# TiVo vs EchoStar: Echostar found to be in Contempt



## Curtis52

IN THE UNITED STATES DISTRICT COURT 
FOR THE EASTERN DISTRICT OF TEXAS 
MARSHALL DIVISION 
TIVO INC., 
Plaintiff, 
vs. 
DISH NETWORK CORPORATION, 
et al., 
Defendants. 
§ 
§ 
CIVIL ACTION NO. 2:04-CV-01 (DF) 
AMENDED FINAL JUDGMENT AND PERMANENT INJUNCTION 
Pursuant to Rule 58 of the Federal Rules of Civil Procedure, and in accordance with the jury verdict delivered on April 13, 2006 and the Federal Circuit mandate issued April 18, 2008, and with the Court’s contemporaneously filed opinions and orders, the Court hereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 (“the ’389 Patent”) claims 31 and 61 (“the Infringed Claims”) by Defendants’ following DVR receivers (collectively the “Infringing Products”): DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942. The jury in this case found EchoStar’s infringement to be willful, but the Court, finding that Echostar did not act in bad faith and that this is not an “exceptional case,” has determined that there should be no enhancement of damages and no award of attorneys fees pursuant 
to 35 U.S.C. Sections 284 and 285. The Court also enters judgment for Plaintiff on Defendants’ counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability. 

IT IS THEREFORE ORDERED THAT Plaintiff shall have and recover from Defendants, 
jointly and severally, the total sum of $73,991,964.00, together with prejudgment interest at the rateof prime, said prejudgment interest in the total sum of $5,367,544.00, together with supplemental damages in the amount of $10,317,108.00, together with post-judgment interest on the entire sum calculated pursuant to 28 U.S.C. § 1961. In addition, Plaintiff shall have and recover from 
Defendants, jointly and severally, the sum of $103,068,836 in damages accrued during the stay of this Court’s injunction, together with post-judgment interest on that sum calculated pursuant to 28 U.S.C. § 1961. The amounts awarded in this judgment shall bear interest from the date of judgment at the lawful federal rate. 

It is FURTHER ORDERED that each Defendant, its officers, agents, servants, employees, 
and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 
65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the ‘389 Patent. 

Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance 
of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end-user or subscriber. The DVR functionality, storage to and playback from a hard disk drive, shall not be enabled in any new placements of the Infringing Products. 

Defendants shall forthwith provide written notice of this judgment, and the injunction 
ordered herein, to their officers, directors, agents, servants, representatives, attorneys, employees,subsidiaries and affiliates, and those persons in active concert or participation with them, including any and all manufacturers, distributors, retailers, and service providers who have been involved in the making, using, selling, offering for sale or importing of any Infringing Products, and to all other persons or entities involved in any way with the making, using, selling, offering for sale or importing of any Infringing Products. Defendants shall take whatever means are necessary or appropriate to 
ensure that this order is properly complied with. This injunction shall run until the expiration of the ’389 Patent. 

It is FURTHER ORDERED that Defendants shall inform this Court of any further attempt 
to design around the ’389 Patent and shall seek approval from this Court before any such design- around is implemented. 

This Court retains jurisdiction over Defendants to enforce any and all aspects of this 
Judgment and Permanent Injunction, including the award of monetary sanctions for EchoStar’s contempt of this Court’s injunction. 

The Court further retains jurisdiction to award Plaintiff amounts for supplemental damages, interest, costs, attorneys fees and such other or further relief as may be just and proper. All relief not specifically granted herein is denied. All pending motions not previously ruled on are denied. This is a Final Judgment and is appealable. 

SIGNED this second day of June, 2009


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## Curtis0620

TiVo share price is shooting up in after hours.


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## Michael P

So does this affect the other models not on the infringing list?


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## Richard King

Tivo is only up 45% after hours. :eek2:
10 days of Tivo vs. 10 days of Dish.


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## Lostinspace

$187,373,908 and counting. OUCH.


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## Curtis52

Michael P said:


> So does this affect the other models not on the infringing list?


There would need to be another contempt hearing to look at the newer models. The chances are that they use the same infringed processes.


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## Curtis52

Lostinspace said:


> $187,373,908 and counting. OUCH.


Plus interest back several years and the sanctions for contempt haven't even been set yet. That happens in July.


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## phrelin

Well, we should have this resolved in another 6 to 8 months and 600 posts. But IMHO the critical wording here is likely to be:


> ...each Defendant, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined...from making, using, offering to sell, selling, or importing in the United States, the Infringing Products, either alone or in combination with any other product *and all other products that are only colorably different therefrom in the context of the Infringed Claims*, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 Patent.


 Whether that means the software in the 922 should make for some interesting discussion. Regardless, my two 508's stored in a closet are doorstops unless Charlie can come to some agreement with TiVo.


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## Richard King

TIVO statement: 
http://custom.marketwatch.com/custo...p?guid={EEC65BB1-929C-465A-A9CB-ADBAE7AA395E}


> ALVISO, Calif., June 2, 2009 /PRNewswire-FirstCall via COMTEX/ -- TiVo Inc. (TIVO), the creator of and a leader in television products and services for digital video recorders (DVR), offered the following statement today regarding the decision by the United States District Court, Eastern District of Texas, in the lawsuit against EchoStar Communications Corporation: "We are extremely gratified by the Court's well reasoned and thorough decision, in which it rejected EchoStar's attempted workaround claim regarding the TiVo patent, found EchoStar to be in contempt of court and ordered the permanent injunction fully enforced. In addition, the Court's award of an additional $103 million plus interest through April 2008 makes this victory all the more important. EchoStar may attempt to further delay this case but we are very pleased the Court has made it clear that there are major ramifications for continued infringement."


More...


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## bobukcat

> This injunction shall run until the expiration of the '389 Patent.


I'm sure it's mentioned somewhere in the ridiculously long previous thread on this subject but when does that '389 patent expire?


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## Tom Robertson

Curtis52, thanks for the finding and the post!

I've closed the other discussion thread with a pointer to here.

Cheers,
Tom


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## Tom Robertson

bobukcat said:


> I'm sure it's mentioned somewhere in the ridiculously long previous thread on this subject but when does that '389 patent expire?


I think something like 2017/2018?


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## Curtis52

bobukcat said:


> I'm sure it's mentioned somewhere in the ridiculously long previous thread on this subject but when does that '389 patent expire?


07-30-2018


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## phrelin

So does this mean that the new Dish Network, which is theoretically independent of the new Echostar which may not have any lawful DVR's to sell to Dish, can start offering TiVo products?


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## Tom Robertson

phrelin said:


> So does this mean that the new Dish Network, which is theoretically independent of the new Echostar which may not have any lawful DVR's to sell to Dish, can start offering TiVo products?


I'm guessing at this point, Dish/Echostar had better settle on an agreement with TiVo in 29 days...

Cuz I bet Dish won't be able to get another stay and won't be able to get the units replaced in 30 days, and won't be able to get TiVo units out in 30 days either...

Cheers,
Tom


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## bobukcat

Curtis52 said:


> 07-30-2018


Thanks, obviously none of these receivers are going to be usable at that point anyway. It just gets curiouser and curiouser.....I predict a settlement (in the next 18 months or 1200 posts) :lol:


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## bobukcat

phrelin said:


> So does this mean that the new Dish Network, which is theoretically independent of the new Echostar which may not have any lawful DVR's to sell to Dish, can start offering TiVo products?


LOL - that'll be the day! :eek2:


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## tnsprin

I am sure that Dish has had some plans in mind if they lost this contempt case. 

I suspect that for one think they will push to have the Tivo patent ruled on by the PTO. That was on hold I think.

But obviously they have to do something for the DVR's they have been ruled as violating. This includes most of the SD receivers they have in service. If they allow them all to be disabled for more than a little while, they will be losing lots of customers. I don't know if they have another design around ready that think they can get the judge to allow. Replacing all the SD DVR's is way to expensive and iffy since the other current DVR receivers may also be ruled against in the future if nothing changes. 

Of course they may just give in and license Tivo's patent. 

So we need to hear something from Dish before 30 days are out on what they plan to do.


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## Curtis52

tnsprin said:


> I am sure that Dish has had some plans in mind if they lost this contempt case.
> 
> I suspect that for one think they will push to have the Tivo patent ruled on. That was on hold.


It isn't on hold. A patent examiner is looking at Dish's latest reexamination request. Dish lost the previous reexamination at the patent office. It doesn't matter though. A patent reexamination isn't final until all appeals are exhausted. That can take years. It can go all the way to the Supreme Court. Meanwhile, the law requires that the patent be considered valid.


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## phrelin

Hmmmm. Well I see a possible scenario like this. TiVo offers a deal to Dish Network where it would license Dish Network for it's customers to use whatever Echostar boxes it has sold or leased or will sell or lease and TiVo would start developing products for Dish Network. Charlie and any other officer or employee associated with both Echostar and Dish would face a conflict of interest and couldn't participate in the decision making.


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## Tom Robertson

phrelin said:


> Hmmmm. Well I see a possible scenario like this. TiVo offers a deal to Dish Network where it would license Dish Network for it's customers to use whatever Echostar boxes it has sold or leased or will sell or lease and TiVo would start developing products for Dish Network. Charlie and any other officer or employee associated with both Echostar and Dish would face a conflict of interest and couldn't participate in the decision making.


I can't see how any corporate shenanigans could save Dish or echostar from this action. Either Dish (or Echostar) settles on recurring fees to TiVo, gets another stay (somehow), or they turn off the DVRs (which I can't see.)

Cheers,
Tom


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## Richard King

http://custom.marketwatch.com/custo...p?guid={C7F27FB3-244E-4955-95B2-2512D913CC4A}
Dish/SATS Statement...


> ENGLEWOOD, Colo., June 2, 2009 /PRNewswire-FirstCall via COMTEX/ -- DISH Network Corporation (DISH) and EchoStar Corporation (SATS) issued the following statement regarding today's ruling by the U.S. District Court in Texarkana, Texas, in EchoStar Communications Corporation vs. Tivo: "We are disappointed in the district court's decision finding us in contempt. *DISH Network will appeal, and will file a motion to stay the order with the Federal Circuit. *We believe a stay is warranted and that we have strong grounds for appeal. Our engineers spent close to a year designing-around Tivo's patent and removed the very features that Tivo said infringed at trial. *Existing DISH Network customers with DVRs are not immediately impacted by these recent developments*."


 More.....

Bolded by me.... wishful thinking?


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## space86

Question I have a VIP 622 and a VIP 722, does either the 622 or 722
going to be shutoff, or just older receivers?


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## phrelin

Tom Robertson said:


> I can't see how any corporate shenanigans could save Dish or echostar from this action. Either Dish (or Echostar) settles on recurring fees to TiVo, gets another stay (somehow), or they turn off the DVRs (which I can't see.)
> 
> Cheers,
> Tom


Back when Dish and Echostar split, I wondered what would happen if Charlie lost the lawsuit. Dish is the corporation that needs to keep the existing boxes working. It has no obligation to buy illegal boxes from Echostar and if I were a Dish stockholder, I'd be asking Dish to (a) immediately cease buying new boxes from Echostar and (b) file a lawsuit against Echostar to protect Dish from further damages for boxes purchased since January 2008.

Whatever Charlie's goals are, he's got a problem with two corporations with different and conflicting minority shareholder interests.

Dish Network still has value in its customer list, agreements with networks, and satellite rights regardless of the TiVo issue. All it has to do is turn off the DVR capabilities of the boxes or get a license agreement with TiVo. 
Until the issue with TiVo is resolved, Echostar has little or no net value unless it cuts a deal with TiVo. And technically, I don't see why TiVo has any obligation to license Echostar to manufacture boxes. Maybe Echostar could find a buyer for the Sling operation.


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## phrelin

space86 said:


> Question I have a VIP 622 and a VIP 722, does either the 622 or 722 going to be shutoff, or just older receivers?


Not soon, and the way things are, maybe never.


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## scooper

What I DON'T see is a link to that text at this point (i.e. independent confirmation).


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## Tom Robertson

scooper said:


> What I DON'T see is a link to that text at this point.


I fixed Richard's links with URL tags.

Cheers,
Tom


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## phrelin

Richard King said:


> http://custom.marketwatch.com/custo...p?guid={C7F27FB3-244E-4955-95B2-2512D913CC4A}
> Dish/SATS Statement...
> More.....
> 
> Bolded by me.... wishful thinking?


If I were the circuit judge or even an appeals court judge looking at Charlie's appeal, it most certainly be wishful thinking for Charlie to ask for a stay on the listed boxes. But who knows.

Immediate impact? Without a stay, the listed DVR's become excellent recievers in 30 days. And I think this judge is making it clear that he's not amenable to further discussion except to further penalize Charlie for failure to comply.


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## Sterling

Looks like Justice is being served.

Finally.


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## Curtis52

Judge Folsom:

"For the reasons set forth above, this Court finds EchoStar in contempt of its permanent injunction. EchoStar's modified software is not more than colorably different from the products adjudged to infringe; furthermore, EchoStar's products continue to infringe TiVo's patent. Finally, EchoStar failed to comply this Court's order that it disable the DVR functionality in the infringing products.

The harm caused to TiVo by EchoStar's contempt is substantial. EchoStar has gained millions of customers since this Court's injunction issued, customers that are now potentially unreachable by TiVo. See Dkt. No. 773 at 10. As this Court has noted in the past, "loss of market share and of customer base as a result of infringement cause severe injury," and "every day ofDefendant's infringement affects Plaintiff's business." Id. at 10-11. Although EchoStar requests that this Court stay its injunction further, this Court declines to do so. EchoStar has escaped this Court's injunction for over two years and further delay will be manifestly unjust to TiVo and cause 
TiVo substantial harm.

Although EchoStar is required to bring itself into compliance with this Court's permanent injunction, *the Court will defer any ruling on the issue of monetary sanctions at this time.* Additionally, EchoStar is required to inform this Court of any future attempts to design-around the '389 Patent and obtain Court approval before any such design-around is implemented.

An Order and an Amended Final Judgment and Permanent Injunction will soon be entered in accordance with this opinion."

SIGNED this 2nd day of June, 2009
____

"June 26, 2009 TiVo's Motion & Opening Brief on Sanctions due 
July 10, 2009 EchoStar's Responsive Brief on Sanctions due 
July 17, 2009 TiVo's Reply Brief due 
July 24, 2009 EchoStar's Sur-reply Brief due"


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## James Long

Court Files attached.


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## Richard King

phrelin said:


> Back when Dish and Echostar split, I wondered what would happen if Charlie lost the lawsuit. Dish is the corporation that needs to keep the existing boxes working. It has no obligation to buy illegal boxes from Echostar and if I were a Dish stockholder, I'd be asking Dish to (a) immediately cease buying new boxes from Echostar and (b) file a lawsuit against Echostar to protect Dish from further damages for boxes purchased since January 2008.
> 
> Whatever Charlie's goals are, he's got a problem with two corporations with different and conflicting minority shareholder interests.
> 
> Dish Network still has value in its customer list, agreements with networks, and satellite rights regardless of the TiVo issue. All it has to do is turn off the DVR capabilities of the boxes or get a license agreement with TiVo.
> Until the issue with TiVo is resolved, Echostar has little or no net value unless it cuts a deal with TiVo. And technically, I don't see why TiVo has any obligation to license Echostar to manufacture boxes. Maybe Echostar could find a buyer for the Sling operation.


Actually, this could work quite well for Echostar. If Dish has to replace all those boxes they, most likely, will come from Echostar (with TIVO software or non violating in house software). After hours Echostar stock is still up for the day while Dish is down significantly.


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## Tom Robertson

Thanks, Richard and James for your links too! 

Cheers,
Tom


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## phrelin

Richard King said:


> Actually, this could work quite well for Echostar. If Dish has to replace all those boxes they, most likely, will come from Echostar (with TIVO software or non violating in house software). After hours Echostar stock is still up for the day while Dish is down significantly.


Dish wouldn't have to replace them if they had a licensing agreement with TiVo.

If TiVo has their act together, they will offer a reasonable licensing agreement to Dish Network for all the boxes in its possession or in service within the next few weeks without any offer to Echostar.


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## Tom Robertson

phrelin said:


> Dish wouldn't have to replace them if they had a licensing agreement with TiVo.
> 
> If TiVo has their act together, they will offer a reasonable licensing agreement to Dish Network for all the boxes in its possession or in service within the next few weeks without any offer to Echostar.


I suspect TiVo has had that offer ready since day 1. Now they just changed the numbers in the word processor.


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## joe42

So what does this mean for those of us with these old models? DVR is about the only way I watch tv now. Should I call and ask for an upgrade to a model not on the list?


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## scooper

joe42 said:


> So what does this mean for those of us with these old models? DVR is about the only way I watch tv now. Should I call and ask for an upgrade to a model not on the list?


That's a darn good question - my guess is that all Dish's DVRs are using at least the same ideas, except for possible implementation details. So, I'm not sure if it would do any good.


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## Sterling

Folsom found them in contempt "on the face" 


"Even if EchoStar had achieved a non-infringing design-around, this Court would still find 
that EchoStar is in contempt of this Court’s permanent injunction. EchoStar never complied with 
the Disablement Provision of this Court’s order, which ordered EchoStar to “disable the DVR 
functionality (i.e. disable all storage to and playback from a hard disk drive of television data) in all 
but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.” 


Scratching my head now, Who was it that said that would never happpen ???


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## Curtis52

Sterling said:


> Scratching my head now, Who was it that said that would never happpen ???


I said that if the judge made such a ruling that it would be overturned on appeal. I still think that but it may not matter. He also found that there isn't more than a colorable difference which I agree with.


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## James Long

scooper said:


> That's a darn good question - my guess is that all Dish's DVRs are using at least the same ideas, except for possible implementation details. So, I'm not sure if it would do any good.


Until other DVRs become named in the court action they are safe. As noted earlier, if TiVo wants to shut down the ViP series DVRs they have to PROVE that they also infringe.

The current action is only about the named receivers.


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## GrumpyBear

joe42 said:


> So what does this mean for those of us with these old models? DVR is about the only way I watch tv now. Should I call and ask for an upgrade to a model not on the list?


I would wait, on the upgrade. Dish may have no choice but to swap it out at thier cost down the road.


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## phrelin

James, thanks for the links to the documents. After reading the 35-page memorandum (04-0001-0929-Memorandum.pdf ), IMHO Charlie has a snowball's chance in you know where with the appellate courts. It's been a long time since I've read a legal document that clear and concise and that reasonable. And IMHO the judge has killed the "work around" software. I don't think any appeals court will take up the factual issues on that matter and I think TiVo could argue that the matter has been decided.


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## jessshaun

I am so glad I sold my old 625 for $135 on ebay a few weeks ago.

My question is, I have family that still have Dish Network, and more importantly a 625 in use at home. I have warned them of this ruling today, but should they be worried about Dish shutting off the DVR functions? Or do ya'll think that Dish and Tivo will kiss and make up, and Dish will license the software from Tivo?

I'm sure they would pay an increase in the DVR fee before they would stand for the DVR getting shut off. I ask this because I don't see the judge issuing any kind of stay of the injunction this time.


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## James Long

Something will be worked out. At worst DISH will just refuse to turn off their DVRs. What is the court going to do, fine them? Hopefully the appeals court will at least grant a stay so DISH and TiVo can hammer out a fair deal.

Armed marshals, with guns. The only way DISH will turn off their DVRs. It is too important of a service offering to go without.


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## Richard King

I think they'll be a bail out.


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## spear61

50/50 chance Dish will prevail on appeal. Another wait for many more months.

And, " ---the Court, finding that Echostar did not act in bad faith and that this is not an “exceptional case,” has determined that there should be no enhancement of damages and no award of attorneys fees pursuant---"


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## Curtis52

spear61 said:


> 50/50 chance Dish will prevail on appeal. Another wait for many more months.
> 
> And, " ---the Court, finding that Echostar did not act in bad faith and that this is not an "exceptional case," has determined that there should be no enhancement of damages and no award of attorneys fees pursuant---"


That was left intact from the original judgment. The only thing added to that paragraph was the new monetary award for damages during the stay. The appeals court awarded the stay, Dish can't be faulted for something the appeals court did.

On the other hand, the monetary contempt sanction has yet to be calculated and could be enormously punitive by itself and could easily include legal expenses.


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## gully_foyle

James Long said:


> Until other DVRs become named in the court action they are safe. As noted earlier, if TiVo wants to shut down the ViP series DVRs they have to PROVE that they also infringe.


The judge could always issue a preliminary injunction based on Echostar's behavior to date. It is likely that TiVo would prevail there too, and every day Echostar can continue to infringe is a day that TiVo contiues to be harmed.


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## scooper

OK - we need to set this clear - 

Dish split itself into 2 parts - (correct me if I put the wrong name on the wrong part)
Dish Network - This is the subscription programming part 
Echostar - This is the company that does the Hardware

At this point - the Tivo suit should be with the Echostar part (i.e. the satellite receiver / DVR maker). So any lawsuit issues would have to be dealt with by them, although possible remedies (such as shutting down DVR capabilities) might have to be done by Dish Network.


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## Ken_F

scooper said:


> At this point - the Tivo suit should be with the Echostar part (i.e. the satellite receiver / DVR maker). So any lawsuit issues would have to be dealt with by them, although possible remedies (such as shutting down DVR capabilities) might have to be done by Dish Network.


Dish Network is the one who deployed the hardware, not Echostar. No infringement occurs until the product is deployed to customers, and Dish Network is the company responsible for that.

Furthermore, you can't avoid legal obligations by splitting your company in two. Otherwise, any company facing a substantial settlement would simply "spin off" the culpable part of their organization into a new company.


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## peak_reception

phrelin said:


> James, thanks for the links to the documents. After reading the 35-page memorandum (04-0001-0929-Memorandum.pdf ), IMHO Charlie has a snowball's chance in you know where with the appellate courts. It's been a long time since I've read a legal document that clear and concise and that reasonable. And IMHO the judge has killed the "work around" software. I don't think any appeals court will take up the factual issues on that matter and I think TiVo could argue that the matter has been decided.


Just finished wading through the entire decision and I agree that it is a tour-de-force of clarity and judgment. I'm not as sure that the federal appeals court will pass on taking their whack at it, though E* probably has not endeared themselves with the CAFC by hiding the workaround from them (CAFC) the first time around. Judges don't like that kind of behavior even if it doesn't make it into the written decision.

Most worrisome of all for DISH though is that this decision could very well affect the VIP models of DVR also in litigation to come if TiVo pursues that path.


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## scooper

Ken_F said:


> Dish Network is the one who deployed the hardware, not Echostar. No infringement occurs until the product is deployed to customers, and Dish Network is the company responsible for that.
> 
> Furthermore, you can't avoid legal obligations by splitting your company in two. Otherwise, any company facing a substantial settlement would simply "spin off" the culpable part of their organization into a new company.


Really ? Would you like to explain that to Sprint / Embarq ?


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## peak_reception

The most surprising part of Judge Folsom's decision (for me) comes here:


> Even if EchoStar had achieved a non-infringing design-around, this Court would still find
> that EchoStar is in contempt of this Court's permanent injunction.


 That clearly flies against what everyone thought the situation was. It also begs the question why not just rule In Contempt last September then? And let the CAFC sort out the mess on appeal.

Judge Folsom does give his reasoning but if it is accepted at face value then he perhaps should have set up the whole process as such at the end of May/early June 2008 to include colorable difference in a joint proceeding with Contempt intead of the confusing bungle that actually took place.


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## scooper

If this was decided on the face - then WHY go through all that of the last couple hearings ? It's almost as if he's ASKING to be overturned, and he's already done the appeals court's work for them.


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## James Long

scooper said:


> At this point - the Tivo suit should be with the Echostar part (i.e. the satellite receiver / DVR maker). So any lawsuit issues would have to be dealt with by them, although possible remedies (such as shutting down DVR capabilities) might have to be done by Dish Network.


When DISH split both parts were added to the suit (the rename and the spin off). The company remains culpable, in all of it's parts.



scooper said:


> If this was decided on the face - then WHY go through all that of the last couple hearings ? It's almost as if he's ASKING to be overturned, and he's already done the appeals court's work for them.


The way I read it, DISH has also been found guilty of continuing to infringe - so even IF the "face of the injunction" issue had been ignored (or is overturned) there is still an issue of infringement. Per Judge Folsom the version of the 501/508/510/522/625/721/921/942 software investigated at the most recent hearing in February is no more than colorably different than the one the jury found to be infringing two years ago - and it still infringes.

The face of the injunction is just gravy - noting that even IF there was no infringement DISH would be in contempt. It will probably play into TiVo's damage request (due later this month).

BTW: The moved Delaware case has not been assigned to Judge Folsom. It has been assigned to Judge T. John Ward. It should be interesting to see how Judge Ward handles the new software issue.


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## scooper

James Long said:


> BTW: The moved Delaware case has not been assigned to Judge Folsom. It has been assigned to Judge T. John Ward. It should be interesting to see how Judge Ward handles the new software issue.


I'm surprised - I would of thought that give it to the judge with the experiance with the previous case...


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## JohnH

Since the ruling seems to be *contempt*, I wonder if any agreement netween EchoStar and Tivo could change any of the orders?


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## dgordo

scooper said:


> I'm surprised - I would of thought that give it to the judge with the experiance with the previous case...


When a case begins in a jurisdiction it is randomly assigned to a judge. Expect the case to be moved to judge folsom's docket.


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## James Long

JohnH said:


> Since the ruling seems to be *contempt*, I wonder if any agreement between EchoStar and Tivo could change any of the orders?


It is a civil case ... TiVo can go back at any time and say "nevermind" and all of the penalties would be dropped. Or they could make a motion that the court adjust the damages to something DISH and TiVo agree to.

That may be the outcome (and in my opinion is just what TiVo is counting on ... a long term agreement that gives them more cash). The infusion of cash from the first court judgement (paid when the Supreme Court declined to hear the case) was very helpful to TiVo. The additional cash awarded today and the yet to be determined damages will also be helpful if/when they are eventually paid ... but the thing TiVo needs most is ongoing income. They won't get that without a settlement (unless you count winning a court battle every two years and getting damages to date as ongoing income).

At some point a settlement will make more sense to both parties than going forward in court. Or DISH will get a software version that doesn't infringe.

BTW: From the small victories department ... the court accepted the lower $1.25 per DVR subscriber per month rate for damages during the stay period (plus interest) instead of accepting TiVo's suggested $2.25 rate. See [0931] in the court documents above. Judge Folsom is looking for reasonable rates.

The next step is in the hands of the appeals court ... if they stay this injunction the DVRs will legally remain usable until the appeals court says otherwise. If they refuse to stay the injunction we'll probably see a settlement ... or some pretty strong defiance. Stay tuned!


----------



## audiomaster

Lets see. I have two hard drives full of programming that I paid Dish to receive. I OWN those hard drives! And while I don't claim to own the programming, I own USE of it till I erase them or stop paying Dish for access to them. If the 622 etc becomes disabled and cannot be used to play those programs as Dish advertised it could, I am going to suffer emotional distress! In fact, just reading this thread is already giving me the precusers to emotion distress and may require that I take drugs to alleviate it, or at least have a couple cold beers!

So with this probably happening to thousands of people all over the world, I think I hear faintly the chant starting of "class action lawsuit". Any legal opinions on that from the legal beagels here?

Sort of like the manufacturer telling you you MAY have received a bad pacemaker during your heart surgery! It might be fine, but on the other hand.....:nono2:


----------



## nobody99

James Long said:


> if TiVo wants to shut down the ViP series DVRs they have to PROVE that they also infringe.
> 
> The current action is only about the named receivers.


Incorrect. They only have to prove that the ViP series' software is not more than colorably different than the infringing products. if they use the same software, they too will be found in contempt.


----------



## dgordo

Let this be a lesson to anyone who thought that Judge Folsom had already denied the contempt on the face motion. I said it before and Ill say it again, the judge has not made a ruling until you see a document that says as much.


----------



## phrelin

scooper said:


> OK - we need to set this clear -
> 
> Dish split itself into 2 parts - (correct me if I put the wrong name on the wrong part)
> Dish Network - This is the subscription programming part
> Echostar - This is the company that does the Hardware
> 
> At this point - the Tivo suit should be with the Echostar part (i.e. the satellite receiver / DVR maker). So any lawsuit issues would have to be dealt with by them, although possible remedies (such as shutting down DVR capabilities) might have to be done by Dish Network.


Actually the order is sufficiently broad to put all of Charlie's assets on the line.

:grin: In fact there is an interesting wording involved that I guess means we all have received some kind of constructive notice as the portion in bold has an "or".


> ...each Defendant, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined....
> 
> Defendants shall forthwith provide written notice of this judgment, and the injunction ordered herein, to their officers, directors, agents, servants, representatives, attorneys, employees, subsidiaries and affiliates, and those persons in active concert or participation with them, including any and all manufacturers, distributors, retailers, and service providers who have been involved in the making, using, selling, offering for sale or importing of any Infringing Products, *and to all other persons or entities involved in any way with the* making, *using*, selling, offering for sale *or* importing *of any Infringing Products*. Defendants shall take whatever means are necessary or appropriate to ensure that this order is properly complied with.


 I think the judge has offered another interesting tidbit to any appellate judge when he says:


> Although EchoStar requests that this Court stay its injunction further, this Court declines to do so. EchoStar has escaped this Court's injunction for over two years and further delay will be manifestly unjust to TiVo and cause TiVo substantial harm.


IMHO those 35 pages in the Memorandum are really going to be tough for anyone to ignore. The odd part of the referred Deleware case situation is that in the Memorandum Folsom states with great clarity and detail why he says "this Court finds that EchoStar's modified software continues to infringe the Software Claims of the '389 Patent." If another trial judge in the same appellate district subsequently says it doesn't, it could create a situation where an appellate court might actually hold a hearing on facts.

All of Charlie's eggs are in the workaround basket. It's a mistake.:nono:


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## dgordo

"Additionally, EchoStar is required to inform this Court of any future attempts to design-around the’389 Patent and obtain Court approval before any such design-around is implemented."

Wow.


----------



## phrelin

Yeah, Folsom has tried to close every possible escape.


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## Kheldar

dgordo said:


> "Additionally, EchoStar is required to inform this Court of any future attempts to design-around the'389 Patent and obtain Court approval before any such design-around is implemented."
> 
> Wow.


+1.
He is trying to prevent Dish/EchoStar from saying "We've re-reworked the software. It doesn't infringe anymore, I promise."

Essentially he wants Dish/EchoStar to _prove_ the non-infringment _before_ they implement the software?

Am I understanding that correctly?


----------



## peak_reception

In that same quote (that Phrelin cites) I am struck by the word "escaped" which seems oddly strong, even prejudicial, to me given the purpose that patent injunctions are supposed to serve:


> Although EchoStar requests that this Court stay its injunction further, this Court declines to do so. EchoStar has *escaped* this Court's injunction for over two years and further delay will be manifestly unjust to TiVo and cause TiVo substantial harm.


 To "escape" is to struggle free from confinement or imprisonment. However, patent injunctions are not supposed to be punitive as imprisonment but rather remedial as in motivating a push to non-infringement.

I guess "escape" could've been meant to refer to the imprisoned Infringing Products, but the Judge explicitly writes that EchoStar is the escapee. Isn't EchoStar _supposed_ to "escape" their infringing status by changing to a non-infringing status? I thought that was the whole idea?

The Judge can (and did) of course rule that the changes EchoStar made were insufficient but I'm just very surprised and struck by that strong word "escaped" as he uses it to describe EchoStar and its behavior vis-a-vis the Injunction in this case. All of his other language seems so temperate and balanced.


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## JJJBBB

Heavens to Betsy, this is not good.


----------



## inkahauts

Richard King said:


> Actually, this could work quite well for Echostar. If Dish has to replace all those boxes they, most likely, will come from Echostar (with TIVO software or non violating in house software). After hours Echostar stock is still up for the day while Dish is down significantly.


Rob peter to pay paul.. Not an acceptable solution if I hold stock in both companies.. i.e. if I'm Charlie..


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## deaincaelo

I know i asked this before, but what exactly would be a non infringing tv recorder, and how is that different then then tivo process?


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## inkahauts

phrelin said:


> Dish wouldn't have to replace them if they had a licensing agreement with TiVo.
> 
> If TiVo has their act together, they will offer a reasonable licensing agreement to Dish Network for all the boxes in its possession or in service within the next few weeks without any offer to Echostar.


This is an interesting statement..

I don't know if it works that way or not, because they are both in trouble here. Can anyone say that there only needs to be an agreement from one of the companies, and that Dish Network could be the one? I would think that if only one company is paying for an agreement, it would have to come from echostar, not Dish... And then they could pass on the costs to Dish..

Otherwise, Tivo would basically be trying to double dip on the licensing agreement, because echostar isn't allowed to even make the machines anymore... Which presumably Dish Network still wants access to. If I where a judge, I would not allow a settlement that would allow Tivo to create a licensing agreement, and continue to sue for additional damages because the other did not... Which is basically what you are implying, if I am undersatnding you...


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## inkahauts

Tom Robertson said:


> I suspect TiVo has had that offer ready since day 1. Now they just changed the numbers in the word processor.


You know, I wonder if any agreement now would have to include the buy in of the judge.. If so, that number he has decided on (1.25) may be what he would force Dish to pay to Tivo, keeping Tivo from asking for their preferred price (2.25) ...


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## inkahauts

Ken_F said:


> Dish Network is the one who deployed the hardware, not Echostar. No infringement occurs until the product is deployed to customers, and Dish Network is the company responsible for that.
> 
> Furthermore, you can't avoid legal obligations by splitting your company in two. Otherwise, any company facing a substantial settlement would simply "spin off" the culpable part of their organization into a new company.


Um, I think Echostar is being found infringing too, since they are specifically being told in this judgment they can not even MAKE more units... So I disagree with that idea that Dish network is responsible.. I think its echostar first for creating and selling the product (yes, they are selling them to dish, hence they are infringing at that point) and then dish is too, by default... Of course thats the way I see i by way of logic, and sense this is all legal, I can;t be sure.. But not being able to build them anymore, that says a lot to me...


----------



## inkahauts

peak_reception said:


> The most surprising part of Judge Folsom's decision (for me) comes here: That clearly flies against what everyone thought the situation was. It also begs the question why not just rule In Contempt last September then? And let the CAFC sort out the mess on appeal.
> 
> Judge Folsom does give his reasoning but if it is accepted at face value then he perhaps should have set up the whole process as such at the end of May/early June 2008 to include colorable difference in a joint proceeding with Contempt intead of the confusing bungle that actually took place.


I think it was his way of saying, ah, you where found guilty, you said I don't care, I'm going to do what I think is right without permission and then ask for it latter... That alone is cause for damages, and then, the reasoning you used to try and justify it was also found to be not acceptable, that just makes it all the matter worse, which Is why I believe he also said that they had to get permission before releasing anything that they claim to be more than color ably different...


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## inkahauts

audiomaster said:


> Lets see. I have two hard drives full of programming that I paid Dish to receive. I OWN those hard drives! And while I don't claim to own the programming, I own USE of it till I erase them or stop paying Dish for access to them. If the 622 etc becomes disabled and cannot be used to play those programs as Dish advertised it could, I am going to suffer emotional distress! In fact, just reading this thread is already giving me the precusers to emotion distress and may require that I take drugs to alleviate it, or at least have a couple cold beers!
> 
> So with this probably happening to thousands of people all over the world, I think I hear faintly the chant starting of "class action lawsuit". Any legal opinions on that from the legal beagels here?
> 
> Sort of like the manufacturer telling you you MAY have received a bad pacemaker during your heart surgery! It might be fine, but on the other hand.....:nono2:


:lol::lol::lol::lol::lol:

I wouldn't worry about that just yet.. Its pretty obvious that no matter what, Dish has no intention of shutting off these machines.. I can't wait till latter down the road the Judge gets a hold of Dish after they don't cut a deal, and just try and appeal their way out and again defy the judges orders...


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## inkahauts

deaincaelo said:


> I know i asked this before, but what exactly would be a non infringing tv recorder, and how is that different then then tivo process?


Dish was basically found to infringe on a patent that has to do with how info is stored and indexed on a hard drive, if I recall correctly. SO if they do it completely differently, they will be ok...


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## inkahauts

phrelin said:


> [*]Until the issue with TiVo is resolved, Echostar has little or no net value unless it cuts a deal with TiVo. And technically, I don't see why TiVo has any obligation to license Echostar to manufacture boxes. Maybe Echostar could find a buyer for the Sling operation.
> [/LIST]


Um, I'm pretty sure those satellites and transmission equipment they own are worth some money..

While Tivo isn't obligated, they would be smart to sign a deal, thereby giving them a guaranteed income, for at leas the next few years...


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## paulman182

Kind of ironic that a company which supposedly hates piracy so much is repeatedly convicted of it.


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## nobody99

inkahauts said:


> Dish was basically found to infringe on a patent that has to do with how info is stored and indexed on a hard drive, if I recall correctly. SO if they do it completely differently, they will be ok...


That was true two years ago. They've tried to do it differently, and were told by the judge that it was too similar and still infringed. And they were told to pay an additional $105 million through April 2008.

They have been given 30 days to turn off the DVRs. There's also a hearing in July to determine damages and contempt fees for all DVRS from April 2008 to the present. This will likely result in an additional $250 million award to TiVo.

DISH's last and only hope is that the Appeals Court grant a stay of the injunction. It's pretty unlikely they'll get a stay. If that's true, one of the following three things will happen after 30 days:

1) They will come to a license agreement with TiVo, and all DVRs will continue to run.

2) They will turn off all DVRs

3) They will continue to ignore the injunction and pay TiVo $8-ish per DVR per month in contempt charges, and perhaps execs may face jail time.

Clearly, option 1 is the best for everyone involved given the circumstances.


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## Herdfan

James Long said:


> Something will be worked out. At worst DISH will just refuse to turn off their DVRs. What is the court going to do, fine them? ........*Armed marshals, with guns*. The only way DISH will turn off their DVRs. It is too important of a service offering to go without.


If need be, yes. Or corporate officers taken to jail.


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## WebTraveler

nobody99 said:


> DISH's last and only hope is that the Appeals Court grant a stay of the injunction. It's pretty unlikely they'll get a stay. If that's true, one of the following three things will happen after 30 days:
> 
> 1) They will come to a license agreement with TiVo, and all DVRs will continue to run.
> 
> 2) They will turn off all DVRs
> 
> 3) They will continue to ignore the injunction and pay TiVo $8-ish per DVR per month in contempt charges, and perhaps execs may face jail time.
> 
> Clearly, option 1 is the best for everyone involved given the circumstances.


It is very unlikely that the appeals court would eventually reverse the decision. Appeals courts operate on a clear error type of standard and do not step into the shoes of the fact and credibility findings of the trial judge. It's a possible that since we're dealing with a technical patent issue that the trial judge's analysis of the law as a applied to the facts could potentially be an opening for Dish to argue.

It's a crapshot on whether the appeals court grants a stay. They could grant a brief stay to give Dish the potential ability to show them they will more likely than not prevail. My belief is that they will have a difficult time.

The only real option I see is to come to terms with some licensing deal with TIVO, but right now TIVO has the negotiating pull. (Either agree with us or turn your DVRs off) Charlie Ergen does not like being on this end of the negotiations.

If Dish turns them off they lose more customers.

Dish execs could be held in contempt, but that's silly. If for some reason they did not turn it off then yes, the US Marshal could enforce the judge's order. Eventually they will be turned off becuase they'll go down the chain of command and arrest them all until it is. That won't happen. But I would LOVE to see Charlie Ergen in shackles before the Judge.

None of this is a surprise. Charlie loves courtrooms and now he sees what he created. His love of litigation of everything has backed him and his company into a corner.....


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## ATARI

Herdfan said:


> Or corporate officers taken to jail.


+1

(Commentary: I wish this would happen more often than it does. Unfortunately, instead, white collar crooks get bailouts instead of jail time.)


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## tkrandall

deleted posting - I found the info.


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## grog

2) They will turn off all DVRs

For some reason I see option #2 coming.

The spin, well you can buy a Slingbox for your current setup or upgrade to the 922.



nobody99 said:


> That was true two years ago. They've tried to do it differently, and were told by the judge that it was too similar and still infringed. And they were told to pay an additional $105 million through April 2008.
> 
> They have been given 30 days to turn off the DVRs. There's also a hearing in July to determine damages and contempt fees for all DVRS from April 2008 to the present. This will likely result in an additional $250 million award to TiVo.
> 
> DISH's last and only hope is that the Appeals Court grant a stay of the injunction. It's pretty unlikely they'll get a stay. If that's true, one of the following three things will happen after 30 days:
> 
> 1) They will come to a license agreement with TiVo, and all DVRs will continue to run.
> 
> 2) They will turn off all DVRs
> 
> 3) They will continue to ignore the injunction and pay TiVo $8-ish per DVR per month in contempt charges, and perhaps execs may face jail time.
> 
> Clearly, option 1 is the best for everyone involved given the circumstances.


----------



## mreposter

I tend to agree with Phrelin... Echo/Dish writes Tivo a really, really, really big check (say $400 million) to settle the case and allow them to continue to run their existing DVRs and, further, Dish agrees to either pay a big annual license fee for Tivo patent access or agrees to start using Tivo units in the next 12 months. 

This whole case has been about the money. Tivo has won just about every step in the case, and with every win the check they get at the end gets bigger and bigger.


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## WebTraveler

ATARI said:


> +1
> 
> (Commentary: I wish this would happen more often than it does. Unfortunately, instead, white collar crooks get bailouts instead of jail time.)


It won't happen. Defying a judge's order is not something that is ever helpful to a company. No appeals court or other judge is going to overturn one judge's contempt order where that order is clear and concise. In fact, Dish and Ergen (and each one down the line refusing to do the same) would be subject to huge fines and contempt.


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## crrscott

So it sounds like there will be no stay.....Not another one....Maybe.
They will have to pay tivo per DVR which may be why they eliminated the free DVR to DHA customers last quarter in anticipation of this.
Or they will turn off ALL DVR's....Can't happen for the company to survive...

Do the 622's-722's infringe as well? You would have thought with all this going on for solong that dish would have changed the newer boxes to get away from the supposedly patented designs.


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## crrscott

my mistake...the free dvr was to DVR advantage customers. Almost free...


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## Richard King

More analysis....
http://custom.marketwatch.com/custo...p?guid={158c2b6a-e62c-49b2-874d-e0f2051be20c}
Dish Likely Pressured To Settle With TiVo After Legal Defeat


> NEW YORK (Dow Jones)--Dish Network Corp.'s (DISH) latest loss to TiVo Inc. (TIVO) in the courtroom will likely hasten a settlement between the two legal rivals. While Dish maintains it will appeal the ruling - which found the company illegally using TiVo's technology to pause, fast-forward and rewind live television and ruled that its supposed technology workaround wasn't different enough - it has few options left.
> 
> Industry observers say Dish is better off striking a licensing pact, since it hadn't won a legal skirmish against TiVo yet. The terms, however, will likely be harsh for the company. For TiVo, the victory further validates its patents. An agreement would also represent a valuable new revenue stream, which could potentially set the standard for new deals.
> 
> "*Not only did the court rule in TiVo's favor, but it's the worst-case scenario for Dish," *said Wachovia analyst Marci Ryvicker. *"Dish plans to appeal but another stay is unlikely." *


More...


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## pfp

I have nothing against Dish but I must say it's really nice to see Tivo winning this fight. This company invented the technology (please spare me the Tivo vs Replay debate) and they have been floundering in good part becasue other companies such as Dish have blatently ripped off their IP.


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## Grentz

pfp said:


> I have nothing against Dish but I must say it's really nice to see Tivo winning this fight. This company invented the technology (please spare me the Tivo vs Replay debate) and they have been floundering in good part becasue other companies such as Dish have blatently ripped off their IP.


I do have to kind of agree. TiVo is a household name, but most dont even have Tivo's as they get DVRs from their providers (which mostly arent Tivos). Great if they have paid the proper fees for Tivo's IP, but if not then it really is just like a knife into Tivo's heart.


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## Kheldar

Richard King said:


> More analysis....
> http://custom.marketwatch.com/custom/tdameritrade-com/html-story.asp?guid={158c2b6a-e62c-49b2-874d-e0f2051be20c}
> Dish Likely Pressured To Settle With TiVo After Legal Defeat
> More...





> Dish said in a statement its customers weren't _immediately_ affected by the ruling.


Immediately, no. In 30 days? Maybe. Yet another way to say something without saying something.


----------



## phrelin

grog said:


> 2) They will turn off all DVRs
> 
> For some reason I see option #2 coming.
> 
> The spin, well you can buy a Slingbox for your current setup or upgrade to the 922.


I don't think the 922 is an option for Echostar without a license from TiVo. It uses a "workaround" for the DVR function.

Judge Folsom was very clear: The Defendants are "restrained and enjoined...from making, using, offering to sell, selling, or importing in the Untied States...all other products that are only colorably different therefrom in the context of the Infringed Claims...." Further he says "It is FURTHER ORDERED that Defendants shall inform this Court of any further attempt to design around the '389 Patent and shall seek approval from this Court before any such design around is implemented."

How could Echostar/Dish/Charlie market the ViP922s if it uses the subject "workaround." How could Echostar/Dish/Charlie market the ViP922s if it uses a new "workaround" unless or until the judge finds that it is more than "colorably different."

Right now IMHO the ViP922s is the poster child for Echostar/Dish/Charlie dilemma. If they don't cease further testing of the ViP922s they are technically violating the order even if it is ultimately determined that it is more than "colorably different.":eek2:


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## jjcaudle

Why do you people stay with Dish? Directv is a far better product even though I don't care for their DVR...why I have cable and Tivo. Direct will be even better when the new Tivo Box comes out next year. FiOs is even better. That being said, I am glad Tivo prevailed against Dish...they are arrogant and as usual, Ergen pushes it to the last minute risking cutting off his customer's dvrs because he want reach a deal with Tivo.


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## Tower Guy

phrelin said:


> So does this mean that the new Dish Network, which is theoretically independent of the new Echostar which may not have any lawful DVR's to sell to Dish, can start offering TiVo products?


Not unless there are no common officers and employees of the old Echostar and the new Dish.

QUOTE
.....each Defendant, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined.
ENDQUOTE


----------



## phrelin

jjcaudle said:


> Why do you people stay with Dish?


 Everyone has his or her reasons. I was using Echostar C-band equipment in olden times before I went to Dish Network with the same local dealer who set up my C-band. When I made the decision to move to HD I looked hard at DirecTV, but I couldn't see the satellite. Now if someone tells me I could have used DirecTV HD with San Francisco locals with the line-of-site limits of about 105º to 121º and 128º to 136º, I would have to acknowledge a mistake.


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## Tom Robertson

jjcaudle said:


> Why do you people stay with Dish? Directv is a far better product even though I don't care for their DVR...why I have cable and Tivo. Direct will be even better when the new Tivo Box comes out next year. FiOs is even better. That being said, I am glad Tivo prevailed against Dish...they are arrogant and as usual, Ergen pushes it to the last minute risking cutting off his customer's dvrs because he want reach a deal with Tivo.


Both companies have their business models and both work. (If you take out this case with Dish, that is.) If one has a large commitment of equipment with one company, it is not trivial to switch to the other.

Yes, I think DIRECTV is better, but I also understand there are people who have differing opinions.  (And I like those people in my family and other moderators here...)

Cheers,
Tom


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## bobukcat

jjcaudle said:


> Why do you people stay with Dish? Directv is a far better product even though I don't care for their DVR...why I have cable and Tivo.


The DVR is the main reason keeping me with them and it's functionality and capabilities are VERY, VERY important to me. I couldn't have the setup I've had for four years with D* until their most recent DVRs came out. By this time I have a lot of money invested and a lot of archieved HD on EHDs, switching would be extremely painful to me.


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## CuriousMark

inkahauts said:


> Dish was basically found to infringe on a patent that has to do with how info is stored and indexed on a hard drive, if I recall correctly. SO if they do it completely differently, they will be ok...


There are many steps to the process claimed in the patent. Dish's workaround made minor changes to one or two steps and left all the others unchanged. Had they done a larger, more thorough workaround and gotten independent verification from third parties that it was good enough before deploying it, they would not be in this pickle now. They tried to cheap out doing the minimum they thought was necessary to get around the patent and only getting input from a third party on the workaround plan without having the result tested by an outside firm to make sure it was good enough.

So yes, it can be designed around, it just isn't as easy as they thought it would be.


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## bobcamp1

Curtis52 said:


> I said that if the judge made such a ruling that it would be overturned on appeal. I still think that but it may not matter. He also found that there isn't more than a colorable difference which I agree with.


+1

That second ruling is bogus. That's why everyone in the country who has a patent wants Judge Fossom to hold their trial. Injunctions are never enforced at face value, and that kind of enforcement never survives on appeal.

However, the "not more colorably different" part will be much more difficult to get overturned. The appeals court may not even stay the injunction during the appeal, as Dish has a means to eliminate these DVRs from service without going bankrupt (though they do normally rubber-stamp the stay).

I'd have to read the rulings to figure out which DVRs are covered by the injunction, and which are not


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## CuriousMark

Herdfan said:


> If need be, yes. Or corporate officers taken to jail.


I doubt that will ever happen. The judge will more likely just freeze Dish's bank accounts until they come into compliance.


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## dgordo

CuriousMark said:


> I doubt that will ever happen. The judge will more likely just freeze Dish's bank accounts until they come into compliance.


Or just impose a *huge* fine for everyday that they don't comply.


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## dgordo

Kheldar said:


> +1.
> He is trying to prevent Dish/EchoStar from saying "We've re-reworked the software. It doesn't infringe anymore, I promise."
> 
> Essentially he wants Dish/EchoStar to _prove_ the non-infringment _before_ they implement the software?
> 
> Am I understanding that correctly?


That is my understanding as well, thus the, wow. :eek2:


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## spear61

This is interesting

If Dish loses on appeal and does not cut deal, they are going to have a bunch of boxes they are prohibited from selling or reselling to anyone, can't even export them. Could be a really big stack of doorstops.

The bright side is Echostar was moaning that box sales to Dish were down this winter. They may wel have a surge in sales.


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## peak_reception

CuriousMark said:


> There are many steps to the process claimed in the patent. Dish's workaround made minor changes to one or two steps and left all the others unchanged. Had they done a larger, more thorough workaround and gotten independent verification from third parties that it was good enough before deploying it, they would not be in this pickle now.


 Or, at the very least, been honest and open with the courts about the existence, scope, and progress of the workaround they did attempt. Hiding it the first time around may well hurt them badly this time around. I don't think they will get a stay now from the same court (CAFC) they bamboozled before by basically lying about the dire catastrophe they were about to incur by shutting down DVRs that in reality they had no intention whatever of shutting down. It's called "Crying Wolf" and nobody likes shady tactics like that.


----------



## CuriousMark

peak_reception said:


> Or, at the very least, been honest and open with the courts about the existence, scope, and progress of the workaround they did attempt. Hiding it the first time around may well hurt them badly this time around. I don't think they will get a stay now from the same court (CAFC) they bamboozled before by basically lying about the dire catastrophe they were about to incur by shutting down DVRs that in reality they had no intention whatever of shutting down. It's called "Crying Wolf" and nobody likes shady tactics like that.


I can't argue with you there.

Let's hope a settlement comes soon.


----------



## phrelin

spear61 said:


> The bright side is Echostar was moaning that box sales to Dish were down this winter. They may wel have a surge in sales.


Dish has no reason to buy expensive new boxes from Echostar if it, Dish Network the separate company, can pay a license fee to TiVo.

Again, if I were representing TiVo, I'd offer Dish Network a very, very reasonable license fee for using already-in-use-or-owned-by-Dish-Network boxes including the ViP series. And I would offer Dish Network, the company no longer a part of Echostar, an opportunity to use TiVo brand boxes in it's system. I would not offer Echostar, no longer in any position to argue about it's DVR customers because it only has one, a license to permit it to manufacture and sell DVR's.

The mantra here: _*Dish Network is not Echostar. Echostar is not Dish Network*_.

I have a contract with Dish Network, not Echostar. Echostar has a contract with Dish Network to sell boxes it is prohibited from selling.


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## JohnH

Duh!! The same majority shareholder might play in this, though!


----------



## kog

James Long said:


> Per Judge Folsom the version of the 501/508/510/522/625/721/921/942 software investigated at the most recent hearing in February is no more than colorably different than the one the jury found to be infringing two years ago - and it still infringes.


I am pretty sure this has been mentioned before but do we know how many of these specific DVRs are still in service? I know people are arguing that all Dish DVR's are infringing but these are the only ones that are specifically identified.


----------



## Herdfan

CuriousMark said:


> I doubt that will ever happen. The judge will more likely just freeze Dish's bank accounts until they come into compliance.


DISH seems to have really pi**ed off the judge. Who knows what he might do. But, yes freezing accounts would be easier.


----------



## uss growler

get a bailout from the government then Declair bakruptcy and sell whats left to direct tv.


----------



## phrelin

JohnH said:


> Duh!! The same majority shareholder might play in this, though!


Yes, but Dish Network is not a privately held company and Charlie has legal problems. Dish Network shares sell on the open market. AS a corporate officer with fiduciary responsiblities, Charlie cannot lawfully risk Dish Network's survival to protect Echostar's interests unless he wants to buy out all the minority shareholders and take it private.

In fact, if Dish were to receive a reasonable offer from TiVo (reasonable by a normal market standard), minority shareholders could sue if Dish were to turn it down and then proceed to shut off all the listed DVR's and buy DVR's from Echostar which are basically unlawful under Folsom's ruling until proven otherwise to Folsom's satisfaction.

Charlie pissed off Folsom after already screwing TiVo. In any other situation except where he is major shareholder, the Board would be offering him a golden parachute as they fire him.


----------



## HobbyTalk

phrelin said:


> And I would offer Dish Network, the company no longer a part of Echostar, an opportunity to use TiVo brand boxes in it's system. I would not offer Echostar, no longer in any position to argue about it's DVR customers because it only has one, a license to permit it to manufacture and sell DVR's.


That will never happen for many years. TiVo does not manufacture any any hardware other then their add-on TiVo boxes. DirecTV is developing and will manufacture their STB with the TiVo software. It would take TiVo many years to develop a suitable and stable sat. receiver.


----------



## phrelin

HobbyTalk said:


> That will never happen for many years. TiVo does not manufacture any any hardware other then their add-on TiVo boxes. DirecTV is developing and will manufacture their STB with the TiVo software. It would take TiVo many years to develop a suitable and stable sat. receiver.


True. But working with Dish Network, it might not be so hard to create an add-on box for existing receivers like the ViP211. But, of course, the ideal would be for Echostar/Dish Network simply to pay a license fee. No muss, no fuss for TiVo to make money. Everyone's a winner then.


----------



## ziggy29

HobbyTalk said:


> That will never happen for many years. TiVo does not manufacture any any hardware other then their add-on TiVo boxes. DirecTV is developing and will manufacture their STB with the TiVo software. It would take TiVo many years to develop a suitable and stable sat. receiver.


Other than their renewed partnership with D*, I don't know that TiVo is looking to market their own STBs for satellite anyway. I would think that it would be TiVo's software with TiVo technology licensed to run on Dish's STBs -- assuming this legal morass eventually leads to a settlement and a licensing agreement.


----------



## bobukcat

I wonder why the "other" DVR manufacturers (E*, Motorola, Scientific Atlanta, etc) don't form a joint effort to develop a non-infringing DVR. You know that if something drastic doesn't change in this case Tivo is going to be going after them for $$ too.


----------



## scooper

bobukcat said:


> I wonder why the "other" DVR manufacturers (E*, Motorola, Scientific Atlanta, etc) don't form a joint effort to develop a non-infringing DVR. You know that if something drastic doesn't change in this case Tivo is going to be going after them for $$ too.


That's the whole point of this exercise from Tivo's standpoint - to force EVERYONE else to pay them a license fee.

You can bet that Motorola, Scientific Atlanta, etc will start to workup licensing arraingements after this.


----------



## ziggy29

bobukcat said:


> I wonder why the "other" DVR manufacturers (E*, Motorola, Scientific Atlanta, etc) don't form a joint effort to develop a non-infringing DVR.


Could easily be a violation of antitrust laws, seen as collusion to drive TiVo out of business.


----------



## scooper

ziggy29 said:


> Could easily be a violation of antitrust laws, seen as collusion to drive TiVo out of business.


I think that would be a good thing in this case...


----------



## phrelin

scooper said:


> That's the whole point of this exercise from Tivo's standpoint - to force EVERYONE else to pay them a license fee.
> 
> You can bet that Motorola, Scientific Atlanta, etc will start to workup licensing arraingements after this.


Not necessarily. There are those at TheStreet.com who note:


> ...Analysts who have followed TiVo and Dish for some time say it may be too early to expect a settlement and that Dish, which has already said it plans to appeal, will drag the patent dispute out much longer. Also, the dramatic stock price jump implies that the ruling against Dish would apply to all set-top DVR makers like Cisco's Scientific-Atlanta and Motorola.
> 
> TiVo's DVR technology is "fundamentally different" from the approach Scientific Atlanta and Motorola have been working with for two years," says independent industry analyst Brian Coyne. It would be wrong to assume that TiVo will now try to apply this ruling to all DVR makers. If anything, TiVo isn't out to make enemies with everyone, says Coyne.


In other words, Coyne thinks the Echostar case is because of a particularly egregious set of actions. Now the judge sees Echostar as engaging in further egregious activity by implementing it's "workaround" without telling him or the appeals court. Consider how clearly he spelled this out as a means of clearly describing Echostar as a defiant outlaw:


> EchoStar took issue with the exact language of the Disablement Provision. Specifically, EchoStar argued that the provision was overbroad and EchoStar contended that the "appropriate scope of the injunction, if one were to issue, would enjoin _only the provision of infringing DVR software_ to those boxes upon activation." Id. (emphasis added). TiVo opposed EchoStar's proposal and warned that it would be "an invitation for EchoStar to engage in mischief . . . [and] would only result in EchoStar providing what it deemed as 'non-infringing' DVR software to its already-foundto-be-infringing DVRs, creating the opportunity for interminable disputes to determine what exactly is 'infringing DVR software.'" Dkt. No. 747 at 15. Such a dispute is presently before this Court.
> 
> While the parties were disputing the form that the injunction should take, EchoStar was already well on its way to implementing its design-around effort. Before this Court entered its Amended Final Judgment and Permanent Injunction on September 8, 2006, EchoStar's development efforts were so far advanced that it had obtained three written opinions of counsel. _Id.; see also PX3028, PX3029, and PX3030._ At that time, however, EchoStar had not informed this Court of any design-around efforts.
> 
> After this Court entered its permanent injunction, EchoStar asked the Federal Circuit to stay the injunction during EchoStar's pending appeal. In that request, EchoStar represented that without the stay it would be unable to provide DVR service and would risk losing a significant portion of its existing or potential customers, which could cost the company $90 million per month. See Dkt. No. 920 at 20 (citing EchoStar's Reply Brief In Support of Its Emergency Motion to Stay the District Court's Injunction, at 9). EchoStar never mentioned its design-around efforts to the Federal Circuit. As a result of EchoStar's representations, however, the Federal Circuit granted EchoStar's request for a stay of the injunction on October 3, 2006. Dkt. No. 812. Later that month, EchoStar began downloading modified software into its customers' DVRs (Dkt. No. 839 at 8); this fact did not become known to any court until May 2008, after the appellate process had concluded.


In essence, Folsom pointed out to the appellate judges that Charlie gave them the finger just as he did to TiVo and Folsom. Now maybe the appellate judges won't see it that way, but they are going to have to begin their consideration of the appeal by considering that this guy, these companies, may in fact have no respect for the courts.:nono:


----------



## mike1977

jjcaudle said:


> Why do you people stay with Dish? Directv is a far better product even though I don't care for their DVR...why I have cable and Tivo. Direct will be even better when the new Tivo Box comes out next year. FiOs is even better. That being said, I am glad Tivo prevailed against Dish...they are arrogant and as usual, Ergen pushes it to the last minute risking cutting off his customer's dvrs because he want reach a deal with Tivo.


Dish is cheaper for the same thing for me.


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## Curtis52

Dish just got a temporary stay until the appeals court can hear a request for a permanent stay in the event the court agrees to hear an appeal. It should take 2-3 weeks.


----------



## Kheldar

Dish, EchoStar say appeals court stays TiVo ruling:


> Dish Network Corp. and EchoStar Corp. said late Wednesday a federal appeals court temporarily stayed a district-court order against the companies in their patent battle against TiVo Inc. Dish and EchoStar said they believe they have strong grounds for an appeal. On Tuesday, the U.S. District Court for the Eastern District of Texas ordered the enforcement of a permanent injunction against EchoStar and awarded TiVo an additional $103 million in the digital-video recorder patent dispute.


----------



## phrelin

Kheldar said:


> Dish, EchoStar say appeals court stays TiVo ruling:


Ah, yes, well I think my time frame was right, but since were already at 125 posts....


phrelin said:


> Well, we should have this resolved in another 6 to 8 months and 600 posts.


----------



## Richard King

Kheldar said:


> Dish, EchoStar say appeals court stays TiVo ruling:


Wow. I never thought they would get away with that again. Charlie wins another one, although a minor skirmish in the total of things.


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## phrelin

It's just a temporary stay until the appeals court decides if it wants to even hear the appeal.


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## Curtis52

Richard King said:


> Wow. I never thought they would get away with that again.


The appeals court needs time to decide whether to even hear an appeal. This isn't a decision on the merits. They don't know anything about the case yet.


----------



## James Long

WebTraveler said:


> It is very unlikely that the appeals court would eventually reverse the decision. Appeals courts operate on a clear error type of standard and do not step into the shoes of the fact and credibility findings of the trial judge. It's a possible that since we're dealing with a technical patent issue that the trial judge's analysis of the law as a applied to the facts could potentially be an opening for Dish to argue.


Actually there is quite a trend in appeals courts overruling the lower courts on patent issues. All of the cases quoted in the many threads were of appeals courts changing a lower court ruling that were in error. No one bothered to offer a related lower court ruling where they got it right.

I was hoping that this would be the first ... but alas it appears that the appeals court must once again step in and set policy. The lower court deals with the facts of the case before it ... the appeals court gets to look at the bigger picture. What this ruling means to other cases (including those yet to be filed).



> It's a crapshot on whether the appeals court grants a stay.


It is a short stay for now, but good to see. It will do DISH Network and Echostar irreparable harm if they disable their DVRs and win the appeal. The continued existence of TiVo proves that no irreparable harm is done to TiVo by not disabling the DVRs. (The reparations can be paid in cash.)


----------



## Christopher Gould

i haven't been following this and don't know the legal issues but what about Bell Expressvu and there DVRs


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## phrelin

James Long said:


> It is a short stay for now, but good to see.


Yes. Now we have plenty of time to go for 2000 posts in one thread.


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## kucharsk

James Long said:


> It is a short stay for now, but good to see. It will do DISH Network and Echostar irreparable harm if they disable their DVRs and win the appeal. The continued existence of TiVo proves that no irreparable harm is done to TiVo by not disabling the DVRs. (The reparations can be paid in cash.)


That simply isn't true; we have no way of knowing how TiVo's years of hobbling along and dealing with losses would have been different with the huge amount of revenue that would have come with the licensing fees from E*'s DVRs.

Likewise we have no idea of how much happier E* customers would be with trick play DVR features that actually work properly.


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## Curtis52

TiVo Statement on the Federal Circuit Court of Appeals' Decision to Issue a Temporary Stay of Injunction
Last update: 6/3/2009 7:02:00 PM
ALVISO, Calif., June 3, 2009 /PRNewswire-FirstCall via COMTEX/ -- TiVo Inc. (TIVO), the creator of and a leader in television products and services for digital video recorders (DVR), offered the following statement today on the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. decision to issue a temporary stay of injunction in its lawsuit against EchoStar Communications Corporation:
"We are very pleased with the recent decision by the United States District Court, Eastern District of Texas, to fully enforce a permanent injunction in our patent case against EchoStar in addition to rejecting EchoStar's alleged workaround claim regarding the TiVo patent and finding EchoStar to be in contempt of the Court's permanent injunction. The U.S. Court of Appeals temporarily stayed the District Court's ruling pending the Court's consideration of TiVo's response to EchoStar's motion for stay pending appeal. We are confident the U.S. Court of Appeals will again uphold the District Court ruling and not permit EchoStar to further delay this case once it has an opportunity to consider TiVo's response and EchoStar's motion on the issue of the stay."


----------



## CuriousMark

James Long said:


> It is a short stay for now, but good to see. It will do DISH Network and Echostar irreparable harm if they disable their DVRs and win the appeal. The continued existence of TiVo proves that no irreparable harm is done to TiVo by not disabling the DVRs. (The reparations can be paid in cash.)


Using that same logic Dish losing a small fraction of their DVRs, the oldest ones to boot, would not be irreparable harm either. Dish would still exist and still provide SD and HD satellite service. They would still provide DVR service with all their VIP units. That is far from irreparable.

I can actually see Dish choosing to pursue the appeal even if they do shut down the named DVRs. They could blame TiVo and upgrade as many as they could afford to, while acting aggrieved and continuing to fight their appeal. While their profitability would suffer for a while, I don't see them going under over such a minor inconvenience.


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## James Long

CuriousMark said:


> Using that same logic Dish losing a small fraction of their DVRs, the oldest ones to boot, would not be irreparable harm either. Dish would still exist and still provide SD and HD satellite service. They would still provide DVR service with all their VIP units. That is far from irreparable.


It is hard to guess without knowing the exact number of DVRs that are in service and those that have been replaced through HD/Eastern Arc upgrades. Replacing 4 million receivers in 30 days is harmful ... turning off 4 million receivers is harmful - regardless of the number of people with ViP DVRs.

Do you have real numbers to back up the idea that the named receivers are only a "small fraction" of DISH's active DVRs? There are a lot of SD DVRs out there, including 522s and 625s that are still being placed in customer homes. I suspect the real numbers (especially on ViP DVRs) are not available. At least to anyone who can share them.


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## scooper

Well - I'm still on a 625... if Dish offered a commitment free upgrade to a VIP 622 /722 /722K (preferably the last with the MT2 module) I'd stick it out.


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## Tom Robertson

Is Dish's following the law irreparable? Should it really matter? 

If I break the law, I'm punished which causes me harm--that I earned thru my choices.

Dish made choices along this path. And have been found to have not solved the problem. 

Now if TiVo had requested unreasonable fees and Dish approached the situation from that angle, I might be compelled to feel Dish had been harmed unjustly. But they haven't, at least yet.

I also feel Dish has played with fire too long.

And as always, this will continue to be interesting.

Cheers,
Tom


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## phrelin

I think Judge Folsom was very clear: Don't put any DVR's into service using software I haven't approved. Turning off the DVR function merely reduces the listed boxes to receivers. That act would not irreparably harm Dish Network if, in fact, it had the option to turn them back on at any time it agreed to pay license fees to TiVo and it chose to do so within a week or two. It's Dish's choice whether to avoid rreparable harm if TiVo offers a license.


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## DoyleS

I could care less what is recorded on my old 508s, I use them mainly for the RF Remote. My 622 with the external drive is another story. I guess I better start watching all of those series that I recorded this year and have yet to watch. The Beast, Southland, and a couple others. The movies I can always get on Netflix or Blockbuster. The real pain would be those concerts that I watch multiple times from Palladia and Soundstage.


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## Curtis52

Tom Robertson said:


> Is Dish's following the law irreparable? Should it really matter?
> 
> If I break the law, I'm punished which causes me harm--that I earned thru my choices.


Here is what Judge Folsom had to say in 2006 when he denied a stay:


> Although the injunction will likely result in some degree of customer loss and will impact Defendants' ability to compete in the market, Defendants will not be irreparably harmed. Again, Defendants' core business is not the supply of DVRs. Defendants have not demonstrated that an injunction on the infringing products would have a severe financial impact on their core business or will lead to loss of employees. Defendants' authorized retailers will still be able to sell and service Defendants' non-infringing products. Conversely, absent a stay, Plaintiff faces ongoing irreparable injury as detailed above.
> 
> Lastly, Defendants' argument that the public interest in maintaining the status quo - allowing Defendants' current DVR customers and its retailers to continue business as usual - is served by granting a stay. Without a stronger showing that the jury's verdict will be overturned in its entirety on appeal, however, allowing the ongoing infringement is not within the public's interest.


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## HDlover

What exactly did Dish copy? I don't understand what about a DVR is patentable.


----------



## CuriousMark

James Long said:


> It is hard to guess without knowing the exact number of DVRs that are in service and those that have been replaced through HD/Eastern Arc upgrades. Replacing 4 million receivers in 30 days is harmful ... turning off 4 million receivers is harmful - regardless of the number of people with ViP DVRs.
> 
> Do you have real numbers to back up the idea that the named receivers are only a "small fraction" of DISH's active DVRs? There are a lot of SD DVRs out there, including 522s and 625s that are still being placed in customer homes. I suspect the real numbers (especially on ViP DVRs) are not available. At least to anyone who can share them.


It is true that we don't know the number, but the 4 million was the case year ago. To assume it is still 4 million means that new placements of the older DVR models have been equal to or faster than they have fallen out of service due to churn or been upgraded to the VIP models. I just find that hard to believe and believe the number has fallen over time. It still may be a very substantial number, or it may be a much smaller number. I don't know which, but would not be surprised to hear that it is the latter.

Also, DVRs that are turned off become full featured receivers, so customers will still be able to receiver the service, just not use the DVR features. If Dish has a well advertised upgrade/replacement plan in place, many would probably stick it out if they knew the wait was not unacceptably long. Of course those are individual decisions, and we don't have a clue how those would shake out.


----------



## peak_reception

phrelin said:


> Yes. Now we have plenty of time to go for 2000 posts in one thread.


 I hate to be the one to point this out Phrelin but actually you are the one with the most posts on this thread so far with 20. But who's counting?


----------



## Curtis52

CuriousMark said:


> Also, DVRs that are turned off become full featured receivers, so customers will still be able to receiver the service, just not use the DVR features.


I'm not sure it has been established that the DVRs are capable of bypassing the hard drive. The injunction doesn't allow use of a hard drive for storage or playback.


----------



## CuriousMark

HDlover said:


> What exactly did Dish copy? I don't understand what about a DVR is patentable.


The patent claims are posted earlier in this or a previous thread on this site, search for claim 31 or claim 61. The specific process and / or apparatus that implements certain DVR features is covered in those claims. Dish follows that process in the operation of their DVRs. They tried to make some tweaks to avoid one or two of the multiple steps in the claims, but the judge found that the tweaks did not go far enough to avoid meeting the requirements of the patent claims.

This is not a case of copying, as in copyright. Dish could have made changes to avoid other steps, although doing so would have been far more costly and time consuming. Dish could have gotten an independent lab to certify that their changes were adequate to avoid the patent, but didn't do that either. Finally they could have informed the court of their plans as they went along, but chose to keep it unannounced until after the appeals court had ruled.


----------



## CuriousMark

Curtis52 said:


> I'm not sure it has been established that the DVRs are capable of bypassing the hard drive. The injunction doesn't allow use of a hard drive for storage or playback.


I could be wrong, but I honestly believe they can find a way to bypass the hard drive, it doesn't seem at all technically difficult to do so. The same processor controls moving data to and from the hard drive over the same bus. I see no reason why it cannot simply move the data to the appropriate playback buffers directly.


----------



## HDlover

Curtis52 said:


> I'm not sure it has been established that the DVRs are capable of bypassing the hard drive. The injunction doesn't allow use of a hard drive for storage or playback.


I guess this means I can't use my PC as a DVR without upsetting Tivo.


----------



## Ohioankev

HDlover said:


> I guess this means I can't use my PC as a DVR without upsetting Tivo.


Oh man they'll flip a wig if they find out, especially if you connect your PC to your TV set. With the right DVR/PVR software you'll be guilty of the same infringements as DISH.

According to the judge this DVR infringes on TiVo's patent and this service (now out of business since 2003) launched two months before TiVo ...guess who owns the Replay TV brand now... you guessed it DirecTV ... soon to be the only option for DVR technology through satellite.

http://en.wikipedia.org/wiki/ReplayTV

ReplayTV is a brand of digital video recorder (DVR), a term synonymous with personal video recorder (PVR). *It is a consumer video device which allows users to capture television programming to internal hard disk storage *for later viewing (and time shifting). *The first ReplayTV model launched in January 1999, two months ahead of rival TiVo*. After the sale of assets to DirecTV ReplayTV's only ongoing activity is maintenance of the guide service by D&M Holdings.

Hmm ......


----------



## HDlover

I think IBM should sue Tivo, IBM started it.


----------



## scooper

There was *NO* requirement for Dish to inform the Court about their modification attempt in the previous ruling until they did. Surely the judge should have realized that Dish was legally in the right to make such attempt.

As it is - I feel the judge went too far in requiring his informed consent before they could make another change. If this had been the second or third attempt - then I could see it - but on only the first ?!?!


----------



## scooper

Curtis52 said:


> I'm not sure it has been established that the DVRs are capable of bypassing the hard drive. The injunction doesn't allow use of a hard drive for storage or playback.


 Of TV data.

I don't think program guide would fall under the same issue.


----------



## phrelin

peak_reception said:


> I hate to be the one to point this out Phrelin but actually you are the one with the most posts on this thread so far with 20. But who's counting?


I tried to keep count on the last couple of threads, but it just got to be too much. :sure: 

And other than that, I'm pretty much done with this one until the appellate court actually does something.


----------



## nmetro

This was posted on The New York Times Site:

DISH, EchoStar Win Stay Of TiVo Patent Award

Article Tools Sponsored By
By REUTERS
Published: June 3, 2009

Filed at 8:13 p.m. ET
Skip to next paragraph Reuters

LOS ANGELES (Reuters) - A U.S. appeals court on Wednesday stayed a Texas court's order forcing set-top box maker EchoStar Corp and satellite pay TV provider DISH Network Corp to disable millions of digital video recorders that infringe on a patent held by TiVo Inc.

The U.S. Court of Appeals for the Federal Circuit temporarily halted execution of the judgment by U.S. District Judge David Folsom, and ordered TiVo to respond by June 10 to the motion for a stay pending appeal, the order showed.

The move is the latest in a long-running court battle that resulted in a jury verdict in TiVo's favor in 2006, followed by an unsuccessful appeal by sister companies DISH and EchoStar.

The jury awarded TiVo about $74 million in damages plus interest, for a total payment by EchoStar and DISH of $104 million.

The stay comes a day after Folsom imposed additional damages of $103 million plus interest against DISH and EchoStar for continuing to infringe on TiVo's patent for "Time Warp" software -- which allows users to record one TV program while watching another -- while it appealed.

In his final judgment, Folson gave EchoStar and DISH 30 days to disable all but about 192,000 DVRs distributed among its 13.6 million customers.

DISH and Echostar made good on Wednesday on a pledge to appeal and secure a stay postponing execution of the order.

"We are pleased that the Federal Appeals Court in Washington temporarily stayed the district court's order in the TiVo litigation," DISH and EchoStar said in a statement. "DISH Network customers can continue using their DVRs. We believe we have strong grounds for appeal."

In a statement, TiVo said it was "confident" the appeals court would again uphold Folsom "and not permit EchoStar to further delay this case once it has an opportunity to consider TiVo's response and EchoStar's motion on the ... stay."

DISH was formerly known as EchoStar Communications Corp. It spun off its technology assets over a year ago, including its set-top box division, to create EchoStar Corp.

The news dampened trading in TiVo shares, which experienced their biggest single day gain in four years on Wednesday.

TiVo shares closed up 53.3 percent at $10.70 on Wednesday on Nasdaq. The shares were down 30 cents, or 2.8 percent, at $10.55, in after-hours electronic trade.

(Reporting by Gina Keating; Editing by Andre Grenon, Bernard Orr)


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## CuriousMark

scooper said:


> There was *NO* requirement for Dish to inform the Court about their modification attempt in the previous ruling until they did. Surely the judge should have realized that Dish was legally in the right to make such attempt.


Correct. But Dish did tell the CAFC that if they did not get a stay they would be severely harmed and the fact that they had a workaround nearly in place was a materiel fact that the CAFC would have wanted to know about in relation to Dish's argument.



> As it is - I feel the judge went too far in requiring his informed consent before they could make another change. If this had been the second or third attempt - then I could see it - but on only the first ?!?!


TiVo hinted that this might be necessary before the injunction was originally written. Although I don't think they asked for it specifically at that time, they did warn the judge that this might happen if Dish was granted their wording of the injunction. Dish didn't get their wording but proceeded as if they had.


----------



## HDlover

Ohioankev said:


> Oh man they'll flip a wig if they find out, especially if you connect your PC to your TV set. With the right DVR/PVR software you'll be guilty of the same infringements as DISH.
> 
> According to the judge this DVR infringes on TiVo's patent and this service (now out of business since 2003) launched two months before TiVo ...guess who owns the Replay TV brand now... you guessed it DirecTV ... soon to be the only option for DVR technology through satellite.
> 
> http://en.wikipedia.org/wiki/ReplayTV
> 
> ReplayTV is a brand of digital video recorder (DVR), a term synonymous with personal video recorder (PVR). *It is a consumer video device which allows users to capture television programming to internal hard disk storage *for later viewing (and time shifting). *The first ReplayTV model launched in January 1999, two months ahead of rival TiVo*. After the sale of assets to DirecTV ReplayTV's only ongoing activity is maintenance of the guide service by D&M Holdings.
> 
> Hmm ......


Seems Tivo is in bed with D* because they are in violation of ReplayTVs patents, now owned by D*


----------



## Ohioankev

HDlover said:


> Seems Tivo is in bed with D* because they are in violation of ReplayTVs patents, now owned by D*


It just shows you that TiVo would of never sued Dish Network if they didn't see their DVRs as a threat.

Also personally sadly i'll be one of the ones who leaves DISH and just soley uses the internet to watch TV shows , legally of course  Dish has been great to me but without the option to timeshift paying $140/month isn't worth it to me because I haven't watched live TV since late 2003 when i got my first DVR from Charter..... to be truthful i really didn't watch "network" or "cable" channels before then just HBO because i've always hated commercials, then i got my first DVR and i've been a TV addict ever since.


----------



## HDlover

Ohioankev said:


> It just shows you that TiVo would of never sued Dish Network if they didn't see their DVRs as a threat.


Tivo basically has nothing now that E* has the DVRPAL. A law suit is all they have left to cling to to keep them in business. Really seems bogus to me.


----------



## jpk

No, Dish and DirecTV are not going to shut down DVRs.

The remedy is very simple: money.

All Dish has to do is pay TiVo for its past infringement and agree on payments going forward to license the patent. Dish will pay. Dish will not shut down DVRs.

How much will Dish pay?

The amount just got bigger.

The amount is negotiated between TiVo and Dish, and TiVo's negotiating power just got stronger.

Dish might have been wise to settle with TiVo before that happened.

An option now is Dish negotiates licenses for all TiVo patents. That might be wise. If Dish does make this decision, that would also create an incentive for Dish to roll out TiVo-enabled DVRs. That would make me very happy. However this is just one option.

What is not an option for Dish: further stonewalling, litigation, appeals. My understanding is this latest decision gives TiVo a tool to prevent that: a 30 day time limit counting down to Armageddon for Dish: no DVRs for your customers. That means Dish will pay; is negotiating now, even as we type away, to arrive at the price.


----------



## HDlover

Ohioankev said:


> It just shows you that TiVo would of never sued Dish Network if they didn't see their DVRs as a threat.
> 
> Also personally sadly i'll be one of the ones who leaves DISH and just soley uses the internet to watch TV shows , legally of course  Dish has been great to me but without the option to timeshift paying $140/month isn't worth it to me because I haven't watched live TV since late 2003 when i got my first DVR from Charter..... to be truthful i really didn't watch "network" or "cable" channels before then just HBO because i've always hated commercials, then i got my first DVR and i've been a TV addict ever since.


DVRs in general can not last as what advertiser will pay to have their ad skipped. When you watch on the internet, you'll have to watch the ads.


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## Curtis52

HDlover said:


> Tivo basically has nothing now that E* has the DVRPAL. *A law suit is all they have left to cling to to keep them in business.* Really seems bogus to me.


That sounds like irreparable harm to me and great rationale for denying the stay.


----------



## HDlover

Curtis52 said:


> That sounds like irreparable harm to me and great rationale for denying the stay.


I would assume the DVRPAL is not infringing.


----------



## Sterling

James Long said:


> The continued existence of TiVo proves that no irreparable harm is done to TiVo by not disabling the DVRs. (The reparations can be paid in cash.)


You can't have seriously typed that with a straight face.

Did you happen to notice along the way that a Federal Judge has stated the exact opposite on more than one occasion.


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## Tom Robertson

HDlover said:


> Seems Tivo is in bed with D* because they are in violation of ReplayTVs patents, now owned by D*


Possible, tho hard to prove at this point. Both TiVo and Replay owned patents, both sued and counter sued each other, then decided that was pointless. Rumor has it that TiVo and Replay settled to never sue each other--so perhaps DIRECTV couldn't sue TiVo and TiVo couldn't sue DIRECTV.

I suspect that DIRECTV had a working business agreement in place and found ways to keep it going.

Cheers,
Tom


----------



## Ohioankev

True but there is a difference between watching 17 minutes of commercials per hour on cable/dish/fios .. regular TV and at most three minutes on Hulu... plus NetFlix streams TV shows without commercials next day. As a consumer i'm getting frustrated with all of this ... I bought DVRs and I expect them to work until failure due to defect, not because they have to be shut down because of the court of law. From my viewpoint with everything that is going down piracy looks better and better everyday. (just wanted to make myself clear that i'm not saying that I'm going to pirate DBS service ... i'm more of a Hulu/Joost/whoever is streaming for free, no download needed ad supported person when I view online) 

Anyways if DISH makes a licensing agreement with TiVo what are we looking at , a TiVo logo instead of a DISH logo when we go to the DVR screen or a whole UI overhaul ? Honestly I never used a TiVo before but i've seen pictures of their UI from models from a couple years ago and I really didn't care for the UI much.


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## jpk

Exactly. Dish does not get to cry that they can't afford the penalty for their infringement. They should have thought of that before they infringed.

What will really happen, in fact is happening right now: the conversation in court or to the media is separate from a private, very intense conversation, that Dish is having with TiVo right now.


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## HDlover

Netflix streams TV shows without Ads? Who is paying?


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## James Long

Curtis52 said:


> HDlover said:
> 
> 
> 
> Tivo basically has nothing now that E* has the DVRPAL. A law suit is all they have left to cling to to keep them in business. Really seems bogus to me.
> 
> 
> 
> That sounds like irreparable harm to me and great rationale for denying the stay.
Click to expand...

The DVRPAL is not a satellite receiver, is not one of the named receivers and has not been accused by TiVo in a court of law as infringing.

EchoStar could produce a million different DVRs ... the ones the court is dealing with are the eight named models.

The appeals court has to look at the basis of the appeal and the harm that would come to DISH/EchoStar if their DVR service was wrongfully terminated. Judge Folsom was WRONG in 2006 when he said not staying the injunction would not cause DISH harm. The appeals court set him straight. I believe he is wrong again and will be set straight again.



Sterling said:


> Did you happen to notice along the way that a Federal Judge has stated the exact opposite on more than one occasion.


I have noticed that an appeals court judge has said he was wrong.


----------



## Sterling

James Long said:


> I have noticed that an appeals court judge has said he was wrong.


Please back that statement up with a quote.

I don't recall ever reading that any Judge stated that Tivo has not been irreparably harmed.


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## scooper

The thing I really found troubling is that Judge Folson said that this also applies to any devices that are merely colorably different as well. 

So - does the VIP series count as "merely colorably different" or not ? and for that matter - the DTVPAL DVR ?


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## WebTraveler

James Long said:


> Actually there is quite a trend in appeals courts overruling the lower courts on patent issues. All of the cases quoted in the many threads were of appeals courts changing a lower court ruling that were in error. No one bothered to offer a related lower court ruling where they got it right.


James, the role of the appeals court is not a do over. The appeals court's role is to review for errors in the application of the law. The appeals court is not a trial court. The facts are already on the record. Witnesses don't testify, etc. In this case there could be several issues to appeal, for instance, the trial court applied the wrong law or the wrong standards, improper jury instructions, determinations by the judge to not admit (or to admit) certain evidence.

It is my understanding that the appeals court granted a short stay for it to determine if there was any colorable argument for Dish. If the justices believe that there is they may extend the stay or terminate it.

District Court judges are rarely experts in any part of the law. For example, they hear tax cases, crimes on federal property, torts under federal law, etc. Because of the technical parts of patents it is possible the judge just got it all wrong. But I doubt it. This is a high profile case with all sorts of expert witnesses for all sides. But we'll see.

Dish has some big risk here. I wonder what might happen - that Dish and TIVO will come to terms that consists of an increase in Dish customer prices? Unfortunately for the consumer Dish is in a bad and risky position.

In the event the DVR is turned off one can expect a mass exit of customers. How that plays out into a contract term remains to be seen, but one could likely argue a material breach. I think this is the latest in the Dish saga.


----------



## WebTraveler

James Long said:


> I believe he is wrong again and will be set straight again.


What do you base this on? Your own opinion or as an expert in intellectual property law and a thorough knowledge of Dish and TIVO technology? I am curious of whether you have some real insider knowledge of all of this?


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## HDlover

Dish would be irreparably harmed without a stay of DVRs being turned off, not Tivo being harmed. This would be like executing a prisoner before all appeals have been exhausted. Oh, wait a minute, the accused was innocent, too late. Tivo isn't going out of business because of Dish. They'd like you and the judge to believe so, but if they made a better product, and not want a monopoly, they wouldn't be in this condition. Apple isn't the only one making MP3 players.


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## Greg Bimson

James Long said:


> The appeals court has to look at the basis of the appeal and the harm that would come to DISH/EchoStar if their DVR service was wrongfully terminated. Judge Folsom was WRONG in 2006 when he said not staying the injunction would not cause DISH harm. The appeals court set him straight.


Judge Folsom did not stay the injunction during appeal, as he felt DISH/SATS would not win every point to negate the infringement that was found and the remedy that he issued.

The Court of Appeals never did say Judge Folsom was "wrong" when they stayed the appeal. As a matter of fact, the Court of Appeals, upon reviewing the case never directed Judge Folsom to do anything to the injunction. It was upheld by the Court of Appeals and then in full force and effect without intervention from anyone.

The Court of Appeals *affirmed* Judge Folsom's decision and injunction.

Now the Court of Appeals will be receiving an Amended Final Judgment and Permanent Injunction. Most of that is the same material they've seen before.

I would not be surprised if the Court of Appeals simply allows the amended injunction to stand. Flip a coin; that is my version of the odds that the Court of Appeals will stay this proceeding. Especially when, as Judge Folsom so rightly pointed out, the order to disable receivers found infringing was never followed. Contempt "on the face" was met easily.


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## James Long

WebTraveler said:


> What do you base this on? Your own opinion or as an expert in intellectual property law and a thorough knowledge of Dish and TIVO technology? I am curious of whether you have some real insider knowledge of all of this?


I base it on my reading of how the appeals court handled his decision the last time he decided not to stay his injunction.

Judge Folsom thought it would cause TiVo irreparable harm if DISH DVRs were not disabled. The appeals court ruled in DISH's favor saving DISH from being harmed during the appeals process. TiVo survived the last three years of DISH DVRs continued service. The party at risk here is DISH.

Fortunately we have a court system to figure these issues out. TiVo and DISH don't have to worry about popular (or unpopular) opinions on the internet.


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## HDlover

Sure is unfortunate that OTA DVRS are not lucrative enough for TIVO. They can join all the VCR manufacturers in a cry fest.


----------



## James Long

Greg Bimson said:


> As a matter of fact, the Court of Appeals, upon reviewing the case never directed Judge Folsom to do anything to the injunction.


Their first action was to STAY the injuction ... a near immediate reversal of Judge Folsom's decision not to stay it. They didn't have to direct Judge Folsom to stay the injunction, the appeals court could do it on their own. Perhaps the wording is not 100% to anyone's liking, but the outcome is the same ...


> The Court of Appeals *affirmed* Judge Folsom's decision and injunction.


Eventually (although they did find fault in Judge Folsom's direction to the jury that led to the reversal and remanding of part of the verdict). But the appeals court FIRST action was to protect DISH.


> Now the Court of Appeals will be receiving an Amended Final Judgment and Permanent Injunction. Most of that is the same material they've seen before.


Why would their decision be any different? The appeals court saved DISH from harm before, why not now? As long as their appeal isn't frivolous the shut off can wait for the case to finish it's path. There are no irreparable damages if DISH keeps operating their DVRs (unless DISH completely runs out of money).


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## Tom Robertson

WebTraveler said:


> What do you base this on? Your own opinion or as an expert in intellectual property law and a thorough knowledge of Dish and TIVO technology? I am curious of whether you have some real insider knowledge of all of this?


<Moderator hat one>
Let us not make this personal. James clearly stated his opinion, he's been polite throughout, and often backs up his claims with careful reasoning or links to excellent sources.

So please, disagree with him if you wish, and feel welcomed to state that disagreement politely--but don't abuse any member in doing so.

Thank you,
Tom


----------



## Tom Robertson

James Long said:


> I base it on my reading of how the appeals court handled his decision the last time he decided not to stay his injunction.
> 
> Judge Folsom thought it would cause TiVo irreparable harm if DISH DVRs were not disabled. The appeals court ruled in DISH's favor saving DISH from being harmed during the appeals process. TiVo survived the last three years of DISH DVRs continued service. The party at risk here is DISH.
> 
> Fortunately we have a court system to figure these issues out. TiVo and DISH don't have to worry about popular (our unpopular) opinions on the internet.


James, (or anyone else of course)

Am I right in recalling that in the earlier appeals process the "turn-off" was only during the appeal. And was the "turn-off" order was re-instated as soon as the appeal was complete (and mostly again in TiVO's overall favor)?

So history might not be a good indicator at this point. Then again... 

Cheers,
Tom


----------



## James Long

Tom Robertson said:


> Am I right in recalling that in the earlier appeals process the "turn-off" was only during the appeal. And was the "turn-off" order was re-instated as soon as the appeal was complete (and mostly again in TiVO's overall favor)?


Yes ... but the point I am focusing on (for the moment) is the stay. Last time around Judge Folsom said no, the appeals court said yes --- I expect that history to be repeated. What happens after that stay is up to the parties and the courts.

Also the amount of work that appeals courts have done on patent infringement issues should not be ignored. The wonderful cases quoted in past threads are generally not appeals courts affirming lower courts ... they are appeals courts correcting lower courts. Reversing and remanding part of this case is just part of what the appeals level has done.

Which is what makes it fun to watch. It isn't over until everyone agrees that it is over. (The actual parties in the case, that is.)


----------



## inkahauts

scooper said:


> There was *NO* requirement for Dish to inform the Court about their modification attempt in the previous ruling until they did. Surely the judge should have realized that Dish was legally in the right to make such attempt.
> 
> As it is - I feel the judge went too far in requiring his informed consent before they could make another change. If this had been the second or third attempt - then I could see it - but on only the first ?!?!


Ah, if I am building a new product today, don't I have to make sure it's not infringing on a patent before I release it for sale? And didn't Dish now prove that they are not a reliable source for derterminaing that their software is not infringing.. since they have basically said its not twice now, and are still saying its not? This makes perfect sense to me.


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## inkahauts

Tom Robertson said:


> Possible, tho hard to prove at this point. Both TiVo and Replay owned patents, both sued and counter sued each other, then decided that was pointless. Rumor has it that TiVo and Replay settled to never sue each other--so perhaps DIRECTV couldn't sue TiVo and TiVo couldn't sue DIRECTV.
> 
> I suspect that DIRECTV had a working business agreement in place and found ways to keep it going.
> 
> Cheers,
> Tom


Not to mention, didn't Tivo and Directv enter their most recent agreement before Directv bought Reaplytv?


----------



## dgordo

James Long said:


> Their first action was to STAY the injuction ... a near immediate reversal of Judge Folsom's decision not to stay it. They didn't have to direct Judge Folsom to stay the injunction, the appeals court could do it on their own. Perhaps the wording is not 100% to anyone's liking, but the outcome is the same ...
> Eventually (although they did find fault in Judge Folsom's direction to the jury that led to the reversal and remanding of part of the verdict). But the appeals court FIRST action was to protect DISH.
> Why would their decision be any different? The appeals court saved DISH from harm before, why not now? As long as their appeal isn't frivolous the shut off can wait for the case to finish it's path. There are no irreparable damages if DISH keeps operating their DVRs (unless DISH completely runs out of money).


James, for a permanent injunction to stand the moving party must show irreparable harm. The CAFC let the injunction stand, thus they believed that TiVo would be irreparable harmed without it.


----------



## scooper

inkahauts said:


> Ah, if I am building a new product today, don't I have to make sure it's not infringing on a patent before I release it for sale? And didn't Dish now prove that they are not a reliable source for derterminaing that their software is not infringing.. since they have basically said its not twice now, and are still saying its not? This makes perfect sense to me.


If you'll go back to our older threads on this - you'll see that the "judical approval" was only imposed after multiple attempts that failed - not after only one. Excessive punishment to be sure.


----------



## neOHIOdishNETWORKdealer-1

How about using a chip drive, say 120 Gb, RA them using advance exchange, Swap them out, Switch the Hard Drive for a chip drive. Ship the revamped chassis to another customer. Repeat the process, till all active receivers are exchanged. End of patent infringement.


----------



## inkahauts

James Long said:


> The DVRPAL is not a satellite receiver, is not one of the named receivers and has not been accused by TiVo in a court of law as infringing.
> 
> EchoStar could produce a million different DVRs ... the ones the court is dealing with are the eight named models.
> 
> The appeals court has to look at the basis of the appeal and the harm that would come to DISH/EchoStar if their DVR service was wrongfully terminated. Judge Folsom was WRONG in 2006 when he said not staying the injunction would not cause DISH harm. The appeals court set him straight. I believe he is wrong again and will be set straight again.
> 
> I have noticed that an appeals court judge has said he was wrong.


Yes, but the judge has now ruled that Dish is causing major harm to tivo, AND they have not done what is required to stop infringing... and are continuing to do so. He even checked to see if something Dish says they did worked.. it doesn't. Dish will be harmed is not a defense at this point to stay the ruling, because thats what allowed them to get to this point now At some point, you have to hold them accountable, and there is nothing left after this ruling for them to say, so their being hurt by not staying this ruling further is of no consequence to the appeals court.. At least thats my thought...

You stay something when you are determining if the lower ruling is correct, by a matter of law and procedure.. Unless Dish can prove without question that the judge came to the wrong conclusion in stating that the units are not more than colorably different from before, then I see no way this stay will be anything other than very short, and the ruling will likely be affirmed quickly.


----------



## James Long

dgordo said:


> James, for a permanent injunction to stand the moving party must show irreparable harm. The CAFC let the injunction stand, thus they believed that TiVo would be irreparable harmed without it.


They did so AFTER reviewing the case and offering an appeals verdict generally in TiVo's favor. The first action was to stay the injunction ... preventing harm to DISH during the appeals process.

Now new information has been presented to the court. That new information has been ruled on (at the appropriate level) by the lower court. DISH disagrees with that ruling and has the right to appeal. DISH faces the same harm as they did in 2006 if the injunction is not stayed.

TiVo faces the same harm as well ... despite that the appeals court stayed the injunction the last time around. What changed?


----------



## inkahauts

HDlover said:


> Dish would be irreparably harmed without a stay of DVRs being turned off, not Tivo being harmed. This would be like executing a prisoner before all appeals have been exhausted. Oh, wait a minute, the accused was innocent, too late. Tivo isn't going out of business because of Dish. They'd like you and the judge to believe so, but if they made a better product, and not want a monopoly, they wouldn't be in this condition. Apple isn't the only one making MP3 players.





James Long said:


> I base it on my reading of how the appeals court handled his decision the last time he decided not to stay his injunction.
> 
> Judge Folsom thought it would cause TiVo irreparable harm if DISH DVRs were not disabled. The appeals court ruled in DISH's favor saving DISH from being harmed during the appeals process. TiVo survived the last three years of DISH DVRs continued service. The party at risk here is DISH.
> 
> Fortunately we have a court system to figure these issues out. TiVo and DISH don't have to worry about popular (or unpopular) opinions on the internet.


Ah, at what point does it end? It seems to me like this is it. This ruling is very concise in saying that not only did they infringe, but that they still are. It also sets out what they must do to be able to be considered to no longer be infringing.. They now have to face the music..


----------



## scooper

neOHIOdishNETWORKdealer said:


> How about using a chip drive, say 120 Gb, RA them using advance exchange, Swap them out, Switch the Hard Drive for a chip drive. Ship the revamped chassis to another customer. Repeat the process, till all active receivers are exchanged. End of patent infringement.


No it's not - all you did was replace the harddrive with a chip drive. The Patent states for a storage device. What has to be changed is the way you read / write / buffer data to and from the storage device. Most of the rest that Echostar / Dish has done for modification should pass muster, it's the "automatic flow controlled buffering" that you would need to overhaul / replace.


----------



## James Long

inkahauts said:


> Yes, but the judge has now ruled that Dish is causing major harm to tivo, ...


Basically the same as he ruled in 2006 ... right before the appeals court stayed the injunction.


> Unless Dish can prove without question that the judge came to the wrong conclusion in stating that the units are not more than colorably different from before, then I see no way this stay will be anything other than very short, and the ruling will likely be affirmed quickly.


Very little seems to be done fast in the court system. Two more years? Probably not ... but I would not expect a speedy appeals verdict. (Unless by quickly you mean within a year?)

There is still the issue of the reversed and remanded verdict ... but as long as the injunction exists there isn't a reason to pursue that (other than as a back up plan in case the "software claims" are ever cleared up).


----------



## inkahauts

scooper said:


> If you'll go back to our older threads on this - you'll see that the "judical approval" was only imposed after multiple attempts that failed - not after only one. Excessive punishment to be sure.


BUt its already been 2 attempts...

They said their units where never infringing.... and lost

2nd attempt was a work around... and lost

At what point is it not do diligence for Dish to get a second opinion on the matter before claiming it doesn't infringe?

How is that excessive? Once you are proven guilty of something, being told to ask permission before doing the same thing again is not excessive... Especially when its impacting multiple people and for millions of dollars...


----------



## inkahauts

James Long said:


> Basically the same as he ruled in 2006 ... right before the appeals court stayed the injunction.
> Very little seems to be done fast in the court system. Two more years? Probably not ... but I would not expect a speedy appeals verdict. (Unless by quickly you mean within a year?)
> 
> There is still the issue of the reversed and remanded verdict ... but as long as the injunction exists there isn't a reason to pursue that (other than as a back up plan in case the "software claims" are ever cleared up).


I mean, if they don't see somethign wrong with the ruling this month, it will not stay it longer, and I don't think they will at this point...

If they do, then I'd expect it to all go down again this fall, but I just don't see that happening.. This seems a bit more concise than previous itterations...

I have to say, either way, its all extremely interesting, and I look forward to seeing what happens.. Obviously at this point, its going to cost Dish more money.. the only question now is how much more.... And it what point do they give in and settle directly with tivo.. I for one don't think they ever will, because I think Charlie is that sure of himself...


----------



## Tom Robertson

Ok, I think I can agree that the Appellate Court will likely stay the injunction _if_ they agree to hear the appeal.

Tho I'm not nearly learned enough to have an over/under on if they will hear the appeal.

Cheers,
Tom


----------



## Greg Bimson

But correct me if I am wrong...

The entire trial, judgment and permanent injunction from the April, 2006 trial was to be reviewed by the Court of Appeals.

This latest ruling by Judge Folsom is a judgment in two parts: violation of an injunction by sales and manufacture of infringing products not colorably different than the adjudged and violation of an injunction for not following the terms of the injunction on its face.

Sure, continuing infringment may have to be addressed by the Court of Appeals, just as it was from the original Final Judgment and Permanent Injunction. History should repeat itself there.

It is part two of the judgment that DISH/SATS will have an entirely difficult time defeating. DISH/SATS was found in contempt for not disabling the "Infringing Products" using a plain, concise, ordinary reading of the injunction. It is no surprise that Judge Folsom barely devotes two pages in the memorandum regarding violations of the injunction on its face.

If TiVo files their brief correctly, there should be no stay at the Court of Appeals.

Meanwhile, TiVo has been awarded about $100 million in damages during the stay of the injunction, from August 2006 to April 2008, a period of 20 months. There will need to be another hearing to determine the damages during the period of contempt, which is currently at 14 months and counting. You can bet that those damages will be at least three times the amount per unit than they were before. And those damages only includes the eight devices which have been found infringing.

Mr. Ergen said he wanted a baseline for negotiations during one of the analyst calls. I wonder if the poker player will finally decide to fold?


----------



## dgordo

James Long said:


> They did so AFTER reviewing the case and offering an appeals verdict generally in TiVo's favor. The first action was to stay the injunction ... preventing harm to DISH during the appeals process.
> 
> Now new information has been presented to the court. That new information has been ruled on (at the appropriate level) by the lower court. DISH disagrees with that ruling and has the right to appeal. DISH faces the same harm as they did in 2006 if the injunction is not stayed.
> 
> TiVo faces the same harm as well ... despite that the appeals court stayed the injunction the last time around. What changed?


Gotcha, I misunderstood you. I thought you were saying the CAFC didn't say so after the appeal.


----------



## CuriousMark

Tom Robertson said:


> Ok, I think I can agree that the Appellate Court will likely stay the injunction _if_ they agree to hear the appeal.
> 
> Tho I'm not nearly learned enough to have an over/under on if they will hear the appeal.
> 
> Cheers,
> Tom


My bet is placed on the appellate court not staying the injunction, but agreeing to hear the appeal. I base that on the fact that this is an appeal of a contempt finding and that the appellate court already affirmed the injunction. Still I think they will hear the appeal even if they don't think it has much chance with them.


----------



## phrelin

Hmmmm. Well, I promised myself I would enter this fray further, but I can't resist.

First, the appeals court will stay the order as it applies to the listed devices until they decide not to hear the appeal on Judge Folsom's decision or until they decide on the appeal of Judge Folsom's decision as it applies to the listed devices. My personal opinion is that they will not deal with the appeal as it applies to the listed devices if TiVo offers them that suggestion - distinguish between the listed devices and any other issue.

With regard to the sufficiency of the "workaround", Folsom's 35 pages of reasoning may be subject to review but if I were TiVo I would suggest that the appeals court let it stand until the Dish initiated Delaware case referred to Texas is decided. The legal standing of the "workaround" would be that it is invalid and illegal until that other case is tried. I have no idea if that approach would work.

Finally, if I were TiVo, I would guide the appeals court to the portions of that 35 page Memorandum that recite in detail how Dish chose to not tell the courts of its "workaround" when, in essence, the court system had taken legal jurisdiction over the listed boxes. Then I would ask the appeals court to let stand Judge Folsom's order taking jurisdiction over any DVR software that Echostar/Dish intends to sell or distribute through it's boxes, at least until the other case is adjudicated.


----------



## Curtis52

inkahauts said:


> BUt its already been 2 attempts...
> 
> They said their units where never infringing.... and lost
> 
> 2nd attempt was a work around... and lost
> 
> At what point is it not do diligence for Dish to get a second opinion on the matter before claiming it doesn't infringe?
> 
> How is that excessive? Once you are proven guilty of something, being told to ask permission before doing the same thing again is not excessive... Especially when its impacting multiple people and for millions of dollars...


Are you saying that the wording of the original injunction allowed a workaround without getting pre-approval? If so, what is Folsom complaining about?


----------



## Curtis52

CuriousMark said:


> My bet is placed on the appellate court not staying the injunction, but agreeing to hear the appeal. I base that on the fact that this is an appeal of a contempt finding and that the appellate court already affirmed the injunction. Still I think they will hear the appeal even if they don't think it has much chance with them.


If Dish is required to pay before the appeal is heard, how could they get the money back? How could they get lost customers back that had their DVRs disabled?


----------



## koji68

HDlover said:


> Netflix streams TV shows without Ads? Who is paying?


Is this for real? Netflix is a subscription service. Subscribers pay. :scratch:


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## Shades228

Richard King said:


> Wow. I never thought they would get away with that again. Charlie wins another one, although a minor skirmish in the total of things.


This is a huge skirmish because it gives them even more time to develop something new so they don't have to license with TiVo or turn their DVR's off.


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## JohnH

Shades228 said:


> This is a huge skirmish because it gives them even more time to develop something new so they don't have to license with TiVo or turn their DVR's off.


Perhaps there is nothing that would be usable that does not use a form of TIVO's technology.


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## RCY

In the event that TIVO wins on appeal, who chooses the remedy? TIVO or the court? In other words, could TIVO say, "we don't want the infringed patents used at all by E* or Dish". Could TIVO make Dish disable the DVRs in question instead of taking $$ for the patent use?


----------



## RCY

RCY said:


> In the event that TIVO wins on appeal, who chooses the remedy? TIVO or the court? In other words, could TIVO say, "we don't want the infringed patents used at all by E* or Dish". Could TIVO make Dish disable the DVRs in question instead of taking $$ for the patent use?


I certainly hope not, but was wondering. Reducing competition among providers would "do irreparable harm" to consumers...


----------



## phrelin

Much to my surprise, this case was the top story in my _The Hollywood Reporter daily email_. I'm surprised because the top stories are usually about, guess what, Hollywood. From the story:


> Dish Network's inability to effectively design a software workaround to TiVo's DVR patents certainly raises our concern about the risk to other DVR providers," said Pali Research analyst Richard Greenfield, who mentioned Time Warner Cable, Cablevision, Verizon, AT&T, Charter Communications and Mediacomm.
> 
> TiVo CEO Tom Rogers recently said he has not been seeking new licensing arrangements -- with much enthusiasm, at least -- because he would prefer to strike such deals after a legal victory against EchoStar.


 The story also indicates possible timelines.


----------



## ziggy29

RCY said:


> In the event that TIVO wins on appeal, who chooses the remedy? TIVO or the court? In other words, could TIVO say, "we don't want the infringed patents used at all by E* or Dish". Could TIVO make Dish disable the DVRs in question instead of taking $$ for the patent use?


I suspect TiVo would much sooner push for a settlement (or at least absolute finality in the courts) than go that far. Such a settlement would have to provide for both compensation for past infringement (maybe call it a "retroactive licensing fee" to allow E* to save face) AND provide for a mutually acceptable licensing agreement moving forward.

I have no horse in this race, but it really looks to me like Charlie's ego is costing his company and his shareholders more and more money with every stonewalling tactic they initiate. Perhaps he's hoping TiVo will go belly up before exhausting every last grasp-at-the-straws legal option...


----------



## JohnH

RCY said:


> In the event that TIVO wins on appeal, who chooses the remedy? TIVO or the court? In other words, could TIVO say, "we don't want the infringed patents used at all by E* or Dish". Could TIVO make Dish disable the DVRs in question instead of taking $$ for the patent use?


If TIVO "wins" it just means the remedy already specified in the case will prevail.


----------



## ziggy29

JohnH said:


> If TIVO "wins" it just means the remedy already specified in the case will prevail.


Agreed, but you'd still have to get E* and Dish to pay up. That might require threatening their executives with jail time for contempt.


----------



## tnsprin

James Long said:


> The DVRPAL is not a satellite receiver, is not one of the named receivers and has not been accused by TiVo in a court of law as infringing.
> 
> ...


However if the appeals all go TIVO's way and the PTO doesn't strike down these patents in the current review, I suspect all the DVR's produced by Echostar including the VIP series, the upcoming 922, and the DVRPAL will also be found in violation in new trials. I haven't heard that any one of them was using a different core "DVR" process then the ones already found in violation. If someone else knows different it would be interesting to know.


----------



## phrelin

Shades228 said:


> This is a huge skirmish because it gives them even more time to develop something new so they don't have to license with TiVo or turn their DVR's off.


If Echostar tried, they would essentially have to start over. And given that Cisco's Scientific-Atlanta and Motorola have designs some feel are sufficiently different from TiVo, it's problematic to create a design in less than 18 months that wouldn't trip over someone else's design.

Frankly, I don't think Echostar's "muscle" design is so good based on performance. A license to use the TiVo patent would give more flexibility to create better performing boxes.


----------



## Herdfan

James Long said:


> but I would not expect a speedy appeals verdict. (Unless by quickly you mean within a year?)


There is always the chance that the CAFC will decide there is nothing new and decide not to hear it. That could happen somewhat quickly.

I don't really see what new info they have to look at. There was a ruling for TiVo, it was appealled and the CAFC sent it back almost intact (remanded the hardware claims that are still out there), leaving the injunction in place as written.

All the judge has done is enforced the original injunction. Even if DISH did download new software, they violated the injunction that the CAFC had essentially approved.


----------



## Herdfan

ziggy29 said:


> Agreed, but you'd still have to get E* and Dish to pay up. That might require threatening their executives with jail time for contempt.


Brings up the question of whether or not DISH will have to cough up another $100M or so to go forward in the appeals process like they did last time.

Plus there is the future hearing on other damages.


----------



## ziggy29

Herdfan said:


> Brings up the question of whether or not DISH will have to cough up another $100M or so to go forward in the appeals process like they did last time.


I think Charlie's ego and obstinacy is costing his company and his shareholders a LOT of money. I suspect they may be trying to wage a war of attrition, hoping TiVo will fold and run out of money before they've used every possible stall tactic.


----------



## dfd

Herdfan said:


> Brings up the question of whether or not DISH will have to cough up another $100M or so to go forward in the appeals process like they did last time.
> 
> Plus there is the future hearing on other damages.


Don't they need to post a bond to proceed with an appeal?


----------



## Herdfan

dfd said:


> Don't they need to post a bond to proceed with an appeal?


They did last time, so I would assume the same requirements this time around. The big question is how much?


----------



## Ken_F

phrelin said:


> If Echostar tried, they would essentially have to start over. And given that Cisco's Scientific-Atlanta and Motorola have designs some feel are sufficiently different from TiVo


I highly doubt that is true, at least in Motorola's case. Motorola DVRs use the same Broadcom SoCs as TiVo, Dish Network, and DirecTV DVRs. Motorola DVRs use the same Linux driver code from Broadcom.

All Motorola and Cisco boxes ship with DVR functionality disabled, so I'm not sure they can be held accountable for infringement. But I would certainly expect TiVo to go after any cable company using Motorola equipment, given their familiarity with the Broadcom platform.


----------



## bobukcat

Ken_F said:


> I highly doubt that is true, at least in Motorola's case. Motorola DVRs use the same Broadcom SoCs as TiVo, Dish Network, and Motorola DVRs. Motorola DVRs use the same Linux driver code from Broadcom.
> 
> All Motorola and Cisco boxes ship with DVR functionality disabled, so I'm not sure they can be held accountable for infringement. But I would certainly expect TiVo to go after any cable company using Motorola equipment, given their familiarity with the Broadcom platform.


I don't think I understand what you mean, I have friends with Moto DVRs on Fios and those have DVR functionality.


----------



## phrelin

Ken_F said:


> All Motorola and Cisco boxes ship with DVR functionality disabled, so I'm not sure they can be held accountable for infringement. But I would certainly expect TiVo to go after any cable company using Motorola equipment, given their familiarity with the Broadcom platform.


Now that is interesting information I hadn't seen anywhere.:eek2:

So they're leaving it up to the cable company to get a TiVo license for DVR usage if it's needed. For me that's a "lightbulb moment" as it puts the whole Echostar/Dish Network split in a new light. Effectively Echostar can say to Dish Network: "The licensing issue is your problem, as that is the accepted practice in the industry."

I guess I didn't do my homework on that issue.:blush: :bang


----------



## bobukcat

RCY said:


> In the event that TIVO wins on appeal, who chooses the remedy? TIVO or the court? In other words, could TIVO say, "we don't want the infringed patents used at all by E* or Dish". Could TIVO make Dish disable the DVRs in question instead of taking $$ for the patent use?


I have to believe that Tivo wants a long-term licensing agreement for their IP, as others have stated they don't have a DBS DVR ready (at least not that we know of) to sell E* so the only way for them to make money in that market is with licensing.

*If* they were to refuse to offer licensing of their IP to other manufacturers for a reasonable fee they _could_ open themselves up to non-competitive penalties from the FTC or lawsuits based on non-competitive practices.


----------



## HobbyTalk

bobukcat said:


> *If* they were to refuse to offer licensing of their IP to other manufacturers for a reasonable fee they _could_ open themselves up to non-competitive penalties from the FTC or lawsuits based on non-competitive practices.


I think that is a good point that most haven't thought of. They pretty much have to offer a reasonable licensing agreement to Dish/Echostar or they themselves could have actions taken against them.


----------



## ziggy29

bobukcat said:


> *If* they were to refuse to offer licensing of their IP to other manufacturers for a reasonable fee they _could_ open themselves up to non-competitive penalties from the FTC or lawsuits based on non-competitive practices.


I agree. I think they are seeking a licensing agreement with E*/Dish more than they are seeking to shut down all their DVRs. I don't know that TiVo really has well-developed plans to develop and market their own satellite STBs; their recent reconciliation with D* would seem to indicate that their satellite strategy is to partner with satellite providers through licensing their software to those services.

In fact, I don't know that they are really seeking to develop any of their own boxes for proprietary services; their own boxes are all for fairly generic sources (OTA, analog cable and digital cable with appropriate cable card). When they have entered agreements with individual content providers (D*, Comcast, Cox), they've basically licensed their technology for their proprietary STBs rather than "roll their own." I'd have no reason not to believe this is what they would like to do with Dish/E*.


----------



## kog

ziggy29 said:


> I agree. I think they are seeking a licensing agreement with E*/Dish more than they are seeking to shut down all their DVRs. I don't know that TiVo really has well-developed plans to develop and market their own satellite STBs; their recent reconciliation with D* would seem to indicate that their satellite strategy is to partner with satellite providers through licensing their software to those services.


It has always been Tivo's plans to eventually get out of the hardware business and just license their technology or port their software to other people's STB's.

At this point, I don't know if Tivo trusts Dish enough to sign a long term deal with them fearing that Charlie will screw them over at some point. I guess it all depends on how bulletproof you write that contract.


----------



## Ron Barry

If there is a licensing deal struck it would be interesting to see what people would consider a reasonable fee would be to license this particular patent given that to get all the TIVO functionality carries about a 11 dollar monthly licensing fee to the end user as I recall. 

Also as far as I know there is no actually TIVO proprietary code contained in the Dish Boxes so there would be no support or development costs incurred by TIVO unless Dish decided to actually create a TIVO/Dish box. 

My guess is TIVO is thinking multi-dollar fees per box while Dish is thinking sub-dollar per box fee. My guess is this is the type of discussions these guys are having and I am sure at this point they are miles away from each other.


----------



## Curtis52

"In a "nuclear scenario," Dish's competitor, satellite TV provider DirecTV (DTV), could buy TiVo and reserve exclusive use of the DVR technology. That would mean Dish would be the only digital TV provider unable to offer fast-forwarding of TV, a situation that Bernstein's Moffett describes as a "death sentence."

link


----------



## gully_foyle

Curtis52 said:


> "In a "nuclear scenario," Dish's competitor, satellite TV provider DirecTV (DTV), could buy TiVo and reserve exclusive use of the DVR technology. That would mean Dish would be the only digital TV provider unable to offer fast-forwarding of TV, a situation that Bernstein's Moffett describes as a "death sentence."
> 
> link


Except that anti-trust regulators would take pains to prevent just that. A must-license proviso would be almost certain.


----------



## Tom Robertson

kcmurphy88 said:


> Except that anti-trust regulators would take pains to prevent just that. A must-license proviso would be almost certain.


And given that TiVO already has licenses with other providers (cable companies), does that further strengthen the case for must-license?

Cheers,
Tom


----------



## Curtis0620

Tom Robertson said:


> And given that TiVO already has licenses with other providers (cable companies), does that further strengthen the case for must-license?
> 
> Cheers,
> Tom


The fact that he would have to pay Directv would be funny.


----------



## Martin Tupper

bobukcat said:


> I have to believe that Tivo wants a long-term licensing agreement for their IP, as others have stated they don't have a DBS DVR ready (at least not that we know of) to sell E* so the only way for them to make money in that market is with licensing.
> 
> *If* they were to refuse to offer licensing of their IP to other manufacturers for a reasonable fee they _could_ open themselves up to non-competitive penalties from the FTC or lawsuits based on non-competitive practices.





HobbyTalk said:


> I think that is a good point that most haven't thought of. They pretty much have to offer a reasonable licensing agreement to Dish/Echostar or they themselves could have actions taken against them.


Does TiVo currently have license agreements with any sat/cable company with whom they do not also have a product development agreement? TiVo will probably insist on both.


----------



## Herdfan

kcmurphy88 said:


> Except that anti-trust regulators would take pains to prevent just that. A must-license proviso would be almost certain.


Even given that it was proven in a court that DISH stole TiVo's IP? I would think TiVo could refuse to partner with DISH given their history.


----------



## FogCutter

I wonder -- there can't be much of TiVo left, it seems like a serious amount of their projected income is expected to come from this patent settlement, not from their operations and sales. It seems logical for Dish to buy Tivo. Dish has a market cap of $6B+, TiVo has a market cap of $1.1B. I don't know either companies debt/liability, but on the surface it could fly. 

Then Charlie could have his way with TiVo and be done with this.


----------



## Curtis52

kcmurphy88 said:


> Except that anti-trust regulators would take pains to prevent just that. A must-license proviso would be almost certain.


A patent is a legal monopoly. That's what a patent is for. A patent holder can license to anyone they want to, especially if they also actually use the patent themselves.

United States Code:



> (d) No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following:
> (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent;
> (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent;
> (3) sought to enforce his patent rights against infringement or contributory infringement;
> (4) *refused to license or use any rights to the patent*;


----------



## HobbyTalk

Curtis52 said:


> A patent is a legal monopoly. That's what a patent is for. A patent holder can license to anyone they want to, especially if they also actually use the patent themselves.
> 
> United States Code:


Ummmm... did you read and understand what you quoted? A patent owner can not be denied relief if they did any of the following 4 items. They have licensed the patent so that brings up other issues.... such as current licenses set the "reasonable" price..... RAND


----------



## dfd

HobbyTalk said:


> Ummmm... did you read and understand what you quoted? A patent owner can not be denied relief if they did any of the following 4 items. They have licensed the patent so that brings up other issues.... such as current licenses set the "reasonable" price..... RAND


Is it your point that E* is entitled to the same rate D* and C* have with Tivo?

It really doesn't seem 'right' to me that a convicted infringer would then get the same rate as a partner.

Why shouldn't the patent owner have the ultimate say here? Pay me $X/y or don't use my patent.

Keep in mind this isn't national security or public health, it's TELEVISION. Consumers have other choices and E* had their chance to negotiate a 'fair' rate for many years.


----------



## HobbyTalk

dfd said:


> Is it your point that E* is entitled to the same rate D* and C* have with Tivo?
> 
> It really doesn't seem 'right' to me that a convicted infringer would then get the same rate as a partner.
> 
> Why shouldn't the patent owner have the ultimate say here? Pay me $X/y or don't use my patent.
> 
> Keep in mind this isn't national security or public health, it's TELEVISION. Consumers have other choices and E* had their chance to negotiate a 'fair' rate for many years.


It's the law. RAND = reasonable and non-discriminatory. One example is the recent LG appeal to the FTC.... which just happens to to do with a DTV patent license.


----------



## Martin Tupper

dfd said:


> Is it your point that E* is entitled to the same rate D* and C* have with Tivo?
> 
> It really doesn't seem 'right' to me that a convicted infringer would then get the same rate as a partner.
> 
> Why shouldn't the patent owner have the ultimate say here? Pay me $X/y or don't use my patent.
> 
> Keep in mind this isn't national security or public health, it's TELEVISION. Consumers have other choices and E* had their chance to negotiate a 'fair' rate for many years.


If at any point, TiVo offered the "prevailing" rate to E*, and Charlie rejected it, E* cannot argue that TiVo engaged in non-competitive practices.


----------



## dfd

HobbyTalk said:


> It's the law. RAND = reasonable and non-discriminatory. One example is the recent LG appeal to the FTC.... which just happens to to do with a DTV patent license.


I know wikipedia isn't the ideal source for legal terms but...

Reasonable and Non Discriminatory Licensing (RAND) is a term for a type of licensing typically used during standardization processes.

And if I found the correct case, it was about memory standards.

This case isn't about standards at all so why should RAND apply?


----------



## patrickmunn

Patents create a legal monopoly. There is no prevailing licensing rate. It is whatever the patent holder and the licensee agree on, and these agreement amounts are almost always confidential. Therefore whatever TIVO and DirecTV agreed to has absolutely no bearing as to what TIVO will accept from DISH. TIVO could leave DISH out in the cold on this one, but ultimately it is in their best interest to come to some agreement with DISH because the license will be a source of revenue for them that they would otherwise not have access to.


----------



## inkahauts

Curtis52 said:


> Are you saying that the wording of the original injunction allowed a workaround without getting pre-approval? If so, what is Folsom complaining about?


NO, I am saying that is what Dish tried, and Folsom decided this time to mention it because they have proven they don't have the ability to actually do it and be trusted to say that it isn't infringing, and that a third party needs to make that decision... I don't see why anyone can't see that when you have a guilty party trying to do something, they shouldn't be trusted to make a judgement about themselves on the exact same thing again, because they will say they are right every time, and in this case, they have been wrong twice... It makes sense to have a third party sign off on it first, then allow them to release it.


----------



## inkahauts

JohnH said:


> Perhaps there is nothing that would be usable that does not use a form of TIVO's technology.


Ah, no.. There are more than one way to write data and index it from a data storage device... It can be done, Dish just hasn't found it yet. If this process was the only physical way to do it, and it was that common, all computers would index data that way, and no one would have been able to patent it because it would have been considered to common already at that point.


----------



## inkahauts

Shades228 said:


> This is a huge skirmish because it gives them even more time to develop something new so they don't have to license with TiVo or turn their DVR's off.


How do you figure they have more time? If they don't get the appeals court to overturn it or send it back for something next week, then the stay will be lifted and they will only have a few days.. A temporary stay for 2 weeks is not going to give them the time they need to come up with a whole new process.. Dish needs to get the appeals court to find an issue with the ruling, which I don't think will happen, but time will tell..


----------



## inkahauts

RCY said:


> In the event that TIVO wins on appeal, who chooses the remedy? TIVO or the court? In other words, could TIVO say, "we don't want the infringed patents used at all by E* or Dish". Could TIVO make Dish disable the DVRs in question instead of taking $$ for the patent use?


The remedy is mostly stated in the ruling already on file. There is an additional court date for more damages of some sort...

Tivo is under no obligation to ever allow Dish to licenses their product. Period. The ruling already states that Dish has to disable their DVR's, that was the whole point of this lawsuit. To turn off all the infringing units.

However, I am sure Tivo would be more than happy to have Dish pay them a licensing fee.. I just think Charlie is to arrogant and doesn't want to because he has spent so much on his in house units, and he doesn't want to pay someone else when he thinks he can do it differently/better.


----------



## inkahauts

Ron Barry said:


> If there is a licensing deal struck it would be interesting to see what people would consider a reasonable fee would be to license this particular patent given that to get all the TIVO functionality carries about a 11 dollar monthly licensing fee to the end user as I recall.
> 
> Also as far as I know there is no actually TIVO proprietary code contained in the Dish Boxes so there would be no support or development costs incurred by TIVO unless Dish decided to actually create a TIVO/Dish box.
> 
> My guess is TIVO is thinking multi-dollar fees per box while Dish is thinking sub-dollar per box fee. My guess is this is the type of discussions these guys are having and I am sure at this point they are miles away from each other.


I am sure the number Charlie is willing to pay is zero... Tivo I think wants 2.50 a month per unit... just for this one patent use... (based on what they asked for in the lawsuit)

And Dish has no more barging power than anyone else... If anything, there backs are up against the wall, and tivo could make the offer higher to them than they have done for others, just because they want to. Whatever Tivo offers, they can make it take it or leave it, its up to them... There is no one that can say they can't ask a high price. However, I suspect that Tivo will ask the same of them that they want from any provider that is using this patent, because then they could use it as leverage.. Hey, if thats what Dish is paying, why should I offer you anything different? Ands once one company falls in line, usually others use that as a baseline to sign deals themselves...


----------



## inkahauts

Martin Tupper said:


> Does TiVo currently have license agreements with any sat/cable company with whom they do not also have a product development agreement? TiVo will probably insist on both.


Ah, as far as I know, they don't have any product development agreements with any provider. ( I assume your talking about actual hardware) Even Directv one appears to be Tivo building software that will work on a box that also runs Directv software, that Directv has designed and is building.


----------



## Martin Tupper

inkahauts said:


> Ah, as far as I know, they don't have any product development agreements with any provider. ( I assume your talking about actual hardware) Even Directv one appears to be Tivo building software that will work on a box that also runs Directv software, that Directv has designed and is building.


