# TiVo vs. Echostar: Judge grants TiVo motion to disallow patent invalidity defense



## Curtis52 (Oct 14, 2003)

Thanks Mainer.

O R D E R

Before the Court is TiVo's Motion to Strike "Invalidity" Contentions from Dr. Rhyne's Expert Report and to Exclude Evidence and Argument Concerning "Invalidity" at the February 2009 Hearing. Dkt. No. 887. Also before the Court are EchoStar's response and TiVo's reply. Dkt. Nos. 889 & 891. For the reasons set forth below, TiVo's Motion is hereby GRANTED.

This Court has scheduled a hearing on February 17-18, 2009 to address TiVo's motion requesting that EchoStar be found in contempt for violation of this Court's permanent injunction. See Dkt. Nos. 832, 864, 869, 870, and 880. Specifically, this hearing will address "(1) whether the software downloaded to EchoStar's DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942 is no more than colorably different from the adjudged software; and (2) whether these receivers continue to infringe claims 31 and 61 of U.S. Patent No. 6,233,389, either literally or under the doctrine of equivalents." Dkt. No. 870 at 1.

TiVo now requests that all "invalidity contentions" be stricken from the expert report of Dr. V. Thomas Rhyne, EchoStar's expert for the upcoming hearing. Dkt. No. 887. In addition, TiVo argues that EchoStar should be precluded from introducing any evidence or argument concerning 
validity at the hearing. Id.

The expert report of Dr. Rhyne contains 42 paragraphs under the heading "The '389 Patent is invalid under TiVo's attempted new application of the software claims." Rhyne Report at ¶¶ 225-67 (Dkt. No. 887, Ex. B). In those paragraphs, Dr. Rhyne opines that TiVo's expert has expanded the scope of claims 31 and 61 such that the patent is now invalid for multiple reasons, including obviousness and a lack of written description. Id.

TiVo contends that any such argument is improper because the validity of the '389 Patent is the law of this case and cannot be challenged during contempt proceedings. Dkt. No. 887 at 2-4 (citing KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1529 (Fed. Cir. 1985); Additive Control & Measurement Sys., Inc. v. Flowdata, Inc., 154 F.3d 1345, 1350 (Fed. Cir. 1998)). In addition, TiVo contends that its own expert testimony and argument properly relies on this Court's claim construction and does not depart from it. Id. at 5.

In response, EchoStar contends that TiVo has created new infringement theories not argued at trial by expanding the scope of the "parsing" and "automatic flow control" limitations in claims 31 and 61. Dkt. No. 889 at 5-7. As a result, EchoStar argues that it is entitled to defend against these new theories as they "give rise to substantial new invalidity issues." Id. at 8-11 (citing Robert Tyer and Assoc., Inc. v. Envtl. Dynamics, Inc., No. 95-1270, 96-1324, 96-1541, 1997 U.S. App. LEXIS 19101 (Fed. Cir. Jul. 14, 1997) (unpublished); Bass Pro Trademarks, L.L.C. v. Cabela's, Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007)).

Federal Circuit precedent is clear on this issue: "Whether there is infringement may not be challenged in contempt proceedings on the basis that the patent is invalid. The validity of the patent is the law of the case in such proceedings." KSM Fastening, 776 F.2d at 1522. The Federal Circuit elaborated on this position in Additive Control, stating: 


> The judgment against [the infringer], however, established for purposes of this litigation that [the patentee's] patent was valid and that the [infringer's device] infringed the patent. In a contempt proceeding to enforce the injunction entered as a part of that judgment, the only available defenses for anyone bound by the injunction was that the [modified device] did not infringe (or that it was more than a colorable variation of the first [device], thus requiring that the issue of infringement be resolved through a separate infringement action). Validity and infringement by the original device were not open to challenge.


Additive Control, 154 F.3d at 1529. EchoStar does not distinguish the present case from these holdings. Instead, EchoStar relies on (1) a non-precedential opinion and (2) an inapposite opinion in which the Federal Circuit reversed on a claim construction issue rather than a validity issue.

This Court is bound by the Federal Circuit's clear holdings in KSM Fastening and Additive Controls. Therefore, all statements or arguments regarding the validity of the '389 Patent, specifically paragraphs 225-67, must be stricken from Dr. Rhyne's expert report. In addition, the parties shall be precluded from presenting evidence or argument concerning the validity of the '389 Patent at the upcoming hearing. 
IT IS SO ORDERED.


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## Greg Bimson (May 5, 2003)

There was another motion filed regarding discovery and interrogatories. Below are DISH/SATS interrogatories, and the joint stipulation on what some of those answers will be...


> 1. TiVo's awareness of EchoStar's effort to design-around the '389 Patent or modify the Infringing Products in response or relating to the '389 patent, including TiVo's awareness of the existence of the Design-Around Software or any updates, modifications, or changes to EchoStar's DVRs, whether software, functionality, or user experience, from April 13, 2006, to the present.
> 2. Whether EchoStar's efforts to design-around the '389 Patent or modify the Infringing Products in response or relating to the '389 patent were made in good faith, including any evidence TiVo believes indicates or suggests EchoStar's efforts were in bad faith.
> 3. TiVo's responses or actions related to (i) EchoStar's effort to design-around the '389 patent or modify the Infringing Products in response or relating to the '389 patent, or (ii) the Design-Around Software, including TiVo's decision not to seek court involvement prior to the Federal Circuit's mandate issued in this case.
> 4. TiVo's evaluation, testing, analysis, or discussion of (i) the Design-Around Software or (ii) any updates, modifications, or changes to EchoStar's DVRs, whether software, functionality, or user experience,from April 13, 2006, to the present.
> ...





> NOW THEREFORE, for purposes of the pending contempt proceedings, the parties
> stipulate and agree as follows:
> 1. All non-privileged fact testimony responsive to topic 4 in EchoStar's Deposition Notice, to the extent any exists, will be presented at the hearing only through James Barton.
> 2. TiVo will provide non-privileged information responsive to topic 2 in EchoStar's Deposition Notice, to the extent any exists, by responding to EchoStar's Interrogatory No. 1.
> ...


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## Greg Bimson (May 5, 2003)

The order:


> Federal Circuit precedent is clear on this issue: "Whether there is infringement may not be challenged in contempt proceedings on the basis that the patent is invalid. The validity of the patent is the law of the case in such proceedings." KSM Fastening, 776 F.2d at 1522. The Federal Circuit elaborated on this position in Additive Control, stating:The judgment against [the infringer], however, established for purposes of this litigation that [the patentee's] patent was valid and that the [infringer's device]infringed the patent. In a contempt proceeding to enforce the injunction entered as a part of that judgment, the only available defenses for anyone bound by the injunction was that the [modified device] did not infringe (or that it was more than a colorable variation of the first [device], thus requiring that the issue of infringement be resolved through a separate infringement action). Validity and infringement by the original device were not open to challenge.​Additive Control, 154 F.3d at 1529. EchoStar does not distinguish the present case from these holdings. Instead, EchoStar relies on (1) a non-precedential opinion and (2) an inapposite opinion in which the Federal Circuit reversed on a claim construction issue rather than a validity issue.
> This Court is bound by the Federal Circuit's clear holdings in KSM Fastening and Additive Controls. Therefore, all statements or arguments regarding the validity of the '389 Patent, specifically paragraphs 225-67, must be stricken from Dr. Rhyne's expert report. In addition, the parties shall be precluded from presenting evidence or argument concerning the validity of the '389 Patent at the upcoming hearing.
> IT IS SO ORDERED.


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## CuriousMark (May 21, 2008)

So in summary, Dish tried to change the subject to patent validity in their expert witness's report. TiVo cried foul. The judge agreed. The subject will be infringement, and only infringement.


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## jacmyoung (Sep 9, 2006)

This is a clear loss for E* due in part to the fact that the judge refused to address the point E* raised, that TiVo is now expanding the claim limitations beyond what the court had construed during the trial.

At this point I must agree with Greg, that the judge is making history out of this case, however whether he is indeed trying to make history or not will have to be answered when his final ruling is out.

