigned its infringing products so that they were mo re than colorably diffe rent from the adjudged infringing devices. The district court eval uated two of EchoStar’s major modifications to the infringing DVR software and concluded t hat the modified software continued to infringe. The district c ourt therefore found EchoStar to be in violation of the infringement provision of the injunction. Mo reover, the district court found that even if EchoStar had achieved a noninfringing desi gn-around, EchoStarwould still be in contempt because it had failed to comply with the disablemen t provision in the district court’s order requiring it to disable DVR technology completely from the receivers

2009-1374 4adjudged to be infringing at trial. For EchoStar’s contem pt of the court’s order, the district court imposed sanctions against EchoS tar in the amount of nearly $90 million. TiVo Inc. v. Dish Network Corp. , 655 F. Supp. 2d 661, 666 (E.D. Tex. 2009). The court also awarded damages to TiVo for the cont inued infringement by EchoStar’s redesigned software. Further, the court amended its ear lier injunction, requiring EchoStar to seek the court’s approval before im plementing future noninfringing workarounds to its DVR software. EchoStar now appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). DISCUSSION A. Contempt of the Infringement Provision 1. Contempt Proceeding We have held that a district court mu st make a two-part inquiry in finding a defendant in contempt of an injunction in a patent infringement case. See KSM Fastening Sys., Inc. v. H.A. Jones Co. , 776 F.2d 1522, 1530 (Fed. Cir. 1985). First, the court must determine whether a contempthearing is an appropriate forum to adjudge infringement by the redesigned product. Id. at 1532. The court may do this by comparing the accused product wit h the original infringing pr oduct to determine if there is “more than a colorable difference” between the accused prod uct and the adjudged infringing product such that “substantial open issues with respect to infringement” exist. Id. Where the court finds that to be the case, a new tria l is necessary to determine further infringement and the court may not proceed with a contempt finding. Id. Only in cases where the court is sati sfied on the threshold inquiry of forum appropriateness can a court inquire whether the redesigned product continues to infringe the claims as

2009-1374 5previously construed by the court. Id. EchoStar argues that it was impermissible for the district court to try issues relating to continued infringement by Ec hoStar’s modified software in a contempt proceeding. According to EchoStar, its m odifications to the infringing DVR software were so substantial that TiVo should have been required to litigate its claims over the modified software in a separat e infringement action. EchoStar contends that it undertook a He rculean effort in redesigning the DVR software in its receivers so that it would no longer infringe the software claims in TiVo’s patent. Primarily, EchoStar claims that it re moved at least two key infringing elements from the software in its Broadcom series re ceivers: video and audi o data parsing, and automatic flow control. Regarding the firs t modification, EchoStar claims that it eliminated the parsing f eature which was useful in creating an index of “start codes” of the audio and video data. That index enabled “trick play” operations. The new EchoStar DVR software is ther efore “indexless” and performs those operations through a “brute-force” method, utilizi ng average frame rate statistics to estimate the location of any video data. With regard to the second modification, Ec hoStar claims that its earlier software made use of a “record buffer” in additi on to a pool of ten transport buffers. The record buffer acted as intermediate storage fo r data being written to the hard drive when each of the ten transport buffe rs was full. The record bu ffer also performed a “blocking” function whereby data transfer from the tr ansport buffers would be blocked until the successful transfer of record buffer data to the hard drive. EchoStar claims that it removed the record buffer and redesigned its so ftware to transfer data directly from the transport buffers to the hard drive, thereby eliminating the blocki ng feature from its

2009-1374 6Broadcom receiver software. For its 50X series receivers, EchoStar implemented only the change to the indexing mechanism described above. According to EchoStar, the district cour t failed to recognize that the modified components had completely transformed the infr inging software. EchoStar argues that the court misapplied the colorable differences test by failing to analyze the theories upon which the jury had adjudged EchoStar’s software to be infringing. EchoStar argues that a contempt proceeding is only suitable where the adj udged infringer makes nothing more than bad-faith co smetic changes. EchoStar presents a long list of arguments as to why its redesigned software should be considered more than colorably different. It argues that it removed features from its softw are that TiVo had previously pointed to as infringing. In order to succeed, EchoStar c ontends, TiVo had to accuse completely different components of its softw are and advance new in fringement theories with regard to the modified software. Accord ing to EchoStar, the fact that TiVo was forced to contradict one of its positions at trial, and that the district court had to resort to expert testimony in order to resolve the new infringement theory both show that the changes were substantial. TiVo responds by arguing that EchoStar’s modifications are trivial. TiVo contends that the modified software comprise s only a small fraction of EchoStar’s DVR software. Moreover, TiVo co ntends, the modifications do not affect any element of the two asserted claims. TiVo also urges us to reject EchoStar’s proposition that its modified software must be evaluated against the claims as adjudged by the previous jury instead of the claims construed by the di strict court. Accordi ng to TiVo, removing infringing elements identified byit at the previous trial ca nnot ensure that EchoStar does

2009-1374 7not infringe TiVo’s patent, or even guarantee a new trial as long as those changes do not raise substantial open issues of infri ngement. TiVo contends that none of the modifications EchoStar made to its softwar e presented the trial court with such open issues. We review the district court's decisi on to proceed via a contempt hearing for abuse of discretion. KSM , 776 F.2d at 1532. We conclude that the district court did not abuse its discretion in finding th at EchoStar’s modified softw are raised no substantial open questions of infringement. As a threshold matter, we determine that the district court used the proper standard in its analysis. EchoStar argues that TiVo had to prove by clear and convincing evidence that a c ontempt proceeding was ap propriate in this case. We agree instead with the district c ourt that, although TiVo was required to put forth evidence that such a proceeding wa s appropriate, that ques tion is left to the discretion of the trial court to be answer ed under the analysis ma ndated by our decision in KSM

