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17 IPL Newsl. 1 (1998-1999)

handle is hein.journals/iprolane17 and id is 1 raw text is: A PUBLICATION OF THE AMERICAN BAR ASSOCIATION SECTION OF INTELLECTUAL PROPERTY LAW VOLUME17, NUMBER 1 Fall 1998 Violations of Injunctive Orders: Contempt Proceedings in Patent Cases- a Potent Weapon or a Strong Shield? BY WILLIAM C. NC.VELL JR. The prevailing plaintiff-patent hold- er has spent hundreds of thousands of dollars and considerable time and effort in taking the infringer to task through trial. Together with the mone- tary award of damages and lawyer's fees and costs, the court also has grant- WlliIamC. NonellJr. ed plaintiff's plea for equitable relief in the form of a permanent injunction for the balance of the long life of the patent. It is not at all unusual for the value to a plaintiff of this equitable injunctive relief to be considerably more than the legal monetary remedies ordered by the court: The plaintiff wants and is entitled to such an injunction by statutory provision.' The defendant or others acting in concert or in privy with the defendant desire to exercise their legal right to design around2 the claims of the patent, in order to continue the heretofore viable business and market enjoyed for the original device found to be an infringe- ment. The new product is developed, marketed by the defendant and shortly thereafter discovered by the plain- tiff. After procuring one of the newly designed products, the plaintiff concludes that the new product does, indeed, infringe the patent. This, then, is the typical fact pattern3 forming the basis of either another lawsuit for patent infringement or the initiation of contempt proceedings brought before the court that entered the permanent injunction. From both the plaintiff's and defendant's perspective, that route is the best or proper choice? Is there a choice? What will a court do?: Play the comedy, then the tragedy or, as in Strauss's Ariadne Auf Naxos, play the comedy and the tragedy simultaneously? This paper will explore the substantive and procedur- al issues involved in contemplated contempt proceedings based on an allegation of a violation of a permanent injunction prohibiting the manufacture, use or sale of a patented product or method. The paper will conclude Mr. Norvell is with Beirne, Maynard & Parsons, L.L.P., in Houston, TX. with a comparison of certain aspects of a contempt pro- ceeding with those of a second lawsuit. The Initial Injunctive Order: A House Is Only as Strong as Its Foundation The genesis of a strong (or, as well, a weak) con- tempt proceeding has its origin through the modern day injunctive power of Rule 65(d), Fed. R. Civ. P., as fol- lows: Every order granting an injunction and every restraining order shall set forth the reason for its issuance; shall be specific in terms; shall describe in reasonable detail and not by reference to the complaint or other document, the act or acts sought to be restrained; and is binding only on the parties to the action, their officers, agents, servants, employees and lawyers and on those persons in active concert or participa- tion with them who receive actual notice of the order by personal service or otherwise.4 Thus, Rule 65(d) sets forth both substantive and per- sonal scope. With respect to the requirement of specificity of terms, the Federal Circuit, in reversing the entry of a (continued on page 3) Keeping Current with the Chatir .-', d Software Patents Are Now Reall iifBusirte: Young La nyers Column: A Show abo6t Not IPL Personnels ............ I . . .. ... I . .. Washington Legislative Report ...... Recent Developments in htelleci lIPr9._, PP Group News ................................ Officers, Council and Committee Chairs .... vi Lr N TiE ECTION (ONTSE AIM i WV~'S wtu s iTF-

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