The petentee is not allowed to expand the patent claim limitations during the contempt proceeding, the Judge simply side-stepped this particular point. There are many cases in which the contempt was denied when the Court had determined that the patentees had expanded the claim constructions.


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## Greg Bimson (May 5, 2003)

CuriousMark said:


> So in summary, Dish tried to change the subject to patent validity in their expert witness's report. TiVo cried foul. The judge agreed. The subject will be infringement, and only infringement.


And the evaluation of colorable difference.

Here's one statement that piques my interest:


> Validity and infringement by the original device were not open to challenge.


If Judge Folsom is of the belief that the "Infringing Products" are the "original devices", DISH/SATS is in for a world of hurt.

Here is the other statement that makes me wonder what DISH/SATS is thinking:


> 3. TiVo contends that the information sought by topics 1, 3, and 5-11 in EchoStar's Deposition Notice is irrelevant and includes information that is subject to TiVo's attorney client and/or work product privilege, which TiVo declines to waive. To eliminate any need for further discovery relating to such topics, TiVo stipulates that TiVo became aware of EchoStar's design-around efforts on or about the date the first EchoStar Statement was made, specifically August 9, 2006; and TiVo became aware of other EchoStar Statements on or about the dates they were made, specifically November 7, 2006, March 1, 2007, May 10, 2007, August 9, 2007, November 9, 2007, February 26, 2008 and May 12, 2008.


TiVo admits they knew of a workaround through DISH/SATS SEC filings. What TiVo did not admit was they knew DISH/SATS would apply the workaround to the "Infringing Products", which is completely counter to the questions DISH/SATS raised in their interrogatories.


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## peak_reception (Feb 10, 2008)

Greg Bimson said:


> Here's one statement that piques my interest:If Judge Folsom is of the belief that the "Infringing Products" are the "original devices", DISH/SATS is in for a world of hurt.


 Why? Either/Both were modified. The modification is what needs adjudication. Colorably different or not? It's the multi-million dollar question.

p.s. I should say "colorably different, or more than colorably different. " That is the critical question now before the court.


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## the judge (Jan 13, 2009)

Greg Bimson said:


> Here is the other statement that makes me wonder what DISH/SATS is thinking:TiVo admits they knew of a workaround through DISH/SATS SEC filings. What TiVo did not admit was they knew DISH/SATS would apply the workaround to the "Infringing Products", which is completely counter to the questions DISH/SATS raised in their interrogatories.


Here is E*'s notice in August, 2006 from their 10-Q. Could you explain the nuance that Tivo did not admit the workaround would apply to the Infringing Products?



> During 2004, Tivo Inc. ("Tivo") filed a lawsuit against us in the United States District Court for the Eastern District of Texas alleging that our satellite receivers equipped with digital video recorder technology infringe Tivo's United States Patent No. 6,233,389 (the '389 patent). During April 2006, a jury concluded most of our digital video recorders infringe the '389 patent, that our infringement was willful, and awarded Tivo approximately $74.0 million in damages, plus interest for past infringement. Consequently, the judge will be required to make a determination whether to increase the damage award to as much as approximately $230.0 million and whether to award attorney fees and interest.
> 
> As a result of our objection to Tivo's demand to review certain privileged documents, the trial court judge prohibited us from mentioning during trial the non-infringement opinions we had obtained from outside counsel, and, allowed Tivo to tell the jury we never obtained such an opinion. On May 2, 2006, the Court of Appeals concluded that the District Court abused its discretion in requiring us to provide the privileged documents to Tivo. On July 5, 2006, the Court of Appeals denied Tivo's petition for rehearing of that decision. While we believe this is a significant development, the extent to which this ruling will affect the jury verdict or the remainder of the case is not yet clear.
> 
> ...


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## Greg Bimson (May 5, 2003)

the judge said:


> Could you explain the nuance that Tivo did not admit the workaround would apply to the Infringing Products?





> While we are working on modifications to our DVRs intended to avoid future infringement, there can be no assurance we will be successful.


Because DISH/SATS didn't admit their workaround would apply to the receivers that were already found to infringe, counter to the language of the injunction...


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## the judge (Jan 13, 2009)

Greg Bimson said:


> Because DISH/SATS didn't admit their workaround would apply to the receivers that were already found to infringe, counter to the language of the injunction...


I get it. At that time the workaround was going to include both software and hardware which would have required them to swap out the boxes, i.e. entirely new devices. Once the hardware claims were remanded, they were off that hook and realized that they could try the software-only download. Check out their change in tune in their 10Q filing before and after the Appeal:

From Echostar Sep-2006 10-Q:


> If the verdict is upheld on appeal, we would be required to pay additional amounts from August 1, 2006 until such time, if ever, as we successfully implement alternative technology. Those amounts would be approximately $5.7 million, $5.9 million and $6.0 million for August, September and October 2006, respectively, and would increase each month as the number of our DVR customers increases and as interest compounds. If the verdict is upheld on appeal and we are not able to successfully implement alternative technology (including the successful defense of any challenge that such technology infringes Tivo's patent), we could also be prohibited from distributing DVRs, or be required to modify or eliminate certain user-friendly DVR features that we currently offer to consumers. In that event we would be at a significant disadvantage to our competitors who could offer this functionality and, while we would attempt to provide that functionality through other manufacturers, the adverse affect on our business could be material.


Then, from their Sep-2008 10-Q:


> In accordance with Statement of Financial Accounting Standards No. 5, "Accounting for Contingencies" ("SFAS 5"), we recorded a total reserve of $132 million on our Condensed Consolidated Balance Sheets to reflect the jury verdict, supplemental damages and pre-judgment interest awarded by the Texas court. This amount also includes the estimated cost of any software infringement prior to implementation of our alternative technology, plus interest subsequent to the jury verdict.


When they would have had to pay for hardware and software infringement, they calculated $6M plus per month! Afterwards they claimed the total reserve (including the $104M already paid) was only $28M.


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## jacmyoung (Sep 9, 2006)

peak_reception said:


> Why? Either/Both were modified. The modification is what needs adjudication. Colorably different or not? It's the multi-million dollar question.


Exactly, this is why no one can convince the other because we will just interpret whatever the way we like, and it goes both ways.

The way I interpret it is that when the judge said "the original device" he was referring to the unmodified DVRs, not the modified DVRs. Because if he believes the modified DVRs are the same as "the original DVRs" there would be no point to again determine if the modified DVRs still infringe.

Now I had said the reason the claim invalidity might be argued was because the judge ordered an infringement analysis, but E* did not argue that way, instead E* said the reason they should be allowed to argue the claim invalidity was that TiVo was trying to expand the claim limitations. But whether TiVo is trying to expand the claim limitations (which I think they clearly are) has not been determined by the judge.

TiVo ran into a similar problem on 9/4 when they cited two cases in which the defendants were already found in violation and therefore in contempt, and that two cases did not help TiVo a bit to obtain a contempt ruling, because whether there was a violation or not had not been determined by the judge in this case.

E* is now doing the same, saying TiVo is trying to expand the patent claim limitations, therefore...

Except whether TiVo is indeed trying to expand its claim limitations will be for the judge to decide after the hearing.

I say yes because TiVo is arguing that since the modified DVRs still use PID filters, therefore they still infringe. If true, all MPEG receivers, DVRs or non-DVRs, all infringe, because they all use PID filters.

A clear expansion of the TiVo's patent claim limitations in which at the very first description it defines a DVR process.


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## Curtis52 (Oct 14, 2003)

Greg Bimson said:


> And the evaluation of colorable difference.
> 
> Here's one statement that piques my interest:
> 
> ...


Judge Folsom didn't say that. He was quoting from case law. That part isn't really applicable to this case. Dish isn't arguing that the original devices didn't infringe.


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## CuriousMark (May 21, 2008)

jacmyoung said:


> I say yes because TiVo is arguing that since the modified DVRs still use PID filters, therefore they still infringe. If true, all MPEG receivers, DVRs or non-DVRs, all infringe, because they all use PID filters.
> 
> A clear expansion of the TiVo's patent claim limitations in which at the very first description it defines a DVR process.