I wasn't limiting it to just hardware, no. My point was, TiVo is unlikely to simply accept a check from E*. They are going to want to have their products offered to E* customers. They might even charge a higher fee on boxes using E*'s infringing software than TiVo software to encourage E* and its customers to migrate over (eg. $5 per E* box vs. $2 per TiVo box).


----------



## Curtis52

Curtis52 said:


> Are you saying that the wording of the original injunction allowed a workaround without getting pre-approval? If so, what is Folsom complaining about?





inkahauts said:


> NO, I am saying that is what Dish tried, and Folsom decided this time to mention it because they have proven they don't have the ability to actually do it and be trusted to say that it isn't infringing, and that a third party needs to make that decision.


Judge Folsom added a pre-approval rerquirement for workarounds to the injunction. If the original injunction allowed workarounds without pre-approval then how could Judge Folsom say this:


> Even if EchoStar had achieved a non-infringing design-around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction.


It's a huge contradiction that Dish can exploit.


----------



## bobukcat

patrickmunn said:


> Patents create a legal monopoly. There is no prevailing licensing rate. It is whatever the patent holder and the licensee agree on, and these agreement amounts are almost always confidential. Therefore whatever TIVO and DirecTV agreed to has absolutely no bearing as to what TIVO will accept from DISH. TIVO could leave DISH out in the cold on this one, but ultimately it is in their best interest to come to some agreement with DISH because the license will be a source of revenue for them that they would otherwise not have access to.


I still believe that if Tivo were to deny offering a license for their IP to E* for a reasonable fee (penalties for past infringment would be dealt with by the courts) it would essentially create a DBS monopoly and that is harmful to consumers. They wouldn't let E* and D* merge because it would create the same monopoly and I believe they would take steps to prevent it from happening in this case - as they should! If D* or (E*) is the only DBS game in town they can charge significantly higher rates in areas they have limited or no competition. If nothing else it may give E* another legal avenue to persue to delay this thing even further if their current course results in a hard deadline (not stayed) to disable the DVRS.

That being said I still firmly believe they want a licensing agreement and would offer a reasonable fee - they want to make money long term, not just a settlement for infringment with no continuing revenue stream, that would be bad business.


----------



## bobukcat

inkahauts said:


> Ah, no.. There are more than one way to write data and index it from a data storage device... It can be done, Dish just hasn't found it yet. If this process was the only physical way to do it, and it was that common, all computers would index data that way, and no one would have been able to patent it because it would have been considered to common already at that point.


Sure there are other ways to do it, but with the same hardware that they are using - very possilbly not, at least not with acceptable performance. Other solutions may require a significant increase in processing power or other components that may drive the price up to the point of being unreasonable.


----------



## James Long

bobukcat said:


> I still believe that if Tivo were to deny offering a license for their IP to E* for a reasonable fee (penalties for past infringment would be dealt with by the courts) it would essentially create a DBS monopoly and that is harmful to consumers.


Judge Folsom does not consider the DVR functionality that DISH provides to be the core service of DISH Network. He believes that DISH would not be harmed if they were not able to offer DVR functionality and has now ruled to have DISH disable their DVR functionality twice.

If the order were to cease offering their primary service, direct broadcast satellite service, the monopoly aspect would come into play and I'd expect to see a forced licensing agreement instead of a cease and desist. (DISH forced to pay and whomever held the patent forced to accept payment and allow use of their patent.)

But this isn't about DBS service ... this is about an extra offering - one that most customers don't even take advantage of. Judge Folsom being king for the issue (unless overruled) I don't see him forcing a licensing agreement. I believe he would LIKE to force a licensing agreement ... he would prefer if the parties would just settle up and get out of his court ... but I don't believe he would force a settlement on the parties.


----------



## bobcamp1

patrickmunn said:


> Patents create a legal monopoly. There is no prevailing licensing rate. It is whatever the patent holder and the licensee agree on, and these agreement amounts are almost always confidential. Therefore whatever TIVO and DirecTV agreed to has absolutely no bearing as to what TIVO will accept from DISH. TIVO could leave DISH out in the cold on this one, but ultimately it is in their best interest to come to some agreement with DISH because the license will be a source of revenue for them that they would otherwise not have access to.


Well... there is compulsory licensing.

So let's say some discovered the cure for cancer/AIDS, but the company would not produce the drug or offer reasonable licensing agreements. The government can step in and order the company to license it to a few other companies with reasonable royalties.

Since DVR service isn't the cure for cancer, I don't think that will happen here.


----------



## bobukcat

James Long said:


> Judge Folsom does not consider the DVR functionality that DISH provides to be the core service of DISH Network. He believes that DISH would not be harmed if they were not able to offer DVR functionality and has now ruled to have DISH disable their DVR functionality twice.
> 
> If the order were to cease offering their primary service, direct broadcast satellite service, the monopoly aspect would come into play and I'd expect to see a forced licensing agreement instead of a cease and desist. (DISH forced to pay and whomever held the patent forced to accept payment and allow use of their patent.)
> 
> But this isn't about DBS service ... this is about an extra offering - one that most customers don't even take advantage of. Judge Folsom being king for the issue (unless overruled) I don't see him forcing a licensing agreement. I believe he would LIKE to force a licensing agreement ... he would prefer if the parties would just settle up and get out of his court ... but I don't believe he would force a settlement on the parties.


I agree and I don't think the judge considered this aspect of the ramifications in his opinion or ruling, I was really just pointing out it may be another avenue E* could possibly persue in a completely different court or even regulatory body (FTC) to further delay the DVR cutoff if / when the case is settled in Tivo's favor. It may never happen but the negative effect on the consumer's (particulalry higher-end consumers) choice of DBS providers if only one of them have DVR capability is not insignificant IMHO.


----------



## Herdfan

James Long said:


> Judge Folsom does not consider the DVR functionality that DISH provides to be the core service of DISH Network.


Well, look at how many customers both D* and E* have that don't have DVR's. Or at how many customers they both had before there was such a thing as DVR's.

I see his point in that regard.


----------



## P Smith

jpk said:


> Exactly. Dish does not get to cry that they can't afford the penalty for their infringement. They should have thought of that before they infringed.
> 
> ...


Actually they thought about the outcome in advance: soon as PVR-501 came on the stage, and his twin 508, Dish did start charging DVR fee for third variant [510] and other DVR $5 per month what brought to them easily $240M per year for current count of 4M DVR. More then enough to cover the latest fines and legal expenses and have a profit.


----------



## Shades228

FogCutter said:


> I wonder -- there can't be much of TiVo left, it seems like a serious amount of their projected income is expected to come from this patent settlement, not from their operations and sales. It seems logical for Dish to buy Tivo. Dish has a market cap of $6B+, TiVo has a market cap of $1.1B. I don't know either companies debt/liability, but on the surface it could fly.
> 
> Then Charlie could have his way with TiVo and be done with this.


Other MVPD's would loan Tivo cash to keep them going until the settlement. It would have many advantages to them.


----------



## audiomaster

< I feel the judge went too far in requiring his informed consent before they could make another change. <
Does Folsom claim to have the technical chops to understand and rule on specific software changes that do or do not infringe? I doubt it. Has he indicated how he might get around this (independant counsel etc)??

We as customers are the ones who will be "harmed" by his injunction if enforced. Shouldn't we as a "class" be organising to promote OUR interests independantly of Charlie's? Surely there must be legal counsil out there who would be interested in such an action?

This is a Democracy, after all. "The needs of the many outweigh the needs of the few, or the one" Even Vulcans understand that!

Someone call Obama! If Citi Bank is too big to fail, then Dish, as the only competition to Direct, cannot be allowed to fail as that would leave Direct as a monopoly! That could be challenged in court also.


----------



## phrelin

audiomaster said:


> < I feel the judge went too far in requiring his informed consent before they could make another change. <
> Does Folsom claim to have the technical chops to understand and rule on specific software changes that do or do not infringe? I doubt it. Has he indicated how he might get around this (independant counsel etc)??
> 
> We as customers are the ones who will be "harmed" by his injunction if enforced. Shouldn't we as a "class" be organising to promote OUR interests independantly of Charlie's? Surely there must be legal counsil out there who would be interested in such an action?
> 
> This is a Democracy, after all. "The needs of the many outweigh the needs of the few, or the one" Even Vulcans understand that!
> 
> Someone call Obama! If Citi Bank is too big to fail, then Dish, as the only competition to Direct, cannot be allowed to fail as that would leave Direct as a monopoly! That could be challenged in court also.


Ah, well I wouldn't want to try to argue I'm being harmed since I agreed to the following found in the standard contract:


> DISH Network may, in its sole discretion, add, change or remove features of its PVR/DVR Products and, upon notice to you, introduce or change fees for the use of PVR/DVR Product features. DISH Network will notify you of any change that is within its reasonable control.


 I have already accepted the fact that *"Dish Network may...in it's sole discretion...remove features of its PVR/DVR Products."* Of course, you may have signed some special agreement.:sure:


----------



## Curtis0620

audiomaster said:



> < I feel the judge went too far in requiring his informed consent before they could make another change. <
> Does Folsom claim to have the technical chops to understand and rule on specific software changes that do or do not infringe? I doubt it. Has he indicated how he might get around this (independant counsel etc)??
> 
> We as customers are the ones who will be "harmed" by his injunction if enforced. Shouldn't we as a "class" be organising to promote OUR interests independantly of Charlie's? Surely there must be legal counsil out there who would be interested in such an action?
> 
> This is a Democracy, after all. "The needs of the many outweigh the needs of the few, or the one" Even Vulcans understand that!
> 
> Someone call Obama! If Citi Bank is too big to fail, then Dish, as the only competition to Direct, cannot be allowed to fail as that would leave Direct as a monopoly! That could be challenged in court also.


All Charlie has to do is sign a licensing agreement. If you are upset, then call for Charlie to sell the company.


----------



## Curtis52

Shades228 said:


> Other MVPD's would loan Tivo cash to keep them going until the settlement. It would have many advantages to them.


TiVo has $200 million in cash, no debt, and a low cash burn rate.


----------



## bobukcat

Shades228 said:


> Other MVPD's would loan Tivo cash to keep them going until the settlement. It would have many advantages to them.


I'm not sure the other providers other than D* have a real reason to want Tivo to win this case, because once they do you can bet Tivo'll be going after the other DVRs manufacturers or the MVPDs themselves if it's true that they are the ones responsible for enabling DVR functions on those STBs. Either way, they will use a victory against E* as a powerful negotiating tool to force licensing agreementst on those DVRs.

Now, that doesn't mean that Tivo can't get money elsewhere to stay afloat (if they even need it, I didn't look at their balance sheet) but I seem to recall others stating in the previous threads that there is some kind of poision pill that would make buying Tivo a very expensive option. I'm sure E*'s lawyers and accountants have looked at this scenario at least a dozen times.


----------



## audiomaster

If the decision results in my having to pay more out of my pocket for DVR service or functions than I did prior because Dish is passing those TIVO fees on to me, then I am being harmed financially. Of course the Dish and Tivo "spin doctors" may see it another way.

I had a boss one time try to convince me and a large room full of employees that we were effectively getting a raise because they were making changes to the benefits package!

I stood up and explained to him that the employees would know when they got a raise, because the numbers on thier paychecks would have gotten BIGGER!!

This was punctuated by 200+ employees standing up and applauding!


----------



## dfd

audiomaster said:


> If the decision results in my having to pay more out of my pocket for DVR service or functions than I did prior because Dish is passing those TIVO fees on to me, then I am being harmed financially. Of course the Dish and Tivo "spin doctors" may see it another way.
> 
> I had a boss one time try to convince me and a large room full of employees that we were effectively getting a raise because they were making changes to the benefits package!
> 
> I stood up and explained to him that the employees would know when they got a raise, because the numbers on thier paychecks would have gotten BIGGER!!
> 
> This was punctuated by 200+ employees standing up and applauding!


The guy on the corner selling hot car stereos can easily undercut the honest retailer.

Just because you can buy stolen goods cheaper than legit goods doesn't mean you are harmed by paying the honest retailer's price.


----------



## Lincoln6Echo

The way I see it here with TiVo is that they simply don't have the ability to compete with Dish/Echostar. I mean, they don't offer a service other than a "smart" DVR. If they had their own DBS system and another DBS system stole their DVR patents, then yeah, I can see where they may have an argument, but because DISH offers channel service along with DVR service, TiVo is acting like a whiney little biotch.


----------



## Curtis0620

Lincoln6Echo said:


> The way I see it here with TiVo is that they simply don't have the ability to compete with Dish/Echostar. I mean, they don't offer a service other than a "smart" DVR. If they had their own DBS system and another DBS system stole their DVR patents, then yeah, I can see where they may have an argument, but because DISH offers channel service along with DVR service, TiVo is acting like a whiney little biotch.


:icon_stup


----------



## phrelin

Lincoln6Echo said:


> The way I see it here with TiVo is that they simply don't have the ability to compete with Dish/Echostar. I mean, they don't offer a service other than a "smart" DVR. If they had their own DBS system and another DBS system stole their DVR patents, then yeah, I can see where they may have an argument, but because DISH offers channel service along with DVR service, TiVo is acting like a whiney little biotch.


TiVo sells boxes that work with OTA and cable companies' services using CableCARD decoders from your cable company. They state on their web site: "TiVo does not provide cable service."

We Dish Network customers depend exclusively on Echostar boxes that illegally use pirated TiVo technology which is ironic considering how much disruption Dish went to recently to replace cards to stop piracy.


----------



## david_jr

phrelin said:


> TiVo sells boxes that work with OTA and cable companies' services using CableCARD decoders from your cable company. They state on their web site: "TiVo does not provide cable service."
> 
> We Dish Network customers depend exclusively on Echostar boxes that illegally use pirated TiVo technology which is ironic considering how much disruption Dish went to recently to replace cards to stop piracy.


The problem with Tivo is that they don't sell enough of these boxes. They claim it is because E* stole their market share by stealing their IP. I doubt it. What percentage of E* customers do you suppose would have actually bought Tivos if E* had no DVR? I suspect that number to be extremely low, miniscule most likely. Judge Folsom apparently believes it to be high. He is wrong, but he is the judge. Tivo's business model doesn't work because their products are overpriced and their subscription service is WAY overpriced. E* and probably most other DVR providers have done what is done to just about every manufacturer of anything, ripped it off. Apple makes the Ipod, but numerous other manufacturers rip it off and sell their own version. It's called competition. Hyundai rips off Honda, etc., etc. It's the way the world works. I understand why Tivo sued E*, cause their business model isn't successful, so they needed the cash their business model wasn't providing. If Honda stops selling Accords I guess they'll have to sue Hyundai. If Ipods stop selling they'll sue Sansa too and so on.


----------



## Shades228

david_jr said:


> The problem with Tivo is that they don't sell enough of these boxes. They claim it is because E* stole their market share by stealing their IP. I doubt it. What percentage of E* customers do you suppose would have actually bought Tivos if E* had no DVR? I suspect that number to be extremely low, miniscule most likely. Judge Folsom apparently believes it to be high. He is wrong, but he is the judge. Tivo's business model doesn't work because their products are overpriced and their subscription service is WAY overpriced. E* and probably most other DVR providers have done what is done to just about every manufacturer of anything, ripped it off. Apple makes the Ipod, but numerous other manufacturers rip it off and sell their own version. It's called competition. Hyundai rips off Honda, etc., etc. It's the way the world works. I understand why Tivo sued E*, cause their business model isn't successful, so they needed the cash their business model wasn't providing. If Honda stops selling Accords I guess they'll have to sue Hyundai. If Ipods stop selling they'll sue Sansa too and so on.


The problem with that argument is if Dish did it how every other license agreement is setup with TiVo they would have carried some TiVo receives as well. They would also be paying a sub fee for TiVo's. I understand that most people who have Dish really like their DVR but if they had TiVo as well and they liked it more it would help TiVo.

TiVo also would have been making more money so that means they could develop their next gen software easier and have more people to roll it out to. Dish didn't make something different they took the IP and used it.

Now TiVo is not a perfect company and has made many mistakes which set them back but saying that they were not damaged is just blind. If Dish had not stolen their IP TiVo would be better off today.


----------



## Ohioankev

Shades228 said:


> The problem with that argument is if Dish did it how every other license agreement is setup with TiVo they would have carried some TiVo receives as well. They would also be paying a sub fee for TiVo's. I understand that most people who have Dish really like their DVR but if they had TiVo as well and they liked it more it would help TiVo.
> 
> TiVo also would have been making more money so that means they could develop their next gen software easier and have more people to roll it out to. Dish didn't make something different they took the IP and used it.
> 
> Now TiVo is not a perfect company and has made many mistakes which set them back but saying that they were not damaged is just blind. If Dish had not stolen their IP TiVo would be better off today.


How can the VIP receivers be affecting TiVo ? The reason I ask is because I subscribe to HD and the three units they are selling on TiVo only one supports DBS systems but that unit itself does not support HD.

TiVo Series2™ DT DVR
* Save up to 80 hours of shows at one time
* Record 2 shows at once*
* * Works with cable (with or without cable box); or satellite (with box)*
* Does NOT support high definition TV*

TiVo HD DVR
* Save up to 20 hours of HD programming (or 180 hours of standard definition) at one time
* Record two shows at once**
* * Works with cable and antenna; does NOT support satellite*
* Use CableCARD decoders from your cable company to replace your cable box
* Supports high definition TV

TiVo HD XL DVR ( I would buy this unit if it supported a dish receiver, sounds nice) 
* Save up to 150 hours of HD programming at a time***
* The largest capacity DVR available in the country
* THX® certified for premium audio and video quality
* Record two shows at once**
* Includes the premium programmable backlit remote control
* * Works with cable and antenna; does NOT support satellite*
* Use CableCARD decoders from your cable company to replace your cable box
** Supports high definition TV*

Whats the hypocrisy in that ? You can claim DISH stole someones patent, but the HD units do not support DBS service.. so what TiVo is going to license TiVo so Echostar can manufacture the TiVo branded receivers at their cost ?



Shades228 said:


> The problem with that argument is if Dish did it how every other license agreement is setup with TiVo they would have carried some TiVo receives as well. They would also be paying a sub fee for TiVo's. I understand that most people who have Dish really like their DVR but if they had TiVo as well and they liked it more it would help TiVo.
> 
> TiVo also would have been making more money so that means they could develop their next gen software easier and have more people to roll it out to. Dish didn't make something different they took the IP and used it.
> 
> Now TiVo is not a perfect company and has made many mistakes which set them back but saying that they were not damaged is just blind. If Dish had not stolen their IP TiVo would be better off today.





david_jr said:


> The problem with Tivo is that they don't sell enough of these boxes. They claim it is because E* stole their market share by stealing their IP. I doubt it. What percentage of E* customers do you suppose would have actually bought Tivos if E* had no DVR? I suspect that number to be extremely low, miniscule most likely. Judge Folsom apparently believes it to be high. He is wrong, but he is the judge. Tivo's business model doesn't work because their products are overpriced and their subscription service is WAY overpriced. E* and probably most other DVR providers have done what is done to just about every manufacturer of anything, ripped it off. Apple makes the Ipod, but numerous other manufacturers rip it off and sell their own version. It's called competition. Hyundai rips off Honda, etc., etc. It's the way the world works. I understand why Tivo sued E*, cause their business model isn't successful, so they needed the cash their business model wasn't providing. If Honda stops selling Accords I guess they'll have to sue Hyundai. If Ipods stop selling they'll sue Sansa too and so on.


As a consumer ideally and more greenly I would only want one receiver running in my entertainment system, not a receiver and a TiVo but on the other hand a TiVo would be nice if it allows for multiple sources (OFF Air, Cable & DBS simultaneously. I've always had interest in owning a TiVo but that was before Hulu came along and I don't have to pay $20/month for basic cable to get NBC, ABC, FOX, CBS and the new HD Boxes from TiVo don't support DBS so that is why I have no interest in TiVo as a consumer. Bill Gates or Steve Jobs should have tried this tactic back in the day.


----------



## Curtis52

Ohioankev said:


> How can the VIP receivers be affecting TiVo ?


The units themselves don't affect TiVo. The fact that Dish is not paying a royalty affects TiVo.

Even if TiVo had never manufactured and sold a single DVR of their own, anyone using their patented DVR process would still need to obtain a license from TiVo.


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## patrickmunn

Maybe the reason TIVO doesn't support DBS is because DISH wouldn't grant a license to TIVO to allow their box to work with the DISH satellite network? Doesn't DISH basically have a monopoly when i comes to the equipment that you can use to receive their programing?


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## Shades228

bobukcat said:


> I'm not sure the other providers other than D* have a real reason to want Tivo to win this case, because once they do you can bet Tivo'll be going after the other DVRs manufacturers or the MVPDs themselves if it's true that they are the ones responsible for enabling DVR functions on those STBs. Either way, they will use a victory against E* as a powerful negotiating tool to force licensing agreementst on those DVRs.
> 
> Now, that doesn't mean that Tivo can't get money elsewhere to stay afloat (if they even need it, I didn't look at their balance sheet) but I seem to recall others stating in the previous threads that there is some kind of poision pill that would make buying Tivo a very expensive option. I'm sure E*'s lawyers and accountants have looked at this scenario at least a dozen times.


TiVo winning this case hurts Dish network no matter what. This is a benefit to all other MVPD. If the stay is not upheld then the marketing campaigns that company's can use will be very destructive to Dish. Being able to legally say that DVR service for Dishnetwork customers is going to be turned off will really force people to look into options. It will be a PR nightmare for a company that is already having problems. Also loaning TiVo money would allow stock options and other agreements to open up easier.


----------



## Shades228

patrickmunn said:


> Maybe the reason TIVO doesn't support DBS is because DISH wouldn't grant a license to TIVO to allow their box to work with the DISH satellite network? Doesn't DISH basically have a monopoly when i comes to the equipment that you can use to receive their programing?


I think it was more of a hindsight issue assuming that DirecTV would still be manufacturing their box's.


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## inkahauts

Shades228 said:


> TiVo winning this case hurts Dish network no matter what. This is a benefit to all other MVPD. If the stay is not upheld then the marketing campaigns that company's can use will be very destructive to Dish. Being able to legally say that DVR service for Dishnetwork customers is going to be turned off will really force people to look into options. It will be a PR nightmare for a company that is already having problems. Also loaning TiVo money would allow stock options and other agreements to open up easier.


I see what your saying, but your thinking to short run.. Long run, and we are only talking months, Tivo is likely to go after any MVDP that might be using its patent process in their DVR's as well.. SO if they win, you are likely to see Tivo go on a licensing rampage, and suddenly they will be getting money for every DVR on the market.. That would be very smart on their part.


----------



## inkahauts

Curtis52 said:


> Judge Folsom added a pre-approval rerquirement for workarounds to the injunction. If the original injunction allowed workarounds without pre-approval then how could Judge Folsom say this:
> It's a huge contradiction that Dish can exploit.


The original injunction did not say anywhere that if Dish thought they had found a work around they could implement it on their own and decide on their own that they where no longer infringing. Just because he said it the second time doesn't imply he meant the opposite the first time, and that argument would never hold water in court. Its obvious he put that in because Dish seems to think they are always right and that the Judge is always wrong, and they can do whatever they want.


----------



## inkahauts

James Long said:


> Judge Folsom does not consider the DVR functionality that DISH provides to be the core service of DISH Network. He believes that DISH would not be harmed if they were not able to offer DVR functionality and has now ruled to have DISH disable their DVR functionality twice.
> 
> If the order were to cease offering their primary service, direct broadcast satellite service, the monopoly aspect would come into play and I'd expect to see a forced licensing agreement instead of a cease and desist. (DISH forced to pay and whomever held the patent forced to accept payment and allow use of their patent.)
> 
> But this isn't about DBS service ... this is about an extra offering - one that most customers don't even take advantage of. Judge Folsom being king for the issue (unless overruled) I don't see him forcing a licensing agreement. I believe he would LIKE to force a licensing agreement ... he would prefer if the parties would just settle up and get out of his court ... but I don't believe he would force a settlement on the parties.


I didn't see anywhere that the Judge said he doesn't think Dish would be harmed by having to turn off the DVR's. In fact, if anything, I think he says that they would loose revenue and profit (by definition harmful event to a company), based on the fact they are currently getting revenue that should have been going to Tivo all along.

Um, can you point to any time ever where a Judge has forced a licensing agreement because they believe that simply making the infringing company stop doing something would cause a monopoly? Where is it stated that intellectual monopolies are against the law anyway? They are not..

Frankly, I don't think he could actually force a licensing agreement.. Tivo would fight that (assuming they didn't like the structure) and they would win...


----------



## inkahauts

david_jr said:


> The problem with Tivo is that they don't sell enough of these boxes. They claim it is because E* stole their market share by stealing their IP. I doubt it. What percentage of E* customers do you suppose would have actually bought Tivos if E* had no DVR? I suspect that number to be extremely low, miniscule most likely. Judge Folsom apparently believes it to be high. He is wrong, but he is the judge. Tivo's business model doesn't work because their products are overpriced and their subscription service is WAY overpriced. E* and probably most other DVR providers have done what is done to just about every manufacturer of anything, ripped it off. Apple makes the Ipod, but numerous other manufacturers rip it off and sell their own version. It's called competition. Hyundai rips off Honda, etc., etc. It's the way the world works. I understand why Tivo sued E*, cause their business model isn't successful, so they needed the cash their business model wasn't providing. If Honda stops selling Accords I guess they'll have to sue Hyundai. If Ipods stop selling they'll sue Sansa too and so on.


Its not a matter if those customers would have bought Tivo boxes, its a matter that those customers likely would have been using a box that would either be a tivo, or be running some part of tivo software and therefore tivo would have been getting money for that box (anyone that would have gone to Directv would have been putting money in tivos pockets, regardless of what box they where using.)

Tivos business model does work.. Its hard to get off the ground, but it does, other wise they wouldn't exsit today, they use the same model as many, many other companies in the world, like sony, Microsoft, and any other one you can think of. They may use additional models as well, but they almost all have at least one aspect of business that is designed on creating a way of doing something and then licensing it to everyone and their mother.. Sony Blu Ray is the latest big one.. DVD is another.....

Your opinion that their service is way over priced is inaccurate. A service is not overpriced if its selling enough to make money. Simple economics, and Tivo is making money right now,so I think that says a lot.

Not that many people rip of a patented idea so blatantly... If at all. They may see a final product and create something that will give they same result, but the point of patents is to make anyone who uses a process to get that result pay you or credit you for your work, or they can't use it.

Dish knowingly created something by using someone else's work and didn't pay them.. that's the definition of a rip off...

No one else is using the processes that Apple has patented to make the ipod work, so its not the same thing.. Thats called competition...


----------



## inkahauts

Ohioankev said:


> How can the VIP receivers be affecting TiVo ? The reason I ask is because I subscribe to HD and the three units they are selling on TiVo only one supports DBS systems but that unit itself does not support HD.
> 
> TiVo Series2™ DT DVR
> * Save up to 80 hours of shows at one time
> * Record 2 shows at once*
> * * Works with cable (with or without cable box); or satellite (with box)*
> * Does NOT support high definition TV*
> 
> TiVo HD DVR
> * Save up to 20 hours of HD programming (or 180 hours of standard definition) at one time
> * Record two shows at once**
> * * Works with cable and antenna; does NOT support satellite*
> * Use CableCARD decoders from your cable company to replace your cable box
> * Supports high definition TV
> 
> TiVo HD XL DVR ( I would buy this unit if it supported a dish receiver, sounds nice)
> * Save up to 150 hours of HD programming at a time***
> * The largest capacity DVR available in the country
> * THX® certified for premium audio and video quality
> * Record two shows at once**
> * Includes the premium programmable backlit remote control
> * * Works with cable and antenna; does NOT support satellite*
> * Use CableCARD decoders from your cable company to replace your cable box
> ** Supports high definition TV*
> 
> Whats the hypocrisy in that ? You can claim DISH stole someones patent, but the HD units do not support DBS service.. so what TiVo is going to license TiVo so Echostar can manufacture the TiVo branded receivers at their cost ?


Ah, there is no hypocrisy... The people that have Dish DVR's now would either be with a different company (if they didn't sell dvrs at all) that may be using tivo software or patents that where properly licensed (that would put money in Tivos pocket), or more importantly, if Dish hadn't stolen Tivos IP but rather licensed it like they should have, a lot of money would have been rolling into Tivos pockets all along.. What physical products Tivo makes today has nothing to do with it.


----------



## Curtis52

inkahauts said:


> The original injunction did not say anywhere that if Dish thought they had found a work around they could implement it on their own and decide on their own that they where no longer infringing. Just because he said it the second time doesn't imply he meant the opposite the first time, and that argument would never hold water in court. Its obvious he put that in because Dish seems to think they are always right and that the Judge is always wrong, and they can do whatever they want.


So, the new injunction allows a workaround but the old injunction didn't? As a reward for Dish's recent performance? I'm not buying it.

The injunction was mute on the subject of workarounds. Case law says that if a workaround is successful then there is no contempt. If the workaround was successful then a different device would have been created that wouldn't have been under the injunction.

Here is what the appeals court had to say in the precedential KSM case:


> "An enjoined party is entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device although he bears the risk that the enjoining court may find changes to be too insubstantial to avoid contempt."


This is in direct conflict with what Judge Folsom said in his recent ruling:


> "Even if EchoStar had achieved a non-infringing design-around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction.


The judge screwed up.


----------



## scooper

Curtis52 said:


> So, the new injunction allows a workaround but the old injunction didn't? As a reward for Dish's recent performance? I'm not buying it.
> 
> The injunction was mute on the subject of workarounds. Case law says that if a workaround is successful then there is no contempt. If the workaround was successful then a different device would have been created that wouldn't have been under the injunction.
> 
> Here is what the appeals court had to say in the precedential KSM case:
> 
> This is in direct conflict with what Judge Folsom said in his recent ruling:
> 
> The judge screwed up.


Yes - IF this had been the 3rd or 4th attempt by Dish to work around (and failed), Then Judge Folsom would have been right to require court approval. 
On the first ?!?!

And if he was going to go contempt on the face - then WHY go through all that on the new Echostar software ? Judical economy indeed!


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## dgordo

I don't think it matters, because my reading of the case is that he didn't rule contempt on the face, although he claims he would have if necessary. He ruled contempt based upon failure to create a device that is more than colorably different and then says, oh by the way, even if it were colorably different I still would have ruled contempt on the face.


----------



## WebTraveler

patrickmunn said:


> Maybe the reason TIVO doesn't support DBS is because DISH wouldn't grant a license to TIVO to allow their box to work with the DISH satellite network? Doesn't DISH basically have a monopoly when i comes to the equipment that you can use to receive their programing?


This is exactly right. TIVO needs the providers just the same as the providers need TIVO. How would Dish feel if TIVO came out with their own Dish model and users could just hook up and use it w/o Dish's permission? Think of a situation where a customer was able to avoid the additional receiver equipment fees by getting a third party unit.....same issue, isn't it?


----------



## James Long

dgordo said:


> I don't think it matters, because my reading of the case is that he didn't rule contempt on the face, although he claims he would have if necessary. He ruled contempt based upon failure to create a device that is more than colorably different and then says, oh by the way, even if it were colorably different I still would have ruled contempt on the face.


I would have loved to see a "contempt on the face" decision on a product that no longer infringed. It would be good to see Judge Folsom's language tested directly.


----------



## Curtis52

dgordo said:


> I don't think it matters, because my reading of the case is that he didn't rule contempt on the face, although he claims he would have if necessary. He ruled contempt based upon failure to create a device that is more than colorably different and then says, oh by the way, even if it were colorably different I still would have ruled contempt on the face.


Maybe you didn't see this:



> "Accordingly, this Court finds by clear and convincing evidence that a court order, which required certain conduct by EchoStar, was in effect as of April 18, 2008, and that EchoStar failed to comply with that order. Therefore, this Court finds EchoStar in contempt of this Court's permanent injunction. Specifically, EchoStar is in contempt of the Disablement Provision, which ordered EchoStar to "disable the DVR functionality (i.e. disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber."


----------



## dgordo

Curtis52 said:


> Maybe you didn't see this:


I did but I read at as folsom saying that dish violated the disablement provision by failure to create a more than colorably different device based upon his "would" statement.


----------



## Greg Bimson

As I said before, Judge Folsom would easily find contempt "on the face" of the injunction. However, if the devices were more than colorably different, that still has no bearing on the disable clause of the injunction order. They should be turned off until it is proven they no longer infringe.


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## benjamin franklin

dgordo said:


> I did but I read at as folsom saying that dish violated the disablement provision by failure to create a more than colorably different device based upon his "would" statement.


Folsom made two specific rulings regarding contempt, there is no "would have":



> Accordingly, this Court finds EchoStar in contempt of this Court's permanent injunction. Specifically, EchoStar is in contempt of the Infringement Provision of this Court's order, which enjoined EchoStar from "making, using, offering to sell, selling or importing in the United States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims."


and:



> Accordingly, this Court finds by clear and convincing evidence that a court order, which required certain conduct by EchoStar, was in effect as of April 18, 2008, and that EchoStar failed to comply with that order. Therefore, this Court finds EchoStar in contempt of this Court's permanent injunction. Specifically, EchoStar is in contempt of the Disablement Provision, which ordered EchoStar to "disable the DVR functionality (i.e. disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber."


This is conventional belts and suspenders reasoning, if one fails the other still holds. Not uncommon in legal briefs and judgment decisions. Folsom ran this entire protracted exercise (rather than issuing a quick decision last fall) so that he could cover all his bases.


----------



## grog

The more I read on this event the more I think that Dish should buy TiVo.

Once they obtain all the rights to TiVo then dump the TiVo product line like a bad habit.


----------



## benjamin franklin

James Long said:


> I would have loved to see a "contempt on the face" decision on a product that no longer infringed. It would be good to see Judge Folsom's language tested directly.


Honestly that's the only fun part left here. Can a district court enforce an injunction that purports to enjoin a party from infringing a patent with a work-around under its existing terms or not? It would seem to discourage parties from inventing around patents, which is against public policy.


----------



## FogCutter

I heard that Direct might buy TiVo to use as a club against Dish. 
TiVo is pretty small, easy to squash through purchase if the courts keep
holding them up. The company is a Zombie -- no real franchise left.
Too bad, they have a great product.


----------



## Greg Bimson

benjamin franklin said:


> Can a district court enforce an injunction that purports to enjoin a party from infringing a patent with a work-around under its existing terms or not? It would seem to discourage parties from inventing around patents, which is against public policy.


That is the same mistake that has been carried forward through this entire argument:

1) DISH/SATS is allowed to work-around the patent (until this latest ruling).

2) There were three orders in the final judgment and injunction order:
a) damages
b) prohibited from further infringement of the same devices and those merely colorably different
c) almost four million receivers in the hands of the end user must be disabled.

Just because the software was changed does not alter the fact that four million receivers in the hands of the end user must be disabled.

If DISH/SATS didn't like the order to disable, they should have challenged it at the Court of Appeals.


----------



## dgordo

Greg Bimson said:


> As I said before, Judge Folsom would easily find contempt "on the face" of the injunction. However, if the devices were more than colorably different, that still has no bearing on the disable clause of the injunction order. They should be turned off until it is proven they no longer infringe.


The problem is, I am sure that Judge Folsom knows that he doesn't have the authority to prohibit a legitimate attempt at a work around.


----------



## Curtis52

dgordo said:


> I did but I read at as folsom saying that dish violated the disablement provision by failure to create a more than colorably different device based upon his "would" statement.


I see your point now. The whole thing is pretty nuanced and I'm hoping one of Larry the Cable Guy's relatives doesn't sit on the CAFC.


----------



## phrelin

Curtis52 said:


> The whole thing is pretty nuanced....


I have read and reread Folsom's 35 page Memorandum. As a legal document supporting a decision, it is nuanced and careful. It is a _legal document_ without many wasted words. It is not a technology document. For instance, these are not engineering issues of fact being argued, these are legal statements of fact:


> While most of those challenges concerned the Hardware Claims, EchoStar did challenge this Court's interpretation of one term-"object"-within the Software Claims. Id. at 1306-07. Although the Federal Circuit reversed this Court's construction of certain terms within the Hardware claims (id. at 1304-05), it affirmed this Court's construction of "object" in the Software claims. Id. at 1306-07. EchoStar did not challenge the construction of any other term within the Software Claims. Id. In addition, the Circuit found that there was sufficient evidence to support the jury's finding of infringement regarding the Software Claims. Id.





> EchoStar contends that the move to an "indexless" or "brute-force" system means that its DVR software no longer satisfies the "parses" limitation of the '389 Patent's Software Claims. Dkt No. 910 at 197:25-198:15; Dkt. No. 912 at 168:6-169.18; Dkt. No. 919 at 53-55, 92-119. Claim 31 of the '389 Patent claims a "process for the simultaneous storage and play back of multimedia data," which is further comprised of numerous steps.5 '389 Patent at 14:52-53. The first such step requires "providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data[.]" Id. at 14:54-57 (emphasis added).
> 
> TiVo argues that this limitation is still satisfied by EchoStar's modified 50X Products because those products still analyze the broadcast signal. During claim construction, this Court construed the term "parses" in all claims to mean "analyzes," and therefore defined "parses video and audio data from said broadcast data" in claims 31 and 61 as "analyzes video and audio data from the broadcast data." Dkt. No. 185 at 22. On appeal, EchoStar did not challenge this Court's construction of the term "parses." See TiVo, 516 F.3d at 1295-1307. Since parsing is defined as analyzing rather than indexing, TiVo contends that EchoStar's modified receivers still satisfy the limitation even though they may no longer index the incoming signal. Dkt. No. 920 at 36-41; Dkt. No. 910 at 66:9-67:19. Specifically, TiVo contends that the limitation is still met by PID filtering, which involves analyzing the incoming data stream and selecting the appropriate packets of data associated with a program or channel selected by the viewer. Id.


The point here is that how the court defines "object" and "parses" may drive engineers nuts. But these are the definitions in this case because Echostar failed to get those terms defined to its advantage. It doesn't matter if this is correct from a technology standpoint.

Hence my statement that this 35 page Memorandum is a legal document that has virtually no engineering standing and it doesn't matter that it has no engineering standing because engineers no longer have standing in this case. The expert testimony is in, the definitions have been made, and the decision has been rendered. Take off your engineering caps, put on a 3-piece-suit and tie and read this thing as a legal document.

As far as the listed devices go, Judge Folsom does have the authority to prohibit a legitimate attempt at a new work around without his supervision. And if Echostar tries outside his supervision, they will be looking at a panel of very angry appellate judges. You just don't do these things because you think you are right once the courts have taken jurisdiction over your products. At a certain point when defiance is clearly and obviously present, one can end up in jail even in a proceeding like this one.


----------



## James Long

phrelin said:


> As far as the listed devices go, Judge Folsom does have the authority to prohibit a legitimate attempt at a new work around without his supervision.


I believe Judge Folsom has jumped the gun with this one. The precedent case is one where multiple attempts at a work around failed. The defendant made changes that were not good enough and were challenged several times before the judge decided that they must seek approval before making additional attempts.

In this case DISH has made ONE attempt at a workaround. If this part of the ruling is allowed to stand it changes precedent. Future infringers could be prohibited from modifying products to be non infringing without court permission.

How is that fair? We've waited more than a year for a verdict on DISH's work around. Why should a company be prohibited from providing a non-infringing product for more than a year while the court gets around to deciding that it doesn't infringe? Such a policy interferes with the free flow of commerce. (I realize that DISH's attempt was ruled infringing, but if their attempt was non infringing and they had to follow this new rule they would be unfairly prohibited from providing non-infringing products.)


----------



## vankai

James Long said:


> Future infringers could be prohibited from modifying products to be non infringing without court permission.
> 
> How is that fair? We've waited more than a year for a verdict on DISH's work around. Why should a company be prohibited from providing a non-infringing product for more than a year while the court gets around to deciding that it doesn't infringe?


DISH, and future infringers, could be allowed to modify a product with a work around, pending the courts permission.

It sounds like Judge Folsom wants to know before the fact, instead of after.


----------



## scooper

James Long said:


> I believe Judge Folsom has jumped the gun with this one. The precedent case is one where multiple attempts at a work around failed. The defendant made changes that were not good enough and were challenged several times before the judge decided that they must seek approval before making additional attempts.
> 
> In this case DISH has made ONE attempt at a workaround. If this part of the ruling is allowed to stand it changes precedent. Future infringers could be prohibited from modifying products to be non infringing without court permission.
> 
> How is that fair? We've waited more than a year for a verdict on DISH's work around. Why should a company be prohibited from providing a non-infringing product for more than a year while the court gets around to deciding that it doesn't infringe? Such a policy interferes with the free flow of commerce. (I realize that DISH's attempt was ruled infringing, but if their attempt was non infringing and they had to follow this new rule they would be unfairly prohibited from providing non-infringing products.)


PRECISELY !!

If judges are going to prohibit workarounds - they better plan on dropping EVERYTHING and run consideration for these workarounds to the top of their dockets - no exceptions !

Prohibition on ONE failed attempt - that's a little much. Prohibition after 3 or 4 failed attempts - one can see the judge's point. Especially if they were frivilous attempts. This part of Judge Folsom's ruling SHOULD be overturned (if there is any sense in the court system - which I've always had doubts about).

And phrelin - the whole point of patents is the advancement of technology. I'd rather trust engineers over lawyers if two products are the same or not. Language CAN be manipulated - that's what lawyers do best.


----------



## Ken_F

James Long said:


> I believe Judge Folsom has jumped the gun with this one. The precedent case is one where multiple attempts at a work around failed. The defendant made changes that were not good enough and were challenged several times before the judge decided that they must seek approval before making additional attempts.
> 
> In this case DISH has made ONE attempt at a workaround. If this part of the ruling is allowed to stand it changes precedent. Future infringers could be prohibited from modifying products to be non infringing without court permission.


I think Judge Folsom looked at total time rather than a specific number of attempts.

In a 12-18 month period, Echostar was only able to create one workaround for Court consideration, not three or four. Precedent does not allow companies to attempt multiple workarounds, with a one-year delay between each attempt.

I think Judge Folsom mentioned the $700,000 spent on the workaround -- as compared to $50 million spent on "better than TiVo" advertising -- to show how serious Dish Network was with regard to a workaround. The Court also noted Charlie Ergin's previous comment that a full workaround would cost tens of millions of dollars. In that context, $700,000 sounds like more of a delay tactic than a legitimate attempt to avoid infringement.


----------



## phrelin

I don't understand why this is so difficult to understand. _*Theoretically*_, once the jury decided that the "devices" were unlawful, Judge Folsom could have confiscated them. Starting from there we wouldn't be having this discussion.

_The listed devices_ are under the jurisdiction of the court. _With regard to those devices_, Echostar/Dish is under the jurisdiction of the court. My 508's have a new label on them - do not remove this label without the permission of the court. What's so complicated about that. A "workaround" is an attempt to remove the label.

Can Echostar/Dish assign engineers to design a new software system to process and record its signals on a computer? Sure. Can it use the software on the listed boxes? If the software is developed without the permission of the court, no.

What's so hard to understand? It's a pattern. Dish subscribers can buy distant signals only through AllAmericaDirect. Dish cannot deliver distant signals while DirecTV lawfuly can. Why? Because Dish did so without conforming to the rules. Charlie and company flout the law, abuse the court system with contractual lawsuits, etc. It's a pattern. Judge Folsom has said something simple and accurate: "I don't trust you. My opinion is the only one that counts here."


----------



## scooper

phrelin said:


> Can Echostar/Dish assign engineers to design a new software system to process and record its signals on a computer? Sure. Can it use the software on the listed boxes? If the software is developed without the permission of the court, no.


Let's split hairs here - You can DEVELOP the software , but you cannot DEPLOY it without the court permission. Otherwise - how are you going to know if it works ?



phrelin said:


> What's so hard to understand? It's a pattern. Dish subscribers can buy distant signals only through AllAmericaDirect. Dish cannot deliver distant signals while DirecTV lawfuly can. Why? Because Dish did so without conforming to the rules. Charlie and company flout the law, abuse the court system with contractual lawsuits, etc. It's a pattern. Judge Folsom has said something simple and accurate: "I don't trust you. My opinion is the only one that counts here."


Do you REALLY, HONESTLY, believe that will change anything ? Because I don't.


----------



## phrelin

scooper said:


> Let's split hairs here - You can DEVELOP the software , but you cannot DEPLOY it without the court permission. Otherwise - how are you going to know if it works ?


The court want's prior notice before development, not immediately before (or after) deployment.



> Do you REALLY, HONESTLY, believe that will change anything ? Because I don't.


No.


----------



## James Long

Ken_F said:


> In a 12-18 month period, Echostar was only able to create one workaround for Court consideration, not three or four.


DISH only presented one workaround attempt. They believed it worked and had expert opinion stating that it was a valid work around. Why would a company develop further workarounds if they believed they had a solution? To undermine their own assertions that the first version worked around the problem?

It is not DISH's fault that the court took so stinking long to rule on the issue.



phrelin said:


> It's a pattern. Dish subscribers can buy distant signals only through AllAmericaDirect. Dish cannot deliver distant signals while DirecTV lawfuly can. Why? Because Dish did so without conforming to the rules.


In the distants case there is a SPECIFIC part of federal law that gives the penalty for not following the rules for offering distant network signals. A "death penalty" so to speak that cannot be reversed unless congress changes the law.

There is no "death penalty" in this patent case. There is no federal law that prohibits DISH from ever offering DVR service just because a previous attempt at offering the service was found to infringe.

That is the big difference between the distants case and this patent case.


----------



## phrelin

James Long said:


> DISH only presented one workaround attempt. They believed it worked and had expert opinion stating that it was a valid work around. Why would a company develop further workarounds if they believed they had a solution? To undermine their own assertions that the first version worked around the problem?
> 
> It is not DISH's fault that the court took so stinking long to rule on the issue.
> 
> In the distants case there is a SPECIFIC part of federal law that gives the penalty for not following the rules for offering distant network signals. A "death penalty" so to speak that cannot be reversed unless congress changes the law.
> 
> There is no "death penalty" in this patent case. There is no federal law that prohibits DISH from ever offering DVR service just because a previous attempt at offering the service was found to infringe.
> 
> That is the big difference between the distants case and this patent case.


Turning off the DVR function on the listed boxes is hardly a corporate death penalty. The boxes can function as a receiver and Dish can offer 612's and 722k's as a substitute.

Do you not see the corporate behavior of Echostar/Dish as a pattern of pushing beyond the edge of lawful? I don't mean "criminal" but abusive of the legal system and rules that apply to it as a corporation. IMHO if Echostar/Dish were a child, someone would say it was not properly socialized.

And keep in mind that I am a long term customer who has no plans to change. It just bothers me.


----------



## scooper

phrelin said:


> Turning off the DVR function on the listed boxes is hardly a corporate death penalty. The boxes can function as a receiver and Dish can offer 612's and 722k's as a substitute.
> 
> Do you not see the corporate behavior of Echostar/Dish as a pattern of pushing beyond the edge of lawful? I don't mean "criminal" but abusive of the legal system and rules that apply to it as a corporation. IMHO if Echostar/Dish were a child, someone would say it was not properly socialized.
> 
> And keep in mind that I am a long term customer who has no plans to change. It just bothers me.


No - I see Dish as not willing to be pushed around by other parties - i.e. THEY control their destiny, not other parties. They stand up for themselves, instead of just "going along with the crowd". Dish will do business with you, but you better know exactly what is in your contract with them, and don't try to pull any fast ones on them.

And as far as beyond the edge - no - but they do push the limits up to it.


----------



## phrelin

scooper said:


> No - I see Dish as not willing to be pushed around by other parties - i.e. THEY control their destiny, not other parties. They stand up for themselves, instead of just "going along with the crowd". Dish will do business with you, but you better know exactly what is in your contract with them, and don't try to pull any fast ones on them.
> 
> And as far as beyond the edge - no - but they do push the limits up to it.


I have no problem with Echostar/Dish pushing back when others crowd them. But the distants' decision and the TiVo decision tell me they push beyond the limits.

There just seems to be a lot of fights involving Echostar/Dish in their playground. Maybe DirecTV and Comcast get into a lot of fights also which would indicate that's the way games are played in their playground. There is an interesting lawsuit against Comcast regarding cable boxes which has ramifications for all of them.


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## audiomaster

So would that also apply to DBS receivers rented or leased when they are the only ones that will properly receive the DBS encrypted signals?


----------



## deaincaelo

CuriousMark said:


> ....it can be designed around, it just isn't as easy as they thought it would be.


Okay, i'll bite- how?

And i mean how do you make a technically functioning television recording device without violating claim 31/61? I'm certain echostar/dish would like to know.


----------



## SayWhat?

WebTraveler said:


> This is exactly right. TIVO needs the providers just the same as the providers need TIVO. How would Dish feel if TIVO came out with their own Dish model and users could just hook up and use it w/o Dish's permission? Think of a situation where a customer was able to avoid the additional receiver equipment fees by getting a third party unit.....same issue, isn't it?


That's the way it should be. I don't believe in monopolies. I SHOULD be able to acquire a receiver from another source to receive Sat TV signals even if I have to pay Dish for a second receiver access fee. I SHOULD be able to acquire a device to record and store programming on a hard drive from a source other than TiVO.

Can you imagine Ford saying I could only get gasoline from an Amoco station because they invented the engine and negotiated an agreement with Amoco to be the sole provider?


----------



## david_jr

deaincaelo said:


> Okay, i'll bite- how?
> 
> And i mean how do you make a technically functioning television recording device without violating claim 31/61? I'm certain echostar/dish would like to know.


So what you are saying is that the court has given Tivo a monopoly on DVR technology?



SayWhat? said:


> That's the way it should be. I don't believe in monopolies. I SHOULD be able to acquire a receiver from another source to receive Sat TV signals even if I have to pay Dish for a second receiver access fee. I SHOULD be able to acquire a device to record and store programming on a hard drive from a source other than TiVO.
> 
> Can you imagine Ford saying I could only get gasoline from an Amoco station because they invented the engine and negotiated an agreement with Amoco to be the sole provider?


You can get sat tv elsewhere. You can get it from Direct.


----------



## SayWhat?

Direct TV receivers won't work as additional boxes on a Dish account.


----------



## audiomaster

An analogy. Suppose a OTA tv station said "We are selling digital TVs now and only they can decode our signal. You have to buy ours to get our signal. Would the FCC license such a station? Particularly if there were only one other TV station transmitting OTA signals?

Even the cable company doesn't do this except for newer digital systems. But they will as soon as they can, and you usually have only one cable company choice just like you have one power company choice. Does this make them monopolies?

I would like to see the Supreme Ct address this in detail. But they usually only rule in a limited way on the matter at hand.


----------



## audiomaster

Could Dish deactivate the HD in a 622 or similar box and still have it work? Could they do it remotely? Doesn't it contain the operating system and menu information? Isn't this why it can't come on almost immediately after a power outage? And isn't the received signal constantly buffered through the HD?

And if they did this, wouldn't they have to first show Folsom what they were proposing to do in the software and get approval that this would meet the court's requirements before they did it?


----------



## scooper

Dish / Echostar has said in court that they can disable the DVR functions without disabling the receiver part.


----------



## Herdfan

phrelin said:


> There is an interesting lawsuit against Comcast regarding cable boxes which has ramifications for all of them.


Interesting. I went to college with him.

As for the judge's ability to assert his power over what E* does with regards to software updates/work arounds to existing boxes, he certainly has the power. As opposed to a normal patent infringement case, and this was beat to death in the other thread, this case is unique in that the adjudicated devices are still somewhat in control of the infringer. They are not a widget that once sold and in service are out of control of the infringer.

As for E* thinking they had it fixed, they also thought they did not infringe in the first place and they thought they were correct in the distants case. So what they think and reality have yet to meet. Charlie is playing with fire here and he keeps getting closer and closer to getting burned and burned badly.

He needs to settle for a couple of reasons. 1) The hardware claim is still out there. TiVo may lose going forward, but they can start over with with the hardware claim, and 2) if TiVo wins, then they can start going after newer DVR's and for all we know, they infringe as well.


----------



## Jason Nipp

audiomaster said:


> Could Dish deactivate the HD in a 622 or similar box and still have it work? Could they do it remotely?


Yes... and Yes.


----------



## scooper

Herdfan said:


> Interesting. I went to college with him.
> 
> As for the judge's ability to assert his power over what E* does with regards to software updates/work arounds to existing boxes, he certainly has the power. As opposed to a normal patent infringement case, and this was beat to death in the other thread, this case is unique in that the adjudicated devices are still somewhat in control of the infringer. They are not a widget that once sold and in service are out of control of the infringer.
> 
> As for E* thinking they had it fixed, they also thought they did not infringe in the first place and they thought they were correct in the distants case. So what they think and reality have yet to meet. Charlie is playing with fire here and he keeps getting closer and closer to getting burned and burned badly.
> 
> He needs to settle for a couple of reasons. 1) The hardware claim is still out there. TiVo may lose going forward, but they can start over with with the hardware claim, and 2) if TiVo wins, then they can start going after newer DVR's and for all we know, they infringe as well.


I would agree that Dish/Echostar should go ahead and settle for now, with an out clause if they can successfully develop an approved workaround and get it deployed.


----------



## patrickmunn

Why in the world would TIVO agree to an "out" clause? Think about it?

I can't believe that people are upset that the government is giving a "monopoly" to TIVO when it come to the DVR. After all, that's what the patent system is there for. It allows for a small inventor (TIVO) to come up with something and not be bullied and robbed of their technology by a large company (DISH). This is how it's supposed to work. The government should be on the side of the small inventor and the patent system should be there to protect them.


----------



## Greg Bimson

Greg Bimson said:


> As I said before, Judge Folsom would easily find contempt "on the face" of the injunction. However, if the devices were more than colorably different, that still has no bearing on the disable clause of the injunction order. They should be turned off until it is proven they no longer infringe.





dgordo said:


> The problem is, I am sure that Judge Folsom knows that he doesn't have the authority to prohibit a legitimate attempt at a work around.


Again, confusion surrounding the two issues:

1) Receivers found infringing and subject to a disable order are to be disabled once the injunction is in full force and effect

2) If a workaround is plausible to make said receivers non-infringing, then it is up to the Defendant (DISH/SATS) to ask the court for clarification and to amend the injunction to allow the disabled receivers to have their features re-enabled.

3) DISH/SATS can create workarounds for new receivers they have not sold, which aren't subject to the disable clause. That has always been the case.

It was the receiver that was ordered disabled by the injunction. That was Judge Folsom's order. Workarounds do not apply without express consent by Judge Folsom, as there wasn't any language in the injunction to allow DISH/SATS to do anything other than disable the receivers found infringing.


----------



## phrelin

In the June edition of The Bridge published by MediaBiz there is an article "Eviscerating Elvis: DISH Hits Hard Times"  which ends with the following paragraph:


> In addition, Ergen's litigious nature plus his reputation for sharp-elbow business dealings have lead other companies to regard his overtures warily. In fact, one prized property, the Sling technology which lets users transfer their programming among devices, has received a cool reception among multiplatform players.


 If Charlie were winning the important legal battles, it might be worth having this reputation. But he's not and the reputation makes it tough to find marketing partners.


----------



## James Long

phrelin said:


> Turning off the DVR function on the listed boxes is hardly a corporate death penalty. The boxes can function as a receiver and Dish can offer 612's and 722k's as a substitute.


The point is why should the listed boxes be forever banned from use as DVRs? If they can function as DVRs without infringment they should not be killed forever.



audiomaster said:


> Could Dish deactivate the HD in a 622 or similar box and still have it work? Could they do it remotely?


Fortunately it is irrelevant in the ViP models ... only the older DVRs are subject to the injunction.


----------



## phrelin

James Long said:


> The point is why should the listed boxes be forever banned from use as DVRs? If they can function as DVRs without infringment they should not be killed forever.


The answer is simple. Dish could rapidly switch out all transponders for MPEG4 signals leaving lots of room for PBS HD.

Yeah, I know....


----------



## Tom Robertson

James Long said:


> The point is why should the listed boxes be forever banned from use as DVRs? If they can function as DVRs without infringment they should not be killed forever.


Absolutely. If Dish can satisfy the courts with a new method of making a DVR, they shouldn't be killed forever. Or even at all if they can get it in place before the stay is removed.


James Long said:


> Fortunately it is irrelevant in the ViP models ... only the older DVRs are subject to the injunction.


On the other hand... if the ViP model code or techniques don't persuade the judge for the older models, I fully expect TiVo will go after these too. And that could really hurt.

But I should think a settle would come first.

Cheers,
Tom


----------



## Herdfan

Tom Robertson said:


> On the other hand... if the ViP model code or techniques don't persuade the judge for the older models, I fully expect TiVo will go after these too.


Where has it been proven that these models don't infringe either? I know DISH says they don't, but they said their original ones didn't and how did that turn out for them?

Bottom line is they can not be trusted with providing the court with truthful answers and information.


----------



## Tom Robertson

Herdfan said:


> Where has it been proven that these models don't infringe either? I know DISH says they don't, but they said their original ones didn't and how did that turn out for them?
> 
> Bottom line is they can not be trusted with providing the court with truthful answers and information.


I don't it has been proven yet. I'm sorta surprised that the case hasn't been expanded to include the newer models, but perhaps that is best done after the first case is completed?

Cheers,
Tom


----------



## Greg Bimson

James Long said:


> The point is why should the listed boxes be forever banned from use as DVRs? If they can function as DVRs without infringment they should not be killed forever.


Oh, DISH/SATS can invent a workaround, which would no longer infringe?

Would DISH/SATS need relief from the courts regarding a receiver subject to a disable order, which could have functionality turned on and no longer infringe?

If DISH/SATS could conceivably create a design-around on receivers subject to a disable order from the court, maybe DISH/SATS should somehow get the injunctive order lifted so that those receivers can have functionality?

I am thinking that legal process matters in here somewhere, not just what DISH/SATS says. Arguments in a court of law normally aren't one-sided.


----------



## dgordo

Greg Bimson said:


> Again, confusion surrounding the two issues:
> 
> 1) Receivers found infringing and subject to a disable order are to be disabled once the injunction is in full force and effect
> 
> 2) If a workaround is plausible to make said receivers non-infringing, then it is up to the Defendant (DISH/SATS) to ask the court for clarification and to amend the injunction to allow the disabled receivers to have their features re-enabled.
> 
> 3) DISH/SATS can create workarounds for new receivers they have not sold, which aren't subject to the disable clause. That has always been the case.
> 
> It was the receiver that was ordered disabled by the injunction. That was Judge Folsom's order. Workarounds do not apply without express consent by Judge Folsom, as there wasn't any language in the injunction to allow DISH/SATS to do anything other than disable the receivers found infringing.


I believe that dish didn't ask for the injunction to be changed because by the time the case went before the CAFC they already had new software that they claim they believed no longer infringed and they could not be forced to disable a device that didnt infringe. If the software no longer infringed they could not be forced to disable the dvr capabilities. They gambled and lost.


----------



## Greg Bimson

dgordo said:


> I believe that dish didn't ask for the injunction to be changed because by the time the case went before the CAFC they already had new software that they claim they believed no longer infringed and they could not be forced to disable a device that didnt infringe.


Well...


dgordo said:


> They gambled and lost.


More like they put the cart before the horse. It wasn't up to DISH/SATS to determine the applicability of the injunction order; it was up to DISH/SATS to follow the order and disable the devices.


dgordo said:


> If the software no longer infringed they could not be forced to disable the dvr capabilities.


It is Judge Folsom's belief that the injunction, which demanded a single action, must be followed. If there is a change in status, the court must be informed, but again, the injunction must be followed.

Judge Folsom believes that just because a defendant can place new software on a device does not negate the order to disable. The only question regarding infringement involves violation of devices not adjudged as infringements.


----------



## dgordo

Greg Bimson said:


> Well...More like they put the cart before the horse. It wasn't up to DISH/SATS to determine the applicability of the injunction order; it was up to DISH/SATS to follow the order and disable the devices.It is Judge Folsom's belief that the injunction, which demanded a single action, must be followed. If there is a change in status, the court must be informed, but again, the injunction must be followed.
> 
> Judge Folsom believes that just because a defendant can place new software on a device does not negate the order to disable. The only question regarding infringement involves violation of devices not adjudged as infringements.


I have no doubt that Judge Folsom believes that just because a defendant can place new software on a device does not negate the order to disable. I'm just not as sure as him that he is correct.


----------



## jadebox

patrickmunn said:


> I can't believe that people are upset that the government is giving a "monopoly" to TIVO when it come to the DVR. After all, that's what the patent system is there for. It allows for a small inventor (TIVO) to come up with something and not be bullied and robbed of their technology by a large company (DISH). This is how it's supposed to work. The government should be on the side of the small inventor and the patent system should be there to protect them.


The patent system was certainly *not *designed to give a monopoly to anyone (http://www.earlyamerica.com/review/winter2000/jefferson.html). It was expressly designed to encourage sharing of inventions and to foster innovations based on those inventions.

The problem is that patents are sometimes issued for things that are obvious, intuitive, or covered by prior art. This encourages litigation instead of innovation.

-- Roger


----------



## ziggy29

Tom Robertson said:


> But I should think a settle would come first.


I'm not sure Charlie's ego would allow it.


----------



## patrickmunn

JADEBOX,

The USPTO website defines a patent as:

“the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.

Sound like a monopoly to me. 

Why do you say that patents encourage litigation instead of innovation? It's not like TIVO doesn't have a product. They were the ones who innovated the DVR and they protected their invention with a patent It's not like they got a patent and then waited until somebody came to market with a product only to sue (RIM vs NTP). If DISH feels like they can "improve" upon TIVO's invention, then more power to them, just get a license for the underlying invention. It doesn't sound like TIVO was unwilling to grant a license, it sounds like DISH was unwilling to pay for one.


----------



## scooper

GIve me a break - there is so much controversy over the DVR concept that Tivo is NOT the only game in town - do some reading on RePLay and their patents and disagreements with Tivo.


----------



## patrickmunn

Hmmm, then maybe DISH should have bought ReplayTV instead of DirecTV. Might have given DISH some sort of defense against TIVO's lawsuit. Does DISH even have any patents concerning DVR technologies?


----------



## scooper

patrickmunn said:


> Hmmm, then maybe DISH should have bought ReplayTV instead of DirecTV. Might have given DISH some sort of defense against TIVO's lawsuit. Does DISH even have any patents concerning DVR technologies?


They have an application in at the Patent Office. I think their method is sound, even if the accused DVRs still have some of the Tivo patent in them.


----------



## Greg Bimson

patrickmunn said:


> Hmmm, then maybe DISH should have bought ReplayTV instead of DirecTV. Might have given DISH some sort of defense against TIVO's lawsuit. Does DISH even have any patents concerning DVR technologies?


I believe that DISH/SATS does have some patents, as DISH filed suit against TiVo during the April 2006 trial. However, that case seems to be on hold _ad infinitum_. Something may be wrong with the DISH/SATS patent.

I also know DISH/SATS bought some DVR patents from IBM.


scooper said:


> [DISH/SATS] have an application in at the Patent Office. I think their method is sound, even if the accused DVRs still have some of the Tivo patent in them.


But the current implementation, which is based upon the patent application, still infringes upon two claims of TiVo's patent.

It would be hilarious if the PTO validates and approves DISH/SATS patent while those same receivers continue to infringe the Time Warp patent.


----------



## deaincaelo

Greg Bimson said:


> It would be hilarious if the PTO validates and approves DISH/SATS patent while those same receivers continue to infringe the Time Warp patent.


I agree.

Since they're declared no more than colorably different, if that somehow held up would that mean Tivo couldn't operate either without cross-licencing?


----------



## deaincaelo

david_jr said:


> So what you are saying is that the court has given Tivo a monopoly on DVR technology?


Yes, I think that Tivo has an monopoly on digital video recorders and the process of digital video recording. My problem with this is that tivo didn't invent the digital video recorder, so they should only be able to patant things that came after, such as the broadcom chip. Since they own it, and didn't invent it, i think they converted it.

whops, the claim doesn't say anything about digital. let me fix that.

Yes, I think that Tivo has a monopoly on video recorders and the process of video recording. My problem with this is that tivo didn't invent the video recorder.


----------



## WebTraveler

SayWhat? said:


> That's the way it should be. I don't believe in monopolies. I SHOULD be able to acquire a receiver from another source to receive Sat TV signals even if I have to pay Dish for a second receiver access fee. I SHOULD be able to acquire a device to record and store programming on a hard drive from a source other than TiVO.


I don't think so. If that were the case everyone would be ripping off everyone's investment and there would be no incentive to develop and bring something to market. I believe the law provides a 20 year period for patents. Once that time expires others are able to use it.

Think of a situation where you spend years and lots of cash to develop something - and then once you do people come in and poach off of you.

It's similar to a musician recording a song and someone burning CDs and selling them (although this is a copyright violation, the issues are similar, someone is ripping off someone else that invested money and sweat equity)

Under your theory the cheap knock offs of Nike shoes from China are all legal. That's ridiculous.

Or someone could rip off the Los Angeles Lakers name and put it on any shirt they wanted. That's ridiculous.

Whether or not you agree with patents, it is the law and it is the way our system operates. The fact remains that the trial court proceedings determined Dish committed a patent violation. I believe this was affirmed by the appeals court. The same trial court also appears have found that the newer models are not colorably different than the prior models and Dish is still committing a patent violation. The court has held Dish in contempt and ordered the turn off. fact is Charlie stole from Tivo and was caught.

I understood that the appeals court granted Dish a temporary stay of the contempt order until tomorrow...so will we see something tomorrow that will stay the contempt or start the 30 day process? or will it be a few days?



SayWhat? said:


> Can you imagine Ford saying I could only get gasoline from an Amoco station because they invented the engine and negotiated an agreement with Amoco to be the sole provider?


This doesn't even make sense. If anything the patent on a basic gasoline engine expired a long time ago.

But FYI, there are parts of engines that are new and patented that are subject to the same restrictions. After 20 years the technology would be available anyway.

In theory Ford could design a new engine that only took Amoco gasoline (which would have to be modified in some way to make the engine tell). No one would buy it, but they could certainly do it.


----------



## bobcamp1

deaincaelo said:


> Okay, i'll bite- how?
> 
> And i mean how do you make a technically functioning television recording device without violating claim 31/61? I'm certain echostar/dish would like to know.


That's easy.

Doing it with the hardware in the already deployed boxes is the tricky part!


----------



## Greg Bimson

deaincaelo said:


> Since they're declared no more than colorably different, if that somehow held up would that mean Tivo couldn't operate either without cross-licencing?


No. It would simply mean DISH/SATS couldn't operate their patented DVR process until they license TiVo's.


----------



## bobcamp1

dgordo said:


> I have no doubt that Judge Folsom believes that just because a defendant can place new software on a device does not negate the order to disable. I'm just not as sure as him that he is correct.


+1 The judge is not correct in this case -- I have been involved in cases where this exact thing has happened. He can be angry that he can be easily bypassed, but there isn't much he can do about it.

FYI, I worked on a project once that had a "notify the judge before you work" injunction. Our lawyers filed a notice for each of the 300 employees that worked on it. A new set of 300 was filed every day. After a week, the judge angrily rescinded that order. (By that time, we had a clear workaround based on the other side's expert testimony of "if they did it this way, they won't infringe". I like it when the other company essentially pays for your R&D).

In another project, we got a "do not work on it at all" order. We ignored it. We came up with brand new names to call the technology, changed all of our documents and project names to reflect the new names, then went back to work. Of course, the new technology was just like the old one. In meetings, we would say, "if we WERE to design it, we'd PROBABLY design it (exactly) like this. Hypothetically. But we're not REALLY designing it (wink, wink)." After another 6 months, there was a settlement and in just another 3 months after that we launched the product. The other side cried foul, but since they settled they dismissed the lawsuit and had no judge's shoulder to cry on.

So the judge here can order all he wants. Everyone is aware of the reality of the situation. Work is still being done on this, they are just charging overhead (if they already weren't) so they can cover their tracks.


----------



## Greg Bimson

bobcamp1 said:


> +1 The judge is not correct in this case -- I have been involved in cases where this exact thing has happened. He can be angry that he can be easily bypassed, but there isn't much he can do about it.


But again, here is the problem:

The injunction states to disable the devices found infringing in customers hands as of 8 August 2006. It was not followed. I don't see the way to "workaround" that order; only to comply with it.

Everyone seems to believe there is a way to workaround the disable order. I do not.


bobcamp1 said:


> FYI, I worked on a project once that had a "notify the judge before you work" injunction. Our lawyers filed a notice for each of the 300 employees that worked on it. A new set of 300 was filed every day. After a week, the judge angrily rescinded that order.


The Amended Injunction does not contain a "notify the judge before you work" clause. The Amended Injunction does prohibit *implementation* of a workaround. Therefore, DISH/SATS can attempt designs to workaround the patent, but must address the court _before_ those designs can be implemented.


----------



## phrelin

Greg Bimson said:


> But again, here is the problem:
> 
> The injunction states to disable the devices found infringing in customers hands as of 8 August 2006. It was not followed. I don't see the way to "workaround" that order; only to comply with it.
> 
> Everyone seems to believe there is a way to workaround the disable order.


That's because they can't take off their engineering cap long enough to understand that the "workaround", though perfectly fine and logical in the engineering world, works around a processing routine problem which is irrelevant, it doesn't work around the order which is the only relevant issue.

It's a little like having built a well-designed 10-story tannery building that meets all construction codes but isn't permitted by zoning law in the residential area it is located in. There's nothing you can do to the building to make it legal other than tear it down.


----------



## dgordo

Greg Bimson said:


> But again, here is the problem:
> 
> The injunction states to disable the devices found infringing in customers hands as of 8 August 2006. It was not followed. I don't see the way to "workaround" that order; only to comply with it.


I agree that is exactly what the injunction states. Does this outweigh the right to try to work around a patent? Judge Folsom certainly thinks so, I guess we will see what the CAFC thinks.


----------



## jadebox

patrickmunn said:


> JADEBOX,
> 
> The USPTO website defines a patent as:
> 
> "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States.
> 
> Sound like a monopoly to me.
> 
> Why do you say that patents encourage litigation instead of innovation? It's not like TIVO doesn't have a product. They were the ones who innovated the DVR and they protected their invention with a patent It's not like they got a patent and then waited until somebody came to market with a product only to sue (RIM vs NTP). If DISH feels like they can "improve" upon TIVO's invention, then more power to them, just get a license for the underlying invention. It doesn't sound like TIVO was unwilling to grant a license, it sounds like DISH was unwilling to pay for one.


We're getting off-topic, but ... that's my point. Read the article at the link I posted and compare Jefferson's ideas to what the USPTO is doing today. They shouldn't issue patents for things that shouldn't be patentable. And patents on those things shouldn't be upheld.

By upholding patents on things that shouldn't be patented, the USPTO and courts are encouraging companies to sit on their patents instead of developing new products. And huge damage awards from the courts encourage patent holders to litigate rather than imprive products or develop new products.

-- Roger


----------



## patrickmunn

I read the article and I don't agree with Jefferson. Ultimately in the article it says that even Jefferson conceded that inventors should be protected and allowed to have a monopoly.

I don't know why you feel that what TIVO innovated should not be allowed to be patented? Granted I haven't read the patent, but if you are arguing that their invention was obvious in light of the VCR, then you must not remember using a VCR. Could you watch what was being taped on your VCR while it was still taping?

The DVR is only obvious to most people because TIVO developed it. People don't DISH programs they TIVO them, even if they don't have an actual TIVO. Your argument that patents encourage companies to litigate instead of improve their product holds no merit here. TIVO has a product and has been improving upon it for years.

Why didn't DISH allow TIVO to develop a receiver that would work with their satellites and then certify it and sell it to their customers? That way TIVO would be paying a licensing fee to DISH and DISH customers would have a choice as to what equipment they could own. The government is forcing that with the cable companies with the use of cablecards.


----------



## phrelin

Actually, I thought the USPTO based their activities on federal law approved by folks who are supposed to represent us. Maybe we should be looking at Capitol Hill as the real source of the problem. You know, writing our Congressional representatives sometimes does help.


----------



## scooper

From MY standpoint - Tivo didn't do anything worthy of a patent - the issue here is reading and writing data off a harddrive.


----------



## Curtis52

Tivo has submitted their response. It is unsealed.


----------



## coldsteel

Any link to it?


----------



## deaincaelo

patrickmunn said:


> I don't know why you feel that what TIVO innovated should not be allowed to be patented? Granted I haven't read the patent, but if you are arguing that their invention was obvious in light of the VCR, then you must not remember using a VCR. Could you watch what was being taped on your VCR while it was still taping?


I used to have a dual-deck VCR that could do that, before tivo existed as a company. However, that functionality is irrelevant as it's not mentioned in the standing claim. What the tivo decryers have a problem with is the standing part of the patent- something that some of us feel should not be patentable.

The only claim that echostar was convicted of that help up on appeal was a very generic claim. In lay terms, it's the method of accepting TV data, transferring that data onto a storage device, retrieving data from that storage device, and displaying it. No trick play. No mention of a hard drive, pvr functions, nothing. Sure, claim 31 has technical jargon in it, but don't parse that too finely- Folsom didnt. All of tivo's inventions are in claims that have been reversed and remanded- ie not upheld on appeal.

I mean, unless you think that a VCR works without internally managing where the data flows, has no method of inputing commands, and doesn't buffer the heads. Then you got a case where that the specific claim in question is patentable as it didn't exist before. You also have an engineering nightmare of a nonfunctional VCR.

I believe that tivo has re-patented pre-existing public domain technology among it's patents for it's own invention. I could be wrong. I'm open for a sound technical reason why this isn't so.


----------



## inkahauts

deaincaelo said:


> I used to have a dual-deck VCR that could do that, before tivo existed as a company. However, that functionality is irrelevant as it's not mentioned in the standing claim. What the tivo decryers have a problem with is the standing part of the patent- something that some of us feel should not be patentable.
> 
> The only claim that echostar was convicted of that help up on appeal was a very generic claim. In lay terms, it's the method of accepting TV data, transferring that data onto a storage device, retrieving data from that storage device, and displaying it. No trick play. No mention of a hard drive, pvr functions, nothing. Sure, claim 31 has technical jargon in it, but don't parse that too finely- Folsom didnt. All of tivo's inventions are in claims that have been reversed and remanded- ie not upheld on appeal.
> 
> I mean, unless you think that a VCR works without internally managing where the data flows, has no method of inputing commands, and doesn't buffer the heads. Then you got a case where that the specific claim in question is patentable as it didn't exist before. You also have an engineering nightmare of a nonfunctional VCR.
> 
> I believe that tivo has re-patented pre-existing public domain technology among it's patents for it's own invention. I could be wrong. I'm open for a sound technical reason why this isn't so.


Tivo did not patent the ability to create a dvr.. It patented the way it figured out how to do it from a technical perspective. Nothing say that others can't figure it out on there own...

Besides, the validity of the patent is not at all in question here...


----------



## marcuscthomas

TIVO's patent is for a method called "time warping." The key is that their method decouples the video/audio stream processing from the main microprocessor, allowing other important DVR functions to happen on low-cost computers. Others have implemented non-offending, but higher-cost solutions. That, at least, is my understanding. See the patents at: http://www.docstoc.com/docs/1744574/TiVo-Multimedia-Time-Warping-System-Patent (woops, I edited this post to take out the accidental reference to a site that is selling a book with the TIVO patent in it. This new link seems to be ok.)


----------



## Greg Bimson

deaincaelo said:


> I believe that tivo has re-patented pre-existing public domain technology among it's patents for it's own invention. I could be wrong. I'm open for a sound technical reason why this isn't so.


I believe the very first statement in claims 31 and 61 mentions:

31. A process for the simultaneous storage and play back of multimedia data, comprising the steps of:

61. An apparatus for the simultaneous storage and play back of multimedia data, comprising the steps of:[/quote]VCR's don't fit as they are not able to allow someone to watch the show they are recording.

And the claim does provide for data storage:


> providing a transform object, wherein said transform object stores and retrieves data streams onto a storage device


----------



## scooper

All you have to do to destroy claim 61 is show a hard disc drive. "Prior Art".


----------



## Greg Bimson

It is prior art by simply having a TV show record to a hard drive.

That is not what this claim is all about. These claims are a process and product which allow a user to control the show while recording, i.e., trick-plays.

Almost every patent in the world contains prior-art. That position is laughable. By that standard, "intermittent wind-shield wipers" should have never been granted as the patent contains the prior art "windshield wipers". The belief that because a patented process contains "prior art" negates that patent is simply ludicrous.


----------



## dgordo

coldsteel said:


> Any link to it?


Here:


----------



## Curtis52

Amicus brief filing excerpt:

"EchoStar’s argues that the public interest demands protecting its customer 
base and revenue stream. (Motion at 20.) EchoStar has so far treated its customers in a cavalier fashion by failing to provide non-infringing DVRs or perform more than a superficial redesign. It cannot now lay its customers’ problems at TiVo’s feet. The public interest is more aptly served by protecting the millions of small businesses across the country who are struggling to survive in these hard economic times. Like TiVo, these small businesses spend considerable resources on researching and developing technology that improves “the useful arts.” U.S. Const., Art, I, § 8, cl. 8. Yet, Goliath entities, such as EchoStar, are able to infringe the valid patents of small businesses, exploit the legal system and indefinitely delay adverse determinations. 
II. CONCLUSION 
For the foregoing reasons, this Court should deny EchoStar’s Emergency 
Motion for a Stay Pending Appeal of the District Court’s Permanent Injunction. "


----------



## bobcamp1

dgordo said:


> I agree that is exactly what the injunction states. Does this outweigh the right to try to work around a patent? Judge Folsom certainly thinks so, I guess we will see what the CAFC thinks.


I'll mention that the lawsuits I was involved in were each in a different Circuit a few years back. Different Circuits have ruled differently on the same issue before, creating a patchwork that is impossible to follow. From an engineer's point of view, it's more luck of the draw than anything else.

So at some point it stops being about who's right and more about who has the better lawyers, and what mood the judge(s) happens to be in that day.

I'm thinking that an agreement was not reached because Tivo wanted to sell a Tivo-branded box directly to Dish customers or something like that. Someone mentioned this earlier (but I can't find the post). It is never about the money -- how much money have both sides spent on this lawsuit? But usually it's the other parts of the settlement that are more difficult to swallow.


----------



## deaincaelo

Greg Bimson said:


> I believe the very first statement in claims 31 and 61 mentions:
> 
> 31. A process for the simultaneous storage and play back of multimedia data, comprising the steps of:
> 
> 61. An apparatus for the simultaneous storage and play back of multimedia data, comprising the steps of:


Is that a title or a claim limitation? If it's a claim limitation all echostar needs to do to be non infringing is to throw in 10 lines of code to prevent playback of anything that has the "now recording" flag. That might be a sound technical reason for patentability, if it didn't exist previously.

If that's not a limitation, then it might as well be a patent on 
method and apparatus of painting stars. I don't see anything in the actual process itself that's not pre-existing. I admit I'm not a patent lawyer, and can be wrong.



> That is not what this claim is all about. These claims are a process and product which allow a user to control the show while recording, i.e., trick-plays.


I don't see "trick plays" anywhere in this claim. In fact,I don't see anything in that claim that would ipso facto enable trick plays.


----------



## phrelin

As I understand it, we're talking about processes that in the end allow one to record a show, start watching it from the beginning skipping commercials while in the middle of recording, and building from there. It's complex. There is a compressed data stream coming in that contains information on video and audio. It has to be handled for "recording" so that it can be decoded while at the same time I can decide to watch the show from the beginning skipping commercials, all the while making it possible to keep video and audio in synch even though there is some data loss. It's not your grandmother's VCR and on my 722 and 612, Charlie's engineers' system doesn't always work perfectly.

TiVo's engineers did create a system to handle this on far less powerful computers then the ViP DVR's. The federal government gave them a patent which, in part, seems to be conceptual. The jury, the trial court judge, and the appellate court say Charlie's companies violated that patent after hearing conflicting technical testimony. That's the way it stands and is likely to stand in terms of the listed boxes.


----------



## bobukcat

I'm not sure that one E* IP hitting his blog is enough to conclude they are researching the purchase of TiVO (although one has to assume they've done this numerous times by now) but this is still an interesting read.

http://davisfreeberg.com/2009/06/09/dish-researching-hostile-tivo-takeover/


----------



## scooper

I would have done this before it went to court the first time, or at least after the first $100 million payment.


----------



## CuriousMark

bobukcat said:


> I'm not sure that one E* IP hitting his blog is enough to conclude they are researching the purchase of TiVO (although one has to assume they've done this numerous times by now) but this is still an interesting read.
> 
> http://davisfreeberg.com/2009/06/09/dish-researching-hostile-tivo-takeover/


More likely it is some staffer playing around in his spare time and doing the research for his own edification. Anyone reading these threads may have been triggered to do just that at one point or another. The lawyers, who really count for this, would have done the research elsewhere using systems that are more reliable.


----------



## bobukcat

CuriousMark said:


> More likely it is some staffer playing around in his spare time and doing the research for his own edification. Anyone reading these threads may have been triggered to do just that at one point or another. The lawyers, who really count for this, would have done the research elsewhere using systems that are more reliable.


That was my take on it too, but the interpretation of the poison pill on the story was food for thought for me. I don't know how accurate it is and I'm not familiar with the laws that govern those kind of situations but one response to the blog stood out to me. E* may not HAVE to invoke the poison pill, if they went to TiVO with an offer than was substantially higher than their current market value (~$11 per share) but significantly lower than the poison pill (~$71 per share) TiVO may almost be forced to accept it or face potential lawsuits from other share holders. If they offered them $33 a share and they simply shot it down I think they would see at least some backlash form their investment community.

I still like the idea of E*, Motorola, Cisco (SA), and other STB manufacturers or even cable companies like TW forming a joint venture to go buy it in pieces, thereby bypassing the poison pill (each could buy 14%). This would certainly face scrutiny from regulators, and may even be found illegal but possibly not if it was done in a way that did not hamper competition and thereby harm consumers.


----------



## CuriousMark

bobukcat said:


> E* may not HAVE to invoke the poison pill, if they went to TiVO with an offer than was substantially higher than their current market value (~$11 per share) but significantly lower than the poison pill (~$71 per share) TiVO may almost be forced to accept it or face potential lawsuits from other share holders. If they offered them $33 a share and they simply shot it down I think they would see at least some backlash form their investment community.


That is probably true, most TiVo stock is held by institutions.



> I still like the idea of E*, Motorola, Cisco (SA), and other STB manufacturers or even cable companies like TW forming a joint venture to go buy it in pieces, thereby bypassing the poison pill (each could buy 14%). This would certainly face scrutiny from regulators, and may even be found illegal but possibly not if it was done in a way that did not hamper competition and thereby harm consumers.


At one point, many of these companies already had relatively large holdings of TiVo stock. For instance, TW's not insubstantial holdings may have been inoculating them from lawsuits so far. If that is the case, they don't need to do what you suggest, they are already protected as much as they want to be. Many other cable companies and DTV are also supposedly TiVo investors. They jointly may prefer to keep Dish out of the pool, rather than sign up with Dish to do what you ask. One possibility is that they might be whispering in TiVo's ears to go hard on Dish since they would benefit from subs leaving Dish. However, I suspect that might be more illegal than what you desire.

No TiVo's best move is to make nice with everyone that will reciprocate and only press on those that won't until they come around. it seems that Dish is just making sure that the pressure needs to be very high indeed. Ego?


----------



## phrelin

bobukcat said:


> That was my take on it too, but the interpretation of the poison pill on the story was food for thought for me. I don't know how accurate it is and I'm not familiar with the laws that govern those kind of situations but one response to the blog stood out to me. E* may not HAVE to invoke the poison pill, if they went to TiVO with an offer than was substantially higher than their current market value (~$11 per share) but significantly lower than the poison pill (~$71 per share) TiVO may almost be forced to accept it or face potential lawsuits from other share holders. If they offered them $33 a share and they simply shot it down I think they would see at least some backlash form their investment community.
> 
> I still like the idea of E*, Motorola, Cisco (SA), and other STB manufacturers or even cable companies like TW forming a joint venture to go buy it in pieces, thereby bypassing the poison pill (each could buy 14%). This would certainly face scrutiny from regulators, and may even be found illegal but possibly not if it was done in a way that did not hamper competition and thereby harm consumers.


 If this interpretation of the poison pill provision is accurate (emphasis added):


> Based on my understanding of the complex agreement, in the event that Dish (or another acquirer) were to accumulate more than 15% of TiVo's shares (_*or even announce the intention to acquire more than 15% of the shares*_), it would trip a provision that would entitle the other TiVo shareholders to a special $60 per share dividend  This means that if Dish were to forcibly acquire TiVo, it would cost them $71 per share or close to $7.5 billion (more than Dish's entire market cap.) If Dish tried to pay for the transaction in stock, TiVo shareholders would be entitled to $13.5 billion ($131 per share) in the buyout.


 then if I were Charlie I'd announce my intent, buy 10 shares, and then watch the furor and wait.


----------



## peak_reception

Does Judge Folsom now need to issue a new or modified Injunction to reflect his latest ruling? If so, when? Thx. 

Prior notification requirement for any new design-around, for example, is new.


----------



## Greg Bimson

I could swear that modification is in the Amended Final Judgment and Permanent Injunction attached in the first couple pages, issued along with the ruling.


----------



## peak_reception

Greg Bimson said:


> I could swear that modification is in the Amended Final Judgment and Permanent Injunction attached in the first couple pages, issued along with the ruling.


 You're right Greg. In the "Judgment" pdf was the Injunction modification as follows: 


> It is FURTHER ORDERED that Defendants shall inform this Court of any further attempt
> to design around the '389 Patent and shall seek approval from this Court before any such designaround
> is implemented.


 I read the 35 Memorandum but overlooked the Amended Injunction pdf. Thanks.


----------



## stlcardsblues

Shades228 said:


> I think it was more of a hindsight issue assuming that DirecTV would still be manufacturing their box's.


>>>>

Directv tried their own technology in place of TIVO which failed. Directv announced that they will be bringing back Directv with Tivo boxes including an HD DVR in the fourth quarter of 2009.


----------



## Swheat

stlcardsblues said:


> >>>>
> 
> Directv tried their own technology in place of TIVO which failed. Directv announced that they will be bringing back Directv with Tivo boxes including an HD DVR in the fourth quarter of 2009.


Given the numbers of users of it's own DVR's, I don't see how you can call what DirecTV came up with a failure.

But then, we will see how many people dump them for Tivo's when they come out.


----------



## stlcardsblues

Swheat said:


> Given the numbers of users of it's own DVR's, I don't see how you can call what DirecTV came up with a failure.
> 
> But then, we will see how many people dump them for Tivo's when they come out.


>>>>>>

People have to use them, its all that is offered right now. Directv is bringing back the Tivo boxes as they have had to put out huge money in service calls and lost subscribers because of the inability to develop a dependable box. I was on the phone with a Directv agent about one of their boxes on Friday and even they asked me to be patient as the Tivo boxes are coming back out.


----------



## Herdfan

stlcardsblues said:


> Directv announced that they will be bringing back Directv with Tivo boxes including an HD DVR in the fourth quarter of 2009.


Which has been pushed back to first half 2010.

As far as I am concerned, their HD DVR is pretty stable. I was a TiVo fanboy and hated the idea of them switching. But as it stands now, I won't be upgrading when, and if, the new TiVo based boxes come out.


----------



## Albie

stlcardsblues said:


> >>>>>>
> 
> People have to use them, its all that is offered right now. Directv is bringing back the Tivo boxes as they have had to put out huge money in service calls and *lost subscribers because of the inability to develop a dependable box*. I was on the phone with a Directv agent about one of their boxes on Friday and even they asked me to be patient as the Tivo boxes are coming back out.


I see you've been paying close attention to the quarterly sub numbers for the last two years or so


----------



## Gene Steinberg

Richard King said:


> Wow. I never thought they would get away with that again. Charlie wins another one, although a minor skirmish in the total of things.


Consider if the lawsuit isn't affecting current models, then after a few more years of appeals, few will be using the affected configurations anyway. So little is lost.

Or perhaps the figure that, unless TiVO becomes consistently profitable (as opposed to just occasional fits of black ink), they'll go out of business of the lawsuit is prolonged long enough. Or they'll be suffering so much that Charlie can toss them a hundred million or so and take over the company.

Peace,
Gene


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## Curtis0620

http://www.homemediamagazine.com/legal-news/group-says-dish-network-abusing-appeals-process-16096


----------



## Herdfan

Gene Steinberg said:


> Consider if the lawsuit isn't affecting current models,


Yet!


----------



## audiomaster

Won't Dish have to pay any contempt penalties separately whether or not they have to pay Tivo something. Who gets the contempt of court dollars? I would guess it's the court, not Tivo??


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## dgordo

Some new docs:


----------



## dfd

dgordo said:


> Some new docs:


The brief's conclusion, "Because EchoStar is highly likely to prevail on the merits, and the balance of harms favors EchoStar, a stay should be granted."

Despite the fact that E* has lost almost every argument along the way and TiVo faces extinction if people can steal their IP E* lawyers say they are likely to win and would be hurt more than TiVo they submit a statement like that.

No offense dgordo but this is why I have a hard time believing anything a lawyer tells me.


----------



## Grampa67

MARSHALL, Texas - Dish Network said it's trying to work around a patent owned by TiVo while challenging a ruling to shut down its digital video recording service.

more at http://www.denverpost.com/business/ci_12604062


----------



## bobukcat

dfd said:


> The brief's conclusion, "Because EchoStar is highly likely to prevail on the merits, and the balance of harms favors EchoStar, a stay should be granted."
> 
> Despite the fact that E* has lost almost every argument along the way and TiVo faces extinction if people can steal their IP E* lawyers say they are likely to win and would be hurt more than TiVo they submit a statement like that.


I actually find their argument compelling, altough I'll admit that I have not read every post in the many threads about the original trial but when I read the judge's brief I immediately thought that he was using his own interpretation of "parsing" and that it differed from what I think "parsing" means as an EE tech, and what Tivo argued in the trial. Again, I may have missed something but at least on the surface it seems to be a compelling argument.

As for who would suffer the most from a shut-down of the DVR I think they made a good point too, TiVo has bragged publicly about improving their financial situation during the time since the injuction but there is no doubt that E* would be severly harmed if they had to shut off the 12 million DVRs. I understand your points and certainly see what you mean but if the appeals court agrees with E* can they order the issue be solved by a jury trial or would they just have to vacate the judges ruling, lift the injuction and Tivo would have to re-file their lawsuit against E* for the new s/w?

Obviously if they are still infringing on Tivo's IP then they are causing significant harm but damages will continue to accrue during the stay so TiVo will get their payment and won't really suffer any additional hardship.


----------



## Richard King

Posts and responses referring to our "missing poster" are being edited or deleted as off topic. Discussion of posters here or elsewhere doesn't add to the general discussion of the topic at hand. Please stick to the topic. Thanks guys (and girls?).


----------



## phrelin

bobukcat said:


> I actually find their argument compelling, altough I'll admit that I have not read every post in the many threads about the original trial but when I read the judge's brief I immediately thought that he was using his own interpretation of "parsing" and that it differed from what I think "parsing" means as an EE tech, and what Tivo argued in the trial. Again, I may have missed something but at least on the surface it seems to be a compelling argument.


IMHO Judge Folsom wrote in Memorandum for the appellate courts, not the parties. This is why I suggest not wearing an engineering cap when reading Folsom's Memorandum. Consider the following from that Memorandum:


> During claim construction, this Court construed the term "parses" in all claims to mean "analyzes," and therefore defined "parses video and audio data from said broadcast data" in claims 31 and 61 as "analyzes video and audio data from the broadcast data." Dkt. No. 185 at 22. On appeal, EchoStar did not challenge this Court's construction of the term "parses." See TiVo, 516 F.3d at 1295-1307. Since parsing is defined as analyzing rather than indexing, TiVo contends that EchoStar's modified receivers still satisfy the limitation even though they may no longer index the incoming signal. Dkt. No. 920 at 36-41; Dkt. No. 910 at 66:9-67:19. Specifically, TiVo contends that the limitation is still met by PID filtering, which involves analyzing the incoming data stream and selecting the appropriate packets of data associated with a program or channel selected by the viewer. Id. In support of this position, TiVo cites to testimony at the 2006 trial in which experts, including EchoStar's own experts, testified that PID filtering satisfied the parsing limitation in the Software Claims. Dkt. No. 716 at 110:10-111:14; Dkt. No. 722 at 99:17-100:23.
> 
> In response, EchoStar argues that judicial estoppel bars TiVo from arguing that PID filtering satisfies the parsing limitation.


What Folsom has done here is not argue that "parses" means "analyzes" but that up to this point in the case everyone accepted the idea that it does. And he's saying that EchoStar argues that judicial estoppel prevents TiVo from arguing....

So, he's saying that in this case "parses" does mean "analyzes." What he is really saying to the appellate court, if you don't uphold this you're telling the jury that (a) we agreed with you before and (b) we did so making the same stupid assumptions as judges that you lay people did because we too don't know what we were talking about. Maybe they will say that.

And he's saying that "judicial estoppel" is the issue to be discussed here. Guys with suits and briefcases are welcome, guys with pocket protectors can go home. As if to emphasize this, he explains that the issue here is property law and that the property has been described and he does this by using real estate as a metaphor:


> There is nothing inconsistent with TiVo's position that EchoStar's past and present products fall within the scope of the '389 Patent as construed by this Court. If this action involved real property, past and present trespasses to TiVo's land may occur in dissimilar ways (i.e. entry from the west versus entry from the south). As long as the trespasser is crossing the metes and bounds of TiVo's property, TiVo may argue that both are trespasses. There is nothing inconsistent in those positions.
> 
> Here, the metes and bounds of TiVo's property are the patent claims as construed by this Court and affirmed by the Federal Circuit. TiVo's position that those boundaries have been crossed and continue to be crossed by EchoStar's products is not inconsistent. Thus, TiVo may argue that automatic flow control is satisfied by EchoStar's modified products even though the exact manner of infringement may be slightly different. Likewise, TiVo may argue that EchoStar's modified products continue to parse incoming data though the manner in which that is accomplished might have changed slightly. If this Court disallowed such arguments, then future infringers could easily side-step this and other courts' orders by making insignificant changes to their products. It would be tantamount to allowing an enjoined trespasser re-entry onto the land in dispute because he is now using a different road and compounding the injustice by silencing the property owner when he asked the court to enforce its decree.
> 
> This Court is also cognizant of the fact that TiVo made certain arguments at trial due to the fact that both Hardware and Software Claims were being asserted at that time. This Court finds that arguments made by TiVo regarding Hardware Claims should not limit the Software Claims. It is undisputed that the Hardware Claims-no longer an issue in the present proceedings-contain limitations not found in the Software Claims. In particular, the Hardware Claims require a "Media Switch" that both parses and separates the incoming data stream. '389 Patent at 12:48-50 (claim 1). TiVo argued at trial that EchoStar's products contained such a Media Switch, which satisfied the parsing and separating requirement of the Hardware Claims through start-code detection and indexing. Moreover, TiVo argued that the Media Switch could also be the "physical data source" that "parses video and audio data" as required by the Software Claims.
> 
> The fact that TiVo argued that a Media Switch satisfied the "physical data source" requirement of the Software Claims, however, does not limit those claims. This Court has never held that the "physical data source" in the Software Claims is limited to a Media Switch. The Media Switch must parse and separate the incoming data, whereas the physical data source of the Software Claims need only parse. As a result, the physical data source of the Software Claims is less specific-in that it performs less functions-than the Media Switch of the Hardware Claims. Although the Media Switch could satisfy the Software Claims, there are potentially other, more generic physical data sources that could be sufficient.
> 
> By arguing that parsing in the Software Claims must be limited to start-code detection and/or indexing, this Court believes that EchoStar is trying to import the Media Switch or an equivalent into the Software Claims. This Court declines to do so.


At the end here, he is saying to the appellate court judges that they split the case between hardware and software creating a crack that EchoStar is attempting to use to delay justice. He's saying to the appellate court, we in the justice system screw around with patent cases parsing our words and by doing so deny justice victims of property theft. Finally he is saying "I'm not accepting any more of this in the TiVo v EchoStar case."

And he has designed a well thought out document. He says at the beginning and then at the end:


> In this patent infringement action, tried to a jury in March of 2006, Plaintiff TiVo, Inc. (hereafter "TiVo") accused Defendants EchoStar Communications Corporation,1 EchoStar DBS Corporation, EchoStar Technologies Corporation, EchoStar Satellite LLC, and EchoSphere LLC of infringing....
> 
> ...For the reasons set forth above, this Court finds EchoStar in contempt of its permanent injunction. EchoStar's modified software is not more than colorably different from the products adjudged to infringe; furthermore, EchoStar's products continue to infringe TiVo's patent. Finally, EchoStar failed to comply this Court's order that it disable the DVR functionality in the infringing products.
> 
> The harm caused to TiVo by EchoStar's contempt is substantial. EchoStar has gained millions of customers since this Court's injunction issued, customers that are now potentially unreachable by TiVo. See Dkt. No. 773 at 10. As this Court has noted in the past, "loss of market share and of customer base as a result of infringement cause severe injury," and "every day of Defendant's infringement affects Plaintiff's business." Id. at 10-11. Although EchoStar requests that this Court stay its injunction further, this Court declines to do so. EchoStar has escaped this Court's injunction for over two years and further delay will be manifestly unjust to TiVo and cause TiVo substantial harm.


He's saying, hey guys the jury trial was in March 2006. They rendered a decision. I issued an order. We've allowed Dish Network to graze elephants on TiVo's real estate and that's a travesty.

Unfortunately, IMHO, he didn't let EchoStar argue for a stay. Had he done so when they claimed potential harm he could have focused the discussion. First he could have asked for balance sheet records that relate to the listed devices, particularly to see what property value was at issue. My guess is that most have been depreciated to the junk level. No significant potential property loss there.

Then he could have addressed the more basic question. By turning off the DVR function, would the customers continue to be able to receive TV? The answer is "yes." If they were displeased with Dish Network, could Dish Network provide them with DVR's not on the list? The answer is "yes." So to summarize, the harm is that Dish Network might have to deal with it's customers in that in order to comply with the the law it might have to displease it customers by creating some inconvenience for them.

Compare that to his description of the harm caused to TiVo.

Will the appellate court listen to him and TiVo, or to EchoStar? Who knows.


----------



## dfd

bobukcat said:


> I actually find their argument compelling, altough I'll admit that I have not read every post in the many threads about the original trial but when I read the judge's brief I immediately thought that he was using his own interpretation of "parsing" and that it differed from what I think "parsing" means as an EE tech, and what Tivo argued in the trial. Again, I may have missed something but at least on the surface it seems to be a compelling argument.
> 
> As for who would suffer the most from a shut-down of the DVR I think they made a good point too, TiVo has bragged publicly about improving their financial situation during the time since the injuction but there is no doubt that E* would be severly harmed if they had to shut off the 12 million DVRs. I understand your points and certainly see what you mean but if the appeals court agrees with E* can they order the issue be solved by a jury trial or would they just have to vacate the judges ruling, lift the injuction and Tivo would have to re-file their lawsuit against E* for the new s/w?
> 
> Obviously if they are still infringing on Tivo's IP then they are causing significant harm but damages will continue to accrue during the stay so TiVo will get their payment and won't really suffer any additional hardship.


I believe the parties agreed to the definition of the term parsing for the trial. Once that has been established for the jury it is the law of the case; what you, me, or Webster's thinks it means doesn't matter.


----------



## Curtis52

dfd said:


> I believe the parties agreed to the definition of the term parsing for the trial. Once that has been established for the jury it is the law of the case; what you, me, or Webster's thinks it means doesn't matter.


The parties presented their arguments for the definitions at a pre-trial claims construction hearing and then Judge Folsom issued his ruling on the definitions.



> As was the Court's analysis of the term "parses" in the context of claims 1 and 32, the Court similarly finds that "parse" as it is used in claims 31 and 61 means "analyzes." These terms are recited clearly by claims 31 and 61 and understood by persons of ordinary skill in the art. See '389 patent at cols. 14:55-58, 18:5-8. This definition is consistent with the use of the term in claims 31 and 61 and the context of the specification. See, e.g., '389 patent at col. 4:23-33 & Fig. 3 (describing the analysis of interleaved video and audio streams from an incoming MPEG stream).
> Therefore, the court defines "parses video and audio data from said broadcast data" as "analyzes video and audio data from the broadcast data."


----------



## Herdfan

bobukcat said:


> there is no doubt that E* would be severly harmed if they had to shut off the *12 million *DVRs.


Except it is only 4 million DVR's that are subject to shut down and that was the number when the trial started. Over time I would guess many have been replaced by subs upgrading.


----------



## inkahauts

stlcardsblues said:


> >>>>
> 
> Directv tried their own technology in place of TIVO which failed. Directv announced that they will be bringing back Directv with Tivo boxes including an HD DVR in the fourth quarter of 2009.


Ah, no, its not failing.. Tivo will be an additional more expensive option, should it ever actually show up... Todays units are extremely stable.. Most issues are caused by bad setups (wiring), not the boxes themselves, but everyone blamed the boxes...

Tivo has kept a relationship with Directv for many years, but there was a window where it was strictly intellectual... Now its back to also product.


----------



## inkahauts

bobukcat said:


> As for who would suffer the most from a shut-down of the DVR I think they made a good point too, TiVo has bragged publicly about improving their financial situation during the time since the injuction but there is no doubt that E* would be severly harmed if they had to shut off the 12 million DVRs.





phrelin said:


> Unfortunately, IMHO, he didn't let EchoStar argue for a stay. Had he done so when they claimed potential harm he could have focused the discussion. First he could have asked for balance sheet records that relate to the listed devices, particularly to see what property value was at issue. My guess is that most have been depreciated to the junk level. No significant potential property loss there.
> 
> Then he could have addressed the more basic question. By turning off the DVR function, would the customers continue to be able to receive TV? The answer is "yes." If they were displeased with Dish Network, could Dish Network provide them with DVR's not on the list? The answer is "yes." So to summarize, the harm is that Dish Network might have to deal with it's customers in that in order to comply with the the law it might have to displease it customers by creating some inconvenience for them.
> 
> Compare that to his description of the harm caused to TiVo.
> 
> Will the appellate court listen to him and TiVo, or to EchoStar? Who knows.


I have to say, I don't think that harm to Dish should be considered as a reason to stay the injunction if they are guilty.

They broke the law, and now they have to pay the price. And the price for theft should be steep. If a person is convicted of a felony, they loose all kinds of rights... And there are certain things they are never allowed to do again, that other people can. Why should this be any different? This is the same concept. Unless the applets court finds something wrong with the notion of the new software not being colorably different, then the amount of harm to Dish is completely irrelevant IMHO, because the sentence has already been decided on, and its time to enforce that sentence.

I wonder at what point Dish will have spent more money of designing a workaround, (a couple times now) and lawyer fees and so on, than it would have cost them to pay a licensing fee..


----------



## inkahauts

Herdfan said:


> Except it is only 4 million DVR's that are subject to shut down and that was the number when the trial started. Over time I would guess many have been replaced by subs upgrading.


And my next question is, of the 4 million or so, how many have additional DVRs in their houses that are not a part of this ruling, and how many are multiple units in the same house? This will not even affect 4 million customers... And some of them will only hurt one of their dvr's rather than all...


----------



## l8er

inkahauts said:


> .... Now its back to also product.


In theory. At this point it's still vaporware.


----------



## Greg Bimson

bobukcat said:


> there is no doubt that E* would be severly harmed if they had to shut off the 12 million DVRs.





herdfan said:


> Except it is only 4 million DVR's that are subject to shut down and that was the number when the trial started. Over time I would guess many have been replaced by subs upgrading.


Except some are being fooled by the facts DISH/SATS presents.

I recall that DISH/SATS argument is that 12 million _people_ would lose service on their DVR's. DISH/SATS is probably using a two-to-one ratio, so it is probably only 6 million DVR's.


----------



## scooper

I got to thinking about this -

Quote:
EchoStar contends that the move to an "indexless" or "brute-force" system means that its DVR software no longer satisfies the "parses" limitation of the '389 Patent's Software Claims. Dkt No. 910 at 197:25-198:15; Dkt. No. 912 at 168:6-169.18; Dkt. No. 919 at 53-55, 92-119. Claim 31 of the '389 Patent claims a "process for the simultaneous storage and play back of multimedia data," which is further comprised of numerous steps.5 '389 Patent at 14:52-53. The first such step requires "providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data[.]" Id. at 14:54-57 (emphasis added).

TiVo argues that this limitation is still satisfied by EchoStar's modified 50X Products because those products still analyze the broadcast signal. During claim construction, this Court construed the term "parses" in all claims to mean "analyzes," and therefore defined "parses video and audio data from said broadcast data" in claims 31 and 61 as "analyzes video and audio data from the broadcast data." Dkt. No. 185 at 22. On appeal, EchoStar did not challenge this Court's construction of the term "parses." See TiVo, 516 F.3d at 1295-1307. Since parsing is defined as analyzing rather than indexing, TiVo contends that EchoStar's modified receivers still satisfy the limitation even though they may no longer index the incoming signal. Dkt. No. 920 at 36-41; Dkt. No. 910 at 66:9-67:19. Specifically, TiVo contends that the limitation is still met by PID filtering, which involves analyzing the incoming data stream and selecting the appropriate packets of data associated with a program or channel selected by the viewer. Id.

Does this strike anyone else how WRONG it is that any other company can use their own technology (i.e the tuner part) and yet this very thing is still going to make their "own" DVR infringing on Tivo , even if their part that does the "timewarp" and trickplay functions possible is NOT infringing ?

I'd say it's high time to gut everything associated with patents.


----------



## ziggy29

Grampa67 said:


> MARSHALL, Texas - Dish Network said it's trying to work around a patent owned by TiVo while challenging a ruling to shut down its digital video recording service.


If they successfully work around a patent, all that means is no need to license TiVo's IP moving forward. The damages for past infringement are still in play.

I also suspect that if E* does "work around" TiVo's patents, TiVo will be less likely to settle for dimes on the dollar for past infringements.

Frankly, I think Charlie's ego is harmful to Dish shareholders.


----------



## Curtis52

scooper said:


> Does this strike anyone else how WRONG it is that any other company can use their own technology (i.e the tuner part) and yet this very thing is still going to make their "own" DVR infringing on Tivo , even if their part that does the "timewarp" and trickplay functions possible is NOT infringing ?
> 
> I'd say it's high time to gut everything associated with patents.


All steps of a patent claim have to be performed for there to be infringement.

If I'm following your hypothetical case, TiVo could have left out the "parsing" portion of the patent and the hypothetical company would still be infringing. Or maybe I'm missing something?


----------



## scooper

Curtis52 said:


> All steps of a patent claim have to be performed for there to be infringement.
> 
> If I'm following your hypothetical case, TiVo could have left out the "parsing" portion of the patent and the hypothetical company would still be infringing. Or maybe I'm missing something?


That is not the way I'm reading that quote - it appears that Tivo and the Judge think that having the PID filters ALONE is enough to prove infringement. Or am I wrong ? And if so - then show me where.

As I see it - the biggest problem facing Echostar on this patent is the "automatic flow controlled buffers" - If they can find a way around this - they should be clear. Yet - that quote is saying just due to the existence of the PID filters, they are infringing.


----------



## Curtis52

scooper said:


> That is not the way I'm reading that quote - it appears that Tivo and the Judge think that having the PID filters ALONE is enough to prove infringement. Or am I wrong ? And if so - then show me where.


I was sure this has been covered a couple of dozen times. All the steps (elements) of a patent claim have to be performed for there to be infringement. If a single step is not performed there is no infringement.

*"The "All Elements Rule" - *a very simple rule, which says that in order to infringe, a product must contain every single element in at least one claim of the patent."

http://www.bpmlegal.com/howtopat8.html


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## Ken984

It is not just due to the PID filter, it is saying that the PID filter meets the "parses" part of the claim, that is all it is referenced for. E* claimed they no longer "parse", Tivo and the Judge say yes you do, because you agreed to the meaning of "parse" as analyze, the PID filter fits that part of the claim. By itself the PID filter is not a part of the claim, but its function in this application does meet the requirement. 

If E* lawyers had argued against this way back before the jury trial then they might have had a chance but they did not do it then and now its way too late.


----------



## Curtis52

Ken984 said:


> If E* lawyers had argued against this way back before the jury trial then they might have had a chance but they did not do it then and now its way too late.


They sort of did. Way before the trial. They lost.

Judge Folsom:



> EchoStar argues "parses" means "separates," and "parses video and audio data from said broadcast data" means "analyzes the content of broadcast data and from it transmits two distinct components: one video component and one audio component." See '389 patent at Fig. 3 & col. 4:23-29; EchoStar's Opening Br. at 11-12; EchoStar's Response Br. at 7-10; EchoStar's Slide Presentation at 76-98, 123-24.


The judge disagreed and went with TiVo's definition.


----------



## Ken_F

scooper said:


> That is not the way I'm reading that quote - it appears that Tivo and the Judge think that having the PID filters ALONE is enough to prove infringement. Or am I wrong ? And if so - then show me where.
> 
> As I see it - the biggest problem facing Echostar on this patent is the "automatic flow controlled buffers" - If they can find a way around this - they should be clear. Yet - that quote is saying just due to the existence of the PID filters, they are infringing.


All elements of the patent claim must be met. The other elements are not mentioned in the ruling because Dish Network did not change them. Dish Network decided to keep all elements the same, except for one (or two in the case of certain DVRs). When there are 10 elements, and you keep nine and change one, you're in trouble if that change isn't found to be colorably different. That's what happened to Dish Network here.

There is no discussion of the other elements because Dish Network, by its own admission, did not change them. Hence, everything depends on whether the one change they did make is colorably different with regard to the corresponding element of the patent claim.


----------



## Curtis52

The Delaware case has been transferred to Judge Folsom.


----------



## dgordo

Curtis52 said:


> The Delaware case has been transferred to Judge Folsom.


attached:


----------



## Gene Steinberg

Curtis52 said:


> The Delaware case has been transferred to Judge Folsom.


And that accomplishes -- what? Other than musical chairs of course.

Peace,
Gene


----------



## phrelin

Gene Steinberg said:


> And that accomplishes -- what? Other than musical chairs of course.
> 
> Peace,
> Gene


We know Folsom has issued an opinion that the "workaround" is not colorably different and Dish foolishly attempted to get around him with this case. I say foolishly, because it opens Pandora's Box - the unlisted receivers.


----------



## Gene Steinberg

Curtis52 said:


> The Delaware case has been transferred to Judge Folsom.





phrelin said:


> We know Folsom has issued an opinion that the "workaround" is not colorably different and Dish foolishly attempted to get around him with this case. I say foolishly, because it opens Pandora's Box - the unlisted receivers.


I really think this all could have avoided by paying TiVO, licensing the technology, and being done with it. If Echostar loses, that'll be the end game, I'm sure, but at what cost?

Or maybe they felt if they delayed it long enough, TiVO would be history.

Oh well.

Peace,
Gene


----------



## CuriousMark

Gene Steinberg said:


> I really think this all could have avoided by paying TiVO, licensing the technology, and being done with it. If Echostar loses, that'll be the end game, I'm sure, but at what cost?
> 
> Or maybe they felt if they delayed it long enough, TiVO would be history.
> 
> Oh well.
> 
> Peace,
> Gene


I would say that about sums it up. A miscalculation that is backfiring. It can be easily, quickly, and though unfortunately for Dish, expensively fixed.



> Originally Posted by phrelin
> We know Folsom has issued an opinion that the "workaround" is not colorably different and Dish foolishly attempted to get around him with this case. I say foolishly, because it opens Pandora's Box - the unlisted receivers.


I had read that the Delaware suit only listed the 8 named models, if so does it really open Pandora's box, or is it now just a leftover that is moot.


----------



## Curtis52

CuriousMark said:


> I had read that the Delaware suit only listed the 8 named models, if so does it really open Pandora's box, or is it now just a leftover that is moot.


Nope. Dish asks for a judgment declaring that none of their DVR models infringe.


----------



## Herdfan

So could this be potentially bad for DISH in that now ALL of their DVR's could be under Folsom's control?

Would this allow TiVo to go after them without having to file another suit to get at the VIP series?


----------



## Curtis52

Herdfan said:


> Would this allow TiVo to go after them without having to file another suit to get at the VIP series?


It doesn't make any difference. TiVo only needs to file a contempt motion concerning the newer models. That's been the situation since the mandate. No change.


----------



## P Smith

I'm have no doubt by one iota - TiVO will go after ViP models too, pretty soon.


----------



## Herdfan

Curtis52 said:


> TiVo only needs to file a contempt motion concerning the newer models.


But would the issue of whether or not the VIP models infringe be a case of facts that should be decided by a jury? Or can the judge decide those facts?

And yes, I also believe they will go after the VIP models if the case is not settled.


----------



## Curtis52

Herdfan said:


> But would the issue of whether or not the VIP models infringe be a case of facts that should be decided by a jury? Or can the judge decide those facts?
> 
> And yes, I also believe they will go after the VIP models if the case is not settled.


If Dish violates the injunction, that's contempt. The injunction forbids selling DVRs that are only colorably different in the context of the infringed claims from the named DVRs. It only takes a contempt hearing like the one just concluded.



> hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product *and all other products that are only colorably different therefrom in the context of the Infringed Claims*, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 Patent.


----------



## phrelin

Someone posted the Delaware Complaint before, but I can't locate the link so I posted it here.

Let's assume for the moment that the original case doesn't allow for a broader contempt ruling.

The thing about the Delaware case is, this "clever" legal strategy is Charlie and his attorneys being too clever for their own good. Sitting there waiting for Judge Folsom to set a date for his first visit with the parties to set a trial date and consider motions is the new case. It reads as follows in the critical paragraphs:


> 22. On information and belief, the public statements from TiVo officers that Plaintiffs' new DVR product will be found to infringe the '389 Patent is causing uncertainty in the marketplace for DVR's.
> 
> 23. Plaintiffs deny that their new DVR product infringes the '389 Patent.
> 
> 24. In view of the facts and circumstances here, including: (1) TiVo's prior litigation against the EchoStar Parties, (2) TiVo's assertions that Plaintiffs' new DVR infringes the '389 Patent, (3) Plaintiffs' contention that its new DVR's do not infringe the '389 Patent; and (4) Plaintiffs' desire to be able to sell its DVR's without the continuing threat oflitigation, an actual and justiciable controversy exists between Plaintiffs and TiVo concerning whether Plaintiffs infringe the '389 Patent. Plaintiffs now seek a declaratory judgment that they do not infringe the '389 Patent.
> 
> *DEMAND FOR JURY TRIAL*​Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiffs hereby demand a trial by jury of all issues so triable in this action.
> 
> *PRAYER FOR RELIEF*​WHEREFORE, Plaintiffs pray for relief against Defendant as follows:
> (a) For a declaration that Plaintiffs do not infringe any valid claim of the '389 Patent;
> (b) For such other and further relief as this Court may deem just and proper.


My guess is that absent the ability to apply the old case somehow, TiVo will be happy to have a jury trial that includes a counter claim of some kind (I don't really know how this works in federal court).

And gee whiz, just exactly how would the odds makers handle this one. It's in the courtroom of a judge that has already ruled against Echostar/Dish on the subject of the lawsuit. It's in the courtroom of a judge where a jury already cost Echostar/Dish a bundle when it ruled in favor of TiVo for patent violations. Someone's already building the scaffold.:nono:


----------



## peak_reception

I've only just now read EchoStar's Emergency Motion for a Stay Pending Appeal and I have to say that it is beautifully constructed and written. An absolute gem.

Unfortunately it is squandered in the service of what seems almost certain to end badly for Echo/Dish. A losing proposition.

The beautiful presentation cannot 'workaround' the fact that EchoStar did not comply with Judge Folsom's Permanent Injunction. The judge noted that numerous times in his 35 page Memorandum, in most detail here:


> Instead of requesting
> review of this Court's order by itself or another court, EchoStar merely ignored this Court's order
> because it subjectively believed it to be improper or overly broad. *This cannot be allowed.* See GTE Sylvania, Inc. v. Consumers Union, 445 U.S. 375, 386-87 (1980) (_"[P]ersons subject to an injunctive
> order issued by a court with jurisdiction are expected to obey that decree until it is modified or
> reversed, even if they have proper grounds to object to the order._"); Carborundum Co. v. Molten
> Metal Equip. Innovations, Inc., 72 F.3d 872, 883 (Fed. Cir. 1995). *A party may not unilaterally
> decide whether it will or will not comply with a court order.*


 (emphasis and italics are mine).

Of course this relates back to the old Prima Facia violation of the Injunction which many people, including me, could not blithely accept just because patent law allows for good faith efforts to modify infringing products so that they no longer infringe. That's all well and good but can anyone imagine Judge Folsom's above words not resonating with the Appeals Court?

EchoStar's Emergency Motion cites the 'wounding sword' of patent case precedent as follows: See, e.g., Arbek Mfg., Inc. v. Moazzam, 55 F.3d
1567, 1570 (Fed. Cir. 1995) (*contempt is an extraordinary remedy limited to
"flagrant disregard for court orders," not "a sword for wounding a former infringer
who has made a good-faith effort to modify a previously adjudged or admitted
infringing device to remain in the marketplace"* There is something for both sides here. Judge Folsom seems to be saying that his order was flagrantly violated which is why he also surprisingly added: 


> Even if EchoStar had achieved a non-infringing design-around, this Court would still find
> that EchoStar is in contempt of this Court's permanent injunction


KSM was the case which required colorable difference analysis so Judge Folsom was compelled to tackle that too, together with his Prima Facia judgment. It's too bad we didn't get his explicit reasoning behind the above quote but I believe it had to do with the Arbek case and flagrant violation of a court order, his Permanent Injunction which required specific actions be taken by the defendant (such as the disablement of DVR functionality).

Judge Folsom's finding of merely colorable difference between the Infringing Products and the modified products means that we will never know exactly how the Judge would have justified Prima Facia contempt violation, but I think he tipped his hand in the Memorandum. I don't think that the Appeals Court will even bother addressing the "Even If" statement regarding prima facia contempt because the colorable difference ruling makes it a moot question.

It's not surprising to me that the CAFC took the appeal. Even Judge Folsom noted that there were questions of law to settle such as: 


> There is some question, however, as to whether a clear and convincing burden applies to both
> steps of the KSM test. EchoStar argues that it does (Dkt. No. 919 at 17-19), while TiVo argues that the heightened burden applies only to step two, infringement by the modified device (Dkt. No. 920
> at 27-29).


 The critical question now is whether or not the Appeals Court will lift or continue the temporary stay now in place. I believe that they will continue it based on the balance of harms and the public interest. Shutting down DVR functionality in "*up to*" (there are those darn wiggle words again  ) Six Million homes is a pretty Draconian measure which would certainly be shocking for DISH and its customers. 
On the other hand, Judge Folsom has repeatedly written that TiVo is the party which has suffered more in the balance of harms math.

It's coming to a head very soon. Charlie Ergen is a high stakes gambler. It looks like he's going to play his hand to the bitter end whatever the risk.


----------



## phrelin

peak_reception said:


> The critical question now is whether or not the Appeals Court will lift or continue the temporary stay now in place. I believe that they will continue it based on the balance of harms and the public interest. Shutting down DVR functionality in "*up to*" (there are those darn wiggle words again  ) Six Million homes is a pretty Draconian measure which would certainly be shocking for DISH and its customers.
> 
> On the other hand, Judge Folsom has repeatedly written that TiVo is the party which has suffered more in the balance of harms math.


This is, in the end, a curious question in my mind. We don't know how many listed functional DVR's remain in service. It is very clear from threads here that many have been replaced. And what's so Draconian about shutting down only the recording function on the remainng listed DVR's? It might be shocking for customers who don't pay much attention to these things. But it certainly wouldn't be shocking for Dish except financially.


----------



## peak_reception

phrelin said:


> This is, in the end, a curious question in my mind. We don't know how many listed functional DVR's remain in service. It is very clear from threads here that many have been replaced.


 I agree that the six million figure is surely exaggerated. DISH even claims _more than_ six million, not the _up to_ six million that I mistakenly recalled. Here's the quote:


> Yesterday, the district court granted TiVo's motion, ordering EchoStar to stop
> distributing its redesigned DVRs and to disable within 30 days more than six
> million redesigned DVRs that have been placed in homes


 _More than_ six million redesigned DVRs. Highly doubtful. The ViPs are not subject to disablement. That's the only way I see them reaching and exceeding such a number. 


> And what's so Draconian about shutting down only the recording function on the remainng listed DVR's?


 Well, it would be for customers like me. I would immediately switch providers in such an event. Others would be less affected. Some might not even notice or care. Impossible to say how many fall into which category. 


> It might be shocking for customers who don't pay much attention to these things. But it certainly wouldn't be shocking for Dish except financially.


 The financial shock to DISH is the one they stressed at the last appeal to CAFC. I'll dig up the relevant quotes and post them.


----------



## peak_reception

Ok, here is the harm described in the most recent motion for emergency stay from this June 3rd:


> The harm to EchoStar from denying a stay would be considerable. The
> injunction affects more than 6 million EchoStar DVRs and 12 million people. Ex.
> 7 (Tr. 2/18/09) at 154. Without being able to offer DVR service to these and
> potential future customers, EchoStar would lose an untold number of them and
> hundreds of millions of dollars per month. Id. at 128-3l. Customers lost would be
> unlikely ever to return, so prevailing in this appeal would do little to reverse
> EchoStar's losses. Ex. 27 (Martin Dec!.) at 3-4. Clearly, the injunction would
> gravely and irreparably harm EchoStar.


 Not nearly as dire as the descriptions given by DISH the last go round with CAFC [I'll post that next].

As if saving some thunder for reply to TiVo, here is DISH's enhanced description of harm just submitted [Reply in Support of EchoStar's Motion...June 15, 2009]: 


> More than _12 million_(italics in document) people --a population about the size of Maryland and Virginia combined --would lose service


 I don't think the CAFC Judges need such help with what the number 12 million means but it certainly could add color and dimension for other readers.


----------



## phrelin

peak_reception said:


> And what's so Draconian about shutting down only the recording function on the remainng listed DVR's?
> 
> 
> 
> Well, it would be for customers like me. I would immediately switch providers in such an event. Others would be less affected. Some might not even notice or care. Impossible to say how many fall into which category.
Click to expand...

If Dish wanted to keep you happy, would you be ok if they sent, along with your official notice that your listed DVR was going to be disabled, a ViP612 or ViP722 via UPS? They could even offer to upgrade your Classic package to HD for free with no monthly increase for say six months, thus bringing those customers into the HD fold.

In other words, they could pretend they might actually lose this case and anticipate the best way to handle customers. If they were to lose customers, it would be because Charlie is so focused on "you can't do that to me" lawsuits that he forgot he was in the retail service business.


----------



## tnsprin

phrelin said:


> If Dish wanted to keep you happy, would you be ok if they sent, along with your official notice that your listed DVR was going to be disabled, a ViP612 or ViP722 via UPS? They could even offer to upgrade your Classic package to HD for free with no monthly increase for say six months, thus bringing those customers into the HD fold.
> 
> In other words, they could pretend they might actually lose this case and anticipate the best way to handle customers. If they were to lose customers, it would be because Charlie is so focused on "you can't do that to me" lawsuits that he forgot he was in the retail service business.


After, and assuming, Tivo gets Dish successfully to turn off the dvrs mentioned by name in the first court order and if Dish then doesn't get an agreement with them, you can bet that Tivo will go after the VIP DVR's as well. Some think they wouldn't even have to go for a new trial but could get them delared as not colorable different.

If the DVR's stay off you can bet that perhaps as many as 1/3 of the customers will seriously look at leaving.


----------



## space86

I would not mind losing my DVR function for a few months, Dish Network
would no doubt give me free HBO for the inconvenience.


----------



## audiomaster

I wonder if Charlie would be kind enough to warn us in advance that theDVRs were going down so we could transfer our recordings to DVD or VHS? Or is he just going to pull the plug overnight?


----------



## toad57

space86 said:


> I would not mind losing my DVR function for a few months, Dish Network
> would no doubt give me free HBO for the inconvenience.


Pffft.

Years ago, I had a serious falling out with Dish and switched to DirecTV. A few months later, I received my compensation for being a party in a class action lawsuit against Dish because of their "seriously buggy" original Dishplayer model 7100/7200. My "compensation" for having endured that crappy DVR? Coupons for free HBO! Gee, I wonder if DirectTV will honor these... NOT!