. With regard to the 50X series receiver s, the district court found that the modification made to remove indexing ofstart codes impacted only a single claim limitation, namely, “ parses video and audio data from said broadcast data.” The court found that the change did not render the infringing software more than colorably different because there was anotherfeature of the software that continued to meet that limitation. The court noted that EchoStar’s own experts had testified at trial that “PID filtering,” a mechanism designed to distinguish between various te levision programs, satisfied that limitation. Moreover, the court noted, EchoS tar’s own engineers referred to PID filtering as “parsi ng,” and EchoStar’s own internal documents referred to the

2009-1374 8modified software as “Indexless DVR and TS Parsing.” Given that EchoStar’s modification impacted only one limitation, one that it had already conceded was infringed by another software component, the c ourt concluded that the adjudicated and modified products were not mo re than colorably different. We agree with the district court t hat no substantial open questions of infringement remained to be resolved through a trial on this modification. The district court did not err when it looked to other components that EchoStar had itself conceded met the same limitation that was being claimed. In KSM , we stated that “the district court is able to utilize principles of claim and issue preclusion (res judicata ) to determine what issues were settled by the original su it and what issues would have to be tried.” 776 F.2d at 1532. Here, ther e was ample testimony present ed at trial regarding parsing of data in EchoStar’s receiver software and whet her it satisfied the parsing limitation. Multiple experts for both TiVo and EchoStar had testified at trial that PID filtering was in fact “parsing.” EchoStar did not make any changes to its PID filter software components. In light of such ev idence, it was not an abuse ofdiscretion for the district court to conclude that EchoStar’s modifi cation to its indexing software component had not rendered its 50X receivers more than color ably different from th e adjudged infringing

ones.We also reject EchoStar’s and the dissent’s argument that the district court was required to limit its analysis to whether the modified devices had eliminated start-code detection and indexing. EchoStar argues that a contempt hearing is proper only when the redesigned devices are alleged to infri nge in the exact same manner that has already been adjudicated to infringe. We disagr ee. The test for colorable differences is

2009-1374 9not divorced from the scope of the claim that has previously been found to have been infringed. See Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc. , 154 F.3d 1345, 1350 (Fed. Cir. 1998) (eval uating only those changes that were relevant claim limitations). Modifications that EchoStar made to its software based on what it alone considered to be the basis of the jury ’s infringement finding cannot guarantee the creation of substantia l open issues with respect to in fringement. Where the court is clearly convinced, based on evidence presented at trial, that ther e are no substantial open issues on continuing infrin gement of the asserted clai ms, we see no reason to disallow summary proceedings. See KSM , 776 F.2d at 1532 (citing MAC Corp. of Am. v. Williams Patent Crusher& Pulverizer Co. , 767 F.2d 882, 885-86 (Fed. Cir. 1985)) (“So long as the district court exercises its discret ion to proceed or not to proceed by way of contempt proceedings within th ese general constraints, this court must defer to its judgment on this issue.”); see also Additive Controls , 154 F.3d at 1350 (holding that within the general constr aints stated in KSM , the district court has broad discretion to determine how best to enforce its injunctive decrees). EchoStar’s proposed standard would make it almost impossibl e for a district court to empl oy a contempt proceeding to enjoin infringing products. Compelling the parties to undertake a new trial every time there is a dispute over previously adjudicat ed infringing products would fail to serve the goals of judicial economy. We disagree with the dissent th at a new trial is necessary here for the parties to reargue an issue – the operation of the exact same PID filter – that has now been argued multiple ti mes to the distri ct court. For the same reasons, we conclude that t he district court did not err in finding only colorable differences between the adjudicated Broadcom receiver software and the

2009-1374 10modified one. For its Broadc om receivers, EchoStar implemented a software change eliminating a record buffer in addition to th e start code indexing modification discussed above. The district court found that the additional change affected only the automatic flow control claim limitation. The court found that both the modified and original products operate a circular transport buffe r structure with ten buffers within the structure. The court concluded that in essence the buffer modification was nothing more than a change from eleven buffers to ten. We agree with the district court that that was not a major redesign of the software. EchoStar seeks to magnify the si gnificance of its buffer redesign by arguing that the modifications resulted in skewing of the infringement m apping asserted by TiVo at trial, thereby requiring TiVo to re map each claim limitati on against different components of the software. That, EchoStar argues, mandates a new trial. However, EchoStar did not significantlychange the manner in which data flows to the transport buffers, simply the manner in which it is wri tten to the hard disk. The district court was familiar with the operation of the prior infr inging software, and pr operly determined that EchoStar’s change primarily im pacted the manner in which aut omatic flow control was achieved. Moreover, we have made clear that the presence of a new issue does not necessarily preclude the dist rict court from making use ofa contempt proceeding to determine continued infringement. See Additive Controls , 154 F.3d at 1350 (“The presence of a new issue, howev er – even a new issue of cl aim construction – does not necessarily require that a separate infri ngement action be brought to determine whether the accused device infringes the patent in suit.”). In Additive Controls , we upheld a district court’s decision to proceed with contempt procee dings where the court had to