A clever debating tactic. To paraphrase you: "Since the modified parakeet still has wings, it can fly. If true, all birds, of any size or shape that have wings can fly." it sounds reasonable, but every child can think of an example that proves it wrong. Think Ostrich. In the same way your posted logic fails.

First, PID filtering is only one step of the claim. All those other devices would have to also meet ALL the other steps before they could be found to infringe. You know as well as I do that all MPEG receivers that are not DVRs cannot meet all the other steps, they don't even have a hard drive, or the ability to do trick play. So their PID filters don't even begin to turn them into infringing devices. So PID filtering can be used to help show that these particular DVRs still infringe, so long as they also meet the other steps of the claim.

Second, PID filtering was shown at the original trial as an action that meets the first step of the claim as many quotes here have shown. Thus it is not an expansion of the claim at all.


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## Greg Bimson (May 5, 2003)

> Validity and infringement by the original device were not open to challenge.





Curtis52 said:


> Judge Folsom didn't say that.


I never said Judge Folsom said that.


Curtis52 said:


> He was quoting from case law. That part isn't really applicable to this case. Dish isn't arguing that the original devices didn't infringe.


But DISH/SATS has been arguing because they made a modification to the original devices (the adjudged ones subject to the disable order), there are no longer any adjudged devices over the almost 193K receivers allowed by the injunction.

I believe the court will clarify that soon.


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## Curtis52 (Oct 14, 2003)

Greg Bimson said:


> DISH/SATS has been arguing because they made a modification to the original devices (the adjudged ones subject to the disable order), there are no longer any adjudged devices over the almost 193K receivers allowed by the injunction.
> 
> I believe the court will clarify that soon.


If there is more than a colorable difference they are correct. Estoppel prevents the trying of the same devices twice but the court requires a new trial if there is more than a colorable difference. QED, they aren't considered the same devices if there is more than a colorable difference.


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## jacmyoung (Sep 9, 2006)

CuriousMark said:


> A clever debating tactic. To paraphrase you: "Since the modified parakeet still has wings, it can fly. If true, all birds, of any size or shape that have wings can fly." it sounds reasonable, but every child can think of an example that proves it wrong. Think Ostrich. In the same way your posted logic fails.
> 
> First, PID filtering is only one step of the claim. All those other devices would have to also meet ALL the other steps before they could be found to infringe. You know as well as I do that all MPEG receivers that are not DVRs cannot meet all the other steps, they don't even have a hard drive, or the ability to do trick play. So their PID filters don't even begin to turn them into infringing devices. So PID filtering can be used to help show that these particular DVRs still infringe, so long as they also meet the other steps of the claim.
> 
> Second, PID filtering was shown at the original trial as an action that meets the first step of the claim as many quotes here have shown. Thus it is not an expansion of the claim at all.


It is if PID filter is the *only* thing TiVo is using to try to again prove infringement.

I know TiVo is using E*'s own words against them. For one thing, TiVo cannot use E*'s previous admission which may or may not be correct, to prove infringement, TiVo must prove with clear and convincing evidence that the modified DVRs still infringe, based on literal and/or equivalents doctrine.

Also E* is saying the "parsing" *as described by the claim limitations* is no longer formed, that is to say while there may still be parsing, as long as such parsing is done to perform a different function, *or* is operated in a different way, *or* is to achieve a different result, there is no infringment.

TiVo does not even contest that, only that it still parses.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> ... QED, they aren't considered the same devices if there is more than a colorable difference.


They aren't considered the same devices even if the differences are only colorable, however, in such case the patentee shall not be forced to go through another new trial, the contempt proceeding shall be enough to end the infringer's effort.


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## jacmyoung (Sep 9, 2006)

The link below is a very good read, I think it had been cited some time ago but most people may not have read it:

http://www.law.com/jsp/PubArticle.jsp?id=900005504899

In summary, right around 2005 this district court of Taxes had become a magnet for patentees to file lawsuits against their alleged infringers to forced them to settle, the reason was, for a few years 100% of the cases in that court ended in favor of the patentees, that was most notably marked by TiVo's win over E* for $74 million, Microsoft's loss of $133 million in another case, and DirecTV's loss of $78 million yet in another case. At that point most lawyers had concluded that it was too risky to go through a jury trial in that court, and advised their clients to rather settle.

A few months after E* lost $74 million to TiVo, Forgent filed a similar lawsuit against E*, D*, Time Warner on DVR infringement. At that time E* and D* worked together to defend themselves. But two weeks before the jury trial, Time Warner chickened out and settled with Forgent for $20 million, and one day before the jury trial, D* chickened out and settled to pay Forgent $8 million.

E* was the only one went ahead through the jury trial, right after they just lost $74M to TiVo, and managed to convince the jury that the Forgent DVR patent was invalid. E* won that case and tossed Forgent out, but not before Time Warner and D* each wasted $20M and $8M to Forgent, respectively.

That Forgent case along with one other case were the first two that began to turn the tide in that courtroom, from the previous 100% win by the patentees, to a 7 out of 12 won by the defendants afterwards.

You never know when parties will decide to settle, the above history can offer some indication as far as the likelihood of any settlement from this case.


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> I know TiVo is using E*'s own words against them. For one thing, TiVo cannot use E*'s previous admission which may or may not be correct, to prove infringement, TiVo must prove with clear and convincing evidence that the modified DVRs still infringe, based on literal and/or equivalents doctrine.


Sure TiVo can use the previous admission; once again, just like the trial, it is the law of the case. Of course, TiVo was gung-ho to use claim charts, measuring the differences between the receivers as configured when infringement was found against the same receivers with a software modification. So since the differences between the two are being measured, TiVo will simply need to prove infringement on points that could only exist due to the modification.


Curtis52 said:


> QED, they aren't considered the same devices if there is more than a colorable difference.


Let's remember that the devices are not being tested for colorable difference:


> The Court will hold an additional evidentiary hearing on this matter on February 17-18, 2009 to determine (1) whether the software downloaded to EchoStar's DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942 is no more than colorably different from the adjudged software;


The colorable difference is only about the software. And we still do not know why evaluating colorable difference was ignored in Judge Folsom's original order for a bench trial, even though he stated it was always his intention to evaluate for colorable differences. It could be that Judge Folsom had no reason to measure colorable difference on the receivers originally found to infringe, but colorable difference determination is definitely needed for all models sold with the new software.

I still believe Judge Folsom is creating a standard, as neither _KSM_ nor _Additive Controls_ address a device found infringing that can be modified by software download.


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> Sure TiVo can use the previous admission; once again, just like the trial, it is the law of the case.


No they can't, because in the original trial if you ever read the appeals court decision, none of the evidence had to do with E*'s "admission", and the PID was never a part of argument in rendering and upholding infringement verdict.



> Of course, TiVo was gung-ho to use claim charts, measuring the differences between the receivers as configured when infringement was found against the same receivers with a software modification.


It was not gung-ho rather a standard requirement to produce such claims charts during the trial, the courts administrating such patent trials have standardized claims charts for the patentee to fill out to prove infringement.



> even though he stated it was always his intention to evaluate for colorable differences.


When did he say that? If in his latest order I missed that.



> It could be that Judge Folsom had no reason to measure colorable difference on the receivers originally found to infringe, but colorable difference determination is definitely needed for all models sold with the new software.


The judge cannot do that, because all other DVR models beyond the 8 are not at issue in front of him. The next hearing is only about the 8 named DVRs. Just read his order.



> I still believe Judge Folsom is creating a standard, as neither _KSM_ nor _Additive Controls_ address a device found infringing that can be modified by software download.


Again devices found infringing had been modified many many times in the past to avoid contempt, including the use of software download.

If software download cannot be used, then there is no point wasting time to determine the colorable differences between the old software and the new software.


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## Curtis52 (Oct 14, 2003)

Greg Bimson said:


> I still believe Judge Folsom is creating a standard, as neither _KSM_ nor _Additive Controls_ address a device found infringing that can be modified by software download.


It also didn't specifically address devices that could be modified by a drill, an acetylene torch, a ball peen hammer, or a lathe. Perhaps because it just doesn't matter.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> It also didn't specifically address devices that could be modified by a drill, an acetylene torch, a ball peen hammer, or a lathe. Perhaps because it just doesn't matter.


