Emory Law Journal


Spurred by TiVo Inc. v. Dish Network Corp., this Comment proposes a factor-based framework for determining when contempt proceedings are appropriate in a patent infringement case. Once a court determines that an accused device infringes a patent and issues an injunction, the infringing party will often try to design around the injunction by creating a modified device. Patentees can then respond to potential continued infringement by instituting a new infringement suit or by making a motion for contempt. Previously, under the contempt framework established by KSM Fastening Systems, Inc. v. H.A. Jones Co., the district court was required to undertake a substantial analysis into the propriety of contempt proceedings. Unfortunately, TiVo, which overruled KSM, eliminated the threshold inquiry into the propriety of contempt proceedings and produced a contempt standard that creates a lack of notice, certainty, and consistency that will adversely affect all of the parties involved. A comprehensive contempt framework should provide the district courts with the means of creating a reasoned distinction between modified devices that merit contempt proceedings and those that merit a separate infringement suit. This Comment argues that the Federal Circuit should reinstate the threshold inquiry and proposes a factor-based analysis to strengthen the KSM standard. The result is a comprehensive framework for determining whether contempt proceedings are appropriate that would cure the deficiencies of the TiVo contempt analysis.