Do you suppose Dish/Charlie pays his lawyers with free HBO like he does with his customers when he hoses them over? :sure:


----------



## HobbyTalk

toad57 said:


> Pffft.
> 
> Years ago, I had a serious falling out with Dish and switched to DirecTV. A few months later, I received my compensation for being a party in a class action lawsuit against Dish because of their "seriously buggy" original Dishplayer model 7100/7200. My "compensation" for having endured that crappy DVR? Coupons for free HBO! Gee, I wonder if DirectTV will honor these... NOT!
> 
> Do you suppose Dish/Charlie pays his lawyers with free HBO like he does with his customers when he hoses them over? :sure:


Blame the lawyers and not Dish on this one. They are the ones that agreed to that compensation. Customers almost always come out on the losing end in a class action suit. The lawyers almost always win with a big settlement to cover their "fees".


----------



## peak_reception

phrelin said:


> If Dish wanted to keep you happy, would you be ok if they sent, along with your official notice that your listed DVR was going to be disabled, a ViP612 or ViP722 via UPS?


 You've got a good point there. Yes, that would make me happy, but only if they shipped the replacement to me before I had to send back the disabled model.


> They could even offer to upgrade your Classic package to HD for free with no monthly increase for say six months, thus bringing those customers into the HD fold.


 Hmmm, or add the Big Ten Network to my HD Absolute (or other choice of RSN)? Yes, that might keep me around. Ok, you win. It would be expensive for DISH but they could probably keep most customers who lose DVR functionality on the Infringing Products by bribing them to stay with upgrades and add-ons.



> In other words, they could pretend they might actually lose this case and anticipate the best way to handle customers. If they were to lose customers, it would be because Charlie is so focused on "you can't do that to me" lawsuits that he forgot he was in the retail service business.


 Phrelin, you should be on the board of directors. Someone needs to tell truth to power there. It's always seemed to me that Charlie is surrounded by sycophantic yes men who are afraid to disagree with him.

Remember when Ronald Reagan went to Berlin and said "Mr. Gorbachev, Tear Down This Wall." Someone needs to get into Charlie's face and say: "Mr. Ergen, End This Litigation." :grin:

p.s. I realize that if I have HD Absolute then I don't have one of the Infringing Products, was just making the point about compensation for loss of feature(s).


----------



## scooper

phrelin said:


> If Dish wanted to keep you happy, would you be ok if they sent, along with your official notice that your listed DVR was going to be disabled, a ViP612 or ViP722 via UPS? They could even offer to upgrade your Classic package to HD for free with no monthly increase for say six months, thus bringing those customers into the HD fold.
> 
> In other words, they could pretend they might actually lose this case and anticipate the best way to handle customers. If they were to lose customers, it would be because Charlie is so focused on "you can't do that to me" lawsuits that he forgot he was in the retail service business.


If I was getting that notice - send me a 722K to replace and I'd be satisfied. Throw in the HD access free to go along with my Classic silver (AT200) for 6-12 months and I'd be happy.

And then settle the suit. Somehow.


----------



## Herdfan

Bloomberg article on with the victory in hand TiVo wants to muscle its way into living rooms:



> June 22 (Bloomberg) -- TiVo Inc., armed with a federal court ruling backing the company's digital-recording patent, plans to elbow its way onto every U.S. pay-television system to attract millions of new subscribers.
> 
> The Alviso, California-based DVR pioneer is in talks with pay-TV providers to sell its recording and playback service to more of the industry's 103 million U.S. customers or license its technology, according to two people with knowledge of the plans.


Read rest of article here.


----------



## Gene Steinberg

Exactly. If Dish doesn't win the next battle, they will license or buy the company outright. Negotiations may even be proceeding behind the scenes. 

Peace,
Gene


----------



## Ken984

Dish should license the technology and get on with other things.

Dish does not have enough money to buy Tivo, go back a few pages and read about the poison pill that Tivo has in place for putting a stop to takeover attempts.



Gene Steinberg said:


> Exactly. If Dish doesn't win the next battle, they will license or buy the company outright. Negotiations may even be proceeding behind the scenes.
> 
> Peace,
> Gene


----------



## Gene Steinberg

This assumes a hostile takeover. Remember, that all TiVO really has left in terms of income potential is licensing, and the only reason they showed a profit in the recent quarter was the result of a payment from Dish.

Peace,
Gene


----------



## Ken984

But you also must remember that Tivo has 0 debt, and what I am sure is a huge problem with Dish and Charlie in particular, so I doubt they would be interested in having him run the show at any price. There are much more likely partners if they should choose to go that way.



Gene Steinberg said:


> This assumes a hostile takeover. Remember, that all TiVO really has left in terms of income potential is licensing, and the only reason they showed a profit in the recent quarter was the result of a payment from Dish.
> 
> Peace,
> Gene


----------



## Badger

Gene Steinberg said:


> Exactly. If Dish doesn't win the next battle, they will license or buy the company outright. Negotiations may even be proceeding behind the scenes.
> 
> Peace,
> Gene


IF (BIG IF!) Tivo went up for sale I have no doubt that Direct would outbid Dish whatever the cost. Direct already holds several patents jointly with Tivo since they bought out Replay and maybe would just go into partnership with Tivo instead of buying them out! They already have agreements with Tivo. If Tivo wanted to sell who do you think thay would talk to first, D* that has a working relation with them or E* who has been sticking it to them ?


----------



## Rick6597

When you get a DVR or any other IRD, isn't part of the "Terms of Use" that the firmware not be reverse engineered. How did TIVO find out the named DVRs were infringing? Wouldn't they have had to reverse engineer the firmware?

Just a thought.


----------



## Curtis52

Rick6597 said:


> When you get a DVR or any other IRD, isn't part of the "Terms of Use" that the firmware not be reverse engineered. How did TIVO find out the named DVRs were infringing? Wouldn't they have had to reverse engineer the firmware?
> 
> Just a thought.


It doesn't matter how. The jury determined there was infringement. The appeals court agreed. The Supreme Court decided not to get involved..


----------



## CuriousMark

Rick6597 said:


> When you get a DVR or any other IRD, isn't part of the "Terms of Use" that the firmware not be reverse engineered. How did TIVO find out the named DVRs were infringing? Wouldn't they have had to reverse engineer the firmware?


In the discovery process Dish had to provide the details of their firmware design and code to TiVo's Lawyers and experts.


----------



## tnsprin

CuriousMark said:


> In the discovery process Dish had to provide the details of their firmware design and code to TiVo's Lawyers and experts.


The decision wan never made on the basis of whether they actually "Stole" the code or not.

It was made on the basis that they duplicated the "patented" process. It is quite possible that just following the basic process inherent in the Broadcom chip used that they would have to come to a design that infringed on Tivo's patent. The receiver Tivo left might never have been used for nothing more than knowing it could be done, or it could have been the subject of exteme reverse engineering. Remember that Dish was already working on developing a similar receiver. We will probably never know.

Remember that dish licensed several basic patents in this area and has some patents of its own. Trouble is they don't have rights to the Tivo patent. A serious problem as they are moving foward to even more advanced DVR's such as the 922.


----------



## lokidan

Is the temporary stay granted by the Washington appeals court (June 3, 2009) in effect until the appeal court has handed down a final decision in this case ? ...

_Or_ is this stay only in effect until the appeals court has decided _to hear _the case ?

I thought that the stay was an indication that the appeals court would also grant an appeal to hear the case, but now I'm not sure.

When _is_ a decision by the appeals court to hear this case expected ?
Is it imminent or a few months off ?

When does this _stay of the injunction _finally expire ?

I'm sorry to ask such a question, but I've been looking through this and other similar threads with no luck in finding a response.
I hope this doesn't seem too obvious.

Thank you for any help in advance.


----------



## Curtis52

The stay is in effect until the appeals court rescinds it. They can do whatever they want.


----------



## phrelin

I think we are still at this point:


> The U.S. Court of Appeals temporarily stayed the District Court's ruling pending the Court's consideration of TiVo's response to EchoStar's motion for stay pending appeal.


But, I just realized I have no idea what that means in terms of a time frame.


----------



## Greg Bimson

Simple test, really...

The Court of Appeals will most likely take the case. The only question in front of the Court of Appeals therefore would be whether or not to stay the injunction during the course of the appeal.

That time frame is probably within a month.

And the sanctions hearing in front of Judge Folsom is in July as well.

So there will be news.


----------



## phrelin

Any thoughts on a time frame for the Delaware Case?


----------



## phrelin

There is a separate discussion of this here, but From the Wall Street Journal:


> The U.S. Supreme Court refused Monday to consider a legal challenge by television networks and Hollywood studios to Cablevision Systems Corp.'s (CVC) next-generation digital video recorder, clearing the way for the cable company to offer the new service this year.
> 
> ...Cablevision's service would allow customers to record and store television shows on central computer servers maintained by Cablevision instead of having to record them on expensive DVR cable boxes installed in their homes.


This, of course, has significant implications for TiVo's business model. The average customer doesn't want a DVR to mess with if nearly the same results are available without one. Virtually every cable company could do this. And they will because it will eliminate service calls.

Whether they can do this without violating the TiVo patents I suppose is problematic given Folsom's interpretation, but he constrained his definitions within the framework of Echostar having not challenged certain definitions during the case.

Without cable companies, TiVo is left with the two satellite providers and OTA viewers. It will put much more at stake in the results of the Delaware case.

Whatever, TiVo has a big PR problem that makes the Echostar case look like small potatoes.


----------



## TheGrove

phrelin said:


> Any thoughts on a time frame for the Delaware Case?


I thought I read something here where that case was moved to Texas.

Or are you wondering when Texas is going to get around to dealing with the case from Delaware?


----------



## phrelin

TheGrove said:


> I thought I read something here where that case was moved to Texas.
> 
> Or are you wondering when Texas is going to get around to dealing with the case from Delaware?


The latter particularly in light of the Cablevision decision mentioned above.


----------



## Curtis52

phrelin said:


> Any thoughts on a time frame for the Delaware Case?


It has been stayed pending dish's appeal in the contempt case.


----------



## david_jr

phrelin said:


> Without cable companies, TiVo is left with the two satellite providers and OTA viewers. It will put much more at stake in the results of the Delaware case.
> 
> Whatever, TiVo has a big PR problem that makes the Echostar case look like small potatoes.


Well right now Echostar seems to be thier biggest source of income, albeit, not from agreements, but from judgements. If the appeal goes Tivo's way they should be set for a while. They really had no other significant customer base anyway due to their equipment and service being overpriced for the mass market. With agreements with D* and forced agreements with E* I think they will be ok. Their future (most likely already planned) lawsuits against cablecos may be in significant jeopardy now.


----------



## Greg Bimson

phrelin said:


> Any thoughts on a time frame for the Delaware Case?


Sure. Not until the Court of Appeals remands the case back to Judge Folsom. The EchoStar v. TiVo case is stayed and will be stayed indefinitely, as there is no sense in proceeding when this case was simply filed to subvert the actions regarding the motion for contempt in Judge Folsom's court.

This Cablevision "centralized DVR" thing will be a while, and it could be quite expensive for Cablevision to implement. The devil is in the details.


----------



## CuriousMark

phrelin said:


> There is a separate discussion of this here, but From the Wall Street Journal: This, of course, has significant implications for TiVo's business model. The average customer doesn't want a DVR to mess with if nearly the same results are available without one. Virtually every cable company could do this. And they will because it will eliminate service calls.


They can do it with or without TiVo providing the user facing interface and the office facing advertising and audience measurement tools TiVo can provide.

So depending on how they position their offering, it could even be a TiVo offering if they choose to contract with TiVo to provide some of the necessary software. As such, I see it as a business opportunity for TiVo to try to sell their services to the MSOs.



> Whether they can do this without violating the TiVo patents I suppose is problematic given Folsom's interpretation, but he constrained his definitions within the framework of Echostar having not challenged certain definitions during the case.


Perhaps TiVo could leverage that fear into a better bargaining position when they go to the MSO to sell their wares, but even if not, TiVo needs these customers and will need to offer a price the MSOs are willing to consider.



> Without cable companies, TiVo is left with the two satellite providers and OTA viewers. It will put much more at stake in the results of the Delaware case.


TiVo has Comcast and Cox, they probably won't loose them even if they both implement a network DVR. I expect such a DVR would just be TiVo branded and help Comcast market it. I expect TiVo would want Standalone DVRs available from the MSOs as a luxury option for those willing to pay extra.



> Whatever, TiVo has a big PR problem that makes the Echostar case look like small potatoes.


Yes, too many are spinning this as being really bad for TiVo. It might be, or it might just be a new opportunity. In any event, TiVo will always have to live in a world of competition.


----------



## Herdfan

Greg Bimson said:


> The Court of Appeals will most likely take the case.


Just curious as to why you think that. Is there any "new" issue that the CAFC did not cover the last time. After all, all he really did was enforce the injunction that they left alone the last time the case was there.



david_jr said:


> Their future (most likely already planned) lawsuits against cablecos may be in significant jeopardy now.


They may have many years of past infringement to collect on. Plus as Greg noted, deploying a central DVR on a large scale may not be as easy as planned. Also, Cablevision has a relatively small footprint as compared to a Comcast or TW so while it may work for CV and its densely populated service areas, it may not work for others.


----------



## Curtis52

Herdfan said:


> Just curious as to why you think that. Is there any "new" issue that the CAFC did not cover the last time. After all, all he really did was enforce the injunction that they left alone the last time the case was there.


Well, a procedural error is justification for an appeal. There was a jury trial on the infringement issue the first time so the subject of whether there should have been a jury trial never came up at the first appeal.

Dish:


> There Are Substantial Infringement Disputes That Can Only Be Resolved in a Trial


----------



## HobbyTalk

I read a piece a couple of years ago about the huge savings a networked dvr would have over stand alone dvr's. Not only in the cost of a basically dumb box over the cost of a high priced DVR, but the maintenance, periodic upgrades and saved service calls. Much of the basic software and infrastructure is already in place since most MSO's currently have PPV.

If I remember correctly it was figured that the combined savings and extra income (want more storage? Only $1 per 5 Gig extra a month, thank you very much) could easily equal $400 a year. Wish I knew where I read that article.


----------



## CuriousMark

Herdfan said:


> Plus as Greg noted, deploying a central DVR on a large scale may not be as easy as planned. Also, Cablevision has a relatively small footprint as compared to a Comcast or TW so while it may work for CV and its densely populated service areas, it may not work for others.


Doesn't a densely populated service area work against the network DVR? If lots and lots of people on a given node want to watch something pre-recorded during prime time, the node could run out of bandwidth to service them all. Maybe CV has lots and lots of small nodes and that works in their favor. Whatever it is, how well it works is definitely going to be sensitive to the architecture of the cable plant.


----------



## Tom Robertson

CuriousMark said:


> Doesn't a densely populated service area work against the network DVR? If lots and lots of people on a given node want to watch something pre-recorded during prime time, the node could run out of bandwidth to service them all. Maybe CV has lots and lots of small nodes and that works in their favor. Whatever it is, how well it works is definitely going to be sensitive to the architecture of the cable plant.


Bingo 

In some areas, cable companies at least have fibre to the distribution nodes, so can run higher bandwidth to the node and do some video switching locally.

Some will be running IP, perhaps.

And I'd like to compare picture quality... 

Cheers,
Tom


----------



## Greg Bimson

Greg Bimson said:


> The Court of Appeals will most likely take the case.





Herdfan said:


> Just curious as to why you think that. Is there any "new" issue that the CAFC did not cover the last time. After all, all he really did was enforce the injunction that they left alone the last time the case was there.





Curtis52 said:


> Well, a procedural error is justification for an appeal. There was a jury trial on the infringement issue the first time so the subject of whether there should have been a jury trial never came up at the first appeal.


Well, precisely!

Technically, the only real procedural issue is how Judge Folsom found that the modifications made to the eight models of DVR still allow those DVR's to infringe AND do so in a merely colorably different way.

Just because upon appeal DISH/SATS needs to paint the picture that TiVo's arguments were somehow different at trial than during the bench hearing doesn't mean there were any differences. Even Judge Folsom's memorandum points to the fact that the arguments during the trial were taken into consideration and that there were only colorable differences with respect to the patent claims, another evaluation that DISH/SATS mentions wasn't performed.

It is my belief the Court of Appeals will want to find a way to set a precedent. Upholding both a finding of contempt for violations of an injunction on its face and violations of an injunction against ongoing infringement would be a great way for the Court of Appeals once and for all rule and create case law for any field-modifiable devices which have been found to infringe.


----------



## Herdfan

Greg Bimson said:


> Technically, the only real procedural issue is how Judge Folsom found that the modifications made to the eight models of DVR still allow those DVR's to infringe AND do so in a merely colorably different way.


I get that part, but didn't he also rule that DISH never followed the original injunction, the one the CAGC left alone, and he was going to enforce that and the non-colorably difference was just "extra"?



> would be a great way for the Court of Appeals once and for all rule and create case law for any field-modifiable devices which have been found to infringe.


With field-modifiable devices becoming more common, this is probably a good thing for the court to address. However, it just keeps this going for another couple of years.


----------



## Herdfan

CuriousMark said:


> Doesn't a densely populated service area work against the network DVR? If lots and lots of people on a given node want to watch something pre-recorded during prime time, the node could run out of bandwidth to service them all.


If they can easily deploy Switched Digital Video, then a networked DVR would just be an extention of that, especially if they have fiber to the node.

My thoughts on the density are related to the distance from each customer, to the node. In someplace like NYC or LI, that distance would be much shorter that someplace like Orlando FL where the population is spread out. In NYC a customer may only be a mile from the node, where in Orlando, they may be 15 miles from the node. Talk about a non-responsive DVR.


----------



## Curtis52

Herdfan said:


> I get that part, but didn't he also rule that DISH never followed the original injunction, the one the CAGC left alone, and he was going to enforce that and the non-colorably difference was just "extra"?


That's another thing that wasn't covered at the first appeal: the question of whether the injunction allowed a work around.


----------



## Greg Bimson

Herdfan said:


> I get that part, but didn't he also rule that DISH never followed the original injunction, the one the CAGC left alone, and he was going to enforce that and the non-colorably difference was just "extra"?





Curtis52 said:


> That's another thing that wasn't covered at the first appeal: the question of whether the injunction allowed a work around.


It was covered.

A large number of devices placed with an end user were found to infringe, and the order was to disable all but 192,708 of them. DISH/SATS could have modified the DVR functionality 300,000 times, but once the injunction became active, the last action would be to follow the order, i.e., disable them.

If DISH/SATS had wanted relief from the disable order, they should have asked for it. Until they received relief, they should have complied with the order: disable all but 192,708 DVR's found infringing with end users as of September, 2006.

Any other action or inaction than the one ordered would be simply contempt of the court's order.


----------



## CuriousMark

Herdfan said:


> If they can easily deploy Switched Digital Video, then a networked DVR would just be an extension of that, especially if they have fiber to the node.
> 
> My thoughts on the density are related to the distance from each customer, to the node. In someplace like NYC or LI, that distance would be much shorter that someplace like Orlando FL where the population is spread out. In NYC a customer may only be a mile from the node, where in Orlando, they may be 15 miles from the node. Talk about a non-responsive DVR.


Yes, but even SDV runs out of bandwidth if it is heavily used. It relies on statistics to a certain degree, the assumption that not everyone wants to use it at the same time.

You are right that lower latency will help a lot. For transport controls, I think it is the distance to the head end that counts not the node, but your point is well taken. The processing speed of the equipment is still likely to have more effect on the responsiveness than distance. When the headend is only 10s of miles away, distance delays are nearly nothing.


----------



## tsmacro

Just received the following from Dish:

DISH Network and EchoStar Statement Regarding Tivo





ENGLEWOOD, Colo., July 1, 2009 /PRNewswire-FirstCall via COMTEX News Network/ -- DISH Network Corporation (Nasdaq: DISH) and EchoStar Corporation (Nasdaq: SATS) issued the following statement regarding today's ruling in EchoStar Communications Corporation vs. Tivo: 

We are pleased that the Federal Circuit has blocked the district court's injunction pending our appeal. The Federal Circuit found that EchoStar "met its burden of demonstrating the requisites for a stay," including, at a minimum, that we have a substantial case on the merits. As a result of the stay, our customers can continue using their DISH DVRs.


----------



## phrelin

Hmmm. Combined with this from Barron's earlier this week, I'd expect a drop in TiVo shares tomorrow:


> TiVo (TIVO) shares are coming under pressure following today's Supreme Court ruling that will allow Cablevision (CVC) and other cable operators to offer network DVR service, allowing consumers to record programs on centralized servers, rather than on set-top box hard drives.


As I said before:


phrelin said:


> Yes. Now we have plenty of time to go for 2000 posts in one thread.


----------



## Curtis52

I guess the CAFC decided they hadn't previously ruled on whether the disable order covered non-infringing DVRs after all. They are going to slap Folsom hard with a copy of the KSM decision. If he hadn't thumbed his nose at the CAFC with that gratuitous statement they might have denied the stay.


----------



## WebTraveler

Curtis52 said:


> I guess the CAFC decided they hadn't previously ruled on whether the disable order covered non-infringing DVRs after all. They are going to slap Folsom hard with a copy of the KSM decision. If he hadn't thumbed his nose at the CAFC with that gratuitous statement they might have denied the stay.


Huh? The fact that the stay has been extended doesn't mean Judge Folsom is being slapped at all. You might want to understand what the role of an appeals court is and an extension of a stay. Also note that the court sped up a hearing on the full issue to it's November calendar as opposed to 2010. This means they intend to resolve this controversy in a more quickly than the normal process. That could mean a lot of things, but I hardly believe that means Judge Folsom is being slapped.

My gut is that they want to see if the recent Supreme Court decision in the Cablevision case offers them any guidance on this issue, although it probably doesn't. This will give the panel a chance to read it. But the move up to the November calendar means they want to put an end to all of this, which is good.


----------



## Curtis52

WebTraveler said:


> Huh? The fact that the stay has been extended doesn't mean Judge Folsom is being slapped at all.


No one said it did. It's a matter of tense.


----------



## Greg Bimson

Curtis52 said:


> I guess the CAFC decided they hadn't previously ruled on whether the disable order covered non-infringing DVRs after all. They are going to slap Folsom hard with a copy of the KSM decision. If he hadn't thumbed his nose at the CAFC with that gratuitous statement they might have denied the stay.


It isn't as if DISH/SATS used every single trick in the book in their brief to the Court of Appeals. There are arguments there that were never brought up to Judge Folsom; there are misrepresentations about what transpired once the motion was filed and history was revised quite a few times in two briefs.

This will be interesting.


----------



## deaincaelo

It does seem to my pocket-protected heart that there are two mutually exclusive things held to be true.

The redacted dish testimony (supported by tivo) seems to say that parsing is in the pid filter.

There was a quote from the inventor that it's a different type of parse. They also said you can build a dvr without tivo. 

Tivo seems like a person with a tool bridge in a national park. You can cross the river without paying the toll, but you can't go over the bridge without paying the toll, or under it or around it or above it. You can't swim the river without paying the toll, or dig a tunnel under it, or jump it. Somethign's got to give, and eveyone seems to be betting it's echostar, whose curently trying to wade under tivo's bridge. You don't need tivo to build a dvr. . . You just need them if you want to pause or record tv. 

legally, will the appeals court say that in parse buffer parse buffer store is the same as in parse buffer store? What about in parse parse buffer buffer store? what weight does the testomony, as his own lexographer, affect in the terms of the case? What about the don't need tivo to dvr satement? 

estoppel seems hard to prove. But if it is the case, and there can be extra judiciary bias shown, it seems a pretty solid defense. but the law has no responsibility to reality it seems. Hopefully echostar will gain some ground though- competition is in everyones best interest. Giving any company a legal monopoly on pre-existing technology is not.


----------



## Greg Bimson

Curtis52 said:


> I guess the CAFC decided they hadn't previously ruled on whether the disable order covered non-infringing DVRs after all. They are going to slap Folsom hard with a copy of the KSM decision.


Now that I think about this...

Judge Folsom relied heavily on KSM regarding the continuing manufacture and sale of infringing devices; it is scattered throughout the first 75 percent of his opinion finding contempt. Judge Folsom evaluated that the devices are merely colorably different and still infringe (the KSM test), even if DISH/SATS doesn't believe the test was applied. DISH/SATS even mentions the lack of the KSM evaluation within their brief to the Court of Appeals.


----------



## Herdfan

deaincaelo said:


> Itlegally, will the appeals court say that in parse buffer parse buffer store is the same as in parse buffer store? What about in parse parse buffer buffer store?


Would these not be questions of fact and only for a jury to decide?


----------



## Greg Bimson

deaincaelo said:


> Itlegally, will the appeals court say that in parse buffer parse buffer store is the same as in parse buffer store? What about in parse parse buffer buffer store?





Herdfan said:


> Would these not be questions of fact and only for a jury to decide?


Not at all.

The reality is TiVo, during the jury trial, had to present evidence of infringement on both the Hardware and Software Claims. With the Hardware Claims reversed and remanded, the only issue is what was modified with respect to the Software Claims. DISH/SATS only provided the court with changes they believe affected two elements, and TiVo simply had to provide evidence that the changes made were insubstantial with respect to those two claim elements.

All this talk of:
parse buffer parse buffer store
parse buffer store
parse parse buffer buffer store

is immaterial to the conversation. The issue is if the receiver still infringes upon the Software Claims in practically the same manner as before. The Software Claims look a lot like "parse buffer store", which is not really different that "parse buffer parse buffer store", especially when the latter was used to originally find infringement of the Hardware Claims.

So DISH/SATS removed a "parser", but it was the one that built the index table on the Hardware Claims. So DISH/SATS removed a buffer, but it was to remove a redundancy before copying data into the same circular buffer that was used to self-regulate the data flow.

Nothing's really changed when it comes to the Software Claims.


----------



## WebTraveler

Curtis52 said:


> No one said it did. It's a matter of tense.


You said it. You may have met something else.....but you did say it


----------



## phrelin

WebTraveler said:


> Also note that the court sped up a hearing on the full issue to it's November calendar as opposed to 2010. This means they intend to resolve this controversy in a more quickly than the normal process.
> 
> My gut is that they want to see if the recent Supreme Court decision in the Cablevision case offers them any guidance on this issue, although it probably doesn't. This will give the panel a chance to read it. But the move up to the November calendar means they want to put an end to all of this, which is good.


So fundamentally, we could know by as early as 2010 the outcome of this five-year legal drama. Ah, speedy justice....

I don't think there is anything in the Cablevision case that relates to the actual data processing algorithms used in a DVR system as it was a media copyright lawsuit. The case is as notable for what it doesn't resolve. A good review can be found in this LA Times story.

But there is some interesting related case law involved in this appeal.


Greg Bimson said:


> Now that I think about this...
> 
> Judge Folsom relied heavily on KSM regarding the continuing manufacture and sale of infringing devices; it is scattered throughout the first 75 percent of his opinion finding contempt. Judge Folsom evaluated that the devices are merely colorably different and still infringe (the KSM test), even if DISH/SATS doesn't believe the test was applied. DISH/SATS even mentions the lack of the KSM evaluation within their brief to the Court of Appeals.


I'm inclined to believe that we may actually see some patent case law evolve here as Folsom placed KSM in the forefront of the discussion.

But it likely won't help decide when a DVR process doesn't violate TiVo's patents. More interestingly, Echostar has applied for patents related to its processes. If Echostar were to be granted a patent or two, I'm not sure that Cablevision or anyone could ever design something that would not trip over a patent.


----------



## phrelin

From MarketWatch this morning:


> "We are confident that the District Court judge's thorough and well-reasoned decision finding EchoStar in contempt of court for violating the injunction and awarding further damages will be upheld once the Federal Circuit has the opportunity to review the merits of the case," TiVo said in a statement.


Of course, when I just now checked, TiVo stock was down 14% in a market generally around 2% down.


----------



## jacmyoung

WebTraveler said:


> You said it. You may have met something else.....but you did say it


I agree with Curtis, Judge Folsom thumbed his nose at the appeals court. He not only had shown his lack of understanding of KSM, but the most damaging part was he told E*, he could find E* in contempt based on the "local rules" not KSM.

Contrary to some insisted, Judge Folsom did not rely on KSM when finding E* in contempt, he said his "local rules" trumped the appeals court standard.


----------



## jacmyoung

phrelin said:


> ...If Echostar were to be granted a patent or two, I'm not sure that Cablevision or anyone could ever design something that would not trip over a patent.


As far as the Cablevision centralized DVR system, there is no way such system can infringe on TiVo's patent or the E*'s patent if it is approved. Because the patent law says for a patent to be valid, it must describe the invention in such detail that a person of ordinary skill in the field of the invention must be able to read it and duplicate such invention without undue experimentation.

The question is, can a person of ordinary skill in the DVR field read TiVo's patent then duplicate the invention in a way described by Cablevision's DVR system without undue experimention?


----------



## phrelin

jacmyoung said:


> I agree with Curtis, Judge Folsom thumbed his nose at the appeals court. He not only had shown his lack of understanding of KSM, but the most damaging part was he told E*, he could find E* in contempt based on the "local rules" not KSM.
> 
> Contrary to some insisted, Judge Folsom did not rely on KSM when finding E* in contempt, he said his "local rules" trumped the appeals court standard.


Yes, but I think he was very subtle about it, suggesting that how he views KSM in the context of this case would be the logical way to approach the enforcement problem.

The problem as I see it begins with the jury decision. The appeals court let the software part of the jury decision stand on its own. Therefore that jury decision has to be enforced with some teeth. Otherwise throw out the whole concept of enforcement. These things have become simply contests of wallet size and if it were TiVo v GE, neither TiVo nor the courts would, or could, be an irritating gnat. There is no justice in "just pay some money if you keep on conducting business as usual."

If the trial court can't even embarrass the trial loser, Echostar, what's the point? And the only way to embarrass the loser here is to make them turn the DVR function off on the listed boxes. Money alone doesn't cut it.

Not that I think the system works anyway....


----------



## phrelin

jacmyoung said:


> As far as the Cablevision centralized DVR system, there is no way such system can infringe on TiVo's patent or the E*'s patent if it is approved. Because the patent law says for a patent to be valid, it must describe the invention in such detail that a person of ordinary skill in the field of the invention must be able to read it and duplicate such invention without undue experimentation.
> 
> The question is, can a person of ordinary skill in the DVR field read TiVo's patent then duplicate the invention in a way described by Cablevision's DVR system without undue experimention?


_Undue_. In this situation, I have no idea what that would mean to a jury. I don't even know what it would mean to me.


----------



## jacmyoung

phrelin said:


> _Undue_. In this situation, I have no idea what that would mean to a jury. I don't even know what it would mean to me.


If the jury cannot understand the meaning of the law, it will be up to the judge to explain to them. Failing that, the jury still may not return an infringement verdict, because the law requires that the evidence must clearly point to a likelihood of infringement more so than not. Without an answer, reasonable minds may not render an infringement verdict.

But even if they do, the verdict can easily be challenged on appeal, because the judge failed to do his job with his jury instructions. This was in part how the hardware claim verdicts were overturned on appeal in this case.


----------



## jacmyoung

phrelin said:


> Yes, but I think he was very subtle about it, ...


On that point he wasn't subtle at all, he told E* he did not have to apply KSM, the local rules were good enough.


----------



## scooper

phrelin said:


> The problem as I see it begins with the jury decision. The appeals court let the software part of the jury decision stand on its own. Therefore that jury decision has to be enforced with some teeth. Otherwise throw out the whole concept of enforcement. These things have become simply contests of wallet size and if it were TiVo v GE, neither TiVo nor the courts would, or could, be an irritating gnat. There is no justice in "just pay some money if you keep on conducting business as usual."
> 
> If the trial court can't even embarrass the trial loser, Echostar, what's the point? And the only way to embarrass the loser here is to make them turn the DVR function off on the listed boxes. Money alone doesn't cut it.
> 
> Not that I think the system works anyway....


What can the courts do if the infringer has decided that this court case is "just a cost of doing business " and won't shut them down any way , even with a direct judge's order to do so ?

Short of sending in armed US Marshals to Echostar's NOC to force them to send such a command, WHAT CAN THE COURT DO ?


----------



## phrelin

jacmyoung said:


> On that point he wasn't subtle at all, he told E* he did not have to apply KSM, the local rules were good enough.


 Hmmm. Well, we didn't read the same memoradum. The one I read begins with the following on page 1:


> This opinion will begin by discussing the background and procedural history of this case, which is both lengthy and complex. What follows is a brief discussion of the basic legal principles for contempt proceedings in patent cases. Specifically, this Court will outline the Federal Circuit's seminal case, _KSM Fastening Systems, Inc. v. H.A. Jones Company, Inc._, 776 F.2d 1522 (Fed. Cir. 1985), and also address the relevance of particular evidence and the movant's burden of proof.


Beginning on page 9 and ending on page 15 he offers an extensive analysis of his take on _KSM_ in context with other precedents. Then he goes on for several pages until we get to the top of page 20 where he says:


> Having now outlined the parties' basic positions with respect to the actual changes made to the infringing products, the Court will address EchoStar's judicial estoppel arguments before analyzing EchoStar's modifications under the two-step _KSM_ test.


He then goes on to when on page 24 he says:


> The Court now turns to the first step of the _KSM_ test. Recall that this first step....


Then on to page 28 where he says:


> The Court now turns to second step of the KSM test. Recall that this step requires....


Then on to page 31 where he concludes the _KSM_ discussion with:


> Accordingly, this Court finds EchoStar in contempt of this Court's permanent injunction. Specifically, EchoStar is in contempt of the Infringement Provision of this Court's order, which enjoined EchoStar from "making, using, offering to sell, selling or importing in the United States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims."


Seems very deferential to _KSM_ to me within the first 31 pages. But maybe some won't see it that way.


----------



## phrelin

scooper said:


> What can the courts do if the infringer has decided that this court case is "just a cost of doing business " and won't shut them down any way , even with a direct judge's order to do so ?
> 
> Short of sending in armed US Marshals to Echostar's NOC to force them to send such a command, WHAT CAN THE COURT DO ?


People do get thrown in jail for blatant contempt of court.


----------



## peak_reception

scooper said:


> What can the courts do if the infringer has decided that this court case is "just a cost of doing business " and won't shut them down any way , even with a direct judge's order to do so ?
> 
> Short of sending in armed US Marshals to Echostar's NOC to force them to send such a command, WHAT CAN THE COURT DO ?


 The Court can make "just the cost of doing business" in that way intolerable by levying *heavy fines* for each day that the Court's specific order (in this case to turn off DVR functionality) is disobeyed. No one has to go to jail.


----------



## scooper

peak_reception said:


> The Court can make "just the cost of doing business" in that way intolerable by levying *heavy fines* for each day that the Court's specific order (in this case to turn of DVR functionality) is disobeyed. No one has to go to jail.


I don't think you guys are getting how much having the DVR service means to Echostar. I mean to the point of taking those heavy fines and *"NOT PAYING THEM"* contempt.


----------



## jacmyoung

peak_reception said:


> ...No one has to go to jail.


Yup, treble damages and attorney cost will be good enough.


----------



## jacmyoung

phrelin said:


> Hmmm. Well, we didn't read the same memoradum. The one I read begins with the following on page 1: Beginning on page 9 and ending on page 15 he offers an extensive analysis of his take on _KSM_ in context with other precedents. Then he goes on for several pages until we get to the top of page 20 where he says: He then goes on to when on page 24 he says:Then on to page 28 where he says:Then on to page 31 where he concludes the _KSM_ discussion with: Seems very deferential to _KSM_ to me within the first 31 pages. But maybe some won't see it that way.





> Whether EchoStar did or did not comply with the Disablement Provision of this Court's order
> does not raise any issue unique to patent law. As a result, the regional circuit law of the Fifth Circuit
> applies to this issue.


Whether E* was in violation of the injunction on infringement (regardless which provision in it) is a matter of applying the rules of the CAFC, not any regional circuit.

The Congress established the CAFC with the sole purpose of providing uniform standards all district courts must follow on the subjects of patent infringement, copyright violation, trademark infringement, just to name a few, regardless which region the district court is in.


----------



## jacmyoung

scooper said:


> I don't think you guys are getting how much having the DVR service means to Echostar. I mean to the point of taking those heavy fines and *"NOT PAYING THEM"* contempt.


E* never did "NOT PAYING THEM" when it comes to court ordered damages and fines.


----------



## peak_reception

scooper said:


> I don't think you guys are getting how much having the DVR service means to Echostar. I mean to the point of taking those heavy fines and *"NOT PAYING THEM"* contempt.


 I'm not sure which government agency (or agencies) would then enter the picture but it wouldn't be pretty.

It won't come to that anyway though because by the time this case is over DISH will have enough time to phase out the older Infringing Products with presumably non-infringing receivers. Only if that presumption is wrong and the VIPs are challenged and also found to be infringing could any doomsday scenarios transpire. And the simple solution at that point would be to pay TiVo for licensing the patent(s) at issue. Yes it would be expensive by that time but only because Charlie is so stubborn.


----------



## phrelin

jacmyoung said:


> Whether E* was in violation of the injunction on infringement (regardless which provision in it) is a matter of applying the rules of the CAFC, not any regional circuit.
> 
> The Congress established the CAFC with the sole purpose of providing uniform standards all district courts must follow on the subjects of patent infringement, copyright violation, trademark infringement, just to name a few, regardless which region the district court is in.


Hmmm. Well again, I guess we just don't read things quite the same. I'm going to put Folsom's words you quoted in blue in context as they appeared right after the KSM analysis and conclusion and emphasize the KSM reference in red:


> Even if EchoStar had achieved a non-infringing design-around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction. EchoStar never complied with the Disablement Provision of this Court's order, which ordered EchoStar to "disable the DVR functionality (i.e. disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber."
> 
> Whether EchoStar did or did not comply with the Disablement Provision of this Court's order does not raise any issue unique to patent law. As a result, the regional circuit law of the Fifth Circuit applies to this issue. _See Eagle Comtronics, Inc. v. Arrow Commc'n Labs., Inc._, 305 F.3d 1303, 1313 (Fed. Cir. 2002) (applying regional circuit law to civil contempt proceedings). In civil contempt proceedings, "the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." _FDIC v. LeGrand_, 43 F.3d 163, 170 (5th Cir. 1995) (citation omitted). The movant must prove such by clear and convincing evidence. Id.; _Martin v. Trinity Indus., Inc._, 959 F.2d 45, 47 (5th Cir. 1992).
> 
> This Court's permanent injunction, which was issued on September 8, 2006, was stayed by the Federal Circuit pending EchoStar's appeal. On appeal, EchoStar did not challenge the language or validity of this Court's injunction. Thus, the Federal Circuit upheld the injunction and dissolved its stay once EchoStar's appeal became final, which occurred on April 18, 2008. _TiVo_, 516 F.3d at 1312.
> 
> This Court, aware of the Federal Circuit's general disdain for broad or vague prohibitions of future infringement, drafted its permanent injunction in narrow terms that captured particular infringing devices and required EchoStar to take certain action regarding those devices. See *KSM* 776 F.2d at 1526 ("those against whom an injunction is issued should receive fair and precisely drawn notice of what the injunction actually prohibits").


Notice he subtly inserts KSM with the framework here. Then he goes on to explain for a bit. Finally, he explains what he believes is a hole Echostar dug for itself bolstering his point with citations which you might believe are irrelevant but are there:


> If EchoStar believed that this Court's order was overly broad or that it improperly covered non-infringing practices, then EchoStar should have requested that this Court modify its order or should have challenged the scope of this Court's order on appeal. Because EchoStar failed to do either, it has waived any argument that this Court's order is overbroad. See _W. Water Mgmt., Inc. v. Brown_, 40 F.3d 105, 108 (5th Cir. 1994) ("[C]ollateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available."). Instead of requesting review of this Court's order by itself or another court, EchoStar merely ignored this Court's order because it subjectively believed it to be improper or overly broad. This cannot be allowed. See _GTE Sylvania, Inc. v. Consumers Union_, 445 U.S. 375, 386-87 (1980) ("[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order."); _Carborundum Co. v. Molten Metal Equip. Innovations, Inc._, 72 F.3d 872, 883 (Fed. Cir. 1995). A party may not unilaterally decide whether it will or will not comply with a court order.
> 
> Accordingly, this Court finds by clear and convincing evidence that a court order, which required certain conduct by EchoStar, was in effect as of April 18, 2008, and that EchoStar failed to comply with that order. Therefore, this Court finds EchoStar in contempt of this Court's permanent injunction. Specifically, EchoStar is in contempt of the Disablement Provision, which
> ordered EchoStar to "disable the DVR functionality (i.e. disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber."


Do I know whether Folsom will be upheld? No. Do I believe this is one of the best pieces of persuasive legal writing I've seen in a long time? Yes.

With regard to ultimate enforcement, I recognize that there are significant financial penalties that could be levied for failure to comply with the contempt order. I also recognize that when pushed beyond certain limits, a federal judge who has been as cautious as Folsom could with full support of his fellow judges jail Echostar officers. The judiciary has no sense of humor about blatant contempt.


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## jacmyoung

phrelin said:


> .... Do I believe this is one of the best pieces of persuasive legal writing I've seen in a long time? Yes...


Disagree completely

First off he was wrong to say E* believed the order was overly broad because E* said it was not. You cannot accuse of someone of saying something that someone isn't saying or saying the opposite. E* believed they followed the order perfectly because of how E* interpreted the order.

Secondly E* never said this injunction improperly covered non-infringing practice, to the contrary E* said this injunction was right on, it covered only the "infringing products" as stated so in black and white.

Thirdly E* cited TiVo's promise during the framing of the injunction that this injunction was only to enjoin infringement, "nothing more nothing less."

To say E* should have requested on appeal to modify the injunction is illogical, how can E* make such request when E* believed it was right on both on the interpretation of the letter of the injunction and on TiVo's promise?

Additionally, as E* cited both the appeals court and the Supreme Court, E* in fact can challenge the injunction during the contempt proceeding even if such injunction was not appealed in the last direct appeal. Now E* is challenging such injunction, only that E* is challenging the new injunction issued on 6/2/09, not the old one. Because the old one no longer existed, it was replaced by the new one on 6/2/09, and the new one is now stayed because E* had established a strong likelihood of success on merits to the appeals court.

Lastly, when Judge Folsom said: "Accordingly, this Court finds by clear and convincing evidence that a court order..." he showed his lack of understanding of KSM. The term "clear and convincing evidence" was never applied to determine whether an order was followed or not, this term was required to prove the new design is an infringement.

But when it comes to proving infringement by clear and convincing evidence, Judge Folsom said he did not have to do so, he bypassed such step because according to him, as long as he may determine the old and the new were not that different, that's good enough, the infringement proof is not necessary. Instead he applied "clear and convincing evidence" to prove E* did not follow his order.

Which was why I said he lacked understanding of KSM.


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## phrelin

Folsom's detailed discussion of the application of KSM begins on page 9 and ends on page 31 with:


> Accordingly, this Court finds EchoStar in contempt of this Court's permanent injunction. Specifically, EchoStar is in contempt of the Infringement Provision of this Court's order, which enjoined EchoStar from "making, using, offering to sell, selling or importing in the United States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims."


If one wants to pick apart his KSM analysis you have to deal with pages 1-31 of the Memorandum which stands on its own. You are focusing on pages after the KSM analysis which begins with a phrase that essentialy says "OK, I've handled that subject, so now let's look at a what if KSM didn't apply" as follows:


> Even if EchoStar had achieved a non-infringing design-around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction. EchoStar never complied with....


From near the bottom of page 31 to near the middle of page 34, he is discussing what would be the law if he hadn't been able to conclude as he did within the context of KSM.

One can disagree with his analysis and findings contained in pages 1-31.

One can disagree with his analysis and findings contained in pages 31-34.

But one cannot logically use language in pp. 31-34 to conclude as you did that "he told E* he did not have to apply KSM, the local rules were good enough."

In pp. 31-34 he told Echostar that if KSM doesn't apply (even though he determined it does in as explained in pp. 9-31), then the local rules would also lead him to the same conclusion for reasons explained in pp. 31-34 - Echostar is in contempt and must disable the DVR's.

Yes, the appeals court might agree or disagree with both logical exercises. But they are separate logical exercises. So the appeals court might disagree with one but uphold the other. This is a very clever approach as the KSM analysis includes a finding of fact - that the workaround infringes.

There is a lot of meat here for the appeals court. But it all begins with the fact that a jury rendered a decision on the software and the trial judge issued an order consistent therewith, all of which was upheld by the appeals court. The defendant Echostar has yet to comply with the order but instead attempted a workaround that still infringes. The trial judge thinks they should comply with that order which the appeals court found no fault with previously.

And if the appeals court doesn't think the process to determine that workaround infringes is sufficient, fine, there is still a reason to require compliance.

And if the appeals court disagrees with that, he is telling them that they should just fold up the whole patent enforcement process and go home because we, those in charge of the legal system who have rendered all these "precedent decisions" and trial rulings, have become so obtuse and callous as to make the system inaccessible, unworkable, and distant for the patent holder.

He does that by saying that a jury decided that TiVo was being harmed years ago and the appeals court agreed. Here's the situation:


> The harm caused to TiVo by EchoStar's contempt is substantial. EchoStar has gained millions of customers since this Court's injunction issued, customers that are now potentially unreachable by TiVo. See Dkt. No. 773 at 10. As this Court has noted in the past, "loss of market share and of customer base as a result of infringement cause severe injury," and "every day of Defendant's infringement affects Plaintiff's business."


He's telling the appeals court that the jury decided TiVo not Echostar is being harmed.

He's telling them he, the trial judge, agrees with the jury.

He's telling them that they, the appeals court, agreed with the jury.

He's telling them that they are making the jury trial system in patent cases worse than a fraud.

He's telling them that with more tact than I would.


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## scooper

phrelin said:


> Hmmm. Well again, I guess we just don't read things quite the same. I'm going to put Folsom's words you quoted in blue in context as they appeared right after the KSM analysis and conclusion and emphasize the KSM reference in red:
> Notice he subtly inserts KSM with the framework here. Then he goes on to explain for a bit. Finally, he explains what he believes is a hole Echostar dug for itself bolstering his point with citations which you might believe are irrelevant but are there:
> Do I know whether Folsom will be upheld? No. Do I believe this is one of the best pieces of persuasive legal writing I've seen in a long time? Yes.
> 
> With regard to ultimate enforcement, I recognize that there are significant financial penalties that could be levied for failure to comply with the contempt order. I also recognize that when pushed beyond certain limits, a federal judge who has been as cautious as Folsom could with full support of his fellow judges jail Echostar officers. The judiciary has no sense of humor about blatant contempt.


Judge Folsom's "writing" on that memorandum was done by at least 2 and probably more different authors. It struck me as a rather disjointed statement for what he was trying to do. Paragraphs and pages did not always flow together. Sentance structure and construction showed different styles (to me at least).

What I'm saying is that a good portion of the routine stuff was probably wrote by the clerks of that district.


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## jacmyoung

phrelin said:


> ...He's telling them he, the trial judge, agrees with the jury.


So is E*, in fact E* said the very reason they could no longer hold the contention that the PID filter met the "parse" limitation was precisely because the jury rejected that contention of E*'s during the trial. Only that Judge Folsom completely ignored such fact, decided to hold E* to such failed argument.



> He's telling them that they, the appeals court, agreed with the jury.


He ignored the fact they overturned half of the jury's verdicts, not because they did not agree with the jury, rather that they said his jury instructions on two hardware claims limitations were wrong.



> He's telling them that they are making the jury trial system in patent cases worse than a fraud.


If anything, he was responsible for the delay of the contempt proceeding for over a year. He could have found E* in contempt from the get go because the design around did not matter according to him. Now he is playing such emotion card which he was the source.



> He's telling them that with more tact than I would.


And the appeals court was not convinced, they stayed his order which he so passionately argued should not be stayed in the name of justice.


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## phrelin

What I'm saying is that the logic is there _*if*_ the appeals court wants to have the software judgment enforced using any meaningful mechanism. If they don't, in my opinion (which is free and worth every penny) it will make a sham out of the whole process.

By the way, I'm not saying the jury made the right decision. I'm saying they made one reasonable choice, perhaps not the one I would have made. I don't really believe that a lay jury should be making these decisions.

And IMHO the Memorandum compared to anything I've seen from a trial court in years was a beautiful piece of writing.


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## scooper

phrelin said:


> And IMHO the Memorandum compared to anything I've seen from a trial court in years was a beautiful piece of writing.


Ugh - we need to send all the lawyers back to English 101 again if that's the case...

The logic might be there, but it was disjointed in its presentation.


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## jacmyoung

phrelin said:


> What I'm saying is that the logic is there _*if*_ the appeals court wants to have the software judgment enforced using any meaningful mechanism. ...


Bingo! If the new design no longer infringes the software claims, enforcing an order based solely on the infringement of the software claims will be a sham. The appeals court stayed such order not without reasons.


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## phrelin

jacmyoung said:


> Bingo! If the new design no longer infringes the software claims, enforcing an order based solely on the infringement of the software claims will be a sham. The appeals court stayed such order not without reasons.


Which brings us to the meaty questions. Will the appeals court accept Folsom's determination that the software still infringes, will it disagree with Folsom's determination, will it agree with Folsom that even if the software doesn't infringe the order is still valid, or will it ignore the determination by choosing to use procedural concerns to send the case back for further determinations dragging this thing out forever?


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## jacmyoung

phrelin said:


> ...or will it ignore the determination by choosing to use procedural concerns to send the case back for further determinations dragging this thing out forever?


The appeals court never "ignores" the lower court decisions and orders. If the last appeals court ruling is any indication and based on a few others I have read, the appeals court will spend most of its time discussing parties' contentions, not the lower court ruling and orders.

It is up to E* to dispute the lower court's opinions and ruling, and TiVo to support them. The appeals court will either agree with E*'s arguments, or TiVo's, or somewhere in between, instead of addressing the lower court opinions. In other words, the appeals court will act as the judges to consider the contempt issue all over again based on both parties contentions, not based on the lower court arguments.

Only after settling both parties arguments, agreeing or disagreeing with them, will the appeals court make the final decision whether to uphold or reverse the lower court ruling in part or in whole, affirm or vacate the lower court orders in part or in whole, and whatever else they need to do based on the specific issues E* is appealing.

If the appeals court reverses or vacates in part or in whole of the ruling or orders, usually it will then remand the issues back to the lower court for it to re-address such issues, with specific instructions.


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## scooper

So, If I understand this case, the big issue is that Echostar copied the same method that Tivo patented for providing timewarp / trickplay functions while showing a current program. 

So, if Echostar took that particular function out of their DVRs, and leave the trick plays only for already recorded material, they would not be infringing any more, correct ?

Or, if they could find a way to get around the "self regulating" buffers for reading / writing data to the harddrive, they wouldn't be infringing either, correct ?


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## jacmyoung

scooper said:


> So, If I understand this case, the big issue is that Echostar copied the same method that Tivo patented for providing timewarp / trickplay functions while showing a current program...


Yes, because this invention is about simultaneous storage and playback of multimedia programming.

But that is not what E* is shooting for, they believe they have a non-infringing method to simultaneously store and playback multimedia programming.

I will add to my previous post that the appeals court will do their colorable difference analysis, and if necessary the infringement analysis, to determine if E* violated or was in compliance of the injunction.


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## phrelin

jacmyoung said:


> It is up to E* to dispute the lower court's opinions and ruling, and TiVo to support them. The appeals court will either agree with E*'s arguments, or TiVo's, or somewhere in between, instead of addressing the lower court opinions. In other words, the appeals court will act as the judges to consider the contempt issue all over again based on both parties contentions, not based on the lower court arguments.


Maybe, but based on this quote that I posted previously, TiVo isn't going to let Folsom's arguments lie fallow and ignored:


phrelin said:


> From MarketWatch this morning:
> 
> 
> 
> "We are confident that the District Court judge's thorough and well-reasoned decision finding EchoStar in contempt of court for violating the injunction and awarding further damages will be upheld once the Federal Circuit has the opportunity to review the merits of the case," TiVo said in a statement.
Click to expand...


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## jacmyoung

phrelin said:


> Maybe, but based on this quote that I posted previously, TiVo isn't going to let Folsom's arguments lie fallow and ignored:


That I agree. But Judge Folsom's opinions are just to reflect parties' opinions, of course in this case are mostly reflection of TiVo's opinions. So in a sense TiVo will again redo their arguments in front of the appeals court, citing Judge Folsom's support, and E* will again redo their arguments, refuting TiVo's and Judge Folsom's, if necessary. My point was, when evaluating both sides' arguments, the appeals court will not rely on Judge Folsom's opinions, rather the independent opinions of their own. Such opinions may agree or disagree with any parties' opinions.

At least this is what I hope for, the appeals court decision will be that of their own independent one. Else the appeal process would be a sham.


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## peak_reception

jacmyoung said:


> If anything, he [Judge Folsom] was responsible for the delay of the contempt proceeding for over a year. He could have found E* in contempt from the get go because the design around did not matter according to him.


 Well he never said that the design-around didn't matter but he does say [in his 35 page Memorandum] that:


> Even if EchoStar had achieved a non-infringing design-around, this Court would still find
> that EchoStar is in contempt of this Court's permanent injunction.


 ...because...



> EchoStar never complied with
> the Disablement Provision of this Court's order....


So it seems he is separating the two issues. First is the issue of disregarding a lawful court order even if the transgressor thinks it is improper or overly broad. Second is the issue of infringement and what rights and responsibilities a convicted infringer has on the road to non-infringement. I think the reason why Judge Folsom couldn't just drop the hammer over the violation of his court order was because of the legal precedent Curtis52 posted (about a hundred times) from Arbek Mfg., 55 F.3d at 1570: 


> [Contempt is] ...not a sword for wounding a *former* infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace.


 So he [Judge Folsom] had to first determine if DISH was/is a former or current infringer before finding contempt. But then he says that he didn't have to.


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## jacmyoung

peak_reception said:


> ... First is the issue of disregarding a lawful court order even if the transgressor thinks it is improper or overly broad...


I will say it again, this is part of the reason why Judge Folsom was wrong. E* never thought the order was improper or overly broad, E* had always said his order was right on, and based on E*'s interpretation of the term "Infringing Products" in the order, and based on TiVo's promise at the time they requested the wording of the injunction that the injunction, as requested by TiVo, would only prohibit further infringement, no more no less.

Now armed with the above information, E* interpreted the order as only to prohibit functions that were infringing, not any functions that no longer infringed, and when they were downloading the new software, they did disable the infringing DVR functions because the DVRs were totally disabled. And later when the new software came back to life, they no longer were "Infringing Products" therefore no longer subject to such order.

There is no reasonable logic to lead to the conclusion that E* thought the order was improper or too broad. Such accusation was under a false pretense to save face, because both TiVo and the judge failed to realize E* could have tried to download a new software to avoid infringement, they thought the order was full proof when it came to disabling the DVR functions.

When it failed, they tried to save their own faces by falsely accusing E* of disagreeing with the order, which E* did not.


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## dgordo

jacmyoung said:


> ....when they were downloading the new software, they did disable the infringing DVR functions because the DVRs were totally disabled.


No one has ever been able to point to a time when the DVRs were totally disabled.


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## peak_reception

Jac, I understand what you are saying and I think you are 100% correct in your interpretation of EchoStar's position. To me it is clever sophistry.


> Sophistry: subtly deceptive reasoning or argumentation.


From the Merriam-Webster Online Dictionary ^^

The problem is that their secretive design-around would not / could not be evaluated for a long time after it was distributed. Yes it was done while the Injunction was stayed, but that stay dissolved after remand to Eastern Texas on April 18, 2008, and it was another 13+ months after that, while the Injunction was in full force and effect, until Judge Folsom was able to make his determination of merely colorable difference.

So for 13-1/2 months, from April 18, 2008 to June 3rd of 2009 (when another temporary stay was granted) EchoStar was in clear violation of the Permanent Injunction. That's over a year of time where EchoStar enjoyed both the fruit of continuing infringement (e.g. gaining DVR market share at TiVo's expense) and freedom from controlling authority which ordered them to shut down DVR functionality in specific listed products.

This year-long vacation from authority was made possible by DISH becoming their own authority, unilaterally deciding for themselves what they would obey and what they would ignore (behind a smokescreen of clever word games) while concealing their true intentions and actions from both Judge Folsom and the CAFC.

How long will they get away with such behavior? Probably up to, if, or until, Judge Folsom's finding of merely colorable difference is confirmed by the CAFC. However, if that finding is instead overturned by CAFC then EchoStar/DISH pulls off an incredible legal escape which would make Harry Houdini blush wtih envy.. Even Judge Folsom used the word "escape" at the end of his 35 page Memorandum:



> Although EchoStar requests
> that this Court stay its injunction further, this Court declines to do so. EchoStar has escaped this
> Court's injunction for over two years and further delay will be manifestly unjust to TiVo and cause
> TiVo substantial harm.


The CAFC did not agree. Dish has tactically escaped once more pending resolution of its latest appeal and granted stay.

One outcome hard to imagine is the CAFC overturning Judge Folsom's 'merely colorable difference' finding while at the same time confirming his contempt ruling.

Which leads back to the question of why Judge Folsom thinks he could find DISH In Contempt even if their design-around was/is successful, i.e. no longer infringing. Some of us find that hard to believe.


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## Ken984

Dish never followed the disable order. That is why they were found in contempt. The notion that when they installed the "new" software the DVR was disabled is a joke, nobody buys that silly idea. Well almost nobody, I am sure Charlie and his lackeys like that thought a lot but that is just thumbing your nose at a Federal judge, and the appeals court as well, since they had already upheld the injunction.


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## Curtis52

Ken984 said:


> Dish never followed the disable order.


The disable order was only for infringing devices. It didn't apply to non-infringing DVRs (of which there were none per Dish).


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## jacmyoung

dgordo said:


> No one has ever been able to point to a time when the DVRs were totally disabled.


No one can dispute when a new software is downloaded onto a satellite receiver, the receiver is totally disabled, not just any particular function of it, but the entire receiver, it is dead during the download as far as any functionalities are concerned, and the judge agreed and TiVo did not dispute that the downloads happened.


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## HobbyTalk

peak_reception said:


> This year-long vacation from authority was made possible by DISH becoming their own authority, unilaterally deciding for themselves what they would obey and what they would ignore (behind a smokescreen of clever word games) while concealing their true intentions and actions from both Judge Folsom and the CAFC.


I'm not sure why you would think that Dish is deciding this. It is the legal system that gave them permission to do so with the stays. If the stays were not granted this most likely would have over with long ago. Dish did absolutely nothing illegal by uploading the new software. The final decision is yet to be determined if they violated the order.



peak_reception said:


> Which leads back to the question of why Judge Folsom thinks he could find DISH In Contempt even if their design-around was/is successful, i.e. no longer infringing. Some of us find that hard to believe.


I don't find it hard to believe. IMHO, if Dish would have purposely disabled the hard drive for one minute and then turned it back on with the new software I feel they would have been in compliance of the order. Although some may consider the nightly reboot as disabling the devices...

I'm not a Dish fan or a TiVo hater. What I don't like are patents on overly broad and obvious methods.


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## jacmyoung

peak_reception said:


> ...Which leads back to the question of why Judge Folsom thinks he could find DISH In Contempt even if their design-around was/is successful, i.e. no longer infringing. Some of us find that hard to believe.


Because he knew his contempt ruling might be based on theories that are full of holes. For one thing, his colorably difference conclusion is based on the notion that the changes are irrelevant to the software claim terms because the terms "start codes" and "indexing" are not specifically mentioned in the software claims, despite the fact they were mentioned during the trial and in the patent specifications all the time, so much so that TiVo said they were the "core of the invention." But then in his so called infringement anaylsis, he held E* to E*'s failed argument that the PID filter met the "parse" limitation therefore it still infringed the software claims.

Except the term "PID filter" never appears in the software claims either, therefore using the same rationale above the PID filter cannot be relevant to the software claims.

He understood the irony in his logic, that was why he felt compelled to go further to try to cure any deficiencies there might be, by making two big mistakes:

1) By saying his injunction can prohibit acts that are non-infringing, and
2) By saying after finding of mere colorable difference, he did not have to go to the next step to prove infringement by clear and convincing evidence.

Of course you are confused by such statements because they are in direct contrast to what the appeals court had said, but he was compelled to make such statements because his knew his so called colorable difference and infringement analyses might not hold any water.


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## phrelin

I have this vision. I'm the CEO of a corporation with very deep pockets. In our business, I want to use a DVR that we manufacture. I know that I'm going to run into patent problems. So I create ten engineering teams of three people to create each and every possible "workaround".

But first I copy TiVo's system. Then TiVo files suit. Three years later after I lose and appeal, I introduce "workaround #1" without telling the courts. Two years later the appeal is over, I've lost, so I tell the trial judge, "Oh guess what. We've ceased to infringe because we have a workaround so we didn't do exactly what you ordered."

If each of the ten teams does create a different "workaround" and I do the same "screw you" to the courts with each, we're looking at a minimum of 15-18 years of delay. Under that vision of mine, we don't need the courts because they serve no purpose. In this case if the appeals court rules against TiVo, they confirm that they, the courts, are useless. If they rule against Echostar and Echostar is allowed to introduce a new "workaround" without first getting the court's approval and requiring a new hearing, they've just confirmed we don't need the courts.

These patents, at best, have a 7-year lifespan before the hardware has so changed that the competition has really come up with something new. It's almost impossible to determine the real value and assess accurate damages in such a changing world. If these things can't be resolved in the courts in 12 months or less, the courts serve no purpose and the patent serves no purpose.


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## jacmyoung

Guess what if you know what the patent law was created for, you would have no problem with the above scenario at all

The patent system was created to encourage the inventors to disclose their inventions rather to keep the inventions as trade secrets, the idea is if most inventions are disclosed to the public rather kept as secrets, others can learn from the inventions and imitate them, or "copy" them, as long as they do not infringe. As a result the society benefits from such a system.

That is precisely why the patent law requires that for a patent to be granted, the inventor must disclose his invention in such details so that a person of ordinary skill in the field of invention must be able to "copy" such invention without undue experimentation, with one condition, the "copy" may not infringe on the patent.

Using the above logic, when interpreting the patent claim terms in order to determine whether infringement exists or not, the appeals court said it is *assumed* a person of ordinary skill in the field of the invention would interpret the claim terms not only in the context of the claims themselves, but in the context of the patent specification, the prosecution history of the patent, and in the context of the entire patent.

The mistake the judge made was precisely that he refused to interpret the software claim terms in the context of the patent specification, the prosecution history of the patent, and in the context of the entire patent, he only limited his interpretation to the software claims themselves, when he said the "start codes" and "indexing" were not relevant because they were not mentioned in the software claims, despite the fact if one simply looks at the patent sepcification, the prosecution history of the patent, and in the context of the entire patent, both terms are not only relevant, but as TiVo said, are the core of the invention.

Now back to the scenario you just used, I would say what E* is doing is precisely what our patent system is aiming for


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## scooper

phrelin said:


> I have this vision. I'm the CEO of a corporation with very deep pockets. In our business, I want to use a DVR that we manufacture. I know that I'm going to run into patent problems. So I create ten engineering teams of three people to create each and every possible "workaround".
> 
> But first I copy TiVo's system. Then TiVo files suit. Three years later after I lose and appeal, I introduce "workaround #1" without telling the courts. Two years later the appeal is over, I've lost, so I tell the trial judge, "Oh guess what. We've ceased to infringe because we have a workaround so we didn't do exactly what you ordered."
> 
> If each of the ten teams does create a different "workaround" and I do the same "screw you" to the courts with each, we're looking at a minimum of 15-18 years of delay. Under that vision of mine, we don't need the courts because they serve no purpose. In this case if the appeals court rules against TiVo, they confirm that they, the courts, are useless. If they rule against Echostar and Echostar is allowed to introduce a new "workaround" without first getting the court's approval and requiring a new hearing, they've just confirmed we don't need the courts.
> 
> These patents, at best, have a 7-year lifespan before the hardware has so changed that the competition has really come up with something new. It's almost impossible to determine the real value and assess accurate damages in such a changing world. If these things can't be resolved in the courts in 12 months or less, the courts serve no purpose and the patent serves no purpose.


I agree with this one completely.

The problem that some people have with it - are these "changes / workarounds" real attempts to work around the patent claims or are they half hearted attempts to drag out the court case ? You also have the history of what has happened - how many time has the infringer tried a "workaround" that failed ?

In the case where the infringer has made numerous half hearted failed attempts - you (as the judge) would want to say "Enough is enough - no more making changes unless the court approves them first". There is supporting case law on this.

Now let's apply the above to THIS case (Tivo vs. Echostar) - 
Besides the initial jury decided case where Echostar was found to have infringed, how many workarounds have they tried ? - That's right - *JUST ONE*.

Now - does it strike anyone else how unfair the judge's order was that Echostar had to notify the court first before ATTEMPTING to create another workaround ? Nevermind deploying it - that's probably going to take additional hearings.

If I didn't know better - I'd say the judge is getting pissed off that Echostar is NOT going away and making a deal with Tivo, and he is trying to make an example out of them. If he wanted to force said licensing deal - he should have followed his Paice case - but he hasn't - it's like it's been "forgotten" about.


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## jacmyoung

What is even worse is the judge demanded E* to inform him of any future design around, at the same time told E* even if a design around is non-infringing they will still be in violation of his order, so what is the point?

Which was why a few days after he issued such order, E* actually did inform him they were planning additional design around, but they told him they did not think it would ever be possible.

Many were confused by such E* statement, why try another design around if they did not think it would be possible? Well I say that was basically E*'s way to add insult to the judge's such order in a subtle way.

Of course we don't know if it will ever be possible, because you said it will be impossible no matter what we do


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## dgordo

jacmyoung said:


> No one can dispute when a new software is downloaded onto a satellite receiver, the receiver is totally disabled, not just any particular function of it, but the entire receiver, it is dead during the download as far as any functionalities are concerned, and the judge agreed and TiVo did not dispute that the downloads happened.


This was not what Judge Folsom, Tivo or Dish believed completely disabled to mean in the injunction.



jacmyoung said:


> What is even worse is the judge demanded E* to inform him of any future design around, at the same time told E* even if a design around is non-infringing they will still be in violation of his order, so what is the point?
> 
> Which was why a few days after he issued such order, E* actually did inform him they were planning additional design around, but they told him they did not think it would ever be possible.
> 
> Many were confused by such E* statement, why try another design around if they did not think it would be possible? Well I say that was basically E*'s way to add insult to the judge's such order in a subtle way.
> 
> Of course we don't know if it will ever be possible, because you said it will be impossible no matter what we do


I agree, I have seen where Judges have told parties that they needed to inform of future design around efforts but never after only one attempt.


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## peak_reception

dgordo said:


> I agree, I have seen where Judges have told parties that they needed to inform of future design around efforts but never after only one attempt.


 I think it's because the one design-around in this case was so shady. If there's nothing to hide, let the sun shine on it. Why should Echo/DISH object?


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## jacmyoung

peak_reception said:


> I think it's because the one design-around in this case was so shady. If there's nothing to hide, let the sun shine on it. Why should Echo/DISH object?


E* did not hide the design around effort, as E* stated as early as 8/06 E* made it public that they were working on a design around for the DVRs in the field, and TiVo admitted that they were aware of such public statement at that time. TiVo never raised any issue about it during the last appeal. But now TiVo accuses E* of not telling the courts of the effort as a reason to sanction E*.

For one thing, there was never any court order to ask E* to inform, for another, not until 4/07, E* did not even know if the design around would work in the real world. Why telling the courts if it might end up not working in the field at all? Just to embarrass themselves?

Also maybe I missed it, but I do not recall in any of E*'s recent filings they objected to Judge Folsom's 6/2/09 order to inform him of future design around. In fact E* quickly complied and filed the paper to inform him E* was planning another design around, though as I said earlier, it contained a jab at the judge, but still they quickly complied to his such unprecedented order.

E* has nothing to hide.

TiVo on the other hand had one major thing to hide. During the trial they convinced the jury that parsing start codes and building index of the start codes was the core of the invention, because TiVo had it, and E* had it, therefore E* infringed. The jury bought such arguement, and TiVo made $105M out of E* based on such argument.

Now TiVo says but parsing start codes and building the indexing are irrelevant to the software claims, it is the same as saying parsing start code and building index is irrelevant to its invention. And with just a flip of a switch, TiVo wants to turn off the original argument, and apply an opposite theory, and make another $100M+ out of E*.

Why should E* not be given a chance to let another jury to hear TiVo's completely changed story just to find out if the jury will buy it? E* is not even saying TiVo should not be given a chance to tell their sorry new story, just that let another jury hear it at least, what's fair is fair. E* has such due process right.


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## Greg Bimson

Curtis52 said:


> The disable order was only for infringing devices. It didn't apply to non-infringing DVRs (of which there were none per Dish).


Incorrect. The disable order was for a specific set of devices: those found infringing and installed with end users as of August, 2006. DISH/SATS never did say there were none left, until this last brief to the Court of Appeals.

As a matter of fact, their argument was they followed the injunction and disabled their DVR's, but their argument was that they disabled those devices during the stay, prior to the injunction becoming active and in full force and effect.

It was DISH/SATS contention that by changing software, those devices were no longer subject to the disable order. Yet there is ZERO case law supporting that theory, where a defendant subject to a court order can do whatever they please when a specific instruction is given.

DISH/SATS is asking for a precedential finding in order to avoid contempt.


jacmyoung said:


> E* did not hide the design around effort, as E* stated as early as 8/06 E* made it public that they were working on a design around for the DVRs in the field, and TiVo admitted that they were aware of such public statement at that time. TiVo never raised any issue about it during the last appeal. But now TiVo accuses E* of not telling the courts of the effort as a reason to sanction E*.


First pass at revising history. TiVo admits to reading DISH/SATS 10-Q and the year end version of that document. DISH/SATS never spells out within that document their plans to "fix" the installed base of "Infringing Products".


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## Curtis52

Greg Bimson said:


> It was DISH/SATS contention that by changing software, those devices were no longer subject to the disable order. Yet there is ZERO case law supporting that theory, where a defendant subject to a court order can do whatever they please when a specific instruction is given.


If the DVRs were more than colorably different, Dish would have successfully replaced the infringing DVRs with DVRs of a new manufacture, produced using raw materials found on-site together with raw materials delivered to the site. The resulting new manufacture would never have been subject to the disable order. Hardly a question needing a precedential decision. People build stuff and replace stuff all the time.


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## jacmyoung

Here is the bottom line, E* did not think they had to challenge the old injunction, they interpreted it the way they believed was true, and took substantial effort to come into compliance of the old injunction.

The judge said no, you interpreted my old injunction wrong, you should have challenged my injunction before, which was an illogical argument because E* could not have challenged his injunction since E* did not think it was wrong.

But since the judge said E* interpreted his old injunction wrong, his injunction meant to prohibit the act of performing the DVR functionalities regardless if such act is infringing or not, E* now is in fact challenging his new injunction ordered on 6/2/09 that replaced the old one.

And after reviewing E*'s motion, the appeals court agreed E* had established strong likelihood of success on merits, and stayed this 6/2/09 injunction pending their review if such injunction is proper.

The above are the facts of the case so far. What I will add is, the appeals court had made it very clear that an injunction must only prohibit acts that are infringing, not any acts that are not infringing. We will see how they apply their own standard when reviewing this injunction.

The question whether the DVRs might be modified in the field through software download to become non-infringing products, on the other hand is not even in dispute, because the judge's very injunction assumed it can be done, because the injunction ordered E* to render the DVRs non-infringing by means of software download, not through product recall.


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## Greg Bimson

Curtis52 said:


> If the DVRs were more than colorably different...


Can I be pointed in the direction where case law supports colorable difference regarding a 'disable' order?


jacmyoung said:


> The question whether the DVRs might be modified in the field through software download to become non-infringing products, on the other hand is not even in dispute, because the judge's very injunction assumed it can be done, because the injunction ordered E* to render the DVRs non-infringing by means of software download, not through product recall.


That is exactly what was ordered, but since ZERO receivers had their DVR functionality disabled once the injunction went into full force and effect, it is safe to assume DISH/SATS did not follow the order to disable the DVR functionality on receivers installed with an end user as of August 2006.


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## peak_reception

jacmyoung said:


> E* did not hide the design around effort, as E* stated as early as 8/06 E* made it public that they were working on a design around for the DVRs in the field, and TiVo admitted that they were aware of such public statement at that time. TiVo never raised any issue about it during the last appeal. But now TiVo accuses E* of not telling the courts of the effort as a reason to sanction E*.


 Most people would agree that E*'s design-around is the central issue in this case. E* informed no court of their centrally important design-around until many months after it had been fully implemented _while at the same time_ charting a controversial course around Judge Folsom's Injunction which ordered shutting down DVR functionality. Call it what you will. I call it subterfuge.



> For one thing, there was never any court order to ask E* to inform, for another, not until 4/07, E* did not even know if the design around would work in the real world. Why telling the courts if it might end up not working in the field at all? Just to embarrass themselves?


 Oh Please Jac, do you really believe that EchoStar was worried about embarrassing themselves if their noble effort to become non-infringing fell short? That's ridiculous. More likely they could've scored some Brownie points for at least trying and letting the court(s) know they were trying.



> Also maybe I missed it, but I do not recall in any of E*'s recent filings they objected to Judge Folsom's 6/2/09 order to inform him of future design around. In fact E* quickly complied and filed the paper to inform him E* was planning another design around, though as I said earlier, it contained a jab at the judge, but still they quickly complied to his such unprecedented order.


 Of course they complied. Everything of importance is already being appealed. Why would they want to bring even more attention to their shady behavior by crying about the Judge's pre-notification order.



> E* has nothing to hide.


 :lol: Not anymore they don't.


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## Curtis52

Greg Bimson said:


> Can I be pointed in the direction where case law supports colorable difference regarding a 'disable' order?


The disable order does not apply to different devices. If there is more than a colorable difference they aren't the same devices that were in the disable order. That's what "different" means. That's why a new trial is required for devices that are more than colorably different. They aren't the same devices. If they are not more than colorably different, a new trial wouldn't be allowed because they would be considered the same devices. A new trial is not allowed for devices that are the same as the devices already tried. Not only is a new trial allowed for devices more than colorably different, a new trial is _required_. That's because they are legally different devices.


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## jacmyoung

Greg Bimson said:


> Can I be pointed in the direction where case law supports colorable difference regarding a 'disable' order?That is exactly what was ordered, but since ZERO receivers had their DVR functionality disabled once the injunction went into full force and effect, it is safe to assume DISH/SATS did not follow the order to disable the DVR functionality on receivers installed with an end user as of August 2006.


The point is not whether E* followed the order or not, rather that the judge's injunction clearly demonstrates the Infringing Products in the field can be made non-infringing through software download.


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## jacmyoung

peak_reception said:


> Most people would agree that E*'s design-around is the central issue in this case. E* informed no court of their centrally important design-around until many months after it had been fully implemented _while at the same time_ charting a controversial course around Judge Folsom's Injunction which ordered shutting down DVR functionality. Call it what you will. I call it subterfuge.


Why didn't TiVo inform the court of E*'s such bad behavior during the last appeal? TiVo knew back in 06. Keep in mind from the standpoint of law and enforcement in a civil case, it is the plaintiffs' responsibilty to bring the complaints to the court, before the court may act. Everything the court did required TiVo's motion first. They knew it in 06, why wait so long?



> Oh Please Jac, do you really believe that EchoStar was worried about embarrassing themselves if their noble effort to become non-infringing fell short? That's ridiculous. More likely they could've scored some Brownie points for at least trying and letting the court(s) know they were trying.


Speculation does not work with the court. E* stated the reason why they did not inform the court, it is up to TiVo to prove otherwise by evidence, not by speculation. TiVo did not even respond to E*'s such "excuse."



> Of course they complied. Everything of importance is already being appealed. Why would they want to bring even more attention to their shady behavior by crying about the Judge's pre-notification order.


You implied in your earlier post that E* objected to the inform order, now you admit they did not.



> :lol: Not anymore they don't.


You implied in your earlier post that E* had something to hide, now you admit they did not


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## Martin Tupper

jacmyoung said:


> I will say it again, this is part of the reason why Judge Folsom was wrong. E* never thought the order was improper or overly broad, E* had always said his order was right on, and based on E*'s interpretation of the term "Infringing Products" in the order, and based on TiVo's promise at the time they requested the wording of the injunction that the injunction, as requested by TiVo, would only prohibit further infringement, no more no less.


Wait, what!?! There isn't much room for interpretation. The final judgment and permanent injunction defined the "infringing products"


Judge Folsom said:


> Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942





jacmyoung said:


> The point is not whether E* followed the order or not, rather that the judge's injunction clearly demonstrates the Infringing Products in the field can be made non-infringing through software download.


Please explain.

The DP-501 has been defined as one of the infringing products. If you upload new software to it, it is still a DP-501. Hence is still an infringing product (until proven otherwise).

For E* to avoid contempt, they would have had to _physically _replace each infringing product with another DVR that is more than merely colorably different than the infringing products. They could have taken a returned DP-501, installed new software, rebranded it as a DP-501a, and put it back in the field. If the new software turns out to be merely colorably different, they can demonstrate that (a) the offending product had been disabled, (b) the new product is not named in the order, and (c) that they, E*, made a good faith effort at a work around. If the new software turns out to actually be more than colorably different, then problem solved.


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## peak_reception

jacmyoung said:


> You implied in your earlier post that E* objected to the inform order, now you admit they did not.


 I implied no such thing. It's a moot point whether they object or not. It doesn't matter. CAFC has the appeal and that's all that matters now. 


> You implied in your earlier post that E* had something to hide, now you admit they did not


 I implied no such thing. I simply said if there's nothing to hide, why not put everything out in the open? E* had something to hide the last time around, not this time. The time for playing hide and seek is over. They got what they wanted out of it.


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## Curtis52

Martin Tupper said:


> The DP-501 has been defined as one of the infringing products. If you upload new software to it, it is still a DP-501. Hence is still an infringing product (until proven otherwise).


"Another district court in the Fifth Circuit has already found that this *label-over-substance argument "lacks merit."* Star Brite Distributing, Inc. v. Gavin, 746 F. Supp. 633, 644 n.3 (N.D. Miss. 1990). In Star Brite, the defendant had "continue[d] to market the six products named in [the] court's injunction" but (as here) had modified certain key internal features of the products. Id. at 641. As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendant to cease the manufacture and sale of any product using the same brand names as were listed in the injunction." Id. at 644 n.3. The court rejected this theory: "First, the court believes that its intention to enjoin the production of only the infringing formulation was clear. Second, injunctions as broad as plaintiff's proposed reading are disapproved. And third, such a reading would not constitute a clear order of the court for purposes of a motion for contempt." Id.(citation omitted). As in Star Brite, the Injunction issued by this Court was a "clear order" that cannot accommodate TiVo's current, overbroad reading."


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## Greg Bimson

jacmyoung said:


> The point is not whether E* followed the order or not...


Contempt is about ignoring a judge's order. That IS the point.


jacmyoung said:


> ...rather that the judge's injunction clearly demonstrates the Infringing Products in the field can be made non-infringing through software download.


As long as DVR functionality is disabled in the devices, _as ordered_.


jacmyoung said:


> Why didn't TiVo inform the court of E*'s such bad behavior during the last appeal? TiVo knew back in 06.


Everyone knew of a design-around in '06. No one knew that it would be implemented on the receivers ordered disabled. TiVo most definitely informed the court of said "bad behavior".


Curtis52 said:


> The disable order does not apply to different devices.


Joe Blow has had a 625 for five years, making it a device which has been ordered disabled. It is a named receiver and was installed with an end user before the date provided. Colorable difference does not come into play.

Judge Folsom is simply stating that the "new" 625 infringes, and is in violation of an order against infringements. Joe Blow's 625 was also not disabled as per the injunction's disablement provision. The Amended Final Judgment and Injunction Order is simply the continuance and modification of the injunction as well as additional damages, based on continuing infringement and violation of the disablement provision.

However, if the "new" 625 was no longer infringing, DISH/SATS could still be in contempt for not disabling Joe Blow's 625. At that point, the injunctive order to disable may have been lifted if the modification no longer infringed. I believe that was the goal DISH/SATS was attempting.

That was why TiVo went after Mr. Ergen on the stand during the bench hearing for continuing infringement, asking Mr. Ergen directly if he was the person that decided not to disable the listed devices.


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## jacmyoung

peak_reception said:


> ...not this time. The time for playing hide and seek is over. They got what they wanted out of it.


Except you forgot there is no such order to inform in effect even now, the order was stayed on 6/3/09. E* did not even have to inform this time around.

But E* did, why? By reading E*'s filing, it was a jab at the judge's such inform order. Accordingly it is even worse than not to inform last time


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## Curtis52

Greg Bimson said:


> Colorable difference does not come into play.


The purpose of the colorable difference test is to determine whether the the devices are legally different from the devices ordered disabled. If they are more than colorably different then they are not the devices ordered disabled.


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## jacmyoung

Greg Bimson said:


> Contempt is about ignoring a judge's order. That IS the point...


No that wasn't my point, what I said was you had continued to use KSM to argue that Infringing Products in the field may not be modified in the field to make them non-infringing through a software download, that was the only point I wanted to direct at, by telling you the judge's very injunction should have made it clear to you that he believed the Infringing Products could indeed be modified to be non-infringing through a software download, without a product recall.

Had he thought a software download wasn't possible to make them non-infringing, he should have ordered a product recall.



> As long as DVR functionality is disabled in the devices, as ordered.


That does not change the fact that a software download can make the Infringing Products non-infringing in the field, the only question is in what fashion. So at this point I hope we do not continue to hear that KSM did not allow Infringing Products to be modified to become non-infringing in the field, because the judge's own injunction said it could be done.



> TiVo most definitely informed the court of said "bad behavior".


My point was TiVo waited over two years to "inform," in fact TiVo "informed" the court after E* informed the court, so in that sense one cannot even say TiVo informed the court. Only that TiVo now says E* not informing the court back then was one of such delay tactics, a bad thing.

Well wasn't it TiVo's job to make sure E* did not delay? Wasn't it the judge's job to make sure E* did not delay? Why did TiVo wait for E* to inform first, then accuse E* of delay? Why did the judge have to wait over a year to rule a contempt, then accuse E* of delay? He could have easily ruled a contempt in 06/08 because as far as he is concerned, the design around did not matter. What kind of nonsense is this?


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## Martin Tupper

Curtis52 said:


> "Another district court in the Fifth Circuit has already found that this *label-over-substance argument "lacks merit."* Star Brite Distributing, Inc. v. Gavin, 746 F. Supp. 633, 644 n.3 (N.D. Miss. 1990). In Star Brite, the defendant had "continue[d] to market the six products named in [the] court's injunction" but (as here) had modified certain key internal features of the products. Id. at 641. As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendant to cease the manufacture and sale of any product using the same brand names as were listed in the injunction." Id. at 644 n.3. The court rejected this theory: "First, the court believes that its intention to enjoin the production of only the infringing formulation was clear. Second, injunctions as broad as plaintiff's proposed reading are disapproved. And third, such a reading would not constitute a clear order of the court for purposes of a motion for contempt." Id.(citation omitted). As in Star Brite, the Injunction issued by this Court was a "clear order" that cannot accommodate TiVo's current, overbroad reading."


That addresses whether a brand new product could be marketed using the same model number as an infringing product. E* could build and market new DP-501 DVR's, assuming they no longer infringe.

The existing products in the field are not _new _products. They are still considered to be infringing products (until proven otherwise).


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## Greg Bimson

> As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendant to cease the manufacture and sale of any product using the same brand names as were listed in the injunction."


That was not TiVo's argument.


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## Greg Bimson

Greg Bimson said:


> As long as DVR functionality is disabled in the devices, as ordered.





jacmyoung said:


> That does not change the fact that a software download can make the Infringing Products non-infringing in the field, the only question is in what fashion.


No, "in what fashion" is exactly the problem. There was only "one fashion" prescribed by Judge Folsom for devices which were found to infringe and installed with an end user by the date the order was executed.

Any other fashion would be considered as contemptuous conduct.


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## Greg Bimson

jacmyoung said:


> My point was TiVo waited over two years to "inform," in fact TiVo "informed" the court after E* informed the court...


No, TiVo first informed the court during its brief to the court prior to the 30 May 2008 status hearing. DISH/SATS finally informed the court within the response brief to TiVo's brief.


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## jacmyoung

Martin Tupper said:


> That addresses whether a brand new product could be marketed using the same model number as an infringing product. E* could build and market new DP-501 DVR's, assuming they no longer infringe.
> 
> The existing products in the field are not _new _products. They are still considered to be infringing products (until proven otherwise).


Yet as I demonstrated above, the judge's very own injunction said the Infringing Products could be modified to be non-infringing in the field, that is why I said it is no use to argue about KSM what it said or not said as far as modification is concerned.

The judge said it could be done, case closed. Had he insisted a product recall, then one might have more reason to argue on this particular point.

But of course even if he had ordered the Infringing Products to be recalled, the truth is that it would be no different, E* would have appealed, the order would have been stayed, by the time the order were reinstated, E* would have told the court there were no infringing products in the field anymore to recall.

We would have been right where we are today. But at least people could argue the judge did not believe the Infringing Products could be modified to be non-infringing in the field.

But that is not the case here.


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## jacmyoung

Greg Bimson said:


> ... There was only "one fashion" prescribed by Judge Folsom for devices which were found to infringe and installed with an end user by the date the order was executed...


And that one fashion demonstrates the Infringing Products in the field can be modified to be non-infringing, so let's stop arguing if it can be done or not.

The question is not if it can be done, rather in what way(s), this is to be determined by the appeals court.


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## Curtis52

Martin Tupper said:


> That addresses whether a brand new product could be marketed using the same model number as an infringing product. E* could build and market new DP-501 DVR's, assuming they no longer infringe.
> 
> The existing products in the field are not _new _products. They are still considered to be infringing products (until proven otherwise).


It addresses that the label isn't what determines whether the disable order has been followed or is inapplicable. It's what's inside that counts.

As far as proving whether there is still infringement then yes, that's a necessary process that the plaintiff initiates as TiVo has done. Once it is proven that there is no infringement or that there is more than a colorable difference then there has been no contempt because it doesn't matter what the label says. It's what's inside that counts.


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## Curtis0620

Curtis52 said:


> It addresses that the label isn't what determines whether the disable order has been followed or is inapplicable. It's what's inside that counts.
> 
> As far as proving whether there is still infringement then yes, that's a necessary process that the plaintiff initiates as TiVo has done. Once it is proven that there is no infringement or that there is more than a colorable difference then there has been no contempt because it doesn't matter what the label says. It's what's inside that counts.


Since DISH can't prove that all Infringing Products got the new software, then they are assumed still infringing.


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## peak_reception

jacmyoung said:


> Except you forgot there is no such order to inform in effect even now, the order was stayed on 6/3/09. E* did not even have to inform this time around.


 The stay of 6-3-09 was automatic and known to have no significance beyond a month or two at the latest. Yes E* could've waited to see what the CAFC would decide on the stay for duration of the appeal but as I said before it's a moot point by now. They got what they wanted last time when it counted. Better for them to come across as eagerly cooperative now that it doesn't matter anymore.


> But E* did, why? By reading E*'s filing, it was a jab at the judge's such inform order. Accordingly it is even worse than not to inform last time


 I'm quite sure that Judge Folsom does not care about any such jabs, there or not. He cares about fairness and sunlight. Let it shine let it shine let it shine.


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## Jason Nipp

Curtis0620 said:


> Since DISH can't prove that all Infringing Products got the new software, then they are assumed still infringing.


Unlike other manufacturers, Dish targets software to specific receiver CAIDs and can force updates at will. Dish updates are not user loaded.

If the receiver is in stream and alive, the receiver will update.


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## scooper

Jason Nipp said:


> Unlike other manufacturers, Dish targets software to specific receiver CAIDs and can force updates at will. Dish updates are not user loaded.
> 
> If the receiver is in stream and alive, the receiver will update.


Exactly - so Tivo could say "you can't guarantee that all infringing devices have been modified" but Echostar can counter "if any of the 'infringing devices' are put online to be used, they WILL be modifed". And who really cares about infringing devices that are not in current use anyway ?


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## Curtis52

Curtis0620 said:


> Since DISH can't prove that all Infringing Products got the new software, then they are assumed still infringing.


TiVo should get a couple of dollars for each address that TiVo provides for any subscriber that didn't get a non-infringing workaround. Then Dish can send out a burly tech to do a manual install or confiscate the unit. TiVo has the burden to show noncompliance.


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## Greg Bimson

Curtis52 said:


> It addresses that the label isn't what determines whether the disable order has been followed or is inapplicable.


I don't see in _StarBrite v Gavin_ where this test was used against an order to disable. It appears to apply to an order against infringements.


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## jacmyoung

peak_reception said:


> The stay of 6-3-09 was automatic and known to have no significance beyond a month or two at the latest. Yes E* could've waited to see what the CAFC would decide on the stay for duration of the appeal but as I said before it's a moot point by now...


It is not a moot point at all, the order was stayed, meaning such inform order is not in effect. By reading of E*'s filing to inform, it was a jab at Judge Folsom.



> They got what they wanted last time when it counted. Better for them to come across as eagerly cooperative now that it doesn't matter anymore.


And yet such inform order was stayed by the appeals court, even though the judge said how unfair it would be to TiVo and the justice if the inform order was stayed.



> I'm quite sure that Judge Folsom does not care about any such jabs, there or not. He cares about fairness and sunlight.


I am quite sure he cares a lot. He cared a lot about why E* did not inform him last time and made it a big deal in his ruling, even though he never ordered E* to inform him, he cared a lot about E*'s delay tactic, even though he was the one that delayed the contempt ruling, he cared so much about E* not agreeing with his injunction to the point he said E* should have challenged his order last time on appeal, even though E* could not have done so because E* believed his order was right on.

Judge Folsom made his ruling not because he understood KSM, as I have demonstrated before, his two main points were in direct contrast to KSM and the appeals court standards, so much so even you were confused by his such statements.

Because he was pissed by what E* had done, and he should be pissed by E*'s jab too. The more pissed he is, the better for E*. In fact if I were E*, on appeal I would add that not only the appeals court should overturn his ruling and order, but transfer the DE case back to DE, because the only reason the case was transferred to him was that Judge Folsom supposedly had more experience with this case and knew how to do his colorable difference and infringement analyses. If the appeals court agrees with E* that he failed to do his analyses right, there goes out of the window the reason he should preside over this new DE case.


----------



## peak_reception

jac, you keep saying that Echo jabbed at the Judge in their inform filing. Please cite the actual jab so we can see what you are referring to.


----------



## Curtis0620

Why is it that every step of the way, people say that DISH will win because of.........

But, they always seem to lose.


----------



## Martin Tupper

Curtis52 said:


> It addresses that the label isn't what determines whether the disable order has been followed or is inapplicable. It's what's inside that counts.
> 
> As far as proving whether there is still infringement then yes, that's a necessary process that the plaintiff initiates as TiVo has done. Once it is proven that there is no infringement or that there is more than a colorable difference then there has been no contempt because it doesn't matter what the label says. It's what's inside that counts.


At the risk of being repetitive, StarBrite deals with _future _products. E* could build _new _receivers with new software and give them the same "DP-501" model number. As long as the new products are more than merely colorably different, then they don't have a problem. The fact that they share the same label as the infringing products is not enough to establish that they are infringing.

But, we aren't talking about _future _products. We are talking about the _actual _units in the field that have already been found to be infringing. Not just the label, the existing units _themselves _have been found to be infringing. The judge's order was clear, the infringing products were to have all DVR functionality turned off.

While E* can assert that new units do not infringe, they do not have the authority to unilaterally declare that the _existing _"infringing products" are no longer "infringing" products. The court has ruled on those units. They infringe, unless and until the court says they no longer infringe.

E* had (3) options to avoid contempt:
Actually shut the "infringing products" off.
Physically replace the "infringing products" with new units. (Even if the new units were later found to still infringe, E* would have been in compliance with the judge's order and would have avoided contempt)
Demonstrate that the new software is more than colorably different and get the court's permission to keep the existing "infringing products" on.


----------



## Curtis52

Martin Tupper said:


> While E* can assert that new units do not infringe, they do not have the authority to unilaterally declare that the _existing _"infringing products" are no longer "infringing" products. The court has ruled on those units


Those units cease to exist when they become different by virtue of becoming legally different devices. That is the purpose of the colorable difference test.


----------



## jacmyoung

Martin Tupper said:


> ...E* had (3) options to avoid contempt:
> Actually shut the "infringing products" off.





Even Judge Folsom did not say that, he allowed the DVRs to be used, not shut off completely.



> Physically replace the "infringing products" with new units.


TiVo asked for that and was denied by the judge, TiVo did not apeal.



> Demonstrate that the new software is more than colorably different and get the court's permission to keep the existing "infringing products" on.



This is exactly what E* is doing in front of the appeals court, and BTW for this round of new software, no permission was required.


----------



## jacmyoung

peak_reception said:


> jac, you keep saying that Echo jabbed at the Judge in their inform filing. Please cite the actual jab so we can see what you are referring to.


E*'s letter as filing #939 on 6/15/09 to the Court:



> Your honor:
> 
> While the Court's injunction is currently stayed, the Echostar defendants wish to inform the Court that Echostar is investigating other potential design-around options, but, at this stage, does not know whethher a further design-around is even possible.


----------



## Greg Bimson

Martin Tupper said:


> While E* can assert that new units do not infringe, they do not have the authority to unilaterally declare that the existing "infringing products" are no longer "infringing" products. The court has ruled on those units.





Curtis52 said:


> Those units cease to exist when they become different by virtue of becoming legally different devices. That is the purpose of the colorable difference test.


The order was to disable DVR functionality within Infringing Products. Once disabled, those products were to remain disabled for the life of the patent. Just because DVR functionality was disabled does not mean they became legally different devices.

And there simply isn't any case law to support that.


Martin Tupper said:


> Demonstrate that the new software is more than colorably different and get the court's permission to keep the existing "infringing products" on.





jacmyoung said:


> This is exactly what E* is doing in front of the appeals court, and BTW for this round of new software, no permission was required.


Sure permission was required. Not following the clear and concise meaning of the injunction would require permission from the court, Otherwise, a motion would be filed and the infringer would be found in contempt of the disablement provision in the injunction.


----------



## Martin Tupper

Curtis52 said:


> Those units cease to exist when they become different by virtue of becoming legally different devices.


But they are only legally different devices if/when the courts declare them to be legally different devices. Until that time, they are still the same old legally infringing products. Since E* never asked for them to be reclassified, they are still the "infringing products" subject to the original injunction.



Curtis52 said:


> That is the purpose of the colorable difference test.


"Colorable difference test" can be used to determine the legal status of new or existing products. Once an existing product is found to be infringing, it must pass on the "colorable difference test" to be deemed no longer infringing.


----------



## jacmyoung

Greg Bimson said:


> ...Sure permission was required. Not following the clear and concise meaning of the injunction would require permission from the court, Otherwise, a motion would be filed and the infringer would be found in contempt of the disablement provision in the injunction.


Can you point out to us where in the old injunction it said permission was required? Can one be in violation of an order that did not exist?

Of course permission is required in the 6/3/09 injunction, and this injunction is currently not in effect.


----------



## phrelin

jacmyoung said:


> Can you point out to us where in the old injunction it said permission was required? Can one be in violation of an order that did not exist?
> 
> Of course permission is required in the 6/3/09 injunction, and this injunction is currently not in effect.


So from this I infer it would be OK for Echostar to put a couple of teams on developing a couple of new "workarounds" to keep this hung up in the courts until sometime in 2013 without letting anyone know?


----------



## Curtis52

Martin Tupper said:


> But they are only legally different devices if/when the courts declare them to be legally different devices. Until that time, they are still the same old legally infringing products. Since E* never asked for them to be reclassified, they are still the "infringing products" subject to the original injunction.


Nope. It's the label over substance argument again. TiVo has to prove that there has not been a substantial change. It's the job of the plaintiff to prove noncompliance.


----------



## Martin Tupper

jacmyoung said:


> Even Judge Folsom did not say that, he allowed the DVRs to be used, not shut off completely.
> 
> TiVo asked for that and was denied by the judge, TiVo did not apeal.
> 
> This is exactly what E* is doing in front of the appeals court, and BTW for this round of new software, no permission was required.



Point taken. I should have said "cripple" them
TiVo was denied making that the ONLY option. Regardless, E* still had that option if they wanted to avoid contempt.
That is not what E* is doing. E* never asked the court to reexamine the "infringing products" before the injunction went into effect, or after. E* instead attempted to unilaterally void the court's finding that the exiting "infringing products" are infringing products. That's where they got into trouble.


----------



## jacmyoung

phrelin said:


> So from this I infer it would be OK for Echostar to put a couple of teams on developing a couple of new "workarounds" to keep this hung up in the courts until sometime in 2013 without letting anyone know?


First of all E* did inform Judge Folsom on 6/15/09 of their future attempts, see my previous post, but as I said it was just to piss him off more

But to answer your question, yes it will be ok up to the point where the appeals court makes their decision known whether the judge's ruling should be overturned and the order vacated.

That will happen in 11/2009, not 11/2013.


----------



## jacmyoung

And yet after E* got into so much "trouble" with Judge Folsom, the appeals court said E* had established strong likelihood of success on merits, and stayed the judge's injunction which ordered E* to inform.

BTW, the appeals court did not have to grant the stay entirely, in E*'s motion, they listed three things in the judge's order, the appeals court could have stayed some but not the others, yet they decided to stop all three orders, including the inform order.

What harm did the inform order do that it should be stayed?


----------



## Martin Tupper

Curtis52 said:


> Nope. It's the label over substance argument again. TiVo has to prove that there has not been a substantial change. It's the job of the plaintiff to prove noncompliance.


The exiting infringing products do not merely share a _label_ with the infringing products. They ARE the infringing products...the actual units that have been ruled upon.

TiVo must prove there has not been a substantial change in any _new _products. The existing infringing products have been already been ruled upon. It is E* that must prove that substantial changes _have _been made on the existing infringing products.


----------



## Curtis52

Martin Tupper said:


> E* instead attempted to unilaterally void the court's finding that the exiting "infringing products" are infringing products.


Nope. The infringing products no longer exist (per Dish). That's the reason for the colorable difference test. If there is more than a colorable difference, the infringing products subject to the disable order no longer exist.


----------



## phrelin

jacmyoung said:


> First of all E* did inform Judge Folsom on 6/15/09 of their future attempts, see my previous post, but as I said it was just to piss him off more
> 
> But to answer your question, yes it will be ok up to the point where the appeals court makes their decision known whether the judge's ruling should be overturned.
> 
> That will happen in 11/2009, not 11/2013.


If Echostar has a new "workaround" downloaded on all the listed boxes by 11/2009, then Folsom's "only colorably different" determination would not apply to the boxes as they exist in 11/2009. So where would that leave us?


----------



## Martin Tupper

jacmyoung said:


> And yet after E* got into so much "trouble" with Judge Folsom, the appeals court said E* had established strong likelihood of success on merits, and stayed the judge's injunction which ordered E* to inform.


They granted the stay. The rest is just _your_ interpretation. We'll just have to wait and see.


----------



## Curtis52

Martin Tupper said:


> It is E* that must prove that substantial changes _have _been made on the existing infringing products.


Well, I guess Dish could file a contempt motion on themselves. That way they would have to prove themselves in contempt or not. No, that won't work. I guess it's TiVo's job to file for contempt and provide the proof.


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## Martin Tupper

Curtis52 said:


> Nope. The infringing products no longer exist (per Dish).


As in "these aren't the droids you're looking for"? Your Jedi mind tricks won't work on me.

E* simply doesn't have that authority.



Curtis52 said:


> That's the reason for the colorable difference test. If there is more than a colorable difference, the infringing products subject to the disable order no longer exist.


The colorable difference test is used to expand (or reduce) the number of units affected by the injunction. If TiVo can demonstrate there are other units that are no more than colorably different than the "infringing products," then they can expand the scope of the injunction. If E* can demonstrate that the "infringing units" are now more than colorably different, then they can reduce the scope of the injunction. But until one of those things happens, the injunction is in full effect for the "infringing products", as enumerated in the injunction order.


----------



## peak_reception

> Your honor:
> 
> While the Court's injunction is currently stayed, the Echostar defendants wish to inform the Court that Echostar is investigating other potential design-around options, but, at this stage, does not know whethher a further design-around is even possible.


 So that's the big jab, poke, finger in the eye? It looks more to me like a play for sympathy written for the CAFC than a jab at Folsom. Like "Gosh, we already gave it our best effort, we're not even sure whether it's even possible now, but we'll give it our last ounce of strength for the sake of apple pie and motherhood. Pray for us." Seems as plausible as your jab interpretation.


----------



## Greg Bimson

Greg Bimson said:


> ...Sure permission was required. Not following the clear and concise meaning of the injunction would require permission from the court, Otherwise, a motion would be filed and the infringer would be found in contempt of the disablement provision in the injunction.





jacmyoung said:


> Can you point out to us where in the old injunction it said permission was required? Can one be in violation of an order that did not exist?


DISH/SATS wanted originally to replace their 721/921/942 with like boxes under a warranty program. What exactly did DISH/SATS file with the court?

A motion for clarification.

If DISH/SATS wanted to make sure they didn't run afoul of the disable provision, what should they have filed?

A motion for clarification.

Which basically requires the court to OK their plans or even their interpretation, regarding those devices ordered disabled.

Let's get real, here. DISH/SATS interpretation of the disable clause was that they followed it. The argument was that the injunction cannot possibly disable devices that do not infringe (but they were found infringing again) and that they disabled the devices between software changes (yet the injunction was not active).

Even former in-house counsel of DISH/SATS, VP David Moskowitz, mentioned during one of the calls with analysts they needed to obtain authorization to design-around the receivers targeted by the order regarding the loss of DVR functionality.


----------



## peak_reception

jacmyoung said:


> But to answer your question, yes it will be ok up to the point where the appeals court makes their decision known whether the judge's ruling should be overturned and the order vacated.
> 
> That will happen in 11/2009, not 11/2013.


 I could be wrong but I thought they only signaled that they would try fitting the hearing (expedited) into November's docket and that the verdict would come later, maybe even in 2010.


----------



## peak_reception

Greg Bimson said:


> If DISH/SATS wanted to make sure they didn't run afoul of the disable provision, what should they have filed?
> 
> A motion for clarification.


 Bingo!


----------



## Martin Tupper

Curtis52 said:


> Well, I guess Dish could file a contempt motion on themselves. That way they would have to prove themselves in contempt or not. No, that won't work. I guess it's TiVo's job to file for contempt and provide the proof.


Again, E* can develop new products in an attempt to work around TiVo's patents. On it's face, that would not violate the injunction. TiVo would have to file a motion of contempt and demonstrate that they are not more than colorably different to get them included in the injunction. Chances are even if E* fails the colorable difference test for new products, they would still not be found in contempt (at least at first).

But again these aren't new units. These are existing units that have already been found to be "infringing products" and have been ordered to be crippled. If E* keeps the existing "infringing products" fully operational, they are in violation of the injunction. TiVo need only demonstrate that they have not been crippled per the judge's instructions.

To avoid _any _contempt hearings, E* should have filed a motion to lift the injunction on the existing "infringing units" based on their new software design.

ETA: or a motion for clarification


----------



## Curtis52

Martin Tupper said:


> But again these aren't new units. These are existing units that have already been found to be "infringing products" and have been ordered to be crippled.


If they are more than colorably different, they are newly manufactured devices made from raw materials found on-site together with raw materials delivered to the site. As devices determined to be more than colorably different, they would never have been subject to the disable order.


----------



## scooper

Martin Tupper said:


> WAgain, E* can develop new products in an attempt to work around TiVo's patents. That would not violate the injunction. TiVo would have to file a motion of contempt and demonstrate that they are not more than colorably different to get them included in the injunction. Chances are even if E* fails the colorable difference test for new products, they would still not be found in contempt (at least at first).
> 
> But again these aren't new units. These are existing units that have already been found to be "infringing products" and have been ordered to be crippled. If E* keeps the existing "infringing products" fully operational, they are in violation of the injunction. TiVo need only demonstrate that they have not been crippled per the judge's instructions.
> 
> To avoid _any _contempt hearings, E* should have filed a motion to lift the injunction on the existing "infringing units" based on their new software design.
> 
> ETA: or a motion for clarification


Yes they ARE new units - same old physical hardware - new software makes them new units.

Now - Folsom's abbreviated colorable difference analysis is saying they aren't colorably different - that's an ENTIRELY different matter...

If you disagree on this - then it's time to dissolve all software patents without compensation to the patent holders.

Edit - including this case.


----------



## jacmyoung

peak_reception said:


> So that's the big jab, poke, finger in the eye? It looks more to me like a play for sympathy written for the CAFC than a jab at Folsom. Like "Gosh, we already gave it our best effort, we're not even sure whether it's even possible now, but we'll give it our last ounce of strength for the sake of apple pie and motherhood. Pray for us." Seems as plausible as your jab interpretation.


Of course both are speculations, but the question is what basis do they have.

My basis are:

1) E* did not have to inform because the order was stayed,
2) The judge said any design around attempts would be useless anyway, and
3) E*'s response? Here we are taking this opportunity to agree with you we did not know if it would *ever be possible.*

How could it be possible when you said it would be impossible? So why in the world did you want us to inform? What was the point of our informing you?


----------



## jacmyoung

peak_reception said:


> I could be wrong but I thought they only signaled that they would try fitting the hearing (expedited) into November's docket and that the verdict would come later, maybe even in 2010.


E* could not have signaled anything because the appeals court had not made the decision on the expedited briefing schedule at that time. They did so two weeks later.

There will be no hearing for this appeal because the appeals court did not order one. The appeals court was trying to produce a ruling in 11/09, which was why they orderd the expedited briefing schedule.


----------



## peak_reception

Yes, here it is, from CAFC's Order granting the stay on 7-1-09:


> (3)	The briefing schedule is expedited. EchoStar's opening brief is due nolater than July 17, 2009. TiVo's brief is due no later than August 25, 2009. EchoStar'sreply brief and the joint appendix are due no later than September 4, 2009. *The case will be placed on the November calendar, if practicable.*


 The ruling itself would come well after that, maybe not until 2010.


----------



## jacmyoung

peak_reception said:


> Bingo!


But to E* the order was absolutely clear, it only enjoined the "Infringing Products." How can you insist they try to clarify it if they did not see anything to clarify?


----------



## Martin Tupper

Curtis52 said:


> If they are more than colorably different, they are newly manufactured devices made from raw materials found on-site together with raw materials delivered to the site.


Um...no.

Even if they are eventually determined to be more than colorably different, they are not "newly manufactured". One look at the manufacturing date on the unit will tell you when it was manufactured.



Curtis52 said:


> As devices determined to be more than colorably different, they would never have been subject to the disable order.


As existing "infringing products" they are subject to the disable order unless and until they are determined by the court to be more than colorably different.


----------



## jacmyoung

peak_reception said:


> Yes, here it is, from CAFC's Order granting the stay on 7-1-09:
> The ruling itself would come well after that, maybe not until 2010.


That is the calendar for rendering the decision, even TiVo said so.


----------



## peak_reception

jacmyoung said:


> E* could not have signaled anything because the appeals court had not made the decision on the expedited briefing schedule at that time. They did so two weeks later.


 So you're referring to the inform filing? I'm not.



> There will be no hearing for this appeal because the appeals court did not order one.


 ... yet. Aren't they trying to place a hearing in November. The briefs already scheduled are called "opening briefs."



> The appeals court was trying to produce a ruling in 11/09, which was why they ordered the expedited briefing schedule.


 So they're scheduling a ruling, not a hearing, for November ??


----------



## peak_reception

jacmyoung said:


> That is the calendar for rendering the decision, even TiVo said so.


 Unless someone takes issue with that then I stand corrected.


----------



## Martin Tupper

scooper said:


> Yes they ARE new units - same old physical hardware - new software makes them new units.


Flip the unit over & read the label. Same model, same serial, same manufacturing date. They are the same units that were found to be "infringing products".



scooper said:


> Now - Folsom's abbreviated colorable difference analysis is saying they aren't colorably different - that's an ENTIRELY different matter...
> 
> If you disagree on this - then it's time to dissolve all software patents without compensation to the patent holders.


Why? I've said that E* could create new products in attempt to work around the patent. I've also said that they could replace the existing "infringing products" to avoid contempt.

But the infringing products aren't the software. The software is just a component of the products. The infringing products, as defined by the injunction, are the DVR's themselves. That is why E* needs to either replace the DVR's or get the court's approval of their software work around in order to (re)activate the existing "infringing products"


----------



## peak_reception

jacmyoung said:


> Of course both are speculations, but the question is what basis do they have.
> 
> My basis are:
> 
> 1) E* did not have to inform because the order was stayed,
> 2) The judge said any design around attempts would be useless anyway, and
> 3) E*'s response? Here we are taking this opportunity to agree with you we did not know if it would *ever be possible.*
> 
> How could it be possible when you said it would be impossible? So why in the world did you want us to inform? What was the point of our informing you?


 You're reading way too much into it, like I did with my motherhood and apple pie interpretation.


----------



## scooper

Martin Tupper said:


> Flip the unit over & read the label. Same model, same serial, same manufacturing date. They are the same units that were found to be "infringing products".
> 
> Why? I've said that E* could create new products in attempt to work around the patent. I've also said that they could replace the existing "infringing products" to avoid contempt.
> 
> But the infringing products aren't the software. The software is just a component of the products. The infringing products, as defined by the injunction, are the DVR's themselves. That is why E* needs to either replace the DVR's or get the court's approval of their software work around in order to (re)activate the existing "infringing products"


Martin, Martin, Martin - you need to catch up - all these arguements you're trying to make have been covered before in all the various threads. There's at least 3 (and probably more) threads with probably close to 5000 or more total posts on this case. It's not too difficult to find them...


----------



## Martin Tupper

scooper said:


> Martin, Martin, Martin - you need to catch up - all these arguements you're trying to make have been covered before in all the various threads. There's at least 3 (and probably more) threads with probably close to 5000 or more total posts on this case. It's not too difficult to find them...


Feel free to provide a link to whatever post(s) you feel might be pertinent .

Barring that, you could simply address/refute my posts.

Barring that, I'll assume you've got nothing.


----------



## Curtis52

Martin Tupper said:


> Um...no.
> 
> Even if they are eventually determined to be more than colorably different, they are not "newly manufactured". One look at the manufacturing date on the unit will tell you when it was manufactured.


So the date of manufacture is determined by the date the petroleum to make the plastic was pumped out of the ground or the date the (oldest?) IC was photoetched or the date on a label? The date code on which label determines the date of manufacture? The label on an IC? The label on an onscreen menu? Isn't this more label over substance stuff?


----------



## Greg Bimson

And I'm still waiting for the case law which avoids the disablement order, instead of the ones always brought up regarding the order against infringements.


----------



## jacmyoung

It is simple:

If the infringing products are always infringing products until such time the appeals court determines it might not be infringing anymore, then there is absolutely no reason to consider a stay of the injunction, because the law requires that the Court prohibits the use of any infringing products, staying an order that prohibits the use of the infringing products will be a violation of the law, committed by the appeals court.


----------



## jacmyoung

peak_reception said:


> You're reading way too much into it, like I did with my motherhood and apple pie interpretation.


Yes we both do from time to time, at least I have stated my basis for such reading, you did not


----------



## Curtis52

Greg Bimson said:


> And I'm still waiting for the case law which avoids the disablement order, instead of the ones always brought up regarding the order against infringements.


Please provide case law that says a disablement order effective against a device is also effective against a different device.


----------



## peak_reception

jacmyoung said:


> Yes we both do from time to time, at least I have stated my basis for such reading, you did not


 Ok, here's my reasoning. First the filing, for reference:



> Your honor:
> 
> While the Court's injunction is currently stayed, the Echostar defendants wish to inform the Court that Echostar is investigating other potential design-around options, *but, at this stage, does not know whether a further design-around is even possible.*


 Only the sentence in bold seems to be at issue. You seem to interpret "...is even possible" as meaning "is even allowed" by Judge Folsom. I don't. I interpret "...is even possible" as meaning "is even attainable without still infringing," as in: "Gosh, we already gave it our best Herculean effort, we're not even sure whether it's even possible now, but we'll give it our last ounce of strength for the sake of God and Country, Apple Pie and Motherhood. Please pray for us." In other words, an added dash of self-pity to help soften up the CAFC who may read it and feel a pang of sympathy. Personally I think my interpretation has more merit.


----------



## Herdfan

jacmyoung said:


> And the appeals court said E* had established strong likelihood of success on merits, and stayed the judge's injunction


Did the appeals court really say that? I mean did they write it out on paper or are you infering that from the fact they took the case?


----------



## jacmyoung

peak_reception said:


> Ok, here's my reasoning. First the filing, for reference:
> 
> Only the sentence in bold seems to be at issue. You seem to interpret "...is even possible" as meaning "is even allowed" by Judge Folsom. I don't. I interpret "...is even possible" as meaning "is even attainable without still infringing," as in: "Gosh, we already gave it our best Herculean effort, we're not even sure whether it's even possible now, but we'll give it our last ounce of strength for the sake of God and Country, Apple Pie and Motherhood. Please pray for us." In other words, an added dash of self-pity to help soften up the CAFC who may read it and feel a pang of sympathy. Personally I think my interpretation has more merit.


That is not even the point, my point was you did not have any basis to speculate that E* *did not* jab at the judge. Now I have provided you my basis you are trying to dismiss my such basis, that is fine, we can agree to disagree.

But you did not have any basis to say E* did not jab at the judge because you did not even know what E* said to the judge.


----------



## peak_reception

jacmyoung said:


> But you did not have any basis to say E* did not jab at the judge because you did not even know what E* said to the judge.


 I just quoted what E* said to the Judge. That's the very same quote that you gave for evidence that E* was jabbing at the Judge. If you've got something else, post it!

My basis for saying that you misinterpreted what E* wrote is that you misunderstood what "...is even possible" meant in the context of that quote. If you've got something more, post it!


----------



## jacmyoung

Herdfan said:


> Did the appeals court really say that? I mean did they write it out on paper or are you infering that from the fact they took the case?


This is what the appeals court said in its 7/1/09 stay order:



> To prevail, a movant must establish a strong likelihood of success on the merits or, failing that, must demonstrate that it has a substantial case on the merits and that the harms factors militate in its favor.


Then it said:



> Without prejudicing the ultimate disposition of this case by the merits panel, we determine based upon the arguments raised in the motions papers that EchoStar has met its burden of demonstrating the requisites for a stay of the order, pending appeal.


You are correct that the appeals court did not explicitly say E* had established a strong likelihood of success on the merits, but they never say so because saying so will have *prejudiced the ultimate disposition of this case by the merits panel.*

What they will say however, if the movant fails on the first test, whether they have succeeded on the second test. This is what the appeals court said when they stayed the Judge Folsom's injunction back in 2006 during E*'s last appeal:



> Because EchoStar's DVR was found to infringe both the hardware and software claims, to obtain a stay of the injunction, EchoStar must show that it is likely to prevail on its arguments concerning both sets of claims. Based upon our review of the motions papers, and without prejudicing the ultimate determination of this case by the merits panel, EchoStar has met its burden of showing that there is a substantial case on the merits and that the harm factors militate in its favor. Thus, the motion for a stay is granted.


Additionally, not only did the appeals court did not say the harm factors militated in E*'s favor this time, but almost everyone, from TiVo, Judge Folsom, the analysts, and me included, had said this time around, the harm factors no longer militated in E*'s favor.

If the harm factors were not militating in E*'s favor, then the only way to get a stay was to have established a strong likelihood of success on the merits.


----------



## Greg Bimson

Curtis52 said:


> Please provide case law that says a disablement order effective against a device is also effective against a different device.


I don't have to.

Joe Blow's five year old 625 was the target of the disable order. Just because DISH/SATS put new software on it doesn't change the legal status of that device: it was found infringing by a jury in April 2006 and again by Judge Folsom in June 2009.

That would be the same as saying if DISH/SATS disabled the DVR functionality of the device, it would no longer be within the scope of the injunction, and therefore, DISH/SATS could do whatever they wanted. Instead, the injunction stated that the devices are to have their DVR functionality disabled for the life of the patent.

The devices found infringing by a jury are ALWAYS subject to the court order issued by Judge Folsom. A software modification does not change the fact that Joe Blow has had the same equipment for five years. It is the same device purchased by Joe Blow five years earlier, and is the same device targeted by the injunction.

Now if the injunction had mentioned to disable the device _as configured_, we wouldn't be having this discussion.


----------



## Curtis52

Greg Bimson said:


> The devices found infringing by a jury are ALWAYS subject to the court order issued by Judge Folsom. A software modification does not change the fact that Joe Blow has had the same equipment for five years. It is the same device purchased by Joe Blow five years earlier, and is the same device targeted by the injunction.


If the devices are legally different from the devices in the injunction then they are not subject to the injunction. They were never subject to the injunction. The colorable difference test determines whether they are legally different devices.


----------



## jacmyoung

Greg Bimson said:


> ...Now if the injunction had mentioned to disable the device _as configured_, we wouldn't be having this discussion.


This is exactly what it does, to order the DVRs disabled as configured at trial.

What else does it mean? Disable the DVRs not as configured at trial? DVRs not as configured at trial are not subject to the disabling order, only those DVRs as configured at trial are subject to this disabling order.


----------



## phrelin

jacmyoung said:


> This is exactly what it does, to order the DVRs disabled as configured at trial.
> 
> What else does it mean? Disable the DVRs not as configured at trial? DVRs not as configured at trial are not subject to the disabling order, only those DVRs as configured at trial are subject to this disabling order.


As I said before:


phrelin said:


> jacmyoung said:
> 
> 
> 
> First of all E* did inform Judge Folsom on 6/15/09 of their future attempts, see my previous post, but as I said it was just to piss him off more
> 
> But to answer your question, yes it will be ok up to the point where the appeals court makes their decision known whether the judge's ruling should be overturned.
> 
> That will happen in 11/2009, not 11/2013.
> 
> 
> 
> If Echostar has a new "workaround" downloaded on all the listed boxes by 11/2009, then Folsom's "only colorably different" determination would not apply to the boxes as they exist in 11/2009. So where would that leave us?
Click to expand...

In other words, Echostar could change the software in the listed boxes every six months, so that they are not the exactly the same boxes subject to the then last order. By your described standard they aren't the boxes as configured when the order was issued. Someone has to call this to a halt now.

The only choices the appeals court has here is to say (a) the boxes are not just colorably different and the can be used with the new software or (b) they are just colorably different and the order is reinstated.

But since they stayed the order and Echostar has downloaded different software during the stay just as they did before, if the appeals court judges aren't just engaging in fun mental gymnastics at the taxpayers expense they have to say that Echostar may not use the listed boxes period - no software workarounds are permitted. The appeals court will have to issue an order of its own. Or they can send it back to Folsom and only because of the appeals court stay could be confronted with Echostar saying we've downloaded new software and we told you we were looking at the idea.

In other words, the appeals court is suckered in and has no choice now but to step out of the box or really appear to be engaging in fun mental gymnastics at the taxpayers expense.


----------



## Greg Bimson

Curtis52 said:


> If the devices are legally different from the devices in the injunction then they are not subject to the injunction.





jacmyoung said:


> This is exactly what it does, to order the DVRs disabled as configured at trial.


Again, the exact wording of the injunction:Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.​Of course, "Infringing Products" is the eight models of DVR presented at the trial. And this is only a subset of those products: the ones that have been installed as of the date of the executed order.The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products.​This injunction shall run until the expiration of the '389 patent.
This Court retains jurisdiction over Defendants to enforce any and all aspects of this Judgment and Permanent Injunction.​I still do not see where modifying the software on devices installed with the end user makes the devices legally different. If that were the case, the order to disable DVR functionality would make the devices legally different, and fall right out of the scope of the injunction. And we all know that isn't true.

However, I am willing to listen provided someone cites case law where making a change to a device already installed with an end user can avoid a disable or recall order.

I've been waiting for that citiation for years, as case law has never caught up to technology, where devices can be modified while in the end users' hands. It is for that reason DISH/SATS only had to remotely disable the installed DVR's, otherwise they would have had to recall them. That is the point DISH/SATS tries to hammer home on their response brief to the Court of Appeals.

EDIT: The reminder I'd like to point out is that the colorable difference test has only ever applied to an order with a provision against infringements. Extending the colorable difference test to the disable order is a stretch, as there is ZERO case law supporting it.


----------



## Greg Bimson

phrelin said:


> But since they stayed the order and Echostar has downloaded different software during the stay just as they did before, if the appeals court judges aren't just engaging in fun mental gymnastics at the taxpayers expense they have to say that Echostar may not use the listed boxes period - no software workarounds are permitted. The appeals court will have to issue an order of its own.


DISH/SATS stated in their brief to the Court of Appeals that there was no evaluation by Judge Folsom as per _KSM_ for either infringement or colorable difference.

But there was.

And that is what will make the next round so interesting.


----------



## scooper

Greg - if you're suggesting that different software doesn't make them legally different boxes - then why have the concept of software patents at all ? Or having Software components in patents at all ? Or field upgradeable devices ?


----------



## jacmyoung

Greg Bimson said:


> ...I still do not see where modifying the software on devices installed with the end user makes the devices legally different. If that were the case, the order to disable DVR functionality would make the devices legally different, and fall right out of the scope of the injunction. And we all know that isn't true...


Of course that is true. It is exactly because if a software download removes the DVR functions, the devices will be legally different, as non-infringing. The purpose of the injunction is to move the infringing products out of the scope of the injunction, as prohibiting the use of any products that falls within the scope of the injunction. A DVR once remved of its DVR functions, becomes a receiver and no longer infringe, therefore it is out of the scope of the injunction, which is why it may continue be used as a receiver.

If the injunction fails to move the infringing products out of the scope of the injunction, then such injunction has failed its job on the face, because the purpose of the injunction it to prohibit infringement.

Therefore if by removal of the DVR functions through a software download, the products will still be the same, and still infringing products, then Judge Folsom will have allowed the infringement to continue, he will have violated the law as far as what an injunction must do.


----------



## dgordo

Greg Bimson said:


> DISH/SATS stated in their brief to the Court of Appeals that there was no evaluation by Judge Folsom as per _KSM_ for either infringement or colorable difference.
> 
> But there was.
> 
> And that is what will make the next round so interesting.


There is much in Folsom's ruling that seems odd, however KSM was mentioned 38 times. Hard to argue that Folsom didnt apply KSM.


----------



## Greg Bimson

scooper said:


> Greg - if you're suggesting that different software doesn't make them legally different boxes - then why have the concept of software patents at all ? Or having Software components in patents at all ? Or field upgradeable devices ?


The problem is not with any of the above.

In this instance, the problem is with specifically targeted devices that were found to infringe, where Judge Folsom issued an order to disable the functionality within those targeted boxes.

The argument from DISH/SATS all along has been:
1) we followed the injunction, by disabling when switching to the new software.
2) we interpreted the injunction to mean "infringing products", and because we changed the software to make the boxes no longer infringe, they are no longer infringing and not subject to the disable order.

Now, within the brief to the Court of Appeals, the truth finally comes out: we no longer have any boxes out there subject to the disable order, because we changed the software.

This is the argument that they should have presented to Judge Folsom. It may not have swayed Judge Folsom, but at least that argument would now be valid in front of the Court of Appeals. The reminder is that one does not present new evidence to the Court of Appeals.

If this was just software, then yes, as one of the other cases cited pointed out to stop using the software "as configured". But this isn't just software. The two remaining claims are regarding "an apparatus" and "a process", and the process refers to a recevier.


----------



## tnsprin

Greg Bimson said:


> The problem is not with any of the above.
> 
> In this instance, the problem is with specifically targeted devices that were found to infringe, where Judge Folsom issued an order to disable the functionality within those targeted boxes.
> 
> The argument from DISH/SATS all along has been:
> 1) we followed the injunction, by disabling when switching to the new software.
> 2) we interpreted the injunction to mean "infringing products", and because we changed the software to make the boxes no longer infringe, they are no longer infringing and not subject to the disable order.
> 
> Now, within the brief to the Court of Appeals, the truth finally comes out: we no longer have any boxes out there subject to the disable order, because we changed the software.
> 
> This is the argument that they should have presented to Judge Folsom. It may not have swayed Judge Folsom, but at least that argument would now be valid in front of the Court of Appeals. The reminder is that one does not present new evidence to the Court of Appeals.
> 
> If this was just software, then yes, as one of the other cases cited pointed out to stop using the software "as configured". But this isn't just software. The two remaining claims are regarding "an apparatus" and "a process", and the process refers to a recevier.


I thought all hardware claims were overrulled by the earlier appeal court ruling? In which case its how the software (perhaps using hardware capabilities) performs the process.


----------



## Greg Bimson

tnsprin said:


> I thought all hardware claims were overrulled by the earlier appeal court ruling? In which case its how the software (perhaps using hardware capabilities) performs the process.


The "Hardware Claims" were reversed and remanded.