BTW, I have not touched on this point here yet, but there was one case after it was determined that the patentee had clearly tried to broaden its patent claims coverage during the contempt proceeding, the judge dissolved the injunction all together. I just can't find where that case is, will cite it here if I locate it again.


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## Greg Bimson (May 5, 2003)

Greg Bimson said:


> It could be that Judge Folsom had no reason to measure colorable difference on the receivers originally found to infringe, but colorable difference determination is definitely needed for all models sold with the new software.





jacmyoung said:


> The judge cannot do that, because all other DVR models beyond the 8 are not at issue in front of him. The next hearing is only about the 8 named DVRs. Just read his order.


Well, that is what I meant. Eight models of DVR receivers were originally found to infringe the patent, but that would only be until DISH/SATS started sales of the eight models with the new software. Because TiVo is stating they believe the new software is still allows the receiver to infringe, TiVo has requested the KSM standard be applied to receivers sold with only the new software, ones that have not been adjudged.


Curtis52 said:


> It also didn't specifically address devices that could be modified by a drill, an acetylene torch, a ball peen hammer, or a lathe. Perhaps because it just doesn't matter.


Well, that is open to interpretation. After all, DISH/SATS can make DVR's, and these "subsequent manufactures" simply should not be merely colorably different nor infringing upon the TiVo Time Warp patent. If the engineering of these new manufactures requires a drill, acetylene torch, ball peen hammer or lathe, no big deal.

The issue here is that a device has been found to infringe, and the software has since been modified. Contrary to popular belief, there has not been a motion for contempt for violations of an injunction ever decided by downloading software to an offending device. You can all argue that the download makes it a different device, but that certainly doesn't seem to be the road Judge Folsom is taking, as he will be deciding "continuing infringement" of the devices.


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## Curtis52 (Oct 14, 2003)

Greg Bimson said:


> You can all argue that the download makes it a different device, but that certainly doesn't seem to be the road Judge Folsom is taking, as he will be deciding "continuing infringement" of the devices.


Judge Folsom is not wandering off the well beaten path. He is following the required steps to determine whether the the modification resulted in new devices not subject to the injunction by being more than colorably different from the adjudicated DVRs. If they are only colorably different then there is continued infringement.


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## nobody99 (May 20, 2008)

Greg Bimson said:


> The issue here is that a device has been found to infringe, and the software has since been modified. Contrary to popular belief, there has not been a motion for contempt for violations of an injunction ever decided by downloading software to an offending device. You can all argue that the download makes it a different device, but that certainly doesn't seem to be the road Judge Folsom is taking, as he will be deciding "continuing infringement" of the devices.


Would that be related to this post in July of last year, where I predicted this exact outcome 



nobody99 from July 2008 said:


> There are really four different categories of device:
> 
> 1. The eight named models that are unmodified since the injunction went into effect sitting in boxes at a warehouse
> 2. The eight named models that built after the injunction went into effect with presumably new software
> ...


That said, it was a lucky guess :lol:


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> ...Because TiVo is stating they believe the new software is still allows the receiver to infringe, TiVo has requested the KSM standard be applied to receivers sold with only the new software, ones that have not been adjudged...


Are you suggesting that the next hearing will only deal with the 8 named DVRs that were placed in service *after* the injunction?

If so correct me if I am wrong, you are saying TiVo no longer goes after that old 4 million DVRs already placed at the end users at the time of the injunction?


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## nobody99 (May 20, 2008)

jacmyoung said:


> Are you suggesting that the next hearing will only deal with the 8 named DVRs that were placed in service *after* the injunction?
> 
> If so correct me if I am wrong, you are saying TiVo no longer goes after that old 4 million DVRs already placed at the end users at the time of the injunction?


Without speaking for Greg, let me, er, speak for Greg.

I think what he is saying (and what I have been trying to say all along) is the KSM standard only applies to new devices. It does not apply to already-manufactured, already-adjudicated devices.

Curtis non-stop posting about "to be used as a shield not a sword blah blah blah" makes perfect sense in this regard. DISH screwed up on the boxes that are already in the hands of customers. They don't get a do-over. They either license TiVo's tech, or the turn off DVR functions.

On the other hand, those exact same boxes, if they hadn't been sold, can be loaded with new software and tested for colorable differences. That's where the shield (and KSM) comes in.


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> Are you suggesting that the next hearing will only deal with the 8 named DVRs that were placed in service after the injunction?


No. It deals with all of the eight models of DVR that have been placed in service, whether before or after the injunction became invalid.


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## Curtis52 (Oct 14, 2003)

Greg Bimson said:


> No. It deals with all of the eight models of DVR that have been placed in service, whether before or after the injunction became invalid.


Invalid? As far as I know, the injunction is valid.


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> No. It deals with all of the eight models of DVR that have been placed in service, whether before or after the injunction became invalid.


So a ruling that the old software is more than (or only) colorably different will have the same impact on all of the 8 named DVRs, whether placed in service before, or after the injunction?


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> So a ruling that the old software is more than (or only) colorably different will have the same impact on all of the 8 named DVRs, whether placed in service before, or after the injunction?


Only Judge Folsom knows. After all, his original order only inquired about continuing infringement of eight models of recievers.


Curtis52 said:


> Invalid? As far as I know, the injunction is valid.


That's what I get for not proofreading.


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> Only Judge Folsom knows. After all, his original order only inquired about continuing infringement of eight models of recievers...


His original order did not ever try to separate the DVRs into before and after the injunction groups either. There is nothing that suggests they will be treated differently.

But if the judge in the end does try to separate them (which I do not think he will), that will be another reason for appeal.


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## nobody99 (May 20, 2008)

jacmyoung said:


> His original order did not ever try to separate the DVRs into before and after the injunction groups either. There is nothing that suggests they will be treated differently.
> 
> But if the judge in the end does try to separate them (which I do not think he will), that will be another reason for appeal.


As always, each of us is entitled to our own opinions, and let's make sure that we don't try to state opinion as fact. You opine that separating them is grounds for an appeal. I, in fact, believe the opposite. _Not separating_ them is grounds for an appeal.

The eight named DVRs that were in the consumers hands have been found to infringe a patent, and they are subject to an injunction. That's the law of the case.

DISH is fully within its right to make a change and produce *new* DVRs. Those DVRs are subject to a "more than colorably different" standard set by KSM.

The others, IN MY HUMBLE OPINION, are not. Nothing that has happened since the trial or the appeal has changed the fact that these boxes are convicted infringers.


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## James Long (Apr 17, 2003)

As you all well know the Tivo vs Echostar threads are fairly repetitive with each one, regardless of the starting post, devolving into the same discussion.

Previous discussions on this topic have been closed - and as per forum rules it is improper to open a new thread discussing the same topic as a closed thread. The only reason why this thread remained open more than a minute was because there was new information.

If anyone has anything to say about the new information (the recently granted motion) and how that affects the case please post. That is the topic of this thread. Posts not related to what have changed will be considered off topic and may be deleted without notice. If the topic of this thread (the recently granted motion) has run it's course the thread will be closed and we'll go back into hibernation until there is something else new to discuss.

As usual (and per forum rules) if you have any questions PM a moderator, any moderator. If you choose to make public complaints about moderation or other posters expect our forum rules to be enforced.

In case you missed it, the challenge is to discuss the narrow topic of this thread, the recently granted motion, and not fall back into the discussions ended when previous threads were closed.

Thank you in advance for your cooperation.
:backtotop


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## CuriousMark (May 21, 2008)

http://www.rapidtvnews.com/index.php/200902053093/triple-news-for-echostar.html

It is discussed at the end, and partially quoted here:



> Third news story, less good for Echostar, concerns its never-ending litigation with DVR specialist TiVo. A Court Motion, filed by TiVo to strike out comments from an expert witness that its Patents are "invalid" has been granted. "This Court has scheduled a hearing on February 17-18, 2009 to address TiVo's motion requesting that EchoStar be found in contempt for violation of this Court's permanent injunction."


Although the story itself does not provide any new information, it shows that even the TV industry is getting tired of this "never ending litigation". Once more, I hope the story prods the litigants to try a settlement.