2009-1374 11conduct claim construction prior to determining whether the variations were more than colorably different from t he infringing products. Id. We held that the district court’s determination (via a contempt proceeding) of infri ngement by the modi fied devices and based on its new claim construction wa s not an abuse of discretion. Id. We therefore conclude that the court did not abuse its discretion in finding that the Broadcom receiver software had not been altered significantly enough to raise substant ial open issues of infringement. Finally, we reject EchoStar’s argument t hat evidence of its good faith suffices to protect it from any finding ofcontempt. EchoStar argues t hat it paid 15 engineers to spend 8000 hours on the redesig n, which took a year. Similarl y, it stresses the fact that it obtained an opinion of noni nfringement from a respected patent law firm. It further contends that the redesign compromised perfo rmance in order to avoid infringement of TiVo’s patent, giving it a product inferior to what it previously had. In light of this evidence, EchoStar argues, the district court was prohibited from utilizing a contempt hearing in this case. We disagree and conclude that EchoStar misreads our law. Although we have acknowledged that good faith may be an indicator that redesigned products are more than colorably different, ArbekMfg., Inc. v. Moazzam , 55 F.3d 1567, 1570 (Fed. Cir. 1995), we have also made it clear that a lack of intent alone cannot save an infringer from a finding of contem pt. Additive Controls , 154 F.3d at 1353 (“The general rule in civil contempt is that a party need not intend to violat e an injunction to be found in contempt.”). It was clearly within the district court’s discretion to give appropriate weight to EchoStar’s good faith arguments, but not to accept them.

2009-1374 12The district court has presided over this case for over five years. Given its familiarity with the parties, t he patent at issue, and the infrin ging products, in addition to the well articulated reasoning for its decision, we do not find an ab use of discretion in the court’s decision to hol d contempt proceedings.
2. Infringement ofthe ’389 Patent EchoStar argues that because TiVo failed to prove by clear and convincing evidence that the redesigned devices infringe, it is not in contempt of the infringement provision of the injunction. With regard to the 50X series receivers, EchoStar argues that at the very least, t he claim limitation “parses vi deo and audio data from said broadcast data” is not met by its new softwar e. It argues that the district court improperly found infringement based on the simple fact that t he software includes a PID filter that parses some data. The filter, however, EchoSta r argues, looks only at the header of a data packet, not the payload w here the video and audi o are contained. Therefore, EchoStar urges, its modified software does not parse any audio and video data. TiVo responds that the district court has previously construed the term “parses” broadly to mean “analyzes,” a construction that has never been challenged, and all that is required for the modified so ftware to meet this limitatio n is a component that analyzes video and audio data. TiVo argues that EchoSta r’s attempt to diffe rentiate header data from the packet payload is improper becaus e both are part of an MPEG packet, and the whole packet is video and audio data. Mor eover, TiVo argues that experts for both sides testified at trial thatPID filtering meets the parsi ng limitation under the court’s claim construction.

2009-1374 13We review the district court’s finding of continued infringement and other subsidiary factual findings made in a contem pt proceeding for clear error. Additive Controls , 154 F.3d at 1351. We may reverse a find ing of infringement only if we are left with a definite and firm conviction that a mistake has been committed by the trial court. Unique Concepts, Inc. v. Brown , 939 F.2d 1558, 1564 (Fed. Cir. 1991) (citations omitted). We have no such conviction here. We agree with TiVo that there was overwhelming evidence before the district court to find that the “p arses” limitation was met by the PID filter component. EchoStar’s own expert, Dr. Rhy ne, testified at trial that the infringing software contai ned PID filters “that exami ne the MPEG transport stream and do a parsing.” At the contempt proceeding, Dr. Rhyne testified th at the operation of PID filters in the modified softw are had not changed since trial. As TiVo points out, the PID codes in the packet headers are just as nec essary to view television as the start codes in the packet payload. More important ly, there is nothing in the claims or the specification that requires audio and video data to be limited to specific fields of an audio or video data packet in the c ontext of this limitation. EchoStar argues that both parties have switched positions on this issue and therefore that judicial estoppel prevents TiVo, the prevai ling party, from taking a position that is clearly inconsistent wit h its earlier position. We, like the district court, do not see TiVo’s position on the PID filt er component as being “clearlyinconsistent” with the one that it took at trial. See New Hampshire v. Maine , 532 U.S. 742, 750 (2001) (holding that in order to invoke judi cial estoppel, “a party’s la ter position must be ‘clearly inconsistent’ with its earlier position”). EchoStar does not point to any statement

2009-1374 14wherein TiVo unequivocally de nied that a PID f ilter can accomplish audio and video parsing. On the contrary, TiVo points to se veral instances where it conceded the fact. For example, at the summary judgment stage, EchoStar’s own counsel pointed out to the district court that TiVo’s expert had agr eed that PID filtering satisfies the parsing limitation. Moreover, TiVo’s statements at trial regardi ng the PID filter were made in connection with EchoStar’s infringement of the hardware claims. Those claims specifically required a “media switch,” which parses an MPEG stream, separating it into its video and audio components. See ’389 patent, cls. 1, 32. As we noted in our earlier opinion, the specification discloses in detail the parsing function that is claimed as part of the media switch. TiVo , 516 F.3d at 1301–02. TiVo’s expert testimony at trial was clearly related to infringement of that media switch limitati on of the asserted hardware claims. In pursuing contempt against EchoS tar, TiVo takes t he position that the operation of a PID filt er in EchoStar’s software meets the parsing limitation of the software claims. Although the g eneral presumption is that the same claim term in the same patent carries the same construed m eaning, Omega Eng’g, Inc, v. Raytek Corp ., 334 F.3d 1314, 1334 (Fed. Cir. 2003), here, the scope of the softw are claims is indeed very different from that ofthe hardware claims. We cannot agree with EchoStar that TiVo’s current position on PID filtering is entirely inconsis tent with its position at trial. See Sandisk Corp. v. Memorex Prods., Inc. , 415 F.3d 1278, 1291 (Fed. Cir. 2005) (rejecting judicial estoppel arguments where the patentee’s earlier claim construction position related to narrower term and the s ubsequent position was on a broader term). The district court properly found that the PID filter in EchoSt ar’s modified software “parses video and audio data” as required by the so ftware claims.