The "Software Claims" contain both software and hardware elements. One of the two "Software Claims" is "an apparatus", which means it exists in physical form. That is, it is the recevier.


----------



## jacmyoung

Greg Bimson said:


> ...This is the argument that they should have presented to Judge Folsom...


This is what E* had been telling Judge Folsom all along.



> If this was just software, then yes, as one of the other cases cited pointed out to stop using the software "as configured"...


No, that case ordered the stop of the use of the entire network service as configured, not just the software. The service consisted of network servers, printers, computers, routers, switches, service centers, store fronts, and all kinds of software used by such service.

And yet by just updating a small piece of software patch to the servers to render the service non-infringing, the infringer was in compliance of the order.

Now I will add one more point, software change alone is not enough, the change must be more than colorable. TiVo had argued, and the judge agreed that the software change was only colorable because E* only changed about 5,000 lines of code, compared to maybe over a million lines of code used by the DVR. So the change was insignificant.

But as E* pointed out, the code that was related to the DVR functions consisted just those 5,000 lines, and E* practically rewrote the code that was related to the DVR functions. According to the judge, and the law, only elements related to the issue of the injunction matter, therefore by practically rewriting the entire elements that were related to the subject of disablement, the difference of course is more than colorable.


----------



## Greg Bimson

jacmyoung said:


> No, that case ordered the stop of the use of the entire network service as configured, not just the software. The service consisted of network servers, printers, computers, routers, switches, service centers, store fronts, and all kinds of software used by such service.
> 
> And yet by just updating a small piece of software patch to the servers to render the service non-infringing, the infringer was in compliance of the order.


Because the order contained those two words: as configured.

For all the going back and forth we've been doing on this thread, consider this:

Where does DISH/SATS state the devices they've modified are legally different than those targeted by the disable order, and what case law is there to back up that assertion? That is the problem I've had with DISH/SATS argument all along. Changing the software on the devices targeted by the disable order (to me) doesn't put the devices outside the scope of the disable order. I don't believe it legally "becomes" a different device, and there certainly isn't any citations of case law which make that true.


----------



## phrelin

Greg Bimson said:


> Because the order contained those two words: as configured.
> 
> For all the going back and forth we've been doing on this thread, consider this:
> 
> Where does DISH/SATS state the devices they've modified are legally different than those targeted by the disable order, and what case law is there to back up that assertion? That is the problem I've had with DISH/SATS argument all along. Changing the software on the devices targeted by the disable order (to me) doesn't put the devices outside the scope of the disable order. I don't believe it legally "becomes" a different device, and there certainly isn't any citations of case law which make that true.


Here's where the logic breaks down. As it stands now, the hardware doesn't infringe because of the appeals court ruling. Indeed if the software were modified, the DVR function could be disabled. The software currently in the boxes infringes. Or does it since it isn't the original software? Folsom says it does. The appeals court has effectively stayed his determination that it does. By 11/2009 if Dish replaces that new software with newer software, what's the appeals court going to be talking about that's relevant to anyone - TiVo, Echostar, Folsom, me or you? Ahhh, they just like to engage in mental gymnastics at the taxpayers expense. They could do that here with us and it would be just as useful.


----------



## jacmyoung

phrelin said:


> As I said before:In other words, Echostar could change the software in the listed boxes every six months, so that they are not the exactly the same boxes subject to the then last order. By your described standard they aren't the boxes as configured when the order was issued. Someone has to call this to a halt now.
> 
> The only choices the appeals court has here is to say (a) the boxes are not just colorably different and the can be used with the new software or (b) they are just colorably different and the order is reinstated.
> 
> But since they stayed the order and Echostar has downloaded different software during the stay just as they did before, if the appeals court judges aren't just engaging in fun mental gymnastics at the taxpayers expense they have to say that Echostar may not use the listed boxes period - no software workarounds are permitted. The appeals court will have to issue an order of its own. Or they can send it back to Folsom and only because of the appeals court stay could be confronted with Echostar saying we've downloaded new software and we told you we were looking at the idea.
> 
> In other words, the appeals court is suckered in and has no choice now but to step out of the box or really appear to be engaging in fun mental gymnastics at the taxpayers expense.


Reading your post, I got the feeling my statements had made some good impression on you. I have the feeling you were impressed by the notion that E* had pissed off Judge Folsom and continues to do so. Now that you are impressed by such assertion, please let me try to move you away from it.

For one thing, Judge Folsom should not be influenced by how pissed he was when rendering his decision. His decision may not be vindictive, must follow the law. In other words, even if E* had been trying to piss him off, such tactic should not have ever worked on the judge. If as you speculated that E* is now trying to play the same game with the appeals court, then the appeals court should know better than Judge Folsom not to be influenced by such tactic.

Secondly, any additional design around attempts will not be the subject of discussion by the appeals court in this appeal, this appeal is only about the last design around. For the additional design around to be reviewed by the appeals court, the lower court must first have the opportunity to review such second design around, and render its *final decision* as far as colorable difference and infringement of the second design around are concerned. Without the lower court doing so, the appeals court simply has no jurisdiction over the issue of the second design around. They cannot review it even if they want to, the law says they simply do not have jurisdiction over interlocutory issues.

Look, I know you have a lot of questions about how the court supposed to manage some seemingly complex and confusing issues, but believe me, our legal system did not arise just yesterday, the patent law was established about what 100 years ago? The court had seen it all and had formulated their procedures to respond to such issues, no matter how complex they are. They have answers to every question you might have.

Having said that, it is also true that new questions can always arise, and our legal system must adapt to such changes. There are actually procedures the court uses to address such new issues, talk about having answers to every question. For example, if the appeals court feels that the issue is of special importance or of high complexity, they may order the appeal be reviewed en banc, meaning having a whole bunch of the appeals court judges, not just the usual three judges to review the case.

But so far I have seen no evidence that this appeals panel thought this appeal should be reviewed en banc.


----------



## Greg Bimson

phrelin said:


> Here's where the logic breaks down. As it stands now, the hardware doesn't infringe because of the appeals court ruling.


No, that is not true.

The Court of Appeals ruled back in January 2006 that they had to reverse and remand the "Hardware Claims", yet upheld and solidified the finding of infringement on the "Software Claims".

The "Software Claims" contain hardware elements. Therefore, Judge Folsom found that the boxes infringe, the Court of Appeals upheld that the boxes infringe, and Judge Folsom now had to find that the modified boxes still infringe.

There has yet to be a simple ruling on only the software component or hardware component of the DVR.


----------



## Greg Bimson

jacmyoung said:


> But so far I have seen no evidence that this appeals panel thought this appeal should be reviewed en banc.


Usually the only way to get the "en banc" hearing is after the three-judge panel rules. Then there would be an appeal from the losing side to have the entire bench to hear the case again _en banc_.


----------



## jacmyoung

Greg Bimson said:


> Usually the only way to get the "en banc" hearing is after the three-judge panel rules. Then there would be an appeal from the losing side to have the entire bench to hear the case again _en banc_.


And such appeal is not often granted.

But I was talking about en banc review as an initial appeal, it can be done but also rarely done.


----------



## HobbyTalk

Ahhh.... never mind, not worth it.


----------



## jacmyoung

peak_reception said:


> So you're referring to the inform filing? I'm not.
> 
> ... yet. Aren't they trying to place a hearing in November. The briefs already scheduled are called "opening briefs."
> 
> So they're scheduling a ruling, not a hearing, for November ??


I see your point, you meant "oral argument."

For an oral argument to take place parties must first motion for the appeals court, and the appeals court will then consider whether to grant such motion or not.

I have yet seen the parties motion for such oral argument.


----------



## l8er

[irrelevant]

Not a lawyer and don't play one on TV. Thank God.

[/irrelevant]


----------



## peak_reception

jacmyoung said:


> I see your point, you meant "oral argument."
> 
> For an oral argument to take place parties must first motion for the appeals court, and the appeals court will then consider whether to grant such motion or not.
> 
> I have yet seen the parties motion for such oral argument.


 Hearings are always oral. The judge(s) "hear" people argue.


----------



## jacmyoung

peak_reception said:


> Hearings are always oral. The judge(s) "hear" people argue.


Hearing usually describes a proceeding that is oral in nature while the lawyers do get to make their statements, but mostly it is the non-lawyers, i.e. the witnesses testify in front of the judge(s), under questioning by the lawyers, but an oral argument involves only the lawyers making their own arguments and statements, no witnesses, no testimonies.


----------



## peak_reception

jacmyoung said:


> Hearing usually describes a proceeding that is oral in nature while the lawyers do get to make their statements, but mostly it is the non-lawyers, i.e. the witnesses testify in front of the judge(s), under questioning by the lawyers, but an oral argument involves only the lawyers making their own arguments and statements, no witnesses, no testimonies.


 Well ok, I can appreciate the legalese. That's true. All I inquired about originally though was whether a November calendar scheduling was for an actual ruling (which seemed strange to me, to _schedule_ a ruling) or just a hopeful expedited date for more (oral) argument before the CAFC judges.

In other words, a "hearing" in this dictionary meaning of general usage: 


> 1. an opportunity for someone to be listened to


----------



## jacmyoung

peak_reception said:


> ...All I inquired about originally though was whether a November calendar scheduling was for an actual ruling (which seemed strange to me, to _schedule_ a ruling) or just a hopeful expedited date for more (oral) argument before the CAFC judges...


I thought I tried to answer that question, but if it was not good enough, below is the CAFC's own preliminary schedule:



> Date History
> 7/17/2009 Due BLUE BRIEF
> / / Appellant Principal Brief Filing Date
> / / Appellee or Cross Appellant Principal Brief Filing Date
> / / Appellant Reply Brief Filing Date
> / / Cross Appellant Reply Brief Filing Date
> / / Appendix Filing Date
> / / Disposition: ; by
> / / Mandated on
> >> Please Note: The briefs above are only the most current. <<


The 7/17 date is the E* opening brief deadline, then the TiVo's reply deadline is 8/25, the E* reply will be 9/4 with appendix, then the *disposition* which is the final decision. There is nothing else in between. Of course things can change, but for now, it appears the appeals court is trying to get the final decision out in 11/09.

Additionally E* has filed a motion to Judge Folsom to stay and cancel the planned briefing and the 7/28 conference meeting for additional sanctions, citing the stay by the CAFC.


----------



## peak_reception

jacmyoung said:


> The 7/17 date is the E* opening brief deadline, then the TiVo's reply deadline is 8/25, the E* reply will be 9/4 with appendix, then the *disposition* which is the final decision. There is nothing else in between. Of course things can change, but for now, it appears the appeals court is trying to get the final decision out in 11/09.


 Ok, thanks. And didn't you say earlier that one or both parties can file a motion for oral argument before the judges as well?


----------



## jacmyoung

peak_reception said:


> Ok, thanks. And didn't you say earlier that one or both parties can file a motion for oral argument before the judges as well?


Yes.

But since both E* and TiVo now had stated they welcome the expedited schedule, I tend to think neither of them will file such motion, but who knows what tomorrow may bring?


----------



## peak_reception

jacmyoung said:


> Yes.
> 
> But since both E* and TiVo now had stated they welcome the expedited schedule, I tend to think neither of them will file such motion, but who knows what tomorrow may bring?


 Is there a time window within which such request must be made?

Can they be opposed by the other party?

Are such requests granted automatically if unopposed?

TIA.


----------



## jacmyoung

peak_reception said:


> Is there a time window within which such request must be made?
> 
> Can they be opposed by the other party?
> 
> Are such requests granted automatically if unopposed?
> 
> TIA.


1) Don't know, my guess is no, at least if it is not too close to the disposition.
2) Should be yes.
3) No.

Are you hoping for a delayed decision? A 11/09 decision will be good for us to spend our holidays in peace, regardless what is the outcome


----------



## HobbyTalk

Interesting read.... sound familiar?

*How Toyota Is Using Patents To Slow The Growth Of Hybrid Vehicles*


----------



## jacmyoung

HobbyTalk said:


> Interesting read.... sound familiar?
> 
> *How Toyota Is Using Patents To Slow The Growth Of Hybrid Vehicles*


But one can look at this another way, Toyota was only trying to protect itself, after all Paice had successfully sued Toyota for Hybrid infringement now Toyota is ordered (by Judge Folsom BTW) to pay about $100/per car to Paice for every Hybrid car Toyota makes and sells that infringes on the Paice patent, and damages for those already made and sold.

Paice does not even participate in the car making, Paice is basically a patent troll, but it is legal.

On another note, I posted earlier that E* motioned Judge Folsom to either 1) suspend the additional sanction proceeding pending appeal, or 2) shorten TiVo's response and E*'s response time on motion 1).

Judge Folsom has just granted E*'s second motion to shorten the response time for both parties to argue whether motion 1) should be granted.


----------



## dgordo

peak_reception said:


> Is there a time window within which such request must be made?
> 
> Can they be opposed by the other party?
> 
> Are such requests granted automatically if unopposed?
> 
> TIA.


Consistent with Fed. R. App. P. 34 and Fed. Cir. R. 34, it is the court's policy to allow oral argument unless:
(a) The appeal is frivolous; or
(b) The dispositive issue or set of issues recently has been authoritatively decided; or
(c) The facts and legal arguments are presented adequately in the briefs and record, and the decisional process would not be aided significantly by oral argument.


----------



## peak_reception

jacmyoung said:


> Are you hoping for a delayed decision? A 11/09 decision will be good for us to spend our holidays in peace, regardless what is the outcome


 I would like to see no more delays. However, the cynic in me -- which definitely has the upper hand when it comes to this court case -- is certain that there will be more delay to come notwithstanding the hoped-for expedited schedule announced by CAFC.  Just trying to anticipate where it will come from next. Thanks to you and dgordo for your input on how oral arguments are handled.


----------



## jacmyoung

peak_reception said:


> I would like to see no more delays. However, the cynic in me -- which definitely has the upper hand when it comes to this court case -- is certain that there will be more delay to come notwithstanding the hoped-for expedited schedule announced by CAFC.  Just trying to anticipate where it will come from next. Thanks to you and dgordo for your input on how oral arguments are handled.


It seems since Judge Folsom's 6/2/09 ruling and order, things have been on a fast track.

E* sought emergency relief, the CAFC initiated a fast track review without request from the parties, TiVo welcomed such fast track review, E* then also used the CAFC's fast track review as a reason for requesting a shortened response time for motion to suspend additional sanctions, and Judge Folsom basically agreed to the shortened time for review of the new motion.

For once all parties are in agreement of something, how long that will last is unknown


----------



## minbari

So - what does all this mean for subscribers going forward? I currently have SD Dish - with an almost 5 year old DVR. I am looking for a new set and to go to HD programming and want the Dish DVR's capability of adding storage and would like the 922 when that is available - so ..... do I need to wait until all this legal beating on each other is over before proceeding - or what?

Just sign me - 
Dazed and Confused!


----------



## jacmyoung

Just read TiVo's reply to E*'s motion to suspend the planned additional sanction briefing and hearing. Interestingly E*'s main reason for the suspension was that the appeals court stayed Judge Folsom's contempt ruling, but for some reason TiVo argued no, the appeals court only stayed the judge's injunction, not the contempt ruling.

Maybe I read it wrong but below is the quote from the appeals court:



> EchoStar Corporation et al. (EchoStar) move for a stay, pending appeal, of *the order* of the United States District Court for the Eastern District of Texas (1) holding EchoStar in contempt of its previous injunction, (2) enjoining EchoStar, and (3) requiring that EchoStar take certain steps in light of its contempt holdings.


The appeals court then ordered the stay of *the order* which listed the three items above, not just the injunction:



> Without prejudicing the ultimate disposition of this case by the merits panel, we determine based upon the arguments raised in the motions papers that EchoStar has met its burden of demonstrating the requisites for a stay of *the order*, pending appeal.


From what I can tell, the judge's contempt finding is stayed pending appeal. Since the additional sanctions will be based solely on the contempt finding, and since the contempt finding is stayed, there is good reason to ask the sanction hearing to be stayed pending appeal too.

Another argument made by TiVo was the issue of fairness. Part of the reason TiVo said it would be unfair was because TiVo already filed its opening briefing for the additional sanction, and E* had yet filed their response. But then this issue had already been resolved, because E* will have to file its reply on 7/13, before the judge will even make the decision whether to stay the sanction hearing or not. All E* has to do is to file both responses on 7/13, one to the TiVo's additional sanction briefing, one to this TiVo's opposition to suspend the sanction hearing.

Yet another argument by TiVo was E* should have appealed the judge's order for the additional sanctions on 6/3/09 above. Since E* did not do so, somehow E* may not appeal this sanction hearing. For one thing, I don't think E* could have appealed this sanction hearing order, it was just a hearing order, not a final ruling, therefore it is an interlocutory order, not appealable. Besides, E* is not "appealing" this sanction order, E* is simply asking Judge Folsom to stay his own order. Judge Folsom has the power to issue his order and also stay his own order.


----------



## jacmyoung

minbari said:


> So - what does all this mean for subscribers going forward? I currently have SD Dish - with an almost 5 year old DVR. I am looking for a new set and to go to HD programming and want the Dish DVR's capability of adding storage and would like the 922 when that is available - so ..... do I need to wait until all this legal beating on each other is over before proceeding - or what?
> 
> Just sign me -
> Dazed and Confused!


You should hope for your DVR be forced to shut off, so Charlie will have to replace your DVR for you at no charge, you can then demand the 922, or else

But seriously I think the 922 will not be out until early next year, given E*'s past new DVR roll out history, you might want to wait a few more months after that just so you do not become a beta tester, by then the appeals court decision will be out already. I'd just wait.


----------



## minbari

Thanks Jacmyoung

Ken


----------



## jacmyoung

Forgot to mention another one of TiVo's contentions in its response, when they said it was "highly unlikely" E* would prevail on the appeal. Well if so, the appeals court would not have stayed the judge's order would they? Did TiVo read the requirement under which a stay of the order may be granted by the appeals court?


----------



## Herdfan

jacmyoung said:


> Forgot to mention another one of TiVo's contentions in its response, when they said it was "highly unlikely" E* would prevail on the appeal. Well if so, the appeals court would not have stayed the judge's order would they?


Well, TiVo has said a lot of things and the court has sided with them 90+% of the time. E* has said a bunch of things and lost almost every battle. I know which entity I am going to believe.


----------



## jacmyoung

Herdfan said:


> Well, TiVo has said a lot of things and the court has sided with them 90+% of the time. E* has said a bunch of things and lost almost every battle. I know which entity I am going to believe.


True, which is why I will not be surprised if Judge Folsom agrees with TiVo this time again, and deny E*'s motion, despite the fact I had pointed out each and every one of TiVo's contentions in their response is nonsense.

The only TiVo's contention I left out was TiVo accused E* of "delay tactic" again, except that such "delay tactic" is solely based on the appeals court's "delay tactic" by staying the judge's contempt finding. Again, the additional sanctions will be based solely on E*'s "contemptuous behaviors" which legally at this time do not even exist.


----------



## jacmyoung

BTW, E* just filed their response with Judge Folsom, aside from a few points I had made earlier about TiVo's nonsense, two important items:

1) TiVo in their sealed sanction opening briefing asked for nearly $1 billion damages,
2) E* indicated if Judge Folsom denies this motion they will appeal to the appeals court.

An interlocutory order ususally may not be appealed, with some exceptions.


----------



## jacmyoung

Now that E* appears to have missed the deadline for filing a response to TiVo's sealed $1 billion damages bid, let me try to speculate what E* might be doing just for the fun of it.

TiVo's $1 billion damage bid is in their sealed brief to Judge Folsom, logic tells me E* would not want to disclose such scary number for public consumption, it wouldn't do any good for its image. But E* did so against logic, it shows that E* has absolutely no respect to such $1 billion nonsense.

Basically E* is telling the judge, look even though TiVo had this number under wrap, we don't care if this number is in the open, just for you to see (since Judge Folsom most certainly has not read such brief) how ridiculous the demand TiVo is making.

Want to continue your sanction hearing just to let TiVo throw out such garbage? Go ahead, make our day, in fact we will not even respond to such garbage. So if it is the only number on the table, go ahead make it so, the bigger the number, the more ridiculous it is, the easier it is for us to appeal to the appeals court.

This is what we are going to say to the appeals court, you guys had stayed the judge's order, including the contempt finding and the new injunction, so everything that these additional damages are based on is not in effect, yet here you have it a lower court proceeding allowed TiVo to claim a number never seen before in the history of patent litigations, without any regard of the appeals court decision.

Go right ahead, make our day!

Of course if tomorrow or the day after it turns out E* files a response to TiVo's such $1 billion bid, the above speculation will be out of the window.


----------



## P Smith

Oh, please ! Dish made such ridiculous numbers in their cases without hesitating. Now they are in same shoes. It should teach them, especially if TiVo will prevail.


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## jacmyoung

P Smith said:


> Oh, please ! Dish made such ridiculous numbers in their cases without hesitating. Now they are in same shoes. It should teach them, especially if TiVo will prevail.


That is a big if, consider that the appeals court indicated E* had strong likelihood of success on the merits. If you are still thinking E* will settle, at least wait after the appeals court's ruling. Disclosing the $1 billion damages without the fear such number may do to E*'s image is a sign they do not care and will not settle.


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## P Smith

I see they struggled in same position what they doing/did in cases as a plaintiff. It's just same 'common' tactics for all lawsuits.


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## jacmyoung

P Smith said:


> I see they struggled in same position what they doing/did in cases as a plaintiff. It's just same 'common' tactics for all lawsuits.


Please, I did not even respond to your argument that E* had a ridiculous damage calculation.

E*'s estimate was $16M, I agree it is low. The judge's calculation was $103M. But keep in mind the two numbers are based on two sets of assumptions.

E*'s number was based on the assumption the new design no longer infringed, and the judge's number was based on his ruling that the new design still infringed.

It is undisputed that E* started to implement the new design in 10/06, and completed it in 04/07. The entire stay period is from 10/06 to 4/08. Therefore if the appeals court determines that the new design may not infringe, and remand the judge's $103M damages, the judge will have to lower his money judgment much loser to what E* had estimated.


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## Ken_F

Today's news...



> IN THE UNITED STATES DISTRICT COURT
> FOR THE EASTERN DISTRICT OF TEXAS
> MARSHALL DIVISION
> 
> TIVO INC.,
> 
> Plaintiff,
> 
> vs.
> 
> DISH NETWORK CORPORATION,
> 
> et al.,
> 
> Defendants.
> 
> CIVIL ACTION NO. 2:04-CV-01 (DF)
> 
> O R D E R
> 
> Before the Court is EchoStar's Motion to Suspend Proceedings on TiVo's Motion for Sanctions. Dkt. No. 957. Also before the Court are TiVo's response and Echostar's reply. Dkt. Nos. 962 and 963.
> 
> Having considered the arguments of counsel, all relevant papers and pleadings, the Court finds that EchoStar's motion should be DENIED.
> 
> On June 2, 2009, the Court issued a memorandum opinion and amended final judgment finding EchoStar in contempt of this Court's injunction. Dkt. Nos. 929 and 932. The Court, however, retained jurisdiction to enforce its order "including the award of monetary sanctions for EchoStar's contempt . . . ." Dkt. No. 932 at 3. The Court placed the issue of contempt sanctions on
> a briefing schedule and set the matter for hearing on July 28, 2009. Dkt. No. 930.
> 
> EchoStar now asks the Court to suspend proceedings regarding sanctions in light of the Federal Circuit's recent stay. Dkt. No. 957. EchoStar argues that, due to the Circuit's stay, there is no basis at this time for any award of sanctions. Id. at 2. Moreover, EchoStar contends that judicial economy will be best served by delaying disposition of the issue. Id. at 3. In response, TiVo argues that the Circuit's stay only covered this Court's injunction and does not preclude this Court from going forward on the issue of contempt sanctions.
> 
> Having considered the Circuit's stay order, the Court finds that the order does not preclude this Court from resolving the sanctions issue at this time. Instead, the Circuit merely stayed the injunction in this case and stayed this Court's order that EchoStar take certain steps (i.e. disable DVR functionality) in light of the injunction. See Dkt. No. 956, Ex. 1. * Furthermore, the Court finds that judicial economy is best served by having the benefit of any sanction ruling before the Circuit when it decides EchoStar's appeal.* The Court will, however, stay the enforcement of any sanction pending resolution of that appeal.
> 
> For the reasons stated above, EchoStar's Motion to Suspend Proceedings on TiVo's Motion for Sanctions (Dkt. No. 957) is hereby DENIED.


I thought Folsom showed some foresight with the bolded comment above. This should avoid a further appeal and any associated delay. It should also give the Federal Circuit a baseline from which it can recalculate any damages, if necessary.


----------



## jacmyoung

Ken_F said:


> Today's news...
> 
> I thought Folsom showed some foresight with the bolded comment above. This should avoid a further appeal and any associated delay. It should also give the Federal Circuit a baseline from which it can recalculate any damages, if necessary.


That is if parties actually appeal his sanctions. For that to happen, he must give reasons for the parties to appeal, because E* may decide not to appeal the sanctions, leave it for later.

But TiVo can appeal too, yet the only reason TiVo would appeal is if they do not like Judge Folsom's sanctions.

Regardless, the sanctions will not be enforced, there goes out of the window the notion that E* will have to put up another big bond.

The problem I see with Judge Folsom's above logic is, it may undermine the appeals court plan to produce a decision in November.

If things go as Judge Folsom planned, he will try to render a decision of the additional sanctions after the 7/28 hearing, say the first week of August at the earliest, but judging by his past speed likely much later.

However for argument sake he does it in lighting speed during the first week of August, either or both parties may then appeal that sanction decision right the way, the appeals court will have to schedule briefings on that issue, which one party will file the first briefing say by 9/17, the other party may file their response by 10/23, and then there will be another response from the other party by 11/6. Each initial response is about one month apart.

But the appeals court's November schedule is based on the assumption that E* will file their first brief on 7/17, TiVo will file their response on 8/25, and E* will then file their response on 9/4, with the goal of a November decision.

See how Judge Folsom's proceedings may disturb the appeals court's plan, and possibly push the decision back into next year?


----------



## jacmyoung

Reading the judge's order above:

The appeals court stayed Judge Folsom's order, the order that according to the appeals court "(1) holding EchoStar in contempt of its previous injunction, (2) enjoining EchoStar, and (3) requiring that EchoStar take certain steps in light of its contempt holdings." (Quoted from the appeals court stay order)

Compare what the appeals court said to what Judge Folsom said below with differences noted:

"Having considered the Circuit's stay order, the Court finds that the order does not preclude this Court from resolving the sanctions issue at this time. Instead, the Circuit merely [(1) which was omitted by Judge Folsom,] [(2)] stayed the injunction in this case and [(3)] stayed this Court's order that EchoStar take certain steps (i.e. disable DVR functionality) in light of the injunction [rather "in light of its contempt holdings"]."

The steps related to the additional sanctions are not "in light of the injunction" rather "in light of the contempt holdings." By playing word game, the judge tried to justify his sanction proceedings. Had he stuck to the appeals court "in light of the contempt holdings" he could not have justified the sanction proceedings, because the contempt holdings (item (1)) were stayed by the appeals court. So he changed it to "in light of the injunction."

Just like how Judge Folsom freely interpreted his own injunction and the appeals court KSM case law, he is now freely interpreting the appeals court's stay order again.

Or put it differently, *the order* which was stayed by the appeals court also said:



> This Court retains jurisdiction over Defendants to enforce any and all aspects of this Judgment and Permanent Injunction, including the award of monetary sanctions for EchoStar's contempt of this Court's injunction.
> 
> The Court further retains jurisdiction to award Plaintiff amounts for supplemental damages, interest, costs, attorneys fees and such other or further relief as may be just and proper.


Judge Folsom even quoted his own provisions in this order, but failed to recognize that his such order was stayed, meaning his above claimed jurisdictions are also stayed because they are a part of *the order* that was stayed.


----------



## peak_reception

If Judge Folsom is just making it up as he goes along, clumsily stepping on the CAFC's toes and misinterpreting controlling legal precedent at every turn (i.e. KSM in this case), then why was he just promoted to Chief Justice of his Texas District this past January?


----------



## dgordo

peak_reception said:


> If Judge Folsom is just making it up as he goes along, clumsily stepping on the CAFC's toes and misinterpreting controlling legal precedent at every turn (i.e. KSM in this case), then why was he just promoted to Chief Justice of his Texas District this past January?


Dont you get it?? A Judge who literally helped to determine how damages are awarded in patent cases and is considered one of the smartest judges on patent law doesn't understand the law.


----------



## jacmyoung

dgordo said:


> Dont you get it?? A Judge who literally helped to determine how damages are awarded in patent cases and is considered one of the smartest judges on patent law doesn't understand the law.


And when you think you are the smartest guy in the room is when you begin to do stupid things

What I have demonstrated above is how a simple order can be read by different court differently, even with words substituted to actually change the meaning of the order. If even the simple letters can be changed to fit the court's own will, then why can't the appeals court interpret Judge Folsom's own injunction differently, by interpreting the term "Infringing Products" differently, if by doing so only to simply preserve the appeals court's own standards?


----------



## Doug Brott

jacmyoung said:


> And when you think you are the smartest guy in the room is when you begin to do stupid things


Funny you should mention that ..


----------



## jacmyoung

Doug Brott said:


> Funny you should mention that ..


Funny you are interested in reading what I say

Likewise just because I believe the judge did so many careless things, does not stop me from reading his things and trying to point out why some of them are careless.

Because of his carelessness, TiVo might end up being the ultimate victim, after being dragged through this contempt proceeding for over a year, costing them millions of legal expenses, the 2/09 hearing alone was reported to cost them $20M, only to get nothing after the appeals court overturns the judge's ruling due to his carelessness.

As I said before, he could have just found E* in contempt a year ago, because both him and TiVo believed design around or not did not matter anyway. Playing a little too smart perhaps?

At the very minimum, at this point, E* continues to use the DVRs without the fear of disabling, and today, the judge had to concede that he would not enforce any sanctions against E* even after assessing such sanctions.

All these after his injunction was issued 3 years ago? Smart, very smart!


----------



## dfd

jacmyoung said:


> Funny you are interested in reading what I say
> 
> Likewise just because I believe the judge did so many careless things, does not stop me from reading his things and trying to point out why some of them are careless.
> 
> Because of his carelessness, TiVo might end up being the ultimate victim, after being dragged through this contempt proceeding for over a year, costing them millions of legal expenses, the 2/09 hearing alone was reported to cost them $20M, only to get nothing after the appeals court overturns the judge's ruling due to his carelessness.
> 
> As I said before, he could have just found E* in contempt a year ago, because both him and TiVo believed design around or not did not matter anyway. Playing a little too smart perhaps?
> 
> At the very minimum, at this point, E* continues to use the DVRs without the fear of disabling, and today, the judge had to concede that he would not enforce any sanctions against E* even after assessing such sanctions.
> 
> All these after his injunction was issued 3 years ago? Smart, very smart!


Let me see if I've got this right...

1. Another request by E* was DENIED.
2. This is another victory for E*

Again I am reminded of the Black Knight, "just a flesh wound".


----------



## Greg Bimson

Check out Mainer's site, docket 930. It is the order granting TiVo's motion for contempt, which also includes the scheduled sanction hearings. I don't believe that order was stayed.

Of course, the Court of Appeals is reviewing those decisons granting contempt, but that certainly doesn't mean anything has been done to the order granting contempt. Usually the only order that is stayed the injunction and damages. A bond must be posted for the awarded damages during the stay, because if the ruling is upheld, that money then goes directly to the plaintiff.


----------



## jacmyoung

Greg Bimson said:


> Check out Mainer's site, docket 930. It is the order granting TiVo's motion for contempt, which also includes the scheduled sanction hearings. I don't believe that order was stayed.
> 
> Of course, the Court of Appeals is reviewing those decisons granting contempt, but that certainly doesn't mean anything has been done to the order granting contempt. Usually the only order that is stayed the injunction and damages. A bond must be posted for the awarded damages during the stay, because if the ruling is upheld, that money then goes directly to the plaintiff.


As I said earlier, "the order" claimed "jurisdictions" over the assessment of any additional sanctions, and since "the order" was stayed, everything in it was stayed, including such "jurisdictions" claimed in the order.

I am no lawyer, correct me if I am wrong. I only used common sense, not strict legal interpretation.


----------



## Greg Bimson

jacmyoung said:


> I am no lawyer, correct me if I am wrong. I only used common sense, not strict legal interpretation.


The Court of Appeals reversed and remanded the finding of guilty via literal infringement because of the terms "separates audio and video", based off of the word "and". Something about how DISH/SATS used the hardware did not include the "and". It was a very literal interpretation of the claim.

If the "order" was stayed, it was only one order, and it would be the one enjoining DISH/SATS from continuing infringement and to disable, as well as the payment for damages . That would allow the other order, finding contempt and ordering sanctions briefings, to be kept alive and well.


----------



## jacmyoung

Greg Bimson said:


> The Court of Appeals reversed and remanded the finding of guilty via literal infringement because of the terms "separates audio and video", based off of the word "and". Something about how DISH/SATS used the hardware did not include the "and". It was a very literal interpretation of the claim.
> 
> If the "order" was stayed, it was only one order, and it would be the one enjoining DISH/SATS from continuing infringement and to disable, as well as the payment for damages . That would allow the other order, finding contempt and ordering sanctions briefings, to be kept alive and well.


You did not answer my question, by staying the order which claims jurisdiction over the assessment of additional sanctions, does it also stay the jurisdiction as well?

The judge did not even mention the other order, so let's stick to what parties are arguing about, it is "the order" that is in question. As I pointed out already the judge freely omitted one item mentioned by the appeals court, then changed the wording of another item mentioned by the appeals court.

Now I am saying there is another piece of evidence that the judge simply has no jurisdiction over the sanction hearing during the appeal process.

However the judge also whispered to E*, hey I would not enforce my sanctions, so let's drop it OK?

What is any good of an order if it will not be enforced? Just for show I guess. The judge couldn't even get Charlie to blink when he wasn't for show, what do you expect now he tells Charlie it is just for show?


----------



## Greg Bimson

jacmyoung said:


> You did not answer my question, by staying the order which claims jurisdiction over the assessment of additional sanctions, does it also stay the jurisdiction as well?


There is an order from Judge Folsom granting the motion for contempt and ordering briefing regarding sanctions. That order was not stayed. Therefore, that order still stands and is in effect. The issues regarding the sanctions for contempt are still allowed to continue.


jacmyoung said:


> What is any good of an order if it will not be enforced? Just for show I guess. The judge couldn't even get Charlie to blink when he wasn't for show, what do you expect now he tells Charlie it is just for show?


Oh, if Judge Folsom's judgment and findings are upheld, then the order regarding sanctions will also be enforced.


----------



## jacmyoung

Greg Bimson said:


> There is an order from Judge Folsom granting the motion for contempt and ordering briefing regarding sanctions. That order was not stayed. Therefore, that order still stands and is in effect.


Again that was not the argument by the judge, TiVo nor E*. Their arguments all centered on "the order," not the other order. The judge's decision is not based on the other order, only his interpretation of "the order." And I have already pointed out his tendency to either ignore what the appeals court said, or blatantly alter what the appeals court said.

Maybe he believes he could do that because as some posters stated that he was the smartest guy, the chief judge, but IMHO, the highest ranking district judge is still one pecking order below the lowest ranking circuit judge



> The issues regarding the sanctions for contempt are still allowed to continue.Oh, if Judge Folsom's judgment and findings are upheld, then the order regarding sanctions will also be enforced.


That is a given, the whole thing hinges on whether E* can win on appeal or not. The point however is, after arguing so passionately against any delay and any stay, supposedly in the interest of serving the justice, why now tell a gross offender that I am going to stay my order, before even issuing the order? What kind of message does it send to that SOB?

Unless he understood he might be on shaky ground.


----------



## Greg Bimson

jacmyoung said:


> Again that was not the argument by the judge, TiVo nor E*. Their arguments all centered on "the order," not the other order.





Judge Folsom said:


> The Court placed the issue of contempt sanctions on a briefing schedule and set the matter for hearing on July 28, 2009. Dkt. No. 930.





Judge Folsom said:


> In response, TiVo argues that the Circuit's stay only covered this Court's injunction and does not preclude this Court from going forward on the issue of contempt sanctions.





Judge Folsom said:


> Having considered the Circuit's stay order, the Court finds that the order does not preclude this Court from resolving the sanctions issue at this time. Instead, the Circuit merely stayed the injunction in this case and stayed this Court's order that EchoStar take certain steps (i.e. disable DVR functionality) in light of the injunction.


It appears to me that DISH/SATS' argument was that the stay applied to docket 930, the order granting the motion for contempt and the scheduling of sanctions. It also appears to me that TiVo's argument was the stay issued by the Court of Appeals did not apply to the order containing sanctions, and that Judge Folsom agreed.

So it was most definitely the argument by TiVo and accepted by the judge.

The Court of Appeals did not stay the order contained in docket 930. Therefore, the motion granting contempt and the ordered scheduling of sanctions stands.


----------



## jacmyoung

Greg Bimson said:


> It appears to me that DISH/SATS' argument was that the stay applied to docket 930, the order granting the motion for contempt and the scheduling of sanctions. It also appears to me that TiVo's argument was the stay issued by the Court of Appeals did not apply to the order containing sanctions, and that Judge Folsom agreed.
> 
> So it was most definitely the argument by TiVo and accepted by the judge.
> 
> The Court of Appeals did not stay the order contained in docket 930. Therefore, the motion granting contempt and the ordered scheduling of sanctions stands.


No party ever argued if 930 was stayed or not, so your argument that 930 is not stayed has no bearing on what the parties' were arguing, that was my point.

All arguments (by E*, TiVo and the judge) centered on whether by staying "the order" the appeals court also stayed the "finding of contempt" and if so, does staying of the finding of contempt preclude 930 from proceeding. Again the arguments had nothing to do with whether the appeals court stayed 930 or not.

On that particular point, the judge simply omitted the fact the appeals court specifically said their order would stay (1) finding of contempt...

Additionally, in justifying his decision, he also changed the appeals court's third item from "in light of the contempt holdings" to "in light of the injunction."

Different words mean different things. An action "in light of the contempt holdings" must first rely on the notion that the "finding of contempt" is not stayed. Yet an action "in light of the injunction" only relies on the fact from 4/08 to 6/09 the injunction was in effect.

The reason the judge was forced to put the words in the appeals court's mouth is precisely because he could not face the reality that the "finding of contempt" was also stayed. So he first ignored that item (1), then changed the wording of item (3) to try to avoid the issue again.

Let me say this one more time, the judge did not say he could proceed with 930 because 930 was not stayed by the appeals court, nor did E*, nor did TiVo make such argument, only you did.


----------



## manderson

jacmyoung said:


> And I have already pointed out his tendency to either ignore what the appeals court said, or blatantly alter what the appeals court said.


As you have already pointed out, you are not a lawyer and it's good that you are not. You have on many occasions bordered on (or outright) questioned the integrity of Judge Folsom. If you were a lawyer, you'd be flirting with violations of legal ethics.

The fact that you are not a lawyer, however, does not grant you carte blanche to question the motives or integrity of the honorable judge. We can all agree that this case has presented some interesting and complex issues about which reasonable minds can differ. I'm sure we can all debate the merits those issues without dragging the honorable judge through the mud.


----------



## Greg Bimson

jacmyoung said:


> All arguments (by E*, TiVo and the judge) centered on whether by staying "the order" the appeals court also stayed the "finding of contempt" and if so, does staying of the finding of contempt preclude 930 from proceeding. Again the arguments had nothing to do with whether the appeals court stayed 930 or not.


The problem is just like that with the disable order.

There was one order which says that DISH/SATS was found in contempt, where remedies were provided, ordering DISH/SATS to pay additional money, enjoining DISH/SATS from infringement, and compelling DISH/SATS to disable certain equipment.

Just because the Court of Appeals used the wording about the finding of contempt in an order does not negate the actual order granting the motion for contempt:


> EchoStar Corporation et al. (EchoStar) move for a stay, pending appeal, of the order of the United States District Court for the Eastern District of Texas (1) holding EchoStar in contempt of its previous injunction, (2) enjoining EchoStar, and (3) requiring that EchoStar take certain steps in light of its contempt holdings.


The only order that was stayed was the Amended Final Judgment and Permanent Injunction. TiVo argued the stay only related to that document, and not to the sanctions proceedings, which were on another order which also granted a finding of contempt.

That is the jist of TiVo's argument. It was the Amended Final Judgment and Permanent Injunction which was stayed, not the order granting the motion for contempt. It certainly wasn't that the finding of contempt was stayed.


----------



## jacmyoung

manderson said:


> As you have already pointed out, you are not a lawyer and it's good that you are not. You have on many occasions bordered on (or outright) questioned the integrity of Judge Folsom. If you were a lawyer, you'd be flirting with violations of legal ethics.
> 
> The fact that you are not a lawyer, however, does not grant you carte blanche to question the motives or integrity of the honorable judge. We can all agree that this case has presented some interesting and complex issues about which reasonable minds can differ. I'm sure we can all debate the merits those issues without dragging the honorable judge through the mud.


If you want to dispute what I said about how he managed to manipulate the appeals court's words (or not) be my guest, but using his authority to try to scare me? It is a fallacy called, well "appeal to the authority."

Minds can certainly differ, but facts do not, either you dispute them or accept them. Avoiding them do not help your argument.


----------



## jacmyoung

Greg Bimson said:


> ...Just because the Court of Appeals used the wording about the finding of contempt in an order does not negate the actual order granting the motion for contempt...


You still did not get my point. It may be true that the appeals court wording in one order does not impact another order, but to prove it, you must stick to the wording, not ignore them and then change them, in order to prove your point.

If you are forced to first ignore some of the wording, then compelled to change some of the other wording, in order to prove your point, what dose that say about the merit of your point?

And this is not even the real point I am making, what I am saying is the judge's latest decision demonstrated his ability to ignore the appeals court wording if he can, and when he cannot, he has the ability to change the wording, in order to fit his argument.

If he can do so now, he could have done so before, when he applied the appeals court's wording in KSM and other case law.


----------



## manderson

jacmyoung said:


> If you want to dispute what I said about how he managed to manipulate the appeals court's words (or not) be my guest, but using his authority to try to scare me? It is a fallacy called, well "appeal to the authority."
> 
> Minds can certainly differ, but facts do not, either you dispute them or accept them. Avoiding them do not help your argument.


You missed the entire point of my request. I was not arguing the merits of either position. Instead, I pointed out that reasonable minds could find merit with both sides in this case.

Nor was I trying to "scare" you. As you are not a lawyer, you have nothing to fear.

I was merely asking you to leave the good judge's integrity out of this debate. It's not a "fallacy", it's called respect.


----------



## jacmyoung

manderson said:


> You missed the entire point of my request. I was not arguing the merits of either position. Instead, I pointed out that reasonable minds could find merit with both sides in this case.
> 
> Nor was I trying to "scare" you. As you are not a lawyer, you have nothing to fear.
> 
> I was merely asking you to leave the good judge's integrity out of this debate. It's not a "fallacy", it's called respect.


One does not get my respect when he/she ignores the letter of the law and/or manipulate the letter of the law, regardless what social status of that person.


----------



## manderson

jacmyoung said:


> One does not get my respect when he/she ignores the letter of the law and/or manipulate the letter of the law, regardless what social status of that person.


And as visitors to this thread are quite aware, your understanding of the law is without reproach. Oh the hubris...


----------



## l8er

And somebody mentioned common sense and judge in the same post earlier, but isn't that an oxymoron?


----------



## jacmyoung

manderson said:


> And as visitors to this thread are quite aware, your understanding of the law is without reproach. Oh the hubris...


Speak for yourself not the visitors, otherwise you are committing the same fallacy, appealing to the other kind of authority.

So far I have not read one bit of substance of yours only emotional appeal. Care to dispute my point that the judge had ignored the appeals court's wording and then changed the appeals court's wording?

Or at a minimum, argue that his such manner is equally convincing as a judge, whose job is to interpret the law by following the law, and then apply the law, not to manipulate the law?


----------



## jacmyoung

l8er said:


> And somebody mentioned common sense and judge in the same post earlier, but isn't that an oxymoron?


How can I argue with that at this point?


----------



## manderson

jacmyoung said:


> So far I have not read one bit of substance of yours only emotional appeal. Care to dispute my point that the judge had ignored the appeals court's wording and then changed the appeals court's wording?


Quoting directly from EchoStar's "Emergency Motion for a Stay Pending Appeal of the District Court's Permanent Injunction":

"Yesterday, the district court granted TiVo's motion, ordering EchoStar to stop distributing its redesigned DVRs and to disable them within 30 days more than six million redesigned DVRs that have been placed in homes, which would leave more than 12 million people without DVR service. . . . *This extraordinary order* runs afoul of this Court's [precedent] . . . . EchoStar therefore requests that this Court stay the district court's order until EchoStar's appeal is resolved." Pgs. 1-3 (emphasis added).

Under Roman Numeral IV of EchoStar's motion, entitled "The District Court's Order Should Be Stayed," EchoStar begins with this phrase: "Determining whether *an injunction *should be stayed pending appeal involves four considerations . . . ." Pg. 10 (emphasis added).

EchoStar concludes that motion thusly: "Therefore, EchoStar requests that this Court immediately stay the district court's *injunction* until appeal is resolved." Pg. 20 (emphasis added).

Throughout the entirety of EchoStar's emergency motion, the sanction briefing schedule is never mentioned. Thus, by its own terms, the only order that EchoStar's motion requested a stay of is the injunctive order.

The Federal Circuit's stay order merely stated "IT IS ORDERED THAT: (1) The motion for stay of the order is granted . . . ."

The Circuit thus did not grant any more than was expressly requested by EchoStar in its motion. As EchoStar's request did not mention the briefing that had been, and as EchoStar requested only that the injunction be stayed, the Circuit order covered no more, no less.

Judge Folsom did not manipulate the law, he faithfully applied it.


----------



## space86

TiVo =

Watching Dish Network Priceless


----------



## Greg Bimson

I find merit in the argument, but it is entirely possible that the Court of Appeals did not use the correct words to state what exactly was in the Amended Final Judgment and Permanent Injunction.

Standard law dictates that the finding stands during appeal. It is the job of the Court of Appeals to review the findings _before_ deciding a ruling is upheld or reversed. The decision from the District court stands until that decision, unless it is stayed. The decision from the District Court is usually never stayed. Orders arising out of the decision, usually in the form of a remedy (damages, enjoinings, special orders) are stayed.


----------



## jacmyoung

manderson said:


> ...The Circuit thus did not grant any more than was expressly requested by EchoStar in its motion. As EchoStar's request did not mention the briefing that had been, and as EchoStar requested only that the injunction be stayed, the Circuit order covered no more, no less...


The appeals court ordered the stay of the order, which according to the appeals court specifically did three things, first to find E* in contempt of..., second to enjoin E*, and the third to order E* to taked certains steps in light of the contempt findings.

Therefore when the appeals court stayed that order, they explicitly stayed all three things they listed themselves. What they did not mention was the order also claimed jurisdiction over the assessment of any additional damages. Therefore my contention is if the order is stayed, the jurisdiction claimed in the order is also stayed.

The reason why I said the judge manipulated the appeals court's wording was because he specifically said the appeals court said "in light of the injunction" when what the appeals court said in black and whit was "in light of the contempt findings." That in addition to the fact he simply omitted what the appeals court said about the "finding of contempt..."

The letter of the appeals court is the law which Judge Folsom must follow, it is his job to follow the letter of his boss. He may disagree with the letter, but he must still follow it. It is the job of TiVo to appeal, not the judge's job to omit and change the letter.

If the appeals court committed error in their own wording, TiVo may appeal on such ground, but not the judge.


----------



## jacmyoung

Greg Bimson said:


> I find merit in the argument, but it is entirely possible that the Court of Appeals did not use the correct words to state what exactly was in the Amended Final Judgment and Permanent Injunction.


If the appeals court committed error, it is TiVo's job to appeal and seek clarification of the wording, not the job of the judge to omit and change the wording, otherwise the judge runs the risk of wasting his time rendering further decisions based on a decision that has holes in it.



> ...Orders arising out of the decision, usually in the form of a remedy (damages, enjoinings, special orders) are stayed.


You seem to agree with me the order for the additional sanction proceedings, arising out of his 6/3/09 decision, are usually stayed?

Look, if it goes without saying that the appeals court only stayed the injunction, nothing else, then say so, don't go to the details to try to quote what the appeals court said, but if you do, quote it correctly, don't pick and choose what you want to quote, and also change the wording of what they said.

Or the judge can even quote E*'s own words about the "injunction" and argue against E*, just like what manderson did, but that wasn't what happened. I kept saying do not argue on your own, first find out what E* is saying, what TiVo is saying, and what the judge is saying, then argue using their words, not your own words. Our words have no bearing on the case, if they are not said by the parties involved in the case.

Additionally, the "injunction" order, which the appeals court referred to as "the order,", according to the appeals court, contained three things, not just the injunction itself, and when "the order" was stayed, they stayed all three things, not just the "injunction." It does not even have much to do with what E* asked for. E* could have asked for little, and the appeals court could have given them a lot more than they asked for, if so, E* gets a lot, not the little they had asked for.

I think the judge undersatood it very well, which was why he did not argue like you and manderson did, he felt compelled to respond to the specific wording because E* was arguing on such wording of the appeals court, but he also knew he was on questionable ground when he omitted and also changed some of them, which was why he told E* he would stay his own order and not enforce the order. Some thing he had been totally against of doing in the past.

If E* finds enough reason not to appeal his decision, then his words will be the final words.


----------



## Greg Bimson

jacmyoung said:


> Therefore when the appeals court stayed that order, they explicitly stayed all three things they listed themselves. What they did not mention was the order also claimed jurisdiction over the assessment of any additional damages. Therefore my contention is if the order is stayed, the jurisdiction claimed in the order is also stayed.


The ruling was not stayed. The order containing the injunction and the additional damages was stayed.


jacmyoung said:


> You seem to agree with me the order for the additional sanction proceedings, arising out of his 6/3/09 decision, are usually stayed?


No. The damages and injunction are usually stayed. As I seem to recall, most of the time a finding of contempt normally comes with a sanctions ruling, but that did not occur.


----------



## jacmyoung

Greg Bimson said:


> ...The order containing the injunction and the additional damages was stayed.


Do you agree that the same order claimed jurisdiction over the assessment of additional sanctions? If so, do you think such claim of the jurisdiction was also stayed? BTW, that order does not contain "additional damages," if it did, there wouldn't have been any argument on the assessment of the additional damages. The additional damages are to be assessed as ordered in a separate order.



> No. The damages and injunction are usually stayed. As I seem to recall, most of the time a finding of contempt normally comes with a sanctions ruling, but that did not occur.


It is usual for the judges to defer the assessment of any damages not already assessed in their orders, pending appeal in the patent cases, the condition is if the injunction order is first stayed by the higher court on appeal, E* even cited case law for such cases.

Of course whether the judge actually decides to stay such order is entirely at his own discretion, even though most of the time they do exercise their discretion to stay such orders, given that their injunction orders are stayed by the appeals court first.

The reason behind such usual exercise of discretion is because for the appeals court to stay the injunction order pending appeal, it must at a minimum have first found substantial base on the merits by the defendants. Under such condition, rendering any additional sanctions may be premature.

If the appeals court refuses to stay the injunction order pending appeal, then it will be an entirely different story. Interestingly, on the same day the appeals court stayed the order in this case, it also made a decision on another similar appeal, which the defendants' motion to stay the injunction order pending appeal was denied because, according to the appeals court, the defendants failed to establish substantial base on the merits.


----------



## Greg Bimson

jacmyoung said:


> Do you agree that the same order claimed jurisdiction over the assessment of additional sanctions?


No. The sanctions are in docket 930. The sanctions are separate from the final judgment and injunction order.


jacmyoung said:


> BTW, that order does not contain "additional damages," if it did, there wouldn't have been any argument on the assessment of the additional damages.


Incorrect.In addition, Plaintiff shall have and recover from Defendants, jointly and severally, the sum of $103,068,836 in damages accrued during the stay of this Court's injunction, together with post-judgment interest on that sum calculated pursuant to 28 U.S.C. § 1961.​DISH/SATS posted a bond for said amount plus interest during the course of the appeal.


----------



## jacmyoung

Greg Bimson said:


> No. The sanctions are in docket 930. The sanctions are separate from the final judgment and injunction order.Incorrect.In addition, Plaintiff shall have and recover from Defendants, jointly and severally, the sum of $103,068,836 in damages accrued during the stay of this Court's injunction, together with post-judgment interest on that sum calculated pursuant to 28 U.S.C. § 1961.​DISH/SATS posted a bond for said amount plus interest during the course of the appeal.


The word is "jurisdiction" my friend, "jurisdiction." If the judge currently has no such jurisdiction he may not exercise such jurisdiction in order to assess any additional damages and sanctions, including but not limited to double or treble damages and attorney fees.

He said himself the reason he could move forward with the hearing was because he said in "the order" that he retained such jurisdiction, but he did not explain if "the order" was stayed, was his such jurisdiction which was part of "the order" also stayed?

If you call the $103M "additional damages" that is fine, I thought you were referring to the "additional sanctions."


----------



## Greg Bimson

jacmyoung said:


> The word is "jurisdiction" my friend, "jurisdiction." If the judge currently has no such jurisdiction he may not exercise such jurisdiction in order to assess any additional damages and sanctions, including but not limited to double or treble damages and attorney fees.
> 
> He said himself the reason he could move forward with the hearing was because he said in "the order" that he retained such jurisdiction, but he did not explain if "the order" was stayed, was his such jurisdiction which was part of "the order" also stayed?
> 
> If you call the $103M "additional damages" that is fine, I thought you were referring to the "additional sanctions."


Because the order on docket 930 was not stayed, Judge Folsom's court retains jurisdiction regarding the sanctions briefings and hearing. DISH/SATS did not request from the Court of Appeals that the sanctions process be stayed, only the Amended Final Judgment and Permanent Injunction (docket 932). The only order stayed was the four-part order: pay additional damages, enjoin infringing the patent, disable the Infringing Products and notify the court of work-arounds. None of that affects the decision regarding contempt, which was in another order.

Now if the Court of Appeals wrote:EchoStar Corporation et al. (EchoStar) move for a stay, pending appeal, of the order of the United States District Court for the Eastern District of Texas (1) *granting TiVo's motion finding* EchoStar in contempt of its previous injunction, (2) enjoining EchoStar, and (3) requiring that EchoStar take certain steps in light of its contempt holdings.​That would be completely different. Except that "granting TiVo's motion" didn't happen on the Amended Final Judgment and Permanent Injunction.


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## jacmyoung

Greg Bimson said:


> Because the order on docket 930 was not stayed, *Judge Folsom's court retains jurisdiction* regarding the sanctions briefings and hearing. DISH/SATS did not request from the Court of Appeals that the sanctions process be stayed, only the Amended Final Judgment and Permanent Injunction (docket 932). The only order stayed was the four-part order: pay additional damages, enjoin infringing the patent, disable the Infringing Products and notify the court of work-arounds. None of that affects the decision regarding contempt, which was in another order.
> 
> Now if the Court of Appeals wrote:EchoStar Corporation et al. (EchoStar) move for a stay, pending appeal, of the order of the United States District Court for the Eastern District of Texas (1) *granting TiVo's motion finding* EchoStar in contempt of its previous injunction, (2) enjoining EchoStar, and (3) requiring that EchoStar take certain steps in light of its contempt holdings.​That would be completely different. Except that "granting TiVo's motion" didn't happen on the Amended Final Judgment and Permanent Injunction.


Please read 932 again. It is 932 that retains the jurisdiction, not 930, and 932 is stayed.

If you read the judge's latest decision again, notice he never cited a single prior case to support his argument, even though both E* and TiVo had provided their own prior cases. The reason he did not cite any of them was because those cases all in one way or another supported E*'s argument. There is not a single prior case that supports what the judge is doing, or at least anything he knew of.

He is again trying to make history, just like what he did when he claimed his injunction could prohibit non-infringing acts.


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## Greg Bimson

jacmyoung said:


> Please read 932 again. It is 932 that retains the jurisdiction, not 930, and 932 is stayed.


930 contains both the order granting the motion for contempt the sanctions process relating to contempt, and was not stayed. I don't know why it is being argued that a valid order can be trumped when the Court of Appeals stayed a different order. I don't see how the Court of Appeals stayed the order which granted TiVo's motion for contempt.


jacmyoung said:


> He is again trying to make history, just like what he did when he claimed his injunction could prohibit non-infringing acts.


He never said his injunction could prohibit non-infringing acts. He said the order was to disable, and it wasn't followed. He did say that even if the modified devices no longer infringe that he could find contempt for failure to disable, but never elaborated on the remedy.


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## jacmyoung

Greg Bimson said:


> ... I don't see how the Court of Appeals stayed the order which granted TiVo's motion for contempt.


Not a single person ever argued 930 was stayed. On 6/2/09 the judge issued several orders, and his opinions. One of the orders claimed jurisdiction over the assessment of any additional damages, and the next day that particular order was stayed, and will be stayed throughout the appeal.

The judge can move forward with his 930 order all he wants, but if he simply has no jurisdiction over the assessment of any additional damages, then he has no business assessing the additional damages.



> He did say that even if the modified devices no longer infringe that he could find contempt for failure to disable, but never elaborated on the remedy.


That is the same as saying his injunction could prohibit the act of using the DVR functions, even if such act was non-infringing.


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## Greg Bimson

jacmyoung said:


> Not a single person ever argued 930 was stayed. On 6/2/09 the judge issued several orders, and his opinions. One of the orders claimed jurisdiction over the assessment of any additional damages, and the next day that particular order was stayed, and will be stayed throughout the appeal.
> 
> The judge can move forward with his 930 order all he wants, but if he simply has no jurisdiction over the assessment of any additional damages, then he has no business assessing the additional damages.


Judge Folsom will not be assessing additional damages relating to the order on 932. Judge Folsom will be assessing additional sanctions relating to the order on 930.


----------



## Greg Bimson

Greg Bimson said:


> He did say that even if the modified devices no longer infringe that he could find contempt for failure to disable, but never elaborated on the remedy.





jacmyoung said:


> That is the same as saying his injunction could prohibit the act of using the DVR functions, even if such act was non-infringing.


Not exactly. The disable provision of the order targets those devices that have been found as infringements. If DISH/SATS wishes to keep those devices with any DVR functionality, it better address the court with those plans, as the court said to disable them.


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## jacmyoung

Greg Bimson said:


> ...as the court said to disable them.


When the court says to disable them, it is to prohibit the act of using them. When the court says even if the DVRs do not infringe they must still be disabled, that is the same as saying even if the act of using them is non-infringing act, his injunction can still prohibit such act.

The appeals court says clearly, an injunction can only prohibit acts that are infringement of the patent...

It is not that the order may not prohibit (disable) the DVR functions, as long as such functions are infringing functions, but if they are no longer infringing functions, the order cannot prohibit them anymore.


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## Greg Bimson

jacmyoung said:


> When the court says even if the DVRs do not infringe they must still be disabled, that is the same as saying even if the act of using them is non-infringing act, his injunction can still prohibit such act.


That is not what was said. Judge Folsom explicitly stated that he would have ruled for contempt even if the devices were ruled non-infringing. Think about it:

If the DVR's were non-infringing, Judge Folsom would have only found DISH/SATS in contempt of the disable order. However, if they were non-infringing, Judge Folsom could _no longer_ then apply the disable order to the non-infringing devices. DISH/SATS would have only been in contempt up until the point the devices were ruled non-infringing.


jacmyoung said:


> It is not that the order may not prohibit (disable) the DVR functions, as long as such functions are infringing functions, but if they are no longer infringing functions, the order cannot prohibit them anymore.


Exactly. And once Judge Folsom finds that Joe Blow's five-year old 625 is no longer infringing, then Judge Folsom would then amend the injunction to allow ALL 625's to be removed from the scope of the injunction. However, the ruling of non-infringement doesn't help the devices that were ordered disabled and were still working, as they were subject to a disable order until Judge Folsom would finally rule they no longer infringe.


----------



## jacmyoung

Greg Bimson said:


> ...If the DVR's were non-infringing, Judge Folsom would have only found DISH/SATS in contempt of the disable order.


The point is, according to the appeals court, he cannot.



> And once Judge Folsom finds that Joe Blow's five-year old 625 is no longer infringing, then Judge Folsom would then amend the injunction to allow ALL 625's to be removed from the scope of the injunction.


Keep in mind that the order is to disable the *DVR functionalities*, not to disable the DVRs, so even though you have always argued once the DVRs are infringing DVRs, always infringing DVRs, until the court says otherwise, which I totally disagree.

The issue here is not even about the DVRs, rather the DVR functionalities. Therefore as far as the disabling order is concerned, who even cares about the Joe Blow's 625? It is the DVR functions that are at issue. Are the DVR functions infringing functions or not?

Whether the DVR functions are infringing functions or not is a matter of fact, if they are then they are, if they are not then they are not, there is no such thing that the court must first modify the injunction to declare the DVR functions, or the DVRs for that matter, removed from the injunction.

The courts never do that, they don't change the lists in the injunctions every time some of them are modified to be non-infringing, please do not make up some court procedures unless you can quote a few cases. The judge never said he must first remove the 625s off his list.

As I said before, making your own argument is fine, but if the parties are not using your argument, such argument has no bearing on the case.


----------



## Greg Bimson

Greg Bimson said:


> ...If the DVR's were non-infringing, Judge Folsom would have only found DISH/SATS in contempt of the disable order.





jacmyoung said:


> The point is, according to the appeals court, he cannot.


The Court of Appeals hasn't ruled, yet.


jacmyoung said:


> The courts never do that, they don't change the lists in the injunctions every time some of them are modified to be non-infringing, please do not make up some court procedures unless you can quote a few cases. The judge never said he must first remove the 625s off his list.


Then why did DISH/SATS file a motion for clarification regarding the 721/921/942 warranty program they wanted to enable, before they decided they would simply replace with a different model?

That is the problem. There is no case where someone subject to an order to disable can bypass it. Therefore, the order simply stands as-is, until someone motions the court to look at it.


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## Greg Bimson

jacmyoung said:


> Therefore as far as the disabling order is concerned, who even cares about the Joe Blow's 625? It is the DVR functions that are at issue.


No, the issue is that Joe Blow's 625 is subject to an order to have DVR functionality disabled.

Period.


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## jacmyoung

Greg Bimson said:


> The Court of Appeals hasn't ruled, yet.Then why did DISH/SATS file a motion for clarification regarding the 721/921/942 warranty program they wanted to enable, before they decided they would simply replace with a different model?
> 
> That is the problem. There is no case where someone subject to an order to disable can bypass it. Therefore, the order simply stands as-is, until someone motions the court to look at it.


The order stood as it was did not require E* to motion for clarification, or ask how to "bypass it" so that is the way it should be, no requirement of E* to ask.

If they asked for clarification, that is fine, but if they did not, fine also because they were not asked to.

They believe they have legally "bypassed" it, and the appeals court said E*'s argument had strong likelihood of success on the merits, for that reason the judge's new injunction was stayed.


----------



## jacmyoung

Greg Bimson said:


> No, the issue is that Joe Blow's 625 is subject to an order to have DVR functionality disabled.
> 
> Period.


As long as they are "Infringing Products."


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## dfd

jacmyoung said:


> As long as they are "Infringing Products."


Found to infringe at trial.

Modified.

Found to be "not more than colorably different" at the contempt proceedings.

Aren't they still considered infringing?

If a convicted criminal is appealing the verdict against him I would still use the word "convict" to describe him even if he hadn't exhausted all his appeals. Likewise, in my mind these products infringe until proven otherwise.


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## jacmyoung

dfd said:


> Found to infringe at trial.
> 
> Modified.
> 
> Found to be "not more than colorably different" at the contempt proceedings.
> 
> Aren't they still considered infringing?


That is not what Greg and I were arguing about. What he has been saying is, for the products to be non-infringing, the court must first declare them non-infringing, therefore they will only become non-infringing at the very moment the court declares them non-infringing.

Using the same logic, the products can be considered infringing products only at the very moment the court declares them infringing products, not before such declaration, what's fair is fair, right?

Now how about TiVo refund E* the $74M plus the interest? Because this amount was the "pre-judgment" damages for infringement, according to the above logic there were no infringing products prior to the court declaring the products infringing (pre-judgment period), therefore there cannot be pre-judgment damages.

How does that sound?



> If a convicted criminal is appealing the verdict against him I would still use the word "convict" to describe him even if he hadn't exhausted all his appeals. Likewise, in my mind these products infringe until proven otherwise.


Please do not confuse criminal law with civil law.

But even if I use your analogy, if he was convicted of the crime by the district court, was he only guilty at the moment the court declares him guilty, or had he been guilty from the time he committed the crime?

Likewise, if he wins on appeal and the appeals court declares him not guilty because the district court was wrong for convicting him, had he always been guilty anyway until such time the appeals court delcares him not guilty? Or had he never been guilty for such crime after all?

Now it is true the district court had determined the difference only colorable, but according to the appeals court, that is not enough to prove infringement, the court must go to the next step to prove by clear and convincing evidence that they still infringe.

If according to you only colorable difference is enough to declare infringement, there would not be the next step to further prove infringement by clear and convincing evidence, would it?

And interrestingly enough in this case Judge Folsom said he did not have to go to the next step. Who do you think is more likely to win, he or his boss?

Ever wondered why the appeals court so quickly stayed his injunction order, and also indicated that E* had established strong likelihood of success on the merits?


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## Greg Bimson

jacmyoung said:


> Now it is true the district court had determined the difference only colorable, but according to the appeals court, that is not enough to prove infringement, the court must go to the next step to prove by clear and convincing evidence that they still infringe.
> 
> If according to you only colorable difference is enough to declare infringement, there would not be the next step to further prove infringement by clear and convincing evidence, would it?
> 
> And interrestingly enough in this case Judge Folsom said he did not have to go to the next step. Who do you think is more likely to win, he or his boss?


Uh, Judge Folsom followed _KSM_ to a T, by finding the modified devices are merely colorably different and still infringe. It is in the memorandum.


----------



## Greg Bimson

jacmyoung said:


> They believe they have legally "bypassed" it, and the appeals court said E*'s argument had strong likelihood of success on the merits, for that reason the judge's new injunction was stayed.


I don't recall the Court of Appeals mentioning anything about the "merits" of the case. I seem to recall they mentioned they couldn't mention the "merits" without influencing the "merits panel", so it appears that "merit" alone is not the reason the order was stayed.


----------



## jacmyoung

Greg Bimson said:


> Uh, Judge Folsom followed _KSM_ to a T, by finding the modified devices are merely colorably different and still infringe. It is in the memorandum.


Yes it is in the memorandum he said he did not have to then prove by clear and convincing evidence once he found only colorable difference, which was in contrast to KSM, not following it to a T.


----------



## jacmyoung

Greg Bimson said:


> I don't recall the Court of Appeals mentioning anything about the "merits" of the case. I seem to recall they mentioned they couldn't mention the "merits" without influencing the "merits panel", so it appears that "merit" alone is not the reason the order was stayed.


Below is the stay order:

http://www.cafc.uscourts.gov/motions/Orders/2009/2009-1374.7-1-09.1.PDF



> To prevail, a movant must establish a strong likelihood of success on the merits or, failing that, must demonstrate that it has a substantial case on the merits and that the harms factors militate in its favor.


then



> Without prejudicing the ultimate disposition of this case by the merits panel, we determine based upon the arguments raised in the motions papers that EchoStar has met its burden of demonstrating the requisites for a stay of the order, pending appeal.


Had E* only demonstrated substantial case on the merits, the appeals court would have to also found harm factors militate in E*'s favor, before they could stay the injunction, but they did not find harm factors militate in E*'s favor, because of that, the only other reason for the stay was that E* had established a strong likelihood of success on the merits.

Either one, or the other, or no stay.

Let me further illustrate the point by quoting what the appeals court said in 2006 when they stayed the injunction in the last appeal:



> Because EchoStar's DVR was found to infringe both the hardware and software claims, to obtain a stay of the injunction, EchoStar must show that it is likely to prevail on its arguments concerning both sets of claims. Based upon our review of the motions papers, and without prejudicing the ultimate determination of this case by the merits panel, EchoStar has met its burden of showing that there is a substantial case on the merits and that the harm factors militate in its favor. Thus, the motion for a stay is granted.


Last time E* only demonstrated a substantial case on the merits, as such the appeals court was compelled to go one step further to determine and state whether the harm factors militated in E*'s favor, without such confirmation, the appeals court could not have stayed the injunction.

This time, there was no need to determine nor state whether the harm factors militated in E*'s favor, the only possible reason was that a strong likelihood of success on the merits stood on its own.


----------



## Herdfan

Just a thought on why they should be disabled even though they MAY no longer infringe.

E* has made a DVR that was found to infringe, they paid damages and installed new non-infringing software. The judge rules the new devices no longer infringe and since E* has paid damages up through the period of infringement, the case is over. (Assuming it went through all the appeals).

Based on user reports of the new non-infringing software, it was not as good as the infringing software so E* wants to upgrade the non0infringing software. Since the case is over, what stops E* from reloading infringing software on these boxes? How would TiVo ever know?

So unless there is a diable order, TiVo is not protected from further infringement.


----------



## jacmyoung

Herdfan said:


> Just a thought on why they should be disabled even though they MAY no longer infringe.
> 
> E* has made a DVR that was found to infringe, they paid damages and installed new non-infringing software. The judge rules the new devices no longer infringe and since E* has paid damages up through the period of infringement, the case is over. (Assuming it went through all the appeals).
> 
> Based on user reports of the new non-infringing software, it was not as good as the infringing software so E* wants to upgrade the non0infringing software. Since the case is over, what stops E* from reloading infringing software on these boxes? How would TiVo ever know?
> 
> So unless there is a diable order, TiVo is not protected from further infringement.


If TiVo finds evidence that the old software is back, or whatever is back is only a colorable variation of the old software, they may motion for the court for contempt again, they may compell E* to provide the software code in that proceeding to prove one way or the other.

This is how it has been done and is done all the time.


----------



## dfd

jacmyoung said:


> That is not what Greg and I were arguing about. What he has been saying is, for the products to be non-infringing, the court must first declare them non-infringing, therefore they will only become non-infringing at the very moment the court declares them non-infringing.
> 
> Using the same logic, the products can be considered infringing products only at the very moment the court declares them infringing products, not before such declaration, what's fair is fair, right?
> 
> Now how about TiVo refund E* the $74M plus the interest? Because this amount was the "pre-judgment" damages for infringement, according to the above logic there were no infringing products prior to the court declaring the products infringing (pre-judgment period), therefore there cannot be pre-judgment damages.
> 
> How does that sound?
> 
> Please do not confuse criminal law with civil law.
> 
> But even if I use your analogy, if he was convicted of the crime by the district court, was he only guilty at the moment the court declares him guilty, or had he been guilty from the time he committed the crime?
> 
> Likewise, if he wins on appeal and the appeals court declares him not guilty because the district court was wrong for convicting him, had he always been guilty anyway until such time the appeals court delcares him not guilty? Or had he never been guilty for such crime after all?
> 
> Now it is true the district court had determined the difference only colorable, but according to the appeals court, that is not enough to prove infringement, the court must go to the next step to prove by clear and convincing evidence that they still infringe.
> 
> If according to you only colorable difference is enough to declare infringement, there would not be the next step to further prove infringement by clear and convincing evidence, would it?
> 
> And interrestingly enough in this case Judge Folsom said he did not have to go to the next step. Who do you think is more likely to win, he or his boss?
> 
> Ever wondered why the appeals court so quickly stayed his injunction order, and also indicated that E* had established strong likelihood of success on the merits?


When have the products EVER been declared non infringing by the court? E* is the only party making that claim and so far the jury, appeals court, and most recently the judge have all said that they are still infringing.


----------



## rocatman

dfd said:


> When have the products EVER been declared non infringing by the court? E* is the only party making that claim and so far the jury, appeals court, and most recently the judge have all said that they are still infringing.


I don't think you thought out what you posted because neither a jury or the appeals court has seen/made a ruling on Dish's DVRs with the modified software only Judge Folsom. The key word here is "still".


----------



## dfd

rocatman said:


> I don't think you thought out what you posted because neither a jury or the appeals court has seen/made a ruling on Dish's DVRs with the modified software only Judge Folsom. The key word here is "still".


1. The jury found the devices infringing.
2. The appeals court upheld the finding of infringement.
3. The judge found the devices no more than colorably different (still infringing).

When has any court issued a statement that the devices no longer infringe?

E* has made many statements that the devices don't infringe but none of those statements have been enough to sway thee court.

When/if the devices are declared non-infringing by the court then I will consider them non-infringing; until then they are infringing devices in my mind.


----------



## jacmyoung

dfd said:


> When have the products EVER been declared non infringing by the court? E* is the only party making that claim and so far the jury, appeals court, and most recently the judge have all said that they are still infringing.


Who ever said those DVRs had been declared by the court to be non-infringing?

The argument was does the legal status exist only at the moment of declaration, or does it exist at the time such act exists, once a declaration is made.

If the appeals court declares that those DVRs may not infringe, then those DVRs may not infringe from the time the new software was installed, not from the time the appeals court makes such declaration.


----------



## Greg Bimson

jacmyoung said:



> The argument was does the legal status exist only at the moment of declaration, or does it exist at the time such act exists, once a declaration is made.


Well, the finding of infringement by the jury was that the eight models infringe (henceforth referred as "Infringing Products"). TiVo was only awarded damages for the amount when they properly labeled their devices with the patent pending sticker.

So although technically found as infringements in April, 2006, the "Infringing Products" were infringements before that, as TiVo was awarded damages up to and including September, 2006. These would be the original "Infringing Products". DISH/SATS sold more of the "Infringing Products" with the original software until at the latest April, 2007, so those were sold as infringements as well, because they were also "Infringing Products".

After April of 2007, DISH/SATS had modified five of the models where infringement was found (henceforth refered to as "Revision A Models") and sold those to the public. None of those could be determined as an infringement until reviewed by the courts. TiVo did motion the courts for an evaluation and that evaluation was determined by the court to also be merely colorably different and infringing in violation of the injunction ordering the cessation of infringing the patent.

So to me, the legal status goes from the point of manufacture of each apparatus to the ruling of infringement for each apparatus and beyond.

And, in other words, if DISH/SATS didn't bring up the issue that there were modifications, then the "Revision A Models" would not have been found as infringements. Talk about shooting yourself in the foot.


jacmyoung said:


> If the appeals court declares that those DVRs may not infringe, then those DVRs may not infringe from the time the new software was installed, not from the time the appeals court makes such declaration.


I agree, to a point. If the "Revision A Models" never infringed (because the Court of Appeals would reverse Judge Folsom's ruling), then there is no contempt of the order against infringements. If the modification makes the "Infringing Products" no longer infringe, then there is no contempt of the order against infringements but there is contempt against the order to disable, and then the injunction would be amended to relieve the "Infringing Products" from the disable provision. At that point, there wouldn't be additional damages given for infringement, but there may be sanctions in the form of money imposed for contempt of the disable order.

Just so that this is clear, the anti-trust exemption given to Major League Baseball was given by the Supreme Court back in the 1920's. The reason it stands is because no law has been passed to put Major League Baseball back in line with any other business regarding anti-trust issues, and because the Supreme Court's finding is the law of the case. The Supreme Court said Major League Baseball is a sport, not a business, and not subject to anti-trust law. File suit against Major League Baseball for anti-trust violations today, and case law will simply point to the fact that courts have stated Major League Baseball is not a business that applies to anti-trust law.

So until Congress and the President sign something to change that (a law) or someone can get the Supreme Court to reverse their finding that MLB is not subject to anti-trust law, the exemption stands.

And relating, until someone does something either by getting a law signed or motioning the court to re-review products, those products are infringements and have been ruled as such.


----------



## jacmyoung

Greg Bimson said:


> ...And relating, until someone does something either by getting a law signed or motioning the court to re-review products, those products are infringements and have been ruled as such.


And if the appeals court rules in E*'s favor, then those products may not be infringing products from the time the new software were downloaded, and at the mean time E* has not been forced to do anything because the appeals court had indicated E* had established a strong likelihood of success on the merits.

Had E* not done so, the appeals court would have not stayed the injunction, including the disabling order. What that says is, E* likely has a strong likelihood of success on the merits on all three items:

1) Finding of contempt,
2) Enjoining, and
3) Taking steps such as the disabling.


----------



## Greg Bimson

jacmyoung said:


> And if the appeals court rules in E*'s favor, then those products may not be infringing products from the time the new software were downloaded, and at the mean time E* has not been forced to do anything because the appeals court had indicated E* had established a strong likelihood of success on the merits.


Just like they had a "substantial case on the merits" last time:Because EchoStar's DVR was found to infringe both the hardware and software claims, to obtain a stay of the injunction, EchoStar must show that it is likely to prevail on its arguments concerning both sets of claims. Based upon our review of the motions papers, and without prejudicing the ultimate determination of this case by the merits panel, EchoStar has met its burden of showing that there is a substantial case on the merits and that the harm factors militate in its favor. Thus, the motion for a stay is granted.​Except DISH/SATS was still found to infringe.

And now, similar language for this stay:Without prejudicing the ultimate disposition of this case by the merits panel, we determine based upon the arguments raised in the motions papers that EchoStar has met its burden of demonstrating the requisites for a stay of the order, pending appeal.​Of course, the requisites for a stay are the same two factors listed in the last stay, not just "merits".


jacmyoung said:


> Had E* not done so, the appeals court would have not stayed the injunction, including the disabling order. What that says is, E* likely has a strong likelihood of success on the merits on all three items:
> 
> 1) Finding of contempt,
> 2) Enjoining, and
> 3) Taking steps such as the disabling.


No, just the first item, the dual finding of contempt, and whether or not the injunction is legal. After all, this time DISH/SATS is challenging the injunction.


----------



## Curtis52

Greg Bimson said:


> Just like they had a "substantial case on the merits" last time:


This time they didn't give a reason. They provided a multiple choice answer:

"To prevail, a movant must establish a strong likelihood of success on the merits or, failing that, must demonstrate that it has a substantial case on the merits and that the harms factors militate in its favor."

They didn't say whether it was option "A" or option "B".


----------



## dfd

Greg Bimson said:


> Just like they had a "substantial case on the merits" last time:Because EchoStar's DVR was found to infringe both the hardware and software claims, to obtain a stay of the injunction, EchoStar must show that it is likely to prevail on its arguments concerning both sets of claims. Based upon our review of the motions papers, and without prejudicing the ultimate determination of this case by the merits panel, EchoStar has met its burden of showing that there is a substantial case on the merits and that the harm factors militate in its favor. Thus, the motion for a stay is granted.​Except DISH/SATS was still found to infringe.
> 
> And now, similar language for this stay:Without prejudicing the ultimate disposition of this case by the merits panel, we determine based upon the arguments raised in the motions papers that EchoStar has met its burden of demonstrating the requisites for a stay of the order, pending appeal.​Of course, the requisites for a stay are the same two factors listed in the last stay, not just "merits".No, just the first item, the dual finding of contempt, and whether or not the injunction is legal. After all, this time DISH/SATS is challenging the injunction.


I think you've got it, but please let me recap...

1. Tivo wins jury trial.
2. E* appeals. Some say they will win because they have met a certain burden.
3. They don't win, but some play this as a victory by saying the stay was all they were after. 
4. E* appeals to SCOTUS. SCOTUS refuses to hear case. 
5. Some say it was a long shot anyway, E* got what they want by stalling.
6. E* thumbs their nose at the court and is declared in contempt. 
7. Some say they aren't.
8. See #2, minus "they don't win" (yet).


----------



## jacmyoung

Greg Bimson said:


> ...Except DISH/SATS was still found to infringe...


Substantial base on the merits is a much weaker base for success, which was why the appeals court had to also clearly state (basically telling TiVo) E* also proved the harms factors militated in E*'s favor, only then did they get the stay.

And under such weaker base for success, 1/2 of the claims verdicts were ultimately overturned, but as the appeals court also said, since E* needed to have both claims verdicts overturned, the 1/2 job was not enough to change the outcome.

People only look at the final outcome, and take that as the appeals court wholly embraced the district court last time when in fact they only agreed 1/2 of it.

This time it is clear that E* had established a much stronger base for success, so much so that even if the harms factors are totally in TiVo's favor (which most people do agree BTW), they still got the stay of the injunction. That is how strong E*'s likelihood of success is.

And the likelihood of success relates to three items specifically named by the appeals court. If you spend time to read many similar stay orders, the appeals court usually do not specify individual items, only use the term "the injunction."

Here, they made the effort to identify each item because each item has the equal weight and importance if you plainly read the English in black and white.

BTW, E* just informed Judge Folsom today that their new design plan which they informed him a few weeks ago that they did not know was possible, now they think it is possible and it is in engineering testing mode as we speak

BTW, I have a feeling that new option is just as Scooper and I speculated, to simply disable the ability to *simultaneously* store and playback TV programming. Only such change can be done so quickly, other options will not be so easy.

If true, then it is an indication Charlie would rather lose some of his DVR functions than settle with TiVo Of course what I said about what this newer new design might be is pure speculation.

I noticed just a few days ago E* enlisted a reputable attorney who specializes in software design code...


----------



## jacmyoung

Curtis52 said:


> This time they didn't give a reason. They provided a multiple choice answer:
> 
> "To prevail, a movant must establish a strong likelihood of success on the merits or, failing that, must demonstrate that it has a substantial case on the merits and that the harms factors militate in its favor."
> 
> They didn't say whether it was option "A" or option "B".


They said that last time too, they always say the above "A" or "B" first, what is crucial is what they say later what is the basis for the stay, if not "A", then they must say it is "B".

But when they do not say it is "B" then it has to be "A", else the stay must be denied.


----------



## peak_reception

Well, well, well, look at what EchoDish filed in EDTX today:



> Your Honor:
> 
> While the Court's injunction is stayed pending appeal, Defendants wish to inform the Court that they have identified potential design-around options in light of the Court's memorandum Opinion, dated June 2, 2009, and have been developing and testing potential design-around options in an engineering environment.
> 
> Sincerely,
> 
> Rachel Krevans


 So not only was the last notice to Judge Folsom (actually for the CAFC to digest) a ploy for sympathy (like I had speculated) as the question of a stay during appeal was being weighed, but now we find out that new design-arounds are already in the testing phase. Played the CAFC like a violin for the second time around now. You gotta give it to him; No one manipulates the court system like Charlie.


----------



## jacmyoung

peak_reception said:


> Well, well, well, look at what EchoDish filed in EDTX today:
> 
> So not only was the last notice to Judge Folsom (actually for the CAFC to digest) a ploy for sympathy (like I had speculated) as the question of a stay during appeal was being weighed,


Not true because the appeals court was not informed, besides the appeals court do not even care, they only look at the motion papers and TiVo's response and E*'s reply in deciding the stay issue, reading more than those would be inappropriate, it would be unfair to the parties.



> but now we find out that new design-arounds are already in the testing phase. Played the CAFC like a violin for the second time around now. You gotta give it to him; No one manipulates the court system like Charlie.


Unless you understand how the appeals work I guess you can say whatever you want. E* did not tell the appeals court about any newer new design, and TiVo did not get a chance to repond to that issue, so such issue could not be considered.

BTW if you missed it, see my above speculation about the newer new design


----------



## Curtis52

peak_reception said:


> Well, well, well, look at what EchoDish filed in EDTX today:
> 
> So not only was the last notice to Judge Folsom (actually for the CAFC to digest) a ploy for sympathy (like I had speculated) as the question of a stay during appeal was being weighed, but now we find out that new design-arounds are already in the testing phase. Played the CAFC like a violin for the second time around now. You gotta give it to him; No one manipulates the court system like Charlie.


Yep. Dish told the CAFC on 6-15-09 that they didn't know whether a design-around was even possible.


----------



## jacmyoung

Curtis52 said:


> Yep. Dish told the CAFC on 6-15-09 that they didn't know whether a design-around was even possible.


You are absolutely correct, I just found that footnote. I apologize for the remark.

If the appeals court did take that into consideration, which I don't think so, but if they did, what did that say about how the appeals court viewed the design around effort as an option?

If they were moved by E*'s such repeated and yet impossible effort, and decided to cut them some slack, isn't that a rebuttal to Judge Folsom's view that E*'s efforts were a sham?

Look the appeals court we would continue to design around even though Judge Folsom said it was no use, and not only that, we did not even know it would work, so help us?

Unless if the appeals court does view the design around effort as something to be encouraged, even if it is "impossible". Now it has become possible according to E*, shouldn't the appeals court give it more weight when they make their decision?

I was just playing devil's advocate BTW, I do not think it matters.


----------



## Greg Bimson

jacmyoung said:


> BTW, I have a feeling that new option is just as Scooper and I speculated, to simply disable the ability to *simultaneously* store and playback TV programming. Only such change can be done so quickly, other options will not be so easy.


But if that change can be done so quickly, what happens to buffering live TV? What happens when you want to watch a recorded program at the same time you'd like to record American Idol?

Change the software so that the ability to simultaneously record and watch recorded programming is gone, and so will DISH Network customers be. And that would be after having to pay $200 million in damages, whatever would be paid regarding sanctions, and that doesn't even touch the ViP series.

The pot keeps getting bigger and bigger


----------



## Greg Bimson

Curtis52 said:


> This time they didn't give a reason. They provided a multiple choice answer:
> 
> "To prevail, a movant must establish a strong likelihood of success on the merits or, failing that, must demonstrate that it has a substantial case on the merits and that the harms factors militate in its favor."
> 
> They didn't say whether it was option "A" or option "B".


Right, but is isn't like DISH/SATS didn't argue the harms factors. After all, according to the briefs DISH/SATS would have to disable DVR functionality to over 12 million people. Think that, coupled with the argument that Judge Folsom didn't apply KSM to this case may have made an impact?


----------



## jacmyoung

Greg Bimson said:


> But if that change can be done so quickly, what happens to buffering live TV? What happens when you want to watch a recorded program at the same time you'd like to record American Idol?
> 
> Change the software so that the ability to simultaneously record and watch recorded programming is gone, and so will DISH Network customers be. And that would be after having to pay $200 million in damages, whatever would be paid regarding sanctions, and that doesn't even touch the ViP series.
> 
> The pot keeps getting bigger and bigger


Who cares, this is E*'s way of telling the court and TiVo they are willing to fight all the way even if they lose subs. BTW I was only speculating, who knows, they may have found another way to keep all the DVR functions.

TiVo complained E* did not inform last time, it was in part TiVo believed E* was in contempt, despite the fact no such requirement was made. Somehow it appeared Judge Folsom even bought into such argument, now asked E* to inform, which is a history making decision for requiring the defendants to inform after only one try.

And now E* did exactly what was asked to, even though such requirement is stayed by the appeals court, and yet people cry foul? Well then don't ask E* to inform, what the difference does it make anyway if all you are doing is offering E* another way to gain some advantage? Stupid isn't it?


----------



## jacmyoung

Greg Bimson said:


> Right, but is isn't like DISH/SATS didn't argue the harms factors. After all, according to the briefs DISH/SATS would have to disable DVR functionality to over 12 million people. Think that, coupled with the argument that Judge Folsom didn't apply KSM to this case may have made an impact?


The point is, had E* only demonstrated a substantial base on the merits, a much weaker base, then the appeals court would have been compelled to state that E* also demonstrated the harm factors militated in its favor, just like the last time, otherwise they would not be able to explain to TiVo why they had managed to stay the injunction.

By method of exclusion, if E* did not just barely demonstrate a substantial base, the only other reason is they had established a strong likelihood of success on the merits.


----------



## Herdfan

jacmyoung said:


> BTW I was only speculating, who knows, they may have found another way to keep all the DVR functions.


I know a surefire way to keep all the DVR functions and not risk losing customers.

Lose your ego and settle.


----------



## jacmyoung

Herdfan said:


> I know a surefire way to keep all the DVR functions and not risk losing customers.
> 
> Lose your ego and settle.


Or win the next round and keep all the DVR functions and not risk losing customers, and not having to pay TiVo at the same time

I still think the latest round of "informing" the judge was just E*'s way of jabbing at the judge and TiVo, though others seemed to believe it was E*'s way to play games again. Jab or playing games, all part of the game.

Glad to see peak_reception finally came to my side


----------



## Greg Bimson

jacmyoung said:


> The point is, had E* only demonstrated a substantial base on the merits, a much weaker base, then the appeals court would have been compelled to state that E* also demonstrated the harm factors militated in its favor, just like the last time, otherwise they would not be able to explain to TiVo why they had managed to stay the injunction.
> 
> By method of exclusion, if E* did not just barely demonstrate a substantial base, the only other reason is they had established a strong likelihood of success on the merits.


The point is by stating, "that EchoStar has met its burden of demonstrating the requisites for a stay of the order," the only point we can deduce is DISH/SATS was able to demonstrate a substantial base of success on its merits. We just don't know whether or not the Court of Appeals felt there was a strong likelyhood of success based on merits or if the harms factors was what caused the stay.


----------



## scooper

jacmyoung said:


> TiVo complained E* did not inform last time, it was in part TiVo believed E* was in contempt, despite the fact no such requirement was made. Somehow it appeared Judge Folsom even bought into such argument, now asked E* to inform, which is a history making decision for requiring the defendants to inform after only one try.
> 
> And now E* did exactly what was asked to, even though such requirement is stayed by the appeals court, and yet people cry foul? Well then don't ask E* to inform, what the difference does it make anyway if all you are doing is offering E* another way to gain some advantage? Stupid isn't it?


OK Tivo - make up your mind -

either let Echostar develop their workarounds in secret

or
get an unprecedented requirement that they inform the court that they are working on a workaround after only their FIRST ATTEMPTED WORKAROUND

And then you complain about BOTH options ?

Apparently Echostar is NOT willing to settle yet. And Tivo HAS STATED IN OPEN court that it IS possible to make a DVR without infringing on their patents. So Echostar is going to pursue it for now. And Tivo is complaining about THAT also...


----------



## Curtis52

Greg Bimson said:


> The point is by stating, "that EchoStar has met its burden of demonstrating the requisites for a stay of the order," the only point we can deduce is DISH/SATS was able to demonstrate a substantial base of success on its merits. We just don't know whether or not the Court of Appeals felt there was a strong likelyhood of success based on merits or if the harms factors was what caused the stay.


Yep. A substantial case on the merits is all Dish claimed in their PR.


----------



## Greg Bimson

scooper said:


> Apparently Echostar is NOT willing to settle yet. And Tivo HAS STATED IN OPEN court that it IS possible to make a DVR without infringing on their patents. So Echostar is going to pursue it for now. And Tivo is complaining about THAT also...


Specifically, TiVo is complaining that DISH/SATS hasn't followed the disable order. Simply because DISH/SATS has decided to make the modifications the core of their argument has sunk them, as the modifications are now at the forefront of the argument and have been considered as infringements.


----------



## jacmyoung

Curtis52 said:


> Yep. A substantial case on the merits is all Dish claimed in their PR.


They said "at a minimum" they...

Of course it is, lawyers do not say what is implied, but I am no lawyer I am allowed to look for the pattern then speculate, so far I have read many stay orders, had yet read one that failed to state the harm factors when they found only substantial bases.

The harm factors were heavily contested by E*, TiVo and Judge Folsom in the stay debate, it would be an oversight for the appeals court to omit such issue with only one exception, if such issue was not necessary to determine the stay.


----------



## jacmyoung

Greg Bimson said:


> Specifically, TiVo is complaining that DISH/SATS hasn't followed the disable order. Simply because DISH/SATS has decided to make the modifications the core of their argument has sunk them, as the modifications are now at the forefront of the argument and have been considered as infringements.


That is not the issue we are discussing, we are talking about TiVo complaining E* did not inform, now TiVo succeeded in forcing E* to inform, TiVo cannot then complain when E* is doing exactly what TiVo asked them to do.

A week later E* can inform Judge Folsom that they have passed the engineering test stage, will start to download the new software, and file papers to motion the judge to start proceedings to review their new software for approval, which can take a while.

If the judge agrees to start such review process, E* can then argue to the appeals court look, even though the judge said design around did not matter, he still approves the new design review, see the irony of it?

TiVo cannot then complain that E* is trying to delay the process or try to play game with the appeals court, because E* is only doing what the court asked them to do.


----------



## peak_reception

jacmyoung said:


> Glad to see peak_reception finally came to my side


 Nice try. You see jabbing at Judge Folsom. I see subtle manipulation of the CAFC. Quite different.


----------



## jacmyoung

peak_reception said:


> Nice try. You see jabbing at Judge Folsom. I see subtle manipulation of the CAFC. Quite different.


I saw a jab at Judge Folsom last time, but not this time. Apparently E* lawyers are smarter than both you and me on this one

This is what I see may happen soon, E* files an emergency motion to the judge asking for a review and approval of the new software for download, in order to avoid infringement. It can certainly complicate the judge's schedule, but if the court unreasonably delays the review and approval, E* can use it later to argue that their continued infringement had a lot to do with the court inability to review and approve a non-infringing method.

There is a way for TiVo to avoid any delay and complication, by not opposing E*'s such motion, if so the judge will simply grant it and do not have to deal with it. The problem is if TiVo does so, they will have permitted E* to use the new design without any review, in other words they will have permitted E* to infringe on their patent, if in case the new design is later found to still infringe. TiVo cannot then seek damages since they had permitted the use of their patent.

This whole inform/approval thing was stupid, TiVo asked for it, TiVo got it.


----------



## Greg Bimson

jacmyoung said:


> That is not the issue we are discussing, we are talking about TiVo complaining E* did not inform, now TiVo succeeded in forcing E* to inform, TiVo cannot then complain when E* is doing exactly what TiVo asked them to do.
> 
> A week later E* can inform Judge Folsom that they have passed the engineering test stage, will start to download the new software, and file papers to motion the judge to start proceedings to review their new software for approval, which can take a while.
> 
> If the judge agrees to start such review process, E* can then argue to the appeals court look, even though the judge said design around did not matter, he still approves the new design review, see the irony of it?
> 
> TiVo cannot then complain that E* is trying to delay the process or try to play game with the appeals court, because E* is only doing what the court asked them to do.


Let me see if I get this straight, and this isn't pointed necessarily at you...

I've said time and time again that if DISH/SATS wanted to modify the software on the "Infringing Products" placed with end users as of 8 September 2006, they should have motioned the court, yet one of the arguments was that the case had been appealed, so why would anyone bother motioning Judge Folsom?

Now we are getting DISH/SATS motioning Judge Folsom regarding attempted workarounds, yet the injunction has been stayed? In other words, because the injunction has been stayed, why is DISH/SATS even bothering informing of a possible workaround?

This is getting to the point of absurdity.


----------



## jacmyoung

Greg Bimson said:


> Let me see if I get this straight, and this isn't pointed necessarily at you...
> 
> I've said time and time again that if DISH/SATS wanted to modify the software on the "Infringing Products" placed with end users as of 8 September 2006, they should have motioned the court, yet one of the arguments was that the case had been appealed, so why would anyone bother motioning Judge Folsom?
> 
> Now we are getting DISH/SATS motioning Judge Folsom regarding attempted workarounds, yet the injunction has been stayed? In other words, because the injunction has been stayed, why is DISH/SATS even bothering informing of a possible workaround?
> 
> This is getting to the point of absurdity.


I thought I just explained why

To force Judge Folsom to go through another discovery, expert review and testimonies and hearing, in a timely fashion to avoid infringement. If the court cannot accommodate such request, then it will be difficult for it to impose sanctions or damages later since the court at least in part contributed to the on-going infringement by delaying E*'s effort to avoid infringement, if and only if in the worst case the appeals court upholds the judge's ruling.


----------



## Curtis0620

peak_reception said:


> Well, well, well, look at what EchoDish filed in EDTX today:
> 
> So not only was the last notice to Judge Folsom (actually for the CAFC to digest) a ploy for sympathy (like I had speculated) as the question of a stay during appeal was being weighed, but now we find out that new design-arounds are already in the testing phase. Played the CAFC like a violin for the second time around now. You gotta give it to him; No one manipulates the court system like Charlie.


Whoa!

So, DISH is admitting that they still infringe!


----------



## tnsprin

Curtis0620 said:


> Whoa!
> 
> So, DISH is admitting that they still infringe!


I am sure they aren't, but if they lose on the currenty software, they probably want to be ready to try with another version.


----------



## jacmyoung

tnsprin said:


> I am sure they aren't, but if they lose on the currenty software, they probably want to be ready to try with another version.


It is a legal strategy used by lawyers (keep in mind judges are lawyers too) similarly called "on alternative".

Not that I admit I am wrong or you are right, but let's just assume you are right and we take your position, the conclusion or the result we may draw from your premise isn't pretty at all


----------



## P Smith

The result wouldn't pretty as Dish knew that initially.

Just tell me how much 'royalty' fund Dish accumulated last 8 years when they start charging for 'PVR' then 'DVR' fee ?


----------



## jacmyoung

P Smith said:


> The result wouldn't pretty as Dish knew that initially...


Knowing so "initially" and they fought on, you have to admit they have done a good job so far After over three years, neither TiVo nor the disctrict court had gotten anything extra out of E*.

TiVo supporters complain E* is playing the system, I say TiVo asked for the sky (a very "broad injunction" as Rogers stated) and got it, and that was when the trouble started for TiVo.


----------



## Herdfan

jacmyoung said:


> Knowing so "initially" and they fought on, you have to admit they have done a good job so far After over three years, neither TiVo nor the disctrict court had gotten anything extra out of E*.


I would say $114M and counting is a good start.


----------



## jacmyoung

I am curious why E* served their opening brief to the appeals court on 7/17/09 by mail rather used electronic filing, and what caused the appeals court to reject the filing today and extend E*'s filing deadline to 7/31/09?

Did E* make a point to the appeals court about the 7/28/09 sanctions hearing? If so could it be that E* asked for a delay to bring issues raised at the hearing to the appeals court? The timing seems right.


----------



## Greg Bimson

When you can't win, delay...

DISH/SATS certainly doesn't want an expedited appeal.


----------



## jacmyoung

Greg Bimson said:


> When you can't win, delay...
> 
> DISH/SATS certainly doesn't want an expedited appeal.


If so, aren't TiVo and Judge Folsom to blame?

Besides, the appeals court did not move TiVo's response date yet. TiVo can manage to stay with the schedule easily if they do not want a delay.


----------



## patrickmunn

jacmyoung said:


> I thought I just explained why
> 
> To force Judge Folsom to go through another discovery, expert review and testimonies and hearing, in a timely fashion to avoid infringement. If the court cannot accommodate such request, then it will be difficult for it to impose sanctions or damages later since the court at least in part contributed to the on-going infringement by delaying E*'s effort to avoid infringement, if and only if in the worst case the appeals court upholds the judge's ruling.


So your saying that DISH is going to have the gall to be in contempt of a court order for years, only to then tell the court to drop everything to rule on their supposed workaround in the hope that any delay could be used as contributing to their efforts to avoid infringement.........hmmmmm, ok.

How about DISH following the court order in the first place in order to avoid infringement?


----------



## jacmyoung

patrickmunn said:


> So your saying that DISH is going to have the gall to be in contempt of a court order for years, only to then tell the court to drop everything to rule on their supposed workaround in the hope that any delay could be used as contributing to their efforts to avoid infringement.........hmmmmm, ok.
> 
> How about DISH following the court order in the first place in order to avoid infringement?


The "gall" as you might say, is created by Judge Folsom's order to inform him of any design around attempt, and to obtain his approval for the final implementation. They better have that "gall" to comply with his such order, don't you think?

Or put it the other way, if the judge decided to issue such order, he'd better be able to follow through with his own order. If he delays it for a long time not responding to E*'s attempt to come into compliance with the order, then who is really in contempt of whose order?

If you have any beef with such "gall" then you need to complain to the judge, asking him why he issued such order. With this order the court had taken on an extra duty to be part of the design around process, not just to deal with it after the fact. In doing so, the court is bound by the patent law, which prohibits the court in any way to contribute to an act of on-going infringement.

I am not saying this is what is going to pan out, just making another "on the alternative" argument.

On the other hand, I do understand the frustration from the TiVo supporters, you have the right to complain how E* had lost every argument but still refused to comply. Just keep one thing in mind, your such contention is based on the belief that the appeals court can only uphold Judge Folsom's ruling and orders.

If you are even willing to consider the possibility, no matter how slim you may think it is, but if the appeals court overturns the judge's ruling and orders, then TiVo would be the one who had "abused" the system, by dragging E* through the mud.

I know it is a very difficult concept for the TiVo supports to even comprehend, but it is true if the appeals court overturns the judge's ruling and the orders. The problem is most TiVo supporters simply never give such possibility even the least bit of the thought.


----------



## Greg Bimson

Just playing a bit of devil's advocate here...


patrickmunn said:


> How about DISH following the court order in the first place in order to avoid infringement?





jacmyoung said:


> The "gall" as you might say, is created by Judge Folsom's order to inform him of any design around attempt, and to obtain his approval for the final implementation. They better have that "gall" to comply with his such order, don't you think?


Of course, the actual problem isn't with the order to avoid infringement, it is with the order to disable. If DISH/SATS actually complied with that order, this would be over.


jacmyoung said:


> I know it is a very difficult concept for the TiVo supports to even comprehend, but it is true if the appeals court overturns the judge's ruling and the orders. The problem is most TiVo supporters simply never give such possibility even the least bit of the thought.


And I'll say it again: there is no precedent to avoid a disable order. So in order for the Court of Appeals to overturn Judge Folsom's finding of contempt for violations of the disable provision, the decision from the Court of Appeals would have to be precedential.

Trust me, the Court of Appeals wants this case. The biggest problem with Judge Folsom's decision is that devices originally adjudged as infringements were re-evaluated. Since there is no precedent regarding field-modifiable devices and a disable order, the Court of Appeals would love to create one. Think like a new _KSM_, so to speak. A case that can be used as a standard.


----------



## jacmyoung

Greg Bimson said:


> ...Since there is no precedent regarding field-modifiable devices and a disable order, the Court of Appeals would love to create one. Think like a new _KSM_, so to speak. A case that can be used as a standard.


We have provided at least three prior cases you simply dismissed them as irrelevant because each of them differed in some way or the other to this case. But of course no two cases are alike, no two orders are identical, that can hardly be the reason to say there is no precedent. By your standard there cannot be precedent at all, since no two cases or orders are identical.

If we simply take your premise that there is no precedent on the interpretation of a disabling order like this one, I will say that there actually is one, that is the appeals court ordered the stay of such "unprecedented" disabling order.

If the disabling order is as you say "unprecedented", then an order to stay such order has to be "unprecedented" too, is it not?


----------



## patrickmunn

What did you expect the judge to do? DISH shows up in his courtroom in contempt of his order and you think he'll go easy on them? Who would think pissing off the judge is any kind of good legal strategy?

I guess in the long run it won't matter how long it will take for the judge to review the work around because DISH is going to win the appeal, right....or they'll just ignore any ruling that they don't agree with.


----------



## scooper

I think the whole idea is to get a non-infringing version of the software, then file a motion that since they now have non-infringing software available - to vacate the disable order.


----------



## Curtis52

scooper said:


> I think the whole idea is to get a non-infringing version of the software, then file a motion that since they now have non-infringing software available - to vacate the disable order.


I'm guessing that the disabled DVRs will be in a trash heap within a month after they are disabled. Even if there is a quick and successful hearing on a new workaround, no one is going to dig those DVRs out of the local landfill.


----------



## jacmyoung

TiVo had disclosed in their latest filing that E* is disputing about $850M of the nearly $1B sanctions estimated by TiVo. Say that is about $125M (a guess of $975M claimed by TiVo) “undisputed” which should amount to the similar damages calculated by the judge in his 6/3/09 order. The judge’s $103M was to cover the last stay period, the current $125M is to cover the post stay period.

Don’t be confused by TiVo’s claim of “undisputed” amount though. Everything is in dispute, including the judge’s $103M damages, else it would not have been stayed pending appeal. TiVo would have already received the money were it not in dispute. The E*’s “undisputed” $125M is to assume E* loses on appeal. E*’s goal is of course to win on appeal.

In the above filing, TiVo mainly wanted the court to allow them to add 5 more pages in their replies. I found it ironic one of the main arguments TiVo used to deny E*’s motion to cancel the sanction replies/hearing was that it wasn’t that much a complicated issue and easy for the court to determine, now they suddenly see the need for twice of the pages to write about such issue. Though I do not see why the judge will not grant TiVo’s wish.


----------



## jacmyoung

Curtis52 said:


> I'm guessing that the disabled DVRs will be in a trash heap within a month after they are disabled. Even if there is a quick and successful hearing on a new workaround, no one is going to dig those DVRs out of the local landfill.


Nothing will be disabled pending appeal, regardless whether there might be a new design review/approval or not.

If you mean the post appeal period, it depends on how the appeals court will rule. If E* wins there wouldn't be any. If E* loses then design around wouldn't matter.


----------



## peak_reception

jacmyoung said:


> In the above filing, TiVo mainly wanted the court to allow them to add 5 more pages in their replies. I found it ironic one of the main arguments TiVo used to deny E*'s motion to cancel the sanction replies/hearing was that it wasn't that much a complicated issue and easy for the court to determine, now they suddenly see the need for twice of the pages to write about such issue. Though I do not see why the judge will not grant TiVo's wish.


 TiVo motions are usually bloated and repetitive anyway. It actually takes away from their effectiveness in my opinion. It will be better for them if the Judge denies their motion and forces them to edit.


----------



## scooper

peak_reception said:


> TiVo motions are usually bloated and repetitive anyway. It actually takes away from their effectiveness in my opinion. It will be better for them if the Judge denies their motion and forces them to edit.


Bloated, repetitive, and not to the point...


----------



## jacmyoung

peak_reception said:


> TiVo motions are usually bloated and repetitive anyway. It actually takes away from their effectiveness in my opinion. It will be better for them if the Judge denies their motion and forces them to edit.


But according to most TiVo supporters, TiVo has been right every time so far. Are you saying our legal system rewards bloated inefficiency?


----------



## peak_reception

Someone else could benefit from restraint and self-editing too. :sure:


----------



## jacmyoung

patrickmunn said:


> What did you expect the judge to do? DISH shows up in his courtroom in contempt of his order and you think he'll go easy on them? Who would think pissing off the judge is any kind of good legal strategy?
> 
> I guess in the long run it won't matter how long it will take for the judge to review the work around because DISH is going to win the appeal, right....or they'll just ignore any ruling that they don't agree with.


That is precisely the problem, the judge was thinking he was trying to be as hard as he could on E*, by issuing the unprecedented inform and approval order after the first try, not knowing in this case E* might just be too eager to comply

Is it possible for the judge to fit such review and approval proceedings in his schedule now? If so when? Becasue if he can't find the time to do a good expert review of the new code, he might as well let E* continue to use the "infringing software" and not complaining about E* not making any effort to try to void infringement.


----------



## Greg Bimson

jacmyoung said:


> We have provided at least three prior cases you simply dismissed them as irrelevant because each of them differed in some way or the other to this case. But of course no two cases are alike, no two orders are identical, that can hardly be the reason to say there is no precedent. By your standard there cannot be precedent at all, since no two cases or orders are identical.
> 
> If we simply take your premise that there is no precedent on the interpretation of a disabling order like this one, I will say that there actually is one, that is the appeals court ordered the stay of such "unprecedented" disabling order.


Of course no two cases are _exactly_ alike. However, there are similarities between cases, and that is what case law is all about.

Under normal circumstances, sales of products found to infringe would be compensated for lost profits. Instead, in TiVo v. EchoStar, only about 193,000 units of the few million out there were compensated to TiVo for lost profits. That means the rest of them require approval to use TiVo's Time Warp patent. Without approval, those units are to be removed from service. That is why there was an order to disable. It could have been an order to recall. Either way, it is standard practice in patent infringement cases when all infringing products are not subject to a lost profits award.

Therefore, the disabling order is hardly precedential, especially when DISH/SATS didn't argue against it during appelate review for upholding the guilty verdict, and it had already been stayed once (hardly precedential).

The premise is flawed. If a judge orders documents produced, then documents must be produced. If a judge orders a reporter to reveal the identity of their sources, then the identity must be revealed. If a product is ordered recalled, then it must be recalled. If a product line, specifically those within end users hands and found as infringements, is ordered disabled, then it must be disabled. Case law has already established that an order within an injunction must be followed, and a three-part test is used to evaluate contempt of that order. If the order is to stop infringement, then there are specific case law citiations, mainly _KSM_, which must be followed to evaluate product accused of infringement within a contempt proceeding.

So there is plenty of precedent, as the three-part test to find contempt of an order must be present. And in the case of the disable order, that three part test was met. There is no precedent that avoids a directive to disable products.


----------



## jacmyoung

Greg Bimson said:


> ...So there is plenty of precedent, as the three-part test to find contempt of an order must be present. And in the case of the disable order, that three part test was met. There is no precedent that avoids a directive to disable products.


The three cases we cited for you all went beyond disabling, they ordered the adjudicated products/service/process to be totally shut down or pulled from the shelves, compeltely, not just disabling partial functions.

Yet none was in contempt for continuing to use the "same" products/service/process once they modified a small portion of the products/service/process, while in the field with the users, or on the shelves never pulled.

One other thing I want to make clear, disabling any DVR functions requires a software download, a new design, a design around, the only difference is, now, such modification requires the judge's review and approval.


----------



## Greg Bimson

jacmyoung said:


> The three cases we cited for you all went beyond disabling, they ordered the adjudicated products/service/process to be totally shut down or pulled from the shelves, compeltely, not just disabling partial functions.


Disabling is different from totally shutdown or recalled. Trust me, if the order in TiVo v. EchoStar was a recall order instead of a disable order, we'd still be exactly where we are today, with one simple difference: DISH/SATS would argue that a "recall" doesn't apply to products they've modified.

The only one of the cases cited by either DISH/SATS or TiVo was Gavin v. StarBrite, and that had nothing to do with disabling. The accusation was against a product being sold that was the same name as that listed in the injunction, but the formulation was different that those already sold and found infringing. As the accusation was against a new product never before the court, the court had to do the two-prong _KSM_ test and found the product didn't infringe, so the product did not apply to the injunction and the motion for contempt was dismissed. Of course, that means _Gavin_ cannot be used regarding an order to disable.

As I also recall, the plaintiff was awarded lost profits damages on all sales of the product, so if DISH/SATS wants to pony up lost profits on every listed DVR, good for them. I believe that would be somewhere just north of a billion dollars.


jacmyoung said:


> Yet none was in contempt for continuing to use the "same" products/service/process once they modified a small portion of the products/service/process, while in the field with the users, or on the shelves never pulled.


The only cited case within TiVo v. Echostar is _Gavin_, and I am fairly certain that boat polish sold to the customer and found as an infringement was never modified.


----------



## jacmyoung

Greg Bimson said:


> Disabling is different from totally shutdown or recalled. Trust me, if the order in TiVo v. EchoStar was a recall order instead of a disable order, we'd still be exactly where we are today, with one simple difference: DISH/SATS would argue that a "recall" doesn't apply to products they've modified.


You have just contradicted yourself, first you said disabling is different from total shutdown (because those three prior cases were for total shutdowns), then you said it would still be the same result (despite the fact those prior cases had the opposite results), so which one is it?

You asked for prior cases, I gave them to you, you then argued they were different than this case, so they did not apply, but then even if this case were the same as the prior cases in terms of total shutdown, this case should have different result than those three anyway? What kind of argument is that?



> As I also recall, the plaintiff was awarded lost profits damages on all sales of the product, so if DISH/SATS wants to pony up lost profits on every listed DVR, good for them.


They did, up to the point of the infringement, once infringement was over, they stop paying. The lost profits had to do with the "lifetime" subscriptions which applied to the 170k(?) units, not the 4 million DVRs on monthly fees.



> I believe that would be somewhere just north of a billion dollars.The only cited case within TiVo v. Echostar is _Gavin_, and I am fairly certain that boat polish sold to the customer and found as an infringement was never modified.


You asked me if I could cite any prior cases, I did, now you are saying E* did not cite any cases? E* only needs to cite KSM, why? Because all three of my cases were based on KSM, they did not cite prior cases either, they relied on KSM.

KSM applied to those three cases, and applies to this case too, in the same fashion.

The only reason I had to provide you with those cases was because you forced me to meet a much higher burden of proof, which I have met.


----------



## Greg Bimson

Greg Bimson said:


> Disabling is different from totally shutdown or recalled. Trust me, if the order in TiVo v. EchoStar was a recall order instead of a disable order, we'd still be exactly where we are today, with one simple difference: DISH/SATS would argue that a "recall" doesn't apply to products they've modified.





Greg Bimson said:


> You have just contradicted yourself, first you said disabling is different from total shutdown (because those three prior cases were for total shutdowns), then you said it would still be the same result (despite the fact those prior cases had the opposite results), so which one is it?


Words have meaning...

Disable simply means to stop working. It was ordered DVR functionality was disabled in the devices found infringing and installed in end users homes as of 8 September, 2006.

Recall means to physically remove. They are totally different.

However, if DISH/SATS the order to disable instead was an order to recall, from DISH/SATS very last brief to the Court of Appeals:The arguments TiVo _does_ raise, moreover, show the errors in the district court's interpretation. TiVo implicitly conceeds that an injunction cannot properly prevent design-arounds but contends that this is not what the district court did. Instead, TiVo argues that the injunction permitted EchoStar to "introduce new, non-infringing" DVR's but prevented it from reprogramming its existing DVRs with new software so they would no longer infringe. Thus, under TiVo's interpretation, EchoStar could have physically removed the infringing DVRs from its customers' homes and then immediately replaced them with new DVRs having _identical_ hardware but new software. But there is no substantive difference between this hypothetical scenario and what occurred. In both cases, EchoStar's customers would have had precisely the same pieces of electronic equipment with precisely the same software. No reasonable interpretation would require such wasteful and purposeless activity. TiVo attempts to rationalize its bizarre interpretation by speculating that the district court might have wanted to "prevent[] EchoStar from taking unfair advantage of the prior placement of infringing units." If that was the district court's goal, one would have expected it to say that, either in its injunction or its orders, but it did not.​First, if the order was to recall Infringing Products, DISH/SATS argument would be that the recall order would not need to be followed, as we updated the software in all units and recalling units would not be necessary as they all have the same software. Following a recall order would have also been a "wasteful and purposeless" activity if they changed the software.

Second, the disable order was given to even the playing field. DISH/SATS was found guilty of infringement and the injunction was upheld and went active. That disable order was issued by Judge Folsom as he believed TiVo was materially harmed by DISH/SATS infringement, at least that is from one of the memos issued by Judge Folsom. What would give anyone pause to believe that the disable order shouldn't be followed once it became active, as it would be up to Judge Folsom to determine if devices were functionality-disabled?


jacmyoung said:


> KSM applied to those three cases, and applies to this case too, in the same fashion.


Third, and most importantly, the devices were subject to an order placed in full force and effect. So simply because there was an evaluation using _KSM_ doesn't mean it is the only standard regarding contempt. There is an order stop infringement. That is the domain of _KSM_, and the evaluation of mere colorable difference and continuing infringement allowed Judge Folsom to grant the motion for contempt regarding ongoing infringement.

There is also another order where DISH/SATS was found in contempt.

Just because DISH/SATS may have changed the software on the products subjected to the stayed disable order back in April, 2007, doesn't change the fact that once the injunction went into full force and effect on 18 April, 2008, the software should have changed again. This time, the software should have been modified to disable DVR functionality. That is what the order says.

Unless, of course, the contemnor would have motioned the court for considerations about a possible change in status.


----------



## Herdfan

peak_reception said:


> Someone else could benefit from restraint and self-editing too. :sure:


He will only be here until TiVo wins another ruling and then will be gone like last time.


----------



## jacmyoung

Greg Bimson said:


> Words have meaning.....


Greg, despite your long effort to try to justify the words, the simple fact is, in all three cases I have cited for you, there were clear orders to do certain things, and the infringers knew exactly what those orders meant for what to be shutoff or throw away or pulled off the shelves, and none of them did, and they were not in violation because all of them did a little tweak to their products/service/process, right in the field, without any change in hardware in most cases.

Now keep in mind you are now relying only on the notion that a clear order was issued, and whether the infringer knew about the order, and whether the infringer strictly followed the order, and on such basis alone, you said E* is in violation, and I have cited three cases which the infringers did exactly what E* did, when the clear orders were issued, they all knew the orders in black and white, they "did not follow" the orders, and they were not in violation.

If you want to rely on one rule, stick to it. If you keep finding yourself having to look for other points because you cannot face your own simple rule, there is something wrong with your simple rule.


----------



## jacmyoung

Herdfan said:


> He will only be here until TiVo wins another ruling and then will be gone like last time.


I was never gone


----------



## Greg Bimson

jacmyoung said:


> Greg, despite your long effort to try to justify the words, the simple fact is, in all three cases I have cited for you, there were clear orders to do certain things, and the infringers knew exactly what those orders meant for what to be shutoff or throw away or pulled off the shelves, and none of them did, and they were not in violation because all of them did a little tweak to their products/service/process, right in the field, without any change in hardware in most cases.


Let's see...

There was the egg processing infringement case. There was no order to disable or recall eggs in the field. The accusation was under the order against infringement, so KSM applied. And in that case, it appears the infringer was motioning the court regarding the changes, so there was enough question that the new process no longer infringes (remember that there was no apparatus found infringing).

There was the boat polish infringement case. There was no order to disable or recall boat polish in the field. The accusation was that the order against infringement applied to using the names of the products that were enjoined, even with another formulation.

There was the internet service case. There was an order to disable the service as configured. Those two words, "as configured", allowed the infringer to change the configuration of the service, to remove the service from the scope of the injunction.

There was the car seat case. There was an order to recall, and it wasn't followed, thus contempt was granted.

Am I missing something? Or is it simply that in order for the Court of Appeals to reverse Judge Folsom's findings that the decision would be precedential?


----------



## Curtis52

Greg Bimson said:


> Second, the disable order was given to even the playing field.


There was a lot of criticism of the Dish witness claiming to be able to read the juror's minds ...


----------



## jacmyoung

Greg Bimson said:


> Let's see...
> 
> There was the egg processing infringement case. There was no order to disable or recall eggs in the field. The accusation was under the order against infringement, so KSM applied. And in that case, it appears the infringer was motioning the court regarding the changes, so there was enough question that the new process no longer infringes (remember that there was no apparatus found infringing).
> 
> There was the boat polish infringement case. There was no order to disable or recall boat polish in the field. The accusation was that the order against infringement applied to using the names of the products that were enjoined, even with another formulation.
> 
> There was the internet service case. There was an order to disable the service as configured. Those two words, "as configured", allowed the infringer to change the configuration of the service, to remove the service from the scope of the injunction.
> 
> There was the car seat case. There was an order to recall, and it wasn't followed, thus contempt was granted.
> 
> Am I missing something? Or is it simply that in order for the Court of Appeals to reverse Judge Folsom's findings that the decision would be precedential?


The point was, you evoked a simple rule, which had nothing to do with KSM, the rule according to you is, there is a clear order, the infringer knows the order, and the infringer did not follow the order.

End of story, the infringer is in violation.

In all of the above cases, there were clear orders to do certain things, the infringers knew those orders in their clear terms, and the infringers did not follow the orders as stated.

None of them were in violation. Can you admit that? Who cares about what kind of excuses they might have? What special circumstances?

Because you decided to evoke a rule that is simple and absolute, without consideration of any excuses or circumstances, and therefore under your such rule they should have all been in violation. You are bound by your own rule.

If you want to change the subject and discuss KSM, be my guest, I am sure Curtis52 will be happy to take over


----------



## jacmyoung

Greg Bimson said:


> ...Am I missing something? Or is it simply that in order for the Court of Appeals to reverse Judge Folsom's findings that the decision would be precedential?


Good question, the most common reason for a reversal is "the district court's abuse of discretion" not that his decision might be precedential.

Judge Folsom is not the first judge who had ruled a contempt based on the simple rule you evoked. But according to the appeals court, if such rule is applied despite the possibility that the infringer may no longer infringe, then the district court will have abused its discretion.


----------



## Greg Bimson

jacmyoung said:


> The point was, you evoked a simple rule, which had nothing to do with KSM, the rule according to you is, there is a clear order, the infringer knows the order, and the infringer did not follow the order.
> 
> End of story, the infringer is in violation.
> 
> In all of the above cases, there were clear orders to do certain things, the infringers knew those orders in their clear terms, and the infringers did not follow the orders as stated.
> 
> None of them were in violation. Can you admit that? Who cares about what kind of excuses they might have? What special circumstances?


Of course I can admit that in those cases they were not in violation. I've admitted so numerous times. But to hang the hat on the very few exceptions where the Court of Appeals has reversed a finding of contempt, where those reversals are the minority of contempt appeals, is to fight a windmill like Don Quixote. There may some success in winning some abstract point, but the proposition is a losing one.


jacmyoung said:


> Judge Folsom is not the first judge who had ruled a contempt based on the simple rule you evoked. But according to the appeals court, if such rule is applied despite the possibility that the infringer may no longer infringe, then the district court will have abused its discretion.


I've never seen case law where such rule cannot be "applied despite the possibility that the infringer may no longer infringe". And that is why I am saying if the Court of Appeals sides with DISH/SATS, the order will be precedential on the scale of _KSM_. It will open the door for anyone with a modifiable device found infringing to simply change one small, non-descript item to simply avoid a disable or recall order.

I have such a hard time understanding why anyone thinks the disable order can be avoided, when KSM doesn't apply to the disable order.


----------



## jacmyoung

It will have nothing to do with KSM as far as precedential or not, if the appeals court reverses Judge Folsom's ruling, it will not be precedential because we have the above 4 or 5 cases already before this case, that is why it will not be precedential.

And those 4 or 5 cases were dug out by me who is no lawyer, and did not have the vast resources and access to the vast law libraries, only skimmed the surface on the net.

You on the other hand has yet cited one case where there might not have infringement found and there was still a violation of an injunction, but according to you there is no need to, your belief is good enough because here is this so called magic disabling order.

I think it is fair to ask you to provide us at least one case, since you said our cases are exceptions not the rule, so I assume you have tons and tons of cases to prove your view, give us just one case does not seem asking too much.


----------



## Greg Bimson

jacmyoung said:


> You on the other hand has yet cited one case where there might not have infringement found and there was still a violation of an injunction, but according to you there is no need to, your belief is good enough because here is this so called magic disabling order.


You've just proven the point. There isn't one. Judge Folsom followed regular old case law.

TiVo asked for a finding of contempt because DISH/SATS did not disable the receivers which had been found infringing. There is a three-step test where all steps must be met in order to grant contempt of an injunction.

And the premise here is wrong. The devices subject to the "magic disabling order" had been found infringing, which is why they were ordered disabled. So now all of a sudden there's this new twist regarding a disabling order where "infringement might not be found", a twist which has no precedent.

There is no case law for a re-evaluation of a device ordered disabled or recalled, which allows the infringer to avoid the order. That's why DISH/SATS is asking for a precedential ruling.


jacmyoung said:


> It will have nothing to do with KSM as far as precedential or not, if the appeals court reverses Judge Folsom's ruling, it will not be precedential because we have the above 4 or 5 cases already before this case, that is why it will not be precedential.


But none of the four or five cases, save *StarBrite*, were cited by DISH/SATS. And even StarBrite didn't even have a disable order.

Everyone seems to want to ignore the disable order. Everyone thinks it is subserviant to some grand rule. And no one can dig out any case law to prove that.


----------



## jacmyoung

Greg Bimson said:


> You've just proven the point. There isn't one. Judge Folsom followed regular old case law.


If there is not one that you can cite to support your contention that even if the infringer may no longer infringe, he may still be found in contempt of an injunction because of certain provision in it, then if the appeals court reverses such contempt finding, the reversal will not be precedential, but if the appeals court upholds such contempt ruling, it will be precedential.

Therefore you were wrong for saying it had to be precedential if the appeals court reverses Judge Folsom's ruling, it is actually the opposite. Upholding such ruling will be precedential and will reverse KSM and other case law.



> everyone seems to want to ignore the disable order. Everyone thinks it is subserviant to some grand rule. And no one can dig out any case law to prove that.


Even I do not ignore the disabling order, much less "everyone". There are case after case where such "disabling order" (secondary order) existed, only in their own shapes or forms. All I am saying is, the disabling order is not some thing as special as you think it is.


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## Tulsa1

This thread has turned into a pissing contest and worthless as a source of
information about the case:nono2:


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## Greg Bimson

jacmyoung said:


> Even I do not ignore the disabling order, much less "everyone". There are case after case where such "disabling order" (secondary order) existed, only in their own shapes or forms. All I am saying is, the disabling order is not some thing as special as you think it is.