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## Mainer_ayah (Jun 24, 2008)

This latest ruling, in my opinion, simply underscores the judges previous attempts to entice E* into settling this thing with TiVo. I think this has been the least subtle of all the signals coming from the bench. Short of a 2X4 wallop over the head, there is not much more the Judge will be able to do but rule contempt, and let dish try to talk the appeals court into a stay. Given the shenanigans displayed by defense council over the life of the case, I doubt if they will consider one.

JMHO


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## jacmyoung (Sep 9, 2006)

I'd like to ask you folks to go back and read that story I linked to make an educated decision as how likely there may be a settlement. Not saying that it cannot happen.

DISH just managed to have the USPTO to re-examine the validity of the TiVo's patent, stands the chance to have the patent invalidated. And also note that in 2006, right after E* lost the $74 million fight with TiVo, they stuck to the end with Forgent and tossed Forgent to the curb, while TW and D* chickened out and wasted $20M and $8M each to Forgent in settlement right before the trial.

E*'s strategy has so far managed to let them design around without disabling any DVRs, and avoid paying TiVo one extra penny since 2006, and Charlie had been subject to such harsh treatment by the courts in the past many times, they never seemed to deter him until he exhausted all his legal rights.

This case at this point is IMHO relatively an easy one, compared to many others in the past he had to be faced with.


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## space86 (May 4, 2007)

Question is there any chance my 622 and 722 will have to be turned off?


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## CuriousMark (May 21, 2008)

space86 said:


> Question is there any chance my 622 and 722 will have to be turned off?


Not at this point, or as a result of the upcoming hearing. The VIP units have not been looked at. If TiVo wins here, I suppose they could look at the VIP units going forward, but that is not likely to happen any time soon, or at all if TiVo and Dish reach an agreement that covers all DVRs. You don't have anything to worry about.


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## nobody99 (May 20, 2008)

space86 said:


> Question is there any chance my 622 and 722 will have to be turned off?


It will never be turned off - you have nothing to worry about. Even with a court order, it won't be turned off (that's already happened).


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## Mainer_ayah (Jun 24, 2008)

jacmyoung said:


> DISH just managed to have the USPTO to re-examine the validity of the TiVo's patent, stands the chance to have the patent invalidated.


As the order that we are discussing here states, validity of TiVo's patents will not be a point of discussion. Not to mention the fact that the outcome of the patent re-exam is years away. Charlie got the re-exam because the patent office knows how expensive it is to put together an application for re-exam as a third party. The decision maker probably was just avoiding having the patent office become fodder for a charlie chat. The re-exam is completely meaningless to this case. Of course, that is just IMHO.


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## jacmyoung (Sep 9, 2006)

Mainer_ayah said:


> As the order that we are discussing here states, validity of TiVo's patents will not be a point of discussion. Not to mention the fact that the outcome of the patent re-exam is years away. Charlie got the re-exam because the patent office knows how expensive it is to put together an application for re-exam as a third party. The decision maker probably was just avoiding having the patent office become fodder for a charlie chat. The re-exam is completely meaningless to this case. Of course, that is just IMHO.


The invalidity re-examination by the USPTO has nothing to do with this latest court order but the outcome by the USPTO may have profound impact in this case if the patent is invalidated. The probability of invalidation or modification by the USPTO in a re-examination is about 70% if I remember correctly.

And the USPTO decision will come in a little over a month. While TiVo can appeal and that may take a year or more, but if the decision is that the patent is invalid, the judge is not likely to impose any further damages.


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## James Long (Apr 17, 2003)

Current USPTO activity is NOT the topic of this thread.
:backtotop


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## the judge (Jan 13, 2009)

> The expert report of Dr. Rhyne contains 42 paragraphs under the heading "The '389 Patent is invalid under TiVo's attempted new application of the software claims." Rhyne Report at ¶¶ 225-67 (Dkt. No. 887, Ex. B).


Getting back to the exact topic of this thread, I noticed that the Order (referenced above) noted that Dr. Rhyne's Report contained 42 paragraphs relating to the invalidity of the patent. We know that there at least 267 paragraphs in total, possibly more. If 267 is the total, that would mean that 15.73033% of the Rhyne Report was excluded. At an approximate average of 120 words per paragraph, based on a sample of the number of words in this paragraph, that would equate to 5,040 wasted words!

I just thought this was a highly relevant analysis of the "topic of this thread", rather than devolving into the more interesting and much more active discussion concerning observations about the case in general.


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## Mainer_ayah (Jun 24, 2008)

the judge said:


> Getting back to the exact topic of this thread, I noticed that the Order (referenced above) noted that Dr. Rhyne's Report contained 42 paragraphs relating to the invalidity of the patent. We know that there at least 267 paragraphs in total, possibly more. If 267 is the total, that would mean that 15.73033% of the Rhyne Report was excluded. At an approximate average of 120 words per paragraph, based on a sample of the number of words in this paragraph, that would equate to 5,040 wasted words!
> 
> I just thought this was a highly relevant analysis of the "topic of this thread", rather than devolving into the more interesting and much more active discussion concerning observations about the case in general.


In keeping with the exact topic, I was wondering if someone might calculate just how much of E*'s money was wasted by Dt Rhyne in writing his 42 paragraphs that the court will never see.

For reference, here is the text of the order:

*[SEE FIRST POST IN THREAD]*


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## Greg Bimson (May 5, 2003)

Point of clarification for our readers...


jacmyoung said:


> And the USPTO decision will come in a little over a month. While TiVo can appeal and that may take a year or more, but if the decision is that the patent is invalid, the judge is not likely to impose any further damages.


That is incorrect...

If the USPTO rules the patent invalid, then TiVo has an appeals process they can follow. While arguing the validity of the patent at USPTO, the current contempt case will *always* assume the patent is valid (as it is the law of the case) until TiVo has _exhausted all appeals at USPTO_.

Now, to get this back on topic, as I have left this piece for far too long...

Now that DISH/SATS interrogatories to TiVo have been released, here is what is left:


> 4. TiVo's evaluation, testing, analysis, or discussion of (i) the Design-Around Software or (ii) any updates, modifications, or changes to EchoStar's DVRs, whether software, functionality, or user experience,from April 13, 2006, to the present.


This question will be answered on the stand during the hearing by James Barton, the creator of the TiVo Media Switch.


> 2. Whether EchoStar's efforts to design-around the '389 Patent or modify the Infringing Products in response or relating to the '389 patent were made in good faith, including any evidence TiVo believes indicates or suggests EchoStar's efforts were in bad faith.


TiVo will provide the answer to this question, to the extent any answers exist. (thinking: good faith or bad faith, does it really matter?)

That's it.

That is all.

Of the 16 questions DISH/SATS has raised in their interrogatories, they get answers to two of them, and a stipluation that TiVo was aware of a design-around that was listed within DISH/SATS SEC filings.

That is all?


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> Point of clarification for our readers...That is incorrect...
> 
> If the USPTO rules the patent invalid, then TiVo has an appeals process they can follow. While arguing the validity of the patent at USPTO, the current contempt case will *always* assume the patent is valid (as it is the law of the case) until TiVo has _exhausted all appeals at USPTO_.


True, but if the patent is ruled invalid by the USPTO, there is a good argument to ask the judge not to impose any additional damages until the issue is resolved.



> Now, to get this back on topic, as I have left this piece for far too long...


Not really.



> Now that DISH/SATS interrogatories to TiVo have been released, here is what is left:This question will be answered on the stand during the hearing by James Barton, the creator of the TiVo Media Switch.TiVo will provide the answer to this question, to the extent any answers exist. (thinking: good faith or bad faith, does it really matter?)
> 
> That's it.
> 
> ...


In the most recent joint stipulation, even before the judge's new order, both parties had already agreed all the E*'s 16 questions be narrowed down to only two above, and since TiVo had already said in one of the previous filings that "good faith, bad faith, does not matter", really there will be only the single item left anyway.

The reason both parties had already agreed to only question TiVo this single item above was because TiVo admitted that they have known very clearly E*'s design around attempts since 2006, not once, not twice, not three times, but each and every time E* had mentioned in any public report or announcement, from 2006 to present.