2009-1374 15We now turn to the question of conti nued infringement by the Broadcom receiver software wherein EchoStar implemented an add itional record buffe r modification. Regarding the Broadcom software, EchoStar argues that the claims require that data move through a specific set of software co mponents in a specific order, and neither TiVo nor the district court was able to map this flow within EchoStar’s redesigned software. Specifically, EchoS tar argues that following the removal of the record buffer and related operations, its so ftware no longer met claim li mitations that require extraction and conversion of data as well as filling of a buffer. Further, EchoStar argues, that with its new buffer design, the aut omatic flow control limitation is no longer met. Specifically, EchoStar contends that by eliminating the “blocking” function that had been alleged to provide automatic flow cont rol, it completely removed this claim limitation from its software. TiVo responds by arguing that EchoSta r’s software cannot escape infringement by the trivial change that it made. TiVo contends that all EchoStar did was to remove a copy buffer that was available as a progr amming convenience, allowing programmers to divorce themselves from the Broadcom driver code. TiVo contends that EchoStar’s own engineers represented the modi fication as nothing more than the removal of an intermediate buffer. It points out that it provided detailed mapping of each claim limitation against components ofEchoStar’s modified softw are, complete with record citations and specific examples of code, sho wing how the software continues to infringe. Further, TiVo argues, its expert testified at t he contempt hearing to infringement of each of the claim limitations at issue. We are persuaded that the district did not clearly err in finding continued

2009-1374 16infringement by the modified Broadcom rece iver software. We reject EchoStar’s primary argument that TiVo’s new mapping of the modified software results in noninfringement. According to EchoStar, under the new mapp ing, the “Input Buffer” on the Broadcom chip is the “t emporary storage,” and the “tr ansport buffer” in RAM is the “buffer.” Therefore, EchoStar argues, its so ftware no longer extracts, converts, or fills data as required by the claims, or at least no t in the order required by the claims. For instance, EchoStar argues that in the redesi gned receivers, the buffer is filled not by software but by hardware, namel y, the Broadcom chip. We have previously rejected a similar distinction between the operati on of hardware and software proposed by EchoStar. See TiVo , 516 F.3d at 1309 (finding Ec hoStar’s hardware/software distinction unhelpful because software alone cannot perfo rm data extraction from a physical device). The fact that the buffer is now filled by the Broadcom chip software does not render EchoStar’s modified softwar e noninfringing. TiVo provided expert testimony, along with exemplary code, on how the modified software satisfies each of these limitations. TiVo furt her produced infringement charts showing how each of these claim limitations continued to be met. Mo reover, there was ample evidence presented at trial by both parties to anal yze the workings of EchoStar’s software. It was therefore not improper for the district court to summarily find that eac h of the limitations continued to be met in substantially the same manner as before. The court focused on the one limitation that was clearly im pacted by the modification, the automatic flow control limitation. The court found that in spite of the redesign, several as pects of the software continued to satisfy that limit ation. Before trial in this case, the district court had construed “automatically flow controlled” to mean “self-regulated.” The court held that

2009-1374 17such self-regulation is found in the ten buffers that the software uses in a circular arrangement, rotating between buffers as each ofthem begins to fill. As TiVo points out, the system ensures that under normal c onditions the buffers are no more than 70% full. The court looked to point ers and descriptors used by t he software to manage flow of data and concluded that those were all methods of self-regulation of data. The claims do not require, and the co urt did not construe the claims to require, that data flow be completely halted in order to achieve automa tic flow control. We find that there was clear and convincing evidence that the autom atic flow control limitation was met. We also agree with TiVo that there is no inherent order required among the claim limitations, and none has been argued bef ore. We therefore conc lude that each of the claim limitations continues to be met by t he modified Broadcom rece iver software. We are persuaded that there was clear and convincing evidence bef ore the district court to find that both types of EchoStar receivers c ontinue to infringe and t hat it was not an abuse of discretion for the court to find Ec hoStar in contempt of the infringement provision. B. Contempt of the Disablement Provision EchoStar argues that the district could not find it in contempt of a provision that, when reasonably read, does not require it to do anything more than to change its DVR software component. EchoStar contends thatit simply downloaded noninfringing software to the receivers that it had placed with consumers. EchoStar argues that the district court’s injunction c annot be read to prohibit such non infringing design-arounds. According to EchoStar, the pl ain language of the disablem ent provision contains two distinct directives. EchoStar explains that th e first clause, requiring disablement of “the

2009-1374 18DVR functionality,” refers only to the functionality that prev iously existed and was found to be infringing. EchoStar argues that because its modifi ed software had not yet been developed or installed in those receivers, the district court could not have ordered it to disable functionality that did not exist. EchoStar contends that the second clause, requiring EchoStar not to enable the same in fringing DVR functionality in future products, confirms its understandi ng. EchoStar further argues that the district court, in ordering that it “disable all storage to and play back from a hard disk drive of television data,” had to mean that EchoStar was required to disable all infringing storage and playback functionality. Therefore, EchoSta r argues, the district court erred when it interpreted its injunction to requi re a permanent disablement of all DVR functionality in the specified EchoStar units. TiVo responds that the di strict court was abundantly clear about what it meant by the disablement provision. According to TiVo, the order defines the term “DVR functionality” and specifically lists the ei ght EchoStar models to which it applies. Further, TiVo notes, the court emphasized whatit meant by requiri ng disablement of “all storage to and playback from a hard disk of television data” in the enumerated EchoStar models. TiVo also contends that EchoSta r had adequate notice of the meaning of the injunction because EchoStar had argued to the dist rict court that it should be allowed to implement DVR functionality in the listed models in a noninfringing manner. In response, TiVo contends, TiVo had argued to the district c ourt that all DVR functionality in all EchoStar units should be disabled. According to TiVo , the district court rejected EchoStar’s argument and adopted TiVo’s proposal for broader re lief in order to prevent mischief on the part of EchoStar. TiVo argues that such broad injunctions have