Secondary? It is just as important as the order against infringements, as it is an order from the court.


jacmyoung said:


> Therefore you were wrong for saying it had to be precedential if the appeals court reverses Judge Folsom's ruling, it is actually the opposite. Upholding such ruling will be precedential and will reverse KSM and other case law.


Upholding a finding of contempt on a disable order has nothing to do with KSM. KSM deals with devices accused as infringements never before the court.

Don't you see that Judge Folsom took the easy way out, and simply followed case law?

TiVo accuses DISH/SATS of contempt for failure to disable the devices found infringing
- Judge Folsom agrees that DISH/SATS is in contempt for failure to disable
--- case law states that contempt can be granted if the alleged contemnor fails all three parts of the test for contempt.

DISH/SATS argues that they've modified the software to make the receivers non-infringing
TiVo says those modifications still make the receivers infringe.
- Judge Folsom agrees that DISH/SATS is still infringing in a merely colorably different manner, and is in contempt for failure to comply with the order against infringements.
---case law states that violations of an order against infringements must have the claims evaluated against accused devices as both merely colorably different from the adjudged infringements and the accused devices must also infringe.

The devices ordered disabled have been before the court, adjudged as infringements. Modifying the software does not change the fact they've been adjudged as infringements. Those same devices were ordered to be modified, to have their DVR functionality disabled for the life of the patent. A modification does not change the fact they were adjudged.

Case law was simply followed, on both findings of contempt.


Tulsa1 said:


> This thread has turned into a pissing contest and worthless as a source of information about the case


More briefs regarding sanctions for contempt should be out soon.


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## jacmyoung

Greg Bimson said:


> Secondary? It is just as important as the order against infringements, as it is an order from the court.Upholding a finding of contempt on a disable order has nothing to do with KSM. KSM deals with devices accused as infringements never before the court.
> 
> Don't you see that Judge Folsom took the easy way out, and simply followed case law?...


That is where the problem is. He relied on such case law, which even you admitted are "old case law". KSM is a precedential case law that supersedes such old case law on a very narrow issue, that issue is, if there is no infringement, then there cannot be a violation of an injunction on infringement, period.


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## Greg Bimson

jacmyoung said:


> KSM is a precedential case law that supersedes such old case law on a very narrow issue, that issue is, if there is no infringement, then there cannot be a violation of an injunction on infringement, period.


But the interpretation of what KSM does is being broadened to include the devices already adjudged as infringements. It is possible KSM doesn't apply to those devices, but Judge Folsom went ahead anyway. And KSM certainly does not address a device subject to another order.

Besides, infringement (and mere colorable difference) was found, so that is another violation, this time against the order against infringements.


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## jacmyoung

Greg Bimson said:


> But the interpretation of what KSM does is being broadened to include the devices already adjudged as infringements. It is possible KSM doesn't apply to those devices, but Judge Folsom went ahead anyway. And KSM certainly does not address a device subject to another order.


Again, if you simply evoke a case law that had nothing to do with KSM, you should stick to it and not try to argue that some how KSM had nothing to do with it. That case law of yours is indeed in conflict with KSM, if you simply read the following:

Without infringement, there simply cannot be violation of an injunction on infringement.

BTW, that case law of yours (and Judge Folsom's) was a Fifth Circuit case law not the Federal Circuit case law, and the Fifth Circuit case law was a bankruptcy case, not a patent infringement case. Only the Federal Circuit handles patent infringement cases, not the Fifth Circuit.

It is not that the judge may not cite a Fifth Circuit case law, but since it has no controlling power over the Federal Circuit, therefore if such case law is in conflict with the Federal Circuit's own controlling case law on patent infringement, such as KSM, then KSM should be followed, not that Fifth Circuit case law.

There lies another problem with the Judge Folsom's reasoning which I explained before, he actually specifically stated that when it came to finding of contempt, he was not even bound by the Federal Circuit case law, i.e. KSM, rather the Fifth Circuit case law (his own regional law) should apply.

Unfortunately when it comes to patent infringement, only the Federal Circuit case law shall apply when there may be any conflict. The Congress established Federal Circuit to control all patent cases of this nation, the Fifth Circuit has no jurisdiction over patent litigations.



> Besides, infringement (and mere colorable difference) was found, so that is another violation, this time against the order against infringements.


That was never our argument, if the appeals court confirms (1) mere colorable difference and (2) proof of infringement by clear and convincing evidence, then E* is in contempt, no argument on that.

I do want to point out though, on the proof of infringement, Judge Folsom actually said in this case he did not have to prove infringement by clear and convincing evidence, because as far as he was concerned, the modified DVRs were no different than the adjudicated DVRs. That is another weak link in his ruling. He said he only needed (1), not (2).

Not to mention as we had debated many times, his colorable difference and infringement analyses were in question too.

What I have listed above are just to point out that clear disputes exist in this case, when there are substantial open issues, a contempt is inappropriate, a new trial will be needed to settle the disputes.


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## rey_1178

Tulsa1 said:


> This thread has turned into a pissing contest and worthless as a source of
> information about the case:nono2:


that's why it was closed at the other site. same garbage. :nono2:


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## Greg Bimson

jacmyoung said:


> BTW, that case law of yours (and Judge Folsom's) was a Fifth Circuit case law not the Federal Circuit case law, and the Fifth Circuit case law was a bankruptcy case, not a patent infringement case. Only the Federal Circuit handles patent infringement cases, not the Fifth Circuit.


1) if the Federal Circuit is all that handles patent infringement cases, then why was the case originally assigned to Judge Folsom and the Fifth Circuit? Or was this simply a mis-statement, which should have read "Federal Circuit case law handles patent infringement cases"?

2) Judge Folsom's (and my) case law was not about a bankruptcy case nor a patent infringement case, but a finding on a motion for contempt.

Again, _KSM_ provides that if a patent holder feels products from an infringer violate the order against infringement, then a granted motion of contempt must include a positive evaluation regarding mere colorable difference comparing the accused devices against both the adjudged devices and the patent claims, and the accused devices' infringement of those claims. That case law is very narrow, and does not include adjudged devices subject to another order, until someone rules that to be true, which would be precedential.


jacmyoung said:


> What I have listed above are just to point out that clear disputes exist in this case, when there are substantial open issues, a contempt is inappropriate, a new trial will be needed to settle the disputes.


There is a difference between "disputes" and "open issues". According to Judge Folsom there aren't any "open issues", but DISH/SATS is disputing the ruling. That certainly doesn't make contempt inappropriate.


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## Herdfan

Tulsa1 said:


> This thread has turned into a pissing contest and worthless as a source of information about the case:nono2:


Its only half worthless.


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## jacmyoung

Greg Bimson said:


> 1) if the Federal Circuit is all that handles patent infringement cases, then why was the case originally assigned to Judge Folsom and the Fifth Circuit? Or was this simply a mis-statement, which should have read "Federal Circuit case law handles patent infringement cases"?


Good point, the case was never assigned to the Fifth Circuit. I should have said only the Federal Circuit has the jurisdiction over any appeals from patent infringement cases handled by all the district courts, the Fifth Circuit has no jurisdiction over this Judge Folsom's patent case. Therefore when you cite Fifth Circuit case law, and when I cite the Federal Circuit case law, my case has much more weight than yours.



> 2) Judge Folsom's (and my) case law was not about a bankruptcy case nor a patent infringement case, but a finding on a motion for contempt.


Yours is a finding of contempt in a bankruptcy case. A finding of contempt in a patent case has a different standard on the narrow issue of infringement. There can be finding of contempt in a criminal case that uses an even more different standard.



> Again, KSM provides that&#8230;


You cannot have it both ways. On one hand, you refuse to consider the background of your case law, even after I had pointed out that your case law was a bankruptcy case, you said it did not matter, only the simple language said in that case law matters.

But when I evoked KSM, you suddenly insisted the background circumstances surrounding KSM made it irrelevant to this case. But you must admit, KSM, a patent case law, is at least more relevant to this case than that Fifth Circuit bankruptcy case law, so if you say KSM does not apply, then I can say your case law is more so irrelevant.

But that is not what I am saying. What I am saying is, both case law can be cited, but if they are in conflict, since this case is a patent case, KSM should have the controlling power over that bankruptcy case law.

Same if you cite a criminal case law, and I cite a civil case law, if the two are in conflict, then which case law should have the controlling power depends on the nature of the case we are discussing, if the case we are discussing is a criminal case, your case law controls, if the case is a civil case, my case law controls.



> There is a difference between "disputes" and "open issues". According to Judge Folsom there aren't any "open issues", but DISH/SATS is disputing the ruling. That certainly doesn't make contempt inappropriate.


Good point. What I meant was, I have certainly demonstrated that many items in this case are in dispute, including many "open issues" raised on colorable difference and infringement. If the appeals court agrees that such disputes and open issues are valid, then they must overturn the contempt ruling, that is their own rule.

In other words, E* as a non-movant does not have to prove correct on all the issues in dispute, only to demonstrate that such disputes exist and are valid, to win on appeal. Whether E* is correct on all the issues or not should be determined in a new trial.


----------



## Greg Bimson

jacmyoung said:


> You cannot have it both ways. On one hand, you refuse to consider the background of your case law, even after I had pointed out that your case law was a bankruptcy case, you said it did not matter, only the simple language said in that case law matters.
> 
> But when I evoked KSM, you suddenly insisted the background circumstances surrounding KSM made it irrelevant to this case. But you must admit, KSM, a patent case law, is at least more relevant to this case than that Fifth Circuit bankruptcy case law, so if you say KSM does not apply, then I can say your case law is more so irrelevant.


That is because there is a standard for civil contempt (the three-part test) and a there is a standard for contempt for violations of an order against infringement (KSM). Because devices were adjudged infringing, a disable order was issued. There is nothing special about a disable order as it relates to patent law. There is nothing special about a disable order as it relates to contempt. Either products are disabled, or they aren't.

That is, until someone rules that KSM should apply to the disable order. And that would be precedential. The reason? Double jeopardy. Joe Blow's five-year old 625 was ruled as an infringement three years ago. By placing new software on it, it is still Joe Blow's five-year old 625. It is still the same device ruled infringing, but with new software.

It only works if every time DISH/SATS loads new software those devices legally become a new device. And that is basically what they are trying to do. But I just don't see enough case law that justifies that belief.


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## scooper

Greg Bimson said:


> It only works if every time DISH/SATS loads new software those devices legally become a new device. And that is basically what they are trying to do. But I just don't see enough case law that justifies that belief.


Greg - if you support the idea of "software patents" or the idea that software implementing a patented process - how can you NOT support the idea that different software means the devices are different ? IOW - you're either out or All In.

Yes - it means the courts are on a tight rope and they have to pickup their pace on going through colorable difference / infringement analysis - they should have thought about that when they allowed this in the first place (and not just Echostar / Tivo either).


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## Curtis52

Greg Bimson said:


> It only works if every time DISH/SATS loads new software those devices legally become a new device. And that is basically what they are trying to do. But I just don't see enough case law that justifies that belief.


No one said _any_ new software makes it a legally different device. There is a legal test to determine whether a modification renders a modified device legally different. It's the colorable difference test.


----------



## jacmyoung

Greg Bimson said:


> ... and a there is a standard for contempt for violations of an order against infringement (KSM). ...


No, for violation of an *injunction* against infringement, not an *order* against infringement.

There is a big difference between the word "order" and the word "injunction".

When you say an order, you may point to the "disabling order" as a separate order to be reviewed, but when you point to an injunction, that "disabling order" is part of the injunction, not a separate piece, therefore the standard must be based on what is said about the violation of the injunction, not violation of any specific order as part of the injunction.

The court standards must be very clear and concise on the letter, if there is anyway to find some loophole, then the defendants get away with it until such time the loophole is fixed.

I am not saying it is a loophole, only to use your argument to prove my point.

The standard establised by KSM and the subsequent case law says:

If there is no infringement, there cannot be violation of an injunction agaisnt infringement, period.

They do not say:

If there is no infringement, there cannot be violation of an injunction agaisnt infringement, unless a specific order in the injunction may indicate otherwise.


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## scooper

Curtis52 said:


> No one said _any_ new software makes it a legally different device. There is a legal test to determine whether a modification renders a modified device legally different. It's the colorable difference test.


If the device/software passes the colorably different test - it's legally different. However, that does NOT mean that said legally different device is not infringing. That requires it's own analysis.


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## Curtis52

scooper said:


> If the device/software passes the colorably different test - it's legally different. However, that does NOT mean that said legally different device is not infringing. That requires it's own analysis.


True but the colorable difference test will determine if the device is legally a different device from the device ordered to be disabled. Therefore no contempt of the disable order if more than colorably different. In fact, if there is more than a colorable difference, there can't be contempt on any issue from the point in time it was modified.


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## jacmyoung

Greg Bimson said:


> That is because there is a standard for civil contempt (the three-part test) ...


After stating my view earlier which case law was controlling, now let me address that particular point above which is valid.

The three-part test of the Fifth Circuit case law says:



> In civil contempt proceedings, "the party seeking an order of contempt need only establish (1) that a court
> order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order."


However for the order to be in effect, one of the prerequisites is that the order must be clear and concise, cannot be reasonably misunderstood by the respondent.

To answer that, let me first quote Judge Folsom's own words:



> This Court, aware of the Federal Circuit's general disdain for broad or vague prohibitions of *future infringement*, drafted its permanent injunction in narrow terms that captured particular infringing devices and required EchoStar to take certain action regarding those devices.


Here even the judge himself understood his injunction was to prohibit *future infringement* only. Therefore, when E* tried to interpret his injunction, it is reasonable for E* to interpret the disabling order to be limited to "Infringing Products", not "infringing and no-longer-infringing products". Because as the judge correctly stated, his injunction was to prohibit "future infringement", it is most certainly reasonable for E* to interpret the disabling order to prohibit the use of the DVR functions that continued to infringe in the future, not whether they infringed in the past. If they managed to modify the DVRs into non-infringing DVRs, therefore rendering the once infringing DVR functions in the past, into non-infringing DVR functions in the future, the disabling order would no longer apply.

Now you do not have to agree with E*'s interpretation, that is not the point, the point is, was the judge's disabling order so clear as to the point that E* could not possibly have made the above interpretation?

If the answer is a no, then his order was not clear enough. He should have said: "to disable the DVR fucntions (i.e. disable the storage and playback from the hard drive...) from the Infringing Products, *whether those products still infringe or not.*"

An order that is not absolutely clear and may in any way, shape and form lead to misinterpretation, is an order that is not effective. If it is not effective, the above three-part test has failed.


----------



## Greg Bimson

scooper said:


> Greg - if you support the idea of "software patents" or the idea that software implementing a patented process - how can you NOT support the idea that different software means the devices are different ? IOW - you're either out or All In.


I can definitely support that there are differences, as they have different code. I just cannot support that Joe Blow's five-year old 625 is legally a different device simply because new software was downloaded to the receiver. The injunction said to disable the Infringing Products installed with an end user as of 8 September 2006. Even DISH/SATS did not make the argument they are legally different devices; they simply said that they complied with the disable order because:

1) They disabled the Infringing Products (for an instant) while downloading new software
2) They are no longer Infringing Products because the new software doesn't infringe.

If DISH/SATS had argued they would have complied with the disable order but they no longer had any Infringing Products, then that argument could have been taken to the Court of Appeals. DISH/SATS never argued the download made them legally different devices. They certainly now cannot argue it in front of the Court of Appeals.


Curtis52 said:


> No one said any new software makes it a legally different device. There is a legal test to determine whether a modification renders a modified device legally different. It's the colorable difference test.


I am unsure about that. Sure, KSM mentions "legallly different" in the context that there is a comparasion between the adjudged and the accused devices. But the finding of infringement on eight models of DVR targets each unit, as if there was an "Infringing Product" sticker placed on it. That means the unit was adjudged. That unit cannot be simply retried for infringement as it has been found guilty of infringement.

It is an argument that has a problem with "Double Jeopardy". Does the downloading of new software simply make Joe Blow's five-year old 625, adjudged as an infringement, a different "device"? The functionality may be a bit different, but does it make it a different "device"? Either way, DISH/SATS did not make that argument during the entire contempt process. They simply stated they had new software that no longer infringed.


jacmyoung said:


> No, for violation of an injunction against infringement, not an order against infringement.
> 
> There is a big difference between the word "order" and the word "injunction".


Ahh, but if we remember, _KSM_ was a consent decree, and we've never seen anything else that was in the "injunction". If the only injunction item in the consent decree was an order against infringement, then of course it is an injunction against infringement. However, if there were other orders, then I would question what exactly an injunction against infringement is.


Judge Folsom said:


> This Court, aware of the Federal Circuit's general disdain for broad or vague prohibitions of future infringement, drafted its permanent injunction in narrow terms that captured particular infringing devices and required EchoStar to take certain action regarding those devices.





jacmyoung said:


> Here even the judge himself understood his injunction was to prohibit future infringement only.


To "prohibit future infringement only." Really? I'd re-read that, cause I don't see where the injunction can only prohibit future infringement...

It appears Judge Folsom recognized that the Federal Circuit doesn't like vague injunctions regarding "future infringement", so the injunction was crafted to target "particular infringing devices". Specifcally, the ones adjudged as infringements were to be disabled. The injunction also prohibits future infringement. In other words, injunctions in patent infringement cases do not only deal with "future infringement", it appears injunctions also deal with devices adjudged infringing.


jacmyoung said:


> An order that is not absolutely clear and may in any way, shape and form lead to misinterpretation, is an order that is not effective. If it is not effective, the above three-part test has failed.


But only if the respondant redefines terms. The respondant redefined "Infringing Products". There is no conflicting definition, no matter what argument may be used for it.


----------



## scooper

What's the difference between Joe Blow's 5 year old 625 with updated software and a brand new off the production line 625 with the same software ? - Answer - 5 years of use, but that's it...

Yet - by your logic - these are legally different devices. I got a problem with that. Two devices identical except for date of manufacture are not the same legally ? Apparently the court has a problem with your definition also, because they make no distinction based on manufacture date either.


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## Curtis52

Greg Bimson said:


> That unit cannot be simply retried for infringement as it has been found guilty of infringement.


Inanimate objects can't be found guilty of _anything_.


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## jacmyoung

Greg Bimson said:


> ...Even DISH/SATS did not make the argument they are legally different devices;


What are you talking about? From day one they said the modified DVRs no longer infringed, as legally different than the "Infringing Products".



> If DISH/SATS had argued they would have complied with the disable order but they no longer had any Infringing Products, then that argument could have been taken to the Court of Appeals. DISH/SATS never argued the download made them legally different devices. They certainly now cannot argue it in front of the Court of Appeals.


What are your talking about? On an issue that is new and never argued during the trial, of course you argue at the district court level, then argue on appeal.



> Either way, DISH/SATS did not make that argument during the entire contempt process. They simply stated they had new software that no longer infringed.


Please go read again, they argued over and over because the appeals court said software and hardware must be considered together, therefore if the software is non-infringing, so is the hardware, in fact they also argued the software does not only perform software functions, it also performs hardware functions that related to the patent and were modified.



> If the only injunction item in the consent decree was an order against infringement, then of course it is an injunction against infringement. However, if there were other orders, then I would question what exactly an injunction against infringement is.


The purpose of an injunction is to prohibit "future infringement" no more no less, even Judge Folsom said that as I quoted him earlier. An injunction can have one provision, or two, or three or even ten separate provisions in it. In fact I can count about 6 provisions in the 6/3/09 injunction, including the three specifically cited by the appeals court.

They all must service a single goal, to prohibit "future infringement".



> To "prohibit future infringement only." Really? I'd re-read that, cause I don't see where the injunction can only prohibit future infringement...


It is not what I said, it is what Judge Folsom said.



> It appears Judge Folsom recognized that the Federal Circuit doesn't like vague injunctions regarding "future infringement", so the injunction was crafted to target "particular infringing devices". Specifcally, the ones adjudged as infringements were to be disabled.


Don't change his words. Injunctions are not "regarding" future infringement, rather to prohibit future infringement.



> The injunction also prohibits future infringement.


Don't add word to his words, he never said "the injunction *also* prohibits future infringement."



> In other words, injunctions in patent infringement cases do not only deal with "future infringement", it appears injunctions also deal with devices adjudged infringing.


Please provide proof that an injunction does not only deal with future infringement, if it "appears" to you so, it will not work because what "appears to you" is not proof by clear and convincing evidence.



> But only if the respondant redefines terms. The respondant redefined "Infringing Products". There is no conflicting definition, no matter what argument may be used for it.


How is it redefining when E* said the term "Infringing Products" means the products that infringe on the patent, it does not mean any products that do not infringe on the patent or if they no longer infringe on the patent?

What part of the above is redefining the term "Infringing Products"? Again we are talking about this specific term, and this term only.

Now here is again another "on alternative" argument. Let's just assume you are correct, that an injunction may prohibit more than future infrignement, but please still read what the judge said about as I quoted:



> This Court, aware of the Federal Circuit's general disdain for broad or vague prohibitions of future infringement, drafted its permanent injunction in narrow terms that captured particular infringing devices and required EchoStar to take certain action regarding those devices.


When he discussed his disabling provision, he clearly defined the purpose of his such provision as to prohibit future infringement, if you simply read it.

So regardless what you believe what other purposes his injunction may serve, the judge himself had stated in black and white that his disabling provision is to prohibit future infringement.


----------



## Greg Bimson

Greg Bimson said:


> That unit cannot be simply retried for infringement as it has been found guilty of infringement.





Curtis52 said:


> Inanimate objects can't be found guilty of anything.


Okay. Like I said, words have meaning...

That unit cannot be simply retried for infringement as it has already been adjudged as an infringement.


scooper said:


> What's the difference between Joe Blow's 5 year old 625 with updated software and a brand new off the production line 625 with the same software ? - Answer - 5 years of use, but that's it...


The court ruled that Joe Blow's 5 year old 625 is an infringing device. Judge Folsom said it infringed the patent. The new, just-off-the-line ones manufactured have also been found as infringements and merely colorably different than those adjudged.

That is the main difference. The devices such as Joe Blow's 625 have been before the court, while the newer ones just recently went before the court. Technologically they may be the same boxes; legally they might not be.


jacmyoung said:


> What are you talking about? From day one they said the modified DVRs no longer infringed, as legally different than the "Infringing Products".


They changed the legal definition of "Infringing Products" to simply mean "products that infringe". The argument always was because they changed the software so that the products no longer infringe, an injunction cannot prohibit a product that doesn't infringe. The implication in their argument was that they no longer have any "Infringing Products", but they never simply stated that. Instead, they always attacked the injunction stating it cannot prohibit non-infringing products, not because they no longer have any "Infringing Products".

It was as if DISH/SATS was a bit scared to make that argument.


----------



## Curtis52

Greg Bimson said:


> That unit cannot be simply retried for infringement as it has already been adjudged as an infringement.


That's the reason for the colorable difference test. A new trial is required if there is more than a colorable difference. Not allowed? Au contraire. A new trial is _required_ if there is more than a colorable difference.


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## jacmyoung

Greg Bimson said:


> ...They changed the legal definition of "Infringing Products" to simply mean "products that infringe"...


How do you define Infringing Products then?


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## Greg Bimson

Curtis52 said:


> A new trial is required if there is more than a colorable difference. Not allowed? Au contraire. A new trial is required if there is more than a colorable difference.


So adjudged infringing devices constantly get retried for infringement. That makes no legal sense.


Greg Bimson said:


> ...They changed the legal definition of "Infringing Products" to simply mean "products that infringe"...





jacmyoung said:


> How do you define Infringing Products then?


I don't. The court already did. And it has the definition given in the Final Judgment and Injunction Order.


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## Curtis52

Greg Bimson said:


> So adjudged infringing devices constantly get retried for infringement. That makes no legal sense.


No, only modified devices that have been through the process of determining whether they are legally different from the adjudicated devices get tried. There is no _re_trial involved.


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## Greg Bimson

Which devices are currently the adjudicated devices?


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## jacmyoung

Greg Bimson said:


> ...I don't. The court already did. And it has the definition given in the Final Judgment and Injunction Order.


Are you saying that the respondents are not allowed to interpret the term "Infringing Products"? Or that if they do they are "redefining" the term?

If you say they are redefining the term, then tell us what is the correct definition of that term. Without telling us how to define it, then your order is not clear and not enforceable.

Tell us what is its correct definition, as "given in the Final Judgment and Injunction Order."


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## Greg Bimson

jacmyoung said:


> Are you saying that the respondents are not allowed to interpret the term "Infringing Products"?


It is a proper noun, defined in both the original and the amended final judgment and injunction order. It would be exactly like saying "Paris, France" is actually Buenos Aires, Argentina.


jacmyoung said:


> If you say they are redefining the term, then tell us what is the correct definition of that term. Without telling us how to define it, then your order is not clear and not enforceable.


It was defined in the final judgment and injunction order, so it is definitely clear and enforcable:


> Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


Any other interpretation of "Infringing Products" is sheer folly.


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## jacmyoung

Greg Bimson said:


> It is a proper noun, defined in both the original and the amended final judgment and injunction order. It would be exactly like saying "Paris, France" is actually Buenos Aires, Argentina.It was defined in the final judgment and injunction order, so it is definitely clear and enforcable:Any other interpretation of "Infringing Products" is sheer folly.


Very well then, if the court "declares" that the 8 named DVRs no longer Infringing Products, then they will no longer be Infringing Proudcts? I remember you said so before.

Let me ask you this, if, and only if, the appeals court declares those 8 named DVRs no longer Infringing Products, are they not Infringing Products since 06 or 07 when the modification was implemented?

If so, would E* still be in violation of the disabling order? That is if the appeals court declares those 8 named DVRs no longer Infringing Proudcts.


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## Curtis52

Greg Bimson said:


> Which devices are currently the adjudicated devices?


We won't know that until after the appeal.


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## jacmyoung

Curtis52 said:


> We won't know that until after the appeal.


The 8 named DVRs are adjudicated products. They were adjudicated as infringing products during the trial, and again during the contempt proceeding. Though I agree the contempt proceeding is not over yet until the appeal is over.

If the appeals court later rules that the adjudicated products might not be infringing products anymore, then E* will not be in violation of the injunction, including that disabling order.

That makes the term "Infrinigng Products" the key term as far as the disabling order is concerned. Now had the judge used the term "Adjudicated Products" instead, it would have been a lot different. Because the term "adjudicated products" at least appears it does not separate infringing products from non-infringing products, as long as they once had been adjudicated to be infringing, whether they were later again adjudicated to be infringing, or not, one may insist they are adjudicated products regardless.

But then had the term "Adjudicated Products" being used, E* would likely have appealed the wording last time and the appeals court would likely have ordered the term narrowed down on remand.


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## Greg Bimson

jacmyoung said:


> Very well then, if the court "declares" that the 8 named DVRs no longer Infringing Products, then they will no longer be Infringing Proudcts? I remember you said so before.


The Court of Appeals would not declare those 8 named devices are no longer Infringing Products, but may declare those 8 named devices no longer infringe. The Court of Appeals does not redefine; they simply affirm, reverse, or a combination thereof, and can remand the case back to the District Court for more action.


Greg Bimson said:


> Which devices are currently the adjudicated devices?





Curtis52 said:


> We won't know that until after the appeal.


Why, is the Court of Appeals going to adjudge the devices or simply make sure the findings by the judge are consistent with law, case law, and the arguments presented by the parties? Because I am fairly certain that the Court of Appeals is not going adjudge the devices but simply adjudge whether or not Judge Folsom's findings are correct, which may involve a cursory glance at the devices, but only through the arguments presented by the parties.

I am also certain that the finding of contempt was not stayed, but the Court of Appeals certainly can reverse it.

I am also certain that any finding reviewed by appelate courts is simply considered as that finding until a higher court reverses it, if that happens.


jacmyoung said:


> That makes the term "Infrinigng Products" the key term as far as the disabling order is concerned. Now had the judge used the term "Adjudicated Products" instead, it would have been a lot different. Because the term "adjudicated products" at least appears it does not separate infringing products from non-infringing products, as long as they once had been adjudicated to be infringing, whether they were later again adjudicated to be infringing, or not, one may insist they are adjudicated products regardless.


It doesn't matter. The term "adjudicated products" wouldn't matter, because it would have no bearing on the defined proper name "Adjudicated Products".

Just as there is no legal way to to associate the term "infringing products" to the defined term "Infringing Products".


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## jacmyoung

Greg Bimson said:


> The Court of Appeals would not declare those 8 named devices are no longer Infringing Products, but may declare those 8 named devices no longer infringe. The Court of Appeals does not redefine; they simply affirm, reverse, or a combination thereof, and can remand the case back to the District Court for more action.


How is that the appeals court may declare the 8 named DVRs no longer infringe, yet it is not possible for them to say they should no longer be defined as Infringing Products? Does it even make sense to think they may determine the products no longer infringe, but still define them as Infringing Products?

What is your basis? Can you cite us a case law that says that? Oh I forgot, you do not need to cite anything.

The appeals court goes through great length to discuss the technical details of the products, the specifications, to determine if the district court finding is correct or not. The appeals court adjudge the products all the time on appeal, just read the last appeal decision and other appeals court similar decisions.

In fact the more you read the appeals court decisions, the more it seems the opposite is true, often times it was the district court that failed to analyze the products carefully enough, rendering a contempt decision, only on appeal, after the appeals court took its time and analyzed the products in greater detail, did they overturn the lower court decision.


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## Greg Bimson

I guess I should quantify the statement:


jacmyoung said:


> How is that the appeals court may declare the 8 named DVRs no longer infringe, yet it is not possible for them to say they should no longer be defined as Infringing Products? Does it even make sense to think they may determine the products no longer infringe, but still define them as Infringing Products?


Unless DISH/SATS asks the CoA to look at the term "Infringing Products" and is able to convince them it is incorrect, then the CoA will reverse the injunction and have Judge Folsom re-issue it. If the CoA feels that the products no longer infringe, they will state the reason why those products no longer infringe and then mandate Judge Folsom amend the injunction.

What I am getting at is the Court of Appeals will only consider only the arguments from the last proceeding, and then only those arguments that are appealed.


jacmyoung said:


> The appeals court goes through great length to discuss the technical details of the products, the specifications, to determine if the district court finding is correct or not. The appeals court adjudge the products all the time on appeal, just read the last appeal decision and other appeals court similar decisions.


And I should have chosen my words more appropriately. They will only adjudge the products in concert with the actions before Judge Folsom. It will not be a full-blown evaluation of the products like it was before Judge Folsom. It will be an evaluation of how those products were evaluated. For example:

The Court of Appeals was persuaded that the guilty verdict regarding literal infringement of the Hardware Claims was incorrect. DISH/SATS main argument was that it could not be literal infringement as something to do with the storing "video and audio data" language didn't sit right with the CoA. So they reversed the finding on the Hardware Claims, affirmed the finding of guilt on the Software Claims and remanded the case back to Judge Folsom for any other outstanding issues.

The Court of Appeals usually simply affirms or reverses the lower court's findings. On an even less likely basis, the Court of Appeals will occasionally mandate a lower court to do something. But the only evaluations that can happen are with respect to the evidence presented and any arguments that legal procedure was not followed with respect to that evidence. The only case in point I need to give about this is DISH/SATS is arguing KSM wasn't applied at all. When the CoA judges see that, they'll have a field day.

The Court of Appeals will "adjudge products", but only when asked and only in relation to how they were presented before the District Court. The full blown evaluation has passed, now it is time to determine if there was any legal issues with that evaluation against the standards of law.


jacmyoung said:


> In fact the more you read the appeals court decisions, the more it seems the opposite is true, often times it was the district court that failed to analyze the products carefully enough, rendering a contempt decision, only on appeal, after the appeals court took its time and analyzed the products in greater detail, did they overturn the lower court decision.


Now I'll agree with that. Best example is StarBrite. The product wasn't even evaluated; the patentee asked for contempt simply because the infringer kept using the names of the products found infringing even though the formula for the boat polish was changed.

However, in this case, there was a full-blown evaluation of the adjudged devices against the modified devices. That is what concerns DISH/SATS. Read both TiVo's and DISH/SATS' motions to the Court of Appeals, and it reads like there are two different cases. That's why DISH/SATS' entire motion contains all references from the trial regarding the finding of infringement of the Hardware Claims.


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## phrelin

phrelin said:


> Well, we should have this resolved in another 6 to 8 months and 600 posts.


Boy did I underestimate in my quantifying the post potential here. 800 and counting. :lol:


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## jacmyoung

Greg Bimson said:


> ...What I am getting at is the Court of Appeals will only consider only the arguments from the last proceeding, and then only those arguments that are appealed...


If they will only consider the arguments from the last proceeding (assume you meant the last appeal), additionally if E*'s arguments are only related to the last appeal, the appeals court would have rejected E*'s current appeal already because the last appeal was over, along with all the arguments in it.

But this appeal is about the modified DVRs, not about the old DVRs with the old software. There are so many material facts related to the modified DVRs the appeals court had never seen before. E* did not challenge the term "Infringing Products" in the last appeal because the term was used in the 2006 injunction to define the old DVRs found to infringe. But E* is now challenging the 6/2/09 injunction because the new injunction continues to define the modified DVRs as "Infringing Products".

E* is appealing the 6/2/09 district court ruling and orders, including the new injunction, and therefore including the term "Infringing Products" used. Since E* can in fact challenge the use of such term, and since the appeals court can rule in E*'s favor, you must admit it is possible that the appeals court may agree with E* the modified DVRs may no longer be defined as "Infringing Products". If that happens, then those modified DVRs have not been the "Infringing Products" since the new software was implemented in 2006 and 2007, therefore the disabling order did not apply to them when the old injunction was reinstated in 04/08.



> The Court of Appeals will "adjudge products", but only when asked and only in relation to how they were presented before the District Court. The full blown evaluation has passed, now it is time to determine if there was any legal issues with that evaluation against the standards of law.


Did you read E*'s motion to the appeals court for the stay of the 6/2/09 injunction and the subsequent replies? If so, they are full of technical details of the new software/modified DVRs, and we are talking about only the motion to stay, which are limited to 20 pages with replies limited to 10 pages each.

Just wait till you get to read the E*'s opening brief, TiVo's reply and E*'s sur-reply. They are up to 30 pages, 35 pages, and 30 pages, respectively.



> However, in this case, there was a full-blown evaluation of the adjudged devices against the modified devices. That is what concerns DISH/SATS.


During such "full-blown evaluation" E* disagreed with TiVo and the judge on almost every material fact related to the modified DVRs, and there are many of them. And such disagreement of every material fact related to the modified DVRs will be submitted to the appeals court, including new arguments that may be raised by both E* and TiVo. The appeals court will review such material facts argued by both sides because they are related to the modified DVRs, and are new to them, the appeals court had never seen them before.

Of course KSM will be argued too, along with other controlling case law. But not without first analyzing each and every technical argument to decide whether genuine dispute of the material facts exists. Once the appeals court answers the question of the dispute of the material facts related to the modified DVRs, so will they be able to apply the case law in determining whether to uphold the judge's ruling/orders, or not.

It is the dispute of material facts that is the key in a summary contempt proceeding. If E* can establish that genuine dispute exists, E* prevails. If not, TiVo prevails. But to make that determination, the appeals court must review each and every fact/argument raised by E* and TiVo, with respect to the modified DVRs. They must go over them one more time not because the district court did not do a full-blown evaluation of them, rather that the appeals court had never seen them.


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## Greg Bimson

jacmyoung said:


> During such "full-blown evaluation" E* disagreed with TiVo and the judge on almost every material fact related to the modified DVRs, and there are many of them.


Just to give you an idea, when DISH/SATS appealed the ruling regarding the copyright infringement case, they filed a staggering 16 points they wanted reviewed. As I recall, all 16 were fruitless.

The broadcast networks only appealed one point: that the controlling copyright law for willful infringement prescribes the death sentence for use of that license. They won that point.

DISH/SATS may want to argue everything under the sun to avoid contempt, what I call the legal diarrhea shotgun approach, hoping something sticks. That does not mean any of the arguments will hold water. Sure, just like before, they may win a point or two. They won't win enough to make a difference.


jacmyoung said:


> Did you read E*'s motion to the appeals court for the stay of the 6/2/09 injunction and the subsequent replies? If so, they are full of technical details of the new software/modified DVRs, and we are talking about only the motion to stay, which are limited to 20 pages with replies limited to 10 pages each.


Yes. Did you notice they look like two different cases?

And I'm still waiting to see what the Court of Appeals does with DISH/SATS' argument that Judge Folsom did not evaluate using the KSM standard.


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## jacmyoung

Greg Bimson said:


> Just to give you an idea, when DISH/SATS appealed the ruling regarding the copyright infringement case, they filed a staggering 16 points they wanted reviewed. As I recall, all 16 were fruitless.


But the appeals court had to review such 16 points in order to determine if the arguments had merits or not.

The point you raised was, the appeals court did not have to reveiw such material facts raised by E*, only to determine issues as a matter of law. That is not true in a direct appeal.

The last appeal on the jury's verdicts on the old DVRs with the old software, was a direct appeal, after the appeals court made the ruling, E* appealed again, once to the appeals court, and next to the Supreme Court. The appeals after the first direct appeal were reviewed only as whether the courts had correctly applied the law, not whether they correctly determined on the merits of the arguments.

Likewise here we are talking a direct appeal of a verdict by the district court on the modified DVRs. In this direct appeal, the merits of the arguments will be reviewed much the same way the district court reviewed them. That is why the appeals court called it the "merits panel".

After the appeals court renders its decision, the losing party may still appeal, they may appeal to the same appeals court requesting a review en banc, for example, that will be a second appeal, and to determine whether to review the second appeal, the appeals court will only consider if the law had been correctly applied by the courts, and/or if they view the issues to be of significant importance or complexity, but they will not make a review decision based on the merits of the arguments, that part will have been done with by the first direct appeal.

However we are still in the direct appeal phase.



> DISH/SATS may want to argue everything under the sun to avoid contempt, what I call the legal diarrhea shotgun approach, hoping something sticks. That does not mean any of the arguments will hold water. Sure, just like before, they may win a point or two. They won't win enough to make a difference.Yes. Did you notice they look like two different cases?


In a contempt proceeding, often the non-movant only needs to win one point to avoid a contempt, unlike in a direct appeal from a jury or bench trial. The burden of proof is different.

And yes, it is precisely the point that E* wants to argue the two cases are different, and TiVo wants to argue the two cases are the same. If E* succeeds in arguing the two cases (i.e. the old DVRs and the modified DVRs) are not that so much the same, E* will win, and if TiVo can prove the two are pretty much the same case, and also prove by clear and convincing evidence the new case still ends with a verdict of infringement, TiVo will win.



> And I'm still waiting to see what the Court of Appeals does with DISH/SATS' argument that Judge Folsom did not evaluate using the KSM standard.


E* argued the judge did not apply KSM correctly, not he did not try to use KSM.

For one thing, KSM says no infringement, no violation, period, the judge says even if no infringement, still a violation. For another, KSM said after proving mere colorable difference, one must go to the next step to prove infringement by clear and convincing evidence, the judge said after he determined mere colorable difference, he did not have to go to the next step, as far as he was concerned, the old DVRs and the modified DVRs were the same, that was good enough.


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## jacmyoung

BTW, the broadcast case you used is actually the prefect example.

During the direct appeal from the trial verdict, E* lost the appeal even though they tried to raise 16 different arguments, those 16 points were found without merits. E* was forced to shut down the networks broadcast programming.

But later FOX motioned the court for contempt after E* continued to use a separate vendor to provide the same broadcast programming, with the same satellite, same receivers for the same subs, without interruption. FOX raised many issues to argue E* was in contempt, and both courts ruled E* was not in contempt on a very narrow point, the programming was theoratically billed by the vendor, not E*, even though E* was profiting from the new (and pretty much the same as the old) arrangement, using the same satellite, same receivers, and broadcasting the same programming to the same subs.

Only one tiny difference in the detail allowed E* to avoid a contempt.


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## peak_reception

> Originally Posted by phrelin:
> Well, we should have this resolved in another 6 to 8 months and 600 posts.


 Well, you were right about the *should have been resolved* part. The system is broken. :sure::sure:


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## jacmyoung

peak_reception said:


> Well, you were right about the *should have been resolved* part. The system is broken. :sure::sure:


If the appeals court reverses the lower court ruling and orders, and if soon after the USPTO also invalidates the software claims, then E* can say "the system was broken," only having the opposite effect, that the broken systm made E* the "victim"

It is all perspective, so be careful what you ask for or what you accuse it for.


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## jacmyoung

Judging from the sanction hearing without knowing the details, it appears E* is willing to pay up to another $328M rather to settle

Even I am shocked that E* is so confident they can win on appeal that they are willing to bet $328M on it.


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## dgordo

Minute Entry for proceedings held before Judge David Folsom: Motion Hearing held on 7/28/2009 re [832] MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF THIS COURT'S PERMANENT INJUNCTION filed by TIVO Inc. (Court Reporter Libby Crawford.) (mrm, )


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## jacmyoung

The news report puts E*'s number at $138M, just what I speculated before. I don't know where the $328M came from, maybe E* was saying $138M was the right number, $328M was the maximum.

So if the judge gives TiVo $328M, which is much closer to what the judge would have done based on his own past math, then there would be no reason for E* to even contest/appeal that number, only TiVo will have the reason to appeal the sanctions ruling, which potentially may delay the appeals court briefing schedule and the final decision.


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## dgordo

TiVo Seeks Almost $1 Billion in Sanctions From Dish
http://www.bloomberg.com/apps/news?pid=20601103&sid=ayuaueUwHIrc


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## jacmyoung

So Judge Folsom asked TiVo’s lead attorney Mr. Chu what he thought of the meaning of the appeals court’s stay of his 6/2/09 injunction, Mr. Chu’s response was he did not come to offer any thoughts on that appeals court’s decision, only to seek sanctions.

But on 6/2/09 when Judge Folsom denied TiVo’s $2.25/box rate, and kept the $1.25/box rate, one of the main reasons was the appeals court’s stay of his injunction back in 10/06. Because according to him a stay of the order inevitably enhances the defendants’ bargaining position in a hypothetical licensing deal. A stay of the order at a minimum is a signal that the defendants have a substantial base on the merits to prevail on appeal.

Of course TiVo cannot offer any thoughts on the current stay of the order, because the appeals court this time appeared to signal that E* had strong likelihood of success on the merits. I think Judge Folsom will take such signal into to consideration as he did so last time, it is part of the analysis.

E* actually offered a new rate of $1.50/box this time to arrive at the $138M. My speculation is the judge may accept E*’s rate, or just split the difference and make it $1.75/box. I don’t think he will award triple damages, likely only the damages, which if $1.75/box is used will come to about $157M, plus any interest.

But he might award double damages, which if interest is added to just the damages part, would be very close to the maximum $328M E* calculated.

Of course if E* wins on appeal, they will be back at square one.


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## Greg Bimson

jacmyoung said:


> But on 6/2/09 when Judge Folsom denied TiVo's $2.25/box rate, and kept the $1.25/box rate, one of the main reasons was the appeals court's stay of his injunction back in 10/06. Because according to him a stay of the order inevitably enhances the defendants' bargaining position in a hypothetical licensing deal. A stay of the order at a minimum is a signal that the defendants have a substantial base on the merits to prevail on appeal.


Yes, but after the stay, the proverbial shoe is on the proverbial other foot...

Once the stay is dissolved, the bargaining position goes back to the plaintiffs. Ignoring the injunction then ends up with punitive sanctions.

Now you know why DISH/SATS is fighting everything. A complete loss now would not only give TiVo probably somewhere near half a billion dollars in sanctions (in addition to the 200 million dollars already granted), it would also award TiVo more money from sanctions while the contempt motion is stayed and would still require DISH/SATS to disable the adjudged products.

Of course this is the _modus operandi_ of the CEO of DISH/SATS. It is a scorched earth policy.


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## Curtis52

Re:the box rate

There was no stay until recently for the contempt period. Negotiations would have been (and were) based on the assumption that Dish was under the gun. The box rate damages awarded during the first stay were based on a possible Dish appeal win for the appeal already filed. There wasn't anything analgous during the contempt period.


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## jacmyoung

Greg Bimson said:


> Yes, but after the stay, the proverbial shoe is on the proverbial other foot...
> 
> Once the stay is dissolved, the bargaining position goes back to the plaintiffs. Ignoring the injunction then ends up with punitive sanctions.
> 
> Now you know why DISH/SATS is fighting everything. A complete loss now would not only give TiVo probably somewhere near half a billion dollars in sanctions (in addition to the 200 million dollars already granted), it would also award TiVo more money from sanctions while the contempt motion is stayed and would still require DISH/SATS to disable the adjudged products.
> 
> Of course this is the _modus operandi_ of the CEO of DISH/SATS. It is a scorched earth policy.


Let's first understand a few things here, and correct me if I am wrong BTW.

This sanction hearing was about damages plus penalties, if any, post the stay period to date, i.e. from 4/08 to the present time.

When the judge calculated his $103M he used several measures assuming at the time of 10/06, one I already mentioned, the stay of the old injunction in 10/06, the other was the design around effort, and yet the other was the fact at that time E* had not raised the DVR fees by $1.00. As such he used the jury rate, not TiVo's $2.25 rate.

In 04/08, the design around factor was still a valid point as before since not until 6/2/09 did the judge rule on it. But the differences were E* had increased the DVR fee by $1.00 and the last injunction was reinstated.

Even though the old injunction was reinstated, the design around factor still played the same effect because the question whether E* was in violation of the injunction wasn't answered until 6/2/09, and yet the day after it was known, the new injunction was again stayed. So on balance while the reinstating of the old injunction was bad for E* in 4/08 it was not nearly as bad as TiVo can claim.

So it comes down to the $1.00 DVR fee raise. Now in a real licensing deal, one side never gets all the fees the other side directly collects from the customers, the profit is usually split in some way. That is why I think the easiest way for the judge to do is to split it in half.

So far we are just talking about a hypothetical licensing deal in 04/08, based on each side's position at that moment in time. Such calculation does not consider the issue of contempt since a contempt decision had not been issued so it played equally.

Fast forward to today, a contempt was ruled on 6/2/09, though the new injunction has been stayed just as quickly, because E* raised many valid arguments based on its design around effort. Taking that into consideration the design around effort is still as valid as before, and sanctions will not likely to be the most severe because of it, which was why I said the judge might double the damages as the form of sanction, rather triple the damages.

Other than that, only the attorney fees are left, and attorney fees are only assessed in very severe situations, usually after triple damages assessed first so will these kind of reward be considered.

The lost profits argument by TiVo had already been dismissed by the judge as based on heaps over heaps of speculations. Not going to happen.

Based on the above, my speculation is up to maybe $350M in sanctions, which of course include damages and penalties in the form of doubling the damages.


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## jacmyoung

Curtis52 said:


> Re:the box rate
> 
> There was no stay until recently for the contempt period. Negotiations would have been (and were) based on the assumption that Dish was under the gun. The box rate damages awarded during the first stay were based on a possible Dish appeal win for the appeal already filed. There wasn't anything analgous during the contempt period.


The point is, there is also no contempt ruling until 6/2/09, so your so called "contempt period" is also a speculated period back in 04/08, and since the injunction was again stayed right after the 6/2/09 ruling, the design around effort remained a constant valid argument in favor of E*.

Keep in mind the judge will speculate the most likely deal made in 04/08 between E* and TiVo. If you were in TiVo's shoes at that time (not at the present time), a $1.75/box deal in 04/08 would certainly be a reasonable deal at that time that TiVo would gladly accept because the $1.75/box would have been the highest rate among any existing deals they had at that time by a large margin. The next highest rate at that time would be DirecTV's $0.89?/box, correct me if I am wrong. I do not think TiVo has a deal much over $1.00/box to date yet.

If you read the judge's own logic used in his calculations, it is all about what might be the most likely rate agreed on by E* and TiVo at the time of the deal.


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## Greg Bimson

jacmyoung said:


> When the judge calculated his $103M he used several measures assuming at the time of 10/06, one I already mentioned, the stay of the old injunction in 10/06, the other was the design around effort, and yet the other was the fact at that time E* had not raised the DVR fees by $1.00. As such he used the jury rate, not TiVo's $2.25 rate.


Not the stay, but the simple fact that during the stay period, any possible licensing agreement would be at the same price as what was found during trial. That is, the $1.25/month royalty found during the trial phase is all that could have been applied to the stay phase. Nothing about the raise of DVR fees to DISH customers nor the workaround could be applied.

That would be the royalty box rate for infringement.

We are now into the sanctions box rate for contempt.

These are two different things. Especially when contempt sanctions allow for a disgorgement of profits.


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## jacmyoung

Greg Bimson said:


> Not the stay, but the simple fact that during the stay period, any possible licensing agreement would be at the same price as what was found during trial. That is, the $1.25/month royalty found during the trial phase is all that could have been applied to the stay phase. Nothing about the raise of DVR fees to DISH customers nor the workaround could be applied.
> 
> That would be the royalty box rate for infringement.
> 
> We are now into the sanctions box rate for contempt.
> 
> These are two different things. Especially when contempt sanctions allow for a disgorgement of profits.


The rate increase will be justified this time because the fact E* raised its own rate by $1 before 4/08, what I am saying is in a supposed licensing negotiation, no one gets 100% of the fee the other guy charges on its own subs, if anything such profit is shared. The question he judge will answer is, whether TiVo would accept a $1.50 rate or a $1.75 rate in 4/08, considering the fact the next highest rate they were getting at the time was about under $1.00.

Also not only the judge had already dismissed the lost profits argument by TiVo because it was based on heap over heap of speculation, but also you cannot have both the lost profits and the damages at the same time in this case.

The lost profits argument is based on the assumption that there was no licensing agreement and E* was forced to shut off the DVR functions for the 5 or 6 million DVRs, but the damages are estimated on the assumption that there was a licensing agreement and E* would not shut off the DVRs. It is an either/or situation, not both. Again the first scenario has already been dismissed by the judge.

When you talk about sanctions, in a civil court, the court has the power to impose a maximum three times the damages plus the award of the attorney fees, but not more.


----------



## Greg Bimson

jacmyoung said:


> The lost profits argument is based on the assumption that there was no licensing agreement and E* was forced to shut off the DVR functions for the 5 or 6 million DVRs, but the damages are estimated on the assumption that there was a licensing agreement and E* would not shut off the DVRs. It is an either/or situation, not both. Again the first scenario has already been dismissed by the judge.


I'm not so sure about that.

Judge Folsom awarded both lost profits and damages for infringement upon issuance of the guilty verdict. However, Judge Folsom could not do that for the stay period, as staying the injunction cannot award lost profits. If anything, there is a much stronger case to award lost profits for contempt and failing to disable the "Infringing Products", as some people may have went to TiVo.

I'm not saying that would happen, but it is much easier to award lost profits in a contempt setting.


----------



## jacmyoung

Greg Bimson said:


> I'm not so sure about that.
> 
> Judge Folsom awarded both lost profits and damages for infringement upon issuance of the guilty verdict. ...


Are you still talking about the 179K units in 06 or the 190K units in 09? Those are the units not under injunction because TiVo has this lifetime subscription plan in place for a small percentage of their subs. For those DVRs assessed of lost profits, they were no longer ordered to shut off and no longer part of the damages assessment.

That is precisely why I said it is an either/or situation, not both. So yes, to assess the period of 4/08 to the present time, likely the lost profits will be again assessed on the 190K units but not damages, and damages assessed on the rest of the 5 to 6 million DVRs, but not lost profits. After that the judge will then decide whether to impose no more, or double, or triple damages and attorney fees as a form of sanctions.

Corrections, the 190K units will not be assessed of the lost profits again, because lost profits are assessed only once for the same units. Instead I think the judge will calculate a different lost profit number of units based on the formula used by the jury back in 2006. Regardless it will be a small part of the overall damages, the balk of the damages should be based on a hypothetical licensing agreement reached in 04/08, which will be a reasonable per box monthly rate.


----------



## jacmyoung

I guess TiVo was too busy asking Judge Folsom for that $1B, their docket statement to the appeals court was "over due" and was asked to file by 8/10

It was also very interesting that Judge Folsom weighed heavily on E*'s arguments in the last stay motion in 2006, the E* design around effort, and the E*'s ability to have the appeals court to overturn the hardware claims verdict, when he agreed to E*'s $1.25 rate on 6/2/09.

He specifically mentioned E* successfully argued in front of the appeals court the error made by him on the claims constructions which led to the reversal of the hardware claims verdicts. It appears he does listen to his boss, will be interesting to see how much he will weigh in on the current appeals court's stay decision, especially whether he will actually read the fine details of it.

I am not holding my breath though.


----------



## jacmyoung

Aside from the TiVo docketing statement overdue and to be filed by 8/10/09, E* just filed their docketing statement on 7/28/09. Additionally it appears E*'s opening brief deadline is now 8/3/09 instead of 7/31/09.

I had a look at a sample docketing statement form (Form 26), it is interesting in this form the appeals court asks a lot of questions related to any recent settlement discussions and whether the respondents think mediation by the appeals court is appropriate. The rule says Form 26 must be filed no more than 14 days after the initial docketing.

Unfortunately unlike the district courts, the appeals court does not provide copies of the documents online, just the entries. Also a lot of papers are still filed by mail rather electronically.

Here is my wild speculation since I have no idea what the appeals court filings mean:

If I remember correctly, the initial docketing was done a long time ago in June, which means both parties were late in filing their docketing statements. Consider the questions in the Form 26, one reason for the delay could be that some settlement discussions had taken place and parties waited to file Form 26.

But since E* just filed their Form 26 on 7/28, and the appeal is still on as evident by the 8/3 E* opening brief deadline and the court notice for TiVo to file Form 26 by 8/10, it is possible the settlement discussions, if there were any, did not yield any results.


----------



## jacmyoung

It is nice to have someone who had just gone to the appeals court, researched the actual filings and confirmed my speculation. No mediation, the fight is on.

Given that the appeals court seems more than willing to extend deadlines for both parties, this thing can be dragged out beyond November, when the sanctions issue gets to be thrown in the mix.

I hope not.


----------



## peak_reception

jacmyoung said:


> Given that the appeals court seems more than willing to extend deadlines for both parties, this thing can be dragged out beyond November...


 Hard to Believe!!! (not really). What happened to that much ballyhooed "expedited schedule" the CAFC was supposedly on?? Not to mention the "Rocket Docket" in EDTX that's been chugging away for the last 4 years. If this is the fast track of justice I'd hate to see how slowly regular court machinery moves.

I will be shocked if there is a CAFC ruling before 2010 and the whole thing is settled before 2011. :nono2:


----------



## jacmyoung

There is one other thing I found interesting, correct me if I am wrong.

Right after Judge Folsom found E* new design continued to infringe and issued his contempt ruling and order, within a few days he also stayed E*'s lawsuit against TiVo claiming non-infringement by the new design.

In theory, once the new design was found to continue to infringe, TiVo could easily have motioned Judge Folsom to dismiss this E*'s new suit, this much even E* admitted earlier.

But Judge Folsom did not give TiVo such opportunity, he immediately stayed this E*'s suit pending E*'s current appeal. But why? IMO, TiVo should have at least been given the opportunity to motion the court to dismiss E*'s case, unless the judge was anticipating possible need for such suit after the current appeal, but for this to be true, his finding of infringement by the new design has to be reversed first.


----------



## jacmyoung

Well just a quick check found out several TiVo attorneys, Mr. Chu included, just filed applications on 7/24 to appear in the new E* declaratory case. I just mentioned above this new case was stayed by Judge Folsom on 6/19 pending the outcome of the current E* appeal. Plan B for TiVo if necessary?

I continue to wonder what is the point of keeping this E* new case alive?


----------



## Greg Bimson

jacmyoung said:


> Well just a quick check found out several TiVo attorneys, Mr. Chu included, just filed applications on 7/24 to appear in the new E* declaratory case. I just mentioned above this new case was stayed by Judge Folsom on 6/19 pending the outcome of the current E* appeal. Plan B for TiVo if necessary?


I am unsure if the EchoStar v. TiVo case has been stayed for the length of the current appeal. I know it has been stayed, but I believe it may only be temporary, until someone moves that the case should proceed.

Maybe TiVo is finally going to grow a set and actually start some kind of infringement proceedings on the ViP series. Let's not forget that TiVo can acutally file countersuit. And it is possible that TiVo could simply file another contempt motion, this time relating to the ViP series.


----------



## scooper

Greg Bimson said:


> I am unsure if the EchoStar v. TiVo case has been stayed for the length of the current appeal. I know it has been stayed, but I believe it may only be temporary, until someone moves that the case should proceed.
> 
> Maybe TiVo is finally going to grow a set and actually start some kind of infringement proceedings on the ViP series. Let's not forget that TiVo can acutally file countersuit. And it is possible that TiVo could simply file another contempt motion, this time relating to the ViP series.


Since there is no current injunction on the ViP series - I don't think a contempt motion is in order. As you like to say - those devices haven't been found to infringe / haven't been tried yet.


----------



## jacmyoung

Greg Bimson said:


> I am unsure if the EchoStar v. TiVo case has been stayed for the length of the current appeal.


Yes it is, Judge Folsom's stay order says so.



Greg Bimson said:


> Maybe TiVo is finally going to grow a set and actually start some kind of infringement proceedings on the ViP series. Let's not forget that TiVo can acutally file countersuit.


I have never seen a countersuit filed in a declaratory judgment suit yet, but I don't know enough on this one.

What is TiVo going to counter sue? If TiVo prevails on the current appeal, they can include the VIPs in a future contempt proceeding without the hassle of going through another trial. I don't see the benefit of a countersuit for that purpose, not at this time.



Greg Bimson said:


> And it is possible that TiVo could simply file another contempt motion, this time relating to the ViP series.


If so TiVo should have motioned the judge last time, together with the other two motions. The current contempt judgment and order were final therefore appealable, Judge Folsom's order specifically stated all other relief not granted were denied. I don't know if TiVo can file another contempt motion while the appeal is underway.

As said above, if TiVo prevails on this appeal, they should be able to file another contempt motion on the VIPs. Not a lawyer, could be wrong.


----------



## Curtis52

scooper said:


> Since there is no current injunction on the ViP series - I don't think a contempt motion is in order. As you like to say - those devices haven't been found to infringe / haven't been tried yet.


The contempt motion would allege that the ViP series is covered by the current injunction's prohibition against selling DVRs that are not more than colorably different from the DVRs found to infringe.


----------



## scooper

Curtis52 said:


> The contempt motion would allege that the ViP series is covered by the current injunction's prohibition against selling DVRs that are not more than colorably different from the DVRs found to infringe.


They have NOT been explicitly tried yet. Therefore contempt is NOT an option.


----------



## Curtis52

scooper said:


> They have NOT been explicitly tried yet. Therefore contempt is NOT an option.


It wouldn't be the DVRs that are in contempt. It would be Dish that would be in contempt for not following the orders in the injunction.


> It is FURTHER ORDERED that each Defendant, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product *and all other products that are only colorably different therefrom in the context of the Infringed Claims*, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 Patent.


----------



## jacmyoung

Curtis52 said:


> It wouldn't be the DVRs that are in contempt. It would be Dish that would be in contempt for not following the orders in the injunction.


I just realized why there cannot be anything more than the appeal at this time, the injunction is stayed, not in effect.

E* even argued the additional sanction proceeding should be stayed because the contempt finding was stayed also, but the judge disagreed, though he did promise E* he would not enforce the sanctions during the appeal, if any.


----------



## Curtis52

ALVISO, Calif., Aug. 4 /PRNewswire-FirstCall/ -- TiVo Inc. (Nasdaq: TIVO - News), the creator of and a leader in television services and advertising solutions for digital video recorders (DVRs), indicated today that on August 3, 2009, the United States Patent and Trademark Office (PTO) issued an Office action with respect to Claims 31 and 61of TiVo's Multimedia Timewarping System patent, U.S. patent number 6,233,389 (the "Barton Patent"), preliminarily rejecting the patent claims. TiVo offered the following comment on the PTO preliminary finding:

"The Office action is a preliminary finding, entered in the normal
course before TiVo has had any opportunity to present its views. TiVo
believes that the PTO's preliminary finding will not affect
EchoStar's appeal of the June 2009 ruling by the United States
District Court for the Eastern District of Texas finding EchoStar to
be in contempt of court."

"This is an initial step in the lengthy process known as
'reexamination,' and it is not unusual for the PTO to provide a
preliminary finding of invalidity and to then later find that the
claims are valid after hearing an explanation from the patent
owner. Indeed, this is precisely what happened with the first
reexamination of the Barton Patent that EchoStar filed in 2005. Among
other things, the next step in the reexamination process provides
TiVo, for the first time, the opportunity to discuss and distinguish
the references presented by EchoStar, and to present new claims."


----------



## spear61

The Empire strikes back !


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## jacmyoung

What did I tell you guys just a week ago?

The PTO rejected the two software claims, which are the sole basis for the infringement. Theoretically I think E* may request all litigations be stayed pending TiVo's appeal on this decision, which can take years. Any lawyers?


----------



## scooper

jacmyoung said:


> What did I tell you guys just a week ago?
> 
> The PTO rejected the two software claims, which are the sole basis for the infringement. Theoretically I think E* may request all litigations be stayed pending TiVo's appeal on this decision, which can take years. Any lawyers?


I have no idea what may happen, but if this patent invalidation stands - wouldn't this basically make all this Tivo vs Echostar moot , since there would be no further valid claims ?


----------



## Curtis52

scooper said:


> I have no idea what may happen, but if this patent invalidation stands - wouldn't this basically make all this Tivo vs Echostar moot , since there would be no further valid claims ?


There hasn't been a patent invalidation yet. That couldn't possibly happen until this preliminary action is followed by a final office action and then years of appeals would follow. Finally, after a Supreme Couurt appeal is exhausted, claims 31 and 61 could be invalidated. That would still leave the hardware claims that were remanded. Meanwhile, the Dish DVRs will have been disabled for several years.


----------



## jacmyoung

Curtis52 said:


> ...Meanwhile, the Dish DVRs will have been disabled for several years.


Not if E* wins on appeal in the current case.

While this might not be the final PTO action, it indicates a good possibility TiVo might not get any more money from E*, much less disabling any DVRs. If the PTO makes this decision final, while technically the software claims will still be valid throughout TiVo's appeal, traditionally in such cases the courts often exercise their discretion to stay the related litigations and orders.

Unless of course parties settle, but then this news certainly makes E* less likely want to settle, if they had the inclination at all before.


----------



## jacmyoung

E* just notified Judge Folsom today of the PTO's initial action.



> We write to inform the Court that&#8230;Accordingly, Echostar respectfully requests that the Court consider the office action as part of the record for purpose of its pending ruling on sanctions.


But the most important points are, as I have explained before, when we determine the issue of infringement, we must not only interpret the claims, but also the patent specification, the prosecution history of the patent, in the context of the entire patent.

Below is how E* used the "prosecution history of the patent" to again make their non-infringement argument in today's filing:



> As a predicate to its invalidity analysis, the PTO had to consider the scope of various claim terms. The PTO found that "parsing video and audio data" meant "detecting video frames and then generating an index or table of the start of the detected video frames and their storage location on a hard drive." (Office Action at 4.) Echostar respectfully submits that the PTO's interpretation of the "parse" limitation not only supports Echostar's position in the contempt proceedings on which the Court has already ruled, but demonstrates conclusively that Echostar's position that it had designed around the patent in good faith was a reasonable one.


----------



## jacmyoung

> TiVo's position on both contempt and now sanctions is premised on the core notion that no one, including Echostar, could have thought that removing start code detection and the index of start codes took its DVRs outside the scope of the claims. Specifically, TiVo's position was that start code detection and indexing was irrelevant to the scope of the claims and therefore that elimination of that function was also irrelevant. Today's PTO decision shows that TiVo was wrong.


Keep in mind if there is any doubt as whether TiVo's assertion might be wrong, they would have failed to prove infringement by clear and convincing evidence. Since the PTO thought in the same way E* argued, therefore TiVo was wrong to assert that no one (including a potential jury) could have ever thought in favor of E*'s argument. That alone, IMHO, renders the contempt finding inappropriate.

E*'s letter also addressed the automatic flow control issue interpreted by the PTO, I would not waste my time on this one. But on the PID filter issue:



> Moreover, the PTO found the '389 patent invalid under an application of the claims consistent with what TiVo asserted at trial. As Echostar argued during the contempt proceedings, TiVo's expansion of the claims during the contempt proceedings to require only PID filtering and buffering without blocking was not only improper because it was beyond the adjudicated scope of the claims, but would also render the '389 patent invalid based on a far wider range of prior art covering PID filtering and buffering than the art considered by the PTO in this most recent office action.


----------



## kmill14

jacmyoung said:


> Keep in mind if there is any doubt as whether TiVo's assertion might be wrong, they would have failed to prove infringement by clear and convincing evidence.


You seem to be talking to yourself, so I thought I would chime in here.

Just in case you missed the announcement, TiVo already proved (twice officially and unreversably (sp?)) that E* infringed by clear and convincing evidence.


----------



## scooper

On a patent that may now be totally invalid -


----------



## jacmyoung

kmill14 said:


> ...Just in case you missed the announcement, TiVo already proved (twice officially and unreversably (sp?)) that E* infringed by clear and convincing evidence.


You completely missed the points I raised.

First is that if the software claims are ruled invalid by the PTO's final action, which will not take years, rather relatively soon, it does not matter if TiVo proved anything in the past, there will be no infringement on the software claims. There cannot be infringement on an invalid patent claim.

Under such condition, most times the courts will exercise their discretion to stay any related litigations pending the patent owners' appeal. So depending on the timing of the PTO's final action, there is certainly the possibility it can happen before the courts finalize the damages and/or injunction, if any. If so the court actions can be stayed for years while TiVo appeals the PTO's decision.

The second point is, E* in its letter used the PTO's own interpretation of the Step 1 of the software claims, keep in mind the interpretation below is taken from TiVo's own patent specification or prosecution history:



> Examiner note: The *parsing of video and audio data* is interpreted to mean detecting video frames and then generating an index or table of the start of the detected video frames and their storage location on a hard drive. *('389 at 2:15-20, 5:3-15)*


The above interpretation is from the PTO's own description in the TiVo's patent, of the claim term "parse video and audio data from the broadcast data." It is one of the bases for granting the software claims in the first place. As such when TiVo argued the software claims had nothing to do with detecting video frames and indexing such data, they basically lied about what they told the PTO when they tried to get their software claims granted in the first place.

And Judge Folsom bought such lie. So who cares if TiVo proved anything, if what they had proven was based on a lie? And such lie has been exposed by the PTO's own prosecution history, that was the point E* was trying to drive at.

Look Judge Folsom, your decision was based on a lie told by TiVo.

The second point has nothing to do with the first one--whether the software claims will ultimately be rejected or validated, such outcome will be irrelevant to the contempt issue. The second point is simply to expose the TiVo's lies, and by doing so IMHO almost certainly will lead to the appeals court's overturning the verdict of infringement by the new design.

Because it is undisputed that the new design does not detect video frames and then generating an index or table of the start codes, therefore the new design does not meet Step 1 of the software claims.


----------



## kmill14

a Preliminary finding by a PTO examiner without any input from the patentee is hardly a finding at all. 

During claims construction, Folsom and both sides had plenty of PTO examiner analysis to use, and decided for this case what each claim meant and did not mean. 

That claims construction was even appealed to the CAFC, and there really is no point arguing what "parsing" means.

You should be more worried about what "disablement" means, since that is why Dish in being held in contempt, and why the CAFC will affirm that ruling.

Oh, when was the last time the USPTO invalidated a previously validated patent?


----------



## jacmyoung

kmill14 said:


> a Preliminary finding by a PTO examiner without any input from the patentee is hardly a finding at all.
> 
> During claims construction, Folsom and both sides had plenty of PTO examiner analysis to use, and decided for this case what each claim meant and did not mean.
> 
> That claims construction was even appealed to the CAFC, and there really is no point arguing what "parsing" means.
> 
> You should be more worried about what "disablement" means, since that is why Dish in being held in contempt, and why the CAFC will affirm that ruling.
> 
> Oh, when was the last time the USPTO invalidated a previously validated patent?


And yet the term "audio and video data from the broadcast data" was never constructed by the court and left as is, if you actually cared to read all the filings. As such the interpretation of such term is left to the parties and the courts to agree or disagree.

I do not know why you cannot see the point here, based on the PTO's own interpretation of the patent in this most recent action, the above term has to do with start codes and building an index/table of such codes, such is quoted from TiVo's own patent documents.

This issue is a new one, never adjudicated before, if you do not believe me, try to find any reference to it in the last trial documents. The issue had only been raised during the contempt proceedings. Only now you have the PTO quoting from TiVo's own patent documents to support E*'s argument, and refute TiVo's. If that does not establish any *doubt*, I do not know what will.

Do you have any doubt that E* will raised this issue with the appeals court, and the appeals court will take the PTO and TiVo's own past documents into serious consideration? Do you seriously believe the appeals court will let TiVo off the hook for covering up such fact buried in the patent prosecution history?

As for the disabling order, I think TiVo should be more worried why the appeals court stayed such order, implying that E* had established strong likelihood of success on the merits.

You see you do not even know who should be worried, why should I be worried? It is either E*, or TiVo who should be worried.


----------



## harsh

You have to get a chuckle out of the domain name of the law firm.


----------



## Drewg5

Honestly I think all this stuff is a little nuts, takes years and in the end the only true negative effect is to the consumer, be it E* or Tivo


----------



## kmill14

jacmyoung said:


> Do you have any doubt that E* will raised this issue with the appeals court, and the appeals court will take the PTO and TiVo's own past documents into serious consideration? Do you seriously believe the appeals court will let TiVo off the hook for covering up such fact buried in the patent prosecution history?


The Appeals Court only cares about the original trial claims construction and Folsom's interpretation for the contempt hearing. The USPTO has no bearing whatsoever in any of it beyond whatever they added for the original trial.



jacmyoung said:


> As for the disabling order, I think TiVo should be more worried why the appeals court stayed such order, implying that E* had established strong likelihood of success on the merits.


The Appeals Court did not imply anything of the kind. Do you remember the last time they gave E* a stay? They actually verbalized a likelihood of success on the merits (and still they lost). This time they didn't give that as the reason...so I wonder why that is.


----------



## jacmyoung

kmill14 said:


> The Appeals Court only cares about the original trial claims construction and Folsom's interpretation for the contempt hearing. The USPTO has no bearing whatsoever in any of it beyond whatever they added for the original trial.


Did you read what I quoted the appeals court's review of the patent claims and court constructions? If not please spend some time to do so, go back a few weeks or months to find out. Keep in mind how the appeals court overturned the hardware claims verdicts last time, because the district court constructed two of the limitations too broadly. Now the same is happening, only in a different angle.

There is nothing added, all existed in the original trial, in the software claims, the patent specification and the prosecution history, the only problem is TiVo covered up its own interpretation of the software claim limitation during the patent prosecution, now exposed.



> The Appeals Court did not imply anything of the kind. Do you remember the last time they gave E* a stay? They actually verbalized a likelihood of success on the merits (and still they lost). This time they didn't give that as the reason...so I wonder why that is.


Go back to again read my explanation what it meant when the appeals court did not mention the harms factor in E*'s favor, use the simple method of exclusion.


----------



## jacmyoung

Drewg5 said:


> Honestly I think all this stuff is a little nuts, takes years and in the end the only true negative effect is to the consumer, be it E* or Tivo


What part is negative to the consumer?


----------



## gully_foyle

jacmyoung said:


> What did I tell you guys just a week ago?
> 
> The PTO rejected the two software claims, which are the sole basis for the infringement. Theoretically I think E* may request all litigations be stayed pending TiVo's appeal on this decision, which can take years. Any lawyers?


Doesn't work that way.


----------



## jacmyoung

kcmurphy88 said:


> Doesn't work that way.


I had already added that after the PTO "final action", if such action is still to reject the software claims, then E* can motion the court to stay all existing related proceedings while TiVo appeals the PTO action.

There is actually one other patent infringement suit against E* involving a Dish-Plus switch patent, the lawsuit was stayed by the court after E* successfully convinced the PTO to invalidate the patent. The patent owners continued to appeal the PTO decision while the case was stayed.

Lately the same patent owners had another Dish-plus plus switch patent granted, and they immediately sued E* on the new patent in a new suit, so the cycle continues.

With that you can see part of E*'s strategy, and such strategy is more and more common. To try to invalidate the patent claims through the PTO reexamination process, while defending a case in the court.

The reasons are two-fold, one is, it is much less costly to go the reexamination route, no need of big lawyers, no court and major legal expenses, also it is easier to have the PTO to invalidate the patent than for the court to invalidate the patent. The burden of proof is different.

For the PTO to invalidate the patent, only preponderance of evidence is required, but to convince the court (whether by a judge or by a jury) to invalidate the patent, you need clear and convincing evidence.


----------



## jacmyoung

Now on the issue of the PTO's "initial action", I know many TiVo folks want to point out that E* paid for their request for reexamination, the conclusion they make is E* simply "bought" this action. Aside from the fact they have no evidence only speculation, even if such conjecture can be of any value, one can also say TiVo's patent was bought too, since they paid the PTO for granting the patent, so the arguments cancel out each other. If it were a lousy job by the PTO now, it could well have been a lousy job by the PTO then.

Another point to make is this, now it is up to TiVo to convince the PTO their software claims are valid, to ensure they succeed in such effort, TiVo will have to abandon their theory that the PID filter alone can be that "parser", that "physical data source". Because if they try to hold this PID theory, then all prior PID patents will naturally join the two existing patents to further strengthen the PTO's action to reject the software claims.

And yet to abandon the PID theory is also to abandon TiVo's central argument in the contempt proceedings. TiVo will likely have to choose their poison, and TiVo is fully aware that E* is just waiting for them to put those arguments down on the papers for them to be picked on and used in the litigation.


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## dreadlk

The legal system is a POS and the patent office is a POS! You can violate patents and get away with it if your big enough! Proving that the courts really don't have any teeth when they are dealing with large companies. On the flip side the Patent office issue's to many patents for every little thing and the patents last to long.



Drewg5 said:


> Honestly I think all this stuff is a little nuts, takes years and in the end the only true negative effect is to the consumer, be it E* or Tivo


----------



## audiomaster

Wouldn't the contempt charge still be valid even if the infringement was not proven. Echostar ignored a court order to desist. That is a fact.

For example;
If I get stopped for speeding and try to rough up the arresting officer, and then the speeding charge is dropped, I would still be charged with assualt on a law enforcement officer wouldn't I?

Aren't these two items considered separately?


----------



## jacmyoung

audiomaster said:


> Wouldn't the contempt charge still be valid even if the infringement was not proven. Echostar ignored a court order to desist. That is a fact.
> 
> For example;
> If I get stopped for speeding and try to rough up the arresting officer, and then the speeding charge is dropped, I would still be charged with assualt on a law enforcement officer wouldn't I?
> 
> Aren't these two items considered separately?


But if you insist you did not rough up the officer, the officer insists you did but the court says the officer fails to prove you did, are you still guilty? Note that Judge Folsom would be that officer, the appeals court would be that court, also note that the appeals court stayed Judge Folsom's injunction which was the basis of his judgment that E* violated his injunction.


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## jacmyoung

Just read the E* initial brief to the appeals court, mostly the arguments we had all covered except one, E* now added an argument I had made way back almost a year ago:

There is no longer any "physical data source" parsing out the "audio and video data", as such no such "audio and video data" are "temporarily stored" by the "physical data source" anymore, therefore no such "source object" can "extract" such "audio and video data". Therefore the "source object" cannot convert the "video data" into any "data streams" and cannot "fill such data streams" in that "buffer" it "obtained" from the "transform object" and of course then such data flow is no longer "automatically flow controlled by the transform object". That makes the new software not meeting at least 4 to 5 claim steps in the software claims, not just step 1.

The real interesting part is E* sends TiVo a homework assignment to fill in all the blanks where the specific software commands TiVo must identify in the new software that can serve each of the above functions, because while those commands were all present in the old software, they had all been removed in the new software, even TiVo admitted so.

It is therefore predictable TiVo will simply ignore the above quiz, just say no, they are not that different, so that is about all they will say.


----------



## jacmyoung

During the sanction hearing, the E* lawyer said the appeals court considered E* had either established strong likelihood of success on the merits, or at the very minimum substantial base on the merits.

Judge Folsom countered that the expedited schedule proposed by the appeals court might have offset the E* assumptions. The judge seemed very interested to know if the expedited schedule was already confirmed.

I wonder if he thought about the fact his sanction hearing and ruling, which he wanted to be incorporated into the E*'s appeal, would likely delay the process and even offset the appeals court intent for the expedited schedule?

Should have stayed his sanction proceedings so E* would not have any excuse to "delay" or completely undermine the expedited schedule?


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## Tulsa1

You really should get out and have contact with others once in a while


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## jacmyoung

Tulsa1 said:


> You really should get out and have contact with others once in a while


Do you even realize these days you can web surf outside, on the road, on a dock, in a park and at a beach, with others?

Time to wake up


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## phrelin

jacmyoung said:


> Do you even realize these days you can web surf outside, on the road, on a dock, in a park and at a beach, with others?
> 
> Time to wake up


If you're writing most of your posts on the road, on a dock, in a park and at a beach, you must have the best thumbs in the world or the best laptop battery ever.


----------



## TBoneit

Well FWIW  HP does sell a laptop that runs over 24 hours on a battery charge when configured with certain options. 

LED Backlight instead of Flourescent
SSD instead of Hard drive
high capacity battery
etc.


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## puckwithahalo

phrelin said:


> If you're writing most of your posts on the road, on a dock, in a park and at a beach, you must have the best thumbs in the world or the best laptop battery ever.


Its "Sam I Am"!!!


----------



## Greg Bimson

This has to be the worst argument I've ever heard, as it completely misrepresents what occurred:


> ATTENTION ALL BUSINESSES: Once you are found liable for patent infringement, you are well advised to abandon the technology entirely. If you try to design around the infringed claims, and the patent holder again accuses you of infringement-even on a different theory-a judge can hold you in contempt and brand you a repeat offender. The judge can then enjoin any further design-around, with a decree such as, "Even if EchoStar had achieved a non-infringing design around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction." Ad26.


This is the opening paragraph in DISH/SATS blue brief to the Court of Appeals.

The patent holder accused DISH/SATS of contempt for failure to disable the "Infringing Products". The only reason for an evaluation of the design-around was DISH/SATS excuse that their "new, non-infringing technology" couldn't possbily be enjoined by the disable order.

Therefore, DISH/SATS was found in contempt for failure to disable. And the citation taken from the memorandum, where Judge Folsom stated, "Even if EchoStar had achieved a non-infringing design around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction," specifically related to the disable order. It had nothing to do with the finding of infringement.

So, if this is the opening salvo at the Court of Appeals, this will be the biggest mistake in history.

And I've only read the first paragraph.


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## jacmyoung

phrelin said:


> If you're writing most of your posts on the road, on a dock, in a park and at a beach, you must have the best thumbs in the world or the best laptop battery ever.


Actually I have very poor thumbs evident by my constant need to edit out typos Puckwithahalo might have a good point

The point I was making was, he shoudn't have jumped to conclusion that someone who writes a lot about a subject must be working in a secret room with no contect with the others, not with today's technology at least, unless he was totally unware of the technologies himself, then he should see the irony and start to talk to the others.


----------



## jacmyoung

Greg Bimson said:


> ...And I've only read the first paragraph.


Then you should stop, because it gets much worse

Just sit back and watch TiVo collect the $1B.



> The only reason for an evaluation of the design-around was DISH/SATS excuse that their "new, non-infringing technology" couldn't possbily be enjoined by the disable order.


Then don't evaluate it, because doing so allows the other side an easy target. Or should we say that the only reason for an evaluation was because deep down the judge knew the design around mattered, because he remembered what his boss had said over and over.


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## dreadlk

1 Billion, are you joking??? Is that the real number??



jacmyoung said:


> Just sit back and watch TiVo collect the $1B.


----------



## phrelin

dreadlk said:


> 1 Billion, are you joking??? Is that the real number??


A billion here, a billion there...

Begins to sound like the economy threads in The OT.


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## bobcamp1

Greg Bimson said:


> Therefore, DISH/SATS was found in contempt for failure to disable. And the citation taken from the memorandum, where Judge Folsom stated, "Even if EchoStar had achieved a non-infringing design around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction," specifically related to the disable order. It had nothing to do with the finding of infringement.
> 
> So, if this is the opening salvo at the Court of Appeals, this will be the biggest mistake in history.
> 
> And I've only read the first paragraph.


Why? I've been involved in a case where a design-around was valid and the judge immediately dissolved his own injunction. No further damages were rewarded. The product is still being sold today. The company who had the patent disappeared. (I wonder who owns that patent now?)

If justice were consistent, it would make things a lot easier for all of us. But then what would lawyers do all day?

The patent ruling has its own appeal process. Yes, it's the initial ruling. This serves to give Tivo time to narrow the claims or remove the offending claims without ditching the entire patent. It also gives them time to prepare their arguments why their current claims are valid. But it is not good news, no matte how Tivo spins it.

Too bad. I like Tivo. I wonder if they will disappear too.


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## Curtis52

bobcamp1 said:


> Why? I've been involved in a case where a design-around was valid and the judge immediately dissolved his own injunction.


So then the infringer was free to revert to the infringing design without ever being accused of contempt? That seems odd.


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## scooper

Greg Bimson said:


> This has to be the worst argument I've ever heard, as it completely misrepresents what occurred:This is the opening paragraph in DISH/SATS blue brief to the Court of Appeals.
> 
> The patent holder accused DISH/SATS of contempt for failure to disable the "Infringing Products". The only reason for an evaluation of the design-around was DISH/SATS excuse that their "new, non-infringing technology" couldn't possbily be enjoined by the disable order.
> 
> Therefore, DISH/SATS was found in contempt for failure to disable. And the citation taken from the memorandum, where Judge Folsom stated, "Even if EchoStar had achieved a non-infringing design around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction," specifically related to the disable order. It had nothing to do with the finding of infringement.
> 
> So, if this is the opening salvo at the Court of Appeals, this will be the biggest mistake in history.
> 
> And I've only read the first paragraph.


That sounds better than what I would have started out with - 
"Attention all accused infringers - Abandon all hope ye who enter here" 
Then added the rest.

Is THAT how East Texas got their reputation for being the "Rocket Docket" ?


----------



## coldsteel

Greg Bimson said:


> This has to be the worst argument I've ever heard, as it completely misrepresents what occurred:This is the opening paragraph in DISH/SATS blue brief to the Court of Appeals.
> 
> The patent holder accused DISH/SATS of contempt for failure to disable the "Infringing Products". The only reason for an evaluation of the design-around was DISH/SATS excuse that their "new, non-infringing technology" couldn't possbily be enjoined by the disable order.
> 
> Therefore, DISH/SATS was found in contempt for failure to disable. And the citation taken from the memorandum, where Judge Folsom stated, "Even if EchoStar had achieved a non-infringing design around, this Court would still find that EchoStar is in contempt of this Court's permanent injunction," specifically related to the disable order. It had nothing to do with the finding of infringement.
> 
> So, if this is the opening salvo at the Court of Appeals, this will be the biggest mistake in history.
> 
> And I've only read the first paragraph.


Do you have a link?


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## jacmyoung

Curtis52 said:


> So then the infringer was free to revert to the infringing design without ever being accused of contempt? That seems odd.


I think what he meant was in that case as soon as the design around was found not to infringe, it was over, no contempt (which is consistant with the four cases we discussed), and more so, the injunction was lifted, likely because in that case, as in a lot of cases especially the old ones, there was no possibility and/or any reason to revert back.

His next point was, this PTO decision is siginificant, because if it stands, the Court will have to lift the injunction and E* will be able to revert back if they wish to do so.


----------



## Greg Bimson

jacmyoung said:


> I think what he meant was in that case as soon as the design around was found not to infringe, it was over, no contempt (which is consistant with the four cases we discussed), and more so, the injunction was lifted,


These are two separate issues. You'd be correct that if the design around was found not to infringe, the "litigation" of those products ends. However, the injunction remains in place, to deter the infringer from infringing the patent.

Injunctions are rarely lifted in patent infringement cases. Any attempts to avoid the infringement are usually met with actions to find contempt. If the contempt action fails, that means the products subject to the contempt action would not apply to the injunction any longer. But the injunction does remain.


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## jacmyoung

Greg Bimson said:


> These are two separate issues. You'd be correct that if the design around was found not to infringe, the "litigation" of those products ends. However, the injunction remains in place, to deter the infringer from infringing the patent.
> 
> Injunctions are rarely lifted in patent infringement cases. Any attempts to avoid the infringement are usually met with actions to find contempt. If the contempt action fails, that means the products subject to the contempt action would not apply to the injunction any longer. But the injunction does remain.


His example showed it can happen directly at the district court level, no one said it was the norm though.

For now, the injunction in this case is stayed. If TiVo prevails, the appeals court can reinstate the injunction like last time, if E* prevails, the appeals court can vacate the injunction, it is one way or the other.

If the appeals court vacates the order, they may remand for the lower court to modify the injunction, or order the lower court to proceed with the E* new suit currently pending, then decide whether a new injunction will be necessary. Or they can leave it entirely to the lower court to decide whether to consider a new injunction or not. There can be other options.


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## Herdfan

Let's assume for a minute that TiVo loses the PTO issue, don't forget there is still a hardware claim out there that TiVo won at the trial court level.


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## scooper

Herdfan said:


> Let's assume for a minute that TiVo loses the PTO issue, don't forget there is still a hardware claim out there that TiVo won at the trial court level.


Let's not forget all of those claims are now ALSO kaput...

If Tivo doesn't win the PTO - they do NOT have a '389 patent anymore....


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## Curtis52

scooper said:


> Let's not forget all of those claims are now ALSO kaput...
> 
> If Tivo doesn't win the PTO - they do NOT have a '389 patent anymore....


No one has said any other claims are invalid. Not the court. Not the USPTO. Only claims 31 and 61 are in jeopardy.


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## jacmyoung

Curtis52 said:


> No one has said any other claims are invalid. Not the court. Not the USPTO. Only claims 31 and 61 are in jeopardy.


E* only infringed the software claims 31 and 61, that was why E* only sought to have the PTO invalidate the software claims. No need to waste more resources to invalidate claims they did not infringe. TiVo can keep their patent with all the hardware claims, as long as E* does not infringe, that is all that matters.


----------



## jacmyoung

Herdfan said:


> Let's assume for a minute that TiVo loses the PTO issue, don't forget there is still a hardware claim out there that TiVo won at the trial court level.


The appeals court overturned the hardware verdicts, even though they remanded the hardware claim issue, TiVo will not revisit this issue because the appeals court corrected Judge Folsom's two hardware claim constructions, and based on the corrected claim constructions, E* did not infringe, end of the story.


----------



## jacmyoung

As one reads E*'s blue brief, two things should be very clear, and this are also somethings I have been arguing in the past.

The most important software claim element now is the term "audio and video data" in both steps 1 and 2. This term had never been evaluated by the court during the trial, nor narrowed down to define what it meant, because it was undisputed E*'s old software did detect the start codes and then built start code index, E* never bothered with it.

Now E* removed the detecting start codes and building start code index part, and the PTO agreed with E* that "parse audio and video data" means detecting start codes and building start code index, a narrowed claim construction is already in front of the court, the appeals court does not even have to do anything, the PTO has done it for them.

The best part is, in this contempt proceeding, there is not even the need to prove that the above claim element should be narrowed down in such way, only that such construction is a possible candidate, has some merit, which leads to the doubt whether the new software still infringe or not, that is enough.

The other issue is how to interpret the judge's "disabling order". As E* argued, the appeals court will review the judge's order for appropriateness *de novo*. Which means the they must review the order in a completely renewed effort.

The appeals court had never interpreted the "disabling order" before, or stated what was their interpretation of such provision. E* is asking the appeals court to now offer their interpretation, and by law, they must do so "de novo", without relying on anything said before, whether by E*, by TiVo, or by the district court.

The appeals court must offer their interpretation, considering the arguments only as presented by the parties in the appeal. Since Judge Folsom is not a party in the appeal, his own interpretation of his own order will not be considered, as strange as it may sound. The question is, should the appeals court agree with E* that the disabling order is limited to only the products that are "Infringing Products"? Or should they agree with TiVo that the term "Infringing Products" means the adjudicated products, whether they infringe, or not?

But that is not even the real issue either, even if TiVo may argue that the term "Infringing Products" meant the adjudicated products, infringing or not, there are two major problems, one, such interpretation is totally against what TiVo told the court when they proposed the injunction, because they said it was to prohibit further infringement, "nothing more, nothing less." Additionally, even if we do not consider TiVo's own contradiction, if we must force the term "Infringing Products" to mean the adjudicated products, whether they infringe or not, then the order is not clear, because the order did not say "infringing or not." If the order was to include the adjudicated products, whether infringing or not, it had to clearly say so, or else if E* interpreted it differently because the order wasn't clearly leading to only one interpretation, not the other, then the order is unenforceable.


----------



## Greg Bimson

jacmyoung said:


> The appeals court overturned the hardware verdicts, even though they remanded the hardware claim issue, TiVo will not revisit this issue because the appeals court corrected Judge Folsom's two hardware claim constructions, and based on the corrected claim constructions, E* did not infringe, end of the story.


Not quite the end of the story as written...

The Court of Appeals overturned the finding of literal infringement against the Hardware Claims, but remanded any action on those claims back to Judge Folsom. The Court of Appeals specifically mentioned that Judge Folsom could rule infringement based upon the doctrine of equivalents.

However, DISH/SATS did make modifications. TiVo could press on infringement of the Hardware Claims, but the modification effectively removed the infringement. TiVo doesn't (and won't) care about those because the modifications made stopped infringement against those claims. Why press on something they know they'll lose?


----------



## jacmyoung

Greg Bimson said:


> Not quite the end of the story as written...
> 
> The Court of Appeals overturned the finding of literal infringement against the Hardware Claims, but remanded any action on those claims back to Judge Folsom. The Court of Appeals specifically mentioned that Judge Folsom could rule infringement based upon the doctrine of equivalents.
> 
> However, DISH/SATS did make modifications. TiVo could press on infringement of the Hardware Claims, but the modification effectively removed the infringement. TiVo doesn't (and won't) care about those because the modifications made stopped infringement against those claims. Why press on something they know they'll lose?


TiVo never admitted nor will TiVo ever admit the new design no longer infringe the hardware claims, just the same way they viewed the new design with regard to the software claims.

If TiVo loses this contempt fight, parties may continue with the new suit currently stayed by the judge. In that new suit, the new design will be reveiwed against all TiVo's claims in the patent, hardware or software claims, despite the fact E*'s old design did not even infringe on the hardware claims.

TiVo gave up on the hardware claim issue because the appeals court said even if the jury had a chance to find infringement on the hardware claims by equivalents, the appeals court would still have to overturn the finding because the judge incorrectly constructed two hardware claim limitations, and TiVo knew the only way to resolve the hardware claims issue would be to ask the judge to *reconstruct the hardware claims in front of a new jury*, it would be effectively what E* wanted.

That was why TiVo declined to reconsider the hardware claims.

Just to be clear, I am again quoting the appeals court from the last decision:



> Second, we have construed two of the claim limitations more restrictively than the trial court's instructions permitted. (It meant the judge's constructions were too broad therefore wrong.) For that reason, even if the jury had reached a verdict *with respect to the doctrine of equivalents* we could not sustain that verdict merely upon finding that substantial evidence supported it. (It meant even if there was finding of infringement by the equivalents, the jury's verdict would still be overturned.)


To put it this way, jury's verdicts simply cannot be upheld if such verdicts are based on incorrect claim constructions by the judge, regardless the type of infringement, literally or by equivalents.


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## Curtis52

I guess this answers questions about the ViP models.

Dish 10Q:

"If we are unsuccessful in overturning the District Court's ruling on Tivo's motion for contempt, we are not successful in developing and deploying potential new alternative technology and we are unable to reach a license agreement with Tivo on reasonable terms, we would be required to *eliminate DVR functionality in all but approximately 192,000 digital set-top boxes in the field and cease distribution of digital set-top boxes with DVR functionality.* In that event we would be at a significant disadvantage to our competitors who could continue offering DVR functionality, which would likely result in a significant decrease in new subscriber additions as well as a substantial loss of current subscribers. Furthermore, the inability to offer DVR functionality could cause certain of our distribution channels to terminate or significantly decrease their marketing of DISH Network services. The adverse effect on our financial position and results of operations if the District Court's contempt order is upheld is likely to be significant. Additionally, the supplemental damage award of $103 million does not include damages for the period after April 2008 or sanctions for contempt. In the event that we are unsuccessful in our appeal, we could also have to pay substantial additional damages and contempt sanctions. Depending on the amount of any additional damage or sanction award or any monetary settlement, we may be required to raise additional capital at a time and in circumstances in which we would normally not raise capital. Therefore, any capital we raise may be on terms that are unfavorable to us, which might adversely affect our financial position and results of operations and might also impair our ability to raise capital on acceptable terms in the future to fund our own operations and initiatives. We believe the cost of such capital and its terms and conditions may be substantially less attractive than our previous financings.

If we are successful in overturning the District Court's ruling on Tivo's motion for contempt, but unsuccessful in defending against any subsequent claim in a new action that our original alternative technology or any potential new alternative technology infringes Tivo's patent, we could be prohibited from distributing DVRs or could be required to modify or eliminate our then-current DVR functionality in some or all set-top boxes in the field. In that event we would be at a significant disadvantage to our competitors who could continue offering DVR functionality and the adverse effect on our business could be material. We could also have to pay substantial additional damages.

Because both we and EchoStar are defendants in the Tivo lawsuit, we and EchoStar are jointly and severally liable to Tivo for any final damages and sanctions that may be awarded by the Court. We have determined that we are obligated under the agreements entered into in connection with the Spin-off to indemnify EchoStar for substantially all liability arising from this lawsuit."


----------



## jacmyoung

The above is obviously a worst case "forward looking statement". Interestingly sometimes the worse it is, the higher the stock price goes

It does appear after reading some more, the appeals court is planning to schedule a hearing in November, how soon can a final disposition arrive is unknown.


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## jacmyoung

TiVo just filed a response letter to Judge Folsom on the PTO rejection of the software claims, while TiVo correctly argued on the fact the PTO action is not final and has no bearing on the current litigation, TiVo avoided the issue E* raised, that is, the PTO's interpretation of the claim limitation "parses audio and video data" to mean detecting start codes and building index table. TiVo ignored the "parses audio and video data" interpretation by the PTO, for a very good reason.

Because the PTO's interpretation at a minimum cast serious doubt on TiVo's assertion that detecting start codes and building index table are "irrelevant" to the software claims--the central assertion that led the judge to agree the E* new design still infringed.

Everything else is mere conjecture. E*'s point was, the issue of doubt should weigh in on the judge's decision on the sanctions, the only real point here. If TiVo's assertion is in doubt, then E*'s assertion to the contrary, and the design around which was based on such E*'s assertion, is a showing of good faith effort.

Sanctions are inappropriate if the design around effort is in good faith.

But that is not even the real value of it at all. TiVo cannot reassert in this letter that the start codes and index table are "irrelevant" to the software claims, because doing so will undermine their effort to validate the software claims in front of the PTO.

So now the PTO's initial rejection, the E*'s response, and the TiVo's response, are part of the record, and such record will be part of the judge's sanctions decision that will be included in the appeal. In these records TiVo clearly is prevented from again asserting that the start codes and indexing are irrelevant, a central assertion of TiVo's that won the contempt finding.

The true value of E*'s reexamination is now shown.


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## jacmyoung

> Dish is appealing Folsom's decision, and arguments could be heard in November. It's allowed to continue providing its DVR service to customers *until the appeal is decided by a court that specializes in patent law*.


From: http://www.bloomberg.com/apps/news?pid=20601204&sid=aSSS17Z9s.04


----------



## jacmyoung

Let me summarize what I believe are the things E* lawyers failed to do in the past that might have contributed to the infringement finding on the software claims.

First and the foremost, E* failed to combining the two prior art last time when they asked the PTO to reexamine the TiVo’s software claims. As a result the PTO did not reject the software claims. It is good now they are doing it right but they could have done so last time, possibly avoided infringement altogether.

Secondly, as I pointed out in a previous post, only most recently did E* begin to argue that since there is no parsing audio/video data, no temporary storing them, there is no extraction, no conversion, no buffering, no filling and no automatic flow control of such data (i.e. the start codes). Therefore E*’s new design does not infringe at least 4 or 5 of the software claims steps, not just the first step. They should have used such argument in the first place during the contempt proceedings.

But there is a third one that E* continues to allow TiVo to confuse the judge with. The “automatic flow control” issue. There are in fact two types of automatic flow control functions described in the software claims:

Step 5: Wherein said source object is automatically flow controlled by said transform object;

Step 8: Wherein said sink object is automatically flow controlled by said transform object;

Step 5 describes how the flow of the start codes and indexed start codes (processed by the “source object”) are controlled by the transform object. Step 8 describes how the programming data (processed by the “sink object”) are flow controlled when they are recorded onto the hard drives.

Step 5 is one of the “core” of TiVo’s invention, as TiVo put it during the trial, and E*’s new design had removed it.

Step 8 is more or less a generic hard drive recording function, which the new E* software still uses. In fact all hard drive storage devices, whether a DVR or a PC, use such data control function when the data are stored onto the hard drives.

E* failed to clearly separate these two different types of the data flow controls, allowed TiVo to mix them together, convincing the judge that even though E* removed one data flow control, they still had another data flow control, even though the two were different.


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## jacmyoung

In the news is DISH issuing $1B debt security. Where are the TiVo supporters? Look DISH is preparing to pay TiVo $1B to, guess what, "settle"! If anything at all, it is, forget about the idea of any settlement.

Even TiVo had no illusion about the $1B figure, why they also proposed the alternate $600M.


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## scooper

SO basically - any / all claims describing step 8 also need to be nullified - since that is long ago prior art... I would bet that IBM probably held that one. In fact - it's been so long that that patent is probably expired.


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## jacmyoung

scooper said:


> SO basically - any / all claims describing step 8 also need to be nullified - since that is long ago prior art... I would bet that IBM probably held that one. In fact - it's been so long that that patent is probably expired.


It is not that if a claim contains one or more steps that are obvious, the claim must be rejected, rather that a valid claim must at least contain one step that is the invention, not made obvious by a prior art.

As a perfect example in this case, the software claims were reexamined by the PTO last time at the E*'s request, using pretty much the same two prior art called the "Thomason" and the "Krause".

Thomason appeared to disclose every step in the TiVo's software claims except the first step, specifically the "detecting start codes and building the index" (parses audio and video data) part. For that reason, the PTO did not even reject the software claims in its initial action at that time.

Likewise last time Krause appeared to disclose the "detecting start codes and building the index" art but did not disclose any other steps in the TiVo software claims.

But now E* asked to have the Krause step combined with the Thomason's steps, and the PTO agreed with E* to reject the TiVo software claims.

The significance of the above is, the PTO always had the same interpretations of the TiVo's software claims, because they granted the claims in the first place based on such interpretations, therefore the conclusion is, they have always interpreted the term "parses audio and video data" as detecting start codes and building an index table. Only then you can see why the PTO did not reject the software claims last time, but rejected them this time.


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## bobcamp1

Does this case sound familiar?

http://www.theregister.co.uk/2009/08/13/microsoft_word_patent_i4i/


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## scooper

I think if I was being accused of patent infringement and I saw the venue was Eastern Texas - I'd tell the patent holder " Go ahead - I'm not sending representation, and I'm not go to pay any rulings/sanctions / etc. from that venue any heed either. - i.e. - I don't recognize that court."


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## dreadlk

I know this case is causing the Lawyers on the Forum to have an Orgasm but for the rest of us can one of you please break down what is the most likely outcome into plain English


----------



## deaincaelo

the problem is this will never end until one company is down and out.

the claim 31 is obviously invalid the way it's been interpreted by folsum. I'm glad to have a little glimmer of validation on that from the PTO. I still dont think they have the technical accumen of a 10 year old, nor will I as long as method of excercising a cat is around, but it's something.

Patent tolls work by being less expensive then the east district court of texas. It doesnt matter how bad your patent is if your in a juristiction that will almost always side with you. Especially when a sucessful defense still costs millions. this is quick, but This is not the case here.

Tivo needs this to suceed 100%. They have no competitively viable product. They need everyone else in the DVR buisness out of the pool.

Echostar needs a break, no matter how small. They only exist in the STB buisness. Tivo breaks them, they basically fail as a company.

They can't settle because of this.

More then this they can just keep patenting things to keep going. The east district obviously doesnt care if it's pre-existing, if someone else invented it, or if its' invalid. 

one of the two will have to fail. This is a problem for echostar in a place that's going to lose them 80% of the battles.


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## Ron Barry

Ok... I have removed a few posts that contained personal attacks. If anyone needs a reminder go back and search for Tom's posts where it provides some guidance to avoid personal attacks. To summarize.. 

If your post has words like you are this and you are that.. Well that would be a strong indication the post is walking down the personal attack road. Given the nature of this posts regarding this topic in the past, we are given little wiggle room towards the forum rules. 

Bottom line, stick to your opinions, let others say theirs, feel free to counterpart but avoid attacking the person you are engaging with as posts that do will be removed or edited to removing the attacking verbiage.


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## Tower Guy

dreadlk said:


> Can one of you please break down what is the most likely outcome into plain English


Echostar will continue to fight the court's decision until they have no more legal options.

TiVo will continue to press for patent rights until they have no more legal options.

If Echostar wins, TiVo has few options.

If TiVo wins, expect Echostar to have a plan B. I'd like to see a few opinions on what plan B would be. (Would Echostar buy/merge with TiVo?)

Finally, Echostar could actually win the software claim nullification and still be held in contempt of a perfectly valid court order.


----------



## Curtis0620

tower guy said:


> echostar will continue to fight the court's decision until they have no more legal options.
> 
> Tivo will continue to press for patent rights until they have no more legal options.
> 
> If echostar wins, tivo has few options.
> 
> If tivo wins, expect echostar to have a plan b. I'd like to see a few opinions on what plan b would be. (would echostar buy/merge with tivo?)
> 
> finally, echostar could actually win the software claim nullification and still be held in contempt of a perfectly valid court order.


plan b: Licensing agreement


----------



## jacmyoung

Tower Guy said:


> ...Finally, Echostar could actually win the software claim nullification and still be held in contempt of a perfectly valid court order.


If the order were "perfectly valid" it would not have been stayed, especially when the stay decision was not expressly based on any harm factors.

As far as Plan B I want to point out again that TiVo in the past week has been quietly but surely busy filing their attorney papers related to the E* new suit.


----------



## harsh

I can see a scenario where DISH/Echostar wins the suit, tells TiVo to go fish, but still has to suffer the contempt penalties.


----------



## Curtis52

harsh said:


> I can see a scenario where DISH/Echostar wins the suit, tells TiVo to go fish, but still has to suffer the contempt penalties.


There is no suit. There is only a charge of contempt and a finding of contempt. If Dish wins the appeal there will be no penalties.


----------



## jacmyoung

Curtis52 said:


> There is no suit. There is only a charge of contempt and a finding of contempt. If Dish wins the appeal there will be no penalties.


I think he meant in case of a partial win or partial loss.

E* could win on the colorable difference issue, but still lose on the violation issue. But I think it will unlikely be a partial win or partial loss, because as I said the appeals court stayed the order without expressly relying on harm factors. Therefore on the face of the stay order, the injunction itself was in question, not necessarily just the judge's colorable difference and the infringement analyses.

While we have mainly focused on the "disabling provision" of the order, arguing for or against it, let's not forget there are more to it this time, because we are now talking about the new injunction, which has an added "inform provision". Meaning now there are even more reasons to question the order and to vacate the order.

The down side for TiVo is, a "more stringent (broader) order" can also be more prone to attack and they may end up with no injunction.

E* made a valid argument against the inform provision, similar to what I had argued, that is if an infringer must get pre-approval from the court on design around, valuable time will be lost when trying to avoid infringement, simply because the court approval process will be slow and costly.

E* argues that such burden harms the business that tries to avoid infringement, my argument was such delay would actually complicate future damage assessment if any, since one can argue the court caused further infringement by delaying an effort to avoid infringement.


----------



## dreadlk

Thanks, that was what I was looking for.

BTW I thought Tivo had already Won this and Dish was just stalling.



Tower Guy said:


> Echostar will continue to fight the court's decision until they have no more legal options.
> 
> TiVo will continue to press for patent rights until they have no more legal options.
> 
> If Echostar wins, TiVo has few options.
> 
> If TiVo wins, expect Echostar to have a plan B. I'd like to see a few opinions on what plan B would be. (Would Echostar buy/merge with TiVo?)
> 
> Finally, Echostar could actually win the software claim nullification and still be held in contempt of a perfectly valid court order.


----------



## CuriousMark

dreadlk said:


> BTW I thought Tivo had already Won this and Dish was just stalling.


TiVo has pretty much "won" at every single stage of this long saga. Still Echostar has legal due process rights that allows them to keep fighting in court instead of settling and they are using those right quite masterfully. To the extent that Dish's use of these techniques allows them to stall and even perhaps reverse some of the losses they have suffered up to this point, they are winning monetarily. I don't see Dish changing behavior until the cost of settling is lower than the cost of continued infringement and continued contempt of court. Since compliance at this point could cost Dish dearly, I don't see them quitting the fight until every last option is exhausted.


----------



## jacmyoung

CuriousMark said:


> TiVo has pretty much "won" at every single stage of this long saga. Still Echostar has legal due process rights that allows them to keep fighting in court instead of settling and they are using those right quite masterfully. To the extent that Dish's use of these techniques allows them to stall and even perhaps reverse some of the losses they have suffered up to this point, they are winning monetarily. I don't see Dish changing behavior until the cost of settling is lower than the cost of continued infringement and continued contempt of court. Since compliance at this point could cost Dish dearly, I don't see them quitting the fight until every last option is exhausted.


While it is always the TiVo supporters' contention that Charlie just wanted to "stall" and wear TiVo out, and to a large extent I do not even refute such sentiment, however I don't think one should simply ignore the fact that E* actually believe in themselves that their design around is a success.

It is worth repeating that while during the contempt proceedings E* argued "parses audio and video data from the broadcast data" to mean "detecting start codes and building index" from the broadcast data, TiVo's most important winning point was that detecting start codes and indexing were irrelevant to the software claims.

Yet in TiVo's most recent response to the PTO action, they did not again reiterate their such contention, when the PTO agreed with E* on the interpretation of the above claim term to mean detecting start codes and indexing the codes. It is undisputed that the E* new design does not detect start codes and build index of the codes, therefore TiVo's abandoning of their previous key contention is most significant.

I do not hold my breath that Judge Folsom will pay attention to TiVo's abandoning of the key contention, but I think the appeals court will notice that.


----------



## Greg Bimson

jacmyoung said:


> It is worth repeating that while during the contempt proceedings E* argued "parses audio and video data from the broadcast data" to mean "detecting start codes and building index" from the broadcast data, TiVo's most important winning point was that detecting start codes and indexing were irrelevant to the software claims.


Actually, TiVo's winning point was that all five experts that testified at trial said that the parsing of the transport stream fulfilled the limitation of the "parse" step of the claim, as defined by the court. DISH/SATS redefinition of that limitation was not able to win for that reason alone.


jacmyoung said:


> Yet in TiVo's most recent response to the PTO action, they did not again reiterate their such contention, when the PTO agreed with E* on the interpretation of the above claim term to mean detecting start codes and indexing the codes. It is undisputed that the E* new design does not detect start codes and build index of the codes, therefore TiVo's abandoning of their previous key contention is most significant.


It may be significant, but it is irrelevant to this action. Although the PTO has struck down the Software Claims as defined, there is plenty that needs to be done before those claims are invalidated. In other words, until the PTO can come out with a final action, the definition is still the same as it was when Judge Folsom tried those eight models two-plus years ago. A change in status from the PTO does not change the way the current actions are handled until the entire review process at the PTO is completed.

I have not seen TiVo's most recent response to the PTO, so I could be chasing windmills.


----------



## Curtis52

Greg Bimson said:


> I have not seen TiVo's most recent response to the PTO, so I could be chasing windmills.


TiVo has not yet responded to the USPTO.


----------



## jacmyoung

Greg Bimson said:


> ...In other words, until the PTO can come out with a final action, the definition is still the same as it was when Judge Folsom tried those eight models two-plus years ago...


And yet Judge Folsom never defined the term "parses audio and video data". The only term he defined was the term "parse" as to mean "analyze".

For the terms that are not construed by the lower court during the trial, if later such terms become relevant to the issues, the appeals court will have to construe such terms themselves and de novo.

In doing so of course the appeals court will consider parties' own interpretations and justifications, taking into consideration of the relevant patent claims, the patent prosecution history and in the context of the entire patent.

This PTO's initial action, in which the term "parses audio and video data" is interpreted to mean "detecting start codes and indexing the codes", is part of the "prosecution history of the patent". And the most imortant point is, in this most recent event, TiVo did not argue against such interpretation. Therefore in the most recent presecution history, the term was interpreted the way E* had argued, accepted by the PTO, and *without dispute from TiVo.*


----------



## jacmyoung

Curtis52 said:


> TiVo has not yet responded to the USPTO.


I was referring to TiVo's letter to Judge Folsom in response to the E*'s letter to the judge regarding the PTO initial action.

Granted though in TiVo's briefing and arguments to the appeals court they will almost certainly again argue the start codes and start code indexing are irrelevant to the software claims, but my question is, why didn't they assert such in that letter to Judge Folsom regarding the PTO action, when E* was making a huge deal out of this interpretation?

Because IMHO, had TiVo asserted the notion that the start codes and indexing of the codes were irrelevant, it would have made it so much easier to invalidate the software claims in the future by the PTO. Because the key part of the invention would have been disavowed by TiVo.

TiVo simply cannot do that, not in front of the PTO. TiVo can only do so in front of the judges, because the PTO will not consider court constructions or interpretations, the PTO goes by its own review.

The opposite is not true, the court must interpret claim terms based in part on the PTO's prosecution history. And that is when E* can make a big deal out of the PTO's documents, including TiVo's relevant responses. They had already done so in front of Judge Folsom, and I have little doubt they will do so again in front of the appeals court.


----------



## jacmyoung

Here is something even more interesting, the appeals court today just issued an order granting Microsoft's motion to expedite an appeal they filed:

http://www.cafc.uscourts.gov/motions/Orders/2009/2009-1504.8-19-09.2.PDF

Earlier this month the same TX court (by Judge Davis) entered a final judgment and injunction against MS for infringing i4i's XML patent.

The appeals court ordered the MS appeal to be expedited at MS's wish, so much so it was put on the 9/23/09 schedule, without any delays allowed for submitting briefings by the parties.

The reason I cited the above case is, during the sanction hearing, Judge Folsom asked TiVo's attorney how much weight he thought the stay decision was in E*'s favor, then asked the E*'s attorney if she thought the expedited schedule by the appeals court might have "offset" the weight of the stay decision.

From the above example, it appears at a minimum, an expedited schedule has no particular negative implication against the appellants, i.e. the appealing party.


----------



## Zero327

You all have 37 pages of WAY too much time on your hands.

There's probably a few people that finished their JD by page 15 who can speak intelligently on the subject.


----------



## P Smith

I'm still reading the thread as newspapers each day .


----------



## scooper

Zero327 said:


> You all have 37 pages of WAY too much time on your hands.
> 
> There's probably a few people that finished their JD by page 15 who can speak intelligently on the subject.


You're forgetting about the 4-5 OTHER THREADS on this same topic before this one - that were all about the same size or larger


----------



## James Long

scooper said:


> You're forgetting about the 4-5 OTHER THREADS on this same topic before this one - that were all about the same size or larger


Boys just want to have fun.

Wake me when it makes a difference to the average customer.


----------



## jacmyoung

James Long said:


> ...Wake me when it makes a difference to the average customer.


I don't know if that is a good idea, an average customer probably will never know nor care.


----------



## GrumpyBear

James Long said:


> Boys just want to have fun.
> 
> Wake me when it makes a difference to the average customer.


This has to be the BEST post in any of the Threads on this Subject.


----------



## jacmyoung

GrumpyBear said:


> This has to be the BEST post in any of the Threads on this Subject.


I'd say the first half of the post is absolutely correct, boys want to have some fun, judging by an average of 650 hits per day, I suppose this thread generates more fun for the boys than most of the other threads


----------



## Greg Bimson

jacmyoung said:


> And yet Judge Folsom never defined the term "parses audio and video data". The only term he defined was the term "parse" as to mean "analyze".


That is incorrect. Judge Folsom definitely provided the definition of "parses audio and video data" as a result of the Markman hearings:


> Therefore, the court defines "parses video and audio data from said broadcast data" as "analyzes video and audio data from the broadcast data."


----------



## jacmyoung

The term "audio and video data" (from the broadcast data) was never defined by the district court. E* asserts that it means "(audio) start codes and (video) start codes". It is now evident that the PTO agrees with E*'s interpretation.

Back during the contempt hearing, TiVo asserted that start codes had nothing to do with the software claims, but in response to the E's letter to the PTO's initial claim rejection, TiVo no longer maintained such assertion.

Back then TiVo asserted that the PID filter satisfied the "parse" limitation, yet they could not refute E*'s contention that the PID filter did not analyze any "audio and video data" in the broadcast streams.

On appeal, the appeals court must interpret the claim constructions de novo, that is the law. The issue of how to interpret the term "audio and video data" was the key issue and controversy in the contempt proceedings, and is now the key issue in the current appeal.

The above are facts, not opinion nor speculation, everyone is free to draw his own conclusion.


----------



## jacmyoung

As I predicted, E* made sure the appeals court was notified of the PTO initial action to reject the TiVo software claims. I suspect their motion was very much a repeat of their letter to Judge Folsom.

The fact the PTO initially agreed with E*'s interpretation of the term "parses audio and video data" establishes "fair ground for the doubt" whether the E* new design still infringes or not.


----------



## Greg Bimson

Any actions at the PTO have no bearing on the current dispute. The courts will not get invovled with the tentative decisions from the PTO until all actions and disputes at the PTO are final.

All references to the fact that the PTO has established that "parses audio and video data from the broadcast data" has something to do with start codes is the counter-argument that DISH/SATS is using to overturn another legal issue: all experts from each party that testified at trial stated PID filtering met the "parse" step limitation. DISH/SATS is trying to redefine that which is already the law of the case.


----------



## jacmyoung

Greg Bimson said:


> Any actions at the PTO have no bearing on the current dispute. The courts will not get invovled with the tentative decisions from the PTO until all actions and disputes at the PTO are final.
> 
> All references to the fact that the PTO has established that "parses audio and video data from the broadcast data" has something to do with start codes is the counter-argument that DISH/SATS is using to overturn another legal issue: all experts from each party that testified at trial stated PID filtering met the "parse" step limitation. DISH/SATS is trying to redefine that which is already the law of the case.


I think it is safe to say that we should wait to see how the appeals court may rule on E*'s motion to consider the facts in the PTO's initial action. I did not notice TiVo opposing E*'s motion, but I will check it soon. If not, then reading TiVo's red brief in a week or so will probably tell us more.

I am trying to stick to facts as much as possible, i.e. what is happening these days, while minimize speculations or opinions, such as how TiVo interpreted the term "parses audio and video data", (or avoided interperting it, to be more precise,) "is already the law of the case."

Judge Folsom never interpreted the "audio and video data" term either. Unless you believe this term has no weight in the software claims at all, despite the fact (yes another fact) the term appears in each software claim 3.5 times, once associated to "parse" but on the other 2.5 occasions has nothing to do with the word "parse", rather associated to the terms such as "stored", "extracted", "converted" ...

Another fact, each and every one of the above terms must be met to prove infringement.


----------



## jacmyoung

> --------------------------------------------------------------------------------
> 
> --------------------------------------------------------------------------------
> 
> Date History
> 8/25/2009 Due RED BRIEF
> 7/17/2009 Appellant Principal Brief Filing Date
> / / Appellee or Cross Appellant Principal Brief Filing Date
> / / Appellant Reply Brief Filing Date
> / / Cross Appellant Reply Brief Filing Date
> / / Appendix Filing Date
> / / Disposition: ; by
> / / Mandated on
> >> Please Note: The briefs above are only the most current. <<
> 
> --------------------------------------------------------------------------------
> 
> --------------------------------------------------------------------------------
> 
> MOTIONS AND OTHER ENTRIES
> >> Please Note: Motions are listed first. Entries are listed last.<<
> 8/18/2009 MOTION: Entry 54 :by Appellant - Motion for Judicial Notice of Reexamination proceedings. SERVICE : by Mail on 8/18/2009


Did not see evidence of a TiVo filing opposing the E*'s latest (8/18/09) motion. Somehow TiVo's red brief filing date has been moved from 8/31/09 up to 8/25/09 again.


----------



## jacmyoung

Guess what, I did a simple Yahoo search and located this 8/18/09 E*'s motion:

http://files.shareholder.com/downlo...9d39-afc9aa15f27e/MotionforJudicialNotice.pdf

It appears, according to E*, TiVo will file a response opposing the motion.


----------



## jacmyoung

Below is a quote in the E*'s motion that supports what I had said about why this time around, in front of Judge Folsom, TiVo could not reiterate their contention that "the start codes and indexing&#8230;are irrelevant to the software claims." Because "or else" the software claims may be invalidated by prior art by default, of course the E* lawyers are saying so in their cryptic way:



> Thus, [the PTO] in concluding that TiVo's patent claims must require certain elements relating to the parsing of data [detecting start codes and indexing&#8230;] and the blocking of fill (*or else run afoul of prior art*), the [PTO] Office action provides strong evidence that any device that did away with those features must be significantly different than any device that incorporated those features.


Let's see how TiVo will respond this time. If TiVo again fails to reiterate that "the start codes and indexing&#8230;are irrelevant to the software claims," it will be the biggest hole in TiVo's theories.


----------



## dgordo

jacmyoung said:


> I think it is safe to say that we should wait to see how the appeals court may rule on E*'s motion to consider the facts in the PTO's initial action. I did not notice TiVo opposing E*'s motion, but I will check it soon. If not, then reading TiVo's red brief in a week or so will probably tell us more.
> 
> I am trying to stick to facts as much as possible, i.e. what is happening these days, while minimize speculations or opinions, such as how TiVo interpreted the term "parses audio and video data", (or avoided interperting it, to be more precise,) "is already the law of the case."
> 
> Judge Folsom never interpreted the "audio and video data" term either. Unless you believe this term has no weight in the software claims at all, despite the fact (yes another fact) the term appears in each software claim 3.5 times, once associated to "parse" but on the other 2.5 occasions has nothing to do with the word "parse", rather associated to the terms such as "stored", "extracted", "converted" ...
> 
> Another fact, each and every one of the above terms must be met to prove infringement.


Do you know of any decisions where an appellate court has used a preliminary administrative decision as a basis for their decision?


----------



## jacmyoung

dgordo said:


> Do you know of any decisions where an appellate court has used a preliminary administrative decision as a basis for their decision?


No, but I am not a lawyer so that does not mean much.

E* does not ask the appeals court to rely on the PTO initial action, rather to take judicial notice of it. If you read the above, I never even said the motion will be granted, in fact I was waiting to see TiVo's response. And TiVo will be forced to respond.

The point is, whether in the TiVo's response they would again assert that the start codes are irrelevant to the software claims, or whether they will be silent on that point, like what happened in their letter to Judge Folsom.

IMO, if TiVo clearly asserts that the start codes are irrelevant in response to the PTO action, it risks having the software claims invalidated by many other prior art, not just the two prior patents at issue, because the core of the invention disclosed by the software claims will have been disavowed. That was the point I made a week ago, now to some extent confirmed by the quote I posted from the E*'s motion.

It may not be so harmful to disavow a key element of the invention in front of the court, but if TiVo does so before the PTO, the consequences will be severe as far as the fate of the patent claims are concerned.


----------



## scooper

dgordo said:


> Do you know of any decisions where an appellate court has used a preliminary administrative decision as a basis for their decision?


I don't know - but it sure seems to me that this goes to the very core of WHY Tivo and Echostar are in front of this appeals court in the first place. I.E. if the PTO had done their job right in the first place - there would not have been the very first suit, because there would not have been a valid '389 patent.


----------



## dgordo

jacmyoung said:


> No, but I am not a lawyer so that does not mean much.
> 
> E* does not ask the appeals court to rely on the PTO initial action, rather to take judicial notice of it. If you read the above, I never even said the motion will be granted, in fact I was waiting to see TiVo's response. And TiVo will be forced to respond.
> 
> The point is, whether in the TiVo's response they would again assert that the start codes are irrelevant to the software claims, or whether they will be silent on that point, like what happened in their letter to Judge Folsom.
> 
> IMO, if TiVo clearly asserts that the start codes are irrelevant in response to the PTO action, it risks having the software claims invalidated by many other prior art, not just the two prior patents at issue, because the core of the invention disclosed by the software claims will have been disavowed.
> 
> It may not be so harmful to disavow a key element of the invention in front of the court, but if TiVo does so before the PTO, the consequences will be severe as far as the fate of the patent claims are concerned.


I don't know of any either but I haven't bothered to look. I was hoping with all the research you have done you might have found one.

And lets be clear, when E asks the CAFC to take judicial notice of the initial decision they are asking them to use it as persuasive authority.


----------



## dgordo

scooper said:


> I don't know - but it sure seems to me that this goes to the very core of WHY Tivo and Echostar are in front of this appeals court in the first place. I.E. if the PTO had done their job right in the first place - there would not have been the very first suit, because there would not have been a valid '389 patent.


Perhaps, although it doesn't seem so cut and dry.


----------



## jacmyoung

dgordo said:


> I don't know of any either but I haven't bothered to look. I was hoping with all the research you have done you might have found one.
> 
> And lets be clear, when E asks the CAFC to take judicial notice of the initial decision they are asking them to use it as persuasive authority.


I thought your question was sarcastic, therefore my response, I apologize.

The one cited by E* (Standard Havens) was a case which the appeals court took judicial notice, then relied in part on the PTO's initial rejection in granting a stay of the injunction. Although in the final decision they continued to take judicial notice but did not rely on the PTO action.

In the famous Ebay decision the Supreme Court relied in part on the PTO's initial rejection of the four patent claims at issue, when it reversed the appeals court's holding that an injunction should be automatic after a finding of infringement.

There were a few cases I read which the appeals court took judicial notices but declined to rely on those facts.


----------



## jacmyoung

scooper said:


> ...I.E. if the PTO had done their job right in the first place - there would not have been the very first suit, because there would not have been a valid '389 patent.


If you are referring to the software claims, then there would still be a valid patent, only minus the two software claims. Though there would not be a "valid" final judgment and the injunction against E* had the software claims never been granted in the first place.


----------



## deaincaelo

Greg Bimson said:


> all experts from each party that testified at trial stated PID filtering met the "parse" step limitation.


except the inventor, right? I remember him quoted that it's a different sort of "parse."

It seems that Echosar hasn't been on the same page as Folsum for a lot of things- plain reading of the patent, plain reading of the injunction, plain readin of what the word "is" means. I wonder where the miscommunication lies.

More than that, they seem to be unable to exercise their right to appeal the meaning of these things because now that they know what they mean they no longer have the opportunity to challenge it.

More than that, there's a double standard. Tivo is allowed to enforce their imaginary invention and imaginary property, but Echostar is not allowed to imagine their own imaginary invention to counter- even if it had been valid.

keep in mind, all of the "apparatus" that physically exists has been disabled. Additionally half the code was reworked. All that's left is the imaginary property of claim 32-the idea of something that records tv. The only reason that the "infringing" receivers could operate a work around is because the invention as it stands fails the test of physical existence. Otherwise, it could be disabled like the broadcom chip was and there would be no controversy. The recievers would simply not physically be capable of the functions of that invention, just as they're no longer physically capable of the functions of the broadcom chip.

I'm not certain when the line for abuse was crossed in the east district, but once there is an industry built around exploiting a jurisdiction it's fairly obvious that it has.


----------



## jacmyoung

deaincaelo said:


> ... I wonder where the miscommunication lies...


Not much of miscommunication, just deference of opinions.

The only "miscommunication" maybe that the injunction did not specifically state that the DVR functions must be disabled, whether the DVRs were infringing or not, so E* interpreted it as disabling the DVR functions only on the DVRs that continued to infringe, not on those that no longer infringed.

If that was a miscommunication, then it was the district court's job to ensure the order could not possibly have caused such miscommunication, otherwise the order was not clear, or not precise.

Keep in mind the injunction was proposed by TiVo, Judge Folsom simply adopted it as is. As E* argued, when TiVo proposed the injunction, they said clearly it was to prevent infringement, nothing more, nothing less. Therefore logic says if the judge adopted it as is, without any modification or any further comments, it should be assumed the injunction, as it stated, should be to prevent infringement, nothing more, nothing less.