Now another reason why E* decided not to pursue TiVo in all the 16 questions was because TiVo was practically "claiming the Fifth", that TiVo said they would not answer any questions regarding how they came to claim that E*'s design around was "not possible" or "did not happen", after Rogers made several public claims that their engineers looked at the new software and determined the design around "did not happen" or a design around was simply "impossible." TiVo said it was their attorney-client info or information under the protective order ("trade secret") so TiVo did not have to answer them.

Since TiVo has admitted it did happen and it was possible, so the only issue remaining is whether the design around did achieve the goal of avoiding a contempt. And that will be the only question E* would ask James Barton during the trial. And again this arrangement had been already agreed upon by both parties even before the judge issued the latest order.


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> The reason both parties had already agreed to only question TiVo this single item above was because TiVo admitted that they have known very clearly E*'s design around attempts since 2006, not once, not twice, not three times, but each and every time E* had mentioned in any public report or announcement, from 2006 to present.


Yep. TiVo admits they've known about a design around. TiVo has not admitted they knew DISH/SATS would apply that design around to receivers adjudged infringing, where Judge Folsom ordered the modification to disable the DVR functionality on those receivers.

So TiVo in practicality has admitted absolutely nothing.


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> Yep. TiVo admits they've known about a design around. TiVo has not admitted they knew DISH/SATS would apply that design around to receivers adjudged infringing, where Judge Folsom ordered the modification to disable the DVR functionality on those receivers.
> 
> So TiVo in practicality has admitted absolutely nothing.


In the latest stipulation TiVo admitted they knew the design around since 2006, they never said they only knew the design around was for just the "new" DVRs, because E* had always told them the design around was for *all* the 8 named DVRs.

In fact the current judge's order is based on TiVo's proposed modifications to the judge's initial bench order. And again TiVo never proposed to separate the DVRs placed in use before the injunction from the ones placed after the injunction.

I don't know why you keep saying there are two different groups of the 8 named DVRs at issue when TiVo is not making such distinction. They are all viewed as a whole, it is too late to even argue they should be separated.


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## the judge (Jan 13, 2009)

jacmyoung said:


> In the most recent joint stipulation, even before the judge's new order, both parties had already agreed all the E*'s 16 questions be narrowed down to only two above, and since TiVo had already said in one of the previous filings that "good faith, bad faith, does not matter", really there will be only the single item left anyway.


While Tivo argued that "Good faith/bad faith" has nothing to do with whether the design-around infringes, it matters a great deal with any damages that might be awarded if they do. Another ridiculous claim debunked as misinformation.

Can anyone explain what possible benefit Echostar gained when Tivo side-stepped their entire interrogatory by stipulating they first found out about the work-around when Echostar first announced it? What other conceivable answer is there?


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> In the latest stipulation TiVo admitted they knew the design around since 2006, they never said they only knew the design around was for just the "new" DVRs, because E* had always told them the design around was for *all* the 8 named DVRs.





> To eliminate any need for further discovery relating to such topics, TiVo stipulates that TiVo became aware of EchoStar's design-around efforts on or about the date the first EchoStar Statement was made, specifically August 9, 2006; and TiVo became aware of other EchoStar Statements on or about the dates they were made, specifically November 7, 2006, March 1, 2007, May 10, 2007, August 9, 2007, November 9, 2007, February 26, 2008 and May 12, 2008.


August 9, 2006
November 7, 2006
March 1, 2007
May 10, 2007 
August 9, 2007
*November 9, 2007*
*February 26, 2008*
May 12, 2008​


> From the *9 November 2007* quarterly 10-Q filing:
> During April 2006, a Texas jury concluded that certain of our digital video recorders, or DVRs, infringed a patent held by Tivo. The Texas court subsequently issued an injunction prohibiting us from offering DVR functionality. A Court of Appeals has stayed that injunction during the pendency of our appeal.
> 
> In accordance with Statement of Financial Accounting Standards No. 5, "Accounting for Contingencies" ("SFAS 5"), we recorded a total reserve of $94 million in "Litigation expense" on our Condensed Consolidated Statement of Operations to reflect the jury verdict, supplemental damages and pre-judgment interest awarded by the Texas court through September 8, 2006. Based on our current analysis of the case, including the appellate record and other factors, we believe it is more likely than not that we will prevail on appeal. Consequently, we are not recording additional amounts for supplemental damages or interest subsequent to the September 8, 2006 judgment date. If the verdict is upheld on appeal, the $94 million amount would increase by approximately $35 million through the end of 2007.
> ...





> From the *26 February 2008* yearly 10-K filing:
> On January 31, 2008, the U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part the April 2006 jury verdict concluding that certain of our digital video recorders, or DVRs, infringed a patent held by Tivo. In its decision, the Federal Circuit affirmed the jury's verdict of infringement on Tivo's "software claims," upheld the award of damages from the district court, and ordered that the stay of the district court's injunction against us, which was issued pending appeal, will dissolve when the appeal becomes final. The Federal Circuit, however, found that we did not literally infringe Tivo's "hardware claims," and remanded such claims back to the district court for further proceedings. We are appealing the Federal Circuit's ruling.
> 
> In addition, we have developed and deployed 'next-generation' DVR software to our customers' DVRs. This improved software is fully operational and has been automatically downloaded to current customers (the "Design-Around"). We have formal legal opinions from outside counsel that conclude that our Design-Around does not infringe, literally or under the doctrine of equivalents, either the hardware or software claims of Tivo's patent.
> ...


What a difference three months makes. On the 9 November 2007 report, there was no mention of a design around, yet it was already completed to the adjudged receivers. On the 26 February 2008 report, DISH/SATS finally mentions that the design around is in place on all DVR's, almost 10 months after the last of the adjudged DVR's received a design around.

It was because the Court of Appeals upheld the verdict in late January 2008 that DISH/SATS finally admitted the design around was implemented on all DVR's.

*Does anyone think TiVo will use DISH/SATS SEC filings as the basis for their knowledge of the design around, and then use all those filings to prove DISH/SATS was not forthcoming about the design around?*

Please stop trying to revise history.


jacmyoung said:


> In fact the current judge's order is based on TiVo's proposed modifications to the judge's initial bench order. And again TiVo never proposed to separate the DVRs placed in use before the injunction from the ones placed after the injunction.


That is wholly incorrect.

From the filing before the 4 September 2008 status hearing, TiVo mentions that those sold with new software can also be found in contempt, which means there was a dividing line between those that had old software and those that had new software. In the lead-up to the 30 May 2008 status hearing, TiVo had also mentioned they were going after the install base which had the offending software, of course separating that from versions being sold now. And in the motion for damages, there are three distinct classes of each model which TiVo has requested compensation: those adjudged as infringing before 8 September 2006 which contained the old software, those which received the old software after 8 September 2006 and those which only ever received the new software.

*Judge Folsom's order is to determine the status of colorable difference and continuing infringement of eight models of DVR's. There obviously is a dividing line as that means DVR's sold with the new software were never adjudged, yet these are being evaluated as well.*

Again, please stop trying to revise history.


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## nobody99 (May 20, 2008)

jacmyoung said:


> In fact the current judge's order is based on TiVo's proposed modifications to the judge's initial bench order. And again TiVo never proposed to separate the DVRs placed in use before the injunction from the ones placed after the injunction.


Hmm. They are seeking contempt for not following the injunction. There are two parts to that injunction that are of interest.



first part of permanent injunction said:


> IT IS FURTHER ORDERED THAT
> Defendant...[is] hereby restrained and enjoined...from making, using, offering to sell, selling,...the Infringing Products...that are only colorably different therefrom in the context of the Infringed Claims


I've added some emphasis in the hopes that it will make it clear to you that this portion of the injunction is to prevent DISH from continuing to sell the eight-named DVRs unless they are modified to be more than colorably different.



second part of permanent injunction said:


> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality...in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.


I hope that makes it a little more understandable for you. I am not sure where you come up with the idea that TiVo "never proposed to seperate" because we don't know what they are doing. I am assuming that they will demand contempt in the first section for new DVRs that were placed in service after the decision. These will be subject to the more than colorably different test, and that's what the hearing is for.