2009-1374 19previously been approved by this court. TiVo ar gues that in light ofsuch clear notice, EchoStar simply assumed the risk of a future finding of contempt bydeciding to proceed based on its own understanding of the order, without seeking further guidance from the district court or appealing the injunction to th is court. Therefore, TiVo argues, EchoStar is barred from collaterally attacki ng the disablement provision now. A district court’s interpretation of the te rms of an injunction or any other legal instrument is a question of law that we review de novo . See Laitram Corp. v. NEC Corp. , 115 F.3d 947, 951 (Fed. Cir. 1997). Under the Federal Rules ofCivil Procedure, “[e]very order granting an injunction . . . shall be specific in terms [and] shall describe in reasonable detail, and not by reference to t he complaint or other document, the act or acts sought to be restrained.” Fed. R. Civ. P. 65(d). Rule 65(d) “was designed to prevent uncertainty and confusion on the part of those faced with inju nctive orders, and to avoid the possible founding of a contempt citation on a decree too vague to be understood.” Abbott Labs. v. TorPharm, Inc. , 503 F.3d 1372, 1382 (Fed. Cir. 2007) (quoting Schmidt v. Lessard , 414 U.S. 473, 476 (1974)). We have held that a district court cannot find a party in contempt of it s injunction order where the party had no explicit notice that it was enjoined from sp ecific conduct. Id. at 1383. However, it is also well established that w here a district court has made clear its intent in barring certain conduct, a party is not free to ignor e the court’s order and only appeal a later contempt finding. See Carborundum Co. v. Molten Me tal Equip. Innovations, Inc. , 72 F.3d 872, 883 (Fed. Cir. 1995) (finding no abus e of discretion in a district court contempt finding where a defend ant had failed to follow an inj unction that the court had clarified during the proceedings). The time to appeal such an order is when it is handed

2009-1374 20down, not when a party is later found to be in contempt. Othercircuits have also held that the scope of an injunction may be challenged only on direct appeal. W. Water Mgmt., Inc. v. Brown , 40 F.3d 105, 108 (5th Cir. 1994); accord John Zink Co. v. Zink , 241 F.3d 1256, 1260 (10th Cir. 2001) (finding arguments related to interpretation of an injunction waived where the def endants had failed to raise them in their earlier appeal). We conclude that the district court’s injunction was sufficiently clear to bar EchoStar from challenging it now. The in junction expressly pr oscribes “the DVR functionality” and further clarifie s what it means by the term. The order clearly defines the term “Infringing Products” prio r to referring to it in the disablement provision. The order then goes on to restate that “[t]he DVR functional ity, storage to and playback from a hard disk drive shall not be enabled in any new pl acements of the Infringing Products.” EchoStar’s argues that this se cond sentence, because it references new placements, requires that the term “DVR f unctionality” be read as referring only to infringing software. We do not agree with the stretched reading of this provision that EchoStar proposes. See Signtech USA, Ltd. v. Vutek, Inc. , 174 F.3d 1352, 1359 (Fed. Cir. 1999) (holding that where an injunction provides adequate notice of the conduct enjoined, the specificity requirement of Rule 65(d) is served) . “All” plainly means all. At a minimum, EchoStar had notice of the possi bility that the district c ourt was imposing a complete ban on the DVR software of each of the listed rece ivers. As TiVo points out, at the time the district court issued its injunction, EchoStar’s receiver hardware had been found to infringe the hardware claims as well, a finding that we later re versed. It would thus have been reasonable for one to read the injunc tion when it issued as barring any

2009-1374 21implementation of software similar to the one f ound by the district court to be infringing in all of the hardware that wa s found to be infringing. We fi nd it important to note that the district court did not order a complete disablement or reca ll of the infringing hardware. The DVR software is but one of many components of EchoStar’s receiver software. The one piece of evidence that we do have ofEchoStar’s understanding of the disablement provision is its emergency moti on for us to stay the injunction, in which EchoStar repeatedly stated that the injunction would render millions of its customers without DVR service or require them to go through consider able trouble and expense of obtaining DVR service from anot her provider. The motion, filed even as EchoStar was developing and preparing to roll out its workaround, in no way demonstrates EchoStar’s contrary understanding of the disablement provis ion. As long as a plain reading of the order would have provided EchoStar with notic e of what it is now being held in contempt, we cannot allow a collateral chal lenge to the order at this time. See Travelers Indem. Co. v. Bailey , 129 S. Ct. 2195, 2204 (2009) (barring a collateral challenge to an order, regardless of its merits, where the issue could have been raised on direct appeal). EchoStar raised a variety of issues incl uding claim construction, infringement, and various other trial rulings in its appeal from the district court’s prior judgment. See TiVo , 516 F.3d 1290. EchoStar even moved us to stay the permanent injunction pending that appeal, and we granted a stay. Ec hoStar strongly protested the injunction, detailing the potential damage it would suffer from the injunction in its motion to stay. However, it failed to raise t he issue on appeal. The fact t hat there were numerous other issues on appeal cannot excuse its failure to appeal the injunction. Had EchoStar

