November 2013
Contempt Motion’s Colorable-Differences Inquiry Must Focus on How the Patentee Previously Proved Infringement
| Judges: Rader, Prost (author), Taranto |
| [Appealed from D. Del., Judge Stark] |
In nCUBE Corp. v. SeaChange International Inc., No. 13-1066 (Fed. Cir. Oct. 10, 2013), the Federal Circuit affirmed the district court’s denial of a patentee’s motion for contempt of a permanent injunction order, holding that the district court did not err in finding that the patentee failed to prove that the infringer’s modified product was not colorably different from its infringing product.
ARRIS Group, Inc. (“ARRIS”) (formerly nCUBE Corporation) and SeaChange International Inc. (“SeaChange”) are providers of video-on-demand products and services. ARRIS owns U.S. Patent No. 5,805,804 (“the ’804 patent”), which claims a media server capable of transmitting multimedia information on demand. SeaChange was found to willfully infringe the ’804 patent, and a district court entered an order enjoining SeaChange from selling its infringing Interactive Television (“ITV”) system and any product not more than colorably different therefrom. SeaChange began selling a modified version of its ITV system, and ARRIS filed a motion for contempt. The district court found that ARRIS failed to prove contempt by clear and convincing evidence, and ARRIS appealed.
On appeal, the only claim-at-issue was method claim 4 of the ’804 patent, which included the step of “updating a connection service table with [an] upstream physical address.” Slip op. at 4 (emphasis omitted). In the infringement suit, ARRIS successfully argued that SeaChange’s ITV system met the limitation based on the system’s Connection Table (i.e., “connection service table”) and its 20-byte identifier known as the ClientID (i.e., “upstream physical address”). ARRIS never contended in the infringement suit that the ITV system met the limitation based on its 10-byte identifier known as the SessionID, which includes a MAC address identical to that of the ClientID. In SeaChange’s modified system, the processing of the ClientID that previously occurred in the Connection Table was relocated and performed elsewhere.
“As the separation of the colorable-differences and infringement components in TiVo indicates, the colorable-differences standard focuses on how the patentee in fact proved infringement, not what the claims require. In this way, the TiVo standard preserves values of notice and preservation of trial rights by keeping contempt suitably limited.” Slip op. at 10.
On appeal, ARRIS argued that the district court erred by failing to analyze the system as one in which the ClientID had been removed altogether, not modified, and by failing to compare the infringing system’s Connection Table, which was updated with the SessionID and the ClientID, to the modified system’s Connection Table, which was updated with only the SessionID.
The Court disagreed with ARRIS’s removal argument, reasoning that processing the ClientID outside the Connection Table constituted a modification, not a removal, of the accused element because both the Connection Table and the ClientID were still present in the system. Moreover, the Court found that the modification was significant because the modified system’s ClientID, which did not update in the Connection Table, was indisputably outside the claim. The Court thus held that the district court properly found that ARRIS failed to prove that the functionality of the ClientID in the infringing ITV system was not colorably different from the functionality of the ClientID in the modified system.
The Federal Circuit also rejected ARRIS’s argument that the district court erred by failing to compare the infringing system’s Connection Table and the modified system’s Connection Table. The Court reasoned that ARRIS only relied on the ClientID to prove infringement at trial and never identified the MAC address, found in both the ClientID and the SessionID, as the ClientID’s infringing aspect. The Court further concluded that there were significant differences between the ClientID and the SessionID, including that they were indisputably made of different constituent numbers and performed distinct functions. ARRIS argued in response that it need not prove every possible avenue of infringement at trial, and thus was under no obligation to prove that the SessionID also met the upstream physical address of the claim. Nonetheless, the Court explained that “the colorable-differences standard focuses on how the patentee in fact proved infringement, not what the claims require.” Id. at 10. The Court stated that, “[i]n this way, the TiVo standard preserves values of notice and preservation of trial rights by keeping contempt suitably limited.” Id. Therefore, ARRIS could not rely on the modified system’s SessionID or MAC address to show that its Connection Table was not colorably different from the infringing system’s Connection Table where ARRIS’s infringement proof focused specifically on the ClientID.
*Charles W. Mitchell is a Law Clerk at Finnegan.