----------



## Greg Bimson

Here goes the problem:


jacmyoung said:


> The only "miscommunication" maybe that the injunction did not specifically state that the DVR functions must be disabled,


The injunction said that recording to and playback from the hard drive must be disabled...


jacmyoung said:


> whether the DVRs were infringing or not,


...on the few million or so DVRs that were found infringing and with an end user as of 8 September 2006...


jacmyoung said:


> so E* interpreted it as disabling the DVR functions only on the DVRs that continued to infringe, not on those that no longer infringed.


...and who determines what those devices are "that no longer infringed"?

DISH/SATS isn't allowed to make the assumption that because they made a change they do not have to follow the order to disable. Their argument (including the one they have presented at the Court of Appeals) is based off of two separate thoughts: that "Infringing Products" means products which infringe (but that is not the definition of Infringing Products) and that the order to disable was followed, for the one minute the new software was placed onto the machine, and there is no way to make either argument.

It does amaze me that the argument as to why DISH/SATS did "follow" the injunction is based off of all kinds of documents that aren't on the injunction. And that is not allowed.


----------



## jacmyoung

Greg Bimson said:


> Here goes the problem:The injunction said that recording to and playback from the hard drive must be disabled...


from the "Infringing Products".



> ...on the few million or so ...


Infringing Products.



> ......and who determines what those devices are "that no longer infringed"?


The district court, now the appeals court.



> ...(but that is not the definition of Infringing Products) ...


That is your opinion only. Even Judge Folsom did not say that, he only said just because the software was non-infringing, it did not mean the DVRs were non-infringing, because the software and the hardware must be viewed together. The only problem is, if the software makes the DVR non-infringing, then the DVR is non-infringing, including the hardware part. So Judge Folsom's this particular explanation is without logic.

But even so, at least he did not say E* was wrong to interpret the term "Infringing Products" to mean products that infringe, not the products that do not infringe, only that in his view software *alone* could not move them from the Infringing Products category to the non-infringing products category. We'll see how that may hold up at the appeals court.

Keep in mind when his injunction ordered a software download to disable the DVR functions, it ordered just that, a software change *alone*, to move those products from infringing to non-infringing. Or to put it this way, if you are correct that once Infringing Products, always infringe, then you must take the position that the injunction would have *permitted continued infringement* by those DVRs, *after* the DVR functions were disabled through a software download, because they were allowed to continue to operate. Are you ready to say that the injunction actually would have permitted continued infringement?


----------



## Greg Bimson

jacmyoung said:


> That is your opinion only. Even Judge Folsom did not say that, he only said just because the software was non-infringing, it did not mean the DVRs were non-infringing,


That may be my opinion only, but Judge Folsom did not only say "just because the software was non-infringing, it did not mean the DVRs were non-infringing."

I do recall something about no matter the outcome of the evaluation regarding the infringement, DISH/SATS would still be found in contempt for not disabling the DVRs as set forth in the injunction.


jacmyoung said:


> Keep in mind when his injunction ordered a software download to disable the DVR functions, it ordered just that, a software change *alone*, to move those products from infringing to non-infringing.


But keep in mind that when the injunction became active, that there was no implementation of a "software download to disable the DVR functions".


----------



## Greg Bimson

jacmyoung said:


> Or to put it this way, if you are correct that once Infringing Products, always infringe, then you must take the position that the injunction would have *permitted continued infringement* by those DVRs, *after* the DVR functions were disabled through a software download, because they were allowed to continue to operate. Are you ready to say that the injunction actually would have permitted continued infringement?


I have never said that. I have always said that only the court can redefine "Infringing Products". It is not up to DISH/SATS to make that determination, as "Infringing Products" only has one meaning, and it was defined in the injunction.

I have always stated whether or not changes were made to those "Infringing Products" with end users, that the software can be changed a million times. The point is that when the injunction became active, one change was definitely to be implemented, and it wasn't.


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## tsmacro

DISH Network and EchoStar Statement Regarding Tivo and PTO Action

ENGLEWOOD, Colo., Aug 26, 2009 /PRNewswire-FirstCall via COMTEX News Network/ -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (Nasdaq: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (Nasdaq: SATS), issued the following statement regarding recent developments in EchoStar Communications Corporation vs. Tivo:

"We are pleased the Patent and Trademark Office (PTO) dismissed Tivo's petition to vacate EchoStar's re-examination of Tivo's patent. In the decision, the Director of the Central Re-examination Unit of the PTO specifically found that 'the references of record may be used to find that a substantial new question of patentability is present, [and] the decision of the [PTO] examiner has not been shown to be in error' in granting EchoStar's re-examination petition. The PTO's decision clears the way for the re-examination to continue, which we believe will result in a Final Office Action invalidating the software claims of Tivo's patent. These software claims are the very same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal."

About DISH Network L.L.C.

DISH Network L.L.C., the nation's HD leader, provides approximately 13.610 million satellite TV customers as of June 30, 2009 with the highest quality programming and technology at the best value, including the lowest all-digital price nationwide. Customers have access to hundreds of video and audio channels, the most HD channels, the most international channels, state-of-the-art interactive TV applications, and award-winning HD and DVR technology including 1080p Video on Demand and the DuoDVR ViP(R) 722 DVR, a CNET and PC Magazine "Editors' Choice." Visit www.dishnetwork.com.

About EchoStar Corporation

EchoStar Corporation (NASDAQ: SATS), the parent of EchoStar Technologies L.L.C., provides equipment sales, digital broadcast operations, and satellite services worldwide. EchoStar has 25 years of experience designing, developing and distributing advanced award-winning set-top boxes and related products for pay television providers. The company includes a network of 10 full-service digital broadcast centers and leased fiber optic capacity with points of presence in approximately 160 U.S. cities. EchoStar also delivers satellite services from eight owned and leased in-orbit satellites and related FCC licenses. Visit www.echostar.com for more information.

SOURCE DISH Network Corporation

http://www.dishnetwork.com


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## scooper

(Comment to Tsmacro's post )

So Tivo petitioned the PTO to dismiss this re-examination, and the PTO said the re-exam is proper and will continue.


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## jacmyoung

Greg Bimson said:


> That may be my opinion only, but Judge Folsom did not only say "just because the software was non-infringing, it did not mean the DVRs were non-infringing."


Yes he said that, I just do not have time to quote it for now.



> ...But keep in mind that when the injunction became active, that there was no implementation of a "software download to disable the DVR functions".


That was not the point, the point was, if the DVRs were allowed to continue to operate after a software download to disable the DVR functions, then the injunction would have allowed the products to continue to infringe, if and only if your assertion is correct that for the products to be non-infringing, the court must make that determination, before such, the products remain infringing. Keep in mind that had E* actually disabled the DVR functions, TiVo would not have accused E* of contmept for not disabling the DVR functions, and the court would never have the need to redefine those DVRs, and according to you, those DVRs would have forever been infringement, and yet still allowed to be used.

If an injunction allows continued infringement, then the inunction is flawed and should have no enforcement power. Get one that does its job right first.


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## Curtis52

TiVo Files Complaints for Patent Infringement Against AT&T and Verizon Communications in United States District Court, Eastern District of Texas; Seeking Damages and Injunction

* Press Release
* Source: TiVo Inc.
* On Wednesday August 26, 2009, 4:51 pm EDT

ALVISO, Calif., Aug. 26 /PRNewswire-FirstCall/ -- TiVo Inc. (Nasdaq: TIVO - News) today filed complaints in the United States District Court, Eastern District of Texas against AT&T Inc. and Verizon Communications, Inc. for infringement of the following three TiVo patents U.S. Patent Nos. 6,233,389 B1 ("Multimedia Time Warping System"), 7,529,465 B2 ("System for Time Shifting Multimedia Content Streams"), and 7,493,015 B1 ("Automatic Playback Overshoot Correction System"). The complaints seek damages for past infringement and a permanent injunction, similar to that issued by the United States District Court, Eastern District of Texas against DISH/EchoStar.


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## jacmyoung

scooper said:


> (Comment to Tsmacro's post )
> 
> So Tivo petitioned the PTO to dismiss this re-examination, and the PTO said the re-exam is proper and will continue.


It is TiVo's turn to make their pitches at the PTO, the first one of such effort was shut down, this one IMO is not nearly as big as the PTO's initial rejection. Though it should be a reality check for TiVo

With regard to Curtis52's news, all I have to say is, I hope ATT and V* learn from E*, start to have the PTO reexamine those patents ASAP

I have a feeling TiVo needed to do that maybe because the business side of it is not going too well, they can use some more distractions?


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## scooper

Answer me this - if the PTO issues a Final Ruling that claims 31 and 61 are invalid - would this also apply to any further suits that TiVo might bring ? 

I would guess yes, but would like a second opinion.


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## Ken_F

scooper said:


> Answer me this - if the PTO issues a Final Ruling that claims 31 and 61 are invalid - would this also apply to any further suits that TiVo might bring ?
> 
> I would guess yes, but would like a second opinion.


Nothing applies until the appeal's process is exhausted. At that point, any changes to the patent would certainly apply to pending litigation.

It may be worth noting that TiVo's new ligitation against Verizon and AT&T adds two new claims that were not part of their 2004 suit against Dish Network:

Multimedia Time Warping System (filed 7/30/1998, granted 5/15/2001)
System for time shifting multimedia content streams (filed 2/20/2002, granted 5/05/2009)
Automatic playback overshoot correction system (filed 5/13/2004, granted 2/17/2009)


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## Curtis52

scooper said:


> Answer me this - if the PTO issues a Final Ruling that claims 31 and 61 are invalid - would this also apply to any further suits that TiVo might bring ?
> 
> I would guess yes, but would like a second opinion.


If there is a final action from the patent office rejecting TiVo's patent prior to the lawsuit ball rolling very far, there would likely be a hold put on that part of the lawsuit. It's completely within the judges prerogative. If that happens, the lawsuits could continue on the other two patents.


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## scooper

Ken_F said:


> Nothing applies until the appeal's process is exhausted. At that point, any changes to the patent would certainly apply to pending litigation.
> 
> It may be worth noting that TiVo's new ligitation against Verizon and AT&T adds two new claims that were not part of their 2004 suit against Dish Network:
> 
> Multimedia Time Warping System (filed 7/30/1998, granted 5/15/2001)
> System for time shifting multimedia content streams (filed 2/20/2002, granted 5/05/2009)
> Automatic playback overshoot correction system (filed 5/13/2004, granted 2/17/2009)


Two additional PATENTS, not just claims...


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## scooper

Curtis52 said:


> If there is a final action from the patent office rejecting TiVo's patent prior to the lawsuit ball rolling very far, there would likely be a hold put on that part of the lawsuit. It's completely within the judges prerogative. If that happens, the lawsuits could continue on the other two patents.


That sounds reasonable to me...

Now, TiVo would have to file an additional lawsuit against Echostar to bring these other 2 patents to bear, correct ?


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## dreadlk

*TiVo CEO: Must Stop Unauthorized Use Of Intellectual Property*

http://money.cnn.com/news/newsfeeds/articles/djf500/200908261806DOWJONESDJONLINE000602_FORTUNE5.htm


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## scooper

dreadlk said:


> *TiVo CEO: Must Stop Unauthorized Use Of Intellectual Property*
> 
> http://money.cnn.com/news/newsfeeds/articles/djf500/200908261806DOWJONESDJONLINE000602_FORTUNE5.htm


Duh ! comment in the release - 
"As a result of the new lawsuits, Chief Financial Officer Anna Brunelle said she expects higher legal costs. "

You think ?


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## Greg Bimson

jac, this is a bad argument:


> Keep in mind that had E* actually disabled the DVR functions,


The assumption here is that DVR functionality is disabled...


> TiVo would not have accused E* of contmept for not disabling the DVR functions, and the court would never have the need to redefine those DVRs, and according to you, those DVRs would have forever been infringement, and yet still allowed to be used.


If DVR functionality is ceased, then they cannot possibly be infringing, and still can be used. That is 100 percent true. They'd still be "Infringing Products", and still within the scope of the injunction.

The point is when the injunction became active, the infringer was ordered to do a few things. One of those things upon the commencement of the full force and effect of the injunction was to disable the DVR functionality in "Infringing Products" installed within customers homes. DISH/SATS did not follow that order from the court.

It is that cut-and-dried. At least it has been, from my argument. And Judge Folsom agreed, by granting contempt.


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## jacmyoung

Just read TiVo's "red brief" and a few points:

1) TiVo quoted the "disabling provision" of the injunction many times, but each time replaced the term "Infringing Products" with the term "adjudicated units".

Remember what I said many times before? Had TiVo proposed and the judge adopted the term "Adjudicated Products" rather the "Infringing Products", the order might have some more teeth. Now TiVo seems to agree with me and keep using that new term. But of course that is a clear false presentation. The order did not use the "adjudicated units" rather the "Infringing Products". The fact TiVo felt compelled to replace that term each and every time it mentioned the disabling provision (and many times it did), is very telling.

2) Only in one instance TiVo addressed the term "Infringing Products" separately. TiVo's argument is the word "Infringing" is not a limiting word. TiVo cited a criminal case in which the court said in the term "felony drug offense", the word "felony" was not the only limiting word. But of course TiVo ignores the fact the term "drug offense" alone also limits the term to describe a felony, because drug offense is a felony offense. Here the word "Products" cannot possibly stand alone to mean "infringing products". Therefore the word "Infringing" is absolutely a limiting word.

Greg, the above answers your question of how to interpret "Infringing Products" because neither TiVo, nor Judge Folsom took your position.

3) If we recall I mentioned E* asked TiVo to fill the blanks with software codes that could still prove all those steps were still performed by the new design? Well TiVo's response was they had a chart that answered that question, but refused to fill in the blanks. Basically telling the judges to find for themselves from that chart which codes to fill in those blanks in order to prove infringement for TiVo

It reminds me of one person (not on this site) who often responded with other members' countering questions by saying, hey I answered them already, you just needed to go back to find them for yourselves, I am not going to waste my time to answer your questions

4) Last but not the least, in its conclusion, TiVo demanded that the appeals court "immediately" vacate the appeals court's own stay order and reinstate the injunction. We will see how it goes.


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## scooper

jacmyoung said:


> Just read TiVo's "red brief" and a few points:
> 
> 1) TiVo quoted the "disabling provision" of the injunction many times, but each time replaced the term "Infringing Products" with the term "adjudicated units".
> 
> Remember what I said many times before? Had TiVo proposed and the judge adopted the term "Adjudicated Products" rather the "Infringing Products", the order might have some more teeth. Now TiVo seems to agree with me and keep using that new term. But of course that is a clear false presentation. The order did not use the "adjudicated units" rather the "Infringing Products". The fact TiVo felt compelled to replace that term each and every time it mentioned the disabling provision (and many times it did), is very telling.
> 
> 2) Only in one instance TiVo addressed the term "Infringing Products" separately. TiVo's argument is the word "Infringing" is not a limiting word. TiVo cited a criminal case in which the court said in the term "felony drug offense", the word "felony" was not the only limiting word. But of course TiVo ignores the fact the term "drug offense" alone also limits the term to describe a felony, because drug offense is a felony offense. Here the word "Products" cannot possibly stand alone to mean "infringing products". Therefore the word "Infringing" is absolutely a limiting word.
> 
> Greg, the above answers your question of how to interpret "Infringing Products" because neither TiVo, nor Judge Folsom took your position.


Absolutely - TiVo (and Greg) were thinking the 2 terms were "identical" in meaning. Well, IF they were - Greg's position that "Infringing Products" would mean that indeed - all the Echostar units would have had to be disabled. The problem is , of course - they aren't. TiVo and Judge Folsom assumed that Echostar could NOT make them not infringing. The fact that it isn't clear should be enough to throw it out.



jacmyoung said:


> 3) If we recall I mentioned E* asked TiVo to fill the blanks with software codes that could still prove all those steps were still performed by the new design? Well TiVo's response was they had a chart that answered that question, but refused to fill in the blanks. Basically telling the judges to find for themselves from that chart which codes to fill in those blanks in order to prove infringement for TiVo
> 
> It reminds me of one person (not on this site) who often responded with other members' countering questions by saying, hey I answered them already, you just needed to go back to find them for yourselves, I am not going to waste my time to answer your questions
> 
> 4) Last but not the least, in its conclusion, TiVo demanded that the appeals court "immediately" vacate the appeals court's own stay order and reinstate the injunction. We will see how it goes.


I'd love to be the Appeals Judge hearing this, just so I could "***** slap"* Tivo on what they're doing here (and while I was at it, Judge Folsom as well) - 
#1 - for the trial, insisting the Start Codes business was "the core of the invention", but for the contempt phase (when Echostar had removed same), the same "Start Codes" were irrelevant. (talk about changing the rules of the game in the middle !).
#2 - that business in their Red Brief on swapping the terms "Infringing Products" and "Adjudicated Units".

* = only figuratively, of course...


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## jacmyoung

scooper said:


> ...TiVo (and Greg) were thinking the 2 terms were "identical" in meaning. ...


What I meant was, TiVo and Judge Folsom took a different position compared to Greg's when it comes to interpreting the term "Infringing Products". They understood infringing products could be made into non-infringing products without the court declaring so. That was why TiVo intentionally tried not to mention this term when it quoted the disabling provision time after time.

That was also why the only significant argument TiVo made with regard to the "Infringing Products" was that the word "Infringing" was not a limiting word. The problem is, when TiVo tried to support such contention, they cited that criminal case, in which the court actually refuted TiVo's contention.

Because there, the word "felony" was not the only limiting word in the term "felony drug offense". The term "drug offense" standing alone limited the term as a felony offense. Here, the term "products" cannot possibly describe any infringement offense, therefore using the very case TiVo cited, we draw the opposite conclusion, the word "Infringing" must be a limiting word. In our case, the only way for the word "Infringing" not to be a limiting word is to not use it.

Maybe TiVo should have proposed to use only the term "The Products" to be used in the injunction, but they did not.


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## phrelin

OK all you legal procedure experts. Is there any way AT&T and Verizon can involve themselves in either the appeal or the Patent Office review? See Tivo suing AT&T and Verizon. Because if there is, Charlie Ergen has two new best friends.


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## jacmyoung

phrelin said:


> OK all you legal procedure experts. Is there any way AT&T and Verizon can involve themselves in either the appeal or the Patent Office review? See Tivo suing AT&T and Verizon. Because if there is, Charlie Ergen has two new best friends.


I am no lawyer so below are only educated guesses:

First, I don't think ATT/V* can "involve" themselves in this current appeal as joint appellants, because they are not parties in this lawsuit. But as outside parties, they can file "amicus briefs" in support of E*, just like what ATCI did in support of TiVo on the issue of whether to stay the injunction. I just don't see the point of them doing so. The ACTI amicus brief did not help TiVo a bit.

Next, the current PTO reexamination is far enough into its process that any future activities will likely be only between TiVo and the PTO, any other parties may not be part of it, to some extent even E* may not be part of it, though E* is still required to update the PTO of any news on the current litigation or any other news relevant to the reexamination.

But any third party or parties can request the PTO to reexamine any patent at any time, as long as they can demonstrate there are new questions that may invalidate the patent or some of the claims in the patent. If ATT/V* choose to do so and succeed in doing so, it will just be a separate reexamination.

On the point of having some "new best friends", I don't think Charlie needs such friends, as long as E* is confident they can win on the appeal, IMO it is better that ATT/V* loses to TiVo or settle with TiVo so they are forced to pay a fee to TiVo, making them less competitive to E* due to the extra cost.

That is not to say this will be good for the consumers. TiVo is driving up the cost by forcing a licensing fee on everyone.


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## Greg Bimson

jacmyoung said:


> 2) Only in one instance TiVo addressed the term "Infringing Products" separately. TiVo's argument is the word "Infringing" is not a limiting word. TiVo cited a criminal case in which the court said in the term "felony drug offense", the word "felony" was not the only limiting word. But of course TiVo ignores the fact the term "drug offense" alone also limits the term to describe a felony, because drug offense is a felony offense. Here the word "Products" cannot possibly stand alone to mean "infringing products". Therefore the word "Infringing" is absolutely a limiting word.
> 
> Greg, the above answers your question of how to interpret "Infringing Products" because neither TiVo, nor Judge Folsom took your position.





jacmyoung said:


> Absolutely - TiVo (and Greg) were thinking the 2 terms were "identical" in meaning. Well, IF they were - Greg's position that "Infringing Products" would mean that indeed - all the Echostar units would have had to be disabled. The problem is , of course - they aren't. TiVo and Judge Folsom assumed that Echostar could NOT make them not infringing. The fact that it isn't clear should be enough to throw it out.





jacmyoung said:


> What I meant was, TiVo and Judge Folsom took a different position compared to Greg's when it comes to interpreting the term "Infringing Products". They understood infringing products could be made into non-infringing products without the court declaring so.


It is obvious that some are simply trying to "interpret" what I've said. So let's try this:EchoStar's "plain language" arguments are unavailing. First, EchoStar contends (Br. 60) that because the order requires disabling "Infringing Products," it reaches only "products that [still] have the infringing functions." But "Infringing Products" is a defined term in the injunction, referring to the eight product models adjudicated at trial. Its meaning is controlled by that definition, not limited by the word "Infringing." See Burgess v. United States, 128 S. Ct. 1572, 1577 (2008) (defined term "felony drug offense" not limited by word "felony"). EchoStar cannot narrow the definition to suit its purposes, and the district court did not abuse its discretion by adhering to the order's terms. See Amado v. Microsoft Corp., 517 F.3d 1353, 1358 (Fed. Cir. 2008) ("A district court's interpretation of its order is entitled to deference unless&#8230;unreasonable or&#8230;otherwise an abuse of discretion.").[/quote]TiVo's argument is that "Infringing Products" is a defined term in the injunction, specifically the eight models adjudged to infringe during trial.​
Funny. That's been my argument. Since eight models were defined within the injunction as one definitive proper noun phrase, it only has one meaning, no matter what spin is given by DISH/SATS. That would be where TiVo states, ""Infringing Products" is a defined term in the injunction, referring to the eight product models adjudicated at trial." TiVo presents that "Infringing Products" does not mean products which infringe as DISH/SATS portrays, within the citation I've provided.

And as I've said numerous times, DISH/SATS could change the software 9 million times if they wanted to. Heck, DISH/SATS may have even found a way to make "Infringing Products" no longer infringe. However, DISH/SATS was ordered to implement one change on the couple million units of eight adjudged DVR models within customers' homes as of 8 September 2006: disable DVR functionality. That order was not followed.


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## jacmyoung

Of course I forgot to mention the most infamous claim term, "parses *audio and video data* from the broadcast data."

Despite TiVo's repeated argument that E*'s new design still met the "parse" limitation, in the end TiVo could not avoid addressing the "audio and video data" limit.

E* argued that the PID filter did not parse any audio and video data, it only parsed the headers of the broadcast streams, which contained just some 13-bit numbers. This much TiVo did not dispute. Tivo only argued that so what? The broadcast data contained both the headers and the payloads, and since the payloads contained audio and video data, the PID filter must also have analyzed the audio and video data. This logic should fail on its face right there.

But to further demonstrate that the PID filter did not parse the payloads, E* pointed out the fact that at the stage of the PID operations, the payloads were scrambled, any data contained in the payloads simply could not be analyzed at that time, only the headers might be analyzed because the headers are never scrambled.

TiVo's response was, but the "claims are not limited to parsing unscrambled data." TiVo then added in the footnote that E* admitted there were unscrambled channels. Here is TiVo's admission that E* has a point with regard to any scrambled channels, so they say hey you have unscrambled channels too, gotcha!

But TiVo forgets, by admitting that it is true the PID filter cannot parse any audio and video data when the channels' payloads are scrambled, TiVo in all practicality has admitted the PID filter's function is not to parse any audio and video data. Because otherwise all the scrambled channels would have to be unscrambled before they are fed to the PID filter, but this is clearly not the case.

TiVo seems to imply that while the PID filter cannot parse any audio and video data if it sees a scrambled channel, somehow it will begin to parse the audio and video data in an unscrambled channel if it notices that that channel's payload is unscrambled. But of course this is also not true, so TiVo decided to stop short of claiming that. As such, it is clear to me TiVo has failed to prove by clear and convincing evidence that the PID filter parses *audio and video data*. Yes it still analyzes, just that it only analyzes a bunch of 13-bit numbers in the headers in order to tell the decoder which number of channel to tune to. If that function can be called an invention, well I have a bridge to sell them.


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## jacmyoung

Greg Bimson said:


> ...Its meaning is controlled by that definition, not limited by the word "Infringing." See Burgess v. United States, 128 S. Ct. 1572, 1577 (2008) (defined term "felony drug offense" not limited by word "felony"). ...


As I further researched that case, I found a correct interpretation of it:



> holding that a "felony drug offense" is "an offense punishable by more than one year," as defined in 21 U.S.C. § 802(44) (2000), regardless of whether the state of conviction classified the particular offense as a misdemeanor or felony


Now we have the correct interpretation, let's find out what TiVo did not tell us. In that case the court was saying, the term "felony drug offense" by default was an "offense". As long as it was "an offense punishable by more than one year," the word "felony" had no limiting effect as far as whether the defendant could be punished for more than one year or not.

So in the correct context, we look at the current case, the term "Infringing Products" by default defines the "products". As I said, the word "products" cannot carry any consequences, unlike the word "offense" above. Therefore the word "Infringing" had to be used to *limit* this term to only define the products that had infringed, in order for the order to have real teeth, if one uses the same rationale as in that criminal case.

The mere fact the court was even arguing the term "felony drug offense" in order to justify the punishment, is a testimony in E*'s favor that here, when it comes to any punishment, the court equally *cannot* ignore the term "Infringing Products" when it decides whether the contempt punishment is justified or not.

And yet this is precisely what TiVo is doing, asking the court to ignore the term "Infringing Products" when the court tries to determine whether the punishment is appropriate, so much so that they purposefully omitted this "Infringing Products" term, replaced it with the "adjudicated units" each and every time they quoted the so called "disablement provision".


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## Greg Bimson

jacmyoung said:


> Yes it still analyzes, just that it only analyzes a bunch of 13-bit numbers in the headers in order to tell the decoder which number of channel to tune to. If that function can be called an invention, well I have a bridge to sell them.


That function is not the invention, but a step within the invention, as detailed by the patent and its claims. Five of five experts agreed that limitation was met during the trial.


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## Greg Bimson

jacmyoung said:


> So in the correct context, we look at the current case, the term "Infringing Products" by default defines the "products".


Wrong.

Infringing Products is a defined term. "Infringing Products" does not define "products", as the only meaning of "Infringing Products" was defined within the injunction as the eight models adjudged as infringements.


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## scooper

Greg Bimson said:


> That function is not the invention, but a step within the invention, as detailed by the patent and its claims. Five of five experts agreed that limitation was met during the trial.


Five of Five experts were wrong, then.

Let's see them build such a device on the E* encrypted streams if they think they're right. After all, they are people "skilled in the field of DVR", right ?


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## Greg Bimson

> holding that a "felony drug offense" is "an offense punishable by more than one year," as defined in 21 U.S.C. § 802(44) (2000), regardless of whether the state of conviction classified the particular offense as a misdemeanor or felony


So let's see...

"regardless of whether the state of conviction classified the particular offense as a misdemeanor or felony"

Suffer a two-year misdemeanor drug offense within a state court, and the federal government has defined that as a "felony drug offense".

Even if you can make every one of your receivers no longer infringe, the court has ordered "Infringing Products" must have DVR functionality disabled.


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## jacmyoung

Greg Bimson said:


> ...the court has ordered "Infringing Products" must have DVR functionality disabled.


Of course the question has always been, did the court order non-infringing products disabled?


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## Greg Bimson

What "Infringing Products" are non-infringing, if it even matters?


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## jacmyoung

Greg Bimson said:


> What "Infringing Products" are non-infringing, if it even matters?


The fact after one and one half years of arguing between you and me, you still cannot answer my above question directly, what does that say?

Did the court order non-infringing products disabled? Yes or no, or not sure.


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## scooper

jacmyoung said:


> The fact after one and one half years of arguing between you and me, you still cannot answer my above question directly, what does that say?
> 
> Did the court order non-infringing products disabled? Yes or no, or not sure.


If you take the term "Infringing Products" literally - no.

If you take "Infringing Products" to mean "Adjudicated Products" - yes.

But who said "Infringing Products" = "Adjudicated Products" completely, no more or less ?

It's telling that Tivo changed all references in their Red Brief from "Infringing Products" to "Adjudicated Products" as to what they REALLY want....


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## Greg Bimson

Greg Bimson said:


> What "Infringing Products" are non-infringing, if it even matters?





jacmyoung said:


> The fact after one and one half years of arguing between you and me, you still cannot answer my above question directly, what does that say?
> 
> Did the court order non-infringing products disabled? Yes or no, or not sure.


Because I am tired of rehashing the same old argument:

The court ordered "Infringing Products" disabled. DISH/SATS didn't challenge the injunction upon appeal. So whether or not "Infringing Products" infringe or not is immaterial. Answering the above question is immaterial.

But as I recall, all "Infringing Products" infringe. So what's the use of arguing if "Infringing Products" do not infringe, when they've been found to infringe? It's putting the cart before the horse.


scooper said:


> But who said "Infringing Products" = "Adjudicated Products" completely, no more or less ?


You'd need to go back to the injunction. Eight models of DVR were adjudged as infringing the Time Warp patent. "Infringing Products" only means the eight models of DVR presented at trial in April 2006. Once DISH/SATS sold units with new software only, those devices were not adjudged, even though they had the same model numbers. Once the contempt order was granted, all eight models (including those with the new software) again had been found as infringements, and then also were encapsulated by the disable provision. The amended injunction encapsulates those newer devices.

The devices were adjudged. They were found infringing. A very specific amount of units were ordered disabled based upon the fact that all those units were adjudged. That's why the terms are somewhat interchangable.

I do recall TiVo mentioning in their definition of "Adjudicated Products" the "Infringing Products" with an end user or subscriber as of 8 September 2006. So any sales of "Infringing Products" after that time would not fit the definition of "Adjudicated Products".


----------



## jacmyoung

Greg Bimson said:


> Because I am tired of rehashing the same old argument...


The question requires no tired arguments, just a simple answer, yes, no, or not sure.

If you refuse to answer it, in the court and on the stand, it is called "not responsive". Continue to do so may be sanctioned by the judge


----------



## scooper

Somewhat <> Exactly .


----------



## Paul Secic

scooper said:


> Absolutely - TiVo (and Greg) were thinking the 2 terms were "identical" in meaning. Well, IF they were - Greg's position that "Infringing Products" would mean that indeed - all the Echostar units would have had to be disabled. The problem is , of course - they aren't. TiVo and Judge Folsom assumed that Echostar could NOT make them not infringing. The fact that it isn't clear should be enough to throw it out.
> 
> I'd love to be the Appeals Judge hearing this, just so I could "***** slap"* Tivo on what they're doing here (and while I was at it, Judge Folsom as well) -
> #1 - for the trial, insisting the Start Codes business was "the core of the invention", but for the contempt phase (when Echostar had removed same), the same "Start Codes" were irrelevant. (talk about changing the rules of the game in the middle !).
> #2 - that business in their Red Brief on swapping the terms "Infringing Products" and "Adjudicated Units".
> 
> * = only figuratively, of course...


TIVO is suing Verizon and AT&T U-verse over their DVRs. Next is Directv I guess.


----------



## Greg Bimson

Greg Bimson said:


> Because I am tired of rehashing the same old argument...





jacmyoung said:


> The question requires no tired arguments, just a simple answer, yes, no, or not sure.
> 
> If you refuse to answer it, in the court and on the stand, it is called "not responsive". Continue to do so may be sanctioned by the judge


The question:


jacmyoung said:


> Of course the question has always been, did the court order non-infringing products disabled?


I'll risk contempt. It appears it is easy to dismiss, as the question is unclear. 

Besides, that question should have been presented to the appeals court when both the guilty verdict from the jury for infringement and the judgment including the injunction order from Judge Folsom was appealed. That question doesn't need to be answered as it is a challenge of a standing injunction.

But I'll answer it. The court ordered devices found as infringements disabled. If somehow the devices found as infringments are made to be non-infringing, a motion for clarification should be presented to make sure that those devices are removed from the scope of the injunction.

And if the answer isn't good enough, maybe the question isn't either.


----------



## phrelin

I haven't been keeping my spreadsheet up to date, but sometime within this discussion the number of posts on Tivo v Echostar in DBSTalk threads surpassed 15,000. Congratulations guys.:sure:


----------



## jacmyoung

Greg Bimson said:


> The question:I'll risk contempt. It appears it is easy to dismiss, as the question is unclear.


Then the order wasn't clear. The order should have said "whether those named DVRs still infringe or not."



> Besides, that question should have been presented to the appeals court ...


There is never a requirement that if the order might not be clear, the defendant must try to clarify it. It is the court's duty to ensure the order is clear, before it can be effective.

If TiVo were correct, that the defendant is responsible for clarifying any perceived ambiguity, then the law should never have required that a court order must be clear, concise, and without ambiguity. The very reason the law mandates a clear, concise and unambiguous order is because the defendant is not required to clarify it.

Borrowing Scoopers term: "somewhat <> exactly" it means the terms are not precise, therefore the order is not clear. TiVo now is trying to use a "somewhat equal" term to argue why E* violated the order, the law clearly does not allow that.


----------



## Greg Bimson

jacmyoung said:


> There is never a requirement that if the order might not be clear, the defendant must try to clarify it. It is the court's duty to ensure the order is clear, before it can be effective.


This is another cart before the horse.

The order is clear. What is unclear is DISH/SATS perception that the injunction is encapsulating non-infringing receivers. At no point have the receivers adjudged as infringements and ordered functionally disabled as of 8 September 2006 been "non-infringing", yet they are still the subject of the disable order.

The citation I provided shows the lack of ambiguity.


----------



## Greg Bimson

jacmyoung said:


> Then the order wasn't clear. The order should have said "whether those named DVRs still infringe or not."


That would be a redundant phrase. The order already says to disable DVR functionality within "Infringing Products". Adding that phrase adds no value, and doesn't make the order any more clear.

Still challenging the injunction?


----------



## scooper

I'm still challenging your position "Adjudicated products" is exactly equal to "Infringing Products". So yes - I would say the injunction is still not clear.


----------



## Greg Bimson

TiVo's argument, again:EchoStar's "plain language" arguments are unavailing. First, EchoStar contends (Br. 60) that because the order requires disabling "Infringing Products," it reaches only "products that [still] have the infringing functions." But "Infringing Products" is a defined term in the injunction, referring to the eight product models adjudicated at trial. Its meaning is controlled by that definition, not limited by the word "Infringing." See Burgess v. United States, 128 S. Ct. 1572, 1577 (2008) (defined term "felony drug offense" not limited by word "felony"). EchoStar cannot narrow the definition to suit its purposes, and the district court did not abuse its discretion by adhering to the order's terms. See Amado v. Microsoft Corp., 517 F.3d 1353, 1358 (Fed. Cir. 2008) ("A district court's interpretation of its order is entitled to deference unless&#8230;unreasonable or&#8230;otherwise an abuse of discretion.").​DISH/SATS argument fails under scrutiny, and there isn't anything about "adjudicated products", "Adjudicated products", "adjudicated Products" or "Adjudicated Products".


----------



## jacmyoung

Greg Bimson said:


> ...The order is clear. ...


If so how do you explain TiVo replacing the term "Infringing Products" with my term "adjudicated units (i.e. products)"? Is TiVo trying to turn a clear order into a muddy one?


----------



## jacmyoung

Greg Bimson said:


> That would be a redundant phrase. The order already says to disable DVR functionality within "Infringing Products". Adding that phrase adds no value, and doesn't make the order any more clear.
> 
> Still challenging the injunction?


Then don't change it to "adjudicated units". Why avoid it? Why make yourself less convincing by replacing the "plain language" in the order when you have a "perfect" interpretation already?

You believe you have a clear interpretation, I believe I have a clear interpretation, the appeals court will have to decide who is right, in doing so, they will interpret the order de novo, meaning disregard what Judge Folsom interpreted his own order for himself, sounds strange but it is true.

What is nonsense is the argument that I must clarify the order first, when the order was never unclear to me. How about you ask the appeals court to clarify the order first? Or better yet, like I said, should have made sure you made it clear in the order in the first place, put it down that "regardless whether the products still infringing or not..."

Whose burden of proof is it in a summary contempt proceeding? TiVo made it as if E* must do all the leg work, TiVo just have to site there, not even willing to fill the blanks with the codes that are needed to prove infringement, even though as TiVo said those codes were already in their charts, right there you see, on page XXX, all you have to do is to look for them for yourselves.

Is the court's job to prove infringement for TiVo? Does the court carry the burden of proof now?


----------



## Greg Bimson

jacmyoung said:


> If so how do you explain TiVo replacing the term "Infringing Products" with my term "adjudicated units (i.e. products)"? Is TiVo trying to turn a clear order into a muddy one?


I don't see in the citation I provided where any terms were replaced.


----------



## jacmyoung

Greg Bimson said:


> I don't see in the citation I provided where any terms were replaced.


The quote you provided above is what I had earlier described as "the only instance where TiVo actually addressed the term 'Infringing Products' separately."  This is not one of TiVo's many citations of the "disablement provision".

Read the rest of TiVo's brief you will notice TiVo cited the "disablement provision" many times to support their various other contentions, and without exception, they have replaced the term "Infringing Products" plainly visible in the "disablement provision" with the new term "adjudicated units". That was why I said TiVo seemed to agree with me now that they should have proposed the term "Adjudicated Products" instead of the "Infringing Products" in their injunction.

It is one thing to read parties' filings then agree with them, it is another matter all together when I had made some arguments that the parties failed to use before, only then to read their later filings to discover that the parties had began to address the similar issues/arguments I had thought of first.

In E*'s case, I had over a year ago argued since the new design did not parse "audio and video data" in the first step, therefore it could not "temporarily store" such "audio and video data", therefore there could not be a "source object" to "extract" such data from such temporary storage location (since it did not exist), therefore the "source object" could not "convert" such data into "data streams" and could not "fill" the "buffer" with such "data streams". As a result the whole thing should fall apart.

E* only began to use the same argument during their most recent appeal. They could have used such argument during the 2/09 hearing, things might have been a little different. Similarly, I had said a long time ago, had TiVo put the term "Adjudicated Products" in the injunction rather the "Infringing Products" things could have been a little easier for them too.

Do not blame the other party, or the legal system, or the judge, for things one had failed to do correctly or wisely in the first place. This it true for both E* and TiVo.

Now let me climb down from my pedestal and explain why I used the words "a *little* different". In reality, things might not have been that different at all, because I believe Judge Folsom had his mind already made up, he tried for years to coax both parties to settle. It had been obvious Charlie was the one who refused to settle, so he wasn't going to let him off the hook so easily. Even if E* had made some better arguments he would not have cared.

Likewise, even if TiVo had thought about the complication the term "Infringing Products" could bring, and was wise enough to propose the term "Adjudicated Products (or Units)" instead, E* would have objected to such term, or failing that, appealed the injunction to the appeals court, because E* knew at that time exactly what they wanted to do to get around the injunction.


----------



## scooper

jacmyoung said:


> Now let me climb down from my pedestal and explain why I used the words "a *little* different". In reality, things might not have been that different at all, because I believe Judge Folsom had his mind already made up, he tried for years to coax both parties to settle. It had been obvious Charlie was the one who refused to settle, so he wasn't going to let him off the hook so easily. Even if E* had made some better arguments he would not have cared.


If Judge Folsom was guilty of doing this - he should be REMOVED from the bench (and maybe the Bar) immediately (if not sooner). A clear abuse of judical discretion.

Therefore - I have my doubts that this was happening.


----------



## jacmyoung

scooper said:


> If Judge Folsom was guilty of doing this - he should be REMOVED from the bench (and maybe the Bar) immediately (if not sooner). A clear abuse of judical discretion.
> 
> Therefore - I have my doubts that this was happening.


Abuse of discretion happens all the time, carries no penalty.


----------



## dfd

jacmyoung said:


> Abuse of discretion happens all the time, carries no penalty.


Sort of like "defamation of character" on the internet.


----------



## Curtis52

There is a reason to refer to adjudicated units. They aren't necessarily the same thing as Infringing Products.

Not all Infringing Products are subject to the disable order. The injunction only states that the Infringing Products already placed in homes require disabling. Those are the adjudicated units. Precision requires language that distinguishes the already placed Infringing Products from the newly sold Infringing Products.


----------



## scooper

jacmyoung said:


> Abuse of discretion happens all the time, carries no penalty.


It should have the most severe penalty - I wouldn't consider death sentence too severe for a judge who was favoring one side over the other in a dispute.


----------



## Greg Bimson

Curtis52 said:


> There is a reason to refer to adjudicated units. They aren't necessarily the same thing as Infringing Products.


Such as the fact that Infringing Products were sold after 8 September 2006. Those were not subject to the disable order.

Besides, TiVo is trying to hammer home (just like during the contempt proceedings) that it is all about the disable provision.


----------



## jacmyoung

Curtis52 said:


> ... The injunction only states that the Infringing Products already placed in homes require disabling. Those are the adjudicated units...


Are you saying the Infringing Products still stored in the warehouses at that time were not adjudicated units? Besides, TiVo only replaced the term "Infringing Products" with the term "adjudicated units". They did not replace "Infringing Products placed with the end users" with "adjudicated units." As an example:



> The "Disablement Provision" orders EchoStar to "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data)" in *adjudicated units* "placed with an end user or subscriber."


In any event, even if TiVo had been as sharp as you do, simply plugging out a key term from the order, injecting a different term in its place, is such a blatant and yet stupid distortion of the plain language of the order, I don't know how TiVo expected not get caught.


----------



## jacmyoung

Greg Bimson said:


> Such as the fact that Infringing Products were sold after 8 September 2006. Those were not subject to the disable order...


Of course they were, as long as they were with the end users at the time the injunction became effective. On the other hand, for some of those that were sold before 9/8/06, but were no longer at the end users at the time the injunction was reinstated, they should not be subject to the disabling provision. Regardless, by the plain reading of the order, they must be "Infringing Products" at the time the injunction took effect to be subject to the provision.


----------



## jacmyoung

scooper said:


> It should have the most severe penalty - I wouldn't consider death sentence too severe for a judge who was favoring one side over the other in a dispute.


Calm down scooper There is a reason it is called "abuse of discretion" not "abuse of power". There is actually at least one very good reason behind it with the Federal Circuit (the appeals court).

The federal courts at different levels of hierarchy serve different functions. At the first level, the district court judges have a stated goal to encourage parties to settle rather to have the court to settle for them, therefore saving court economy, among other things. It works probably 99% of the time. To do so the district judges must be given wide latitude in exercising their discretion. Such wide latitude is expressly allowed by the Federal Circuit.

On the other hand, the Federal Circuit is operated by much more strict standards, the appeals court does not exercise discretion when it makes decisions on appeals. For that remaining 1% of the cases, their job is to ensure the district court decisions conform to the uniform standards while at the same time they decline to impose the same standards on the district courts.

That is not to say the district courts should not try to conform to the standards, only that the district judges have much wider latitude than the appeals court judges. It is like a father and his sons. The good father must set a higher standards for himself for the sons to follow, at the same time, he must not demand the sons operate at his level, while the expectation is by showing a good example, the sons will follow the same rules, it is still expected that from time to time the kids may crap out, and that is ok, especially when there may be good reasons for crapping out.

Of course the above is my layman's rant, don't get too upset if I was not right on mark


----------



## scooper

jacmyoung said:


> Calm down scooper There is a reason it is called "abuse of discretion" not "abuse of power". There is actually at least one very good reason behind it with the Federal Circuit (the appeals court).
> 
> The federal courts at different levels of hierarchy serve different functions. At the first level, the district court judges have a stated goal to encourage parties to settle rather to have the court to settle for them, therefore saving court economy, among other things. It works probably 99% of the time. To do so the district judges must be given wide latitude in exercising their discretion. Such wide latitude is expressly allowed by the Federal Circuit.
> 
> On the other hand, the Federal Circuit is operated by much more strict standards, the appeals court does not exercise discretion when it makes decisions on appeals. For that remaining 1% of the cases, their job is to ensure the district court decisions conform to the uniform standards while at the same time they decline to impose the same standards on the district courts.
> 
> That is not to say the district courts should not try to conform to the standards, only that the district judges have much wider latitude than the appeals court judges. It is like a father and his sons. The good father must set a higher standards for himself for the sons to follow, at the same time, he must not demand the sons operate at his level, while the expectation is by showing a good example, the sons will follow the same rules, it is still expected that from time to time the kids may crap out, and that is ok, especially when there may be good reasons for crapping out.
> 
> Of course the above is my layman's rant, don't get too upset if I was not right on mark


We're going to have to agree to disagree -

I firmly believe that ALL judges should be performing like they are on the Supreme Court - or even higher standards. "Justice should be blind" , and all that. Or the courts shouldn't be in existence at all.

Just like no man is above the law - neither is any judge or any elected official.


----------



## jacmyoung

scooper said:


> We're going to have to agree to disagree -
> 
> I firmly believe that ALL judges should be performing like they are on the Supreme Court - or even higher standards. "Justice should be blind" , and all that. Or the courts shouldn't be in existence at all.
> 
> Just like no man is above the law - neither is any judge or any elected official.


Here is the key, abuse of discretion is not abuse of justice. The counter argument is, part of serving our justice is to encourage parties not to sue each other, not to rely on litigation. Most people already believe we have too many litigations and they are not good for the society over all. Although in reality as I said 99% of the litigations end up resolving on their own or with some assistance of the court.

But people only read those 1% and believe that it is widespread, everyone is suing everyone else. Regardless the misconception (though I agree too many litigations already), I assume we can also agree it is a good thing that if it turns out 99% of the litigations ends with settlement out of court or with some assistance of court without consuming too much tax payer's money? If so then that is part of the justice we can all appreciate.

One part of the district courts' functions is to serve such justice, and leave the remaining 1% for the appeals courts, which do not serve that specific function.


----------



## Greg Bimson

Greg Bimson said:


> Such as the fact that Infringing Products were sold after 8 September 2006. Those were not subject to the disable order...





jacmyoung said:


> Of course they were, as long as they were with the end users at the time the injunction became effective. On the other hand, for some of those that were sold before 9/8/06, but were no longer at the end users at the time the injunction was reinstated, they should not be subject to the disabling provision.


I could be incorrect about this...

I was under the assumption a "stay" simply means a delay of enforcement. So although the injunction did not become active until 18 April 2008, the directive in the injunction was that 30 days after issuance of the order the DVR functionality in the "Infringing Products" must be disabled. What happens to those sold on day 31?

I guess if I dive into it long enough I'd agree with you, jac.

However, what happens to those DP-625's that were sold and activated only the newer software? They are obviously on the face an "Infringing Product" because it is a listed recevier, but as StarBrite said, they aren't the same as their internal formulation was different.

So I am guessing because there wasn't a change in model number, TiVo does need to point out the differences between the adjudicated DP-625 (subject to the original disable order) and the modified DP-625, which would not be, although I believe both could be defined as "Infringing Products" simply because of DISH/SATS nomenclature.

But as I said, it easily appears TiVo is simply telling the court over and over again these are the "adjudged units" which are subject to the disable order. It is a bold reminder that these units have been before this court.


----------



## dgordo

scooper said:


> We're going to have to agree to disagree -
> 
> I firmly believe that ALL judges should be performing like they are on the Supreme Court - or even higher standards. "Justice should be blind" , and all that. Or the courts shouldn't be in existence at all.
> 
> Just like no man is above the law - neither is any judge or any elected official.


That is fine if that is what you believe, but those who created our federal court system didn't share your beliefs.


----------



## scooper

dgordo said:


> That is fine if that is what you believe, but those who created our federal court system didn't share your beliefs.


Which is why I'm ALWAYS disappointed whenever I have to deal with the joke of our court system.


----------



## jacmyoung

Greg Bimson said:


> ...But as I said, it easily appears TiVo is simply telling the court over and over again these are the "adjudged units" which are subject to the disable order. It is a bold reminder that these units have been before this court.


The court needs no reminder because E* never tried to tell the court the "adjudicated units" were not adjudicated units, nor that the adjudicated units were not subject to the order, only that after the modification, those adjudicated units were not "Infringing Products" any more, since the order was very specific about one narrowly defined type of units, else it should never have used that term, therefore E*'s current units are no longer subject to the order.

TiVo realized the implication, that was why TiVo tried to hide that term when they evoked the provision time after time. There would be no need to hide it were there no implications.


----------



## deaincaelo

Greg Bimson said:


> a motion for clarification should be presented


Why? Echostar already brought the question before the judge and he DID NOT TELL THEM THEY WERE NOT ALLOWED. Now, where I'm from, that's called a one question IQ test.

Now he's saying Echostar can't create new imaginary devices in the same shell. It's a bit like saying that Echostar is in contempt if they use a hard drive in a 510 in a toaster- sure, you can get there from reading the injunction if you interpret it like the bible. However, it flies in the face of reason. Arn't judges held to a reasonable person standard?


----------



## dgordo

scooper said:


> Which is why I'm ALWAYS disappointed whenever I have to deal with the joke of our court system.


Its still the best in the world. The problem more than how we encourage judges to judge is that jurors are inherently unqualified to deal with complex legal issues.


----------



## phrelin

dgordo said:


> Its still the best in the world.


Yeah.... Which ones are you comparing it with?


----------



## Greg Bimson

Greg Bimson said:


> a motion for clarification should be presented





deaincaelo said:


> Why? Echostar already brought the question before the judge and he DID NOT TELL THEM THEY WERE NOT ALLOWED. Now, where I'm from, that's called a one question IQ test.


The order was to disable. That's what was expected.

Were the specified receviers disabled as ordered when the injunction became active?

It was the one action that was mandatory, as ordered by the judge.

That is the one question IQ test. Answer no, and find yourself in contempt.

And I'm still trying to figure out where "Echostar already brought the question before the judge and he DID NOT TELL THEM THEY WERE NOT ALLOWED." Echostar never did bring the question before the judge.


----------



## jacmyoung

Greg Bimson said:


> ...That is the one question IQ test...


For a five-year-old, but here is a follow-up IQ test for the adult: When you change the wording of the IQ test question, say replace the "Infringing Products" with the "adjudicated units", should the IQ test answer stay the same?

A more challenging IQ test question that only a person with an IQ much higher than a normal 5 year-old can possibly begin to tackle.


----------



## dgordo

phrelin said:


> Yeah.... Which ones are you comparing it with?


Mostly canada, western europe and japan. The rest are highly rigged.


----------



## Greg Bimson

Greg Bimson said:


> ...That is the one question IQ test...





jacmyoung said:


> For a five-year-old, but here is a follow-up IQ test for the adult: When you change the wording of the IQ test question, say replace the "Infringing Products" with the "adjudicated units", should the IQ test answer stay the same?
> 
> A more challenging IQ test question that only a person with an IQ much higher than a normal 5 year-old can possibly begin to tackle.


My question:

Were the specified receviers disabled as ordered when the injunction became active?

I don't see where "Infringing Products" or "adjudicated units" were used.


----------



## jacmyoung

Greg Bimson said:


> My question:
> 
> Were the specified receviers disabled as ordered when the injunction became active?
> 
> I don't see where "Infringing Products" or "adjudicated units" were used.


The answer is yes, they did, long before the injunction became active.

How about you answer my question for once? You wanted an IQ test, so go for it.


----------



## Greg Bimson

Greg Bimson said:


> Were the specified receviers disabled as ordered when the injunction became active?





jacmyoung said:


> The answer is yes, they did, long before the injunction became active.


That did not answer my question. My qualifier was "when the injunction became active". You didn't provide the answer to that.


jacmyoung said:


> How about you answer my question for once? You wanted an IQ test, so go for it.


Too many questions. Ask the one you want an answer to, and I'll do my best, unless of course the answer has a supposition in it.


----------



## scooper

dgordo said:


> Mostly canada, western europe and japan. The rest are highly rigged.


And ours aren't ?

let me tell you - everytime I've had to deal with the court system - it was rigged in favor of the other party - I have no intentions of ever going to court again - someone wrongs me - I'll take it out on them personally.


----------



## dreadlk

Not a very smart thing to post on the Net! This is the exact kind of post they digg up at a later date to use against you.



scooper said:


> And ours aren't ?
> 
> let me tell you - everytime I've had to deal with the court system - it was rigged in favor of the other party - I have no intentions of ever going to court again - someone wrongs me - I'll take it out on them personally.


----------



## phrelin

dgordo said:


> Its still the best in the world.





phrelin said:


> Yeah.... Which ones are you comparing it with?





dgordo said:


> Mostly canada, western europe and japan. The rest are highly rigged.


So you think our court system is superior to say the Canadian, British, French, German, Swedish, Norwegian, and Danish systems for instance? Does that cover all the court system? Say criminal justice? Or comparing the French specialist courts like the tribunal de commerce system? Or the Swedish Patentbesvärsrätten (Patent Appeals)? Just curious.

For instance from my viewpoint, if I were a crime victim or a poor defendant I'd prefer the the French court system. If I were a rich white defendant, of course I'd prefer to be prosecuted in the U.S. Just my opinion.


----------



## dgordo

phrelin said:


> So you think our court system is superior to say the Canadian, British, French, German, Swedish, Norwegian, and Danish systems for instance? Does that cover all the court system? Say criminal justice? Or comparing the French specialist courts like the tribunal de commerce system? Or the Swedish Patentbesvärsrätten (Patent Appeals)? Just curious.
> 
> For instance from my viewpoint, if I were a crime victim or a poor defendant I'd prefer the the French court system. If I were a rich white defendant, of course I'd prefer to be prosecuted in the U.S. Just my opinion.


I was talking purely about federal level civil courts although I agree with your assessment of criminal courts.


----------



## scooper

dgordo said:


> I was talking purely about federal level civil courts although I agree with your assessment of criminal courts.


THat might be a bit different - most of my experiance was with small claims in Virginia.


----------



## dgordo

scooper said:


> And ours aren't ?
> 
> let me tell you - everytime I've had to deal with the court system - it was rigged in favor of the other party - I have no intentions of ever going to court again - someone wrongs me - I'll take it out on them personally.


You should have hired morgan chu. 

Seriously though, our court system gives the little guy much more of a chance than I have seen in any other country. Look at all the times big companies lose in court. Do you think the msft of china could ever lose a case in china?


----------



## dgordo

scooper said:


> THat might be a bit different - most of my experiance was with small claims in Virginia.


Fair enough, small claims courts everywhere are a joke.


----------



## phrelin

dgordo said:


> I was talking purely about federal level civil courts although I agree with your assessment of criminal courts.


Well, the federal civil courts are pretty well run, but I'm not a big fan of juries in complex civil cases.


----------



## jacmyoung

Greg Bimson said:


> That did not answer my question. My qualifier was "when the injunction became active".


Because your question begged the question. Disabling can be done, and is usually done before the disabling order became active. The question whether the receivers were disabled *at the very moment* the order became active does not reflect a reasonable nor a practical objective of the order.

But if you insist, the answer is still a yes, the DVR functions of the "Infringing Products" were disabled when the order became active.

If you do not like my answer, that is only because like TiVo, you conveniently switched the terms, replacing the "Infringing Products" with the "receivers".



> Too many questions. Ask the one you want an answer to, and I'll do my best, unless of course the answer has a supposition in it.


Now back to my question, keep in mind this is a follow up of your initial "IQ test" question.

Your IQ test question was answered by me above, my follow up is, had the term "adjudicated units" been put in the places of the term "Infringing Products" in the order, do you think my answer would have been different?


----------



## Greg Bimson

jacmyoung said:


> But if you insist, the answer is still a yes, the DVR functions of the "Infringing Products" were disabled when the order became active.


Yet no one lost DVR functionality. And DISH/SATS claimed no one would lose functionality when the injunction became active. That isn't disabled.


jacmyoung said:


> Your IQ test question was answered by me above, my follow up is, had the term "adjudicated units" been put in the places of the term "Infringing Products" in the order, do you think my answer would have been different?


Not really. Technically, that was defined in the judgment and injunction.


----------



## jacmyoung

Greg Bimson said:


> Yet no one lost DVR functionality. And DISH/SATS claimed no one would lose functionality when the injunction became active. That isn't disabled.


As long as the DVR functions were disabled from the "Infringing Products" then the order, as it was specified, had been followed. One should not expand the order specifications to suit his needs. Therefore the only thing you should argue is, does the term "Infringing Products" mean anything?

But wait till you read my answer below.



> Not really. Technically, that was defined in the judgment and injunction.


I am glad you passed my IQ test.

The fact of the matter is, regardless what term did TiVo put in the injunction to describe those 4 million DVRs in short hand, whether the "Infringing Products", or the "adjudicated units", or your "specified receivers", the outcome should not be different.

Because by law, any short hand term to define the DVRs must describe only those that were adjudicated to infringe during the trial. That means that term must only describe those 8 named DVRs configured with the old software, because during the trial, only those 8 named DVRs configured with those specified old software were found to have infringed. That term, whatever it may be, cannot define anything more, anything less.

Therefore once any modifications were done to them, they became different things, and since they became different things, that term no longer described them, i.e. no longer applied to them.

That is not to say they may no longer be subject to the order. If they are only colorably different, and also are proven to also infringe by clear and convincing evidence, they are still subject to the order, including the disabling order.


----------



## deaincaelo

Ecostar asked for the injunction to include language to allow them to modify the receivers. They didn't get it. They also didn't get the ability limited like they do with the current injunction. It might be argued that the judge need not spell out this prohibition. On the other hand, its hardly fair to prohibit someone from doing something that they asked you about without telling them about it. . . and then act surprised when they do it.



> That isn't disabled.


Maybe in reality, but this is the east district court of texas. That's about as far from reality as you can get.

Echostars legal strategy is that the Infringing Products have all been disabled, recycled, and replaced by the new software. The new software is also Imaginary Property. If they had been replaced by, say VIP receivers, I doubt anyone would be having an issue with this.

Tivo's remaining claim is Imaginary Property. No device exists that embodies it. You must go that far down the rabbit hole to remain consistent in this case. If you lived in a reality that respected existence as a pre-requisite for patentability or enforceability, you would have had to throw the case out 2 years ago when only claim 32 remained. Or at least reversed and remanded it in whole.

So now you have precedent within the same case that Imaginary Property can have its rights enforced just like real property. That means that if the judge is to apply the rules consistently he must treat the reimangeneered "new devices" just as valid as a 612.

Does that take the bite out of the injunction? No. The 612 and the Imaginary DVRs can still be held in contempt under the colerable difference clause. There is no reason to treat these Imaginary Properties differently. However, he did. I think it displays a bias that is extrajudicial. 
Maybe I'm wrong. Maybe I'm just PO'ed at the whole patent system that threatens inverters and taking it out on folsum.


----------



## Greg Bimson

jacmyoung said:


> As long as the DVR functions were disabled from the "Infringing Products" then the order, as it was specified, had been followed.


No, because the disable period as spelled out in the injunction was until the patent expired. The DVR functions are still enabled, so that is a violation, unless the Court of Appeals or SCOTUS decides to make new case law.


jacmyoung said:


> Because by law, any short hand term to define the DVRs must describe only those that were adjudicated to infringe during the trial. That means that term must only describe those 8 named DVRs configured with the old software, because during the trial, only those 8 named DVRs configured with those specified old software were found to have infringed. That term, whatever it may be, cannot define anything more, anything less.


That is the entire point. Joe Blow's five year old DP501 was adjudged as an infringement. The court issued an order to disable almost all of those units. Were those units disabled for the life of the patent when the injunction became active? They aren't "different units", as those units were defined in the injunction already.

DISH/SATS can now make units that were adjudged as infringements so that they no longer infringe? Let the court know that. Even Judge Folsom was astonished to find that DISH/SATS didn't let him know about a possible workaround.


deaincaelo said:


> Echostars legal strategy is that the Infringing Products have all been disabled, recycled, and replaced by the new software.


Yet according to the definition within the injunction, those are still "Infringing Products".

Remember, DISH/SATS argument about the disablement provision is two-fold:
1) Infringing Products means something other than the eight models of DVR enumerated and adjudged as infringements. However, "Infringing Products" was defined within the injunction, and DISH/SATS cannot argue (or shall I say won't win an argument) that "Infringing Products" means products which infringe.
2) The disable provision of the injunction was followed, yet no DVR functionality was removed as the injunction became active.

Those are DISH/SATS only two legal arguments, neither of which hold any water. DISH/SATS is hanging their hat on that they no longer infringe, hoping to get out of the disablement provision. But that road is frought with peril, as the arguments used to prove infringement during the trial were simply used to prove that the modifications aren't colorably different and still infringe the two patent claims.


deaincaelo said:


> If they had been replaced by, say VIP receivers, I doubt anyone would be having an issue with this.


I agree completely, and have said so from the beginning. A receiver swap would worked around the disable provision.


deaincaelo said:


> Tivo's remaining claim is Imaginary Property. No device exists that embodies it. You must go that far down the rabbit hole to remain consistent in this case.


There isn't one claim; there are two. They are claims 31 and 61, which provide for a "process" and an "apparatus". Therefore, this isn't about "Imaginary Property", but a receiver.

Edit: *This dispute is not a two-party process.* There is a third party that has a vested interest to make sure they get the ruling correct and be able to apply that ruling to future disputes.Does anyone think the courts would look kindly on a party that tries to redefine court terms and ignore orders? Do the courts want to have numerous disputes and constant re-evaluations of inringement over units that were found as infringements? The courts will make sure that the process is followed for the infringer to receive their get-out-of-disable free card.​Even Echostar's General Counsel knew this a few years earlier:


David Moskowitz said:


> Well, we are spending some engineering resources to try to develop workarounds which would make our products non-infringing even under the analysis that the District Court gave, and we've made good progress in that regard, but we're not finished with that development. *And until that development is completed and implemented and a court concludes that yes, indeed, it is a valid workaround*, we can't say we've got one. But we're certainly doing all of the things that we can prudently to look at this from every angle we can.


----------



## jacmyoung

Greg Bimson said:


> No, because the disable period as spelled out in the injunction was until the patent expired. The DVR functions are still enabled,


Not enabled, nor reinstalled in the "Infirnging Products".



> unless the Court of Appeals or SCOTUS decides to make new case law.That is the entire point.


The entire point is, no case law had ever permitted an injunction, regardless how many provisions in it, to *prohibit any acts* that are not infringment of the patent. To the contrary, to prohibit the act (the act of using a non-infringing DVR) that is non-infringing, is to set a new standard.

The law is very clear, in a patent infringement case, the only purpose of an injunction is to prohibit an act, if such act is an infringing act, no more, no less. That is why what specific terms you put in an injunction is not a determining factor, nor what you think what the order is really intended to do or not do. Becasue the controlling patent law has already spoken on what an injunction should be interepreted, as the appeals court said:



> Therefore, *the only acts* the injunction may prohibit are infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices. *In order to comply with Rule 65(d)*, the injunction should explicitly proscribe *only those specific acts*.


TiVo is saying, their injunction can prohibit the act of using the DVR functions by the 8 named DVRs already with the end users, even if the act of using the DVR functions is no longer an infringing act, because according to TiVo, and the judge agreed, that this injunction is special, has special intent if you interpret it in their favor.

When the appeals court begins to interpret this injunction, they must do so de novo, meaning disregard any previously stated interpretations, but to interpret it all over again on their own, and naturally, the appeals court's interpretation should not overule their own above standard I have in the quote, and the only way it can happen is to agree with E*.

That is correct, even if you believe 1000% that your interpretation is correct, the appeals court still cannot adopt yours, because doing so will have violated Rule 65(d), the Statute of the Congress of the United States.


----------



## Greg Bimson

jacmyoung said:


> The entire point is, no case law had ever permitted an injunction, regardless how many provisions in it, to prohibit any acts that are not infringment of the patent. To the contrary, to prohibit the act (the act of using a non-infringing DVR) that is non-infringing, is to set a new standard.


Still attacking an injunction after the time to challenge has passed?

Besides, one question that needs to be answered: what "non-infringing" products are covered by the disable provision?


jacmyoung said:


> That is correct, even if you believe 1000% that your interpretation is correct, the appeals court still cannot adopt yours, because doing so will have violated Rule 65(d), the Statute of the Congress of the United States.


Again, still attacking a standing injunction.

The appeals court, because DISH/SATS is asking them to look at the injunction, will determine if it is valid. But it is assumed valid up until the point the appeals court would then reverse the injunction, and DISH/SATS would still be in contempt until it is reversed.

Just because an injunction may violate Rule 65(d) does not mean the injunction is invalid. It must be followed until it is ruled upon that it is invalid.


----------



## jacmyoung

Greg Bimson said:


> Still attacking an injunction after the time to challenge has passed?
> 
> Besides, one question that needs to be answered: what "non-infringing" products are covered by the disable provision?Again, still attacking a standing injunction.
> 
> The appeals court, because DISH/SATS is asking them to look at the injunction, will determine if it is valid. But it is assumed valid up until the point the appeals court would then reverse the injunction, and DISH/SATS would still be in contempt until it is reversed.
> 
> Just because an injunction may violate Rule 65(d) does not mean the injunction is invalid. It must be followed until it is ruled upon that it is invalid.


That is exactly the problem with your argument as well as TiVo's and Judge Folsom's, that somehow disagreeing with your interpretation of the injunction is attacking the injunction, such argument contains a fallacy (beg the question), that is one must first assume your interpretation is correct, but whether your interpretation is correct or not is not settled yet, even though you are correct Judge Folsom agreed with you.

Judge Folsom can be wrong too, he was wrong about two claim constructions, and wrong about infringement of the hardware claims, i.e. he was wrong about 50% of his infringement judgment at trial.

As soon as you can accept the fact that there are two opposing views of what this injucntion meant, you will stop accusing me of attacking the injunction.

In my view, the injunction was valid, none of my above post implied that this injunction was invalid. My point is, the injunction was valid because it only prohibited the use of the infringing DVR functions, nothing more, nothing less.

To interpret it in any other way, as you do, as TiVo does, or as Judge Folsom does, will have violated the law, and that is not attacking the injunction, rather attacking your interpetation of the injucntion. So let's be very clear about that.

In no way I have ever attacked the law, the order, I have only been attacking TiVo's viewpoints. Without such basic understanding, then there is nothing to argue about.


----------



## Greg Bimson

jacmyoung said:


> In my view, the injunction was valid, none of my above post implied that this injunction was invalid. My point is, the injunction was valid because it only prohibited the use of the infringing DVR functions, nothing more, nothing less.


No, it ordered adjudged infringing DVR functions disabled, not "infringing DVR functions".


jacmyoung said:


> To interpret it in any other way, as you do, as TiVo does, or as Judge Folsom does, will have violated the law, and that is not attacking the injunction, rather attacking your interpetation of the injucntion. So let's be very clear about that.


If you are saying simply that the injunction is "invalid" because it violates the law, that is a collateral attack on a standing injunction. The time to correct or attack an invalid injunction is upon appeal, not during a contempt proceeding. DISH/SATS would have had to appeal the injunction during the same appeal when the Hardware Claims were reversed. DISH/SATS is now finally attacking the amended injunction written by Judge Folsom for the finding of contempt. However, even if the injunction were to be struck down, the finding of contempt would not be.

TiVo has cited plenty of case law refuting attacks on an injunction during a contempt proceeding as a defense for violations of the injunction.

I mean, let's get real here:
DISH/SATS does not get to decide that the modifications to adjudged infringing receivers are now no longer infringing. That is the court's job.
DISH/SATS does not get to interpret that the injunction does not conform to Rule 65(d) and therefore they don't have to follow it. That is the court's job.


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## jacmyoung

Greg Bimson said:


> ...If you are saying simply that the injunction is "invalid" because it violates the law...


Let me try this one last time, if you still cannot understand my English, I must give up.

The injunction in my view was valid and should be validated by the appeals court. BTW I am referring to the old injunction, not the new one. The new one has yet taking effect so I don't care to waste time on it yet. E* was only found to have violated the old injunction, not the new one.

But again, the old injunction was valid, nothing wrong with it.

Your interpretation of the old injunction however, is wrong, not only because the term "Infringing Products" dictated that only the products that continued to infringe were subject to the disabling order, but more importantly:

If your interpretation were correct, you would have forced the injunction to become an invalid one, because based on your interpretation, the injunction will have violated the law. Since it is my belief that the injunction was valid, therefore the conclusion is your intepretation is wrong.

It is simply because I firmly believe the injunction was valid, it led me to conclude that your interpretation of the injunction, as well as the interpretation of TiVo's and the Judge's, were wrong.

The fault is not on the injunction and the wording of it, the fault is on your interpretation of it. E* is asking the appeals court to confirm that E*'s interpretation of the injunction is the correct one, E* is not asking the appeals court to invalidate the old injunction. As a result, you simply cannot accuse E* of attacking the old injunction.


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## Greg Bimson

jacmyoung said:


> Let me try this one last time, if you still cannot understand my English, I must give up.


It isn't your English I don't understand, it is some very faulty premises:


jacmyoung said:


> Your interpretation of the old injunction however, is wrong, not only because the term "Infringing Products" dictated that only the products that continued to infringe were subject to the disabling order...


It is the "interpretation" that is faulty. Because "Infringing Products" is a defined term, there isn't any "interpretation" of it. Therefore, there isn't any way to interpret that the products "dictated that only the products that continued to infringe" were subject to the order.

Besides, the "Infringing Products" were found to infringe by the court. It isn't up to anyone other than the court to re-evaluate those products as non-infringing.


jacmyoung said:


> ...but more importantly:
> 
> If your interpretation were correct, you would have forced the injunction to become an invalid one, because based on your interpretation, the injunction will have violated the law. Since it is my belief that the injunction was valid, therefore the conclusion is your intepretation is wrong.


Just because an injunction may not conform to Rule 65(d) does not make that injunction invalid nor does make that injunction "violate the law".

Until a court rules that an injunction is invalid, the injunction must still be followed., even if it turns out to be invalid.

Like I said, the delivery of the message is fine, it is the message that is is flawed.


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## jacmyoung

Greg Bimson said:


> It isn't your English I don't understand, it is some very faulty premises:It is the "interpretation" that is faulty. ...


Finally I hope you understand my English.

The issue here is not whether anyone is protesting the injunction, the issue, and the only issue here is, you believe my intepretation is faulty, and I believe your interpretation is faulty. Neither of us believe the injunction was faulty.

With that in mind, please stop accusing anyone that he is "attacking the injunction" because our goals are the same, attacking each other's ability to interpret.

Assume we now understand the above point, let's look at this issue another way. It seems to me that you at least to some degree accept my argument that if the injunction is interpreted in TiVo's fashion, the injunction can violate the law?

So the conclusion may be, when the appeals court initially reinstated the old injunction, they likely had interepreted it in a way E* did? Because otherwise, if they had interpreted it the TiVo's way, they surely would have noticed, hey, this injunction could violate our standards, therefore we should not reinstate it, rather asked the district court to modify it? Again nothing to do with whether E* had appealed the injunction or not, only that if we accept that the appeals court judges were not morons, they could have actually looked at the injunction and interpreted it on their own before reinstating it?

But the appeals court did not think the old injunction could violate their standards, and the only way that could be true was that they had interpreted it the same way E* did.

The only thing is, how the appeals court interpreted that injunction was never known, they never told us. Of course in reality, they did not have to, no one asked them what were their interpretation back then.

But now, they will have to tell us. That is the only difference between then, and now, as far as the interpretation is concerned.


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## cj9788

jacmyoung said:


> :bang:bang:bang:bang:bang:bang:bang:bang:bang:bang:bang:bang:bang


If you have not figured it out arguing points with Greg is like banging your head against a wall. I found that out during the whole distant network fiasco.

I for one love E* service it is great. I do how ever hate the way they run thier business. It is one law suit and injuntion after another.

Hey Tivo is feeling good right now, going after AT&T and Verizon. You would think that companies would just pay the damn license fee and get on with life.

Aside from the law suits tivo is a struggling company. Since they provide no televison service the tivo dvr is IMO is very limited. The fact that they charge a monthly fee for the box to work is also a turn off. When I first saw tivo in the late 90's I thought what an awesome invention, when I found out about the fee's they charge, and the snooping that they do I never bought one.

I love the dish DVR it works great without problems (hey I never had any). I sub to the AEP so I do not pay those DVR fees and as far as I know E* does not know that I paused and rewatched Janet Jacksons boob about 20 times.

I just wish dish would buy Tivo and get it over with.


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## Ken984

Dish does not have enough money/credit to absorb the poison pill that Tivo has waiting for a hostile takeover attempt. Charlie would need to come up with a whole bunch more fees to cover that.



cj9788 said:


> If you have not figured it out arguing points with Greg is like banging your head against a wall. I found that out during the whole distant network fiasco.
> 
> I for one love E* service it is great. I do how ever hate the way they run thier business. It is one law suit and injuntion after another.
> 
> Hey Tivo is feeling good right now, going after AT&T and Verizon. You would think that companies would just pay the damn license fee and get on with life.
> 
> Aside from the law suits tivo is a struggling company. Since they provide no televison service the tivo dvr is IMO is very limited. The fact that they charge a monthly fee for the box to work is also a turn off. When I first saw tivo in the late 90's I thought what an awesome invention, when I found out about the fee's they charge, and the snooping that they do I never bought one.
> 
> I love the dish DVR it works great without problems (hey I never had any). I sub to the AEP so I do not pay those DVR fees and as far as I know E* does not know that I paused and rewatched Janet Jacksons boob about 20 times.
> 
> I just wish dish would buy Tivo and get it over with.


----------



## scooper

Ken984 said:


> Dish does not have enough money/credit to absorb the poison pill that Tivo has waiting for a hostile takeover attempt. Charlie would need to come up with a whole bunch more fees to cover that.


He could have when it first started - and he should have.


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## jacmyoung

cj9788 said:


> If you have not figured it out arguing points with Greg is like banging your head against a wall. I found that out during the whole distant network fiasco.


But what happened after that? Charlie made a "shameful" workaround of the injunction, FOX motioned for a contempt, the appeals court confirmed that Charlie was not in contempt. Did you tell Greg about that?



> Hey Tivo is feeling good right now, going after AT&T and Verizon...


I don't know about TiVo feeling good or feeling desperate.


----------



## cj9788

jacmyoung said:


> But what happened after that? Charlie made a "shameful" workaround of the injunction, FOX motioned for a contempt, the appeals court confirmed that Charlie was not in contempt. Did you tell Greg about that?
> 
> I don't know about TiVo feeling good or feeling desperate.


Yeah the whole AAD was hashed out here and at satguys. Good times, good times!:lol:

As to TIVO IMO they are bothe feelin good and desparate. They have a good product but there whole business plan sucks. To bad DVR's are not sold or work like VCR's. No monthly fees just connect your cable box, OTA or sat reciver and go


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## Greg Bimson

jacmyoung said:


> Assume we now understand the above point, let's look at this issue another way. It seems to me that you at least to some degree accept my argument that if the injunction is interpreted in TiVo's fashion, the injunction can violate the law?
> 
> So the conclusion may be, when the appeals court initially reinstated the old injunction, they likely had interepreted it in a way E* did? Because otherwise, if they had interpreted it the TiVo's way, they surely would have noticed, hey, this injunction could violate our standards, therefore we should not reinstate it, rather asked the district court to modify it? Again nothing to do with whether E* had appealed the injunction or not, only that if we accept that the appeals court judges were not morons, they could have actually looked at the injunction and interpreted it on their own before reinstating it?


First, no one of importance has determined that there is a "non-infringing product" which is covered by the injunction. So with that out of the way...

Just because an injunction may violate Rule 65(d) does not make it invalid. Just because the Court of Appeals removed the stay of the injunction does not mean they looked at it. They weren't asked to. There was not a challenge of the injunction during appeal, even though DISH/SATS simply had to ask the question.

Now that the injunction is active, DISH/SATS cannot claim a possible violation of Rule 65(d) as their interpretation. That must have been done during the stay.


----------



## jacmyoung

Greg Bimson said:


> First, no one of importance has determined that there is a "non-infringing product" which is covered by the injunction...


No one of importance, or obscurity, will make such determination even if E* completely wins on appeal, so what is your point? There is no requirement, nor can E* even prove non-infringement, in a summary contempt proceeding.

Your above statement points out an incorrect understanding of the summary contempt proceeding, because such interpretation leads to only one conclusion, E* can only be found in contempt, there cannot be another outcome. Because E* cannot prove no infringement even if they disable the DVR functions.


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## jacmyoung

lilyyin99 said:


> any good advice ?


Join E* in that new declaratory judgment suit ride, that is the only way to prove no infringement, and that has always been the route E* wanted to go. I think even Greg is warming up to it He just did not realize it could not be done in the summary contempt proceedings, only done in the new suit.


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## Ken984

He could have never stolen the IP from Tivo in the first place. That would have been the smartest move of all. DirecTV has managed to maintain a healthy working relationship with Tivo, why can't dish?




scooper said:


> He could have when it first started - and he should have.


----------



## dgordo

jacmyoung said:


> No one of importance, or obscurity, will make such determination even if E* completely wins on appeal, so what is your point? There is no requirement, nor can E* even prove non-infringement, in a summary contempt proceeding.
> 
> Your above statement points out an incorrect understanding of the summary contempt proceeding, because such interpretation leads to only one conclusion, E* can only be found in contempt, there cannot be another outcome. Because E* cannot prove no infringement even if they disable the DVR functions.


I think Greg's point is that the injunction has to be valid at this point because no one has ruled otherwise. Maybe the CAFC will rule that the injunction is not valid in this appeal but the issue has never been raised before.

That said, Judge Folsom wrote the injunction and he know exactly what it means. The only opinion that matters pertaining to the meaning of the injunction is his and his alone and he has clearly stated that the named receivers could no longer be used as dvrs regardless of any changes made to them. Did he create an injunction that was unlawful? Perhaps but until it has been ruled illegal it must be followed.


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## jacmyoung

dgordo said:


> I think Greg's point is that the injunction has to be valid at this point because no one has ruled otherwise.


No one is asking the appeals court to invalidate the old injunction.



> Maybe the CAFC will rule that the injunction is not valid in this appeal but the issue has never been raised before.


The only thing E* asks now is that the appeals court should vacate the amended (new) injunction, not because of the disablement provision, rather the so called "inform provision".



> That said, Judge Folsom wrote the injunction and he know exactly what it means.


True.



> The only opinion that matters pertaining to the meaning of the injunction is his and his alone


Not true, if so the appeals court cannot review the injunction "de novo". Be law, the appeals court will review and interpret Judge Folsom's injunction without regard of Judge Folsom's interpretation of his own order. Sounds strange but true.



> Did he create an injunction that was unlawful? Perhaps but until it has been ruled illegal it must be followed.


Again E* does not ask the appeals court to rule that the old injunction was unlawful, only that the old injunction should be interpreted the way E* does. In doing so, the appeals court cannot even consider Judge Folsom's own interpretation. The appeals court will only review E*'s argument, and TiVo's argument, then interpret the injunction for itself, before reaching a decision, that is what a "de novo review" means.

As far as the new injunction, E* asks the appeals court to vacate it due to the "inform provision".


----------



## dgordo

jacmyoung said:


> No one is asking the appeals court to invalidate the old injunction.


But if the old injunction is valid, the finding of contempt had to be appropriate because the named receivers were never disabled. To this point in time it is Judge Folsom's injunction and he knows what he meant when he wrote it. DISH specifically claims that if the injunction means what Judge Folsom says that it means that it must be invalid.



jacmyoung said:


> The only thing E* asks now is that the appeals court should vacate the amended (new) injunction, not because of the disablement provision, rather the so called "inform provision".


With respect to the new injunction I agree.



jacmyoung said:


> True.
> 
> Not true, if so the appeals court cannot review the injunction "de novo". Be law, the appeals court will review and interpret Judge Folsom's injunction without regard of Judge Folsom's interpretation of his own order. Sounds strange but true.


Dish is arguing that the injunction should be reviewed de novo, Tivo doesn't agree. We will see who the CAFC agrees with.



jacmyoung said:


> Again E* does not ask the appeals court to rule that the old injunction was unlawful, only that the old injunction should be interpreted the way E* does. In doing so, the appeals court cannot even consider Judge Folsom's own interpretation. The appeals court will only review E*'s argument, and TiVo's argument, then interpret the injunction for itself, before reaching a decision, that is what a "de novo review" means.


I am aware of what de novo means, but remember, this is just DISH's view. You are stating this as fact. Tivo says that an abuse of discretion standard of review is appropriate and just like DISH they have case law to back up that view. The CAFC will decide what standard of review is appropriate.



jacmyoung said:


> As far as the new injunction, E* asks the appeals court to vacate it due to the "inform provision".


Agreed.


----------



## jacmyoung

http://caselaw.lp.findlaw.com/data2/circs/fed/071019p.pdf



> We now turn to the finding of contempt. We review the district court's finding of contempt for an abuse of discretion, again applying Federal Circuit law. KSM Fastening Sys., 776 F.2d at 1532. There must be clear and convincing evidence of patent infringement to support a district court's finding of contempt. Id.


Recall Judge Folsom said a finding of contempt in this case did not really concern patent law, therefore his regional circuit law applied. But according to the above, the appeals court (Federal Circuit) will apply their own law, not the regional circuit law.



> As with any other legal instrument, interpretation of the terms of an injunction is a question of law we review de novo. See Laitram Corp. v. NEC Corp., 115 F.3d 947, 951 (Fed. Cir. 1997) ("[J]udicial rulings, like statutes, are official legal instruments . . . reviewed de novo on appeal.");


De Novo Review: De novo means to take a new look at the decision being reviewed. There is no presumption of correctness. The case is essentially retried from the beginning. The appeals court will, in effect, substitute its judgment for that of the lower court.


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## jacmyoung

dgordo said:


> But if the old injunction is valid, the finding of contempt had to be appropriate because the named receivers were never disabled.


Only if you interpret the injunction according to Judge Folsom's. If you interpret the injunction according to E*'s, the DVR functions of the "Infringing Products" (which was specifically what the injunction ordered) were disabled.



> To this point in time it is Judge Folsom's injunction and he knows what he meant when he wrote it.


And yet on a de novo review on appeal, what Judge Folsom knew about what his own injunction will be irrelevant.



> DISH specifically claims that if the injunction means what Judge Folsom says that it means that it must be invalid.


That is called "on alternative" argument, not that E* argued it must be invalid, rather that if Judge Folsom's interpretation were correct, the order would have been invalid, for that reason, the injunction should be interpreted in E*'s way.

The "on alternative" arguments throw people off all the time. Because such argument gives people the impression that the person is taking a position that he actually is against taking. He only takes that position to prove his point, not to say he is for that position.

An easy way to find whether E* had asked the appeals court to invalidate the old injunction is simply read the relief section of the E* appeal, it had to be specifically mentioned in there what the things E* wanted the appeals court to do, if it is not mentioned in there, it is not asked for. The appeals court will not do what is not asked for.

As for the other points you raised, see my above post.


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## dgordo

jacmyoung said:


> De Novo Review: De novo means to take a new look at the decision being reviewed. There is no presumption of correctness. The case is essentially retried from the beginning. The appeals court will, in effect, substitute its judgment for that of the lower court.


You and E are making an argument for claim construction, which can be reviewed de novo. Tivo is citing case law stating that the time for reviewing the meaning of the injunction (claim construction) has passed and can no longer be reviewed.


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## dgordo

jacmyoung said:


> Only if you interpret the injunction according to Judge Folsom's. If you interpret the injunction according to E*'s, the DVR functions of the "Infringing Products" (which was specifically what the injunction ordered) were disabled.


I'm not disagreeing with you on this point, only that DISH knew the terms of the injunction well and decided to change what they meant. They were in the room when the injunction was crafted, when tivo expressed concern about how DISH could try to work around the plain meaning and for Folsom's explanation of his meaning of his injunction.



jacmyoung said:


> And yet on a de novo review on appeal, what Judge Folsom knew about what his own injunction will be irrelevant.


If the CAFC were to review the injunction for its meaning (a claim construction) they would do so de novo. The question is can they at this point review the injunction or has the time passed and they are bound by the meaning of the injunction as determined by Judge Folsom?



jacmyoung said:


> That is called "on alternative" argument, not that E* argued it must be invalid, rather that if Judge Folsom's interpretation were correct, the order would have been invalid, for that reason, the injunction should be interpreted in E*'s way.
> 
> The "on alternative" arguments throw people off all the time. Because such argument gives people the impression that the person is taking a position that he actually is against taking. He only takes that position to prove his point, not to say he is for that position.


I love that you are teaching me law. But that is not meaning of an on alternative argument. It is arguing for multiple strategies simultaneously, showing that regardless of any interpretation there is no reasonable conclusion other than the advocate's. IOW, they are arguing both positions because they are for both positions.



jacmyoung said:


> An easy way to find whether E* had asked the appeals court to invalidate the old injunction is simply read the relief section of the E* appeal, it had to be specifically mentioned in there what the things E* wanted the appeals court to do, if it is not mentioned in there, it is not asked for. The appeals court will not do what is not asked for.


A better way is to view the natural consequences of a courts actions and see what the result would be. You don't need to ask for specific relief if you can find a way to have the court give you the relief without asking for it.


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## Greg Bimson

jacmyoung said:


> That is called "on alternative" argument, not that E* argued it must be invalid, rather that if Judge Folsom's interpretation were correct, the order would have been invalid, for that reason, the injunction should be interpreted in E*'s way.


That is where the argument fails:

The injunction is valid. That is why it is in full force and effect.

DISH/SATS argument is that the injunction cannot cover "non-infringing" technology. Then again:


jacmyoung said:


> No one of importance, or obscurity, will make such determination even if E* completely wins on appeal, so what is your point? There is no requirement, nor can E* even prove non-infringement, in a summary contempt proceeding.


So what is the use of arguing that the injunction cannot cover "non-infringing" technology when there is no way to prove "non-infringing" technology in a summary contempt proceeding?

The injunction might be invalid so please interpret it DISH/SATS way. Funny, the injunction is valid (but now stayed), which is why DISH/SATS was found in contempt.

That is why I've been saying over and over again that DISH/SATS cannot challenge the standing injunction. DISH/SATS is claiming (on alternative or not) that if the injunction is interpreted their way, it only applies to "infringing" devices because if it applies to "non-infringing" devices it violates Rule 65(d). That is an argument for review of a proposed injunction, not an argument why a valid injunction was not followed.

DISH/SATS doesn't get to simply make a modification and then become judge, jury and executioner about the injunction orders an actual judge signed. Just because something may be "invalid" in a standing injunction doesn't mean the injunction is invalid. Heck, as you've said, DISH/SATS says the injunction is valid. They've simply decided to ignore it by going with an argument that has no real legal standing:

1) "Infringing Products" means products which infringe (but the definition of the term was given in the injunction and there can be no other meaning)

2) disable means disabling old DVR functionality, but even "disable DVR functionality" was defined in the injunction, with no other meaning, and the disable period is defined as until the patent is expired.

Remember, I argued time and time again that the refusal to disable was a violation "on the face" of the injunction. The entire meat of DISH/SATS arguments lies in the two points I listed above. Is there any wonder why DISH/SATS argument is simply impossible to believe?


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## jacmyoung

dgordo said:


> I'm not disagreeing with you on this point, only that DISH knew the terms of the injunction well and decided to change what they meant. They were in the room when the injunction was crafted, when tivo expressed concern about how DISH could try to work around the plain meaning and for Folsom's explanation of his meaning of his injunction...


E* had already responded to that, what they were talking about was what to do with all the DVRs in the warehouses and already with the distributors. The above issue was not discussed in the context of the DVRs already with the end users.

Additionally, TiVo said themselves, the injunction, and the disabling order, which were proposed by TiVo, and rubber-stamped by Judge Folsom, were meant to prevent further infringement, nothing more, nothing less.



> Ok, on this point I would agree. If the CAFC were to review the injunction for its meaning (a claim construction) they would do so de novo. The question is can they at this point review the injunction of has the time passed and they are bound by the meaning of the injunction as determined by Judge Folsom?


If you read my above post and the quote from the appeals court, yes, if the party asks them to interpret the terms of the injunction, the appeals court will do so de novo automatically. BTW, none of this has to do with "a claim construction" because interpreting an injunction is not interpreting "a claim construction".



> IOW, they are arguing both positions.


We just have to agree to disagree.



> A better way is to view the natural consequences of a courts actions and see what the result would be. You don't need to ask for specific relief if you can find a way to have the court give you the relief without asking for it.


If so, I hope TiVo gives up the position that if E* failed to ask for it, they cannot now hope for it. Because this is basically what TiVo has been saying.

Now on the issue of claim constructions, it is true the appeals court also review them de novo, and it is also true that once affirmed on all appeals, that particular claim construction may not be appealed again. But that only applies to claim constructions that had already been appealed and confirmed, not for those that had never been appealed or not been reviewed before.

TiVo keeps saying the claim construction of "parse" had been affirmed, therefore E* can no longer appeal it. But E* is not appealing the claim construction of "parse" which means "analyze". E* is asking the appeals court to interpret the term "parses audio and video data", more specifically, the term "audio and video data".

How was the term "audio and video data" construed by the district court? Well the district court never did construe this term, nor was this term ever appealed last time. So this term will be reviewed for the first time, and will be reviewed de novo.


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## jacmyoung

Greg Bimson said:


> ...So what is the use of arguing that the injunction cannot cover "non-infringing" technology when there is no way to prove "non-infringing" technology in a summary contempt proceeding.


Because in a summary contempt proceeding, the non-mover (E* in this case) only needs to establish the doubt whether there is still infringement or not. If he can establish such doubt, the summary contempt proceeding must end. That is why he needs not, nor can he even try to prove no infringement in a summary contempt proceeding. He needs to prove no infringement in a new suit.


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## dgordo

1. Review of an injunctions terms is a claim construction.  

2. It is not true that only claim constructions that had already been appealed and confirmed may not be appealed. Certain appeals must be presented at certain times or they are deemed to be waived.

3. Review of the terms of an injunction must be made at a certain time or they are deemed waived. This a major question in this appeal, when did the question of the meaning of the injunction need to be made?


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## Greg Bimson

jacmyoung said:


> Because in a summary contempt proceeding, the non-mover (E* in this case) only needs to establish the doubt whether there is still infringement or not. If he can establish such doubt, the summary contempt proceeding must end. That is why he needs not, nor can he even try to prove no infringement in a summary contempt proceeding. He needs to prove no infringement in a new suit.


But only when it relates to contempt of an injunction against patent infringement. The disable provision applies to devices already found infringing.

Like I said, any issues with those items which were adjudged needed to be addressed before the injunction took effect. If DISH/SATS found some method to modify devices which would have created doubt regarding infringement, then DISH/SATS should have moved the court to get those devices out from under thumb. At least that is what DISH/SATS general counsel said on an analysts' call.

It is truly telling that DISH/SATS did not do that. It is just stalling and delaying (and paying) so that DISH/SATS at some point can finally legally be rid of this TiVo litigation, as opposed to striking a licensing agreement with TiVo.


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## jacmyoung

dgordo said:


> 1. Review of an injunctions terms is a claim construction.


Show me where in the injunction you can find a single claim construction.

The claim term "parses" was construed as "analyzes" during the trial, that is an example of claim construction.

Specifically: "The outcome of an attempt at patent enforcement commonly hinges on *claim construction: the court-accepted definition of specific terms used in patent claims*."

Source: http://www.patenthawk.com/claims.htm

Claim construction has nothing to do with an injunction or interpretation of an injunction.



> 2. It is not true that only claim constructions that had already been appealed and confirmed may not be appealed. Certain appeals must be presented at certain times or they are deemed to be waived.


I hope you read the link I provided several posts above and the quotes by the appeals court. The appeals court said they reviewed a contempt finding for abuse of discretion, and reviewed the interpretation of the injunction terms de novo. No conditions added.

That case (a famous case law BTW) was about the defendants appealing a lower court decision finding that they were in contempt of the court injunction, same as in this appeal.



> 3. Review of the terms of an injunction must be made at a certain time or they are deemed waived. This a major question in this appeal, when did the question of the meaning of the injunction need to be made?


Again I just provided the link several posts above. In that case the appeals court said, during the appeal of the contempt finding, for the interpretation of the injunction terms, they reviewed de novo, no conditions added. In fact in that case, the injunction was actually appealed in the first appeal, and affirmed by the appeals court (without opinion). Meaning in that case, the injunction was never even stayed pending the first appeal, and the defendants (unlike in this case) did appeal that injunction and the appeals court affirmed the injunction.

Yet after the contempt finding, during the next appeal of the contempt finding, the appeals court still said, they would again interpret the injunction de novo in order to decide if the contempt finding was an abuse of discretion or not. Of course in that case the answer was a yes, and the contempt finding was reversed.


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## dgordo

You are using claim in a different context. A claim is the formal assertion of a right. An injunction is that, the right of one party against another. The meaning of that injunction is a claim construction.

With respect to you other points, KSM, Additive Controls and Del Mar Avionics would seem to rule otherwise.

See also: It is black-letter law that “collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available.” Western Water Mgmt., Inc. v. Brown


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## Greg Bimson

"Well, the standing injunction can't be valid if..."

That is a collateral attack on an injunction.

"We interpret that the devices subject to the injunction must be infringing products only, even though there is a definition from the court for _Infringing Products._ We have determined that the devices are now no longer infringing but certainly don't need a court to review that claim. Therefore, *the standing injunction can't be valid if* the injunction can prohibit non-infringing technology. So we'll be the judge and state the injunction is only valid if we keep the receivers on.

So we won't disable devices we declare are no longer infringing, as disabling non-infringing devices is against the rules."

That basically paraphrases DISH/SATS' position, and it is wholly an attack that the injunction is invalid if they did what the injunction said to do: disable Infringing Products.


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## jacmyoung

dgordo said:


> You are using claim in a different context. A claim is the formal assertion of a right. An injunction is that, the right of one party against another. The meaning of that injunction is a claim construction.


An injunction is not a *right*, else it would have been automatic after a finding of infringement. In the Ebay decision, the Supreme Court specifically ruled that an injunction is not automatic, therefore not a right.

Patent owners preventing others from infringing their patent claims, is a right, but an injunction is not a right. In many cases, after the finding of infringement, the infringers were ordered to pay a compulsory license fee as long as they continued to infringe, without any injunction.



> With respect to you other points, KSM, Additive Controls and Del Mar Avionics would seem to rule otherwise.


Statements without specifics and without considering the context of the cases are not persuasive. That appeals court's quote several posts above about reviewing the interpretation of the injunction terms de novo, was actually quoted from KSM.



> See also: It is black-letter law that "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available." Western Water Mgmt., Inc. v. Brown


Only if E* is in fact attacking the injunction, which E* is not. But even if you may be right that E* is attacking the injunction (another on alternative), then only the attack must be stopped, not the E*'s request for the appeals court to review its interpretation of the injunction, which must be done de novo, i.e. without regard of Judge Folsom's own interpretation.


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## dgordo

The enforcement of an injunction is a right.

Saying that the injunction doesn't mean what Folsom says that it means is a collateral attack on the injunction. The time for reviewing the meaning of the injunction was during the direct appeal stage. That time has passed.


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## jacmyoung

Greg Bimson said:


> We interpret that the devices subject to the injunction must be infringing products only, even though *there is a definition* from the court for _Infringing Products._


Which definition is that? Be specific.



> We have determined that the devices are now no longer infringing but certainly don't need a court to review that claim.


Because the court never ordered E* to seek any review. Now in the amended injunction the court does order E* to seek such reviews, so E* is challenging this new injunction, see the difference?



> Therefore, the standing injunction can't be valid if the injunction can prohibit non-infringing technology.


Show me where E* said that. Again, even if you can find that quote, only that quote must be disregarded/stopped. The appeals court must still review the interpretation of the injunction de novo.



> That basically *paraphrases* DISH/SATS' position


That is the problem, paraphrasing someone's words and taking them out of the context. Please quote it.


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## jacmyoung

dgordo said:


> ...The time for reviewing the meaning of the injunction was during the direct appeal stage. That time has passed.


Should have said it this way:

"the time for attacking the injunction has passed, not the time for reviewing the meaning of the injunction. I have provided case after case, your did not.


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## dgordo

jacmyoung said:


> Should have said it this way:
> 
> "the time for attacking the injunction has passed, not the time for reviewing the meaning of the injunction. I have provided case after case, your did not.


It is black-letter law that "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available."


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## jacmyoung

dgordo said:


> It is black-letter law that "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available."


Not "de novo review of the injunction terms during contempt proceedings is prohibited if earlier review of the injunction was available."

Go back to read that linked case, the infringer first appealed (asked for review) of the injunction, the appeals court affirmed the injunction, later came the contempt proceedings, that was after the earlier review. At that later point during the contempt proceedings, the appeals court quoted KSM, said they reviewed the interpretation of the terms of the injunction de novo, without the infringers even asking them to. As a result of such de novo review, they reversed the contempt finding.


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## dgordo

Correct, not de novo review, but any review.

I am extremely familiar with the Abbott case. The CAFC didn't look into the terms of the injunction but rather the interpretation of the injunction. The CAFC here could do the same but they cant review the meaning of the injunction.


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## jacmyoung

dgordo said:


> ...The CAFC didn't look into the terms of the injunction but rather the interpretation of the injunction. The CAFC here could do the same but they cant review the meaning of the injunction...


and the very specific prohibition provision, where the infringers were prohibited from obtaining FDA permit *approval* of their infringing drugs. So when the infringers filed an FDA permit *application* of the infringing drugs, and when the district court found them in contempt of the injunction, the appeals court reversed that finding, because after their de novo review, it was the appeals court's view that the injunction did not specifically prohibit the infringers from "applying" for the FDA drug permit, only not to get the "approval" of such FDA permit.

So you see, they did look into the term called "approval", and found that it meant something different than the term "application".



> The CAFC here could do the same but they cant review the meaning of the injunction.


Let's do the same then. Here, E* argues that they did disable the DVR functions (i.e. the storage and playback of all&#8230;from the hard drive) of the Infringing Products, when they were overwriting the old software, then they brought back the DVR functions (i.e. &#8230;hard drive) to the DVRs after the new software had completed downloading and that the DVRs had become non-infringing products, i.e. no longer Infringing Products. The order never said E* may not reinstall the DVR functions back onto any non-infringing products.

So here let's say we are not asking the appeals court to review the "meaning of the injunction" rather to review de novo if the E*'s above conduct indeed violated the injunction or not. Exactly the same as in the Abbott case.

You see I have made concession after concession to respond to your counter arguments, which I am not obligated to do as a non-mover at all, yet I continue to conform to the case law.


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## dgordo

Thats all interesting but that isnt what happened in the Abbott case. The order did not prohibit Torpharm from obtaining FDA approval it enjoined the FDA from approving the generic.

This is what the injunction said:

"TorPharm, Inc., Apotex, Inc., Apotex Corp., and their respective affiliates, successors in interest, and assigns are enjoined from *commercially manufacturing, using, selling, or offering to sell generic divalproex sodium* which the Court has found to be infringing within the United States, or from importing such product into the United States, until Abbott's U.S. Patent Nos. 4,988,731 and 5,212,326 expire and defendants have received final approval from FDA to market generic divalproex sodium.

The effective date of any approval by FDA of ANDA No. 75-112, or any other application concerning defendants' generic divalproex sodium which the Court has found to be infringing, shall be no earlier than January 29, 2008, the date of expiration of Abbott's U.S. Patent Nos. 4,988,731 and 5,212,326."

The expanded injunction prohibited Apotex from:
commercially manufacturing, using, selling, or offering to sell generic divalproex sodium which the Court has found to be infringing, including divalproex sodium products synthesized using the processes employed in connection with ANDA No. 77-615, within the United States, or from importing such products into the United States, until Abbott's U.S. Patent Nos. 4,988,731 and 5,212,326 expire and defendants have received final approval from FDA to market generic divalproex sodium.

This is what the court said:

"Judge Posner interpreted the injunction issued in Abbott III as prohibiting Apotex from manufacturing any generic divalproex sodium the court found to be infringing. Abbott V, 455 F. Supp. 2d at 835. While we agree that Apotex could not manufacture generic divalproex sodium in the United States, there is no evidence here that Apotex actually did so. Rather, it is undisputed that Apotex's actions in attempting to design around the Abbott patent claims occurred outside the United States. Since Apotex did not make, use, sell, offer to sell in the U.S. or import into the U.S. generic divalproex sodium, it did not violate the injunction.

Further, while we agree that Apotex's filing of the Nu-Pharm ANDA with a paragraph IV certification was an act of infringement under 35 U.S.C. § 271(e) since Apotex's purpose in doing so was to obtain the FDA's approval to market generic divalproex sodium in the U.S. before expiration of the Abbott patents, we cannot agree that Apotex's actions actually violated the original injunction. In this regard, the district court *impermissibly interpreted the original injunction as prohibiting acts beyond its plain terms* in violation of Fed. R. Civ. P. 65(d)."

"The injunction contains no "explicit notice" to Apotex that the filing of a new ANDA, by itself or a straw party, was forbidden. Therefore, *Apotex is foreclosed only from the conduct specifically prohibited, i.e., making, using, selling, offering for sale in the U.S. or importing into the U.S. infringing generic divalproex sodium.*"

In the current case DISH was actually found in contempt for violating plain terms of an injunction.


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## Greg Bimson

jacmyoung said:


> Let's do the same then. Here, E* argues that they did disable the DVR functions (i.e. the storage and playback of all&#8230;from the hard drive) of the Infringing Products, when they were overwriting the old software, then they brought back the DVR functions (i.e. &#8230;hard drive) to the DVRs after the new software had completed downloading and that the DVRs had become non-infringing products, i.e. no longer Infringing Products.


This is incorrect.

DISH/SATS never argues that there are no longer any "Infringing Products". That is the eye of the needle DISH/SATS tried to exploit when they redefined the term "Infringing Products" as products that no longer infringe.

That was the whole problem. When DISH/SATS appealed the finding of contempt asking for a stay of the injunction, they finally admitted to the Court of Appeals that DISH/SATS believes there are no longer any "Infringing Products". That argument cannot be made now for the Court of Appeals to review; it was never presented in Judge Folsom's court because DISH/SATS had to interpret "Infringing Products" as products which infringe.


jacmyoung said:


> The order never said E* may not reinstall the DVR functions back onto any non-infringing products.


No, the order said that eight models of DVR were to have their storage to and playback from a hard drive of television data disabled for the life of TiVo's Time Warp patent.

It is amazing how a direct order which has many defined terms is being interpreted. And those terms which DISH/SATS redefines are simply being glossed over as a plausible interpretation.


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## jacmyoung

dgordo said:


> ..."Further, while we agree that Apotex's filing of the Nu-Pharm ANDA with a paragraph IV certification was an act of infringement ... we cannot agree that Apotex's actions actually violated the original injunction. In this regard, the district court *impermissibly interpreted the original injunction as prohibiting [infringing] acts beyond its plain terms* in violation of Fed. R. Civ. P. 65(d)."


In the Abbott case, the district court was correct in determining that Apotex's action was an infringement, and since his injunction was meant to prohibit infringement, he found such action a contempt.

The appeals court said no, even though filing an DFA application was an act of infringement, the injunction nevertheless did not specifically prohibit such specific infringing act.

Now let's look at this TiVo case:

The injunction meant to prohibit further infringement of the TiVo patent. In doing so, it prohibited the sale, use...of Infringing Products, additionally, it ordered the DVR functions disabled from the Infringing Products already with the end users, and DVR functions not *reinstalled* back to the Infringing Products.

E* disabled the DVR functions from the Infringing Products when they downloaded the new software because during the download, the DVRs were completely disabled. So the only question is whether E* followed the order by not *reinstalling* the DVR functions to the *Infringing Products*.

E* argues that since after the software download, the DVRs were no longer infringing products, therefore they were no longer defined as Infringing Products as specified in the order. Therefore they never *reinstalled* the DVR functions back on to any Infringing Products.

TiVo argues that Infringing Products is not a limiting term, it does not require that the products must still be infringing products to fall in the Infringing Products definition. In other words, even if the products no longer infringed, they were still Infringing Products.

The appeals court's job is now to review the issue de novo, to interpret the injunction, and to decide if E*'s argument is correct, or if TiVo's argument is correct. In doing so, the appeals court must not consider Judge Folsom's opinion on this particular issue, because:



> We review the district court's finding of contempt for an abuse of discretion, again applying Federal Circuit law. KSM Fastening Sys., 776 F.2d at 1532. There must be clear and convincing evidence of patent infringement to support a district court's finding of contempt. Id. As with any other legal instrument [such as the FDA provision, or the disabling provision], *interpretation of the terms of an injunction* is a question of law we review de novo.


The term both E* and TiVo ask the appeals court to review is the "Infringing Products". Each has offered their own interpretation, now it is the appeals court's turn to review it de novo.

How dare anyone to say the appeals court cannot review it de novo, when the appeals court has said they review the interpretation of the terms of the injunction de novo, and also each party has offered its own interpretation and urged the appeals court to adopt it?


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## jacmyoung

Greg Bimson said:


> This is incorrect.
> 
> DISH/SATS never argues that there are no longer any "Infringing Products". ...


What are your talking about? Everything E* has been arguing about is that they no longer have the "Infringing Products".


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## deaincaelo

dgordo said:


> The only opinion that matters pertaining to the meaning of the injunction is his and his alone and he has clearly stated that the named receivers could no longer be used as dvrs regardless of any changes made to them.


Does that include taking the hard drive out and using it in a 612? If not, where and how is the line determined between modifying the old receivers and using parts from the old receiver in a new construction?



> He could have never stolen the IP from Tivo in the first place.


At this point, there is no evidence that Echostar stole any IP from tivo that tivo didn't steal from the public domain. There is no way to prevent yourself from doing so.


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## dgordo

jacmyoung said:


> The term both E* and TiVo ask the appeals court to review is the "Infringing Products". Each has offered their own interpretation, now it is the appeals court's turn to review it de novo.
> 
> How dare anyone to say the appeals court cannot review it de novo, when the appeals court has said they review the interpretation of the terms of the injunction de novo, and also each party has offered its own interpretation and urged the appeals court to adopt it?


The CAFC cant look into what E and Tivo believe infringing products means at this point. The time for that has passed. The CAFC could only look into how Judge Folsom interpreted the term infringing products, which he was smart enough to define and give plain meaning within the injunction.


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## jacmyoung

dgordo said:


> ...The CAFC could only look into how Judge Folsom interpreted the term infringing products...


This is the same as saying the CAFC can only *review* Judge Folsom's *interpretation of the terms of the injunction*.



> which he was smart enough to define and give plain meaning within the injunction.


And yet the CAFC said such reveiw must be de novo, i.e. without regard of what the district court's opinions. Of course no regard of the lower court arguments is the same as saying regard only the parties' arguments, this is what de novo means.

De novo review means let the trial start all over. When a trial starts, who do you listen to? Of course the parties involved in the trial, not a judge sitting in a different court. That is not to say a judge's opinion related to the issue will not be discussed, but only if after considering the parties' arguments, when the appeals court *independently* makes their judgment, they can tell us if their judgment agrees with Judge Folsom's or not. In doing so, the appeals court may not rely on Judge Folsom's judgment, otherwise a de novo review has no meaning.


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## Greg Bimson

jacmyoung said:


> What are your talking about? Everything E* has been arguing about is that they no longer have the "Infringing Products".


DISH/SATS has been arguing they no longer have any "products which no longer infringe". That is not the defintion of "Infringing Products".

Because "Infringing Products" was defined clearly by the court, there is no way to change nor interpret the definition.

If anyone wonders why TiVo spent less than a paragraph arguing about "Infringing Products", it is because the term was defined by the court. It *cannot* be interpreted.

And they obviously exist, according to the definition.


----------



## dgordo

jacmyoung said:


> This is the same as saying the CAFC can only *review* Judge Folsom's *interpretation of the terms of the injunction*.


Its not the same, its a distinction that is apparently difficult to grasp. The CAFC could only say, given the plain meaning of the term, was his conclusion correct.



jacmyoung said:


> And yet the CAFC said such reveiw must be de novo, i.e. without regard of what the district court's opinions. Of course no regard of the lower court arguments is the same as saying regard only the parties' arguments, this is what de novo means.
> 
> De novo review means let the trial start all over. When a trial starts, who do you listen to? Of course the parties involved in the trial, not a judge sitting in a different court. That is not to say a judge's opinion related to the issue will not be discussed, but only if after considering the parties' arguments, when the appeals court *independently* makes their judgment, they can tell us if their judgment agrees with Judge Folsom's or not. In doing so, the appeals court may not rely on Judge Folsom's judgment, otherwise a de novo review has no meaning.


I don't need your lecture on the meaning of legal terms.

You are arguing that the CAFC must try to interpret the application of the terms of the injunction without reading the injunction. You are arguing that the CAFC cant give any deference to the plain meaning of the wording of the injunction. If the CAFC were trying to figure out how an ambiguous injunction was interpreted they would use a de novo standard of review. That is certainly what DISH wants the CAFC to do but the term is defined and given plain meaning within the injunction. Even assuming that the CAFC did decide to conduct a de novo review, they wouldn't disrupt a term with a clear definition. That's not a review of a judge's judgment, that's an attack on the clear terms of an injunction.


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## dgordo

deaincaelo said:


> Does that include taking the hard drive out and using it in a 612? If not, where and how is the line determined between modifying the old receivers and using parts from the old receiver in a new construction?


Taking the hard drive out and using it in a 612 would not violate the disable provision, but would it create a device that is more than colorably different?



deaincaelo said:


> At this point, there is no evidence that Echostar stole any IP from tivo that tivo didn't steal from the public domain. There is no way to prevent yourself from doing so.


You are assuming facts not yet in the record. At this point in time, Tivo has a perfect valid patent and a verdict that DISH willfully infringed that patent.


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## Greg Bimson

jacmyoung said:


> In the Abbott case, the district court was correct in determining that Apotex's action was an infringement, and since his injunction was meant to prohibit infringement, he found such action a contempt.
> 
> The appeals court said no, even though filing an DFA application was an act of infringement, the injunction nevertheless did not specifically prohibit such specific infringing act.


Did you even read the decision from the Court of Appeals? The act of filing an application with the FDA was not an act of infringement covered by the injunction:Since Apotex did not make, use, sell, offer to sell in the U.S. or import into the U.S. generic divalproex sodium, it did not violate the injunction.​Further, while we agree that Apotex's filing of the Nu-Pharm ANDA with a paragraph IV certification was an act of infringement under 35 U.S.C. § 271(e) since Apotex's purpose in doing so was to obtain the FDA's approval to market generic divalproex sodium in the U.S. before expiration of the Abbott patents, we cannot agree that Apotex's actions actually violated the original injunction.​Apotex's act of infringement was not covered by the standing injunction. It may have been infringement, but Abbott could not use the standing injunction to hold Apotex in contempt. Abbott would have had to file another suit, because:Apotex is foreclosed only from the conduct specifically prohibited, i.e., making, using, selling, offering for sale in the U.S. or importing into the U.S. infringing generic divalproex sodium.​Meanwhile, DISH/SATS was given notice of the action they must perform once the injunction became active. That one action was not followed.


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## jacmyoung

Greg Bimson said:


> ...If anyone wonders why TiVo spent less than a paragraph arguing about "Infringing Products", it is because the term was defined by the court. It *cannot* be interpreted...


Then don't spend that paragraph. The reason they only spent a paragraph was because their explanation makes no sense, so they tried to brush it off.

Show me where the appeals court said it cannot be interpreted? If not why was TiVo interpreting it, and why was Judge Folsom interpreting it? If it cannot be interpreted, then no one can interpret it, not after the first appeal.

If no one can interpret it, then no decision can be made from it, therefore there should not be a decision of contempt made at all.


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## jacmyoung

dgordo said:


> Its not the same, its a distinction that is apparently difficult to grasp. The CAFC could only say, given the plain meaning of the term, was his conclusion correct.


It is clear from the appeals court own case law, reviewing the interpretation of the terms of the injunction is a de novo review. Therefore when you claim the appeals court may only review Judge Folsom's interpretation of the term of the injunction, such claim disagrees with (not distinguishes from) a de novo review.

The only way you can succeed in this argument is if you may prove, that reviewing Judge Folsom's interpretation of the term of the injunction, is *not* a review of the interpretation of the terms of the injunction. Are you up to that task?



> &#8230;You are arguing that the CAFC must try to interpret the application of the terms of the injunction without reading the injunction. You are arguing that the CAFC cant give any deference to the plain meaning of the wording of the injunction.


Utterly false! I am saying the CAFC must try to interpret the application of the terms of the injunction without relying on Judge Folsom's interpretation of the injunction. I am arguing that the CFAC cant give any deference to Judge Folsom's own meaning of the wording of the injunction. Otherwise a de novo review will be pointless.



> &#8230;but the term is defined and given plain meaning within the injunction.


It is defined and given plain meaning within the injunction by Judge Folsom. In a de novo review, Judge Folsom's given plain meaning within the injunction must be disregarded, only E*, and TiVo's conflicting given plain meanings within the injunction will be reviewed, in addition to any meaning the appeals court may take on their own, but not Judge Folsom's.

If after the de novo review, the appeals court's own "given plain meaning within the injunction" happens to agree with Judge Folsom's, E* loses, if the appeals court's own "giving plain meaning within the injunction" happens to disagree with the judge's, E* wins.


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## Greg Bimson

Greg Bimson said:


> ...If anyone wonders why TiVo spent less than a paragraph arguing about "Infringing Products", it is because the term was defined by the court. It cannot be interpreted...





jacmyoung said:


> Then don't spend that paragraph. The reason they only spent a paragraph was because their explanation makes no sense, so they tried to brush it off.


No, the reason TiVo only spent a paragraph was because that is all it takes to dismiss DISH/SATS interpretation of "Infringing Products". Because the term was defined, there is no interpretation.


jacmyoung said:


> Show me where the appeals court said it cannot be interpreted? If not why were TiVo interpret it, and Judge Folsom interpret it? Are you saying only TiVo and the judge may interpret it, not E*?


TiVo didn't interpret it. TiVo simply said DISH/SATS interpretation is incorrect, i.e., "Infringing Products" cannot mean "products that infringe". "Infringing Products" is simply the eight models of adjudged DVR's, because that is how it is defined within the injunction. Invalidate the interpretation, and win the contempt. The answer to the question lies here:


jacmyoung said:


> It is defined and given plain meaning within the injunction by Judge Folsom. In a de novo review, Judge Folsom's given plain meaning within the injunction must be disregarded, only E*, and TiVo's conflicting given plain meanings within the injunction will be reviewed, in addition to any meaning the appeals court may take on their own, but not Judge Folsom's.


Incorrect. The plain meaning of the injunction will not be disregarded. It is always taken into account by the Court of Appeals.

The Court of Appeals will look into DISH/SATS' interpretation of "Infringing Products". My opinion is that DISH/SATS' interpretation will fail miserably, simply because DISH/SATS is trying to interpret a term which has only one definition, and that definition is given within the same document as the order. There is no other plausible interpretation of "Infringing Products".


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## dgordo

jacmyoung said:


> ...text....


Sorry, I don't know how to explain my position any more clearly. 
Its time to move on.


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## jacmyoung

Greg Bimson said:


> TiVo didn't interpret it.


Really?



> TiVo simply said ..."Infringing Products" is simply the eight models of adjudged DVR's, ...


What was that? Was that not TiVo's interpretation?

E*'s interpretation is, "Infringing Products" is simply the eight models of the DVRs that were adjudicated to infringe the patent claims during the trial, and TiVo is *incorrect* for saying if DVRs are now adjudicated to no longer infringe, they must still be those "Infringing Products," i.e. the exact *same* products.

That interpretation of TiVo's simply flies in the face of the fact that those products, defined by the injunction, had already been deemed *different* from the products we have now, by no one other than Judge Folsom himself, when he found the products now, were only colorably *different* than the products *defined* by the injunction.

By the mere finding that one product is only colorably *different* than the other, is a conclusion that they are *different*. It defeats TiVo's assertion that the products defined in the injunction, are the *same* as the products now. Because for TiVo's interpretation to be correct, they must be the *same*.

Therefore TiVo's intrepretation is wrong.


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## jacmyoung

If after the first appeal, parties may no longer try to interpret the injunction, then no one should be allowed to interpret it.

Further more, Judge Folsom should not have conducted the colorable difference analysis, or even if he did he should not have said they were only colorably different, rather have said they were *the same*.

By saying they are different, regardless how different, as long as they are different, then the term (Infringing Products) used to define one, cannot be interpreted to define the other.


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## Greg Bimson

Greg Bimson said:


> TiVo didn't interpret it.





jacmyoung said:


> Really?





Greg Bimson said:


> TiVo simply said ..."Infringing Products" is simply the eight models of adjudged DVR's, ...





jacmyoung said:


> What was that? Was that not TiVo's interpretation?


No. That was the definition from the court. If you wish to call that an interpretation, so be it.

That would be saying, "TiVo's interpretation is the court definition".


jacmyoung said:


> E*'s interpretation is, "Infringing Products" is simply the eight models of the DVRs that were adjudicated to infringe the patent claims during the trial, and TiVo is incorrect for saying if DVRs are now adjudicated to no longer infringe, they must still be those "Infringing Products," i.e. the exact same products.


No.

DISH/SATS interpretation is "Infringing Products" means products that infringe. No more, no less. It is your assertion that "if DVRs are now adjudicated to no longer infringe, they must still be those "Infringing Products". Even DISH/SATS assertion is that by changing the software their producst are no longer infringing, and that has nothing to do with adjudication. And that has nothing to do with the disable provision.


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## jacmyoung

Greg Bimson said:


> ...Even DISH/SATS assertion is that by changing the software their producst are no longer infringing, and that has nothing to do with adjudication.


Then do not re-adjudicate it when E* said the software was different, do not go through another two hearings and in the end decide that they are in fact *different*. Because doing so defeats TiVo's, or the court's (if you insist) interpretation.

Because a term used to define one product, naturally is not meant to define a different product. Not in the strict legal sense, because a legal instrument must be very concise and specific.

Now you can see why E* insisted that Judge Folsom must conduct the colorable difference analysis? Recall initially he ordered a "bench trial" only to do an infringement analysis? But at E*'s request, both TiVo and him agreed to add the colorable difference analysis as the first test.

Now the conclusion is made, they are different. There is no dispute that the term "Infringing Products" in the injunction defined the DVRs with the old software, and there is no dispute that the DVRs with the new software are different than the DVRs with the old software, therefore the term "Infringing Products" shall not define the current different products.

The only way for TiVo to succeed in convincing the appeals court, that a term used in a court order to define one product, can automatically be used to also define another product, is to prove both products are the same. TiVo has failed on that test.


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## Greg Bimson

jacmyoung said:


> Then do not re-adjudicate it when E* said the software was different, do not go through another two hearings and in the end decide that they are in fact different. Because doing so defeats TiVo's, or the court's (if you insist) interpretation.


Wrong.

TiVo believes DISH/SATS is in contempt, for an "on its face" violation of the injunction, namely refusing to disable, so TiVo filed a motion for contempt.

DISH/SATS defense is that "Infringing Products" no longer infringe (yet the courts never evaluated that), the injunction can only cover products which infringe (an attack on the injunction), and the DVR functionality of the "Infringing Products" was disabled (but when the injunction became active, the DVR functionality was enabled), all due to the fact that DISH/SATS has implemented a modification.

TiVo then mentioned to the court that DISH/SATS could also be in violation of the injunction, this time against the infringement provision, because the modification still infringe and are only colorably different than what was adjudged.

There are two distinct arguments.


jacmyoung said:


> Because a term used to define one product, naturally is not meant to define a different product. Not in the strict legal sense, because a legal instrument must be very concise and specific.


Just because the software was changed did not change the definition of "Infringing Products". The invalid assumption here is that by changing the software the "Infringing Products" have become something else.


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## dfd

Does anybody know how long it usually takes for the CAFC to rule?


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## jacmyoung

Greg Bimson said:


> ...The invalid assumption here is that by changing the software the "Infringing Products" have become something else.


This is not an issue of assumption, rather interpretation. It is not to say the Infringing Products had become something else, rather that the Infringing Products had always meant one thing and one thing only, the 8 named DVRs with the old software, it did not define any products that were different. Any products that are different are covered under the "colorable difference provision" of the injunction.

When the injunction was constructed, the term Infringing Products most certainly defined the 8 named DVRs with the old software. I hope you do not dispute that, because the DVRs with the new software did not exist, therefore the term could not possibly have defined the DVRs with the new software.

But now *different DVRs* are in front of us, this much is also not in dispute, because Judge Folsom said so, the DVRs in front of us now are *different* than the ones that were defined by the term "Infringing Products". That is exactly what E* has been saying, else they would not have insisted that Judge Folsom conduct that colorable difference analysis.

Don't avoid the above issues, if you find yourself constantly avoiding them, then there is something wrong with your contention.

On the other hand, E* did not have to answer TiVo's accusations, E* only needs to stick to the above point. Because in the summary contempt proceedings, E* only needs to establish the doubt, TiVo on the other hand must prove by clear and convincing evidence.

Did TiVo prove by clear and convincing evidence that the 8 named DVRs with the old software still exist? If not, then the "Infringing Products", which specifically defined them in the order, no longer existed. If they no longer exist, of course they were disabled.

If you simply refuse this concept, then you must also refuse to accept the judge's conclusion that the products are different. Because only if they are exactly the same, so can the term "infringing Products" apply to them. It is too late to take back that "difference decision".


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## dgordo

dfd said:


> Does anybody know how long it usually takes for the CAFC to rule?


At one point they hinted they may hand down a decision in November but that seems optimistic to me.


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## Greg Bimson

jacmyoung said:


> When the injunction was constructed, the term Infringing Products most certainly defined the 8 named DVRs with the old software. I hope you do not dispute that, because the DVRs with the new software did not exist.


That is wishful thinking. Joe Blow's four year old 625 was declared an "Infringing Product", and with the clear and concise reading of the injunction, has been ordered disabled. Placing some modified software on that receiver didn't change the defintion.

I see you've flip-flopped on the meaning of "Infringing Product", and the interpretation of that phrase still doesn't match the definition of the court.


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## jacmyoung

Greg Bimson said:


> ...I see you've flip-flopped on the meaning of "Infringing Product"...


Where is the flip flop? Be specific, otherwise you are just throwing accusations around like TiVo.


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## dfd

dgordo said:


> At one point they hinted they may hand down a decision in November but that seems optimistic to me.


Thanks.


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## volkl

I enjoy this thread.

The case, as described, is complex. But if a one can escape being found to have acted contemptuously by simply changing the software without giving the judge a chance to review the change first, just seems wrong.

dish/sats and the judge say the software is changed, and even not colorably different, then all dish has to do is say, nope we changed the software again, etc. haha! 

what a joke the legal system is if this stuff works. (please don't ask me to define 'works.')

jacmyoung's and dish/sat's arguments are some of the finest examples of sophistry i've ever had the pleasure of reading.


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## Greg Bimson

jacmyoung said:


> When the injunction was constructed, the term Infringing Products most certainly defined the 8 named DVRs with the old software.





jacmyoung said:


> E* argues that since after the software download, the DVRs were no longer infringing products, therefore they were no longer defined as Infringing Products as specified in the order.


Two different positions, and constantly adding words to a definition that stands on its own.

The reality is that the term "Infringing Products" was defined as the eight models of DVR found infringing. All but 192K of those enumerated units in use by customers were captured by the disable provision.

Changing the software does not make the "Infringing Products" a new device, nor does it change the definition of "Infringing Products".

Heck, just to be clear, Joe Blow's four year old 625 was evaluated and DISH/SATS was found in contempt TWICE for the exact same unit: failure to disable and continuing to infringe.


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## jacmyoung

volkl said:


> I enjoy this thread.
> 
> The case, as described, is complex. But if a one can escape being found to have acted contemptuously by simply changing the software without giving the judge a chance to review the change first, just seems wrong.
> 
> dish/sats and the judge say the software is changed, and even not colorably different, then all dish has to do is say, nope we changed the software again, etc. haha!
> 
> what a joke the legal system is if this stuff works. (please don't ask me to define 'works.')
> 
> jacmyoung's and dish/sat's arguments are some of the finest examples of sophistry i've ever had the pleasure of reading.


You obviously have not enjoyed reading enough. E* has a perfect explanation of why they should not have to seek "pre-approval" of a new software modification, and they are in fact contesting the "pre-approval" provision in this amended injunction.

The reason is simple, if an infringer must seek pre-approval, it means the old products will continue to infringe and not allowed to be used, while the modified products cannot be rolled out until such time the court completes its review of the modification and decides that the modification is a go. We all know how long usually it takes for a court to review anything. It took Judge Folsom over a year to decide if the modification was infringing or not. Not to mention the patent owner can try to delay the pre-approval process too and drag it on and on.

If the infringer should seek a pre-approval before implementation, who should be responsible for the delay in pre-approval and delay in modified products from rolling out? Can the taxpayers afford to pay such lost profit due to the lengthy delay of the rollout of the modified products? Are the courts ready to accept liability for delaying products rollout?

