The United States Court of Appeals for the Federal Circuit yesterday announced that they would take up the matter of Tivo, Inc. v. EchoStar Corp. en banc. The earlier panel decision, which was issued on March 4, 2010, is now vacated and the appeal is reinstated. For more information about the original panel decision see TiVo Stock Surges Over 50% on Patent Decision in EchoStar Case. While en banc rehearings are rare, it seems that the Federal Circuit is showing increased willingness to take high profile cases en banc. Recently the Federal Circuit agreed to hear Hyatt v. Doll en banc, which relates to whether new evidence can be submitted in an appeal of a decision of the Board of Patent Appeals and Interferences to the United States Federal District Court for the District of Columbia. See CAFC Grants En Banc Review of BPAI to District Court Appeal. Just weeks ago the Federal Circuit also agreed to hear important matters of inequitable conduct en banc, taking up Therasence, Inc. v. Becton Dickinson and Co. See Federal Circuit to Consider Inequitable Conduct En Banc. Perhaps this may show an increased willingness to settle certain fundamental areas of law, which would be a welcome occurrence after what appears to be in-fighting among CAFC Judges on a variety of important issues.

The en banc appeal will be heard on the basis of the original filed briefs, additional briefing and oral argument, with the oral argument date and time to be determined. The Defendant-Appellant’s (“EchoStar Corporation et al.”) new briefs are due within 42 days from yesterday, and Plaintiff-Appellee’s (“Tivo”) response briefs are due 42 days after service of the EchoStar’s new briefs being served. The EchoStar’s reply brief, if any is to be filed, must be filed within 28 days after service of the Tivo’s response brief. Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.

After the original panel decision EchoStar filed a request for reconsideration and a petition for rehearing en banc. The panel requested a response from Plaintiff-Appellee TiVo Inc. The court granted Defendants-Appellants leave to file a reply in support of the petition. The court also granted leave to Five Law Professors to file a brief as amici curiae in support of the petition. The petition for reconsideration was considered by the panel that heard the appeal, and thereafter the petition for rehearing en banc, the response to the petition, the reply, and the brief of the amici curiae were referred to the circuit judges who are authorized to request a poll on whether to rehear the appeal en banc. A poll was requested, taken, and the Federal Circuit decided that the appeal warrants en banc consideration.

The Federal Circuit has requested additional briefing on the following issues:

Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper? How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985). Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt? Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

Oral argument will be held at a time and date to be announced later, likely sometime late Fall 2010.