Federal Circuit Changes Patent Infringement Analysis In A Contempt Hearing

Originally published September 15, 2011

In a recent en banc decision of the Federal Circuit, TiVo Inc. v. EchoStar Corp., U.S. Court of Appeals for the Federal Circuit, 2009-1374, decided April 20, 2011, the Court unanimously overruled its previous two-step test, the KSM test, regarding patent infringement in a contempt hearing, which first requires a threshold inquiry of the appropriateness of a contempt hearing before a district court can adjudge whether a redesigned product continues to infringe. The court held that the KSM inquiry "confuses the merits of contempt with the propriety of initiating contempt proceedings," and replaced that test by allowing broad discretion to the district court to determine the propriety of a contempt proceeding based on the facts presented. While the court held that the district court did not abuse its discretion in holding the contempt proceedings, it vacated the finding of contempt and remanded to the district court to make