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17 IPL Newsl. 1 (1998-1999)

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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
   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-
          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
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Officers, Council and Committee Chairs ....

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