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Fed Cir Clarifies TiVo Colorable-Differences Standard

By Gabriella Khorasanee, JD on October 16, 2013 | Last updated on March 21, 2019

Litigation that has been ongoing for twelve-years is finally over (unless the loser appeals to the Supreme Court), with the Federal Circuit resolving a case involving streaming video system technology, reports Globe Newswire.

While the technology in dispute may be difficult to comprehend, the Federal Circuit was clear in clarifying its previous en banc decision in TiVo Inc. v. EchoStar Corp.

nCube Corp. v. Seachange Int'l Inc. -- Background

nCube Corp. (now "Arris") owns patent No. 5,805,804 ("'804") "which discloses
and claims a media server capable of transmitting multimedia information over any network configuration in real time to a client that has requested the information." In 2001, Arris initiated a patent infringement action against Seachange alleging violation of the '804 patent.

To prove infringement, Arris focused on Seachange's systems use of a ClientID. The jury found that Seachange violated Arris' '804 patent, and the Federal Circuit affirmed. As a result Seachange was permanently enjoined from selling devices that infringe the '804 patent, or are not more colorably different than the parts that were deemed infringing in the previously "Adjudicated Claims of the '804 patent."

Seachange modified its devices, and Arris claimed that Seachange was still infringing the '804 patent in violation of the permanent injunction. After negotiations failed, Arris filed a motion to hold Seachange in contempt of the permanent injunction.

The district court found that Arris did not prove contempt by clear and convincing evidence, and denied its motion. On appeal, the Federal Circuit agreed. In coming to this conclusion, the court relied on, and clarified its previous holding, in TiVo. Under TiVo, the court held that "whether more than colorable differences are present requires the court to focus 'on those elements of the adjudged infringing products that the patentee previously contended, and proved, satisfy specific limitations of the asserted claims.'"

Here, because Arris relied on the ClientID at trial, and not the SessionID, it could not rely on the SessionID to prove that Seachange's modified product was infringing. Arris argued that it was not required to prove every possible method of infringement, and though the court agreed, it noted that in order to meet the colorable differences standard, it must reply on previously adjudicated claims. Such a rule would ensure "notice and preservation of trial rights."

This case is significant because a patentee must also consider how a modified product may continue to infringe a patent. To preserve its rights in a contempt situation, the patentee must be sure to prove every method of infringement that it can foresee being an issue in a modified product as well.

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