Lawyers for ActiveVideo Networks accused Verizon Communications of refusing to comply with a permanent injunction in the ongoing patent dispute between the two companies on Wednesday–the same day Verizon had been ordered to cease infringing ActiveVideo’s patented video-on-demand technology.
In a motion submitted to Judge Raymond Jackson in U.S. District Court in Norfolk, Va., ActiveVideo’s lawyers at Morgan, Lewis & Bockius and Kaufman & Canoles wrote that “Verizon continues to provide the same VOD services, widgets, and on-demand VOD catalogs that are the subject of the express terms of the injunction.” They asked Jackson for an order requiring Verizon to show cause why it shouldn’t be held in contempt for deliberately disobeying the injunction, which was set to go into effect on Wednesday under the terms of a November 2011 order.
The brief also asked Jackson to order expedited discovery on the technology behind Verizon’s new video on-demand system. Verizon has told ActiveVideo and the U.S. Court of Appeals for the Federal Circuit that it revamped its technology after it was found to infringe ActiveVideo’s IP. But according to ActiveVideo’s lawyers, Verizon refuses to pony up any details behind the supposed design-around, and they submitted the findings of an expert who couldn’t decipher any “meaningful modifications” to Verizon’s VOD service.
ActiveVideo has gotten the best of Verizon at the trial court. Last August ActiveVideo won a jury verdict of infringement, with damages totaling $115 million, after a three week trial before Judge Jackson. (As we previously reported, that trial victory for ActiveVideo also had reverberations for its client, Cablevision, in a separate case at the U.S. International Trade Commission. Judge Jackson’s finding that a Verizon patent claim was invalid led the ITC to drop an investigation over digital set-top box technology initiated by Verizon.) In November, Judge Jackson granted ActiveVideo’s motion for a permanent injunction against Verizon.
Verizon has appealed Jackson’s rulings to the Federal Circuit, which held oral arguments earlier this month. Michael Kellogg of Kellogg, Huber, Hansen, Todd, Evans & Figel made the case for Verizon and Thomas Peterson of Morgan Lewis argued for ActiveVideo. Verizon is also represented in the litigation by Hunton & Williams and Simpson Thacher & Bartlett.
In Wednesday’s filing, ActiveVideo lawyers wrote that Verizon agreed last month to provide evidence that its VOD service no longer infringed. But according to the filing, Verizon abruptly changed course on Tuesday, just a day before the injunction was to become binding. “In effect, Verizon seeks to impose by fiat the stay pending appeal that this Court has already declined to enter and which Verizon never even sought from the Federal Circuit,” ActiveVideo’s lawyers wrote.
Morgan Lewis partner Daniel Johnson Jr. said Thursday that Verizon had still “refused to produce any information concerning their design-around.” Judge Jackson has given Verizon’s lawyers until early June to reply to the motion. Verizon counsel Gregory Stillman of Hunton & Williams told us that by giving his client until next month to reply, the judge had effectively denied ActiveVideo’s request for expedited discovery. As for the rest of ActiveVideo’s assertions, Stillman said the judge “hadn’t given us any insight yet.”
This article originally appeared on The Am Law Litigation Daily.
