Taser's Contempt Motion Denied Where Colorable Differences Existed Between Infringing Product and Newly Accused Product

February 1, 2012

After the district court found that defendant's electronic control device literally infringed certain claims of a patent owned by Taser and denied defendant's summary judgment motion on defendant's claims of invalidity and unenforceability, Taser filed a motion for contempt and an application for an order to show cause. In its motion, Taser asserted that Karbon Arms had purchased defendant's assets as part of an insolvency proceeding and that Karbon Arms was producing the Karbon MPID which was essentially the same as the enjoined product sold by defendant.

The district court then noted that "[i]n order to enforce an injunction in a patent case, the party seeking to do so 'must prove 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.' TiVo Inc. v. EchoStar, 646 F.3d 869, 882 (Fed. Cir. 2011) (en banc)." To apply the "more than colorable differences" test, the court must first compare the features that were found infringing to the corresponding feature of the newly accused products. If the court finds that only colorable differences exist, then the court must determine whether the newly accused product infringes the relevant claims.

The district court then turned to the specific products at issue. As part of this analysis, the district court noted that it had only found infringing the newer products made by defendants (stun guns that used a full-wave rectifier) and not the older products made by defendants (stun guns that used a half-wave rectifier). "After reviewing the parties' summary judgment briefing and the Court's summary judgment order, the Court concludes that the only version of the S-200 that the Court found infringed claims 2 and 40 of the '295 patent was the newer, full-wave rectifier, version of the S-200. Because the Court made infringement findings only on the newer version of the S-200, the injunction does not also cover the older version of the S-200. In making its decision on contempt, the Court therefore will compare the newer version of the S-200 with the Karbon MPID to determine whether Mr. Gruder and Karbon Arms have violated the injunctions."

The district court next analyzed whether Taser had proven by clear and convincing evidence that the Karbon MPID was not colorably different from the newer version of the S-200. Taser asserted that the Karbon MPID is not more than colorably different than the new version of the S-200 because both have power supplies that operate in dual modes by generating a high voltage and then generate a lower voltage designed to incapacitate a target. The district court disagreed finding that a focus on voltage rather than the distinct modes of circuit operation was misplaced. To reach this conclusion, the district court noted that it had emphasized that dual-mode operation requires more than just a high voltage burst followed by a low voltage burst.

"In finding infringement, the Court emphasized that dual-mode operation requires something more than just a high voltage burst followed by a lower voltage burst and discussed the S-200's ability to operate in flyback and non-flyback modes. First,..., the '295 patent does not merely teach the output of high voltage followed by a low voltage... The claimed invention is not merely a low voltage output, but a distinct manner of circuit operation which generates the low voltage output more efficiently, thereby alleviating the inefficiencies present during the low voltage output phase of single-mode guns. . . . Further, as discussed above, the Court relied on both Dr. Rodriguez' report and Mr. Saliga's testimony to identify the two distinct manners of circuit operation in the S-200 as a first flyback mode and a second non-flyback or direct drive mode. Additionally, Dr. Rodriguez' conclusions are supported by the deposition testimony of Mr. Saliga, who not only describes two modes of operation - flyback and direct drive -but distinguishes them by noting that in the direct-drive mode, the transformer does not have to 'kick-up' the voltage."

"Taser has failed to meet its burden of proving that the Karbon MPID is not more than colorably different from the S-200 because the Court found the S-200 infringed the '295 patent primarily because the S-200 operated in a first flyback mode that generated a higher voltage followed by a second non-flyback or direct drive mode that generated a lower voltage. And as previously stated with respect to the older version of the S-200, Karbon through Dr. DiEuliis' testimony at the contempt hearing and the Mr. Saliga's deposition testimony, clearly established that a half-wave rectifier is not capable of operating in non-flyback mode. Taser made no arguments to the contrary in either its briefing or at the contempt hearing."


Therefore, the district court concluded that Taser had failed to meet its burden of proof because the presence of a half-way rectifier made the Karbon MPID more than colorably different from the S-200. Accordingly, the district court therefore did not need to address whether the Karbon MPID infringed the Taser patent.

Taser International, Inc. v. Stinger Systmes, Inc., Case No. CV 07-42-PHX-JAT (D. Ari Jan. 18, 2012)

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