2009-1374 22brought an appeal on the injunction, we could have addre ssed its legitimacy. The time to do so has long passed. “It is just as im portant that there shoul d be a place to end as that there should be a place to begin litigation.” Travelers , 129 S. Ct. at 2206 (citations omitted). We thus agree with the district court that EchoS tar waived any argument that the injunction was overbroad. The dissent argues that it would be complete ly improper for the district court to find EchoStar in contempt of the disablement provision if the modified technology was outside the scope of the asserted claims. While it is true that in fringement is generally essential for a violation of an injunction against infringement, KSM , 776 F.2d at 1528, it is also settled law that as long as EchoS tar had explicit notice of what it had been ordered to do and had refused to do so, the court possessed broad equitable powers to enforce its decree. See Abbott , 503 F.3d at 1383; see also KSM , 776 F.2d at 1524 (“A civil contempt proceeding for violation of an in junction issued after pat ent litigation, while primarily for the benefit of t he patent owner, nevertheless, in volves also the concept of an affront to the court for failu re to obey its order.”). The dissent suggests that underthe trial court’s interpre tation of the disablement provision, in order to escape contempt, Ec hoStar was effectively required to go into each of its customers’ homes and physica lly replace each cabl e box containing any DVR functionality with an identical cable box with the same so ftware. However, use of identical boxes with the same so ftware would be in contempt of the court’s infringement provision. See Additive Controls , 154 F.3d at 1350, 1356 (affirmi ng the district court’s contempt finding where the redesigned products were manufactured by a successor company and marketed under a different name). Regardless of its validity, which was

2009-1374 23never before us, the district court’s disablem ent provision was clear ly meant to prevent EchoStar from providing DVR func tionality on its receivers. In reading the disablement provision as appl ying only to infringing DVR software, the dissent relies on the fact that TiVo a cknowledged to the district court that EchoStar could reprogram receiver software at its existing placements to disable the DVR component within those receivers via satell ite. We find the manner in which the disablement could be accomplished irrelevant to the issue at hand. TiVo never conceded to the district court that EchoStar s hould be allowed to replace the infringing DVR software component (in its then-adjudged in fringing hardware) with a potentially noninfringing software component either via satellite or otherwise. We find that EchoStar had ample notice of what it had been ordered to do. Further, by adding a separate provision on disablement and specif ically defining what it meant by “DVR functionality” in its order, t he district court made its expec tations sufficiently clear, and more importantly fulfilled the requirements of Rule 65(d). Finally, we address EchoStar’s request that we vacate the district court’s recent amendment to its injunction requiring EchoStar to inform the court of any further redesign attempts and to seek preclearanc e before implementing a design-around. We deny that request. Pursuant to 35 U.S.C. § 283, district courts are authorized to “grant injunctions in accordance with the principles of equity to pr event the violation of any right secured by patent, on such terms as the court deems reas onable.” We have re peatedly stated that district courts are in the best position to fashion an injunction tailored to prevent or remedy infringement. See Joy Techs., Inc. v. Flakt, Inc. , 6 F.3d 770, 777 (Fed. Cir.

2009-1374 241993). Although we have discouraged judicial restraint of noninf ringing activities, Johns Hopkins Univ. v. CellPro, Inc. , 152 F.3d 1342, 1367 (Fed. Cir. 1998), we have also held that broad injunctions that preempt future design-arounds may be used in exceptional cases where the district court reasonably concludes that su ch measures are necessary to compel compliance with the court’s orders. See Additive Controls , 154 F.3d at 1356. Where an infringer refuses to acknowledge a judicial finding of in fringement and obey an injunction barring future infringement, t he district court has broad discretion in enforcing its orders. Having presided over this case for many years, the district court was in a unique position to evaluate t he likelihood that EchoStar would continue to infringe TiVo’s patent. Id. (emphasizing that the “district court’s familiarity with the proceedings” justified upholding an injunction r equiring pre-approval of “any activities with respect to” infringing devices); Spindel fabrik Suessen-Schurr Stahl ecker & Grill v. Schubert & Salzer , 903 F.2d 1568, 1577 (Fed. Cir. 1990) (exp laining that repeated and blatant violations of the district court’s earlier inj unction fully justified broa d provisions requiring court approval before implement ing design around efforts). Gi ven EchoStar’s refusal to disable the DVR functionality in its existing de vices and the fact that its original attempts to design around TiVo’s patent were wholly unsuccessful, t he district court had ample justification for its determination that court pre-approval of any new design-around effort was necessary to prevent future infringing activity. We see no reason to set this determination aside. CONCLUSION We have considered the EchoStar’s remaining arguments and do not find them

2009-1374 252009-1374 26 persuasive. Accordingly, the judgm ent of the distri ct court is AFFIRMED

