Amicus brief of Distinguished Economists, Rehearing En Banc, TiVo Inc. v. EchoStar Corp., et al., Federal Circuit
“The choice between contempt proceedings and new infringement proceedings for a newly accused device should satisfy several important objectives: (1) maintaining consistency with legal precedent, (2) fostering efficiency and due process, and (3) preserving incentives to invent, incentives to invest in and commercialize new technologies, and third-party incentives to avoid infringement and to design around. On the particular issue in this case, these different objectives all point in the same direction.
To address these objectives, this brief argues that the court should apply a test based on the doctrine of equivalents (“DOE”). If the initial infringing device and the newly accused device are “substantially the same” in the sense of the DOE, the court should evaluate the newly accused device through contempt proceedings. Conversely, if the initial infringing device and the newly accused device are not “substantially the same” in the sense of the DOE, the court should evaluate the newly accused device through infringement proceedings. Whichever threshold is used, there are burdens on the patentee, the defendant, and the legal system. Thus it makes sense to look at keeping costs low for a given level of accuracy. We argue in this brief that application of the DOE is the appropriate mechanism for determining the appropriateness of a contempt proceeding to enforce an injunction against a newly- accused device, and that application of the doctrine here counsels in favor of affirming the District Court’s decision.”