By Dabney Carr
In a recent ruling, Judge Lee of the Eastern District of Virginia held that an injunction after a finding of patent infringement should not require the defendant to submit its design-around products to the patentee for inspection and testing before introducing those products into the market. MeadWestvaco Corp. v. Rexam PLC, Case No. 1:10CV511, 2012 U.S. Dist. LEXIS 82148 (E.D.Va. June 12, 2012), found here. Our previous posts on the MeadWestvaco case can be found here, here and here.
The successful patentee, MeadWestvaco, proposed a permanent injunction requiring that before introducing a design-around product, the defendants (1) provide the product to MeadWestvaco for inspection and testing, (2) provide an explanation for the basis for non-infringement, and (3) if MeadWestvaco does not agree that the design-around avoids infringement, defendants can seek relief from the Court.
Judge Lee refused to include such pre-approval in the injunction order. Such broad injunctive relief, the Court held, should only be used in exceptional cases. In the cases cited by MeadWestvaco, the defendants repeatedly violated an existing injunction order, justifying the exceptional relief, but no such circumstances existed in this case.
MeadWestvaco's proposed pre-approval language also seems to improperly shift the burden to a defendant to prove that a design-around product should be enjoined. As the Court pointed out, "the only acts an injunction may prohibit are infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices." MeadWestvaco, slip op. at 4 (quoting Int'l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004) [enhanced version available to lexis.com subscribers]). In addition, a competitor's design-around efforts "generally promote innovation, a goal consistent with the policies of our patent system." Id. at 6.
Under the standards for determining contempt of an injunction recently set down by the Federal Circuit in TiVo v. Echostar, 646 F.3d 889, 882-83 (Fed. Cir. 2011) [enhanced version available to lexis.com subscribers] a patentee must show, by clear and convincing evidence, both (1) that a design-around product is not more than colorably different from a product found to infringe and (2) that the design-around product actually infringes the patent. MeadWestvaco's proposed language is thus directly contrary to TiVo because it relieves MeadWestvaco of the burden of showing the lack of colorable differences in a design-around product and shifts the burden of proof of infringement to the defendants.
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