The only reasonable answer is not to request the infringer to seek pre-approval, rather try to determine later if the modification was non-infringing. Because there will be remedy by the court if the modification still is found to infringe, the patent owner can receive damages plus interest, lost profits plus interest, even enhanced damages and attorney cost.


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## jacmyoung

Greg Bimson said:


> Two different positions, and constantly adding words to a definition that stands on its own...


The same position, only one is based on more limited condition than the other.

E* is saying, the term "Infringing Products" only defined the 8 named DVRs that infringed, but if later the 8 named DVRs were modified and no longer infringed, the term "Infringing Products" can no longer define them because they no longer infringe, or to say the later DVRs are no longer defined by the term.

I am saying, the term "Infringing Products" only defined the 8 named DVRs that infringed, if later the 8 named DVRs were modified and became different DVRs (as confirmed by Judge Folsom), the term simply cannot apply to the different products anymore, or the different products can not be defined by that term. Of course no infringement is even better, but is not necessary.

Where is the flip flop? Again be specific, show me where in the above is evidence of a flip flop?


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## Greg Bimson

jacmyoung said:


> I am saying, the term "Infringing Products" only defined the 8 named DVRs that infringed, if later the 8 named DVRs were modified and became different DVRs (as confirmed by Judge Folsom)...


You do realize that the eight models were evaluated by Judge Folsom for "continuing infringement"? They didn't become "different DVR's". They are the same unit targeted by the disable provision which may now operate a bit differently, instead of not operating as a DVR at all.


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## jacmyoung

Greg Bimson said:


> You do realize that the eight models were evaluated by Judge Folsom for "continuing infringement"? They didn't become "different DVR's". They are the same unit targeted by the disable provision which may now operate a bit differently, instead of not operating as a DVR at all.


Then why did the judge say they were only colorably different, which is an admission that they were different, isn't it?

Either they are different or they are the same, make up the mind.


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## jacmyoung

> If a trial court is faced with an overly broad injunction during a contempt proceeding, the court should interpret it according to the rule of law ... from KSM


Here, instead, Judge Folsom says, if in his contempt proceedings, there is a question whether his injunction might be too broad, it is the infringer's job to clarify it before the contempt proceedings, i.e. during the last appeal. If not, that is just too bad.

The quote from the appeals court above clearly conflicts with Judge Folsom's argument. The appeals court said, if during a contempt proceeding (which is the case here) it may appear that the injunction is overly broad, it is the district court's job to interpret it in a way that conforms to the rules, not to interpret it in a way that may violate the rules.

Most certainly the responsibility is squarely on the district court, not on the infringer, to interpret its own order in a way that does not conflict with the rules, regardless what had happened before, whether E* had done this, or had not done that, none of such is relevant when it comes to how Judge Folsom should have interpreted his order during his contempt proceedings.

He simply should not have interpreted his order that had resulted in a conflict with the rules.


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## Greg Bimson

jacmyoung said:


> Then why did the judge say they were only colorably different, which is an admission that they were different, isn't it?


Just because they may be different doesn't mean they aren't Infringing Products.

The order told DISH/SATS to disable DVR functionality within the "Infringing Products" for the life of TiVo's Time Warp patent. Just because a modification would exist, the removal of DVR functionality, does not mean they are no longer "Infringing Products". The model DP-625 which has DVR functionality was supposed to be disabled for the life of the patent, i.e., the modified DP-625 without DVR functionality (a non-infringing product) would still be within the scope of the injunction until the patent expires.

DISH/SATS argument centered around the fact that "Infringing Products" must be infringing, and their change made them non-infringing. DISH/SATS never did state because they changed the software within the eight adjudicated models (i.e., "Infringing Products"), those units no longer exist. It was implied in their argument, but they never did state it. I'd have respected that argument.


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## jacmyoung

Greg Bimson said:


> Just because they may be different doesn't mean they aren't Infringing Products...


Correct, but don't tell me just because they are only colorably different they must still be Infringing Products. If this is the standard, there goes out KSM--the rule of law.

I know very well your point on how to interpret "Infringing Products". But as the last quote I posted from the appeals court, when you try to interpret the injunction during a contempt proceeding, including how to interpret the "Infringing Products", you are required to interpret it so that the outcome conforms to the rule of law, i.e. your interpretation shall not result in finding a violation of an injunction *without* infringement.

We can of course debate what are the meanings of the rule of the law, or even what is the correct meaning of the injunction, but in the end if you refuse to obey the rule of the law, you fail, because the rule of the law is above your injunction and above what you believe is the correct interpretation of your injunction.

When there is conflict between the injunction and the rule of law, the judge must fall back on the rule of law, not on what he thinks is the correct interpretation of his injunction.


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## jacmyoung

Earlier the most recent TiVo v. ATT/U case and the timing of it was briefly discussed.

Another explanation of the timing of the suit may be that TiVo considered the likelihood of the PTO rejecting the software claims in their final action. The PTO's final action (whether rejecting or affirming) should come down in about a few months.

If the software claims are rejected in a few months, ATT/U can ask the court to suspend the proceedings related to the software claims, TiVo will then try to argue that the case is "well in advance" so not to suspend the software claims proceedings.

TiVo cannot afford not to have the software claims in the lawsuit, because it is evident from this case, their hardware claims are much narrower therefore it will be more difficult to prove infringement with only the hardware claims standing.

Of course there are two other newer patents, one of them discloses the art of the multi-room viewing (MRV) which also heavily relies on the time-warp patent (the one in this TiVo v. E* case). It makes sense that TiVo goes after ATT/U because ATT/U aggressively promote their MRV. Though they must first infringe on the time-warp patent in order to infringe on the MRV patent.

The other new patent discloses an art of correcting the inaccuracy of the stop and replay locations in fast forward and fast backward trick plays, caused by slow remote response time. We know slow remote response time is widespread among the Motorola and the DirecTV brands of the DVRs, so it makes sense that the ATT/U DVRs (made by Motorola) may be using some kind of the same art that could infringe on the patent.

This much seems clear, E* does not do as much MRV and has little issue with slow remote response

I did briefly use the ATT/U service after going back to DirecTV. My experience was there was nothing done by Uverse to correct the inaccuracy of the stop locations during trickplays. In other words, the stop locations were inaccurate. But who knows, may be they have improved on that front, and therefore might have infringed as a result.

Both new patents however are continuation of the time-warp patent. I know for sure the "MRV patent" cannot be infringed unless the "time-warp" patent is infringed first, but don't know if the "correction patent" can be infringed without the "time-warp" patent infringed first. By simple reading of the "correction patent" it seems it can be infringed on its own.


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## Greg Bimson

I'd need to go back and review a few things, but the gist of it will be here:


jacmyoung said:


> Correct, but don't tell me just because they are only colorably different they must still be Infringing Products. If this is the standard, there goes out KSM--the rule of law.
> 
> I know very well your point on how to interpret "Infringing Products". But as the last quote I posted from the appeals court, when you try to interpret the injunction during a contempt proceeding, including how to interpret the "Infringing Products", you are required to interpret it so that the outcome conforms to the rule of law, i.e. your interpretation shall not result in finding a violation of an injunction without infringement.


I recall that TiVo argued that KSM need not apply to the originally adjudged devices. However, Judge Folsom did apply it.

Judge Folsom simply ruled that the orignally adjudged devices are "Infringing Products", and put DISH/SATS in contempt for ignoring the disable provision. Judge Folsom also recognized that the modifications to those receivers still make the receivers infringe, and put DISH/SATS in contempt for continuing infringement.

Sure, KSM may or may not apply, but KSM does differentiate between the adjudged and the accused devices.


jacmyoung said:


> We can of course debate what are the meanings of the rule of the law, or even what is the correct meaning of the injunction, but in the end if you refuse to obey the rule of the law, you fail, because the rule of the law is above your injunction and above what you believe is the correct interpretation of your injunction.


Only if the interpretation of "rule of law" applies to what you believe is a misapplication of a standard. I've said before that it is possible that KSM does not apply to a disable provision. Nowhere is it stated KSM is controlling case law for adjudged devices. Nowhere is it stated that KSM cannot be applied with the normal test for finding contempt of an injunction.

It all boils down to how Joe Blow's four-year old DP-625 is addressed. Judge Folsom said as of 8 September 2006 that it and every other DP-625 were infringements, and ordered those receivers disabled.

Changing the software does not make those devices unadjudged. It certainly doesn't make them a different unit from a DP-625 that was installed in a customer home as of the date of the order.

I honestly think that Judge Folsom punted the question whether or not one standard should be subservient to the other.


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## deaincaelo

dgordo said:


> Taking the hard drive out and using it in a 612 would not violate the disable provision, but would it create a device that is more than colorably different?


I have no problem with the judge using colorable difference. My point is just that the hardware by itself is not prohibited, nor is re-using the hardware in a different device. It's the devices as a whole that are prohibited.

now you have the 501-r's. No one here is saying that a newly manufactured 501-r isn't a new device. However, joe blow's identical 501-r is not until it's taken back to the factory, torn apart, and put back together identically. I could say that I did so using VooDoo and it would be undisprovable. This smacks of arbitrary distinction and spectral evidence to me.



dgordo said:


> You are assuming facts not yet in the record. At this point in time, Tivo has a perfect valid patent and a verdict that DISH willfully infringed that patent.


I understand the court doesnt really care about reality, but I read the patent and I've torn apart a VCR at least once in my life. It's the same generic process as interpreted. No one has provided a technically sound argument to the contrary.


----------



## jacmyoung

Greg Bimson said:


> ...Nowhere is it stated KSM is controlling case law for adjudged devices. ...


Yes, KSM is controlling case law for the "accused devices" and the DVRs with the old software were "adjudged devices" but the DVRs with the new software are "accused devices".

If the district court disagrees, then as I said, don't do the colorable difference analysis. A colorable difference analysis is based on the recognition that you actually have the "accused devices" that must be compared to the "adjudged devices".

As I said over and over, a contempt "on the face" should have come down over a year ago, and the appeal would have already come to an conclusion. Though I firmly believe it would still be struck down by the appeals court to uphold the same rule of law, at least the contempt decision would have been true to its claim.


----------



## Greg Bimson

jacmyoung said:


> Yes, KSM is controlling case law for the "accused devices" and the DVRs with the old software were "adjudged devices" but the DVRs with the new software are "accused devices".


But the units ordered disabled are both the "adjudged devices" and the "accused devices". They were adjudged as infringements and again accused of infringing due to the modifications.

It may not have been one or the other, but both. That is how Judge Folsom ruled. Whether or not the colorable difference analysis needed to be completed on the "adjudged devices" remains to be seen. However, my gut tells me that had Judge Folsom found the "adjudged devices" to no longer be infringing, the injunction would have then been modified to exclude those devices, and DISH/SATS would have been found in contempt for failure to disable from the time the injunction became active until the time the "adjudged devices" were found no longer infringing.

Edit: Besides, after DISH/SATS claimed a modification of the "Infringing Products" as a defense against contempt, TiVo simply asked the courts find that the modification is merely colorably different and still infringing. The "prima facie" violation then wasn't the only contemptuous issue on Judge Folsom's plate.


----------



## dgordo

deaincaelo said:


> It's the devices as a whole that are prohibited.


I agree with that point, although others would disagree.



deaincaelo said:


> now you have the 501-r's. No one here is saying that a newly manufactured 501-r isn't a new device. However, joe blow's identical 501-r is not until it's taken back to the factory, torn apart, and put back together identically. I could say that I did so using VooDoo and it would be undisprovable. This smacks of arbitrary distinction and spectral evidence to me.


This is all about the way that DISH begged for the injunction to work. Tivo had every right (and wanted) for all the infringing devices to be removed for the customers homes (which of course makes a disable provision unnecessary) but DISH convinced Folsom that they were able and willing to disable dvr function without removing the devices from the customers homes.



deaincaelo said:


> I understand the court doesnt really care about reality, but I read the patent and I've torn apart a VCR at least once in my life. It's the same generic process as interpreted. No one has provided a technically sound argument to the contrary.


You're not the first to make that claim, and you may be correct, I however am in no position to make that judgment.


----------



## jacmyoung

Greg Bimson said:


> But the units ordered disabled are both the "adjudged devices" and the "accused devices". They were adjudged as infringements and again accused of infringing due to the modifications.
> 
> It may not have been one or the other, but both. That is how Judge Folsom ruled. Whether or not the colorable difference analysis needed to be completed on the "adjudged devices" remains to be seen. However, my gut tells me that had Judge Folsom found the "adjudged devices" to no longer be infringing, the injunction would have then been modified to exclude those devices, and DISH/SATS would have been found in contempt for failure to disable from the time the injunction became active until the time the "adjudged devices" were found no longer infringing.


Let's make sure we understand there are two separate issues here.

The issue we have been debating is one which the modified DVRs are "accused devices" and the DVRs with the old software were "adjudged devices". The question is whether the use of the modified devices violates the injunction regardless if they are compared to the old DVRs and found to be only colorably different and still an infringement by clear and convincing evidence, or not.

The answer is no, you cannot do that.

Next, if the court correctly takes the steps to do the colorable difference and infringement analyses, and finds that the accused are only colorably different and continue to infringe by clear and convincing evidence, can the use of (or not disabling of) the devices be a violation?

The answer is then yes. There is never any dispute on this second one.

Of course since Judge Folsom has already adjudged those accused devices, now the modified DVRs have become adjudged devices. The question on appeal is then whether his findings (only colorable difference and still infringement) are correct or not.

We had debated on the last question too, but the recent debate was not about the last question, rather the first issue.


----------



## jacmyoung

dgordo said:


> I agree with that point, although others would disagree.


The infringing device as a whole was not ordered disabled, only the DVR functions, the infringing device was allowed to be used without the DVR functions, since without the DVR functions, it would no longer infringe.



> This is all about the way that DISH begged for the injunction to work. Tivo had every right (and wanted) for all the infringing devices to be removed for the customers homes but DISH convinced Folsom that they were able and willing to disable dvr function without removing the devices from the customers homes.


And they did. Too bad the court did not order them to destroy the DVRs.



> You're not the first to make that claim, and you may be correct, I however am in no position to make that judgment.


He was incorrect. No matter how similar a DVR is to a VCR, the invention is not about the DVR/VCR functionalities, rather how such functions are performed and whether the method discloses an art that a person of ordinary skill in the field cannot see as obvious based either on prior art or on his/her common sense.

The TiVo invention discloses the art of detecting start codes in an MPEG digital stream, and use such start codes to help the DVRs to pinpoint the exact location of the TV program to stop, or move fast forward or backward...The use of the start codes in the MPEG stream at least for now is considered an invention.

A VCR could not even begin to employ such invention because a VCR does not use digital streams rather analog signal, an analog signal contains no start codes or such digital-only items.


----------



## Greg Bimson

jacmyoung said:


> The issue we have been debating is one which the modified DVRs are "accused devices" and the DVRs with the old software were "adjudged devices". The question is whether the use of the modified devices violates the injunction regardless if they are compared to the old DVRs and found to be only colorably different and still an infringement by clear and convincing evidence, or not.


Ah, but that isn't the only issue. The assumption with that being the only issue is that 'the DVR's with the old software were "adjudged devices".' The inference with that statement is that with a modification of the software the devices are no longer "adjudged devices". DISH/SATS did not present any case law to the contrary, other than their belief that by pushing out software they've deemed non-infringing, it defeats the meaning of "Infringing Products", and DISH/SATS could then with those two interpretations escape from the disable provision.

The other issue is the belief that by simply changing a byte of data within the software that the "adjudged devices" are no longer adjudged as infringements, that the physical device targeted by the injunction no longer exists.

I can appreciate walking on a fine line, but certain elements of the argument, such as calling a four-year old DVR found infringing a new construct, are a bit far-reaching.


----------



## dgordo

jacmyoung said:


> The infringing device as a whole was not ordered disabled, only the DVR functions, the infringing device was allowed to be used without the DVR functions, since without the DVR functions, it would no longer infringe.


Right, DISH was ordered to disable the dvr functions in those devices.



jacmyoung said:


> And they did. Too bad the court did not order them to destroy the DVRs.


You are assuming facts not in the record. When has any court ruled that the dvs functions were disabled?

I agree, Tivo and Folsom really let DISH of the hook with the way they structured the injunction.



jacmyoung said:


> He was incorrect. No matter how similar a DVR is to a VCR, the invention is not about the DVR/VCR functionalities, rather how such functions are performed and whether the method discloses an art that a person of ordinary skill in the field cannot see as obvious based either on prior art or on his/her common sense.
> 
> The TiVo invention discloses the art of detecting start codes in an MPEG digital stream, and use such start codes to help the DVRs to pinpoint the exact location of the TV program to stop, or move fast forward or backward...The use of the start codes in the MPEG stream at least for now is considered an invention.
> 
> A VCR could not even begin to employ such invention because a VCR does not use digital streams rather analog signal, an analog signal contains no start codes or such digital-only items.


Like I said, I'm in no position to make that judgment.


----------



## Curtis52

dgordo said:


> I agree, Tivo and Folsom really let DISH of the hook with the way they structured the injunction.


if the DVRs had been ordered destroyed, I think we'd be in exactly the same situation today.


----------



## jacmyoung

Greg Bimson said:


> ...The inference with that statement is that with a modification of the software the devices are no longer "adjudged devices"...


No, by conducting a colorable difference analysis the premise is the modified devices are no longer the adjudged devices. The adjudged devices do not require a colorable difference analysis.

To understand it, let me try it a different way. The court consistently had defined two types of devices that may fall in the scope of an injunction, the adjudicated devices and the devices that are only colorably different there of. Therefore the adjudicated devices cannot be the devices that are only colorably different there of. The language of the law cannot be redundant and duplicative.


----------



## jacmyoung

dgordo said:


> ...You are assuming facts not in the record.


No, that was my opinion not an assumption of facts.


----------



## jacmyoung

Curtis52 said:


> if the DVRs had been ordered destroyed, I think we'd be in exactly the same situation today.


Good point.


----------



## dgordo

jacmyoung said:


> No, that was my opinion not an assumption of facts.


Fair enough, they way you made the assertion sounded as if you were stating a fact.


----------



## dgordo

Curtis52 said:


> if the DVRs had been ordered destroyed, I think we'd be in exactly the same situation today.


That's certainly possible. DISH could have tried to redefine destroy just as easily as disable.


----------



## scooper

Curtis52 said:


> if the DVRs had been ordered destroyed, I think we'd be in exactly the same situation today.


Exactly what do you mean - "destroyed" ?

The point here being - you should precisely define the action you want to happen - With no "wiggle room".


----------



## dfd

scooper said:


> Exactly what do you mean - "destroyed" ?
> 
> The point here being - you should precisely define the action you want to happen - With no "wiggle room".


How do you do that when people cannot understand a simple word like 'disable'?

dis⋅a⋅ble   [dis-ey-buhl] 
-verb (used with object), -bled, -bling. 1. to make unable or unfit; weaken or destroy the capability of; cripple; incapacitate: He was disabled by blindness. 
2. to make legally incapable; disqualify.


----------



## scooper

dfd said:


> How do you do that when people cannot understand a simple word like 'disable'?
> 
> dis⋅a⋅ble   [dis-ey-buhl]
> -verb (used with object), -bled, -bling. 1. to make unable or unfit; weaken or destroy the capability of; cripple; incapacitate: He was disabled by blindness.
> 2. to make legally incapable; disqualify.


You're thinking like Greg / Dgordo , etc. -

what Echostar / Dish is thinking - the "infringing" DVR functions have been removed from the code of the DVR and replaced by different DVR functions.

Now do you see the point ?


----------



## dfd

scooper said:


> You're thinking like Greg / Dgordo , etc. -
> 
> what Echostar / Dish is thinking - the "infringing" DVR functions have been removed from the code of the DVR and replaced by different DVR functions.
> 
> Now do you see the point ?


They are making an argument I wouldn't have made to my mother, never mind to a judge.

And if my kids tried to pull this on me I know which way I'd rule...


----------



## jacmyoung

scooper said:


> You're thinking like Greg / Dgordo , etc. -
> 
> what Echostar / Dish is thinking - the "infringing" DVR functions have been removed from the code of the DVR and replaced by different DVR functions.
> 
> Now do you see the point ?


Or more accurately, the infringing DVR functions were disabled and replaced with non-infringing DVR functions.


----------



## jacmyoung

dfd said:


> They are making an argument I wouldn't have made to my mother, never mind to a judge.


People regularly make arguments to judges that they would never dream about making to their mothers.


----------



## dfd

jacmyoung said:


> People regularly make arguments to judges that they would never dream about making to their mothers.


Maybe judges need more power; my mother had a spoon that was REALLY powerful. I don't think she needs it now...


----------



## Curtis52

scooper said:


> You're thinking like Greg / Dgordo , etc. -
> 
> what Echostar / Dish is thinking - the "infringing" DVR functions have been removed from the code of the DVR and replaced by different DVR functions.
> 
> Now do you see the point ?


It isn't the DVR _functions_ that were ordered to be disabled. DVR _functionality_ was ordered disabled. That means the ability to function as a DVR was ordered disabled. DVR functionality was defined as the recording and playing back of television data.


----------



## dgordo

dfd said:


> Maybe judges need more power; my mother had a spoon that was REALLY powerful. I don't think she needs it now...


:lol: Mothers are often smarter than judges, or can more easily see through their kids bs.


----------



## Curtis52

dgordo said:


> :lol: Mothers are often smarter than judges, or can more easily see through their kids bs.


"But mommy, I didn't know you wanted to know whether I brushed my teeth _today_".


----------



## scooper

dfd said:


> They are making an argument I wouldn't have made to my mother, never mind to a judge.
> 
> And if my kids tried to pull this on me I know which way I'd rule...


I would have and probably did.

The bigger issue comes down to - 
Are you a "only things allowed are specified, with all else forbidden" or
"anything is allowed, unless it is specifically forbidden" ?

Most people are somewhat inbetween.


----------



## Greg Bimson

scooper said:


> The point here being - you should precisely define the action you want to happen - With no "wiggle room".


The injunction has that precise language.

This one is important:

DISH/SATS had to tell Judge Folsom they followed the injunction's disable order, based upon their interpretation. What are they going to say, that the didn't follow the injunction, for whatever reason? That's automatically a granting of contempt.

Likewise, if the interpretation of the injunction is beyond credibility, then that's automatically a granting of contempt. And that is the finding Judge Folsom spent parts of two pages discussing, even stating DISH/SATS ignored the order.


Curtis52 said:


> It isn't the DVR functions that were ordered to be disabled. DVR functionality was ordered disabled. That means the ability to function as a DVR was ordered disabled. DVR functionality was defined as the recording and playing back of television data.


New software or not. It cannot be "redefined". No matter what other interpretation can be given.


----------



## scooper

Greg Bimson said:


> The injunction has that precise language.
> 
> This one is important:
> 
> DISH/SATS had to tell Judge Folsom they followed the injunction's disable order, based upon their interpretation. What are they going to say, that the didn't follow the injunction, for whatever reason? That's automatically a granting of contempt.
> 
> Likewise, if the interpretation of the injunction is beyond credibility, then that's automatically a granting of contempt. And that is the finding Judge Folsom spent parts of two pages discussing, even stating DISH/SATS ignored the order.New software or not. It cannot be "redefined". No matter what other interpretation can be given.


No it doesn't , or we wouldn't (and Dish / Tivo) keep going round and round about it.


----------



## jacmyoung

dgordo said:


> :lol: Mothers are often smarter than judges, or can more easily see through their kids bs.


My point was, mothers are extremely biased in favor of their kids, it is human nature, judges are not, or at least in theory.

Therefore people do not dream about having to defend themselves in front of their mothers, while they must defend themselves rigorously in front of the judges.

A mother probably will not believe her kid a murderer even if she sees the kid murdering someone right in front of her own eyes, she will probably think her kid did a good thing by getting rid of a scum of the earth and doing the humanity a big favor, but a judge does not make that assumption when faced with the same evidence.


----------



## dgordo

Or she'll know her kid so well she knows her kid is scum.


----------



## jacmyoung

Curtis52 said:


> ... DVR _functionality_ was ordered disabled. That means the ability to function as a DVR was ordered disabled. DVR functionality was defined as the recording and playing back of television data.


Disagree. It was "*the* DVR functionalities" that were ordered disabled, not "*any* DVR functionalities". "The DVR functionalities (i.e. ...)" must be interpreted to mean "the infringing DVR functionalities (i.e. ...that are infringing storage and playback of...)."

The reason is, as stated earlier, when the district court attempts to interpret its own injunction in its contempt proceedings, the court must interpret it in a way that complies with the "rule of law", not to comply with "the face of the injunction", again:



> If a trial court is faced with an overly broad injunction during a contempt proceeding, the court should interpret it according to the rule of law...


Not according to what might appear to be the most reasonable meaning of the injunction on its face. The reason seems pretty straight forward, the court simply cannot violate the law in order to enforce the law.


----------



## jacmyoung

dgordo said:


> Or she'll know her kid so well she knows her kid is scum.


By human nature, a mother considers her kid the most adorable, most honest, most beautiful, and the most decent person on the earth, even if in reality that kid is the ugliest, the biggest liar, the scum of the earth.

There are exceptions of course.


----------



## Curtis52

Greg Bimson said:


> The injunction has that precise language..


Yep. The injunction is the opposite of broad. It is extremely specific. The only way the injunction could be more specific would be to list the exact DVR serial numbers ordered disabled.


----------



## Greg Bimson

jacmyoung said:


> Disagree. It was "the DVR functionalities" that were ordered disabled, not "any DVR functionalities". "The DVR functionalities (i.e. ...)" must be interpreted to mean "the infringing DVR functionalities (i.e. ...that are infringing storage and playback of...)."


Since when does "interpretation" involve adding words that aren't there? "The DVR functionality" was defined, specifically by the phrase that follows it, i.e., disable storage to and playback from the hard drive of television data. There is nothing about "infringing" there.


----------



## Curtis52

Greg Bimson said:


> Since when does "interpretation" involve adding words that aren't there? "The DVR functionality" was defined, specifically by the phrase that follows it, i.e., disable storage to and playback from the hard drive of television data. There is nothing about "infringing" there.


Yep, _functionality_. Singular, not plural. Only one ability was ordered disabled, namely, the ability to function as a DVR.


----------



## jacmyoung

Curtis52 said:


> Yep. The injunction is the opposite of broad. It is extremely specific. The only way the injunction could be more specific would be to list the exact DVR serial numbers ordered disabled.


Whether the injunction is "overly broad" here has nothing to do with the specific language used, rather if such language prohibits non infringing acts or not.

If the language appears to prohibit non-infringing acts, it is overly broad, if it does not then it is not overly broad.


----------



## jacmyoung

Greg Bimson said:


> Since when does "interpretation" involve adding words that aren't there? "The DVR functionality" was defined, specifically by the phrase that follows it, i.e., disable storage to and playback from the hard drive of television data. There is nothing about "infringing" there.


Don't ask me, ask the appeals court. If you simply read the above quote, the appeals court is basically saying, when the court interprets its own injunction in a contempt proceeding, the court should interpret it so that it cannot end up prohibiting non-infringing acts, even if the court must add words, delete words, or twist words, believe it or not.

Still remember that Starbright case? In that case, the court ordered the 6 named paint products be banned from sale, use, put on the shelves...

Later the infringer used a modified formula in the paint products, continued to sell, use and put on the shelves the same 6 named paint products. The patent owner motioned for contempt, but the court denied it. Remember what was the court explanation?

It said, the injunction was meant to prohibit the sale, use, and put on the shelves the "infringing formula", not the actual physical paint products, since the new "formula" no longer seemed to infringe, the infringer was not in contempt to continue to sell, use and put on the shelves, the 6 named paint products.

Despite the fact the injunction never even mentioned the word "formula", only the 6 named paint products. If this is not twisting the words to fit the rules, I don't know what is.


----------



## Greg Bimson

jacmyoung said:


> Don't ask me, ask the appeals court. If you simply read the above quote, the appeals court is basically saying, when the court interprets its own injunction in a contempt proceeding, the court should interpret it so that it cannot end up prohibiting non-infringing acts, even if the court must add words, delete words, or twist words, believe it or not.


That's adding so many different pieces of case law it is almost like Frankenstein.

Besides, there is case law that simply says an order must be followed until such time it is ruled invalid or unlawful.

And we still haven't figured out what "non-infringing acts" were prohibited, simply because I recall nothing has been found "non-infringing".


----------



## jacmyoung

Greg Bimson said:


> ...And we still haven't figured out what "non-infringing acts" were prohibited, simply because I recall nothing has been found "non-infringing".


Nothing can be found to be non-infringing in a contempt proceeding, still confused?

Here is another reason why we do not argue to our mothers, rather to the judges.


----------



## deaincaelo

jacmyoung said:


> He was incorrect. No matter how similar a DVR is to a VCR, the invention is not about the DVR/VCR functionalities, rather how such functions are performed and whether the method discloses an art that a person of ordinary skill in the field cannot see as obvious based either on prior art or on his/her common sense.
> 
> The TiVo invention discloses the art of detecting start codes in an MPEG digital stream, and use such start codes to help the DVRs to pinpoint the exact location of the TV program to stop, or move fast forward or backward...The use of the start codes in the MPEG stream at least for now is considered an invention.
> 
> A VCR could not even begin to employ such invention because a VCR does not use digital streams rather analog signal, an analog signal contains no start codes or such digital-only items.


That might be wha the inventor or the USPTO had in mind, but it's not what judge Folsum ruled. None of the invention that differentiates it from a VCR is in the remaining stand-alone claim. Besides, apparently all the stream carries when it hits the PID parser is the channel ID. No different then tuning a VCR.

Besides, digital-ness is hardly patentable.


----------



## Curtis52

Greg Bimson said:


> That's adding so many different pieces of case law it is almost like Frankenstein.
> 
> Besides, there is case law that simply says an order must be followed until such time it is ruled invalid or unlawful.
> 
> And we still haven't figured out what "non-infringing acts" were prohibited, simply because I recall nothing has been found "non-infringing".


Injunctions can't just prohibit infringement. That would be overly broad. That would allow for a contempt finding even if the infringement was in a different area never before adjudicated possibly even in a device more than colorably different. That's why the rules require specificity as to the acts prohibited and the inclusion of the "colorable difference" phrase. This injunction is not broad. It is extremely specific as to which devices are to be disabled and which acts are prohibited and includes the "colorable difference" phrase.


----------



## jacmyoung

deaincaelo said:


> That might be wha the inventor or the USPTO had in mind, but it's not what judge Folsum ruled. None of the invention that differentiates it from a VCR is in the remaining stand-alone claim. Besides, apparently all the stream carries when it hits the PID parser is the channel ID. No different then tuning a VCR.
> 
> Besides, digital-ness is hardly patentable.


That I agree, if we adopt TiVo and the judge's PID theory, then we must conclude that TiVo's software claims are made obvious by prior PID art, therefore are invalid.

But that is not to say just because a DVR is similar to a VCR in functionality, there cannot be invention in a DVR. Because in reality, the TiVo software claims do not disclose the PID art, rather the start code detection art.

TiVo only was trying to nail E* by disavowing their own invention. The risk of so doing is obvious.


----------



## jacmyoung

Curtis52 said:


> Injunctions can't just prohibit infringement. ...


Read this a few more times:

Infringement is the sin qua non of violation of an injunction on infringement.


----------



## jacmyoung

Curtis52 said:


> Injunctions can't just prohibit infringement. ...


On the other hand, I agree with you 100%, an injunction cannot just say XXX is here by prohibited from further infringement of the patent.

The description of the prohibition must be very specific, concise and clear. But here is the twist, if a very specific, concise and clear provision can be interpreted to prohibit an act that may not infringe, then the court must abandon such interpretation, instead try to come up with an interpretation that does not prohibit an act that may not infringe.

In this case, the only way it can happen is to adopt E*'s interpretation, even if E*'s interpretation makes less sense.


----------



## Greg Bimson

jacmyoung said:


> The description of the prohibition must be very specific, concise and clear. But here is the twist, if a very specific, concise and clear provision can be interpreted to prohibit an act that may not infringe, then the court must abandon such interpretation, instead try to come up with an interpretation that does not prohibit an act that may not infringe.


Look there is a piece being forgotten here.


jacmyoung said:


> Infringement is the sin qua non of violation of an injunction on infringement.


The "Infringing Products" were found infringing back in 2006. Those products are forever under the jurisdiction of Judge Folsom's court. Some seem to think by DISH/SATS doing anything to them it removes the finding of infringement or removes the units from the scope of the disable provision within the injunction.

There has not been ANY case law presented to support the above. And DISH/SATS certainly argued neither point.


----------



## jacmyoung

Greg Bimson said:


> ... Some seem to think by DISH/SATS doing anything to them it removes the finding of infringement or removes the units from the scope of the disable provision within the injunction...


Some actually believe by E* doing the modification to them to remove all the infringing elements, it removes the units out of the scope of the injunction. We must agree to disagee on that.

Now I'd appreciate if you can respond to my above *new points* head on, without simply falling back on your old position which I have responded to many times and agreed to disagree.


----------



## Greg Bimson

deaincaelo said:


> That might be wha the inventor or the USPTO had in mind, but it's not what judge Folsum ruled. None of the invention that differentiates it from a VCR is in the remaining stand-alone claim.


First, there are two standalone claims.

Second, I didn't know VCR's could allow you to rewind and review something you are currently recording. That ability is in both Software Claims of the Time Warp patent.



jacmyoung said:


> Some actually believe by E* doing the modification to them to remove all the infringing elements, it removes the units out of the scope of the injunction. We must agree to disagee on that.
> 
> Now I'd appreciate if you can respond to my above new points head on, without simply falling back on your old position which I have responded to many times and agreed to disagree.


What new points? That an injunction must be "interpreted" using the rule of law? Judge Folsom did just that, when he evaluated the disable order and the accusation of contempt for prima facie violations. Judge Folsom applied the standard three-part test for civil contempt, i.e., the rule of law, and found that DISH/SATS ignored the disable provision of the injunction, thus granting TiVo's contempt motion.

Of course, it is those "new points" that look awfully familiar: that the injunction can't possibly mean what it plainly states and must be reviewed, reinterpreted or rewritten, which is simply a collateral attack on a standing injunction.


----------



## jacmyoung

Greg Bimson said:


> First, there are two standalone claims.


No, the two are basically the same claim, the appeals court did not even bother to recite them separately when discussing the two software claims in the last appeal.



> Second, I didn't know VCR's could allow you to rewind and review something you are currently recording. That ability is in both Software Claims of the Time Warp patent.


As I said before, a VCR was not a good example, after I explained it to deaincaelo, he did not seem to dispute that, so going back to pull out one of his old posts for attack is a straw dog argument.

There are many prior art that describe a DVR that you record and playback at the same time, before this TiVo time warp patent.



> What new points? That an injunction must be "interpreted" using the rule of law?


Correct!



> Judge Folsom did just that


Incorrect! What you have described (the colorable difference and infringement analyses) are *not* Judge Folsom's trying to *interpret* his injunction.

The dispute for the last week in this thread here is his contention that even if the new design is non-infringing, E* is still in violation based on his *interpretation* of the injunction. This is the point everyone has been arguing about for the last week, only you seem to keep losing it and fall back onto the other two issues. There is nothing new about those other two items to resurrect them. But apparently you just like to continue to fall back on the old items.

There is no point of arguing the same things over and over, unless there is new information and new case law you can cite, like I did.


----------



## dgordo

jacmyoung said:


> No, the two are basically the same claim, the appeals court did not even bother to recite them separately when discussing the two software claims in the last appeal.
> 
> As I said before, a VCR was not a good example, after I explained it to deaincaelo, he did not seem to dispute that, so going back to pull out one of his old posts for attack is a straw dog argument.
> 
> There are many prior art that describe a DVR that you record and playback at the same time, before this TiVo time warp patent.
> 
> Correct!
> 
> Incorrect! What you have described (the colorable difference and infringement analyses) are *not* Judge Folsom's trying to *interpret* his injunction.
> 
> The dispute for the last week in this thread here is his contention that even if the new design is non-infringing, E* is still in violation based on his *interpretation* of the injunction. This is the point everyone has been arguing about for the last week, only you seem to keep losing it and fall back onto the other two issues. There is nothing new about those other two items to resurrect them. But apparently you just like to continue to fall back on the old items.
> 
> There is no point of arguing the same things over and over, unless there is new information and new case law you can cite, like I did.


He did interpret his injunction using the rule of law. 
Remember you claim he errored in using 5th circuit law instead of federal circuit law to do so?


----------



## jacmyoung

dgordo said:


> He did interpret his injunction using the rule of law.
> Remember you claim he errored in using 5th circuit law instead of federal circuit law to do so?


Don't even get me started on this one:



> We review the district court's finding of contempt for an abuse of discretion, again applying Federal Circuit law.


What the above means is when it comes to determining contempt of injunction in a patent case, the Federal Circuit law governs, not his 5th Circuit law.


----------



## dgordo

jacmyoung said:


> Don't even get me started on this one:
> 
> What the above means is when it comes to determining contempt of injunction in a patent case, the Federal Circuit law governs, not his 5th Circuit law.


I know you think he applied the wrong law but he did interpret his injunction using the rule of law, the law of the 5th circuit.


----------



## jacmyoung

dgordo said:


> I know you think he applied the wrong law but he did interpret his injunction using the rule of law, the law of the 5th circuit.


Nice try I must confess I left out a few critical words at the very end of that quote:



> If a trial court is faced with an overly broad injunction during a contempt proceeding, the court should interpret it according to *the rule of law quoted from KSM above*.


http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.html

Not any rule of law, but a very specific rule of law applicable to the contempt proceedings in a patent infringement case. Judge Folsom clearly erred by applying the wrong rule of law.


----------



## Greg Bimson

jacmyoung said:


> Not any rule of law, but a very specific rule of law applicable to the contempt proceedings in a patent infringement case. Judge Folsom clearly erred by applying the wrong rule of law.


What do you mean he applied the rule of law incorrectly? Judge Folsom found that all of the models, both the adjudged and new constructs with the modified software, are both merely colorably different and infringe in the same manner as before. Are you saying KSM wasn't used as the standard at all?

In almost every single case where there was a provision against infringement and a provision to do something with the devices found infringing such as a disable provision or recall provision, the disable or recall provision was subject to the regional circuit rule of law, i.e., the three-part test for contempt.


----------



## jacmyoung

Greg Bimson said:


> What do you mean he applied the rule of law incorrectly? Judge Folsom found that all of the models, both the adjudged and new constructs with the modified software, are both merely colorably different and infringe in the same manner as before. Are you saying KSM wasn't used as the standard at all?


I am saying KSM wasn't used as the standard at all when he said even if the modified products no longer infringed, E* would still be found in violation of his injunction.

How many times do I have to explain to you we are arguing on that point and that point alone? Of course if the modified products are only colorably different and clearly is still an infringement, the contempt finding will be proper.



> In almost every single case where there was a provision against infringement and a provision to do something with the devices found infringing such as a disable provision or recall provision, the disable or recall provision was subject to the regional circuit rule of law, i.e., the three-part test for contempt.


Quote me one please, from the Federal Circuit, make sure it is a patent infringement case and post KSM.

You started with "In almost every single case...", it begs the question, can you find even one? Please note we should quote only the Federal Circuit patent infringement cases post KSM, why?

Because the current appeal case is a Federal Circuit patent infringement case post KSM.


----------



## Greg Bimson

jacmyoung said:


> I am saying KSM wasn't used as the standard at all when he said even if the modified products no longer infringed, E* would still be found in violation of his injunction.


Because a different standard is used for a provision against a device found infringing.


jacmyoung said:


> Quote me one please, from the Federal Circuit, make sure it is a patent infringement case and post KSM.


I did. Fisher-Price v Safety 1st. The recall order used the regional circuit's three-part test as controlling law.

See? Regional law is also used when evaluating an injunction in a patent case.


----------



## Greg Bimson

jacmyoung said:


> Because the current appeal case is a Federal Circuit patent infringement case post KSM.


Just to be clear, the current appeal is a contempt case.


----------



## jacmyoung

Greg Bimson said:


> Because a different standard is used for a provision against a device found infringing.


And that different standard is a wrong one.



> I did. Fisher-Price v Safety 1st. The recall order used the regional circuit's three-part test as controlling law.


First that was a district case, not a federal circuit case, citing a district case is not preferred simply because we don't know if it was reversed by the federal circuit or not.

But more importantly, in that district case, one of the products that the infringer claimed to have a different part in them were allowed to remain on the shelves and continue sold without a contempt, only those never modified or without any difference was found in violation. So that only case of yours proved my point.



> See? Regional law is also used when evaluating an injunction in a patent case.


Of course for those products that were without dispute the exact same without any modification, what is your point? Once there is modification, the Federal Circuit law takes over. Again your only case proved my point.


----------



## Greg Bimson

jacmyoung said:


> But more importantly, in that district case, one of the products that the infringer claimed to have a different part in them were allowed to remain on the shelves and continue sold without a contempt, only those never modified or without any difference was found in violation. So that only case of yours proved my point.


That didn't prove your point.

It was exactly like _StarBrite_. Fisher-Price knew full well Safety 1st failed to recall the products found infringing, and sales continued. Safety 1st was found in contempt on both provisions of the order. The judge had to exclude some units from the "continuing to infringe" provision, as those were modified before being placed on shelves. That would be exactly like the DP-501, where once the device is being sold with only new software, it is a device that has never been before the court. That fits the definition of a product that was unadjudged, so the recall provision does not affect it, so both an infringement analysis and a colorable difference analysis must be done to determine violations of an injunction prohibiting infringement.


jacmyoung said:


> Of course for those products that were without dispute the exact same without any modification, what is your point? Once there is modification, the Federal Circuit law takes over. Again your only case proved my point.


Care to cite a case? And I am not talking about KSM; I'd like a citiation that once an adjudged product is "modified", the originally targeted adjudged products are no longer subject to anything other than the infringement provision.

Because without that tidbit of case law, the argument doesn't stand up.


----------



## scooper

So tell me Greg - what is the difference between a "off the factory floor" 510 with the new software and Joe Sixpack's 510 that he bought 6 years ago and has been updated with the same software as the new unit ?

I don't see one...


----------



## m3rb

It astounds me that several people here are fixated on rulings applying to a physical device when the root issue is a _software patent_. How is it not profoundly obvious that a hardware platform, bare of any software, cannot possibly violate a software patent, and that if infringing software is removed and replaced with different software, there is no basis to suppose, without sufficiently deep analysis, that the latter is also infringing?

But then I'm an engineer, so what makes sense to me might well be quite disjoint from what makes sense to you lawyers.


----------



## dgordo

scooper said:


> So tell me Greg - what is the difference between a "off the factory floor" 510 with the new software and Joe Sixpack's 510 that he bought 6 years ago and has been updated with the same software as the new unit ?
> 
> I don't see one...


According to judge folsom and the injunction there is no difference. Those named devices were never allowed to have dvr functionality.

from the injunction:

"The DVR functionality shall not be enabled in any new placements of the Infringing Products."


----------



## Greg Bimson

m3rb said:


> It astounds me that several people here are fixated on rulings applying to a physical device when the root issue is a *software patent*.


That's the problem. If it astounds you that it is a _software patent_, you'll be more astounded knowing that it isn't. The two claims refer to an apparatus and a process which contains an apparatus. So it isn't just software.


scooper said:


> So tell me Greg - what is the difference between a "off the factory floor" 510 with the new software and Joe Sixpack's 510 that he bought 6 years ago and has been updated with the same software as the new unit ?


Joe Sixpack's 510 has been found to infringe the patent, and that unit is subject to disablement. Changing the software does not change the fact that it is subject to disablement.


----------



## jacmyoung

Greg Bimson said:


> ... The judge had to exclude some units from the "continuing to infringe" provision, as those were modified before being placed on shelves. That would be exactly like the DP-501, where once the device is being sold with only new software, it is a device that has never been before the court. ...


You just contradicted yourself, it is precisely because those products were already on the shelves, *before* they were ordered to be removed, therefore they were *before the court* and explicitly prohibited by the order. If you apply the regional circuit law, they all violated the order.

But when the infringer pointed out, but your honor, that one product has a different part in them, all the sudden, the regional circuit law no longer applied, rather the Federal Circuit law kicked in, and that particular product was ruled not in violation.


----------



## jacmyoung

Greg Bimson said:


> ...Care to cite a case? And I am not talking about KSM; I'd like a citiation that once an adjudged product is "modified", the originally targeted adjudged products are no longer subject to anything other than the infringement provision.
> 
> Because without that tidbit of case law, the argument doesn't stand up.


Did you not read the three Federal Circuit cases I just quoted?


----------



## m3rb

> Joe Sixpack's 510 has been found to infringe the patent, and that unit is subject to disablement. Changing the software does not change the fact that it is subject to disablement.


Just curious...when I went to school, I was taught that "proof by repeated assertion" was a logical fallacy. Do they teach differently in law school?


----------



## Greg Bimson

jacmyoung said:


> But when the infringer pointed out, but your honor, that one product has a different part in them, all the sudden, the regional circuit law no longer applied, rather the Federal Circuit law kicked in, and that particular product was ruled not in violation.


Just like I said, just like _StarBrite_, because the model numbers were a bit confusing and Safety 1st's recordkeeping was not absolutely wonderful, when it was pointed out that those devices were a new manufacture with a different "formulation", they weren't subject to the "sales of infringements" provision.


----------



## dgordo

m3rb said:


> Just curious...when I went to school, I was taught that "proof by repeated assertion" was a logical fallacy. Do they teach differently in law school?


I think it would be helpful for you to read the injunction.


----------



## scooper

Greg Bimson said:


> That's the problem. If it astounds you that it is a _software patent_, you'll be more astounded knowing that it isn't. The two claims refer to an apparatus and a process which contains an apparatus. So it isn't just software.Joe Sixpack's 510 has been found to infringe the patent, and that unit is subject to disablement. Changing the software does not change the fact that it is subject to disablement.


You just don't get it, do you ?

It's an APPARATUS that relies on SOFTWARE to do it's job - you change the software, you've changed the APPARATUS, QED.

That joke of Folsom's infringement analysis notwithstanding, the devices ARE different than the ones found to infringe. I fully expect the Appeals Court to throw out the contempt after they go "de novo" through the contempt. Anyone with half a brain can see that Echostar changed the process, once you throw out the error that the PID filter does the "analysis" mentioned in Tivo's '389 patent. (Yes - I'm saying 5 expert witnesses and a federal judge got it wrong).


----------



## Ken_F

Folsom ruled today. For the contempt period, Dish Network will pay $2.25/mo per DVR plus attorney's fees, but no treble damages.



> ...the Court will not treble the sanction rate at this time. If, however, EchoStar is unsuccessful on appeal and nevertheless continues to disregard this Court's orders, the Court will seriously entertain the award of enhanced sanctions.


----------



## Greg Bimson

Refuting time...


scooper said:


> You just don't get it, do you ?
> 
> It's an APPARATUS that relies on SOFTWARE to do it's job - you change the software, you've changed the APPARATUS, QED.
> 
> That joke of Folsom's infringement analysis notwithstanding, the devices ARE different than the ones found to infringe.


But they are the devices that were adjudged.


jacmyoung said:


> If a trial court is faced with an overly broad injunction during a contempt proceeding, the court should interpret it according to the rule of law quoted from KSM above.


The "rule of law quoted from KSM above"?The actual scope of the injunction cannot be that expansive, however, because this court has held that "contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent."​"contempt proceedings ... are available only with respect to devices previously admitted or adjudged to infringe...". Imagine that; it's the definition of Joe Sixpack's six-year old DVR. Straight from KSM. Of course, the case you linked is the appeal from International Rectifier v. IXYS. More on that in a moment.

That case mentions nothing about a recall or disable provision being subserviant to the provision against infringements.

What I do find astounding is that the linked case is actually a challenge to an issued injunction which was stayed. Like I said, one must challenge the injunction prior to becoming active. Once active, the injunction must be interpreted against the rule of law.

Because the devices were previously admitted and adjudged to infringe, it is rather simple to use Rule 65(d) to find that the failure to disable can be adjudged with the standard for civil contempt.

There have been plenty of ways to get out of a granting of a contempt motion regarding an injunction against infringements upon appeal; I think jacmyoung has quoted them all.  However, I haven't seen any regarding a disable or recall provision.


scooper said:


> Anyone with half a brain can see that Echostar changed the process, once you throw out the error that the PID filter does the "analysis" mentioned in Tivo's '389 patent. (Yes - I'm saying 5 expert witnesses and a federal judge got it wrong).


It doesn't help DISH/SATS that THREE of their own experts testified during the trial that PID filtering met the limitation in the parse step of the claim. Yet that went straight through a trial, where five experts agreed, a jury agreed, a judge obviously agreed, and a panel of jurists let it be. It is now law of the case.


----------



## dgordo

Full decison for those who want to read it:


----------



## jacmyoung

dgordo said:


> According to judge folsom and the injunction there is no difference...


According to Judge Folsom they are different, only colorably different is different.

The bottom line is, Judge Folsom never wanted to follow the Federal Circuit law, that was why he ordered his "bench trial" without colorable difference analysis.

But due to E*'s objection, he reluctantly agreed to add the colorable difference analysis, i.e. to follow the Federal Circuit law.

But in the end he continued to hold his belief that he did not have to follow the Federal Circuit law, only his regional circuit law. That calls into question whether he was even sincere about following the Federal Circuit law when he did his colorable difference and infringement analyses.

At this point, I think I have quoted enough Federal Circuit case law to demonstrate when there is modification of the product, the Federal Circuit law controls, not the regional circuit law.


----------



## jacmyoung

dgordo said:


> Full decison for those who want to read it:


Where is the $1B TiVo asked for? Where is the $650M TiVo asked for? Where is the $360M even E* had conceded to? Assuming Judge Folsom was right, of course E* believes he is wrong.

Didn't I say Judge Folsom just wanted them to settle? He is doing the best he can to force Charlie to settle, because Charlie is the one who refuses to settle. Although Judge Folsom uses a different term, instead of "force" he says "promote".


----------



## jacmyoung

Greg Bimson said:


> ...The "rule of law quoted from KSM above...


Stop deleting the words to fit your "quote". The full quote is:



> "contempt proceedings ... are available only with respect to devices previously admitted or adjudged to infringe, *and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent*." KSM, 776 F.2d at 1526.


Since Judge Folsom has already ruled that the modified products are no more than colorably different than the adjudicated products, therefore the highlighted portion of the above "rule of law" applies to them.

Notice the last part, "which clearly are infringement of the patent"? He simply cannot say if those only colorably different products are not infringing, it is still a contempt. That is why he insisted to use his regional circuit law, because he knew his such decision did not comply with the Federal Circuit law.


----------



## jacmyoung

The most interesting thing is, Judge Folsom said that E*'s violation was not willful.

Hello? Are you telling us E*'s attempt to get around the injunction was unintentional? Anyone?


----------



## tsmacro

DISH Network and EchoStar Statement Regarding Tivo

ENGLEWOOD, Colo., Sept 04, 2009 /PRNewswire-FirstCall via COMTEX News Network/ -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (Nasdaq: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (Nasdaq: SATS), issued the following statement regarding recent developments in EchoStar Communications Corporation vs. Tivo:

"We are pleased that the district court rejected Tivo's request to award a billion dollars in sanctions and that it found that any violation of the injunction was not willful. While we disagree that any amount of sanctions was warranted, the decision confirms our belief that we designed around Tivo's patent in good faith. We believe that we ultimately will prevail on appeal."

About DISH Network L.L.C.

DISH Network L.L.C., the nation's HD leader, provides approximately 13.610 million satellite TV customers as of June 30, 2009 with the highest quality programming and technology at the best value, including the lowest all-digital price nationwide. Customers have access to hundreds of video and audio channels, the most HD channels, the most international channels, state-of-the-art interactive TV applications, and award-winning HD and DVR technology including 1080p Video on Demand and the DuoDVR ViP(R) 722 DVR, a CNET and PC Magazine "Editors' Choice." Visit www.dishnetwork.com.

About EchoStar Corporation

EchoStar Corporation (NASDAQ: SATS), the parent of EchoStar Technologies L.L.C., provides equipment sales, digital broadcast operations, and satellite services worldwide. EchoStar has 25 years of experience designing, developing and distributing advanced award-winning set-top boxes and related products for pay television providers. The company includes a network of 10 full-service digital broadcast centers and leased fiber optic capacity with points of presence in approximately 160 U.S. cities. EchoStar also delivers satellite services from eight owned and leased in-orbit satellites and related FCC licenses. Visit www.echostar.com for more information.

SOURCE DISH Network Corporation

http://www.dishnetwork.com

You are subscribed to DISH Network Corporation Investor Relations'' e-mail alerts as [email protected].

To update your e-mail and alert preferences, please click here.
To unsubscribe, please click here.

DISH Network Corporation 
9601 South Meridian Blvd. , Englewood, CO 80112
Service provided by Shareholder.com


----------



## dfd

jacmyoung said:


> Where is the $1B TiVo asked for? Where is the $650M TiVo asked for? Where is the $360M even E* had conceded to? Assuming Judge Folsom was right, of course E* believes he is wrong.
> 
> Didn't I say Judge Folsom just wanted them to settle? He is doing the best he can to force Charlie to settle, because Charlie is the one who refuses to settle. Although Judge Folsom uses a different term, instead of "force" he says "promote".


So are you positioning this as another win for E*?


----------



## dgordo

jacmyoung said:


> According to Judge Folsom they are different, only colorably different is different.


Different issue or as you would say it is an on alternative decision. DISH didn't disable the dvr function from the named devices, but even if they did they are merely colorably different. According to Folsom the named devices could never have dvr functionality. The devices already in customers homes and the one's not yet sold all could never have dvr functionality according to his interpretation of the injunction.


----------



## dgordo

"Although this contempt proceeding arose out of a patent infringement suit, the damages issues before us are not unique to patent cases. In reviewing the damages award we therefore apply, as far as possible, the law of the regional circuit, here the Seventh, rather than the law of this circuit." Graves v. Kemsco Group,
Inc., 824 F.2d 754, 755 (Fed. Cir. 1988)


----------



## Greg Bimson

jacmyoung said:


> Since Judge Folsom has already ruled that the modified products are no more than colorably different than the adjudicated products, therefore the highlighted portion of the above "rule of law" applies to them.


Contempt proceedings are available with respect to devices previously admitted or adjudged to infringe.

That portion of the statement also applies to the "Infringing Products", and the order to disable. It hasn't been stated (nor has it been cited) that the normal rules for civil contempt cannot applied. In every case dealing with a recall order, it is rules for civil contempt that are applied. Such would be the same with a disable order.

Yet no one can say with any certainty that either the KSM rules or civil contempt rules should trump the other. Heck, even Judge Folsom took the easy way out and applied both standards. His findings were simply that you modified and adjudged device by ignoring a disable order (contempt), and that the modifications are only colorably different and still make those adjudged devices infringe (contempt).


----------



## dgordo

jacmyoung said:


> Where is the $1B TiVo asked for? Where is the $650M TiVo asked for? Where is the $360M even E* had conceded to? Assuming Judge Folsom was right, of course E* believes he is wrong.
> 
> Didn't I say Judge Folsom just wanted them to settle? He is doing the best he can to force Charlie to settle, because Charlie is the one who refuses to settle. Although Judge Folsom uses a different term, instead of "force" he says "promote".


But he did award attorney fees. Knowing how morgan chu bills that could be another $100M DISH has to pay.


----------



## jacmyoung

dfd said:


> So are you positioning this as another win for E*?


Another Judge Folsom's logic that makes no sense.


----------



## jacmyoung

dgordo said:


> Different issue or as you would say it is an on alternative decision. DISH didn't disable the dvr function from the named devices, but even if they did they are merely colorably different. According to Folsom the named devices could never have dvr functionality. The devices already in customers homes and the one's not yet sold all could never have dvr functionality according to his interpretation of the injunction.


Don't change the subject, I was responding to your statement that Judge Folsom said the DVRs were no different. Clearly this is not the case, else he would not have ruled they are only colorably different.


----------



## jacmyoung

dgordo said:


> "Although this contempt proceeding arose out of a patent infringement suit, the damages issues before us are not unique to patent cases. In reviewing the damages award we therefore apply, as far as possible, the law of the regional circuit, here the Seventh, rather than the law of this circuit." Graves v. Kemsco Group,
> Inc., 824 F.2d 754, 755 (Fed. Cir. 1988)


That I agree, damages are not unique to patent law, but in this case contempt issue (due to modification) is unique to patent law, and the Federal Circuit law controls the contempt issue, not the damage issue.


----------



## dgordo

jacmyoung said:


> Don't change the subject, I was responding to your statement that Judge Folsom said the DVRs were no different.


Thats not what my statement said. I said that according to judge folsom there is no difference between the named devices already in customers homes and those not yet sold in that according to his interpretation of the disablement provision, none of those devices could ever again have dvr functionality. Already sold or not didn't matter to him.

He also ruled, on alternative, even if the disable provision means what DISH claims, they "new devices" are merely colorably different.


----------



## jacmyoung

dgordo said:


> But he did award attorney fees. Knowing how morgan chu bills that could be another $100M DISH has to pay.


It goes both ways, if it is determined TiVo has no merits and should not have brought forward the contempt motion, rather went straight to the new lawsuit instead to prove the new design is still an infringement, the court (in this case the appeals court) can order the district court to have some of the E* cost covered by TiVo.


----------



## jacmyoung

dgordo said:


> ...I said that according to judge folsom there is no difference between the named devices already in customers homes ...


I said that you are wrong, he did not say that, even if he said that, he would have contradicted himself since he also said they are colorably *different*.


----------



## dgordo

jacmyoung said:


> That I agree, damages are not unique to patent law, but in this case contempt issue (due to modification) is unique to patent law, and the Federal Circuit law controls the contempt issue, not the damage issue.


That's probably why he applied KSM to the contempt issue. 
Why doesn't DISH make this argument you are making?


----------



## dgordo

jacmyoung said:


> I said that you are wrong, he did not say that, even if he said that, he would have contradicted himself since he also said they are colorably *different*.


In the injunction he specifically says that no device with these names can have dvr functionality.

"disable the DVR functionality in all but 192,708 units of the Infringing Products that *have been placed with an end user or subscriber*. The DVR functionality *shall not be enabled in any new placements of the Infringing Products*.

The infringing products are the "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."


----------



## jims

dgordo said:


> But he did award attorney fees. Knowing how morgan chu bills that could be another $100M DISH has to pay.


The case of Jarndyce and Jarndyce in Bleak House comes to mind.


----------



## Greg Bimson

jacmyoung said:


> That I agree, damages are not unique to patent law, but in this case contempt issue (due to modification) is unique to patent law, and the Federal Circuit law controls the contempt issue, not the damage issue.





dgordo said:


> That's probably why he applied KSM to the contempt issue.
> Why doesn't DISH make this argument you are making?


DISH/SATS attempted to. Judge Folsom was not moved.

I've said it before:
TiVo asks for prima facie contempt on the violation of the disable provision of the injunction.

DISH/SATS' counters by saying they've followed the injunction: they have modified software on the "Infringing Products" which DISH/SATS deems is non-infringing, and by interpreting "Infringing Products" to mean products which infringe, those devices are no longer covered by the injunction.

TiVo says the modifications still infringe, and those could also be found in contempt of the provision enjoining infringement of the adjudged devices and those merely colorably different.

Because Judge Folsom when issuing the order for the bench hearing said it was to find "continuing infringement", I have a feeling he believes those are the adjudged products he is re-evaluating. That would be a reason to use the standard for civil contempt; the units used as evidence to find DISH/SATS guilty of infringement are ones under his jurisdiction already. They'd have been under his jurisdiction if they were modified for no DVR functionality; they'd still be under his jurisdiction if they were modified (or unmodified) in any other way.

And it is telling that DISH/SATS never made the argument by changing the software they were no longer under his jurisdiction. The end around in that implied argument was by modifying the products they were no longer "Infringing Products".


----------



## jacmyoung

dgordo said:


> In the injunction he specifically says that no device *with these names* can have dvr functionality...


Bingo!

Names, colors...are never the issue, that is why "more than" colorable difference must be found. Else all E* needed to do was to mass-mail different labels with different names ask the users to slap the new tags on to their DVRs, like what they did in a card swap.


----------



## jacmyoung

dgordo said:


> That's probably why he applied KSM to the contempt issue.


I already demonstrated he never wanted to apply KSM, only after E* protested he added the colorable difference test to his hearing, but in the end he still said when it came to the contempt issue, he should not apply KSM, rather his regional circuit law.

His application of KSM was only for show, so E* did not appeal his order right the way. Recall E* said after Judge Folsom ordered his initial "bench trial" E* was going to appeal the "bench trial" order? Only after Judge Folsom agreed to do the colorable difference test, E* withdrew their appeal.



> Why doesn't DISH make this argument you are making?


What argument again?


----------



## jacmyoung

I would immediately appeal this sanction order to the appeals court and motion for a stay of such order pending appeal.

It is completely a waste of time and resources of all involved to continue offer Judge Folsom some additional entertainment while this entire case is before the appeals court, especially when Judge Folsom said himself, he would not enforce the sanction order pending the appeal, and his sanction order is also appealable, and if not appealable, he is willing to help the parties to make it appealable by providing an amended final judgment.


----------



## Greg Bimson

jacmyoung said:


> I already demonstrated he never wanted to apply KSM, only after E* protested he added the colorable difference test to his hearing, but in the end he still said when it came to the contempt issue, he should not apply KSM, rather his regional circuit law.


He did apply KSM to one of the two contempt issues.


----------



## jacmyoung

Greg Bimson said:


> He did apply KSM to one of the two contempt issues.


Only to trick E* into withdrawing its appeal of his so called "bench trial" order.

BTW another patent case/injunction coming out of that same TX court (by Judge Davis) was stayed by the appeals court yesterday pending appeal by Microsoft.


----------



## dgordo

jacmyoung said:


> Only to trick E* into withdrawing its appeal of his so called "bench trial" order.


At least you are finally admitting that he did use the KSM test.


----------



## spear61

dgordo said:


> In the injunction he specifically says that no device with these names can have dvr functionality.
> 
> "disable the DVR functionality in all but 192,708 units of the Infringing Products that *have been placed with an end user or subscriber*. The DVR functionality *shall not be enabled in any new placements of the Infringing Products*.
> 
> The infringing products are the "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."


You got it right. This was about "remedy" and what he had decided was an appropriate "remedy"; could have been money, could have been restrictions, could be anything he wanted it to be.


----------



## jacmyoung

dgordo said:


> At least you are finally admitting that he did use the KSM test.


I did not say he did not do those tests, rather that he did not apply KSM in the end.

He thinks his "disablement provision" is somehow outside of the concept of an injunction on infringement. There is a lesson to be learned from the CAFC.

The CAFC defines such disablement, removal from shelves, shutting down the service...provisions as "other legal instrument" used in the injunctions, and they review the interpretation of such "other legal instrument" de novo. Additionally, the CAFC says when the court interprets an overly broad injunction (including any "other legal instrument" in the injunction of course), the interpretation should conform to *"the rule of law quoted from KSM above."*

I don't need to repeat that quote from KSM. Judge Folsom's such "other special instrument" (his so called "disablement provision") must be reviewed in light of KSM, not according to his regional circuit law.


----------



## jacmyoung

I finally had some time to go through Judge Folsom's order, it appeared to me that his logic again is apart from both TiVo and E* on the issue of sanctions.

Both TiVo and E* were speaking about the $2.25 and $1.50 rates as their reasonable compulsory licensing rates used in the damage calculations. Their ideas of sanctions are disgorgement of profit, double or treble, and attorney fees.

Yet Judge Folsom considers the additional rate increase ($1.00 in TiVo's case, and $0.25 in E*'s case) as his sanction rate. That basically leaves the rate of the compulsory licensing at $1.25, the same as the jury's rate three years ago.

That cannot be any better a message to Charlie at this time. In the worst case he must sign a license agreement with TiVo to settle, the highest rate he will pay will be $1.25, if TiVo insists more than that, he will just motion the court to settle the suit for them at the $1.25 compulsory licensing rate.


----------



## jacmyoung

As I try to figure out all the seemingly "illogical" decisions by Judge Folsom, a picture started to emerge, a picture of a chief judge who truly deserves his crown.

Let's first agree that he has been very focused on getting both parties to settle, also everyone knows Charlie is the one that refuses to go along.

While Judge Folsom has done as much as he could to make it look as bad as legally possible to coax Charlie to settle with TiVo, he also knows Charlie is not likely to settle.

To prepare for such eventual outcome, he imposed a new injunction that is very unlikely to survive the current appeal, simply because of the so called "inform provision". I think even dgordo may agree with me on this one

In the event that TiVo wins on appeal, the appeals court will nevertheless not reinstate the injunction for the above reason, and remand the issue back to him. He can then abandon the injunction route, follow his famous Paice v. Toyota route to impose a compulsory license on E*. And he is setting up for that possible outcome by deliberately issuing a very vulnerable injunction, and using some odd logic to fix the compulsory licensing rate at $1.25, a rate that is the most prevailing for the current market. He must know TiVo is getting around $1.00 from the other companies such as DirecTV and Comcast.

Of course for that to happen, TiVo must survive the appeal on the issue of infringement by the new design, which is very unlikely. Despite of that, Judge Folsom's such approach, if it is the one, has to be the best any judge can ever come up with.


----------



## scooper

jacmyoung said:


> As I try to figure out all the seemingly "illogical" decisions by Judge Folsom, a picture started to emerge, a picture of a chief judge who truly deserves his crown.
> 
> Let's first agree that he has been very focused on getting both parties to settle, also everyone knows Charlie is the one that refuses to go along.
> 
> While Judge Folsom has done as much as he could to make it look as bad as legally possible to coax Charlie to settle with TiVo, he also knows Charlie is not likely to settle.
> 
> To prepare for such eventual outcome, he imposed a new injunction that is very unlikely to survive the current appeal, simply because of the so called "inform provision". I think even dgordo may agree with me on this one
> 
> In the event that TiVo wins on appeal, the appeals court will nevertheless not reinstate the injunction for the above reason, and remand the issue back to him. He can then abandon the injunction route, follow his famous Pacer v. Toyota route to impose a compulsory license on E*. And he is setting up for that possible outcome by deliberately issuing a very vulnerable injunction, and using some odd logic to fix the compulsory licensing rate at $1.25, a rate that is the most prevailing for the current market. He must know TiVo is getting around $1.00 from the other companies such as DirecTV and Comcast.
> 
> Of course for that to happen, TiVo must survive the appeal on the issue of infringement by the new design, which is very unlikely. Despite of that, Judge Folsom's such approach, if it is the one, has to be the best any judge can ever come up with.


Ok - so far , so good -

What happens if Echostar wins at the Appeals Court ? Does Tivo try to take it to the Supreme Court, or do they just give up, or something in between ? Does Tivo try to tie Echostar into the Verizon / AT&T suit or the additional patents ?
Any other prognostications ?


----------



## dgordo

jacmyoung said:
 

> I did not say he did not do those tests, rather that he did not apply KSM in the end.
> 
> He thinks his "disablement provision" is somehow outside of the concept of an injunction on infringement.


He thinks contempt on the face of an injunction is outside the scope of patent law.



jacmyoung said:


> Judge Folsom's such "other special instrument" (his so called "disablement provision") must be reviewed in light of KSM, not according to his regional circuit law.


Why isn't DISH making this argument in their brief to the CAFC?


----------



## jacmyoung

scooper said:


> Ok - so far , so good -
> 
> What happens if Echostar wins at the Appeals Court ? Does Tivo try to take it to the Supreme Court, or do they just give up, or something in between ? Does Tivo try to tie Echostar into the Verizon / AT&T suit or the additional patents ?
> Any other prognostications ?


If TiVo loses on the issue of infringement by the new design, TiVo is in trouble, but that is not something Judge Folsom should be worried about, just as much as he should not be worried if E* should lose on appeal.

His job, which he clearly understands better than any other judges, is to get the two to settle, failing that, settle for them, failing that, it will be very very ugly because you will have Congressmen calling his chamber everyday telling him to do something so the J6Ps in their home turfs can stop calling them for not able to have a beer while skipping beer commercials at the same time A compulsory license order will stop all the potential calls.

Of course that is still to assume TiVo may win on appeal, if not, his job is also done, no Congressman will call him. But the TiVo investors might try to call him instead But his job is secured by the Congress, not the investors.


----------



## jacmyoung

dgordo said:


> He thinks contempt on the face of an injunction is outside the scope of patent law.


Where did he say that?



> Why isn't DISH making this argument in their brief to the CAFC?


Did you read E*'s filings? E* has been saying so maybe for the 1000th time already, just not in the exact same words of course.


----------



## dgordo

"EchoStar never complied with the Disablement Provision of this Court’s order, which ordered EchoStar to “disable the DVR functionality in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.”

Whether EchoStar did or did not comply with the Disablement Provision of this Court’s order does not raise any issue unique to patent law. As a result, the regional circuit law of the Fifth Circuit applies to this issue."

Its pretty clear to me that he is saying that DISH failed to comply with the injunction (face of the injunction) and that, because failure to follow an injunction in not unique to patent law, he will apply the law of the 5th circuit.

I read all 100 and some pages of DISHs brief to the CAFC. I don't see anywhere where they claim that Folsom should have applied KSM to the disablement provision.


----------



## jacmyoung

dgordo said:


> "...Whether EchoStar did or did not comply with the Disablement Provision of this Court's order does not raise any issue unique to patent law. As a result, the regional circuit law of the Fifth Circuit applies to this issue."


He is wrong. Once the products are different, whether merely colorable or more than colorable, KSM controls how the injunction is enforced. Any provision in the injunction is part of the injunction, no special treatment.



> I read all 100 and some pages of DISHs brief to the CAFC. I don't see anywhere where they claim that Folsom should have applied KSM to the disablement provision.


E* argued Judge Folsom should have applied KSM, period! Whatever is said in his injunction.


----------



## deaincaelo

dgordo said:


> According to judge folsom and the injunction there is no difference.


I agree.



> If it astounds you that it is a software patent, you'll be more astounded knowing that it isn't. The two claims refer to an apparatus and a process which contains an apparatus. So it isn't just software.


Other then the fact that this is completely wrong, it's a good argument. It is a software patent claim. The apparatus is tacked on cover their proverbial behinds- any apparatus that performs this software process. I get where your coming from. If the remaining claim was a real invention, I would probably agree with you. However, only because it's not we have an inventor-Echostar- being harmed and restricted by a patent troll- Tivo- who at this point have nothing of value to the progress of the species on the table. I mourn this because Tivo was once an inventor. I wish they had succeed as an inventor, because then I would have a Tivo.

There are two big problems with claim 30whatever/60whatever as interpreted. First, a person of reasonable skill in the field cannot make an apparatus based solely on these claims that falls completely within the bounds of the patent without undue experimentation. Second, any device that records tv is by definition infringing on the patent as interpreted by the court. The claim has been pared down, first from the rest of the patent and now down to just the minimum steps necessary to record tv. You cannot remove all forms of any part of the claim and have a viable device that records tv.



> Changing the software does not change the fact that it is subject to disablement.


Why does changing the software leave you with the same device, but changing the hardware does not?

This is an old debate. It has not been resolved since the time of Aristotle. I'm not qualified to resolve it in the context of the court.

However, the arguments going on in the forum seem to have some logical holes in this respect. This bothers me, especially if an internally inconsistent argument is upheld in court.


----------



## deaincaelo

m3rb said:


> It astounds me that several people here are fixated on rulings applying to a physical device when the root issue is a _software patent_. How is it not profoundly obvious that a hardware platform, bare of any software, cannot possibly violate a software patent, and that if infringing software is removed and replaced with different software, there is no basis to suppose, without sufficiently deep analysis, that the latter is also infringing?
> 
> But then I'm an engineer, so what makes sense to me might well be quite disjoint from what makes sense to you lawyers.


Amen.


----------



## deaincaelo

dgordo said:


> In the injunction he specifically says that no device with these names can have dvr functionality.


Are you certain?


----------



## Greg Bimson

deaincaelo said:


> Why does changing the software leave you with the same device, but changing the hardware does not?


Because the adjudged units were ordered disabled. Modifying the DVR functionality does not disable the unit, but changing the hardware by swapping out recivers removes the adjudicated units from the hands of the end users. It's one of those legal things.


jacmyoung said:


> E* argued Judge Folsom should have applied KSM, period! Whatever is said in his injunction.


And Judge Folsom did apply KSM, just not only in the manner some wish to see.

But let's keep this straight. DISH/SATS argument to Judge Folsom regarding the disable provision was that they followed it. It was a torturous interpretation.

DISH/SATS never argued to Judge Folsom that they didn't adhere to the injunction because "KSM says that a modified device must be evaluated for colorable difference and infringement", so the disable provision should be ignored or rendered subserviant to KSM standard for modified devices.

DISH/SATS problems all started with "we followed the disablement provision...". They agreed it was a valid order. Then when they redefined the terms of the disablement provision so that they said they followed it, they couldn't turn around and argue that the KSM standard trumps the civil contempt standard.

Heck, in the appeal motion to the Court of Appeals DISH/SATS probably put the defense they should have used in front of Judge Folsom. Of course, they are now barred from using that defense as they cannot introduce "new arguments" that weren't presented to Judge Folsom.


----------



## harsh

http://www.nytimes.com/2009/09/05/technology/companies/05bizbriefs-DISHNETWORKA_BRF.html


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## jacmyoung

Greg Bimson said:


> ...And Judge Folsom did apply KSM, just not only in the manner some wish to see.


No, not on the disablement issue. Just read dgordo's quote a few posts above. Of course the disablement issue has been the only issue we have been discussing, as I have explained to you over and over, so yes, as far as what we are discussing, no, he said only his regional circuit law applied to this issue.



> Of course, they are now barred from using that defense as they cannot introduce "new arguments" that weren't presented to Judge Folsom.


What are you talking about. In both E* and TiVo's briefs there are ample new arguments.

The homework E* sent TiVo to do by filling all the blanks to prove infringement is a new one, they only wished they had used it on Judge Folsom before. TiVo responded to such homework assignment, did TiVo say no E* couldn't use this new argument? No they did not, TiVo only said why not go look for that chart of ours in that pile of documents, the answers are in there somewhere.

Let's face it, TiVo did not get that $1B, not that $650M, not even the $360M E* conceded to. TiVo did not get the $2.25, not $1.75, not even the $1.50 E* conceded to, it turned out Judge Folsom was still stuck on that $1.25 rate.

Let's also not forget, none of these numbers will even be enforced pending the appeal. At this point I am not even so sure which party will actually appeal this sanction order. Both parties claim the decision is good for them, so what is the point of appealing it?

If neither of them will appeal this decision, then how does Judge Folsom manage to have the appeals court combine this item with the existing appeal? I am no lawyer, can anyone clue me in on this one?


----------



## Greg Bimson

jacmyoung said:


> No, not on the disablement issue. Just read dgordo's quote a few posts above. Of course the disablement issue has been the only issue we have been discussing, as I have explained to you over and over, so yes, as far as what we are discussing, no, he said only his regional circuit law applied to this issue.


Right, but I think you're missing this:

DISH/SATS never argued that _KSM_ should be applied to the disablement provision. DISH/SATS always argued that _KSM_ needs to be used for all modified devices. However, DISH/SATS says they complied with the disable order. In other words, DISH/SATS argued that *both standards* apply to the adjudged devices. And Judge Folsom agreed.

DISH/SATS walked a very fine line regarding the disable provision. It appears they didn't make one argument they should have.


jacmyoung said:


> The homework E* sent TiVo to do by filling all the blanks to prove infringement is a new one, they only wished they had used it on Judge Folsom before.


Not necessarily a new one; DISH/SATS is arguing that Judge Folsom erred by not fully evaluting infringement. An error by the judge is fully within the realm of the Court of Appeals. I recall that DISH/SATS gray brief was due to Court of Appeals on 4 September. Maybe we'll see a bunch of "errors" that Judge Folsom made within that document.


m3rb said:


> It astounds me that several people here are fixated on rulings applying to a physical device when the root issue is a software patent. How is it not profoundly obvious that a hardware platform, bare of any software, cannot possibly violate a software patent, and that if infringing software is removed and replaced with different software, there is no basis to suppose, without sufficiently deep analysis, that the latter is also infringing?


Because DISH/SATS introduced their defense for failing to disable Infringing Products: both the evaluation from outside counsel and the list of differences with respect to the claims as to why those devices no longer infringe.

DISH/SATS basically said "these are the modifications", meaning all else remained the same, so the only points needing concentration were the modifications. The fact that TiVo produced claim charts for Judge Folsom's infringement analysis proves it.


deaincaelo said:


> However, only because it's not we have an inventor-Echostar- being harmed and restricted by a patent troll- Tivo- who at this point have nothing of value to the progress of the species on the table. I mourn this because Tivo was once an inventor. I wish they had succeed as an inventor, because then I would have a Tivo.


So let's try this. Up until October 2006, it was found that DISH/SATS pretty much completely infringed upon the Time Warp patent. So the only reason DISH/SATS has a rather popular DVR today is because of said infringement. That would be one of the reasons why less people bought a TiVo.

DISH/SATS now modifies their infringing products and somehow that translates to DISH/SATS becoming an "inventor"? DISH/SATS is also an "infringer". And they simply took someone else's invention, one that was found infringing, and modified it. And a patent has yet to be granted for DISH/SATS modifications, so calling them an "inventor" is a bit overzealous.

TiVo had to protect themselves. And it isn't like they only have a patent portfolio. They have a product, which they tried to market not only to the mass public, but to MSO's. One satellite MSO took them up on their offer, and made DVR's for them. The other satellite MSO declined their offer, and it turns out they built their DVR business by infringing upon the patent. So TiVo is far from a troll.


----------



## jacmyoung

Greg Bimson said:


> Right, but I think you're missing this:
> 
> DISH/SATS never argued that _KSM_ should be applied to the disablement provision...


See my response to dgordo, when E* says KSM should be the law applied to the *entire injunction*, period...



> Not necessarily a new one; DISH/SATS is arguing that Judge Folsom erred by not fully evaluting infringement. An error by the judge is fully within the realm of the Court of Appeals.


It is not the judge's job to find arguments for the parties. E* definitely never argued they do not meet the "temporary store", "extract", "convert"...limitations, until now. TiVo do not say the argument is time barred, only that TiVo asked the judges to go look for themselves in that chart burried somewhere for evidence. Again it is not the judge's job to look for evidence, rather TiVo's job to show them, clearly and convincingly.

On the issue of time barred appeal though, it is interesting when TiVo motioned for the pre-judgment interest payment, E* argued the pre-judgment interest was not in the final judgement, and TiVo did not appeal last time, now this issue is time barred.

Guess what the judge say? Oops, I made a mistake, I now order E* to pay that pre-judgment interest.

What happened to if you disagree with the order, and fail to appeal, that is just too bad?


----------



## Greg Bimson

jacmyoung said:


> See my response to dgordo, when E* says KSM should be the law applied to the entire injunction, period...


Really? Then why did DISH/SATS argue that they followed the disable provison?

DISH/SATS never argued that _KSM_ is the only standard which needed to be applied for the entire injunction and that the disable provision was trumped by _KSM_. There would be no need to state the disable order was followed if _KSM_ was the _only_ controlling law.


----------



## jacmyoung

Greg Bimson said:


> Really? Then why did DISH/SATS argue that they followed the disable provison?


The only way E* can argue that they followed the disablement provision is if you apply KSM, not applying the regional circuit law.

Of course E* did not say KSM was the only law, but all other Federal Circuit case law are based on KSM.


----------



## Greg Bimson

jacmyoung said:


> The only way E* can argue that they followed the disablement provision is if you apply KSM, not applying the regional circuit law.


I think you are missing the point:

DISH/SATS argued the disablement provison as follows:
1) The injunction applies to "Infringing Products", and we made modifications so that the units no longer infringe, thus negating the meaning of "Infringing Products".
2) "The DVR functionality" was disabled when the new software was downloaded.
3) we therefore adhered to the injunction's terms.

Those were the points DISH/SATS laid out. DISH/SATS had to change the definitions of "Infringing Products" and "The DVR functionality" in order to comply with the disable provision according to their interpretation. DISH/SATS never said the disable provision does not apply because only _KSM_ must now be used.

4) We made modifications, so because there are modified devices, _KSM_ needs to be applied.

_KSM_ was applied, just like asked. But DISH/SATS never asked that the application of _KSM_ be completely controlling law and dismiss any other controlling law over the disable provision.

Many times we've went around and around on this. A subset of the products were both adjudged infringing in the trial and again accused of infringement due to modification.

And nowhere does DISH/SATS mention that only one standard need be applied. Their arguments during the contempt proceeding were focused on beating the _KSM_ standard. They never addressed the normal civil contempt standard for the adjudged devices, i.e., "the Infringing Products". They said that _KSM_ should apply, but never said that the civil contempt standard should not; in fact, they said they followed the disable provision, not that their modifications make it so that _KSM_ is the only standard.


jacmyoung said:


> Of course E* did not say KSM was the only law, but all other Federal Circuit case law are based on KSM.


I'll try to dig up something later. I'm fairly certain that even in the Federal Circuit, an order to recall products which isn't followed uses the civil contempt standard. That standard probably isn't dismissed just because a modification is in play.

I guess until someone rules otherwise, both standards must apply on adjudged devices.


----------



## jacmyoung

Both can apply if they are not in disagreement. If they are in conflict, ksm controls.

Under ksm the nautural interpretation is no infringement, no violation. Therefore to make sure the injunction is clear in this regard it must state that the dvrs must be disabled even if they are modified and might no longer infringe. If it does not stress that it is not clear, then it is not enforceable even under the regional circuit law.


----------



## jacmyoung

Having figured out that Judge Folsom has signaled that his compulsory licensing rate is $1.25, $.25 lower than what Charlie had thought would be reasonable, let's see what might happen next.

Judge Folsom gave both parties 14 days to resolve the issue of TiVo's cost in these contempt proceedings so the cost can be awarded to TiVo. I hope no one is expecting them to actually agree on the cost So TiVo should be expected to motion Judge Folsom on this issue in two weeks. While this is clearly Judge Folsom's last effort to coax Charlie to settle with TiVo, I wonder if Charlie will come up with some surprises again.

As I said before, according to the CAFC rules, if they affirm/reverse the lower court rulings in whole, the losing party bears the cost by both sides, if they affirm in part, reverse in part, parties bear their own cost.

The cost CAFC rules talk about is likely cost associated with the appeal. But I don't know how the cost of the contempt proceedings should work out in a similar way or not. I suppose E* can come up with their own legal cost during the contempt proceedings, motion the court to award them such cost. Of course Judge Folsom will deny it, but then it becomes a court record which E* can ask the CAFC to incorporate into the current appeal.

Any lawyer can tell me if such procedure has any legal basis?


----------



## P Smith

Any comment on this article http://arstechnica.com/tech-policy/...-to-fork-over-another-200-million-to-tivo.ars ?


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## jacmyoung

E* had filed their second reply brief and appendix on 9/4/09. If everything goes according to the appeals court plan, they should be able to put this appeal on the calendar.

Except Judge Folosm has his own plan, he has yet completed his sanction proceedings. He gave TiVo two weeks to file a motion, then parties will have time to respond and reply, then he will have to hopefully make his final decision of the previous final decision without too much delay, so parties can appeal it. Then the appeals court will have to allow time for the parties to file, respond, and respond again.

An expedited appeal process therefore goes out of the window right there.


----------



## dgordo

jacmyoung said:


> Having figured out that Judge Folsom has signaled that his compulsory licensing rate is $1.25, $.25 lower than what Charlie had thought would be reasonable, let's see what might happen next.
> 
> Judge Folsom gave both parties 14 days to resolve the issue of TiVo's cost in these contempt proceedings so the cost can be awarded to TiVo. I hope no one is expecting them to actually agree on the cost So TiVo should be expected to motion Judge Folsom on this issue in two weeks. While this is clearly Judge Folsom's last effort to coax Charlie to settle with TiVo, I wonder if Charlie will come up with some surprises again.
> 
> As I said before, according to the CAFC rules, if they affirm/reverse the lower court rulings in whole, the losing party bears the cost by both sides, if they affirm in part, reverse in part, parties bear their own cost.
> 
> The cost CAFC rules talk about is likely cost associated with the appeal. But I don't know how the cost of the contempt proceedings should work out in a similar way or not. I suppose E* can come up with their own legal cost during the contempt proceedings, motion the court to award them such cost. Of course Judge Folsom will deny it, but then it becomes a court record which E* can ask the CAFC to incorporate into the current appeal.
> 
> Any lawyer can tell me if such procedure has any legal basis?


It is typical at the appellate level to award costs but not fees. The courts typically have guidelines for what costs can be associated with the appeal.


----------



## jacmyoung

I’d like to point out one thing. There are people who cannot figure out how Judge Folsom can seemingly change his positions, from one which said E* could not have possibly acted in good faith when they tried to design around TiVo’s patent, to one which he said he is now taking Charlie’s belief at its “face value” that E*’s new design no longer infringes, and as a result, the violation is not willful.

Because one thing happened between the statements of his two positions. What happened was that the PTO issued its initial action rejecting the TiVo’s software claims. But what is more important is not the rejection itself, rather how the PTO defined the terms “parses audio and video data” and “automatic flow control”. It turned out the PTO’s definitions agreed with E*’s.

E* filed a letter urging Judge Folsom to take the above into consideration when he decided on the sanction issues. Apparently the judge did take it into consideration, even though he declined to admit it.


----------



## jacmyoung

Finally one analyst who consistently favored TiVo (and still is) decided to add the word "nothing" in his TiVo dictionary:

http://www.fool.com/investing/general/2009/09/08/its-all-or-nothing-for-tivo.aspx

Well it wouldn't be nothing, E* should still owe TiVo at least $16M plus interest.


----------



## jacmyoung

Some potentially related news.

According to the WSJ, after the appeals court struck down the 30% cable market cap a few days ago, it left the door open for additional cable consolidation. The two most likely consolidations would be for ATT to buy DirecTV, and Verizon to buy DISH.

There is no way of telling how likely either might happen, but if they should happen, TiVo will be in serious trouble.

For one thing TiVo can no longer sue ATT without huge risk because of the ReplayTV IPs DirecTV holds, likewise TiVo's suit against Verizon will likely mimic the current TiVo v. E* suit.

As a current DirecTV sub, I for one would prefer a V*/E* combination, from what I have read about all the technical issues.


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## dgordo

jacmyoung said:


> Finally one analyst who consistently favored TiVo (and still is) decided to add the word "nothing" in his TiVo dictionary:
> 
> http://www.fool.com/investing/general/2009/09/08/its-all-or-nothing-for-tivo.aspx
> 
> Well it wouldn't be nothing, E* should still owe TiVo at least $16M plus interest.


1. Its always been an all or nothing fight for tivo.

2. That guy is hardly an analyst.


----------



## jacmyoung

dgordo said:


> 1. Its always been an all or nothing fight for tivo.


If you have read almost any analysts' view on this litigation, it has always been that Charlie would finally settle and TiVo will go on to stardom, finally, it is just a matter of time.



> 2. That guy is hardly an analyst.


My definition of an analyst is very ordinary But then again, that is also why I do not look to the stock market for clue. The stock market (therefore the analysts) operates in large part by emotion. I only care about technicality in this litigation.

In the end, it is entirely possible emotions may win over technicality, but that does not mean emotions will win me over, because our legal system is designed to remove the emotional factors as much as possible.


----------



## Curtis52

dgordo said:


> 1. Its always been an all or nothing fight for tivo.
> 
> 2. That guy is hardly an analyst.


I'm pretty sure the Goldman Sachs folks are analysts.

NEW YORK (AP) -- Goldman Sachs downgraded Dish Network Corp. to "Sell".

Litigation issues with TiVo Inc., declining market share and the unsustainability of its promotional efforts to build subscribers make Dish a "Sell," Armstrong said. He also said Dish is lacking in unique content.


----------



## jacmyoung

Curtis52 said:


> ...NEW YORK (AP) -- Goldman Sachs downgraded Dish Network Corp. to "Sell".
> 
> Litigation issues with TiVo Inc., declining market share and the unsustainability of its promotional efforts to build subscribers make Dish a "Sell," Armstrong said. He also said Dish is lacking in unique content.


Everything said above is absolutely true. Unfortunately if you have not noticed after all these years, relying on "sell" pressure from the analysts, hoping that Charlie may change his mind, has been futile


----------



## deaincaelo

Greg Bimson said:


> So let's try this. Up until October 2006, it was found that DISH/SATS pretty much completely infringed upon the Time Warp patent.


According to the east district court of Texas it only infringed on two claims. Hardly a reputable source, however.



Greg Bimson said:


> So the only reason DISH/SATS has a rather popular DVR today is because of said infringement.


Not necessarily. Dish had two devices that i believe predate Tivo-the Dishplayer DVR and the JVC IRR satellite VCR. Neither of which have ever been accused as infringements for just his reason. We'll call this exibit B.



Greg Bimson said:


> That would be one of the reasons why less people bought a TiVo.


arguably. more later.



Greg Bimson said:


> DISH/SATS now modifies their infringing products and somehow that translates to DISH/SATS becoming an "inventor"?


See exibit B.



Greg Bimson said:


> DISH/SATS is also an "infringer".


Yes, Dish is an inventor and an infringer. Tivo is an inventor and a patent troll. Dish is only an infringer, right now at least, because Tivo is a patent troll.



Greg Bimson said:


> And they simply took someone else's invention, one that was found infringing, and modified it.


and here is where I want to stop for a moment. What is Tivo's invention? According to all 5 experts and the inventor (as quoted earlier in these threads) it's done by the broadcom chip, which is now disabled. Dish was found guilty on a device that had an active broadcom chip. Granted, all 5 experts, but not the inventor, also said that the PID parser met the claim limitations at one time or another. what do they do?

The broadcom chip sorts and files. It's like one of those printers that have all the different trays. it organizes. The PID parser tunes to the satellite channel. it filters. Judge folsom and only tivo's experts- excluding the testimony quoted by the inventor- says these are the same thing. If I said that a colander and a sorting bin from a copier were the same you'd call me nuts. I'm calling them nuts. This goes against the foundations of invention.

Let's assume that claim 32 is a valid claim. Let's assume that the current DVR's infringe it, and let's go back to the beginning like dish can't. Patentability, enforceability, prior art. enter exibit B. These are satellite receivers. they record. what must they have, at a minimum, to do so?

They have a PID parser or equivlant to interpret satellite signal.

they get data from the PID parser. That by definition is a source object.

They store and retrieve data streams onto a storage device- transform object

They automatically control the steam of data internally, video didn't randomly go anywhere it wasn't supposed to.

They obtain data from storage and sends it to a video and audio decoder- sink object

They convert data into display signals and sends said signals to a display

they have a remote control- control object

Here we have every aspect of claim 32 in a pre existing device created by Dish. Dish didn't patent it because they're not the original inventors. This still makes Tivo an IP thief and a patent troll.

Dish couldn't argue it before because it simply was not the interpretation of the invention in context at the time. They can't argue it now because it's "too late." Assuming that the ruling isn't overturned the patent probably will be at some point. But dish will still be on the hock for $400+ million.



Greg Bimson said:


> And a patent has yet to be granted for DISH/SATS modifications, so calling them an "inventor" is a bit overzealous.


Dish has plenty of patents that they are counter suing Tivo with. However, the wheels of justice seem to be moving much, much slower for them.



Greg Bimson;2205514...And it isn't like they only have a patent portfolio. They have a product said:


> They had a product that never existed before. They should be granted exclusivity to that product and that chip. That makes them an inventor. They have IP that they clearly did not create which they enforce in court. That makes them a patent troll. They should not be granted exclusivity to recording tv because they didn't invent it. They're not harmed by competition. Enough IP was in the public domain to create a competing device that records tv to a hard drive. . . until Tivo patented it.


----------



## Greg Bimson

Greg Bimson said:


> And they simply took someone else's invention, one that was found infringing, and modified it.





deaincaelo said:


> and here is where I want to stop for a moment. What is Tivo's invention? According to all 5 experts and the inventor (as quoted earlier in these threads) it's done by the broadcom chip, which is now disabled. Dish was found guilty on a device that had an active broadcom chip. Granted, all 5 experts, but not the inventor, also said that the PID parser met the claim limitations at one time or another. what do they do?
> 
> The broadcom chip sorts and files. It's like one of those printers that have all the different trays. it organizes. The PID parser tunes to the satellite channel. it filters. Judge folsom and only tivo's experts- excluding the testimony quoted by the inventor- says these are the same thing. If I said that a colander and a sorting bin from a copier were the same you'd call me nuts. I'm calling them nuts. This goes against the foundations of invention.


But it wasn't only Judge Folsom and TiVo's experts. The PID filter separates by analysis, i.e., parses the transport stream which has about 12 distinct programming channels so that it can separate out the channel one wishes to tune.

And it is the Hardware Claims that require the Broadcom Chip. It is practically mandatory for the Hardware Claims to be able to create an index and use a Media Switch.

This is about the Software Claims, which do not have such requirement.


Greg Bimson said:


> So the only reason DISH/SATS has a rather popular DVR today is because of said infringement.





deaincaelo said:


> Not necessarily. Dish had two devices that i believe predate Tivo-the Dishplayer DVR and the JVC IRR satellite VCR. Neither of which have ever been accused as infringements for just his reason.


First, just because neither have been accused as infringements does not mean they are not infringements. TiVo just doesn't care whether they are.

Second, the JVC VCR isn't covered, as one cannot "Time Warp" while a VCR is recording.


deaincaelo said:


> They should not be granted exclusivity to recording tv because they didn't invent it. They're not harmed by competition.


TiVo may not have invented recording TV. They did invent a process and an apparatus for a method to record and play back TV, specifically the ability to record programming and watch recorded programming simultaneously. And TiVo was granted a patent for that.

And TiVo is certainly harmed by competition when the competition has infringed upon their patent.

Let's not forget. Your argument in your last post centers on the fact that DISH/SATS cannot be infringing because they use a PID filter. Therefore, I must assume you have no problem seeing that DISH/SATS infringed under the old software. And it is with those same receivers, admitted and adjudged infringing, that DISH/SATS builds upon their market share. If those DVR's were immediately disabled, DISH/SATS DVR business would be halved. It would be a bit better than TiVo's current market share.


----------



## dfd

deaincaelo said:


> Dish has plenty of patents that they are counter suing Tivo with. However, the wheels of justice seem to be moving much, much slower for them.


I'm aware of one suit and it didn't involve an E* patent rather a patent application. Can you please cite the patents that E* is suing Tivo for infringing?

And stating that the wheels of justice move much slower for E* is just a bit of a stretch. Look at jac's post about how E* is doing everything in their rights to prolong this case and tell us again that E* is entitled to speedier justice.


----------



## scooper

This whole thing is about the PROCESS. and 5 "Expert witnesses" ("Expert Witlesses" is what I would call them now) and a federal judge screwed up big time on that joke of a bench trial / colorable difference analysis / infringement analysis . 

Getting all hung up over a god damned PID filter - no wonder our justice system is so ****ed up. Any idiot with half a brain can look at Tivo's process and Echostar's new process and can see they are different. 

If I was a company being accused of patent infringement and the holder had filed in East Texas - I would stonewall them to the point of going to jail . Contempt of court - hell it's more like contempt FOR that court and the possibility of getting a fair trial there.


----------



## Greg Bimson

scooper said:


> This whole thing is about the PROCESS. and 5 "Expert witnesses" ("Expert Witlesses" is what I would call them now) and a federal judge screwed up big time on that joke of a bench trial / colorable difference analysis / infringement analysis .
> 
> Getting all hung up over a god damned PID filter - no wonder our justice system is so ****ed up. Any idiot with half a brain can look at Tivo's process and Echostar's new process and can see they are different.


Understand where this whole problem is "hung up"...

There were charts presented during the original trial. These charts contained the elements of the patent, and in what fashion the receivers met the limitations within these steps.

Simply put, the modified receivers still meet that chart. Yes, because the admission by all experts during the trial that the PID filter met the claim limitation, that limitation was not changed during the bench hearing. Nor can it be, really. That is trying to reevaluate and readjudicate something that is now law of the case. It should have been argued during the appeal of the trial and finding of guilt for infringing the patent, just like the injunction should have been argued at that time.

DISH/SATS has quite a bit of culpability by now arguing for changes that should have been argued in front of the CAFC long ago.


----------



## jacmyoung

dfd said:


> ...Look at jac's post about how E* is doing everything in their rights to prolong this case and tell us again that E* is entitled to speedier justice.


The delay in this contempt proceeding is all Judge Folsom's making, he could have found violation "on the face" a year ago, instead he agreed to do his colorable difference test and found the accused devices only colorably different than the adjudicated devices, then said TiVo did not have to again prove infringement by clear and convincing evidence.

Not only did he delay the process, but in doing so, made several key contentions that clearly are in conflict with KSM and all subsequent case law. That in addition to the "inform provision" in the current injunction, all together scream for a reversal and vacate.

In the end TiVo becomes a victim of their own overly aggressive approach to rely on the contempt proceedings, rather a new action to prove E*'s new design still infringes. TiVo even have to disavow their own "core of invention" to make their argument. This disavowing of their own invention will be on the record and will have a serious impact on their future claim validity test as well as any new lawsuits.


----------



## scooper

Doesn't matter what happened when - if you can't go back and correct it to actually look like reality - what's the point of having court at all ?

I still think we would be better off to totally abandon the patent process as it's now "practiced" in the US - Shutdown the PTO, and make all patents expire on a certain date. If you have something that's good enough - then it's good enough.


----------



## Ken984

If you did that what would be the reason for anyone to invent anything? It would just be stolen immediately and the inventor would be left with nothing. You have to protect the people who come up with the great ideas.



scooper said:


> Doesn't matter what happened when - if you can't go back and correct it to actually look like reality - what's the point of having court at all ?
> 
> I still think we would be better off to totally abandon the patent process as it's now "practiced" in the US - Shutdown the PTO, and make all patents expire on a certain date. If you have something that's good enough - then it's good enough.


----------



## scooper

Because they really have a good invention ? 

Ok - just make it that companies can't patent.


----------



## Greg Bimson

jacmyoung said:


> The delay in this contempt proceeding is all Judge Folsom's making, he could have found violation "on the face" a year ago, instead he agreed to do his colorable difference test and found the accused devices only colorably different than the adjudicated devices, then said TiVo did not have to again prove infringement by clear and convincing evidence.


A little more technical than that:

DISH/SATS claimed that their workaround no longer infringes, and that because a modification is in play, _KSM_ applies. TiVo said that the modification infringes, so DISH/SATS could be found in contempt for that as well.

If DISH/SATS didn't make the argument about a modification, there would be no use to even evaluate the workaround.

And the infringement was proven with clear and convincing evidence. TiVo was able to refute every point that DISH/SATS made regarding changes to the devices.


jacmyoung said:


> Not only did he delay the process, but in doing so, made several key contentions that clearly are in conflict with KSM and all subsequent case law. That in addition to the "inform provision" in the current injunction, all together scream for a reversal and vacate.


Why? The assumption is that DISH/SATS can take newly-manufactured 625's, create new software and then send them out to be sold. However, that workaround cannot be done for sold and installed devices.

And I still don't believe anything that was done is in conflict with _KSM_. Over 80 percent of the memo deals with the modifications and _KSM_.


jacmyoung said:


> In the end TiVo becomes a victim of their own overly aggressive approach to rely on the contempt proceedings, rather a new action to prove E*'s new design still infringes.


Huh? The way DISH/SATS operates, they'd argue the Infringing Products cannot be retried because they've been adjudged before.

Besides, why use a new action to prove infringement when the contempt route worked? Again, it would be DISH/SATS fault for using "we modified the devices" as the defense against contempt.


----------



## dfd

scooper said:


> Because they really have a good invention ?
> 
> Ok - just make it that companies can't patent.


Are you kidding or a communist?

If companies cannot protect their inventions then they really don't need to have employees working on inventing things then do they?


----------



## P Smith

More likely Utopian.


----------



## dfd

P Smith said:


> More likely Utopian.


Isn't that just a medicated communist?


----------



## jacmyoung

dfd said:


> Are you kidding or a communist?


Uncalled for.



> If companies cannot protect their inventions then they really don't need to have employees working on inventing things then do they?


But if you must insist it is a form of communism, you must agree the government should stay out of the invention business, let the companies try to protect their own inventions, for example by keeping their inventions trade secrets.

A lot of inventions today are protected that way, by keeping them as trade secrets, without relying on the limited monopolistic patent rights imposed by the government, which if you must evoke your idealism, is more close to communism than not.

Scooper is actually advocating a pure market approach. Get your theory straight first before throwing some scary accusations around.

You are the ones who rely on the government, scream and cry when the government "fails to protect" your monopolistic right.


----------



## jacmyoung

Based on the E*'s second reply brief, there is really no more to say except two things:

1) E* lawyers are arguing the say way I have been doing, the interpretation of the injunction will be done by the appeals court de novo.

2) As I suspected, in TiVo's response to E*'s motion for judicial notice of the PTO action, TiVo could not again assert that start code detection and indexing were "irrelevant" to the software claims, despite the fact the PTO said "parse audio and video data" is interpreted as "detecting start codes and indexing the start codes..."

TiVo cannot go against the PTO, else they risk having the final nail on their software claims coffin. And E* wasted no time pointing that out to the appeals court.


----------



## Greg Bimson

The PTO action has no bearing on the prior infringement nor the current contempt appeal.


----------



## jacmyoung

Greg Bimson said:


> The PTO action has no bearing on the prior infringement nor the current contempt appeal.


And yet as I pointed out earlier, Judge Folsom now says Charlie's belief that the new design no longer infringed would be taken at its face value, as a result, the judge ruled the violation was not willful, no double or treble, and the licensing rate is still at $1.25.

What had caused such change of heart? The only thing happened between the contempt ruling and the sanction ruling is the E*'s letter, asking him to take a look at the PTO's Office action on the TiVo's software claims.


----------



## dfd

jacmyoung said:


> Uncalled for.
> 
> But if you must insist it is a form of communism, you must agree the government should stay out of the invention business, let the companies try to protect their own inventions, for example by keeping their inventions trade secrets.
> 
> A lot of inventions today are protected that way, by keeping them as trade secrets, without relying on the limited monopolistic patent rights imposed by the government, which if you must evoke your idealism, is more close to communism than not.
> 
> Scooper is actually advocating a pure market approach. Get your theory straight first before throwing some scary accusations around.
> 
> You are the ones who rely on the government, scream and cry when the government "fails to protect" your monopolistic right.


How could a good idea that is easily reverse engineered be protected in these cases? Private thugs perhaps?

The PTO may not be perfect but it is the law of the land.

Communism and anarchy do not seem like better solutions.


----------



## jacmyoung

dfd said:


> How could a good idea that is easily reverse engineered be protected in these cases? Private thugs perhaps?
> 
> The PTO may not be perfect but it is the law of the land.
> 
> Communism and anarchy do not seem like better solutions.


All I am saying is, before you attack scooper for being communist, at least first figure out who is more close to communism, his advocating a pure market force approach, or your advocating of government protection?


----------



## dfd

jacmyoung said:


> And yet as I pointed out earlier, Judge Folsom now says Charlie's belief that the new design no longer infringed would be taken at its face value, as a result, the judge ruled the violation was not willful, no double or treble, and the licensing rate is still at $1.25.
> 
> What had caused such change of heart? The only thing happened between the contempt ruling and the sanction ruling is the E*'s letter, asking him to take a look at the PTO's Office action on the TiVo's software claims.


Do you ever pause before making these giant leaps? You've been nothing but wrong when predicting what Folsom must do and then bad mouthed him when he didn't do what you stated he must. Now you think you know what made him make his ruling even though he stated his reasons in the ruling.


----------



## jacmyoung

dfd said:


> Do you ever pause before making these giant leaps? You've been nothing but wrong when predicting what Folsom must do and then bad mouthed him when he didn't do what you stated he must. Now you think you know what made him make his ruling even though he stated his reasons in the ruling.


Your above rant contains nothing of substance.

Show me where Judge Folsom stated his reasons when he said he decided to take Charlie's belief at its face value?

He never believed in Charlie, else he would never have said how badly Charlie had violated his order and how severely TiVo had been wronged by Charlie.

Show me one single reason stated by Judge Folsom in his sanction ruling why suddenly, now, he decided to take Charlie's belief at its face value.


----------



## scooper

dfd said:


> How could a good idea that is easily reverse engineered be protected in these cases? Private thugs perhaps?
> 
> The PTO may not be perfect but it is the law of the land.
> 
> Communism and anarchy do not seem like better solutions.


I think the private thugs idea would be better than we have now...

And yes - I think the Patent system is THAT BROKEN right now.


----------



## dgordo

jacmyoung said:


> Uncalled for.
> 
> But if you must insist it is a form of communism, you must agree the government should stay out of the invention business, let the companies try to protect their own inventions, for example by keeping their inventions trade secrets.
> 
> A lot of inventions today are protected that way, by keeping them as trade secrets, without relying on the limited monopolistic patent rights imposed by the government, which if you must evoke your idealism, is more close to communism than not.
> 
> Scooper is actually advocating a pure market approach. Get your theory straight first before throwing some scary accusations around.
> 
> You are the ones who rely on the government, scream and cry when the government "fails to protect" your monopolistic right.


Uhm, trade secrets are protected by the Uniform Trade Secrets Act and by common law. Some would argue that the government gives trade secrets more protection because of the theoretical unlimited time for protection.


----------



## dgordo

Curtis52 said:


> I'm pretty sure the Goldman Sachs folks are analysts.
> 
> NEW YORK (AP) -- Goldman Sachs downgraded Dish Network Corp. to "Sell".
> 
> Litigation issues with TiVo Inc., declining market share and the unsustainability of its promotional efforts to build subscribers make Dish a "Sell," Armstrong said. He also said Dish is lacking in unique content.


True, they are analysts, though often wrong. Let's not confuse Goldman Sachs with the trash website that promoted the wonderful foolish four investment strategy.


----------



## jacmyoung

dgordo said:


> Uhm, trade secrets are protected by the Uniform Trade Secrets Act and by common law. Some would argue that the government gives trade secrets more protection because of the theoretical unlimited time for protection.


What do you expect? That give trade secrets only 20 years, after that people must go to "the church" and come clean of their secrets?

And BTW, reverse engineering is actually allowed, otherwise why is there need to allow TiVo (or E*) to keep their software codes as trade secret? The patent law is not to prevent reverse engineering, only to prohibit infringement. If E* (or ATT, or Verizon) manages to read TiVo's patent descriptions, come up with their own software codes to perform all the steps of the TiVo's invention, *except one step*, it is perfectly legal, as long as they do not do so by spying on the TiVo's secret software codes.

So you see, dfd's so called reason (prevent reverse engineering) for having the patent law is not even a valid one.


----------



## Curtis52

scooper said:


> I think the private thugs idea would be better than we have now...
> 
> And yes - I think the Patent system is THAT BROKEN right now.


Would it be possible to move the off topic "general disagreement with the patent system" posts to a more general forum?


----------



## jacmyoung

Curtis52 said:


> Would it be possible to move the off topic "general disagreement with the patent system" posts to a more general forum?


If a "general disagreement" leads to some "specific disagreements" then I think they can still be on topic.

As I stated earlier, the patent law does not prohibit "reverse engineering", to the contrary it encourages it. The purpose of the patent law, foremost, is not to give limited monopoly to the patent owners, this is only the secondary means to encourage the inventors to fully disclose their inventions.

The #1 reason for having a patent system is that the inventors are encouraged to *fully disclose* their inventions, in a way that when *a person of ordinary skill* in the field of the invention reads the fully disclosed invention, he/she may duplicate the invention without undue experimentation. Why? So ordinary skilled persons can use the innovative ideas and apply them in the commerce, as long as they do not infringe each and every step of the invention.


----------



## dgordo

jacmyoung said:


> What do you expect? That give trade secrets only 20 years, after that people must go to "the church" and come clean of their secrets?
> 
> And BTW, reverse engineering is actually allowed, otherwise why is there need to allow TiVo (or E*) to keep their software codes as trade secret? The patent law is not to prevent reverse engineering, only to prohibit infringement. If E* (or ATT, or Verizon) manages to read TiVo's patent descriptions, come up with their own software codes to perform all the steps of the TiVo's invention, *except one step*, it is perfectly legal, as long as they do not do so by spying on the TiVo's secret software codes.
> 
> So you see, dfd's so called reason (prevent reverse engineering) for having the patent law is not even a valid one.


My understanding of your point, the government doesn't protect trade secrets; my point, yes they do.


----------



## jacmyoung

dgordo said:


> My understanding of your point, the government doesn't use protect trade secrets; my point, yes they do.


Not what I said. For starter, I never said the government should not protect patent rights, nor shall the government not protect trade secrets.

I was only pointing out dfd's incorrect assertion that when scooper said he liked to abandon the current patent law, it was a communist idea. I have pointed out why dfd was wrong for making such accusation on many levels.

On the other hand, I am all for the patent system, even though I believe we need to reform it. I am also for protecting trade secrets. I do not consider either idea communist


----------



## dfd

jacmyoung said:


> What do you expect? That give trade secrets only 20 years, after that people must go to "the church" and come clean of their secrets?
> 
> And BTW, reverse engineering is actually allowed, otherwise why is there need to allow TiVo (or E*) to keep their software codes as trade secret? The patent law is not to prevent reverse engineering, only to prohibit infringement. If E* (or ATT, or Verizon) manages to read TiVo's patent descriptions, come up with their own software codes to perform all the steps of the TiVo's invention, *except one step*, it is perfectly legal, as long as they do not do so by spying on the TiVo's secret software codes.
> 
> So you see, dfd's so called reason (prevent reverse engineering) for having the patent law is not even a valid one.


My point about reverse engineering was supposed to be that an object that is easily reverse engineered, like a valve, cannot be protected by 'trade secret'. Once the product hits the market there is no putting that genie back in the bottle.

And the inventor deserves the rewards and the only way to protect the inventor is via the patent.


----------



## jacmyoung

dfd said:


> My point about reverse engineering was supposed to be that an object that is easily reverse engineered, like a valve, cannot be protected by 'trade secret'. Once the product hits the market there is no putting that genie back in the bottle.
> 
> And the inventor deserves the rewards and the only way to protect the inventor is via the patent.


What about objects that are not easily reverse engineered, like the "source object", "transform object" or "sink object"? Do people even understand what the #^*@ these "objects" are?


----------



## deaincaelo

Greg Bimson said:


> But it wasn't only Judge Folsom and TiVo's experts. The PID filter separates by analysis, i.e., parses the transport stream which has about 12 distinct programming channels so that it can separate out the channel one wishes to tune.


which is different from tuning to digital subchannels how?



Greg Bimson said:


> And it is the Hardware Claims that require the Broadcom Chip. It is practically mandatory for the Hardware Claims to be able to create an index and use a Media Switch.


This is about the Software Claims, which do not have such requirement. [/QUOTE]

All true. This does not mean that the broadcom chip did not perform the infringing processes at the time.



Greg Bimson said:


> First, just because neither have been accused as infringements does not mean they are not infringements. TiVo just doesn't care whether they are.


I agree. In fact, I think they are infringements. now look up prior art. Echostar didn't psyciacally steal tivo's patent from th future before it existed.



Greg Bimson said:


> Second, the JVC VCR isn't covered, as one cannot "Time Warp" while a VCR is recording.


Sorry, I don't see where claim 31 says time warp. Also, I'm not certain that's completely true. 


Greg Bimson said:


> They did invent . . . the ability to record programming and watch recorded programming simultaneously.


Sorry, no. You can do so on a device made by the Go-Video company almost a decade before Tivo existed. here's a patent

Also, I don't see where claim 31 says anything about recording and watching simultaneously.



Greg Bimson said:


> And TiVo is certainly harmed by competition when the competition has infringed upon their patent.


And no one else is harmed by Tivo being granted exclusivity over technology that previously was available to everyone? :nono:

Dish had access to the patented process before Tivo. They used it. They had the right to use it. So did I. Now, they don't. That means I don't. And when I have something and it's taken away from me without consent or compensation, theres a word for that, even if it's done legally.



Greg Bimson said:


> Let's not forget. Your argument in your last post centers on the fact that DISH/SATS cannot be infringing because they use a PID filter.


No, it does not. I don't believe I said once in that post that anyone did not infringe.



Greg Bimson said:


> Therefore, I must assume you have no problem seeing that DISH/SATS infringed under the old software.


I think it's possible. However, those claims have been reversed and remanded and engineered out in good faith. The only thing Dish has a standing conviction for right now is a claim interpretation that flies in the face of common sense.


----------



## deaincaelo

dfd said:


> I'm aware of one suit and it didn't involve an E* patent rather a patent application. Can you please cite the patents that E* is suing Tivo for infringing?
> 
> And stating that the wheels of justice move much slower for E* is just a bit of a stretch. Look at jac's post about how E* is doing everything in their rights to prolong this case and tell us again that E* is entitled to speedier justice.


google and you know as much as I. I don't have access to Echostar, or Tivo's, patent portfolios.

E* and Tivo are both going into this thing tooth and nail. They both rolled in the mud. I can't blame them for trying to slow Tivo down when they're past appeals and don't even have a trial date yet after 4 years. Let's say for a moment that this is like replay- where neither can make a functional DVR without cross-patents. E* could lose all it's rights to enforce it's IP against Tivo, not to mention equal footing as an equal inventor, just because the difference in time gave Tivo enough leverage.

It's not the money that's stopping a licensing arrangement. In fact, one of Tivo's objections is that they are basically forced into a mandatory licensing arrangement right now.


----------



## Greg Bimson

I'd go into the other points, but this one seems more interesting:


deaincaelo said:


> E* and Tivo are both going into this thing tooth and nail. They both rolled in the mud. I can't blame them for trying to slow Tivo down when they're past appeals and don't even have a trial date yet after 4 years. Let's say for a moment that this is like replay- where neither can make a functional DVR without cross-patents. E* could lose all it's rights to enforce it's IP against Tivo, not to mention equal footing as an equal inventor, just because the difference in time gave Tivo enough leverage.


Time difference? Just go back and look at the fights regarding the telephone patent.

And although there only appears to be one infringement suit against TiVo regarding DVR functionality, it is currently stayed. So it appears that TiVo is looking like the Alexander Graham Bell, while DISH/SATS is Elisha Gray.


----------



## scooper

Greg Bimson said:


> But it wasn't only Judge Folsom and TiVo's experts. The PID filter separates by analysis, i.e., parses the transport stream which has about 12 distinct programming channels so that it can separate out the channel one wishes to tune.
> 
> And it is the Hardware Claims that require the Broadcom Chip. It is practically mandatory for the Hardware Claims to be able to create an index and use a Media Switch.
> 
> This is about the Software Claims, which do not have such requirement.First, just because neither have been accused as infringements does not mean they are not infringements. TiVo just doesn't care whether they are.
> 
> Second, the JVC VCR isn't covered, as one cannot "Time Warp" while a VCR is recording.TiVo may not have invented recording TV. They did invent a process and an apparatus for a method to record and play back TV, specifically the ability to record programming and watch recorded programming simultaneously. And TiVo was granted a patent for that.
> 
> And TiVo is certainly harmed by competition when the competition has infringed upon their patent.
> 
> Let's not forget. Your argument in your last post centers on the fact that DISH/SATS cannot be infringing because they use a PID filter. Therefore, I must assume you have no problem seeing that DISH/SATS infringed under the old software. And it is with those same receivers, admitted and adjudged infringing, that DISH/SATS builds upon their market share. If those DVR's were immediately disabled, DISH/SATS DVR business would be halved. It would be a bit better than TiVo's current market share.


IF Echostar/Dish is infringing - it is NOT because of the PID filter - the infringement has to be elsewhere. If you're insisting that the using the PID filter is what makes them infringing - I'll put you into the same category as the "Expert Witlesses".

Because if you're insisting that PID filter is what makes them infringe - there will never be any other device that allows anybody to record OTA TV anymore until the '389 patent expires.


----------



## Greg Bimson

scooper said:


> IF Echostar/Dish is infringing - it is NOT because of the PID filter - the infringement has to be elsewhere. If you're insisting that the using the PID filter is what makes them infringing - I'll put you into the same category as the "Expert Witlesses".


There are numerous aggregated elements which make the receiver, and therefore DISH/SATS, infringe upon the patent. One such piece is the PID filter, as it fulfills the "parse" element claim limitation. It isn't just the fact there is a PID filter that infringement can be found. It is the rest of the steps as well.

So I'll be just as happy as other so-called experts to be in the "Expert Witlesses" program.

Except so far, I've been right.


scooper said:


> Because if you're insisting that PID filter is what makes them infringe - there will never be any other device that allows anybody to record OTA TV anymore until the '389 patent expires.


Like I said, it is only one piece of the puzzle.

If DISH/SATS downloaded software today that could not record while playing back a recorded show, technically DISH/SATS would be off the hook for infringement. And there would be DVR functionality, just more limited than is currently installed.


----------



## spear61

I took a look at the preliminary reexam document from the patent office and their explanation of the development of the technology when they considered knowledge "taught" in two older patents,. It sure looks likeTivo may be winning some legal battles, but is going to lose the patent war.

As they explained, the Tivo examiner noted an older controlling patent that is key to their preliminary reversal when combined with another older patent. The examiner had not reviewed it in detail nor referenced its details when granting the Tivo patent. They explain that congress changed the rules a few years ago to explicitly provide for overturning patents even if a reference had been made to older "teaching" patents in certain cases.


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## Greg Bimson

As I recall, about a year ago, there was a case in front of SCOTUS, where SCOTUS basically said the combination of two patents is not patentable. That is new case law. And it is case law that can overturn the two claims at the heart of this dispute.

And it still does nothing to this dispute.


----------



## jacmyoung

Greg Bimson said:


> ...Except so far, I've been right...


Right about what? That start code detection and indexing are irrelevant to the software claims? Even though the PTO has stated their interpretation of the "parses audio and video data" as detecting start codes and build an index of them? More importantly TiVo does not even try to dispute the PTO's interpretation?

Why are we even discussing the PID filter at this time? You don't think the above interpretation is enough as far as infringement is concerned?


----------



## CuriousMark

jacmyoung said:


> Right about what? That start code detection and indexing are irrelevant to the software claims? Even though the PTO has stated their interpretation of the "parses audio and video data" as detecting start codes and build an index of them? More importantly TiVo does not even try to dispute the PTO's interpretation?


At this stage of the PTO review the interpretation as you call it is to simply to echo what Dish told them in their filings to get the review. PTO at this stage was not allowed to hear from TiVo yet. Reading that echo as reasoned decision taking both sides arguments into account would be wrong. Now it will be TiVo's turn to dispute it with the PTO, and they will. After that, PTO will decide based on hearing both sides. So at this point what the PTO says is meaningless as it really is just an Echo of Dish's argument meant to show they understand Dish's position, not that they necessarily agree with it. Of course Dish reads more into it for maximum effect to support their legal and publicity arguments. But that is all they are.


----------



## jacmyoung

CuriousMark said:


> ...So at this point what the PTO says is meaningless as it really is just an Echo of Dish's argument meant to show they understand Dish's position, ...


But also agree with them. Not all reexaminations end up in rejection as an initial action. The fact is the PTO agreed with E*, not just agreeing with them, but the PTO went far beyond E* in describing the term "parse audio and video data", not only that, the PTO also cited specific paragraphs in the TiVo's patent descriptions to support the so called "examiner's notes". E* did not cite those TiVo's patent descriptions, the examiner did.

Of course TiVo will have their chance to refute such interpretation, but why didn't TiVo do so now in response to E*'s motion for judicial notice of the PTO reexamination? Because TiVo cannot, as I said, "parse audio and video data" did mean "detecting start codes and indexing them". Without such intepretation the software claims would have been invalidated last time, or never been even granted in the first place.

The PTO's decision to reject the claims should play no role in the current appeal, but the PTO's interpretation of the claims is part of the "prosecution history of the patent" as the appeals court argued over and over, must be part of the court consideration when they try to interpret the claim terms.

Judge Folsom's court never interpreted the claim term "audio and video data", only the term "parse" to mean "analyze". The term "parse audio and video data" is therefore up for grab.

E* said "parse audio and video data" means analyzing audio and video start codes. TiVo says start codes are irrelevant to the software claims. When the appeals court tries to determine who to agree, they will look to the district court claim constructions for clue, except there is none. But they must also look for the prosecution history of the patent for clue, which there is one, by the PTO, in this latest PTO action, which is part of the patent prosecution history.

The PTO's interpretations of the claim terms trump any other interpretations, whether by the patentees, by a third party or even by the courts. In this case it is even more so because no one, not even TiVo, disputes such PTO's interpretation.


----------



## CuriousMark

Sounds like wishful thinking to me. I guess we will see when we see.


----------



## jacmyoung

CuriousMark said:


> Sounds like wishful thinking to me. I guess we will see when we see.


What is not wishful thinking is there are Federal Circuit cases in which the PTO reexaminations were taken judicial notices. If you are correct then such cases should not have existed.

It is certainly true there are cases of which the appeals court declined to take judicial notices of the PTO reexaminations because no initial actions had been made, or when the initial actions were made, the actions themselves were not considered relevant factors.

Here E* is not asking the appeals court to take notice of the action (i.e. the rejection of the software claims) rather the specific interpretations of the claim terms stated in the reexamination documents. This is similar to introducing new evidence. TiVo does not dispute the new evidence, only that TiVo objects to the introduction of the new evidence, but not because the new evidence is time barred, rather that according to TiVo, the new evidence, well just should not be considered because the PTO did not consider Judge Folsom's claim constructions in making the interpretations.


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## phrelin

phrelin said:


> Well, we should have this resolved in another 6 to 8 months and 600 posts.


I sure am a poor estimator. This thread is over 1,200 posts in 3 months.


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## dfd

phrelin said:


> I sure am a poor estimator. This thread is over 1,200 posts in 3 months.


I always bet the over - I hate to lose my bet before half-time.


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## Curtis52

phrelin said:


> Well, we should have this resolved in another 6 to 8 months and 600 posts.


Define "resolve". Metrics should be measurable to be meaningful.


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## jacmyoung

The only full document from TiVo with regard to the PTO action was its letter response to Judge Folsom, in which TiVo did not dispute the PTO's interpretation of the term "parse audio and video data" to be detecting start codes and building an index of...

Unfortunately we do not have a copy of the TiVo's reply to the appeals court on the PTO action issue, only the following statement made by E* in its gray brief:



> TiVo's response-that "the PTO's preliminary finding was not based on the district court's construction of the relevant claim language," and that the agency action is not yet final,...


On the first TiVo's point, the PTO findings naturally are not based on the district courts' constructions of the relevant claim language, because had they done so, then once a patent claim is validated by the court, it could never have been invalidated by the PTO in a later action. But it happens all the time because the PTO actions are independent of the courts', so the first of the TiVo's contention fails.

What the PTO does do however, at least based on my reading of all the documents in this reexamination, is to take into consideration of TiVo's own interpretations of the claim terms during the trial, then back such TiVo's own interpretations with the PTO's citations from the TiVo's own patent specification. What that means is, the PTO takes a similar position as E*, that whatever TiVo said during the trial, can be used for or against TiVo later.

On the second TiVo's point, again whether the action is final or not is not the point. The point is now we have the PTO whose interpretation of the claim terms agrees with E*, against TiVo. Or put it the other way, both the E*'s and the PTO's above interpretation agree with what TiVo said during the trial, but against what TiVo said during the contempt proceedings.

The conclusion? TiVo's position now contradicts with its position then.


----------



## Curtis52

Greg Bimson said:


> As I recall, about a year ago, there was a case in front of SCOTUS, where SCOTUS basically said the combination of two patents is not patentable. That is new case law. And it is case law that can overturn the two claims at the heart of this dispute.
> 
> And it still does nothing to this dispute.


Yep. The USPTO stuff is irrelevant.


----------



## phrelin

Curtis52 said:


> Define "resolve". Metrics should be measurable to be meaningful.


:lol:


----------



## Curtis52

Janney Montgomery:

"INVESTMENT CONCLUSION:
Overall, we believe DISH is trying to rewrite established case law while TIVO
presents a compelling argument on how DISH's actions can create a dangerous precedent by highlighting the broader issue for the judicial system, which is if defendants can steal intellectual property and then continuously be held unaccountable for their actions through legal delays that cost less than the profits defendants make on infringing products. We believe the TX court's recent damage assessment helps TIVO make this point.
KEY POINTS:
• Hearing Preview — After reviewing the hundreds of pages in briefs filed by
DISH and TIVO with the US Court of Appeals in advance of November's hearing,we are even more confident in TIVO's position based on our view that it has put forth a strong logical argument with a mountain of trial evidence that undermines DISH's assertions. Conversely, we believe DISH's brief contains a nonsensical defense that relies on aggressive wording and out of context comments, while trying to yet again redefine its products, the injunction order, TIVO's patent, and the District Court's interpretation of the patent claims."