## 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 LI ABILITY COMPANY, ECHOSTAR SATELLITE LLC, and DISH NETWORK CORPORATION, Defendants-Appellants. Appeal from the United States District Court for the East ern District of Texas in case no. 2:04-CV-01,Chief Judge David Folsom. RADER, Circuit Judge , dissenting. I. “Contempt . . . is not a sword for w ounding a former infringer who has made a good-faith effort to modify a previously adj udged or admitted infringing device to remain in the marketplace. Rather, the modifying party generally deserves the opportunity to litigate the infringement question at a new trial, ‘particularl y if expert and other testimony subject to cross-examination would be helpfu l or necessary.’” Arbek Mfg. Inc., v. Moazzam , 55 F.3d 1567, 1570 (Fed. Cir . 1995) (quoting KSM Fast ening Sys., Inc. v. H.A. Jones Co. , 776 F.2d 1522, 1531 (Fed. Cir. 1985)). Citing a broad injunctive provision and a substantially-altered accused design, this court today punishes a good faith design-around effort.A full examination of the disputed claim shows little similarity between the former infringement proceedings and the issues now before this court. The accused structures are different. The theories of infringem ent are different. The pertinent claim constructions apply in ways that are different. The parties’ positions have flip-flopped. The modified method operat es in a significantly different way from the old. Indeed, the only thing that is not different is the id entity of the parties themselves. These differences deserve a trial, not a summary contempt proceeding. II. “Even if Echostar had achieved a non-in fringing design around, this Court would still find that Echostar is in contempt of this Court’s permanent injunction.” Those words come directly from the distri ct court’s contempt order. In other words, even assuming the modified technology falls outside the asserted claims, Echostar would still be in contempt. How can that be correct? Under its strained interpretation of its earlier injunction, th e district court effectively required Echostar to go into each of its customers’ homes and physically remove each cable box containing anyDVR functionality — infr inging or not! The trial court required this course of action even in the face of bot h parties’ recognition that a satellite link could more easily remove or re place the “infringing” technology. In other words, if Echostar would enter each home and replace each of its cable boxes with identical cable boxes uploaded with the same software, it would escape contempt. These absurdities spring from the “disablement provision:” Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but

2009-1374 2192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, i.e., di sable all storage to and playback from a hard disk drive of television data) [sic] shall not be enabled in any new placements ofthe Infringing Products. While this court manages to find a way to refashion the intent and purpose of the disablement provision, no reasonable patent atto rney would read it as this court does. The district court’s injunction applied only to infringing products. The court did not refer to any modified product or any other “DVR functionality” for that matter. Yet, the injunction today applies to anyDVR functionality regardl ess of infringement. Neither Tivo nor this court cite to any case supporting such a broad injunction. In fact, this court’s case law directs otherwise: “If a trial court is faced with an overly broad injunction during a contempt pr oceeding, the court should interpret it according to the rule of law quoted from KSM, ” which prohibits only “infringement of the patent by the devices adjudged to infringe an d infringement by devices no more than colorably different therefrom.” Int’l Rectifier Corp. v. IXYS Corp. , 383 F.3d 1312, 1316 (Fed. Cir. 2004). This court only gives that rule lip service. The reason for this rule is clear: “[ T]hose against whom an in junction is issued should receive fair and precisely drawn notice of what the injunction actually prohibits.” Granny Goose Foods, Inc. v. Bhd. of Teamsters , 415 U.S. 423, 444 (1974). This premise has “led courts to construe injunctions narrowly where they failed to give adequate notice that particular conduct was enjoined.” Abbott Labs. v. TorPharm, Inc. , 503 F.3d 1372, 1382 (Fed. Cir. 2007). Because no reasonable patent attorney would have read the disablement provision to cover w hat is now enjoined, th is court’s decision sounds rather hollow in referring to Echostar’s failure to appeal. In the end, Echostar

2009-1374 3should rely on the most reasonable interpre tation of the disablement provision and avoid unnecessary appeals. If the district court wished to enjoin the broad conduct it now claims it did, it should have done so wit h a few simple words and given clear notice of its expectations. Instead, itprovides an artificial, after- the-fact justification for its contempt finding. In the proceedings leading up to the in junction, Tivo used broad language to request an injunction that it characterized as “narrow.” In defending the very language ultimately adopted by the district court, Tivo stated that it was only seeking to enjoin “infringement of the patent by the devices adjudged to in fringe and infringement by devices no more than colorabl y different therefrom” — “ nothing more, nothing less.” The record belies these representations. For starters, this court and Tivo dr aw a dichotomy between hardware and software claims. At the time of the injuncti on, neither party nor the district court offered such a distinction. To the contrary, the only distinction tendered by Tivo was between “new placements” and “existing placements.” New placements referred to cable boxes sitting on the shelves of retailers and distribut ors awaiting distribution to customers. Existing placements referred to cable boxes already installe d in customers’ homes. As to the former category, Tivo requested that Echostar “be ordered to recall and retrieve from its distributors and retailers the infringi ng DVR products that have not yet entered the stream of commerce or are in the possession of the distri butors and retailers.” That is, for this limited category of products, Tivo request ed the exact proscription it now seeks to apply to all of Echostar’s products. Echostar encouraged the trial court to “enjoin only the provision ofinfringing DVR software to those boxes upon activation .”

2009-1374 4The district court ultimately sided with Tivo: Defendants are hereby FURTHER ORDERE D immediately to recall and retrieve from their distributors and retailers the Infringing Products that have not yet entered the st ream of commerce or are still in the possession of Defendants’ distributors and retailers. The existing placements, however, were a di fferent story. As to that category of products, Tivo admitted that Echostar coul d avoid infringement and the scope of the putative injunction by merely reprogrammi ng and disabling the DV R functionality in question. Tivo made the following admission: Echostar can reprogram and disable the in fringing DVR func tionality in all existing DVR units byupdating their software via sa tellite transmission. . . . Echostar has used this method of updating software routinely. These statements appear direct ly below the heading “Exist ing placements” in Tivo’s brief supporting an injunction submitted after t he jury returned a verdict of infringement on both hardware and software claims. Yet su rprisingly, this court now claims that Echostar was on notice of the broad reach of its injunction. Again, Tivo expressly acknowledged that the infringing technol ogy could be removed and replaced via satellite. Tivo now disingenuously contends that its intention du ring all stages of the proceedings was to force Echostar to physically remove all of its products containing the infringing software. Given Tivo’s clear ba it-and-switch ploy, this court should have recognized and forbid this game. III. Turning to the “infringement provisi on,” contempt proceedings are not the appropriate forum to resolve the infringement issues on the “parses video and audio data” limitation. Echostar’s modified design seems far “more than colorably different”