They will then undoubtedly demand contempt for the second section because the DVR functionality was not turned off for the already-installed DVRs. I do not believe it matters if the receivers are colorably different or not; these are devices that have already been adjudicated.

Please, if you have some more information that hasn't been posted here that shows that TiVo does not intend to take this approach, please share it with the rest of us.


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## nobody99 (May 20, 2008)

Maybe this will help illustrate that TiVo _does_ intend to treat the separately. Here, Mr. Chu is explaining how KSM applies.



TiVo at September Hearing said:


> We have the Thermal-Lock products that were the expressed subject of the consent decree in the settlement. So they stopped selling Thermal-Lock. That wasn't the subject of the contempt. Instead, there were new products called the Ultra-Lok I and later the Ultra-Lok II products. There was no adjudication by a court on those products. They were not included in the consent decree. There wasn't language saying, and we are going to stop you from using or you have to disable the operation as an example of the Ultra-Lok products at all.
> 
> So, it's a typical circumstance, your honor, where there is an injunction and says thou shall not sell Product A, or similar products, or infringing products. Now, Product B comes along and then the question is, what's the procedure and is contempt appropriate? That's what ksm addresses. *It does not address the situation where we have an adjudication, a jury verdict, post trial motions, affirmed on appeal of exactly the products that they failed to disable. That is a critical difference.*


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## nobody99 (May 20, 2008)

More from the September hearing. Three classifications, only the third is affected by contempt.



TiVo September hearing said:


> Your Honor, there are three categories of damages, and on this first category, yes, I would say that this category would be unaffected by any ruling on the contempt issue. The same would be true of the second category of damages. And if I could have the next slide I will put up that amount. That's the dollar amount that includes the first and second categories.
> 
> And that *second category is just these same adjudicated DVRs but that had this software download downloaded to them afterwards through the satellite*. And the reason I would say that those damages would still be appropriate is just a very simple but-for analysis. But for the stay, these DVRs wouldn't have been out there in the field. They wouldn't have been functioning. New ones wouldn't have been placed, and so there would be nothing for this download to download to. So if you take a simple but-for analysis, but for the stay, none of these DVRs would be functioning. There would be nothing there for redesign software and therefore, yes, on these units we would say regardless of the court's ruling on the contempt, these damages would still be appropriate.
> 
> there is a third category of damages and that's what brings us up to the total of $220 million. The third category of damages would be affected by your Honor's ruling. This category is the -- these would be adjudicated receivers where this alleged redesign was in the receivers when they were placed with the customer. So when the customer opened the box, put it in the tv, started working, they already had the redesign. That's the category of damages that would be affected by a contempt ruling.


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## Curtis52 (Oct 14, 2003)

Greg Bimson said:


> Yep. TiVo admits they've known about a design around. TiVo has not admitted they knew DISH/SATS would apply that design around to receivers adjudged infringing, where Judge Folsom ordered the modification to disable the DVR functionality on those receivers.
> 
> So TiVo in practicality has admitted absolutely nothing.


I'm pretty sure that none of the Dish statements mentioned any success with a design around until after the Supreme Court turned them down and then TiVo promptly complained to the court. So, TiVo could have only known about a viable design around fairly recently.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> I'm pretty sure that none of the Dish statements mentioned any success with a design around until after the Supreme Court turned them down and then TiVo promptly complained to the court. So, TiVo could have only known about a viable design around fairly recently.


E* had given TiVo the new software code before the 5/30/08 status meeting, and Rogers said their engineers looked at the code and had concluded the design around did not happen, or was impossible. That was way before the Supreme Court decision.

E* in turn in their recent request sought the answers as how the above Rogers' conclusions were reached, by seeking the engineers' communication details, presumably how they examined and tested the new software to make the conclusion that either nothing new was in there, or it was impossible.

Keep in mind the new software code did not change, it was a legit question to ask how TiVo reached such conclusion after they had the chance to look at the new code.

TiVo's response was we would not answer such questions because it was our trade secret and protected under the court Protective Order.

For one thing, the Protective Order does not prevent parties from disclosing sensitive information to each other and to the court, rather to provide specific means to prevent the leak of the information or the parties from using such information for anything else other than the sole purpose of the court proceedings.

For another, even if the information may be trade secret, since TiVo needs to prove by clear and convincing evidence that the new software still infringes, you would think TiVo would be willing to sacrifice a little and provide the evidence why based on their engineers' analysis of the new code, that it was no good, impossible, or no real design around at all.

The fact TiVo mostly recently refused to provide the proof is a good indication the new design worked, and TiVo and Rogers were simply throwing BS around about the new software.

I am not going to respond to any of the other posts because they were again old arguments.


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## Greg Bimson (May 5, 2003)

The decision from the Court of Appeals, upholding most but remanding some of Judge Folsom's verdict, released 31 January 2008.



> From DISH Network, released 31 January 2008:
> "We are pleased the Federal Circuit found for us on Tivo's hardware claims, but are disappointed in the Federal Circuit's decision on the software claims. The decision, however, will have no effect on our current or future customers because EchoStar's engineers have developed and deployed 'next-generation' DVR software to our customers' DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit's ruling.


That was the very first admission of a design around, downloaded to the adjudged receivers.


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## nobody99 (May 20, 2008)

jacmyoung said:


> E* had given TiVo the new software code before the 5/30/08 status meeting, and Rogers said their engineers looked at the code and had concluded the design around did not happen, or was impossible. That was way before the Supreme Court decision.
> 
> E* in turn in their recent request sought the answers as how the above Rogers' conclusions were reached, by seeking the engineers' communication details, presumably how they examined and tested the new software to make the conclusion that either nothing new was in there, or it was impossible.
> 
> ...


I'd love to reply to yours, but I honestly have no idea what point you are trying to make with this post.


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## Curtis52 (Oct 14, 2003)

According to Dish, the software and the Fish and Richardson opinion letter were provided to TiVo on April 18, 2008, the day the case was remanded back to the district court.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> According to Dish, the software and the Fish and Richardson opinion letter were provided to TiVo on April 18, 2008, the day the case was remanded back to the district court.


Pretty much what I said.

The E*'s 16 questions (as Greg put it) pretty much evolved around TiVo's public comments right after they received the above information and Rogers said his engineers told him the new software was impossible and could not have been true. Later in the court filing though TiVo said it still infringed, but "to be sure" TiVo asked for a disclosure of more design around details.

That disclosure request was denied by the judge after the 5/30/08 meeting.

Now TiVo said we would not answer those 16 questions in part because we are protected under the court Protective Order to not disclose any trade secret.

Really? What can be so secretive in their engineers' communication to Rogers that the new software was impossible or did not make it? Any patentee would have been more than happy to tell the infringer and the court exactly why they, after examining the code, said that the infringer's design around was just impossible or did/did not make it, no reason to avoid answering those questions head on.

Unless of course if TiVo was just blowing smoke.


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> Now TiVo said we would not answer those 16 questions in part because we are protected under the court Protective Order to not disclose any trade secret.
> 
> Really? What can be so secretive in their engineers' communication to Rogers that the new software was impossible or did not make it?


...uhh, before we start even getting into that, I don't want any of this to go off topic...

DISH/SATS provided code, and code only, to TiVo. DISH/SATS would not provide the test engine upon which the code was implemented. Therefore, let's not even talk about what sections are secretive...


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## nobody99 (May 20, 2008)

jacmyoung, I am wondering why you are so focused on Tom Rogers comments to Bear Stearns about it being "highly, highly unlikely" that DISH has a valid workaround.

What difference does it make? What he says to an investor group, or to his drinking buddies, or to his softball team really doesn't seem to matter as far as the trial goes. If he said "I hate Charlie Ergen, he's a jackass" would that matter to this case? Why do you dwell on this, with multiple posts about a comment someone made?

I'm surprised you're not more focused on the actual issues in front of the court.


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## jacmyoung (Sep 9, 2006)

Greg Bimson said:


> ...uhh, before we start even getting into that, I don't want any of this to go off topic...
> 
> DISH/SATS provided code, and code only, to TiVo. DISH/SATS would not provide the test engine upon which the code was implemented. Therefore, let's not even talk about what sections are secretive...


