10.9 Enforcement of judgments
Following entry of a permanent injunction, infringing parties often modify the infringing product or process in an effort to design around the claimed invention and begin marketing the modified product. If the patent owner believes that the redesigned product infringes, it can challenge the design-around by commencing a second patent infringement action. In limited circumstances, the patent owner can instead seek to have an enjoined party held in civil contempt for violating the injunction.
To prove contempt, the patent owner must provide clear and convincing evidence both that the newly accused product is not more than colorably different from the product found to infringe and that the newly accused product actually infringes.283 To resolve this first and “primary” element, the court must determine “whether the newly accused product is so different from the product previously found to infringe that it raises ‘a fair ground of doubt as to the wrongfulness of the defendant’s conduct.”’284 In making this determination, the court focuses on “those aspects of the accused product that were […] a basis for the prior finding of infringement, and the modified features of the newly accused product.” If an element previously found to infringe has been modified or removed, the court should determine whether that modification is significant.285 If the change is nonobvious, it is usually found to be a significant difference.286 If the product’s modification does render it more than colorably different, whether or not it still infringes the patent, there is no contempt; instead, infringement must be proven in a new jury trial.287
The test’s second, independent element is that the accused product must still infringe. In making this assessment, the court must determine that each element of a claim is infringed based upon the claim construction applied in the liability case.288 It must, however, construe any additional claims necessary to determine the infringement issue.289 Finally, the court must determine whether there is clear and convincing evidence that the specific provisions of the injunction were violated. In making this determination, the injunction must be construed narrowly, with any ambiguity resolved against the patent owner.290 The propriety of the injunction or its specific provisions, however, is not subject to challenge during the contempt proceeding.291
In assessing the appropriate penalty for contempt, the court has wide discretion. In exercising this discretion, it may consider the infringer’s “diligence and good faith efforts” to create a noninfringing product. While neither diligence nor good faith is a defense to contempt, these factors are relevant to the appropriate penalty.292
As part of or following a contempt proceeding, the court may be asked to modify its injunction to assure that similar future infringement does not take place by adding a provision requiring that any subsequent claimed design-around be submitted to the patent holder or the court before public distribution. Such an order is allowed if the court determines that it is reasonably necessary to obtain compliance with the prior injunction.293