2009-1374 5such that “substantial open issues with respect to infringement” remain. KSM , 776 F.2d at 1530. In the original tria l, Tivo identified Echostar’s “v ideo frame start-code detection” as infringing the limitation. That “start code” technology parse s the digital video and audio data before storing to memory so that the user can later conveniently reference the individual frames when fast forwarding or rewinding th rough the data. According to Tivo’s expert, the technology was nece ssary to produce a viable DVR. In its redesign efforts, Echostar eliminat ed its video frame start-code detection in its entirety. Rather than parsing through all the video and audio data before storing onto the system, the modified design, upon request fr om the user, statistically estimates where a given frame might appear long after storage of the video and audio data. This change was a critical component of a vast redesign effort by fifteen engineers working full time for over 800 total hours. Befo re proceeding, Echostar got two separate approvals of this change from an independent law firm. Because of the substantial change to t he design, Tivo abandons its infringement theory premised on the start-code feature. Instead, Tivo focu ses on an entirely different structure in the modified devic e — the PID filter. The PID filter had been part of the prior design but was never accused of in fringement. Every channel broadcasted over Echostar’s system carries a particular set of numbers known as the PID number. Broadcast data breaks into tw o discrete components: header information and payload. The header information contains the PID num ber. The payload contains the actual video and audio data for the particular channel. Before passing through the PID filter, the payload information is scrambled to avoid piracy. When a user turns the cable box to a particular channel, the PID filterreceives a message to pass the payload

2009-1374 6information under that number to the user. The problem with Tivo’s ne w theory is simple: it had previously disclaimed the PID filter as an infringing structure. Actually Tivo deliberatel y disclaimed it to avoid prior art during the infringement tria l. When asked directly by Tivo’s counsel about the PID filter, Tivo’s expert admitted: And so inside the receiver card, the input section, yes, there is a little bit of what you might call separat ion in order to perform this translation, a little bit of what you might call even a type ofparsing in order to pick out the correct packets and turn them and convert them into the MPEG-I.
But just because these are words you use to describe this conversion process, you shouldn't confuse that with the claim terms. And when you're done with the input sect ion, it's afterwards that comes the part of the claim that talks about the media sw itch that parses and separates

. For its part, Echostar argued that the PID filter did “parse video and aud io data.” Tivo’s arguments won at trial. Now the parties have directly swit ched positions. Tivo finds infringement in the PID filter; Echostar fi nds no application of t he claimed elements. A “modifying party generally deserves the opportunity to litig ate the infringement question at a new trial, ‘particularly if ex pert and other testimony subject to crossexamination would be helpful or necessary.’” Arbek , 55 F.3d at 1570 (quoting KSM , 776 F.2d at 1530). At the contempt proceedings, both parties proffered conflicting expert testimony. Echostar’s expert highlighted that the PID filter did not even look to the “video and audio” data because its role was restricted to passing only header information. Indeed, at the point and time when the PID entered t he broadcast chain, the payload — i.e., the audio and video data — was necessar ily scrambled for security. In other words, the PID filtercould not reference the audio and video data even if it

2009-1374 7wanted to. And, of course, Ti vo had previously renounced the PID filter as an infringing
structure. This record cannot support this contempt conclusion. The very structure which provided the basis for Tivo’s infringement theory was eliminated byEchostar in its modified design. This redesign, at a mini mum, shows Echostar’s substantial good faith efforts to comply. As noted, the new accus ed structure is and has always been a part of Echostar’s design. Moreover, it has not changed its function in the slightest. Still, ignoring these problem s, Tivo’s expert in the contempt proceedings relied on the district court’s substitu tion of “analyzes” for the term “ parses.” Tivo also stressed that Echostar engineers used the term “parsing” in conjunction with the PID filter. Loose language, particularly in reference to features ruled out as infringi ng technology earlier, should not provide the basis for contempt. Rather, “[i]n litig ated cases, the injunction must be interpreted in light of the rulings of the court on the scope of the claims. The patent owner may not, in contempt proc eedings, seek to broaden the scope of the claims which were adjudicated and, ther eby, catch the modified device.” KSM , 776 F.2d at 1529; see also Cal. Artificial Stone Paving Co. v. Molitor , 113 U.S. 609, 618 (1885) (“Process of contempt is a severe remedy, and should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant’s conduct.”) (emphasis added). As with the disablement provision, this court again relies on a distinction between hardware and software claims to vitiate Tivo’s previous disclaimer of the PID filter. To my eyes, this distinction des erves no credibility on this record. Tivo only presented one theory of infringement to the jury. T hat theory did not depen d on any distinction

2009-1374 82009-1374 9 between hardware or software claims. To the contrary, Tivo’s theory spoke to all terms across all asserted claims. Tivo’s expertadmitted during the contempt proceedings: Q. Now back before the original trial, Dr. Storer, your opinion was that parsing meant the same thing in claim 1 and claim 31 and 61, right? A. I took parsing to be analyze as t he court construction, and took it to mean the same thing, absolutely.

Q. In all the claims?

A. In all the claims. Tivo simply provided no evidence for a reas onable jury to make any infringement finding limited to either the hardware or software cl aims. Nor were Echostar’s statements about the PID filter limited to either software or hardwar e claims. Both types of claims stood and fell together. At trial, the jury returned a verdict of infringement based on the record. That record is entirely different from the theorie s, evidence, and positions in the contempt proceeding. Tivo should not be able to bootstrap its new, previously abandoned infringement theory to that verdict. If Tivo believes that Echost ar’s new design still infringes its patent, it should file a new infringem ent suit, not attempt to short circuit a full proceeding. In its current form, this decision discourages good faith efforts to design around an infringement verdict.