Please show us where is TiVo currently saying that E* refused to provide the test product. If this is the case, yes it is a big deal.

I also want to point out that let's not try to dig up things on or prior to the 9/4/08 hearing, rather what parties are saying *now*. Not only because the moderators had reminded us not to do so, but also anything on or before 9/4/08 are past sentences.

This is a new hearing, and in this new hearing, two *new* issues will be addressed, and only the two new issues. You cannot bring back some old third issue, if you do, E* can easily appeal and have that issue thrown out, because if you want the third issue continue be a part of the next hearing, it has to be first proposed, then allowed by the judge, and then the other party given the chance to object to it, or argue against it.

TiVo of course can still bring up that third issue (separation of the DVRs pre and post the injunction), and the judge can even buy into it and rule on that, but since E* will have no chance to argue against it and defend themselves on that issue, it will be tossed out on appeal becasue E*'s due process right will have been violated.

Now to answer the question then why the Rogers' comments are relevant here? After all they were made some time ago. Well they should not matter. The only reason I brought this issue up was because some of you brought them up by discussing the new joint stipulation, and trying to make a big deal out of it.

I was only responding to the issues brought up by you folks. If you think it should be dropped, I am more than happy to comply.

In front of us are two things to be addressed in the next hearing, first whether the new software is only colorably different than the old software. And based on the reading of all the case law, if the answer is more than colorable, there cannot be a contempt, the proceeding should end. E* is arguing that since the two very pieces of evidence (the index table and the multiple buffers for auto flow control), you know the two things TiVo said were the *"core of the invention"* that proved the old DVRs infringed, they are now removed, gone, evidence no more. Therefore the differences are certainly more than colorable.

Keep in mind the above colorable difference arugment has nothing to do with the patent claim limitations at all, the specific terms such as "parse", "temporary store", "extract"... are not discussed here.

The second issue is whether the 8 named DVRs still infringe on the Claims 31 and 61, literally or by equivalents. In the second issue the claims limitations will be addressed. And of course I will not repeat them.


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## nobody99 (May 20, 2008)

jacmyoung said:


> In front of us are two things to be addressed in the next hearing, first whether the new software is only colorably different than the old software. And based on the reading of all the case law, if the answer is more than colorable, there cannot be a contempt, the proceeding should end.


Perhaps it is time once again for James & Jason to close the thread as we are, once again, back to the same tired old stubborness.

You state, as fact, that "there cannot be contempt" if there is more than a colorable difference based on _your_ interpretation of case law. I will wholeheartedly agree with you that contempt won't be found for sales of _new DVRS_ if the difference is more than colorable. However, KSM offers absolutely no precedence for the actual devices that are already adjudicated to infringe. The Jedi Mindtrick of new software = new receiver doesn't work for some of us.

TiVo's lawyers intepret things differently than you. And since they are are _actual_ lawyers, as opposed to people playing a lawyer on message boards, I tend to give their opinions a bit more credence.



TiVo Legal Team said:


> So, it's a typical circumstance, your honor, where there is an injunction and says thou shall not sell Product A, or similar products, or infringing products. Now, Product B comes along and then the question is, what's the procedure and is contempt appropriate? That's what ksm addresses. It does not address the situation where we have an adjudication, a jury verdict, post trial motions, affirmed on appeal of exactly the products that they failed to disable. That is a critical difference.


DISH is resting their entire case on the idea that KSM allows an already-adjudicated device to escape scrutiny. TiVo disagrees. For that reason, this isn't simply a case of "more than colorable = no contempt"

So let's suppose for the sake of argument a best-case scenario for DISH that the court finds the software to be more than colorable. That means new sales of the eight-named DVRs escape contempt.

But it does not address what happens to the already-adjudicated DVRS, the 4+ million already in the homes of customers at the time of the verdict.

This is where the precedence will be set in either case. It does not matter what his decision is, it will be the new standard by patent cases for field-modifiable devices are judged.

I suspect that Judge Folsom will require a somewhat higher level of court involvement for these devices. In other words, DISH will need to get court approval for changes to them. Once they get court approval and apply the changes, they are out of "contempt jail."

As a result, I believe that these devices will be held in contempt through, at the very least, the date of the hearing.

Of course, none of this matters if the software is merely colorable or there is still infrigement by DOE. In that event, all devices - new sales included - will be subject to contempt.


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## Curtis52 (Oct 14, 2003)

> TiVo hereby moves for an Order that EchoStar be held in contempt of court and that it be ordered to comply immediately with the Order "to disable the DVR functionality," finally allowing the injunctive relief intended to protect TiVo to take effect.


Newly sold named DVRs are not the subject of TiVo's contempt motion. The already installed DVRs will be looked at for colorable difference at the hearing. Apparently, it matters. If it didn't matter, he would have already ruled on it.


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## nobody99 (May 20, 2008)

Curtis52 said:


> > TiVo hereby moves for an Order that EchoStar be held in contempt of court and that it be ordered to comply immediately with the Order "to disable the DVR functionality," finally allowing the injunctive relief intended to protect TiVo to take effect.
> 
> 
> Newly sold named DVRs are not the subject of TiVo's contempt motion. The already installed DVRs will be looked at for colorable difference at the hearing. Apparently, it matters. If it didn't matter, he would have already ruled on it.


Where does it say anything about not being newly-sold? There are three classes of DVRS that are _currently_ installed in users homes:

1) Those present at the time of the verdict
2) Those that were installed after the verdict with the old software
3) Those that were installed after the verdict with the new software

So yes, some installed DVRs will be looked at for colorable difference (#3). But the quote you provided reveals nothing with relation to those DVRs that were installed at the time of the verdict (aka, the "convicted DVRs").

The text is already posted, on this page in fact, that TiVo believes there are three classes of DVRs in this motion (at least as far as damages go). I'm also curious how you stretch your citation ("to disable the DVR functionality") into a meaning that they must already be installed? It says nothing of the sort. It is basically saying that the eight-named models should no longer have DVR functionality. That's it.


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## jacmyoung (Sep 9, 2006)

The problem is you again continue to quote the 9/4/08 hearing. That one was over.

What you need to look at is the current order, in which there is absolutely no three classes, no distinction between those DVRs, but any and all 8 named DVRs. And the judge's ruling will be on all those DVRs.

TiVo no longer tries to separate those DVRs, TiVo's own proposed order did not try to separate them, and the judge's order does not separate them.

As I said, this is a new hearing, don't keep quoting the old ones.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> Newly sold named DVRs are not the subject of TiVo's contempt motion. The already installed DVRs will be looked at for colorable difference at the hearing. Apparently, it matters. If it didn't matter, he would have already ruled on it.


I belive the newly sold 8 named DVRs are included too, simply because the order does not separate them, just that those DVRs that bear the 8 model numbers.


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## Greg Bimson (May 5, 2003)

jacmyoung said:


> I also want to point out that let's not try to dig up things on or prior to the 9/4/08 hearing, rather what parties are saying *now*. Not only because the moderators had reminded us not to do so, but also anything on or before 9/4/08 are past sentences.





jacmyoung said:


> The E*'s 16 questions (as Greg put it) pretty much evolved around TiVo's public comments right after they received the above information and Rogers said his engineers told him the new software was impossible and could not have been true. Later in the court filing though TiVo said it still infringed, but "to be sure" TiVo asked for a disclosure of more design around details.
> 
> That disclosure request was denied by the judge after the 5/30/08 meeting.


If that which happened before this order for an evidentiary hearing on 17 February didn't matter, why is DISH/SATS spending so much of their time trying to discern what TiVo knew regarding the design around and CEO Rogers comments that the design around more than likely still infringed upon the Time Warp patent?

At this point, surprisingly enough, I will also ask for this thread to be closed. I am getting tired of arguments using the ping-pong theory: throw 1,000 ping-pong balls up in the air and paddle all them before they hit the ground. Sure, some will be missed, but some of these ping-pong ball arguments don't even matter.


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## Chris Blount (Jun 22, 2001)

Thread closed.


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