"Based on prior victories and our reading of the briefs, we see TIVO continuing to have the upper hand in the trial and see the company having a 75% chance of prevailing. "


----------



## jacmyoung

Curtis52 said:


> Yep. The USPTO stuff is irrelevant.


Whether the appeals court will take judicial notice of the PTO interpretations is of course not known. They may grant the motion, or deny the motion.

But I hope you do not dispute one thing, the PTO's interpretations, which the examiner himself cited TiVo's patent specification for support, even if you truly believe he simply adopted E*'s versions of the interpretations, at a minimum it shows E*'s interpretations have merits, maybe some things you want people to disregard, but still you cannot deny they are there. When you consider that TiVo does not even try to dispute such PTO's opinions, I think *a reasonable person can agree there is doubt as whether infringement of the software claims by the new design is true or not*.

Even if the PTO's decision "must be disregarded," I am sure you are capable of thinking for yourself, given the above facts, does that highlighted statement above sound fair to you? Again here I am not asking what you think the appeals court should rule, rather what is your own honest opinion.

In the end of course none of our "honest opinions" matter, only the opinion of the court. That however does not mean one shall not have opinions of his own though.

As far as that analyst's 75% prediction, they are pretty much saying TiVo will win, it is 100%. The only thing I want to point out is they also predicted there was no way the appeals court would stay the order pending appeal.


----------



## jacmyoung

I have used the Supreme Court Ebay decision in the past. Even though the Ebay decision was about whether a permanent injunction should be automatically issued upon a finding of infringement (the answer is no), the reasoning used by the Supreme Court can be easily related to the current situation:



> The Federal Circuit's observation that such complex patent suits often beget subsequent litigation demonstrates that it is not always clear where the metes and bounds of a patent right are to be drawn. Given this uncertainty and the potentially wasteful costs of a contempt proceeding, companies are often compelled to agree to an excessively high licensing fee.*3*
> 
> *3* That uncertainty is often compounded by district courts that fail properly to instruct the jury as to the construction of the patent claims. Because such delegation of claim construction to a jury renders the basis for infringement essentially indeterminate, as was the case here, the problems created by the unbending use of injunctive power are exacerbated. *The uncertainty ensures that further litigation about the scope of the patent is inevitable*. An important hedge against these harms lies in the careful exercise of discretion whether to issue an injunction in such cases.


The sentence I highlighted above is in response to Greg's continued assertion that Judge Folsom's claim constructions are "law of the case" that cannot be questioned.

In the above Ebay case, the district court's claim constructions were final and appealed, affirmed and not even in dispute in front of the Supreme Court. Did the Supreme Court say those claim constructions were "law of the case" and unbending? No, the Supreme Court said such claim constructions (by the district courts, or in our case by Judge Folsom) are uncertain even after the appeals and affirmation, and further litigations about the scope of the patent were often inevitable.

Here it is even more obvious that Judge Folsom had failed to construe the claim term "parse audio and video data", a perfect example of what the Supreme Court was talking about.


----------



## jacmyoung

Today TiVo and E* jointly filed paper to extend TiVo's motion deadline for attorney fees and costs to Judge Folsom to 10/2, effectively doubling the judge's 14 days to 28 days.

Why would TiVo agree to another delay? This certainly does not help Judge Folsom finalize his sanction decisions "well in advance of" the November appeals court hearing. I think Judge Folsom should deny this request

If you guys can agree on the costs yourselves, then do so now, else just tell me what they are so I can rule and put it to the appeals court in time for review.

Keep in mind it was Judge Folsom who insisted he would get his sanction ruling out in time for the appeals court review. What had prompted TiVo to agree to a delay? Are parties both trying to not let the sanctions be part of the appeals court review?


----------



## jacmyoung

Some new developments that are interesting to report.

First, not surprisingly Judge Folsom granted the request to extend TiVo's filing deadline to 10/2/09 of any dispute in attorney fees and costs. Though the court caption seemed to imply the request was made by TiVo, it was actually a joint request.

Second, I checked on the appeals court site, it appeared on 9/14/09, E* filed their reply to TiVo's reply to E*'s motion for judicial notice of the reexamination proceedings. What that means is all the filings are complete for the appeals court to rule on this motion.

Third and the most interesting, also on the appeals court site, a few days ago TiVo filed a request that the appeals court separates the November hearing date (if November date will be practicable) apart from the date set for another appeal case (Medtronic v. Brainlab) to avoid "conflict".

I decided to do a quick Google search, and found out what that appealed case was about:

http://pdfserver.amlaw.com/ca/sanction0215.pdf

It turned out the Medtronic case was a case about award of attorney fees and costs. In that case, the plaintiffs were ordered to pay the excessive attorney fees and costs incurred by the defendants because:



> Upon reflection, this Court finds and concludes that the rulings on the claims construction issues adjudicated the fairly debatable issues in this case and that the manner in which plaintiffs' counsel continued the prosecution of the claims through trial was in disregard of their obligations as officers of the court. The fairness of the adversary system of adjudication depends upon the assumption that trial lawyers will temper zealous advocacy of their client's cause with an objective assessment of its merit and be candid in presenting it to the court and to opposing counsel. When that assumption has been contradicted by a trial record of conduct reflecting a winning is all that is important approach to the trial process, the court has a duty to redress this resulting harm to the opposing party.


It appears there is a good reason why TiVo wanted to have the dates of the two appeal cases set as apart from each other as possible. Maybe as I have said earlier, E* indeed had told TiVo E* would ask Judge Folsom to award E* their attorney fees and costs as the defendants, though as I said Judge Folsom will undoubtedly deny such motion, but nevertheless E* can appeal such denial.

Why? TiVo's lawyers knew E*'s new design no longer infringed, but they pressed on with the contempt proceedings anyway, rather tried to resolve the issues in a new infringement suit. In the contempt proceedings, TiVo used new infringement theories, even conflicting theories, such as insisting that having a PID filter qualified for infringement, and their software claims had nothing to do with start code detection-the centerpiece of the invention, just to name a few.

Interesting indeed!


----------



## scooper

Interesting indeed. Not only could Tivo lose the appeal case, but then they could have to pay Echostar's attorney's fees ? Talk about adding insult to injury...


----------



## jacmyoung

scooper said:


> Interesting indeed. Not only could Tivo lose the appeal case, but then they could have to pay Echostar's attorney's fees ? Talk about adding insult to injury...


Who knows, maybe that was why TiVo agreed to extend its filing deadline to 10/2, for any dispute of attorney fees and costs, because TiVo wants to find out what will the appeals court's hearing schedules be for both cases. The two appeal cases appear that they might both land in November.

Otherwise there is simply no reason for a delay, all TiVo needed to do was to have their accountants crank out the numbers, show them to E*, and of course E* will object, TiVo will just motion Judge Folsom by 9/18, of course Judge Folsom, having already said he was going to award TiVo the attorney fees and costs, will almost certainly grant TiVo's wish, TiVo can then issue another press release, putting even more pressure on Charlie.

There was no reason to delay this proceeding, unless E* had reminded TiVo something TiVo did not consider before&#8230;Something I said a week ago, attorney fees and costs can be a two-way street.


----------



## Greg Bimson

jacmyoung said:


> Upon reflection, this Court finds and concludes that the rulings on the claims construction issues adjudicated the fairly debatable issues in this case and that the manner in which plaintiffs' counsel continued the prosecution of the claims through trial was in disregard of their obligations as officers of the court.


There aren't any "fairly debatable issues". The claims construction is law of the case; there is no way to appeal it.



jacmyoung said:


> TiVo's lawyers knew E*'s new design no longer infringed, but they pressed on with the contempt proceedings anyway, rather tried to resolve the issues in a new infringement suit.


Irony:

TiVo during the trial proved that DISH/SATS met the standards for infringement, including:
PID filtering met the "parse" step limitation
The circular buffer met the "self-regulate" step limitation

And when it came time to re-evaluate infringement, both steps were still being met, in the same manner when they were found infringing.

Maybe TiVo wanted to draw attention that DISH/SATS' position that they no longer infringed and somehow followed the disable order is an "untenable position", so they should be awarded incredible amounts of fees to force DISH/SATS to comply with the injunction.


jacmyoung said:


> In the contempt proceedings, TiVo used new infringement theories, even conflicting theories, such as insisting that having a PID filter qualified for infringement, and their software claims had nothing to do with start code detection-the centerpiece of the invention, just to name a few.


Not conflicting. The "centerpiece of the invention" was in the Hardware Claims. If DISH/SATS wishes to continue arguing the Hardware Claims, this entire contempt proceeding is frivolous.

After all, this is about the Software Claims.


----------



## Greg Bimson

Pertinent info:


> Rather than accept that the claims construction rulings stripped the merits from this case, counsel chose to pursue a strategy of distorting those rulings, misdirecting the jury to a different reading of the claim language, and blatantly presenting the jury with a product to product comparison contrary to established law and the Court's cautionary instructions.


Rather than accept that the claims constructions were the law of the case, counsel chose to pursue a strategy of distorting those rulings, misdirecting a contrary argument to a different reading of the injunction and claim language, and blatantly presenting Judge Folsom with a product to product comparasion contrary to established law and the Court's cautionary instructions.

Wonder why TiVo is drawing attention to the case?


----------



## scooper

Greg Bimson said:


> There aren't any "fairly debatable issues". The claims construction is law of the case; there is no way to appeal it.
> 
> Irony:
> 
> TiVo during the trial proved that DISH/SATS met the standards for infringement, including:
> PID filtering met the "parse" step limitation
> The circular buffer met the "self-regulate" step limitation
> 
> And when it came time to re-evaluate infringement, both steps were still being met, in the same manner when they were found infringing.
> 
> Maybe TiVo wanted to draw attention that DISH/SATS' position that they no longer infringed and somehow followed the disable order is an "untenable position", so they should be awarded incredible amounts of fees to force DISH/SATS to comply with the injunction.Not conflicting. The "centerpiece of the invention" was in the Hardware Claims. If DISH/SATS wishes to continue arguing the Hardware Claims, this entire contempt proceeding is frivolous.
> 
> After all, this is about the Software Claims.


You mean the "*REMANDED* Hardware claims ? Then we shouldn't have had this infringement hearing at all....


----------



## jacmyoung

Greg Bimson said:


> ...The "centerpiece of the invention" was in the Hardware Claims. If DISH/SATS wishes to continue arguing the Hardware Claims, this entire contempt proceeding is frivolous.
> 
> After all, this is about the Software Claims.


The centerpiece of the invention is equally in the software claims. If not, then TiVo must tell us what is the centerpiece of the invention disclosed by the software claims. The PID filter? Are you serious?

E* said the centerpiece in the software claims is start code detection and indexing, TiVo of course can argue no, this is not it, but that is not enough, TiVo must say then what invention does the software claims disclose, if TiVo refuses to tell us, then TiVo cannot possibly prove that E* had infringed on such invention that TiVo refuses to say what it is.

Can I succeed in accusing you of stealing my properties without telling the court what properties were stolen?


----------



## Greg Bimson

> *From scooper:*
> You mean the "*REMANDED* Hardware claims ? Then we shouldn't have had this infringement hearing at all....


Why not? There are still Software Claims in play. The Software Claims exist, no one can think they don't just because DISH/SATS wants to obfuscate the issue.


----------



## jacmyoung

Greg Bimson said:


> Pertinent info:Rather than accept that the claims constructions were the law of the case, counsel chose to pursue a strategy of distorting those rulings, misdirecting a contrary argument to a different reading of the injunction and claim language, and blatantly presenting Judge Folsom with a product to product comparasion contrary to established law and the Court's cautionary instructions.
> 
> Wonder why TiVo is drawing attention to the case?


Your above analogy simply can not apply here, because the issue in that case was about how the aggressor must be dealt with in the event they went out of the bounds.

TiVo is the aggressor here, not E*. E* did not sue TiVo nor did E* bring a contempt proceeding on TiVo.

Ever wondered why it was TiVo who wished to delay the filing, and to stay as far away from that case as possible, not E*?


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## Greg Bimson

jacmyoung said:


> E* said the centerpiece in the software claims is start code detection and indexing...


DISH/SATS said, DISH/SATS said, DISH/SATS said...

The COURT defined the terms in the _Markman_ hearings. They cannot be redefined.


----------



## Greg Bimson

jacmyoung said:


> Your above analogy simply can not apply here, because the issue in that case was about how the aggressor must be dealt with in the event they went out of the bounds.


But it can also apply to an aggressive but improper defense of contempt.


----------



## jacmyoung

Greg Bimson said:


> DISH/SATS said, DISH/SATS said, DISH/SATS said...
> 
> The COURT defined the terms in the _Markman_ hearings. They cannot be redefined.


Show me how the court defined "parse audio and video data"? The court did nothing to define it other than to say parse means analyze.

So E* says the above term means analyze audio and video start codes. Again only then you can claim an invention, if TiVo refuses to say what the "audio and video data" means, then TiVo has refused to disclose any invention by the software claims. If there is no invention, then how can E* possibly infringe on it?

But if you say the invention is the PID filter, then I hope you begin to laugh at this idea too. So what if E* said back then the PID filter met the "parse" term? Did the PID filter also meet the "parse audio and video data" term? If not how can there be infringement?

Just because E* admitted so?

If I admitted back then that I had stolen your properties, and later evidence showed that your properties were actually intact, not stolen, did I still have stolen your properties anyway?


----------



## jacmyoung

Greg Bimson said:


> But it can also apply to an aggressive but improper defense of contempt.


If so then why is TiVo avoiding it?

There is no such thing as an aggressor who is under attack and trying to defend himself. E* has not accused TiVo of anything, not yet.


----------



## Greg Bimson

jacmyoung said:


> But if you say the invention is the PID filter, then I hope you begin to laugh at this idea too. So what if E* said back then the PID filter met the "parse" term? Did the PID filter also meet the "parse audio and video data" term?


Part of the patented invention requires the ability to "parse audio and video data".

And yes, the PID filter also met the "parse audio and video data" term during trial, because that is what a PID filter does. It did not change while finding infringement upon the modifications.

Any other argument is an attempt to redefine the law of the case.


----------



## scooper

Greg Bimson said:


> Part of the patented invention requires the ability to "parse audio and video data".
> 
> And yes, the PID filter also met the "parse audio and video data" term during trial, because that is what a PID filter does. It did not change while finding infringement upon the modifications.
> 
> Any other argument is an attempt to redefine the law of the case.


Using the existence of the PID filter as the reason that Echostar is infringing is what is absurd. Like I said - the "Expert Witlesses" were wrong.


----------



## Curtis52

scooper said:


> Using the existence of the PID filter as the reason that Echostar is infringing is what is absurd. Like I said - the "Expert Witlesses" were wrong.


Why not focus on the hard drive as the reason Dish is infringing. It's in the claim too. Why give more weight to a portion of one step than a portion of another step? It's odd to assign the focus and then complain about what is being focused on.


----------



## jacmyoung

Greg Bimson said:


> Part of the patented invention requires the ability to "parse audio and video data".
> 
> And yes, the PID filter also met the "parse audio and video data" term during trial,


Not true, the PID filter was never discussed during the trial to have met "parse audio and vidoe data", only to have met "parse" limitation.

That is why TiVo now is trying to argue that the PID filter also analyzes "audio and video data".



> because that is what a PID filter does.


No it does not, as E* explained, when the PID filter is doing its thing, the data is encrypted, the PID filter cannot possibly analyze the data even if it wants to.

TiVo's response? So what? The PID filter analyzes data, so it must be analyzing audio and video data too. Does that sound to you the right way to prove by clear and convincing evidence?



> It did not change while finding infringement upon the modifications.


If you notice above, no one is trying to change anything.



> Any other argument is an attempt to redefine the law of the case.


There was never any "law of the case" on what the "audio and video data" meant.


----------



## jacmyoung

Curtis52 said:


> Why not focus on the hard drive as the reason Dish is infringing. It's in the claim too. Why give more weight to a portion of one step than a portion of another step? It's odd to assign the focus and then complain about what is being focused on.


Neither a hard drive, nor a PID filter, is in the claims.


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## scooper

Curtis52 said:


> Why not focus on the hard drive as the reason Dish is infringing. It's in the claim too. Why give more weight to a portion of one step than a portion of another step? It's odd to assign the focus and then complain about what is being focused on.


If you want to add that to something else the "Expert Witlesses" got wrong - be my guest.

The whole problem you have here is that Tivo's claims of infringement have left reality. Folsom should have reined them in - ask for a concrete "what are you claiming here ?" . They're reaching for anything that might possibly be considered "infringing". And if you don't throw some common sense in - the law gets stupid.


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## jacmyoung

scooper said:


> ...Folsom should have reined them in ...


Or let them loose, I mean really loose

At this point, I think even the other side agrees that Judge Folsom did not handle the contempt proceedings properly. He has allowed the contempt proceedings to drag on for over a year and still going, then gave the appeals court some clear reasons to put the order on hold for another at least 6 months or more.

At the meantime both parties are spending huge amount of money to continue the fight, not to mentioned the taxpayers' money that is being wasted.

He could have easily done one of two things. Either tell TiVo to resolve the infringement issues with E* in that new lawsuit filed by E*, or find E* in contempt on the face so the appeals court can already confirm the decision one way or the other, then we can go from there.


----------



## Greg Bimson

scooper said:


> The whole problem you have here is that Tivo's claims of infringement have left reality. Folsom should have reined them in - ask for a concrete "what are you claiming here ?" . They're reaching for anything that might possibly be considered "infringing". And if you don't throw some common sense in - the law gets stupid.


Well, the law is the law...

And it isn't like the "claims of infringement have left reality", when the basis of finding infringement during the trial were *exactly* used to find infringement for contempt under the _KSM_ standard.

As was stated earlier, all five "expert witlesses" agreed that PID filtering met the "parses audio and video data" step defined by the court was met by PID filtering. DISH/SATS made two very basic legal missteps: they didn't challenge that definition during the appeal of the trial, and they allowed their own experts to agree that the limitation was met.

There's technical issues and modifications and improvements, and then there is the law.


----------



## scooper

Greg Bimson said:


> Well, the law is the law...
> 
> And it isn't like the "claims of infringement have left reality", when the basis of finding infringement during the trial were *exactly* used to find infringement for contempt under the _KSM_ standard.
> 
> As was stated earlier, all five "expert witlesses" agreed that PID filtering met the "parses audio and video data" step defined by the court was met by PID filtering. DISH/SATS made two very basic legal missteps: they didn't challenge that definition during the appeal of the trial, and they allowed their own experts to agree that the limitation was met.
> 
> There's technical issues and modifications and improvements, and then there is the law.


If the "Law" isn't relevant - it's worthless. What's the point of having it if it isn't relevant ?

Like I said (and will keep saying for all eternity) - 5 "Expert Witlesses" got it wrong. And if the law keeps supporting that- it's wrong too and should be thrown out.


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## Greg Bimson

Just to give an idea of TiVo's state of mind during the February hearings:


> Mr. Chu: So just to mention the two issues, one has to do with a great deal of the evidence that we expect to be proffered by the other side. It is evidence and testimony that relates to claim constructions that were never made by this Court, relates to claim terms that are not in the claims, relates to constructions that were not appealed to the Federal Circuit, all of which we believe is irrelevant.


TiVo brought attention to the Medtronic case because of the above belief. If that belief is verified as fact, DISH/SATS can be forced to pay for this entire contempt litigation.


jacmyoung said:


> There was never any "law of the case" on what the "audio and video data" meant.


All five "witless experts" testified that the use of a PID filter met the court's claim construction on how the device or process "analyzes audio and video data".

Now it needs to be "re-addressed"? I refer you back to this excerpt from Morgan Chu:It is evidence and testimony that relates to claim constructions that were never made by this Court, relates to claim terms that are not in the claims, relates to constructions that were not appealed to the Federal Circuit, all of which we believe is irrelevant.​As PID filtering met the "parse" limitation during the trial, and that limit was not challenged, it becomes law of the case. It cannot simply be changed. DISH/SATS is trying to redefine "parsing video and audio data" because that limitation was met, according to five of five experts.

That's why DISH/SATS keeps pulling out Dr. Storer's testimony regarding invalidity regarding the Hardware Claims, to obfuscate the issue that everyone testfied PID filtering met the "parse" limitation.


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## jacmyoung

Greg Bimson said:


> ...As PID filtering met the "parse" limitation during the trial...


Yes but not "parse audio and video data" limitation. So stop repeating that. Even TiVo does not say the PID filter had met "parse audio and video data" during the trial. Which is why TiVo now tries to respond to the "audio and video data" part.

Go quote anyone who said *during the trial* that the term "parse audio and video data" was met by the PID filter. Unless you insist "parse" automatically means "parse audio and video data".

If so, it is the same as saying, "steal" is the same as saying "steal my thunder", punishable by law, not to mention I have even proven there is no thunder to steal.


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## dfd

jacmyoung said:


> Yes but not "parse audio and video data" limitation. So stop repeating that. Even TiVo does not say the PID filter had met "parse audio and video data" during the trial. Which is why TiVo now tries to respond to the "audio and video data" part.
> 
> Go quote anyone who said *during the trial* that the term "parse audio and video data" was met by the PID filter. Unless you insist "parse" automatically means "parse audio and video data".
> 
> If so, it is the same as saying, "steal" is the same as saying "steal my thunder", punishable by law, not to mention I have even proven there is no thunder to steal.


What else does/can the PID filter parse but "audio and video data"?


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## P Smith

dfd said:


> What else does/can the PID filter parse but "audio and video data"?


Anything what DVB-S standard described, include the "audio and video data".

Major addition to that would be Electronic Program Guide.


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## jacmyoung

dfd said:


> What else does/can the PID filter parse but "audio and video data"?


As E* pointed out, that 13-bit number contained in the header of the MPEG stream, which identifies the correct channel number to tune to. That is exactly what the PID filter does.


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## Curtis0620

jacmyoung said:


> As E* pointed out, that 13-bit number contained in the header of the MPEG stream, which identifies the correct channel number to tune to. That is exactly what the PID filter does.


That is contained in the VIDEO stream.


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## jacmyoung

P Smith said:


> Anything what DVB-S standard described, include the "audio and video data".
> 
> Major addition to that would be Electronic Program Guide.


The PID filter does not analyze "anything" in the MPEG streams, only the 13-bit code in the headers. The PID filter does not touch any "audio and video data" that are contained in the payloads of the MPEG streams. Not only because this is what a PID filter does, but also if one needs further proof, E* had provided such proof.

Because the payloads of the MPEG streams are encrypted during the PID tuning, only the headers can be analyzed at the PID stage, and the headers contain the 13-bit codes, no audio and video data.

Even TiVo does not dispute that, only TiVo is saying, so what, the PID filter is analyzing the MPEG streams, so it must be analyzing any audio and video data in them too, who cares if the PID filter actually does not analyze any audio and video data, only the 13-bit code

I don't think the PID filter analyzes the EPG data either. But the EPG data is another good example of a non-audio and video data contained in the MPEG (DVB) streams.


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## jacmyoung

Curtis0620 said:


> That is contained in the VIDEO stream.


Show me where TiVo said that. TiVo does not dispute the 13-bit code is in the header, which contains no audio and video data. There is no such thing as "video stream" in the MPEG stream, the MPEG stream is the combination of many digital data forms, as stated above.

Only after the media switch "parsed" the MPEG stream, that is *after* the PID filter had selected the specific channel, and then *after* the payload was decrypted, could some specific "video stream" be parsed and separated out by the media switch. And TiVo does not dispute the E* new design no longer has that media switch to do such parsing.

That is why E* says, PID filter does not do the kind of parsing *as required by the patent claims.*


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## P Smith

Well, if you want go into technical details - that PID analysis starts from PID 0000 [PAT] then extract from there PMT PID's numbers ( for each channel), then you will get SIDs (channels) and corresponding video/audio/etc PIDs of each channel of many of them in the one mux [transponder].
So, do that fast and efficient, Broadcom chip doing such filtering in HW, analyzing PIDs and pass the selected packets to particular routines in FW.


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## Greg Bimson

jacmyoung said:


> Go quote anyone who said during the trial that the term "parse audio and video data" was met by the PID filter. Unless you insist "parse" automatically means "parse audio and video data".


If the limitiation is met according to five experts, the limitation is "parse audio and video data". The limitation isn't just "parse".


jacmyoung said:


> That is why E* says, PID filter does not do the kind of parsing *as required by the patent claims.*


But it does do the exact same kind of parsing *as required by the court's defined claim construction*.


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## jacmyoung

Greg Bimson said:


> If the limitiation is met according to five experts, the limitation is "parse audio and video data". The limitation isn't just "parse".


No, the limitation all five experts agreed on back during the trial was "parse", not "parse audio and video data". That is why I challenged you to quote where did they ever discuss "parse audio and video data". You cannot find such definition, not during the trial, not even now when TiVo describes the PID filter, just go read and you will realize TiVo did not say, nor did it say now, that the PID filter meets the "parse audio and video data" limitation, only the "parse" limitation.


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## jacmyoung

P Smith said:


> ...analyzing PIDs and pass the selected packets to particular routines in FW.


In your opinion then, are PIDs themselves audio and video data, or the PIDs just as the name says, are Packet Identification Data?

Or put it this way, in your opinion, is a Packet Identification Data the same as any audio and video data contained in the stream?

This is very important, because you have already determined that the PID filters analyze PIDs and [then] pass the selected packets [which contain audio and video data] to the FW [for further parsing I assume].

Therefore your above statement has already precluded the PID filter from parsing any audio and video data.


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## Greg Bimson

jacmyoung said:


> No, the limitation all five experts agreed on back during the trial was "parse", not "parse audio and video data". That is why I challenged you to quote where did they ever discuss "parse audio and video data". You cannot find such definition, not during the trial, not even now when TiVo describes the PID filter, just go read and you will realize TiVo did not say, nor did it say now, that the PID filter meets the "parse audio and video data" limitation, only the "parse" limitation.


Chu: And what did the court say as to what that particular limitation, parsing, actually means?
Storer: So I think we've already talked about that, but here is the -- here is the quote again. The court construed parsing to be analyzes, analyzes video and audio data from the broadcast data, to be precise.​The experts knew full well that meeting the "parse" limitation meant "parsing video and audio data".

Take it up with DISH/SATS experts for agreeing that the step was met. Even DISH/SATS lawyers understand that their experts agreed during trial that the "parse" element of step B was met by PID filtering. But don't try to redefine what was already agreed to as it is law of the case.

DISH/SATS is now responsible for some wonderful new theory because they lost the case that the prior transcript and admissions cannot be held against them as fact.

So it is now "redefine" time, again.


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## P Smith

jacmyoung said:


> In your opinion then, are PIDs themselves audio and video data, or the PIDs just as the name says, are Packet Identification Data?


- *no, PIDs are just a numbers; but after initial parse of PID_0000 and PMT PIDs, the numbers become a marker of video/audio/etc data and FW will load Broadcom chip with criteria of filtering PIDs accordingly, ie pass particualr PID's packet to particular routine. It's many steps process.
*


> Or put it this way, in your opinion, is a Packet Identification Data the same as any audio and video data contained in the stream?
> 
> This is very important, because you have already determined that the PID filters analyze PIDs and [then] pass the selected packets [which contain audio and video data] to the FW [for further parsing I assume].
> 
> Therefore your above statement has already precluded the PID filter from parsing any audio and video data.


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## jacmyoung

Greg Bimson said:


> Chu: And what did the court say as to what that particular limitation, parsing, actually means?
> Storer: So I think we've already talked about that, but here is the -- here is the quote again. The court construed parsing to be analyzes, analyzes video and audio data from the broadcast data, to be precise.​The experts knew full well that meeting the "parse" limitation meant "parsing video and audio data".
> 
> Take it up with DISH/SATS experts for agreeing that the step was met. Even DISH/SATS lawyers understand that their experts agreed during trial that the "parse" element of step B was met by PID filtering. But don't try to redefine what was already agreed to as it is law of the case.
> 
> DISH/SATS is now responsible for some wonderful new theory because they lost the case that the prior transcript and admissions cannot be held against them as fact.
> 
> So it is now "redefine" time, again.


Here is the problem, TiVo does not now say parse is the same as parse audio and video data, instead TiVo follows E*'s arguement whether PID actually parses audio and video data or not, by saying but the PID does parse audio and video data because the PID parses the MEPG stream, therefore it must also parse audio and video data in it, despite the fact we know the PID filter does not touch any audio and video data, only the 13-bit PID code.

Now you need to call TiVo up and ask them to disregard the E*'s contention, just tell the appeals court "parse" is the same as "parse audio and video data" because back then E*'s expert said so, never mind if in reality it is true or not.

Do not give E*'s new arguement any credit by following it, then insist the PID filter does do something that it in reality does not do.

And after that, please do not forget to prove that the PID filter also "temporarily stores the said audio and video data", and so the "source object" can later "extract" such temporarily stored "audio and video data", and on and on. There are much more to prove, but first thing first.


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## jacmyoung

P Smith said:


> - *no, PIDs are just a numbers; but after initial parse of PID_0000 and PMT PIDs, the numbers become a marker of video/audio/etc data and FW will load Broadcom chip with criteria of filtering PIDs accordingly, ie pass particualr PID's packet to particular routine. It's many steps process.
> *


Are you agreeing with me or disagreeing with me?

So the PID filter does the "initial parse of PID_0000 and PMT PIDs", correct? What else does the PID filter do before it passes the stream on to the next stage?


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## jacmyoung

Now let me explain why the E* expert had said back during the trial that the PID filter met the "parse" limitation. They were trying to invalidate the *hardware claims*. What do the hardware claims say about the term "parse"?



> [4] providing a Media Switch, wherein said Media Switch *parses said MPEG stream*, said MPEG stream is separated into its video and audio components


E*'s expert argued that since the PID filter also analyzed the MPEG stream, the hardware claims were made obvious by the prior PID filter art. Of course E* lost that argument, because TiVo successfully convinced the jury the PID filter was not the Media Switch, and did not do the kind of parse as described in the hardware claims.

At that point, reasonable person would therefore have already abandoned the failed E* PID filter contention, since it was a failed argument.

But TiVo now tries to recapture that failed argument, so the E* expert admitted the PID filter met the "parse" limitation, never mind it was a failed admission. But still here is the problem. In the hardware claims, they used the term *"parses said MPEG Stream"*.

Yet in the software claims, they used the term "parses video and audio data", not "MPEG stream". Keep in mind when different terms are used in the claims, they imply *different meanings*. As a result, the TiVo's own patent claims have taught us that "parses said MPEG stream" is *different than* "parse video and audio data".

Now TiVo is saying, but "parse the MPEG stream" is *the same* as "parse video and audio data", because the video and audio data is part of the MPEG stream. Such statement directly contradicts their own patent claim language and terms.

Had TiVo used "said MPEG Stream" in the software claims, not making a difference between the "MPEG Stream" and the "video and audio data", TiVo might have had some merit. But this is not the case here.

This goes along what P Smith is saying, as long as the PID filter parses the MPEG (DVB) stream, it parses the video and audio data in it, if so then the term "parse video and audio data" in the software claims would have been without defining power, and therefore not valid. In reality, the software claims specifically require that the "physical data source" must parse "video and audio data", not just the MPEG stream. In other words "parse", followed by a different subject in the software claims, is more restricted in function than it is in the hardware claims.

As a result, even if TiVo may argue that the five experts all said the PID filter had met the "parse" limitation *in the hardware claims*, TiVo cannot simply pass that contention right onto *the software claims* because the software claims have a narrower meaning, different from what it means in the hardware claims.


----------



## Greg Bimson

jacmyoung said:


> At that point, reasonable person would therefore have already abandoned the failed E* PID filter contention, since it was a failed argument.
> 
> But TiVo now tries to recapture that failed argument, so the E* expert admitted the PID filter met the "parse" limitation, never mind it was a failed admission. But still here is the problem. In the hardware claims, they used the term "parses said MPEG Stream".
> 
> Yet in the software claims, they used the term "parses video and audio data", not "MPEG stream". Keep in mind when different terms are used in the claims, they imply different meanings. As a result, the TiVo's own patent claims have taught us that "parses said MPEG stream" is different than "parse video and audio data".
> 
> Now TiVo is saying, but "parse the MPEG stream" is the same as "parse video and audio data", because the video and audio data is part of the MPEG stream. Such statement directly contradicts their own patent claim language and terms.


1) Five of five experts said that the PID filter met the "parse" element limitation in the Software Claims. Therefore, it is hardly a "failed argument".

2) The parse element in the software claim is "parses video and audio data from broadcast data". Tell me what other than a PID filter does exactly that to a digitized broadcast stream.

3) The parsing of the MPEG stream is much different than the parsing of the broadcast data.


----------



## Greg Bimson

jacmyoung said:


> As a result, even if TiVo may argue that the five experts all said the PID filter had met the "parse" limitation in the hardware claims, TiVo cannot simply pass that contention right onto the software claims because the software claims have a narrower meaning, different from what it means in the hardware claims.


Folly.

Five of five experts said PID filtering had met the "parse" limitation of the *Software Claims*.

More obfuscation.


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## jacmyoung

Greg Bimson said:


> 1) Five of five experts said that the PID filter met the "parse" element limitation in the Software Claims. Therefore, it is hardly a "failed argument".


Show me where it said they were talking about the software claims back then? They were discussing the hardware claims.



> 2) The parse element in the software claim is "parses video and audio data from broadcast data". Tell me what other than a PID filter does exactly that to a digitized broadcast stream.


The media switch or the so called "physical data source" identified by TiVo, TiVo identified specific software codes in the old software that qualified the "parses video and audio data from the broadcast data" term. Those codes had nothing to do with the PID filter BTW, because as P Smith correctly pointed out, the PID filter function is embedded in the hardware chip, not operated by any software codes.

Now such software codes are all gone, TiVo admitted so. Therefore nothing in the new design does any of the "parses video and audio data from the broadcast data" part as identified by TiVo back during the trial.

As far as the PID filter, again E* had clearly demonstrated that it cannot parse audio and video data, only the 13-bid PID code.


----------



## jacmyoung

Greg Bimson said:


> Folly.
> 
> Five of five experts said PID filtering had met the "parse" limitation of the *Software Claims*.
> 
> More obfuscation.


First show me where they said in terms of "software claims", second, show me where did thay say "parse video and audio data". The "parse limitation" is the "parse" limitation, not the "parse audio and video data" limitation.

Even TiVo does not make such statement, else TiVo would not have been arguing about whether the PID filter indeed parses video and audio data, or not.

The word "parse" means only one thing--"analyze", according to Judge Folsom. Therefore meeting the "parse" limitation means meeting the "analyze" limitation. Do not try to expand the "parse/analyze" limitation to equal "parse/analyze audio and video data" limitation, they are two different limitations.

On a side note, the House Committee had just voted 34 to 0 to pass the new DBS networks extension bill, which also lifted the injunction against E* so E* can now again carry the distant network feeds, not through ADD, but by themselves. So much for the legal battle, the networks ended up losing the opportunity to receive the $70M E* agreed to pay them, only because FOX, then affilliated with DirecTV, refused to go along for obvious reason, now E* gets to carry the feeds again. BTW, E* never really lost the feeds, they just instead let ADD to carry the billing for them.


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## jacmyoung

Greg Bimson said:


> Chu: And what did the court say as to what that particular limitation, parsing, actually means?
> Storer: So I think we've already talked about that, but here is the -- here is the quote again. *The court construed parsing to be analyzes, analyzes video and audio data from the broadcast data, to be precise*.​The experts knew full well that meeting the "parse" limitation meant "parsing video and audio data".
> 
> Take it up with DISH/SATS experts for agreeing that the step was met. Even DISH/SATS lawyers understand that their experts agreed during trial that the "parse" element of step B was met by PID filtering. But don't try to redefine what was already agreed to as it is law of the case.
> 
> DISH/SATS is now responsible for some wonderful new theory because they lost the case that the prior transcript and admissions cannot be held against them as fact.
> 
> So it is now "redefine" time, again.


I see what you mean by what Strorer said back during the trial, he said parse meant analyze, yes this is the law of the case.

But when he said, it also meant analyzes audio and video data from the broadcast data, this is not the law of the case. This was only his failed attempt to try to invalidate the claims by expanding the law of the case.

The law of the case are:

Parse means analyze.

Parse audio and video data from the broadcast data, means analyze audio and video data from the broadcast data.

There is no such law of the case that says:

Parse means analyze audio and video data from the broadcast data. Strorer is not Judge Folsom. Strorer does not make the law of the case. And Storer said his previous statement was wrong.

Now you want to pin the statement on E*, that is fine, we will see how it will go, but do not tell us that Strorer's statement is the law of the case.


----------



## P Smith

jacmyoung said:


> Are you agreeing with me or disagreeing with me?
> 
> So the PID filter does the "initial parse of PID_0000 and PMT PIDs", correct? What else does the PID filter do before it passes the stream on to the next stage?


Those PID filtering process controlling from FW [SW], and while dish support DVB-S standard - whole process is multi staged, ie doing hierarchically.
Starting from PID_0000, then parsing other PIDs with different data, like PID_0010 NIT ( satellites/transponders ) table, PMT, PID_0011 SDT ( channels info ), PID_0012 EIT (EPG data ), etc and later when a channel selected or chosen by default [last tuned] those PID filters will loaded that way when particular PIDs of the channel will be filtered, usually one video, a couple audio and others what require for descramble it. 
Those PID filters limited in number - Broadcom chip could support 16, 64 or 128 (big secret, no specs published ) , but the whole process should be done in stages when FW will tell the chip how to parse whole stream [mux] and which PIDs should be route to particular routine.


----------



## Greg Bimson

Q (by mr. Iancu thank you. Do the pid filters in Echostar's products meet the parsing limitation of claims 31 And 61 for both of the products?
A so absolutely right, they do.
Q have those pid filters changed since trial?
A and again as we said before, hardware in the field is Still there. There is no change to the hardware. They are Still there. They were there at trial. They are there now.
Q did the experts at the jury trial both for tivo and Echostar discuss pid filters with respect to this limitation?
A absolutely. So this, of course, is a picture of the Experts at the first trial, two for tivo, myself, and dr. Gibson, and three for echostar, dr. Rhyne, dr. Polish, and dr.
Johnson.
Q now, do you remember what you yourself said at trial About pid filtering?
A i do.
Q what was that?
A if we go to the next slide, i've got a quote.
Q and the slide shows an excerpt from april 11, 2006 a.m. Session, 99, page 99, line 17-100, line 23. It's an excerpt From there. 
A so again i am asked about the pid filtering operation, And i certainly agree that that's parsing.
Q now, did you -- were you in the courtroom, dr. Storer, For the opening presentation by echostar?
A i was.
Q and did you see the portion of the transcript ms. Krevans Put up on the screen --
A i did.
Q -- in this -- with regard to this testimony?
A i did, yes.
Mr. Iancu: if we could bring that up, please, april 11, 2006 p.m., pages 2-4.
Q (by mr. Iancu) okay, before we delve into the transcripts
In grave detail, generally speaking, what's your recollection About that? What was your reaction to ms. Krevans' statements This morning?
A i think it's a bit of a maybe either mischaracterization Or misunderstanding. This is the testimony about prior art as It relates to claim 1, and also it's about a particular issue Of converting mpeg-2 to mpeg-1. This particular piece of
Prior art was a very old or very primitive, if you will, Device, and it couldn't really speak, if you will, the mpeg-2 Language that the boxes at this trial speak. So there was an Issue about this conversion from mpeg-1 to mpeg-2 and this
Prior art product as it related to claim 1, and how that Related to parsing and separation in claim 1, and the media Switch and all those things.
Q now, in this portion you said that this testimony related To claim 1. If you look at page 2, which is up on the screen Now at about line 20, it talks about input section, tuning, And so forth. Those are elements of claim 1?
A that's correct.
Q and further down at line 24 you see it talks about the Media switch?
A correct.
Q that's also an element of claim 1?
A of course, yes.
Q if we scoot down to page 3, just the next page down at About line 14 or so, you are talking there about the Separation?
A that's correct. So this whole issue of converting mpeg-1 To mpeg -- mpeg-2 to mpeg-1 and this line of questioning Related to testimony about whether that would somehow in the Prior art constitute this additional separation step that -- Or separation issue that is mentioned in claim 1.
Q and if we could highlight also here on page 3 lines 18-20, there you say, quote: but just because these words you see To describe this conversion process, you shouldn't confuse That with the claim terms. What is this and what is that?
A so i was concerned here. Again, the issue of concern was Not claim 31 or something. The issue of concern was this Primitive device which couldn't even speak mpeg-2 and had to Perform this conversion from mpeg-2 to mpeg-1, and whether This constituted separation and all those kinds of things that Were at issue with claim 1. This has nothing to do with, you Know, claim 31, for example.
Q and when it comes to the parsing limitation -- we can go Back to our slides, and on slide 13 -- when it comes in Particular to the parsing limitation as opposed to conversion And tuning and media switch and separation, just parsing, what Was your testimony at trial?
A i feel silly answering the question again. We said it Before. I was asked about pid filtering, and i certainly Agree that it's parsing.
Q dr. Storer, were you in the courtroom when dr. Rhyne Testified at trial?
A certainly, yes.
Q and what did dr. Rhyne have to say about pid filtering And parsing?
A so this is again a portion of what he said, and he was Asked: so you'll agree that the echostar products do actually Parse the mpeg stream? And he answers: yes. The court said Analyze, and there are pid filters in those products that Examine the mpeg transport stream and do a parsing. So, and he actually goes on to specifically mention in both the st -- st refers to the 50x series, that chip that's In there -- or the broadcom chips refer to the 522/625 series
In this case.
Q and you -- you are on slide 40, and for the record, that Shows a portion of the transcript from april 7, 2006, page 110, line 10-20.
A that's correct.
Q were you -- apologies. What did dr. Polish, another one Of echostar's experts, have to say about pid filtering and Parsing at trial?
A similar thing, he agrees as well.
Q okay. And what did dr. Polish say about pid filtering And parsing in his deposition? Before we go there, hold on For a second. With respect to trial and dr. Polish, we are on Slide 41. The excerpt was at page 37, lines 24 through page 38, line 8, april 10, 2006 transcript.
A that's correct.
Q now, going to slide 42, what did dr. Polish say at Deposition about pid filtering and parsing with respect to Claims 31 and 61 at issue here today?
A so again he is consistent with this notion that pid Filtering is parsing. And at deposition he specifically says In the context of claims 31 and 61, and you see that here. This is just a portion of question and answer from that Deposition. 
Q and dr. Polish was echostar's expert, correct?
A that's right. He was one of the three experts for Echostar at the trial.
Q and you are reading from the polish deposition, volume 2 At page 310, lines 5-9.
A that's correct.
Q were you in the courtroom when dr. Gibson testified on The physical data source limitation?
A yes, i was.
Q and what did he have to say about that?
A so if we go to the next slide, so again now we see the Claim on top, this physical data source, and he is now asked About the physical data source, and said: and what specific Circuitry within that broadcom chip? And he points, okay, he Says: where there's pid filtering.
Q again, this morning ms. Krevans showed a slide that she Indicated to the court was shown by dr. Gibson during this Portion of the testimony. Do you recall that?
A i do.
Q do you have a recollection whether in fact slide 92 from The gibson testimony, from the gibson slides at trial was Actually shown in court to the jury?
A so my recollection is it was not viewed by the court or The jury. We see that from the transcript testimony as well, I believe.
Q so let's take a quick look at that transcript, march 31, 2006 a.m. portion, and let's go to page 31. Okay. And let's Scoot down a little bit. Let's make line 18 the top of the Page. Okay. At line 18, page 31 you can -- the question was: All right. Do the echostar products have this physical data Source? Answer by dr. Gibson: yes, they do. Shown? Yeah. It's shown on the next slide 92. And comment from me, mr. Iancu: let's take down -- let's take that slide down for a Second.
Mr. Iancu: keep going down in the transcript, Please. Let's go back to page 31. Sorry, just i wanted to go Down a little bit all the way to the bottom. Okay. Apologies. 
Q (by mr. Iancu) question at line 24 of page 31: okay. This is another representation of the broadcom chip. We are Going to be on the slide just for 30 seconds, i believe. Some colloquy about dr. Gibson's allergies. And then Question at line 6: in any event, though, without showing the Slide 92 on the screen, can you please describe what the Physical data source requires? And then there is an answer Explaining that. Does that refresh your recollection, dr.
Storer, as to whether the slide was actually shown?
A so this is what i was referring to. I think it's kind of Just what we had today, that basically do you want to have Everyone leave the room for this one slide, and i think the choice was, well, let's just take it down and see if we can do The testimony without it and not have to bother everyone Coming and going.
Q and if we go back to our slides that we showed, slide 43, Without the slide shown, what were dr. Gibson's words?
A so --
Q let me ask a different question.
A okay.
Q without the slide, did dr. Gibson actually identify pid Filtering with respect to the physical data source?
A so that's correct, yes.
Q okay. Going to the next slide, now within that testimony Dr. Gibson also mentions a start code detector among other Things, such as dma and direct memory access and so forth. What does that testimony tell you?
A merely that, he did mention some other items as well that Related to his testimony as a whole.
Q now, what did dr. Gibson say about pid filtering in his Expert reports?
A so again i think we -- you can go to the next slide and --
Mr. Iancu: okay. Take that down for a second. Is That a problem? That's an st chip.
Ms. Krevans: that one's okay.
Mr. Iancu: that one's okay. Okay. We can put it back up.
Q (by mr. Iancu okay. With respect to the 50x box, what Does he say?
A so here is a figure he presented, and it gets a little Hard to read, but do i have a -- do we have an enlargement at All? Or you don't have an enlargement, it's okay. So it's a Little hard to read, but again you see pid filter. A little Hard to read the text, and specifically highlights that.
Q we just enlarged it.
A okay.
Q and so he identifies in his expert report the pid filter As part of the physical data source, correct?
A that's correct.
Q what did dr. Johnson, echostar's expert on software, have To say about pid filtering and the physical data source at Trial?
A so again consistent with all the other experts, she is Asked about the physical data source and you see in her answer She is pointing -- she is discussing the upper left portion of Her diagram which if you -- again a little hard to read, but
If you enlarge it is a pid filter.
Q so going to the next slide, is it that all technical Experts said at -- sorry. Is it that all technical experts Said at trial that pid filtering satisfies physical data
Source and/or parsing? 
A correct.
Q and we are just now on slide 47, and let's go to the next Slide. Did echostar's pid filters change since trial?
A so as we mentioned earlier, we saw that the pid filters Are actually located on the chip in the hardware that's in the Field that hasn't changed, and the pid filters have not Changed since trial.​


jacmyoung said:


> Parse means analyze audio and video data from the broadcast data. Strorer is not Judge Folsom. Strorer does not make the law of the case. And Storer said his previous statement was wrong.


Storer never said his previous statement was wrong. He said DISH/SATS is mischaracterizing his words.


----------



## jacmyoung

P Smith said:


> Those PID filtering process controlling from FW [SW], and while dish support DVB-S standard - whole process is multi staged, ie doing hierarchically.
> Starting from PID_0000, then parsing other PIDs with different data, like PID_0010 NIT ( satellites/transponders ) table, PMT, PID_0011 SDT ( channels info ), PID_0012 EIT (EPG data ), etc and later when a channel selected or chosen by default [last tuned] those PID filters will loaded that way when particular PIDs of the channel will be filtered, usually one video, a couple audio and others what require for descramble it.
> Those PID filters limited in number - Broadcom chip could support 16, 64 or 128 (big secret, no specs published ) , but the whole process should be done in stages when FW will tell the chip how to parse whole stream [mux] and which PIDs should be route to particular routine.


And yet at each stage only the PID codes were analyzed by the PID filter, and used to group things correctly, i.e. to decide which channel to tune to or which other particular data to be used?

So with your above more detailed description, you have confirmed in all stages of PID filtering, only the PID codes were parsed by the PID filter.

Too bad TiVo does not know such technical details as you do, had TiVo known that, TiVo could have written a large section like you did to make it sound a lot complicated. Though in the end TiVo would still not have proven the PID filter actually parses any audio and video data, but at least they could come off as ones really knew what they were talking about

One other question, does the PID filter temporarily store anything?


----------



## P Smith

jacmyoung said:


> And yet at each stage only the PID codes were analyzed by the PID filter, and used to group things correctly, i.e. to decide which channel to tune to or which other particular data to be used?
> 
> So with your above more detailed description, you have confirmed in all stages of PID filtering, only the PID codes were parsed by the PID filter.
> 
> Too bad TiVo does not know such technical details as you do, had TiVo known that, TiVo could have written a large section like you did to make it sound a lot complicated. Though in the end TiVo would still not have proven the PID filter actually parses any audio and video data, but at least they could come off as ones really knew what they were talking about
> 
> One other question, does the PID filter temporarily store anything?


As I'm aware it using round robin buffer (circular).


----------



## jacmyoung

Greg Bimson said:


> ...Storer never said his previous statement was wrong. He said DISH/SATS is mischaracterizing his words.


Whatever, can you please highlight where in the above anyone said the PID filter met the "parse audio and video data" limitation? I know they were saying the PID filter met the "parse" limitation.

As I said "parse" is not "parse audio and video data from the broadcast data", otherwise Judge Folsom would not have tried to construe the two terms separately, given each a different claim construction--currently standing as the law of the case.


----------



## jacmyoung

P Smith said:


> As I'm aware it using round robin buffer (circular).


To do what? Temporarily store the PID codes?


----------



## P Smith

jacmyoung said:


> To do what? Temporarily store the PID codes?


PID filter's input data are just # and address in RAM of that routine; 
a buffer used for store packets what filtered by particular filter, those RAM routines should take packets into own processes.


----------



## jacmyoung

P Smith said:


> PID filter's input data are just # and address in RAM of that routine;
> buffer used for store packets what filtered by particular filter, those RAM routines should take packets into own processes.


If the PID filter's *input data* are *just* #s and addresses, then does that not prove that the PID filter cannot possibly parse any audio and video data, only the #s and addresses?


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## deaincaelo

Greg Bimson said:


> If DISH/SATS downloaded software today that could not record while playing back a recorded show, technically DISH/SATS would be off the hook for infringement. And there would be DVR functionality, just more limited than is currently installed.





Greg Bimson said:


> This is about the Software Claims, which do not have such requirement.


uh huh.


----------



## deaincaelo

Greg Bimson said:


> Except so far, I've been right.


just because you agree that the emperor is wearing cloths, doesn't make you right.


----------



## deaincaelo

Greg Bimson said:


> five experts





Greg Bimson said:


> five experts





Greg Bimson said:


> five experts


You seem gummed up on this point. Yes, all 5 experts said that the PID parser met the claim limitation- and that it meant their side was right. They also both said that the broadcom chip was the source of the parse limitation- and that it meant their side was right. It doesn't mean squat. Expert testimony is not the law of the land.

The law, not of this case but of the land, says that the inventor serves as his own lexicographer. That means that if the earlier quote in these threads is true, where the inventor said that parse was something other then the PID parser, then that's the law. And that means the judge, whose job is to uphold the law, is failing to do so miserably to Tivo's benefit. a million experts don't trump the inventor.

This doesn't even touch on other arguments- Judicial estoppel, unpatentability, or prior art. If E* was led to believe that what they were doing was not prohibited, they deserve at least some respite. If these definitions were not before the PTO they deserve to be weighed on their merits. unless the patent examiner was a complete moron whose never seen a VCR, I think it's likely.


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## jacmyoung

deaincaelo said:


> You seem gummed up on this point. Yes, all 5 experts said that the PID parser met the claim limitation- and that it meant their side was right. They also both said that the broadcom chip was the source of the parse limitation- and that it meant their side was right. It doesn't mean squat. Expert testimony is not the law of the land.
> 
> The law, not of this case but of the land, says that the inventor serves as his own lexicographer. That means that if the earlier quote in these threads is true, where the inventor said that parse was something other then the PID parser, then that's the law. And that means the judge, whose job is to uphold the law, is failing to do so miserably to Tivo's benefit. a million experts don't trump the inventor.
> 
> This doesn't even touch on other arguments- Judicial estoppel, unpatentability, or prior art. If E* was led to believe that what they were doing was not prohibited, they deserve at least some respite. If these definitions were not before the PTO they deserve to be weighed on their merits. unless the patent examiner was a complete moron whose never seen a VCR, I think it's likely.


Great post except the use of the word "VCR" A VCR does not invalidate TiVo's patent.

The great point you made was, at a minimum, *in the same lawsuit* the plaintiffs must use consistent theories to make their arguments. This has nothing to do with what theories the defendants might have used in the past.

If the defendants abandon their own failed theories, accept the plaintiffs' theories and reform themselves to come to agreement with the plaintiffs' theories, the plaintiffs cannot recapture the defendants with alternative and contradicting theories. Doing so runs the risk similar to the Medtronic v. Brainlab case I mentioned earlier, something apparently TiVo is now apprehensive of.


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## P Smith

jacmyoung said:


> If the PID filter's *input data* are *just* #s and addresses, then does that not prove that the PID filter cannot possibly parse any audio and video data, only the #s and addresses?


Let me make an analogy:
- a circular conveyor [belt] moving boxes of different color ( all of them had equal size, some had additional marker - say, black stripe);
- the circular belt had one input line and 128 output lines;
- at each of 128 points of sorting [filtering] one person pushing particular box to particular output belt;
- the person instructed to push the box if a color/stripe match certain criteria.

That would be Broadcom part.


----------



## scooper

jacmyoung said:


> Great post except the use of the word "VCR" A VCR does not invalidate TiVo's patent.
> 
> The great point you made was, at a minimum, *in the same lawsuit* the plaintiffs must use consistent theories to make their arguments. This has nothing to do with what theories the defendants might have used in the past.
> 
> If the defendants abandon their own failed theories, accept the plaintiffs' theories and reform themselves to come to agreement with the plaintiffs' theories, the plaintiffs cannot recapture the defendants with alternative and contradicting theories. Doing so runs the risk similar to the Medtronic v. Brainlab case I mentioned earlier, something apparently TiVo is now apprehensive of.


So what Echostar / Dish SHOULD do is file a brief with the Appeals Court REQUESTING that particular day - all the better to keep it in front of the judges.


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## jacmyoung

P Smith said:


> Let me make an analogy:
> - a circular conveyor [belt] moving boxes of different color ( all of them had equal size, some had additional marker - say, black stripe);
> - the circular belt had one input line and 128 output lines;
> - at each of 128 points of sorting [filtering] one person pushing particular box to particular output belt;
> - the person instructed to push the box if a color/stripe match certain criteria.
> 
> That would be Broadcom part.


Great, does that person "analyze" only the stripes outside of the boxes, or would you say he also analyzes what are inside of the boxes, in order to sort them?


----------



## jacmyoung

scooper said:


> So what Echostar / Dish SHOULD do is file a brief with the Appeals Court REQUESTING that particular day - all the better to keep it in front of the judges.


I think E* should just sit back and watch TiVo on this particular move It is all about who is the aggressor here, don't want make it appear you are also an aggressor at this juncture.


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## P Smith

jacmyoung said:


> Great, does that person "analyze" only the stripes outside of the boxes, or would you say he also analyzes what are inside of the boxes, in order to sort them?


Only 'outside' the box - there is no decryption allowed to get detailed info about a content, for example video/audio packets [boxes], but it's not necessary - 'in control room' up there, ie FW/SW, they're analyzing some boxes' content and gave/give/will give instruction to those persons at the belt what kind of boxes redirect to which outbound belt. It is dynamic process with known history.


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## jacmyoung

The appeals court today granted E*'s motion for judicial notice of the PTO initial action rejecting the TiVo software claims:

http://www.cafc.uscourts.gov/motions/Orders/2009/2009-1374.9-17-09.1.PDF


----------



## dfd

jacmyoung said:


> The appeals court today granted E*'s motion for judicial notice of the PTO initial action rejecting the TiVo software claims:
> 
> http://www.cafc.uscourts.gov/motions/Orders/2009/2009-1374.9-17-09.1.PDF


Words have meaning; "reexamination" <> "rejecting".


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## jacmyoung

dfd said:


> Words have meaning; "reexamination" <> "rejecting".


Interesting isn't it? How the words actually can be changed by the courts to implicate their own subtle alternate meanings. Give you just a few examples in this case:

For this most recent motion, E* *motioned for judicial notice of the reexamination proceedings*. I was initially posting in such terms, but then took a good look at the order:



> E* Corporation moves for *judicial notice of an initial office action* in a reexamination proceeding&#8230;


Therefore when the order granted the motion, it actually literally granted the judicial notice of the initial office action, not literally the judicial notice of the reexamination proceedings.

And what is that *initial office action*? It is *an action* rejecting the software claims.

The next example we had talked about before, about the order to stay the injunction pending appeal. E* motioned the appeals court to stay *the injunction* pending appeal, but in the appeals court's order it said:



> The appellants submit a motion for a stay, pending appeal, of *the order* of the United States District Court for the Eastern District of Texas (1) holding the appellants in contempt of its previous injunction, (2) enjoining the appellants, and (3) requiring that the appellants take certain steps in light of its contempt holdings.


Therefore when *the order* (rather "the injunction") was stayed, it implied that all three of the above items were stayed. In other words, literally speaking the contempt finding, the enjoin order, and the taking certain steps order, were all stayed.

The above *the order* issue was later raised by E* too, but Judge Folsom simply ignored the explicit language in the appeals court stay order above.

The last example is also very recent, a few days ago TiVo and E* *jointly* filed a motion requesting that TiVo's filing deadline be moved back by 14 days, when Judge Folsom granted this request, he characterized the motion as a TiVo's filing, not a joint filing, although the TiVo's filing was said to be *unopposed*.

To me a joint filing by both parties is different than a filing by one party and unopposed by the other party. The implication could be that whatever the consequences of the delay would fall on the party that made such delay request, as suppose if the delay request were filed jointly by both parties, any consequences of the delay would be shared by both parties.


----------



## jacmyoung

I also had the impression from this order that the merits panel has already been assigned. To verify, I again checked the CAFC site, on 9/16 E* made a filing which indicated it was “sent to the panel”.

It is likely the merits panel has indeed been assigned. The only thing left is the hearing date.


----------



## jacmyoung

The 9/16 E*'s letter I mentioned above and "sent to the panel", has a "Supplemental Authority" caption, nothing else. Today more information is provided by a TiVo's response letter captioned: "Letter of counsel for appellee TiVo, Inc. responding to appellants EchoStar's letter of 9/15 regarding the district court's recent award of over $200 million in damages, sanctions, and attorney's fees", also sent to the panel.

No further details are available online, as usual with the appeals court.

E* appeared to have cited "supplemental authority" to support their positions with regard to the sanctions issues, and TiVo just responded. Both letters were sent to the panel. We wouldn't know the names of the panel until the court date, but since it appears all briefs and letters were sent to the panel, the court date should be scheduled around the beginning of November or even sooner.


----------



## jacmyoung

At this point, I think E* has some very good evidence that TiVo misled Judge Folsom when they contended that the start code detection and indexing were irrelevant to the software claims, and TiVo did so knowingly.

The evidence is in how parties reacted to the PTO's initial action rejecting the software claims, specifically how the PTO interpreted the software claims' first step as "detecting start codes and building index of the codes..."

Noticed in such reactions, TiVo never once again contended that detecting start codes and build index...were "irrelevant". TiVo only said the PTO action was not final and was irrelevant to the appeal, of course the appeals court did not buy such argument. The reason TiVo did not say so was because they knew they could not mislead the PTO. The PTO knew exactly what the software clams first step discloses, that was why the software claims were granted in the first place, because they disclosed an invention of detecting start codes and building an index table...

TiVo of course as the patent owner had to know what their software claims had disclosed, yet they knowingly declared to Judge Folsom that their software claims had nothing to do with start code detection and building of index table, for one reason and one reason only, to try to capture E* in the contempt proceeding.

To me that is obstruction of justice, and the evidence is rather clear. I have read cases where the entire patents were ruled unenforceable by the courts due to the patentees' clear misconduct during the patent prosecutions.


----------



## jacmyoung

One other not so coincidental date is 10/02/09, the date to which TiVo requested that Judge Folsom extended its attorney fees and costs filing. This is almost the same deadline for TiVo to file its response to the PTO’s initial office action rejecting the software claims.

TiVo needs to walk a very fine line on or before that day because they know E* lawyers are right there to comb through every word. The most obvious question is, will TiVo tell the PTO that the software claims have nothing to do with the start code detection and building index table? If so, the Thomason patent alone would have invalidated the TiVo software claims last time.


----------



## jacmyoung

As I had calculated, the TiVo v. E* hearing is now scheduled for 11/2/09. The Medtronic case TiVo asked to set apart from this case is scheduled for 11/4/09.


----------



## Curtis52

The oral arguments have been scheduled for Nov. 2 at 10 AM.


----------



## dfd

Question for the attorneys out there...

Are the judges opinions on appeals usually decided before the hearing based upon the filings or are the oral arguments more important than the filings?

Thanks.


----------



## dgordo

dfd said:


> Question for the attorneys out there...
> 
> Are the judges opinions on appeals usually decided before the hearing based upon the filings or are the oral arguments more important than the filings?
> 
> Thanks.


I don't think you can make a generalized statement about how judges decide. Certainly it was obvious to me that I was being asked questions by a judge with preconceived notions about an issue at times and other times I felt like a judge didn't even know what a case was about until opening remarks. Federal appeals court judges are more likely to have read, or have their clerks read and summarize, briefs ahead of time and have an opinion.


----------



## scooper

dgordo said:


> I don't think you can make a generalized statement about how judges decide. Certainly it was obvious to me that I was being asked questions by a judge with preconceived notions about an issue at times and other times I felt like a judge didn't even know what a case was about until opening remarks. Federal appeals court judges are more likely to have read, or have their clerks read and summarize, briefs ahead of time and have an opinion.


So, it's possible that all the oral arguments are doing is a verbal summary of what you filed in the briefs prior to the hearing ? One would hope an Appeals court judge would be on the better side of "prepared" . Especially on a case like this....


----------



## jacmyoung

scooper said:


> So, it's possible that all the oral arguments are doing is a verbal summary of what you filed in the briefs prior to the hearing ? One would hope an Appeals court judge would be on the better side of "prepared" . Especially on a case like this....


According to the appeals court internal rules, an oral argument means:

1)	The appeal is not frivolous, or
2)	The issues have not been decided already, or
3)	The decisional process would be aided significantly by the oral argument.

Since it is a question of "or" not "and", the meaning of an oral argument appears to range from "the appeal is not frivolous" to "the oral argument is just for show" to "the oral argument can be very helpful."

Take your pick


----------



## jacmyoung

I also noticed that Judge Bryson was one of the judges presided over the last 2006 appeal, he was the one temporarily stayed the new injunction on 6/3/09, he was one of the three-judge motion panel that stayed the new injunction pending appeal on 7/1/09, of which he authored the order, which might have indicated the likelihood of the outcome.

Judge Bryson could sit on the merits panel this time as well. In fact due to the expedited nature of the appeal, it is possible the three judges on the motion panel (including the Chief Judge) might just form the merits panel and be done with it.

If so we could see a decision sooner than we had expected.


----------



## jacmyoung

Just listened to the I4I v. Microsoft oral argument, I have to say I was surprised. Not only did those circuit judges read those briefs and all related documents very thoroughly, but they (or at least one of them) grilled both sides rigorously, very different than those transcripts we read from Judge Folsom's courtroom, which my impression had often been that he did not read anything before coming into the court, and then hardly asked any pointed questions. Maybe that is how the different court proceedings differ from one another.

I ended up also listening to the oral argument from the last TiVo v. E* appeal, similarly, one of the panel judges seemed to be particularly active in grilling both parties. I wonder if they get together before the oral argument, poll some common questions then just vote one of them to do the dirty work during the hearing.


----------



## jacmyoung

Below is a link to one of the most recent appeals court rulings and the quote:

http://www.cafc.uscourts.gov/opinions/09-1027.pdf



> While helpful, extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence. A "court should discount any expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent."


Noticed the claim construction *mandated by the ...*, not by the *district court*.

What the software claims mandated is, the "physical data source" must analyze video and audio data, then must temporarily store such video and audio data.

According to TiVo, the E* expert (never mind such contention is in dispute), or all five experts during the trial admitted that the PID filter met the "parse" limitation, therefore it is proof by clear and convincing evidence that the PID filter met the "physical data source" requirement.

Using the appeals court rule, TiVo failed completely.

First, the expert testimonies must be discounted if they are in conflict with the claims themselves. Did TiVo prove the PID filter analyzed "video and audio data"? No, it only said the PID filter met the "parse" limitation. Did TiVo prove the PID filter temporarily stored the video and audio data? Not only they did not even try to prove this point, they actually admitted the new design no longer had any software codes to temporarily store anything before storage to the hard drive.

Also TiVo continued to say, but E* could not change the "law of the case", i.e. the Judge Folsom's claim constructions, never mind he never construed the term "video and audio data from the broadcast data", nor "temporarily stores the video and audio data." But more importantly, even if he had done so, and even if those 5 experts had testified based on such court's claim constructions, it is still not enough because according to the appeals court, the expert testimonies are compared not against the claims constructions "mandated by the district court", rather "mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent."

So far in the PID filter debate, the only relevant software claims term the district court had construed was the term "parse" to mean "analyze".


----------



## Greg Bimson

> While helpful, extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence. A "court should discount any expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent."


Let's see.


jacmyoung said:


> According to TiVo, the E* expert (never mind such contention is in dispute), or all five experts during the trial admitted that the PID filter met the "parse" limitation, therefore it is proof by clear and convincing evidence that the PID filter met the "physical data source" requirement.
> 
> Using the appeals court rule, TiVo failed completely.


Really?

Re-read the statement from the Court of Appeals:A "court should discount any expert testimony that is clearly at odds with...
the claim construction mandated by the claims themselves...
the written description...
the prosecution history...
in other words, with the written record of the patent.​Dr Rhyne's testimony during the infringement and colorable difference evaluation hearing falls flat against this standard.

First, Dr. Rhyne had previously testified that the limitation of that claim element was ment.

Second, the written description of the claim had been followed. This was one of the few points all experts that testified at trial agreed upon.

Third, the *prosecution history* is that PID filtering met the step limitation. Everyone likes to forget that there is *prosecution history* that is not so easily defeated. Some have well-detailed arguments why there should not be a finding of contempt. However, this brick-wall known as *prosecution history* is the stumbling block to every argument.


jacmyoung said:


> Noticed the claim construction mandated by the ..., not by the district court


Uh, claim constructions are mandated by the claims themselves. That is what a _Markman_ hearing is all about. The district court makes definitions from the claims, which are called claim constructions.

Clutching
at
straws


----------



## jacmyoung

And according to the appeals court, if the experts failed to prove that the PID filter actually analyzed "audio and video data" and also "temporarily stores such audio and video data", then their testimonies must be discounted, because the testimonies are "clearly at odds with the claim constructions mandated by the claims themselves", and such mandates are, you must prove that the PID filter analyzes not just any data, but video and audio data, additionally, after analyzing and identifying such audio and video data, the PID filter must temporarily store such audio and video data.

Therefore those expert testimonies must be discounted because they did not meet the above two mandates.


----------



## jacmyoung

Greg Bimson said:


> ...claim constructions are mandated by the claims themselves. That is what a _Markman_ hearing is all about. The district court makes definitions from the claims, which are called claim constructions...


Yet the claim constructions are mandated by the claims themselves, not by the Markman hearing or by the district court, if you can read the above appeals court rule.

Here, the two claim terms I talked about were not even constructed during the Markman hearing, therefore not constructed by the district court.

Are you saying if the district court neglected to construct a claim term, then the patentee does not have to prove such term must be met?

To answer your such question, I only need to point out the fact that it was precisely because Judge Folsom failed to construct two terms in the hardware claims, specifically the "separate" and the "assemble" terms, that caused the reversal of the hardware claims verdicts by the appeals court.


----------



## Curtis52

TiVo has requested that their USPTO response due date be extended by one month to 11-03-09.


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## jacmyoung

Curtis52 said:


> TiVo has requested that their USPTO response due date be extended by one month to 11-03-09.


Excellent! As a result, by the time the appeals court have heard the oral argument and after the submission, the software claims will continue to stand rejected, and so are the PTO's interpretations of the key terms such as the "audio and video data" and the "blocking", will stand as they are today. The judicial notice will be taken without any TiVo's responses.

Hey, TiVo wanted a delay at the PTO, not E*.

This happens more often than not now that I realize. In the Ebay case I quoted before, the Supreme Court cited the fact that the patents at issue stood rejected long after the PTO's initial rejection, presumably because the patentee continued to delay their response to the PTO initial rejection. And this was in part why the Supreme Court rejected the idea of an automatic injunction against Ebay.

During yesterday's I4I v. Microsoft oral argument which I listened to, one of the issues was similar, that the I4I patent at issue continued to stand rejected long after the PTO's initial action, again I presume that I4I delayed their response to the PTO and got extensions.

Microsoft argued that because the patent stood rejected by the PTO, it showed that the infringement, if true, was not willful, and the circuit judge grilled the I4I lawyer on that issue too.

Even in this case there is the implication of the PTO initial rejection playing a role in Judge Folsom's decision that E*'s violation was not willful, as a result he declined to impose double or treble damages.


----------



## jacmyoung

After further reading of the PTO summary, it appeared on 9/22 several TiVo patent owners had a phone conference with the examiner, after which according to the examiner's summary form, "agreement with respect to the claims" was marked as "not reached".

I assume (I could be wrong) that the patent owners in their first attempt did not convince the examiner to reverse the rejection, TiVo then requested 30 more days to provide more responses to the examiner.


----------



## dfd

jacmyoung said:


> Excellent! As a result, by the time the appeals court have heard the oral argument and after the submission, the software claims will continue to stand rejected, and so are the PTO's interpretations of the key terms such as the "audio and video data" and the "blocking", will stand as they are today. The judicial notice will be taken without any TiVo's responses.


The claims are rejected? Please cite source.


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## jacmyoung

dfd said:


> The claims are rejected? Please cite source.


Where have you been? On 8/3/09 the PTO issued an initial office action rejecting TiVo's claims 31 and 61.


----------



## Ken_F

> All participants (USPTO personnel, patent owner, patent owner's representative):
> 
> (1) Fred Ferris (PTO) (3) Jim Barton (TIVO). John Villasenor (UCLA)
> (2) Eric Kease/. Alex Kosowski (PTO) (4) Edward Kessler. Lori Gordon (SternelKessler)
> Date of Interview: 22 September 2009
> Exhibit shown or demonstration conducted: Yes
> If Yes, brief description: Slides
> 
> Agreement with respect to the claims was not reached.
> 
> Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to ... "
> Claim(s) discussed: 31 and 61.
> 
> Identification of prior art discussed: Thomason. Krause.
> 
> Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
> Patent owner presented an overview of the '389 Patent and the claimed limitations as they related to Figure 8 disclosing sources. transforms. and sinks. PTO representatives expressed concern that the explanation based on Figure 8 was too high level and indicated that arguments directed toward the process of Figures 6 and 9 would be more helpful in clarifying any differences between the claimed subject matter and the combination of Thomason and Krause.


Excerpt from Receipt of Petition in a Reexam (page2):



> The '389 patent is currently involved in litigation with the Requestor, Dish Network Corporation (successor to Echostar Communications Corp.), _TiVo Inc. v. Echostar Communications Corporation, et al_. The contempt phase of this litigation is currently on appeal to the Court of Appeals for the Federal Circuit. A hearing is expected later this year. Therefore, as part of TiVo's preparation for the response to the Office Action, TiVo's undersigned counsel and Dr. Villasenor have worked closely with TiVo's litigation counsel to avoid the possibility of taking conflicting positions between the litigation and this reexamination.
> 
> On September 22, 2009, TiVo conducted an interview with Primary Examiners Ferris and Kosowski and Supervisory Patent Examiner (SPE) Keasel to discuss the TiVo invention as embodied in the '389 patent, and more particularly, in claims 31 and 61. TiVo also presented arguments in support of its position that neither the Thomason nor Krause references, whether considered separately or in any rational combination, render claims 31 or 61 obvious under 35 U.S.C. 103(a).
> 
> During the course of the interview, the Examiners made suggestions as to what they believed should be incorporated into a written response to the Office Action to permit them to give favorable consideration to TiVo's arguments. In order to comply with the Examiner's suggestions, and to enable TiVo to gather the evidence necessary to support its secondary consideration position, TiVo requires additional time beyond the current due date of October 3, 2009.


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## jacmyoung

> to avoid the possibility of taking conflicting positions between the litigation and this reexamination.


What I said all along. I wonder how TiVo can continue to say that the start code detection and building of an index table are irrelevant to Claims 31 and 61, while still manages to survive the rejection without at a minimum making some serious modifications of the claim terms.



> to enable TiVo to gather the evidence necessary to support its secondary consideration position


I wonder what was TiVo's primary consideration position during the initial discussion with the examiner which was not agreed upon by the examiner? More importantly did E* get a copy of the record? The rule says the third party (who requested the reexam) shall be copied of all responses, but don't know the timing of the transmission.

BTW, on further reading, I think I know what was TiVo's primary consideration position, it was the Figure 8. Figure 8 depicts those "objects", specifically the "source", "transform" and "sink" objects. If I read the examiner's notes correctly, he rejected those "objects" as patentable art, because according to him they are "too high level", meaning not descriptive enough to meet the patentable requirements.

Reading the examiner's notes, it appears TiVo still did not try to refute the PTO's interpretation that "parse video and audio data" means "detecting start codes and building index..." because had TiVo done so, it would have likely been noted by the examiner, it would have been such a key disagreement not to take note of it.


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## dfd

jacmyoung said:


> Where have you been? On 8/3/09 the PTO issued an initial office action rejecting TiVo's claims 31 and 61.


Again, WORDS HAVE MEANINGS!

Earlier you said the claims were rejected. That clearly is not true.

Why should anybody believe anything else you argue when you clearly have little respect for the truth?


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## l8er

dfd said:


> Why should anybody believe anything else you argue when you clearly have little respect for the truth?


Hey, it's the Internet - the truth never gets in the way on the Internet.


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## jacmyoung

dfd said:


> Again, WORDS HAVE MEANINGS!
> 
> Earlier you said the claims were rejected...


That was exactly what I said and I continue to say so. Claims 31 and 61 were rejected by the initial office action, and so far the rejection stands, after TiVo failed to overcome the rejection with their "primary consideration position".

The "secondary consideration position" usually involves modification of the claim terms in order to try again to overcome the rejection. While we do not know what kind of modifications TiVo will make, from reading the examiner's notes, we know TiVo's "primary consideration position" was the disclosure of those four "objects" which they claimed were the invention.

But the examiner rejected such position because he said those "source object", "transform object", "control object" and "sink object" were too much high level terms, TiVo needed to use lower level terms to describe their invention in the software claims.

Do you know what that means? If TiVo must modify all those terms in order to overcome the rejection, then the modified software claims will read nothing like the old software claims. That alone should at a minimum compel a new trial with respect to the infringement issue by the E* DVRs because many of the previous court claim constructions will no longer be applicable.

I have a feeling E* will not let this pass them by without bringing it up to the appeals court.


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## jacmyoung

l8er said:


> Hey, it's the Internet - the truth never gets in the way on the Internet.


He comes in here time after time trying to give us the impression that he was all for words and the meaning of the words, yet time after time I have demonstrated that he dose not even know what words that are at issue before coming in here with his accusations.


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## dfd

jacmyoung said:


> That was exactly what I said and I continue to say so. Claims 31 and 61 were rejected by the initial office action, and so far the rejection stands, after TiVo failed to overcome the rejection with their "primary consideration position".
> 
> The "secondary consideration position" usually involves modification of the claim terms in order to try again to overcome the rejection. While we do not know what kind of modifications TiVo will make, from reading the examiner's notes, we know TiVo's "primary consideration position" was the disclosure of those four "objects" which they claimed were the invention.
> 
> But the examiner rejected such position because he said those "source object", "transform object", "control object" and "sink object" were too much high level terms, TiVo needed to use lower level terms to describe their invention in the software claims.
> 
> Do you know what that means? If TiVo must modify all those terms in order to overcome the rejection, then the modified software claims will read nothing like the old software claims. That alone should at a minimum compel a new trial with respect to the infringement issue by the E* DVRs because many of the previous court claim constructions will no longer be applicable.
> 
> I have a feeling E* will not let this pass them by without bringing it up to the appeals court.


BULL!

The claims stand.

The patent is in force.

You are not being truthful.


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## jacmyoung

dfd said:


> BULL!
> 
> The claims stand.
> 
> The patent is in force.
> 
> You are not being truthful.


The software claims are rejected.

The patent is in force.

Different words mean different things.

Just because the claims are rejected, does not mean the patent is unenforceable, but if the claims stand rejected by a final action, the patent owner may not accuse anyone of infringement on those rejected claims until such time the patent owner succeeds in appealing the office action and overcome the rejection.

If an infringement issue has been well settled, even if the claims at issue are rejected in a later time, the infringement issue and settlement may not be revisited. But if the infringement issue is still in proceedings while the claims at issue are rejected by a final action, the court must exercise its discretion in determining how the infringement proceedings should continue or be stayed.

None of the above however applies to the current appeal, E* is not asking the court to stay the proceedings, some of the issues that can impact the appeal are:

1) The reexamination proceedings themselves, because the appeals court had granted E*'s motion to take judicial notice of the reexam proceedings.

2) The PTO's interpretations of several software claims terms, which the appeals court will take judicial notice of, as it said it will.

3) The latest PTO's position that TiVo needs to amend (modify) the software claims terms in order to try again to overcome the rejection. E* can file notice to the appeals court of such development because this is part of the reexam proceedings which the appeals court said it will take judicial notice of.

4) TiVo's own statement in its request to the PTO for an extension, in which TiVo said they will likely amend (modify) the software claims terms to try to overcome the rejection. Again E* can notify the appeals court and argue that any modifications of the software claims terms will render the related previous court claim constructions moot, therefore a new trial will be a logical path.

The court simply cannot determine an infringement issue based on the claim constructions that are now made moot in light of TiVo's admission that they will modify the claim terms.


----------



## Ken_F

jacmyoung said:


> 3) The latest PTO's position that TiVo needs to amend (modify) the software claims terms in order to try again to overcome the rejection.


The PTO said no such thing.



jacmyoung said:


> 4) TiVo's own statement in its request to the PTO for an extension, in which TiVo said they will likely amend (modify) the software claims terms to try to overcome the rejection.


TiVo said no such thing.



jacmyoung said:


> The court simply cannot determine an infringement issue based on the claim constructions that are now made moot in light of TiVo's admission that they will modify the claim terms.


TiVo made no such admission.



jacmyoung said:


> and so far the rejection stands, after TiVo failed to overcome the rejection with their "primary consideration position".


It sounds like you just made that up.



jacmyoung said:


> The "secondary consideration position" usually involves modification of the claim terms in order to try again to overcome the rejection. While we do not know what kind of modifications TiVo will make, from reading the examiner's notes, we know TiVo's "primary consideration position" was the disclosure of those four "objects" which they claimed were the invention.


Huh?

"Secondary consideration" is a legal term for a type of evidence. It refers to evidence of "commercial success, long felt but unsolved needs, failure of others, etc." This evidence is one factor used to determine the obviousness (or lack thereof) of a patent.

TiVo wants additional time to "gather the evidence necessary to support its secondary consideration position" to aid in the PTO's final determination of obviousness. For example, if another CE vendor (including Echostar) had unsuccessfully tried to create a DVR product after the Philips and iMedia patents were filed in 1996, then that would be evidence of secondary consideration.

Excerpts from PTO rules:



> Office personnel should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination. *Rebuttal evidence may include evidence of "secondary considerations," such as "commercial success, long felt but unsolved needs, [and] failure of others"(Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467), and may also include evidence of unexpected results.* As set forth above, Office personnel must articulate findings of fact that support the rationale relied upon in an obviousness rejection. As a result, applicants are likely to submit evidence to rebut the fact finding made by Office personnel. For example, in the case of a claim to a combination, applicants may submit evidence or argument to demonstrate that:
> 
> (A)one of ordinary skill in the art could not have combined the claimed elements by known methods (e.g., due to technological difficulties);
> 
> (B) the elements in combination do not merely perform the function that each element performs separately; or
> 
> (C) he results of the claimed combination were unexpected.
> 
> Once the applicant has presented rebuttal evidence, Office personnel should reconsider any initial obviousness determination in view of the entire record.





> An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. See 35 U.S.C. 103(a). As reiterated by the Supreme Court in KSR, the framework for the objective analysis for determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:
> 
> (A)Ascertaining the differences between the claimed invention and the prior art; and
> 
> (B)Ascertaining the differences between the claimed invention and the prior art; and
> 
> (C)Resolving the level of ordinary skill in the pertinent art.
> 
> *Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as "secondary considerations," may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.* The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness.
> 
> The question of obviousness must be resolved on the basis of these factual determinations. While each case is different and must be decided on its own facts, the Graham factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis.


----------



## jacmyoung

Ken_F said:


> The PTO said no such thing.


First off, let's agree that a lot of things were said in that meeting, and what we have read is only the most skinny of the summary by the examiner in filling out that summary form, so what you meant was you could not read from his summary to say he actually said such thing.

What I said was what was deducted from his notes. First he told TiVo inventors the Fig 8 was too high level, which meant the TiVo inventors tried to use Fig 8 to claim their position, which resulted in such examiner's response.

Next you try to find out exactly what that Fig 8 is. It turns out Fig 8 depicts the four "objects" disclosed by the software claims. Therefore you conclude that the examiner told the TiVo inventors that the "objects" are too high level and not patentable, he then told the TiVo inventors to use Figs 6 and 9 to see if they could find some thing more to say.

Do you refuse to deduct, or do you disagree with my analysis, or do you simply refuse to hear my analysis?



> TiVo said no such thing.


TiVo of course will not come out to say so, but what else do you think TiVo can do to overcome the rejection, when the initial things they argued to claim the invention (the "objects") were rejected by the examiner?



> TiVo made no such admission.


Can you prove TiVo did not say such thing to the examiner? We shall wait and see.



> It sounds like you just made that up.


Are you saying TiVo has overcome the rejection on their first try?



> Huh?


I will give you that. You have clearly explained to me what the "secondary consideration position" means. But my questions are:

1) What about the "primary consideration position" and did TiVo not fail on that one? Else why do they even need to use the "secondary consideration position" and more importantly why do they need more time? Two months were not enough?

2) If you are correct that:



> For example, if another CE vendor (including Echostar) had unsuccessfully tried to create a DVR product after the Philips and iMedia patents were filed in 1996, then that would be evidence of secondary consideration.


Then don't you have to admit that TiVo will also fail on the above point too? It is obvious every other company has succeeded in creating a DVR product of its own, with clear commercial success, resolving long felt but unsolved needs?

Now if your response is, but they did so by infringing on the TiVo's patent, I want you to stop right there, because the secondary consideration has nothing to do with infringement, only that whether someone else was able to do the same thing *after TiVo's patent was filed*. If they did so successfully, like E* did, then TiVo cannot use that *secondary position* to overcome the rejection.

I thank you for educating me on what the "secondary consideration position" means, now that I know what it is, I see TiVo having no chance of using such position to overcome the rejection.


----------



## jacmyoung

After looking into the term "secondary consideration", I must say while Ken's definition of the term was correct, his example was not quit right. So if Ken you want to discuss this issue further I am all game.

The point I want to make though is, by simply reading the examiner's notes, TiVo did present its position on the non-obviousness of the software claims terms (Fig 8), and the examiner did not agree to such position. The examiner then made some suggestions (Figs 6&9) to assist TiVo to improve their chance of success, all the above were done on 9/22, and nothing in the above had anything to do with any "secondary considerations".

The assumption is of course by 10/3, the deadline for TiVo to submit their position to overcome the rejection, the examiner thought TiVo by taking his suggestions, might be able to offer a better position.

However now we know that TiVo is asking the PTO to give them 30 more days, not to prepare the position as suggested by the examiner, but to prepare their "secondary consideration position".

The implication is, TiVo did not think using Figs 6&9 would have secured their position to overcome the rejection, so they are working on the "secondary consideration position" and they need more time to do so. I also want to add that secondary considerations are very weak positions, recently rejected by the appeals court in some cases, and secondary considerations are even less convincing with the PTO.


----------



## Curtis52

Ken_F said:


> Huh?


Hilarious.

Correcting stuff in this neighborhood can get to be a full time job if one get's drawn in. It's like the ******** hazard and is about as futile as catching raindrops with a seive.


----------



## jacmyoung

Curtis52 said:


> Hilarious.
> 
> Correcting stuff in this neighborhood can get to be a full time job if one get's drawn in. It's like the ******** hazard and is about as futile as catching raindrops with a seive.


Yet a few people continue to try this job, sometimes successfully making corrections, other times finding themselves totally clueless, without exception though, in the end they were shown how TiVo got covered in tar at the appeals court, the PTO and at the business front.

TiVo might be able to clean some spots down the road, but let's face it, they are covered in tar.

Below is more reading to demonstrate just that:

http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf



> 2131.04 Secondary Considerations
> 
> Evidence of secondary considerations, such as unexpected results or commercial success, *is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based*. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).





> 2132 35 U.S.C. 102(a)
> 
> *35 U.S.C. 102*. Conditions for patentability; novelty and loss of right to patent.
> 
> A person shall be entitled to a patent unless -
> 
> (a)the invention *was known* or used *by others in this country, or patented or described* in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.





> III."BY OTHERS"
> 
> *"Others" Means Any Combination of Authors or Inventors Different Than the Inventive Entity*
> 
> The term "others" in 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be "by others." *This holds true for all types of references eligible as prior art* under 35 U.S.C. 102(a) including publications as well as public knowledge and use. Any other interpretation of 35 U.S.C. 102(a) "would negate the one year [grace] period afforded under § 102(b)." In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).


In this case, the "others" are the combination of the Thomason and Krause patented prior art.

TiVo should just follow the examiner's suggestion and work on the Figs 6 and 9, without trying to delay the process and extend the deadline to 11/3, curiously one day after the 11/2 appeals court hearing.

*Correction:*

This case is a "103 rejection" not a "102 rejection", see a later post for more info.


----------



## Tower Guy

jacmyoung said:


> But the examiner rejected such position because he said those "source object", "transform object", "control object" and "sink object" were too much high level terms, TiVo needed to use lower level terms to describe their invention in the software claims.
> 
> Do you know what that means? If TiVo must modify all those terms in order to overcome the rejection, then the modified software claims will read nothing like the old software claims.


TRUE.

Logic says that lower level descriptive terms are likely to broaden the scope of the patent, giving TiVo even further patent protection.


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## jacmyoung

Tower Guy said:


> TRUE.
> 
> Logic says that lower level descriptive terms are likely to broaden the scope of the patent, giving TiVo even further patent protection.


Since you claimed to use logic, let me point out that your logic is contrary to the issue at hand. We are talking about how to overcome the rejection here. Broaden the claim terms will only make them easier to be rejected because broader claims naturally will invite more prior art into the picture. As an example, if you insist that the step one of the software claim only discloses the parse function, then E*'s PID filter will meet such limitation, but to do so you are broadening the first step, by removing the two narrower limitations, which limit the parse to only parse "audio and video data", not any data, also to then "temporarily store the audio and video data." Without the two narrowing terms, you may say a PID filter will meet the definition, but at the same time any PID filter prior patents can be used to render such broad step obvious.

What the examiner meant was, in order to overcome the rejection, TiVo must narrow the claim limitations, not broaden them. A narrower claim is more likely to overcome a rejection but also more difficult to be infringed on.


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## jacmyoung

An important correction.

The PTO rejection in this case is a "103 rejection" not a "102 rejection".

I pointed out earlier that secondary consideration is useless in a "102 rejection", but did not know that it can be used in a "103 rejection". Nevertheless secondary consideration position is a weak position. TiVo's request to prepare their secondary consideration position means they could not use the formal position to overcome obviousness rejection by Thomason and Krause prior patents, they now want to try the next position.

I still could not find out what is the substantive difference between a "102 rejection" and a "103 rejection", but my guess is if a rejection is based on obviousness made by a single prior art, it is a "102 rejection", if a rejection is based on obviousness made by a combination of prior art, it is a "103 rejection".


----------



## Ken_F

jacmyoung said:


> Then don't you have to admit that TiVo will also fail on the above point too? It is obvious every other company has succeeded in creating a DVR product of its own, with clear commercial success, resolving long felt but unsolved needs?


It is not pertinent whether a company succeeded in creating a DVR product after the TiVo patent was filed. It would be pertinent if a company attempted and failed to create a DVR product after the Philips/iMedia patents were known but before the TiVo patent was known. Differences aren't so obvious if others tried and failed to create DVR products using prior art. Companies are assumed to know about existing patents during product development.

This is just one of many potential examples. Evidence of secondary consideration can take many forms and not all are equally relevant to every case.



jacmyoung said:


> I still could not find out what is the substantive difference between a "102 rejection" and a "103 rejection", but my guess is if a rejection is based on obviousness made by a single prior art, it is a "102 rejection", if a rejection is based on obviousness made by a combination of prior art, it is a "103 rejection".


The preliminary rejection of the TiVo patent was made on the following grounds (103a):



> differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains


A 102 rejection would mean that the prior art (i.e. Philips and iMedia patents), taken together, duplicates what is found in the invention. In that case, evidence of secondary consideration is irrelevant. Evidence of secondary consideration is only relevant when differences exist and the PTO must determine whether those differences are obvious.

A 103a rejection -- as in TiVo's case -- means that all prior art (i.e. Philips and iMedia patents), taken together, does *not* duplicate what is found in the invention, but the differences have a high degree of obviousness, such that the average person in the field could duplicate the invention when made aware of the prior art. In this case, evidence of secondary consideration is highly relevant, because it goes straight to the question of whether the differences are indeed obvious.

Don't get too hung up on the term "secondary consideration." That isn't meant to imply something about its importance. It's just the name for a type of evidence used by the PTO to help determine whether differences from the prior art are obvious. I'm told that evidence of secondary consideration is a common request by the PTO in 103a rejections. Evidence of secondary consideration can be very important or of little importance; it all depends on the evidence itself.


----------



## jacmyoung

Ken_F said:


> ...Don't get too hung up on the term "secondary consideration." That isn't meant to imply something about its importance. It's just the name for a type of evidence used by the PTO to help determine whether differences from the prior art are obvious. I'm told that evidence of secondary consideration is a common request by the PTO in 103a rejections. Evidence of secondary consideration can be very important or of little importance; it all depends on the evidence itself.


I will respond to your last comment first.

For all the recent cases I have been able to Google for ever since the "secondary consideration" issue came out a few days ago, in those cases the appeals court had without exception rejected those secondary consideration positions, even though in one or two of those cases the "secondary" evidence were quite compelling.



> It is not pertinent whether a company succeeded in creating a DVR product after the TiVo patent was filed. It would be pertinent if a company attempted and failed to create a DVR product after the Philips/iMedia patents were known but before the TiVo patent was known. Differences aren't so obvious if others tried and failed to create DVR products using prior art. Companies are assumed to know about existing patents during product development.


In this case, one of the main reasons Judge Folsom declined to impose enhanced damages in 2006, was because as he put it, E* developed DVRs long before TiVo even existed. In your view does the above not undermine your example?

One other problem I have with your "Philips and iMedia patents" example is, in this case, it is not the "Philips and iMedia patents", rather the Thomason and Krause patents (the prior art in this case), that are pertinent prior art. While if you are correct that the Philips and iMedia patents were filed in 1996, the Thomason and Krause patents were filed a bit later, in 12/96 and 11/97, respectively, while the TiVo patent was filed in 7/98.

Below is a short history of major DVR development in a nutshell:



> The two early consumer DVRs, ReplayTV and TiVo, were launched at the 1998 Consumer Electronics Show in Las Vegas. Microsoft also demonstrated a unit with DVR capability but commercial availability of this software would have to wait until the end of 1999 for full DVR features in Dish Network's DISHplayer receivers. TiVo shipped their first units on March 31, 1999, and to this day the last Friday in March is celebrated as a company holiday known as 'Blue Moon'. Although ReplayTV won the "Best of Show" award in the video category with Netscape co-founder Marc Andreessen as an early investor and board member&#8230;


As you can see, at least five different companies, including TiVo, had demonstrated working DVRs almost one year before the TiVo patent was filed. Even if you want to argue that the Microsoft DVR (the E* Dishplayer) did not have commercial availability until after TiVo's patent was filed, the working model was demonstrated almost one year prior to the TiVo patent filing. At a minimum however, ReplayTV had their DVRs out long before the TiVo patent was filed and received the "Best of Show" award.

What other secondary consideration evidence can you think of?


----------



## Ken_F

jacmyoung said:


> I will respond to your last comment first.
> 
> For all the recent cases I have been able to Google for ever since the "secondary consideration" issue came out a few days ago, in those cases the appeals court had without exception rejected those secondary consideration positions, even though in one or two of those cases the "secondary" evidence were quite compelling.


Evidence of secondary consideration is used on a regular basis by the PTO to help assess obviousness. I don't know what role it has -- if any -- in the court system.



jacmyoung said:


> Below is a short history of major DVR development in a nutshell:
> 
> As you can see, at least five different companies, including TiVo, had demonstrated working DVRs almost one year before the TiVo patent was filed. Even if you want to argue that the Microsoft DVR (the E* Dishplayer) did not have commercial availability until after TiVo's patent was filed, the working model was demonstrated almost one year prior to the TiVo patent filing. At a minimum however, ReplayTV had their DVRs out long before the TiVo patent was filed and received the "Best of Show" award.


Be careful about relying on wiki definitions, which are fraught with inaccuracies.

ReplayTV and TiVo first demonstrated their product publicly at CES in 1999, five months after TiVo filed their patent in July, 1998. Microsoft responded by issuing a press release of their own, but did not actually demonstrate a functional DVR. Confusion often stems from the fact that (a) ReplayTV purchased various magazine advertisements for their DVR in the second half of 1998, and (b) TiVo carried out a public beta/trial of its DVR in the fall of 1998.

Few people are aware that ReplayTV's original design could *not* play a previous recording while recording something else. It could only play a recording-in-progress from the beginning. TiVo was first with the ability to play a previous recording while recording something else, which is a key aspect of the time warp patent.


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## Curtis52

Ken_F said:


> TiVo was first with the ability to play a previous recording while recording something else, which is a key aspect of the time warp patent.


"Previous recording" seems sort of redundant. For example, the beginning of a program is recorded previously to the end of the program. The fact that they may both may or may not share the same title doesn't seem to be due to anything in TiVo's patent but are just interface details.


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## jacmyoung

Ken_F said:


> Evidence of secondary consideration is used on a regular basis by the PTO to help assess obviousness. I don't know what role it has -- if any -- in the court system...


I understand this, my point was after reading several recent case law, secondary considerations appeared to me almost having no credibility at all at the appeals court level. Of course the PTO closely watches how the appeals court rules on those issues, in fact the PTO modifies their guidelines based on the higher court rulings.



> &#8230;Few people are aware that ReplayTV's original design could not play a previous recording while recording something else. It could only play a recording-in-progress from the beginning. TiVo was first with the ability to play a previous recording while recording something else, which is a key aspect of the time warp patent.


I do not know if you are aware that the issues in this case, as well as the issues at hand that resulted in the rejection of the TiVo's software claims, have nothing to do with recording and playing back another already recorded show at the same time, rather have to do with how the invention teaches a way of detecting start frames in the MPEG streams, building an index table of such codes, so during the playback the DVR can easily locate the locations of the I-frames, know where to stop, or jump to, while performing fast forward and fast backward "trickplay functions".

It appears to me, after reading the TiVo's statement and the examiner's notes, that TiVo does not dispute that their above so called "core of the invention" has been made obvious by the Thomason and Krause prior patents. My question is then, what is left for the software claims to teach?


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## jacmyoung

As for your statement that the PTO regularly reviews secondary considerations, that is because the primary considerations alone are not sufficient. If during the 9/22 meeting TiVo was able to convince the examiner that at least *one* of the steps in their software claims was *not* made obvious by the prior patents, they should have been able to overcome the rejection, if so logic says there would not be the need for any delay.

The examiner's notes clearly stated that the "Fig 8" position wasn't good, and asked TiVo to use the "Fig 6" and "Fig 9". Don't laugh because you could see this coming from a mile away, is TiVo going to heed the examiner's advice and work on their "69 positions"?

As far as this case is concerned, the only other meaningful secondary consideration we have not considered was "commercial success". As I recall both TiVo and ReplayTV were equal in their initial commercial releases of the DVRs. Of course in the end ReplayTV died, but not because of the invention, but because of their marketing.

Advertising and marketing cannot be considered in the "commercial success" consideration, this much is very clear by the PTO. TiVo was not the only one that had commercial success with their DVRs at that time.


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## Greg Bimson

But it isn't like the PTO proceedings have any effect with the contempt proceeding (and current appeal).


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## jacmyoung

Greg Bimson said:


> But it isn't like the PTO proceedings have any effect with the contempt proceeding (and current appeal).


If so, why did the appeals court grant E*'s motion to take judicial notice of the PTO reexamination proceedings? This is the same as saying we will accept the PTO action as evidence.

Whether the merits panel will consider the evidence relevant or not is of course not known at this time. You can say hey I don't think the evidence is relevant to the contempt proceedings, or maybe it is.

Why? For example, during the contempt proceedings, E* said they removed the start code detection and building of index table, so they no longer infringe on the software claims. TiVo said, but the start code detection...are irrelevant to the software claims. Judge Folsom agreed that the start codes were irrelevant.

The PTO evidence now says, "parse audio and video data" means detecting start codes and building index table...Not only that, based on the latest meeting record, TiVo does not dispute the PTO's statement with regard to the start code detection and building of index table.

The question to you is, do you think the above PTO statement is *relevant* to the contempt debate or not? Please keep in mind that the appeals court had already allowed the PTO evidence in, the only remaining question, as the appeals court order stated, is to determine if such evidence is *relevant* to the contempt issue or not.

People continue to confuse the issue of claims rejection with the relevance of the evidence. As E* said, whether the PTO will ultimately reject the software claims is not even the point here, TiVo might be able overcome the rejection (though I believe this time it is unlikely), but that should not matter.

At issue is the PTO's interpretation of the relevance of the start code detection to the software claims, this is the main reason why E* wanted to introduce such evidence. And let me repeat, the appeals court had already agreed to accept the evidence, the only thing left for them to do is to determine if such evidence is relevant to the contempt/infringement issue or not.

The decision the appeals court will have to make, is *not* whether the claims will ultimately be rejected, or whether the rejection itself has anything to do with the appeal. It is very important to make such distinction.

If the above is still not clear to you, let me try it this way. In front of us are three statements:

1) E*'s statement that they removed start code detection...therefore they no longer infringe the software claims.

2) TiVo's statement that start code detection...are irrelevant to the software claims, therefore E* still infringes.

3) The PTO's statement that "parse audio and video data" means start code detection...And so far TiVo does not dispute it.

Do you think the above three statements are relevant to one another or not? Notice the above statements do not have anything to do with claim rejection at all, the word "rejection" is not in there. E* did not necessarily ask the appeals court to take judicial notice of the rejection, rather the PTO statement 3).

Of course for E*, it will be nice if the PTO rejects the software claims in its final action, but so what if TiVo manages to overcome the rejection in the end? The point is TiVo isn't disputing the PTO statement 3), TiVo is too busy trying to save the software claims.


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## jacmyoung

I want to also address one other related issue. If anyone had read my previous posts concerning the Supreme Court Ebay decision, as well as the on-going I4I v. Microsoft case, a pattern of PTO reexamination as a litigation strategy was apparent. The reason is, when patentees try to prove infringement by the defendants, the natural tendency is to convince the district court to adopt the patentees' broader claim constructions, in order to capture the defendant.

The defendants naturally will dispute such broader claim constructions, but sometimes they fail, and the patentees' succeed in convincing the jury the defendants infringe on the patent claims due to the broader definitions. On appeal, the defendants will try to attack the district court adopted broad claim constructions, sometimes they succeed, such as E* with respect to the hardware claims, other times they fail.

But this is not the end of the road for the defendants. Because once the patentees broaden its own patent claim terms, such broadened claim constructions can be used to convince the PTO that the claims should be rejected for obviousness by prior art.

Ebay succeeded in having the PTO rejecting all patent claims after it was found to infringe, by the time the appeal reached the Supreme Court, the PTO rejection was used in part by the Supreme Court to reject the appeals court ruling that Ebay should be subject to the injunction.

The I4I v. Microsoft case has passed the oral argument phase, but not decided yet, however Microsoft, after it was found to infringe, had also succeeded in having the PTO rejecting all related I4I patent claims, and Microsoft is arguing because of that, it showed the willful infringement verdict was wrong, and the $40M enhanced damages should be overturned. We will have to wait and see how that goes, but as I pointed out earlier, during the oral argument, the circuit judge grilled the I4I lawyer on that point.

Here, the same game is played out. During the last PTO reexamination, the reason and the only reason the then PTO examiner decided not to reject the software claims, was because he said the software claims disclosed an invention called the "objects". And the prior art cited by E* did not disclose such "objects". Again that was the *only thing* that prevented a rejection of the software claims last time.

In this second reexamination however, E* pointed out one thing, during the trial, TiVo interpreted the "objects" to mean "collection of data and operations"-a very broad interpretation because any software and hardware operations are "collection of data and operations". E* disputed such notion, E* argued "object" means "object oriented programming". But E* failed, and Judge Folsom adopted TiVo's broad claim construction. This is in part how E* was found to infringe on the "object" terms.

After E* pointed out the above, the PTO changed its view of the term "object" in the software claims, no longer considered the term to disclose any kind of innovative art. This is even more evident after the 9/22 meeting during which the examiner told TiVo to forget about that Figure 8, which depicts those "objects".

Let's assume that TiVo manages to overcome this current rejection, and let's also assume that the appeals court confirms TiVo's much broader interpretations of the software claims during the contempt proceedings. The software claims can be easily rejected in the next reexamination.

For one thing, we know the term "object" is no longer a meaningful term to prevent a rejection.

Second, TiVo had disavowed the start code detection and building of index as an art disclosed in the software claims.

Third, TiVo also said, the E*'s circular ring of buffer operations met the "automatic flow control" limitation. Since the E*'s circular ring of buffer operations are merely some generic hard drive storage buffer functions, TiVo basically had declared that their so called "automatic flow control" invention is no different than the generic hard drive buffer functions.

Now we can see TiVo's problem. After trying to broaden its software claim terms over and over, in order to capture E* first during the trial, later again during the contempt proceedings, TiVo had pretty much rendered its software patent claims meaningless, without disclosing any kind of inventive art at all. TiVo has single handedly invalidated its own software claims.

That is of course to assume that the appeals court actually will buy everything TiVo had said about their software claims.


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## jacmyoung

Some updates and comments.

Today the PTO granted TiVo's 9/24 request for extension to 11/3--response to the initial rejection.

On 9/25 E* informed the PTO of the 11/2 appeals court hearing schedule.

TiVo's extension request appears timed to avoid any of their official responses being used by E* in the 11/2 appeals court hearing.

As I explained earlier, for TiVo to overcome the rejection, they must demonstrate that their software claims disclose art that are different than those disclosed by the two prior patents. To do so they must show that whatever the invention disclosed in the software claims, is unique and special, not some common art that can be easily made obvious. This means TiVo has to narrow the scope of whatever the invention that is revealed by the software claims.

Of course when TiVo narrows the scope of the art, they will make it easier for E* to avoid infringing on such more restrictive art. But if TiVo can wait till 11/3 to submit the final documents to the PTO, they can prevent E* from filing such documents (TiVo must provide a copy of such documents to E*) to the appeals court before 11/2, or using some of the points in the documents on 11/2 during the oral argument.

Though I believe E* can still file such documents after the oral argument.


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## jacmyoung

It appears TiVo again agreed to delay the attorney fees and costs issue. I have a feeling E*'s "supplemental authority" citation to the appeals court is working and making TiVo think twice about crying to Judge Folsom on the sanction issues.


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## Paul Secic

jacmyoung said:


> It appears TiVo again agreed to delay the attorney fees and costs issue. I have a feeling E*'s "supplemental authority" citation to the appeals court is working and making TiVo think twice about crying to Judge Folsom on the sanction issues.


Why doesn't Echostar buy Tivo?


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## Jason Nipp

$$$$


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## Curtis0620

Paul Secic said:


> Why doesn't Echostar buy Tivo?


Why don't they just pay up already?


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## jacmyoung

Curtis0620 said:


> Why don't they just pay up already?


Because they believe they do not have to pay. In fact from the latest movement TiVo appears to recognize such outcome, else TiVo would not have tried to delay the sanction issues twice already.

When did TiVo ever hesitated to tell Judge Folsom how E* did not want to pay what TiVo asked for and let the judge help TiVo out? Not until after the appeals court's stay, the PTO's initial rejection, and the initial sanction ruling by Judge Folsom.

When you see the tide turning, you stop and hold your position hoping the tide stop turning, or at least do not want to add to the backlash.

That is not to say TiVo cannot pull this off, only that now TiVo must realize, their pulling it off is totally dependent on if E* can benefit greatly from TiVo's effort.

The best outcome IMHO is a settlement that:

1) TiVo calls off the litigation, reimburses E* attorney fees and costs during the contempt proceedings, in exchange E* calls off the PTO reexamination request (unfortunately this might be too late).

2) TiVo and E* agree to not sue each other, instead work together on their co-branded DVRs, and share advertising revenue from such new DVR platform.

Both E* and TiVo are on the cutting edge of the new advertising paradigm, they also share many common traits in the DVR development and remote access. All the networks (the big four and all the cable networks) are bleeding ad revenus from the DVR ad skipping and the use of the Internet, they need new technologies to guide them, something the old Neilson can not provide.

Unfortunately I think there is just too much bad blood running between the two to work out any deals right now, even if they can both benefit in the long run, I don't think they can see past this litigation. Both seem to be co-dependent to this courtcase after all these years.


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## deaincaelo

Greg Bimson said:


> Let's see.Really?
> 
> Re-read the statement from the Court of Appeals:A "court should discount any expert testimony that is clearly at odds with...
> the claim construction mandated by the claims themselves...
> the written description...
> the prosecution history...
> in other words, with the written record of the patent.​Dr Rhyne's testimony during the infringement and colorable difference evaluation hearing falls flat against this standard.
> 
> First, Dr. Rhyne had previously testified that the limitation of that claim element was ment.
> 
> Second, the written description of the claim had been followed. This was one of the few points all experts that testified at trial agreed upon.
> 
> Third, the *prosecution history* is that PID filtering met the step limitation. Everyone likes to forget that there is *prosecution history* that is not so easily defeated. Some have well-detailed arguments why there should not be a finding of contempt. However, this brick-wall known as *prosecution history* is the stumbling block to every argument.
> Uh, claim constructions are mandated by the claims themselves. That is what a _Markman_ hearing is all about. The district court makes definitions from the claims, which are called claim constructions.
> 
> Clutching
> at
> straws


1st, I would like to point out that Dr. Rhyne's previous testimony was that the claim limitation being met means that Echostar was not infringing on the original products. Are we to take half an obviously failed argument and quote that as the law of the case?

2nd All five experts testified that the parse limitation was met by the broadcom chip.

3rd, where does the prosecution history or marksman hearings say that eh PID filter is the parser? If that was the case then the original infrengement was not infringement and all that E* would need to stop infringing is to reload the old software.


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## jacmyoung

deaincaelo said:


> 1st, I would like to point out that Dr. Rhyne's previous testimony was that the claim limitation being met means that Echostar was not infringing on the original products. Are we to take half an obviously failed argument and quote that as the law of the case?
> 
> 2nd All five experts testified that the parse limitation was met by the broadcom chip.
> 
> 3rd, where does the prosecution history or marksman hearings say that eh PID filter is the parser? If that was the case then the original infrengement was not infringement and all that E* would need to stop infringing is to reload the old software.


The point made by Judge Folsom was, TiVo may use alternative theory (such as the PID theory) to prove infringement, even though it was never used during the trial to prove infringement. During the trial the "media switch theory" was used to prove infringement.

The problem with Judge Folsom's approach is not whether TiVo may use such alternate theory, rather in what proceeding such use of the alternate theory is appropriate. In a summary proceeding such as this contempt proceeding, any alternative theory must not be in dispute by material facts, in order to conclude that the jury, once presented with such new theory, cannot reasonably reach a verdict other than that of an infringement.

We know disputes of material facts surrounding the PID theory are many, such as whether the PID filter actually analyzes audio and video data, or just a 13-bit code, and whether the PID filter temporarily stores such data for later extraction by the source object, or not (In fact TiVo does not even dispute that the PID filter does not temporarily store data, which should have proven a non-infringement in a trial already.). Therefore the contempt proceeding is an inappropriate venue to prove infringement. TiVo and E* should fight it out in that new declaratory judgment lawsuit.


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## deaincaelo

Curtis0620 said:


> Why don't they just pay up already?


They probably can't. One of Tivo's objections is thay don't want a compulsory license. They seem to want to be the only ones who can legally make a DVR (except for Replay/direct- they already Mulligan'ed that)

I very much doubt that they ever made or will accept anything less than non compete from Echostar- basically shutting down the entire Echostar spin-off STB manufacturing co.


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## deaincaelo

Tower Guy said:


> Logic says that lower level descriptive terms are likely to broaden the scope of the patent, giving TiVo even further patent protection.


The claims already fail to differentiate between itself and a betamax player, how much lower can you get?


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## jacmyoung

deaincaelo said:


> They probably can't. One of Tivo's objections is thay don't want a compulsory license. They seem to want to be the only ones who can legally make a DVR (except for Replay/direct- they already Mulligan'ed that) ...


That I disagree. For one thing TiVo must know they cannot be the only one that makes DVRs for the world because very few these days will pay $13/mo. for DVR functions on one box. The natural alternative is a licensing deal, but they also probably do not like the current DirecTV and Comcast deals since the fees are only collected on the TiVo enabled DVRs. The companies can easily stick it to TiVo by delaying the roll out of such services.

The obvious thing to do is a license agreement that covers all DVRs in use, with maybe a lower monthly fee per box, the down side of it is such agreement almost appears an extortion. I have a feeling this might be where the ATT/V* deals had broken down.

Of course if the appeals court reverses the lower court ruling, and/or the PTO upholds the software claims rejection, any opportunity for a licensing deal will be closing.


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## jacmyoung

deaincaelo said:


> The claims already fail to differentiate between itself and a betamax player, how much lower can you get?


I say the claims, *as described by TiVo during the trial and especially during the contempt proceeding*, had already removed any differences between themselves and any MPEG based DVR prior art. They are still higher than a betamax player, just not any higher than any prior ancient, clunky, inefficient and primitive hard drive MPEG based DVR.

That is the price you pay when you try to nail an infringer by broadening your claims too far. If the courts agree with TiVo's broad claim descriptions in order to uphold the infringement ruling, then such broad claim descriptions will be used later to reject the claims by the PTO.

TiVo cannot take back what they said to the courts. As TiVo said so themselves, in their effort to overcome the PTO rejection, they must avoid any conflicting statements between what they said during the litigation, and what they say to the PTO.


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## jacmyoung

Nothing is happening at the CAFC these days until November comes around. I don't mean just the TiVo v. E* case, but the whole damn court.

But today it appears the final touch on the oral argument preparation is complete:

E. Joshua Rosenkranz will argue for E*, and Seth P. Waxman will argue for TiVo.


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## jacmyoung

A patent application submitted by TiVo in 2003, which was recently rejected by the PTO on 6/9/2009, and the reasons behind the rejection appear to have some interesting relevance to the current "ring of buffer" argument.

The rejected TiVo patent application is titled "Digital Video Recorder System". Below is an excerpt of the PTO rejection:



> Applicant's arguments filed 06/20/08 have been fully considered but they are not persuasive.
> 
> &#8230;Therefore, a buffer is necessary in such a HDD in order to accumulate a sufficiently large data that the head can handle together per one access and reduce the overhead&#8230;If anything, O'Connor's method and apparatus can perform even more sophisticated operations such as fast forward and skip operations (&#8230. O'Connor also implements ring buffers (&#8230, reading and writing to a hard disk. Before storing to the hard disk, the video stream is buffered&#8230;


The prior art used to defeat the TiVo's patent application, which was very similar to the "Time Warp" patent, clearly discussed the need for the use of the "ring buffers" to store digital video streams before recording to the HDD. Every DVR has it. Without such buffering the HDD simply cannot record the programming, the HDD heads do not have sufficient bandwidth to do a direct storage.

TiVo knew E* removed the "automatic flow control" between the "transform object" and the "source object". But TiVo is also very familiar with the concept of the "ring buffers". After all they had been arguing with the PTO on this issue for all these years in a separate patent application.

TiVo knew there had to be such "ring buffers" still used in the DVRs to allow the storage of programming onto the HDD, so they easily found them in the E* modified DVRs, then insisted that the operation of such "ring buffers" met their so called "automatic flow control" art, without telling the court that such "ring buffer art" had already been rejected by the PTO in TiVo's another patent application, because it was made obvious by prior art.

The TiVo's "Time Warp" patent has nothing to do with such HDD "ring buffers" art, TiVo knew it because they tried to claim such art in a later application and was rejected by the PTO, yet in an attempt to nail E* for contempt, they withheld such patent procecution history information. TiVo knew they could probably get away with it because it was a different patent application.

In the latest PTO filing, in response to the PTO's rejection of its software claims in this "Time Warp" patent, TiVo stated that they needed more time to respond to the PTO rejection, mainingly to use the "flow control art" and the "secondary considerations" to overcome the rejection. TiVo also knew that the "flow control art" in its "Time Warp" software claims could not be the "ring buffers art" they claimed in the contempt proceeding, I think that is the real reason TiVo wanted to extend their response time to be one day after the 11/2/09 appeals court oral arguement, so that E* cannot use TiVo's 11/03/09 response to the PTO as evidence.

If E* were smart enough, they should have gone through those TiVo patent applications, and use the arguments by TiVo and the PTO to demonstrate how TiVo had managed to, knowingly I might add, manipulate all those different art in order to win Judge Folsom over.


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## Jhon69

I found this article to be interesting.

http://www.engadgethd.com/2009/08/0...-of-tivos-patent-claims-battle-vs-d/#comments


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## jacmyoung

After reading the entire PTO 11/2/08 rejection of the TiVo "Digital Video Recorder System (DVR System)" patent application filed in 2003, I just realized that the same rationale can be used to reject the entire TiVo "Time Warp" patent.

The only difference between the "DVR System" patent application, and the "Time Warp patent" is that the "DVR System" obviously only deals with digital programming broadcast, not analog broadcast.

But all current DVRs, including the E* old infringing DVRs, the modified DVRs, the newer E* DVRs, and all AT&T and Verizon DVRs, all of them are digital-only (at the intake) DVRs. Apparently, no one had paid attention to the PTO's 11/2/08 rejection of the TiVo's 2003 "DVR System" patent application. But if anyone reads through the PTO rejection documents, one could easily reach the conclusion that the TiVo's "Time Warp" patent may be rejected for the precisely same reasons. After the 11/2/08 rejection, it appears TiVo had tried to amend (adjust, replace, remove or add) the claims in order to overcome the rejection, and both times the PTO continued to reject the application. As of now the application stands rejected.

I have the 11/2/08 PTO file in PDF format, only problem is I do not know how to uplink such file here. One can search the PTO site for this file, but not an easy task so I will not try to explain how.


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## dgordo

jacmyoung said:


> I have the 11/2/08 PTO file in PDF format, only problem is I do not know how to uplink such file here. One can search the PTO site for this file, but not an easy task so I will not try to explain how.


If you click on "manage attachments" you should be able to uplink the pdf.


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## jacmyoung

Thank you, did not know such option. I will scan a later rejection made on 6/9/09 too, then post both PTO files.

On my initial count, the PTO had used a total of 7 prior patents to reject the TiVo's "DVR System" patent application filed in 2003. Add the two prior patents used by E* to reject the software claims, we get at least 9 prior patents in the play.

The more interesting part is, when TiVo made their arguments to overcome a rejection, the PTO would simply found some additional prior patents to again reject the claims.

What that tells us is, like some members argued, TiVo was not the first to invent the DVR. There are so many prior art out there for the PTO to choose to reject the claims, if only they try hard enough.


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## jacmyoung

Turns out the PTO has a total of three non-final rejections against TiVo's 2003 "DVR System" patent application:


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## jacmyoung

In one of my earlier posts, I said that the three patents TiVo is suing ATT/Verizon over for infringement, one was the old “Time Warp” patent found in this TiVo v. E* suit, the other two newer ones, one appeared to be an “MRV patent” and the other appeared to disclose a way to help remediate slow remote response between the remote commands and the response of the DVR.

As I become more familiar with the PTO patent application review process, I looked more carefully into this what I used to call “MRV patent” and realized it was not about MRV, rather PIP (picture in picture) art.

First off, both the new patents are “continuation” or “child patents” of the “Time Warp” patent. While I am no patent expert so correct me if I am wrong, my guess is you have to first infringe on the parent patent in order to infringe on the child patent.

As far as this “PIP patent”, initially TiVo constructed the claims to disclose the use of a single DVR with multiple tuners to perform the PIP functions. After several PTO rejections (due to prior art), TiVo modified the claims terms to disclose the use of one DVR and one “subsystem” to perform the PIP functions. This was where I got the impression that it could be an “MRV invention”, because you had a DVR and another client receiver working together.

But further reading of the specification and the claims terms revealed that the TiVo PIP functions are performed by a single user at the same location, therefore it cannot be an MRV invention, only a PIP invention. This PIP invention is advanced in that the single user can perform DVR trickplays simultaneously and individually on both outputs, one from the DVR (for the full TV screen) and one from the “subsystem” (for the PIP).

I think TiVo will have some problem proving infringement by ATT and Verizon, because while they both have similar PIP functions, they only use a single DVR unit, no need of a “subsystem”. Had the PTO granted TiVo the patent as it initially worded, i.e. using a single DVR, it would have been a no brainer that every DVR maker that allows PIP functions by a multi-tuner DVR would have infringed on this TiVo patent, but the PTO only allowed TiVo to disclose the PIP art by the use of the combination of a DVR, and a “subsystem”.


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## jacmyoung

I actually found what appeared to be the rumored TiVo “Multi-Room Viewing (MRV) patent” application. This application was filed on 4/5/01 and “abandoned” on 10/5/09, just a few weeks ago. The latest claims language in this application read very much like an MRV art, in which a system is able to store and playback at least two different MPEG programs separately and simultaneously, trickplays can be performed with the use of “the user control command”, and at the same time trickplays can be performed on another program with the use of “the second user control command”.

The application process had gone through several rejections and amendments. The latest PTO non-final rejection was issued on 2/2/09, and the PTO issued the “Notice of Abandonment” on 10/5/09 due to TiVo’s failure to respond to the 2/2/09 rejection. Below is a copy of the PTO 2/2/09 rejection:


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## jacmyoung

After reading today's ATT's response to TiVo's lawsuit, a few interesting things:

1) ATT claims all of the three TiVo patents are "illegal", which could indicate they would try to invalidate them at the PTO.
2) ATT also claims these patents are invalid, which means they will try to invalidate them in the court.
3) Of course ATT denies all infringement allegations.
4) I guess since Verizon never filed a response, the parties anticipate the two lawsuits will be combined.


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## jacmyoung

ATT's actual wording was those patents were not "duly and legally issued" which points to their intent to have the PTO invalidate the patents through reexaminations.

Hopefully, those prior patents used by E*, and those used by the PTO which I have linked above, will be a good start The PTO recently (from 2008 on) has been using a different set of prior patents to reject several other TiVo patent applications. They certainly will add to ATT's arsenal.

E* has been using only two prior patents, which were used by the PTO back in 2006/2007 during the last reexamination, one of them was only mentioned but not relied on by the PTO in 2007 BTW. The only things needed from ATT are the same kind of balls Charlie has to take it all the way

By Friday we should be able to find out what TiVo is going to say to Judge Folsom regarding the sanction issues, specifically the attorney fees and cost.


----------



## jacmyoung

Below is some interesting info I think many of the readers may like to know.

I had always wondered what exactly were the ReplayTV patented DVR trickplay functions like. Also since DirecTV had bought ReplayTV on the cheap, has DirecTV continued to enhance the ReplayTV patent portfolio?

Below is a copy of the ReplayTV inventor's latest argument doc in order to overcome the PTO's rejection. After such argument the PTO granted the patent in early 2009. This patent was filed in 2000, and is the continuation of the original ReplayTV patent filed in 98 and granted in 01. The original ReplayTV patent was filed a few months after the TiVo's "Time Warping" patent application, and also granted a few months after the TiVo's "Time Warping" patent was granted.

The latest ReplayTV patent argument doc below explains what the original ReplayTV patent was all about. Basically the ReplayTV DVR patent disclosed an invention in which the DVR receives MPEG data (or if analog converts to MPEG first), when the MPEG data are stored onto the hard disk, a special encoder would place "access points" onto the data stream in certain interval, say hypothetically every 1/10 of a second. Later during playback, the user presses the 30-second skip forward, the DVR will simply display the data from the first point, jumping to the 300th point. And if the user wants to skip back 5 seconds, the DVR will just jump from the existing location 50th point back.

It is very clear the ReplayTV trickplay gig is very different from the TiVo trickplay gig. A TiVo's DVR does nothing to the MPEG data when it records the data on the hard drive, instead it uses a "media switch" to "parse" out the time stamps already exist in the MEPG stream, store such time stamp info along with the raw MPEG stream onto the hard drive. During trickplay it uses the time stamp index to find the correct location in the raw MPEG stream to skip to.

The new E* DVR gig on the other hand does nothing to the MPEG data when it records the stream onto the hard drive. Only after the user issues a trickplay command, does the DVR begin to search the correct location in the raw MPEG stream to skip to, to do so it guesses where the location is, if the first time the location is not guessed correctly, it starts over from the mid point between the start point to the guessed point, then guesses the second time, if the second guessed point is still not correct, it then again pick the mid point between the two guessed points to do the third guess, therefore eventually narrows down to the correct location. Of course such guess process is done by the CPU in very short time, not noticeable to the users, but nevertheless requires high CPU processing power. Which is why on some of the older E* DVRs the users reported artifacts during the trickplay.

My understanding of those processes may not be totally on spot, but I hope the above information explains why there can be many different DVR trickplay inventions.

The document below demonstrates that DirecTV might still be working on adding to the ReplayTV patent suit:


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## jacmyoung

Why am I not surprised TiVo requested another extension to file a request regarding the attorney fees and cost? Now my question is if the filing will be pushed to after the appeals court hearing, will the sanction issues ever be considered by the appeals court? If not, then what was the point of addressing the sanction issues “well in advance of the November hearing,” as Judge Folsom had hoped for?


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## dfd

jacmyoung said:


> Why am I not surprised TiVo requested another extension to file a request regarding the attorney fees and cost? Now my question is if the filing will be pushed to after the appeals court hearing, will the sanction issues ever be considered by the appeals court? If not, then what was the point of addressing the sanction issues "well in advance of the November hearing," as Judge Folsom had hoped for?


Reads a lot like a JOINT request doesn't it?

Read the document you attached. It was agreed to by both parties yet you make it appear as if it was a Tivo request only.


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## jacmyoung

dfd said:


> Reads a lot like a JOINT request doesn't it?
> 
> Read the document you attached. It was agreed to by both parties yet you make it appear as if it was a Tivo request only.


Yes this is the third such "joint stipulations" in delay of the sanction issue filing, each time in the past when Judge Folsom granted the motions he called them "TiVo's requests", unopposed by E*. All the requests have been submitted by TiVo.

BTW, if Judge Folsom grants this delay, it means the sanction issues will not be finalized before the 11/2 appeals court hearing, if so the sanction issues cannot be addressed on appeal, only the contempt and infringement issues. Or to put it this way, TiVo by delaying the sanction issue filing has pretty much ensured the sanction issue, if even legit, will have to be addressed in a later appeal, if there will be one.

Any lawyers?


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## jacmyoung

Not surprisingly Judge Folsom granted the TiVo request.

dfd you were correct they were all supposed to be "joint stipulations", though as I said they were all filed by TiVo. I initially questioned why the court continued to call them each "request/stipulation...filed by TiVo" and continue to wonder the same. Judge Folsom does not seem to view them as joint stipulations.

So by court order, we should not hear any more sanction issues until after the 11/2 hearing. That certainly removes some pressure (if there were any) off E*. It appears both parties are preparing for the hearing and will assess their chances after the hearing and go from there.

There can still be surprises though, never say never. As I pointed out in an earlier post, TiVo can still try to coax Charlie to settle, if TiVo gives all the reasons for Charlie to settle, some of the points I made were:

1) Reimburse all or some of the E* costs during the contempt proceedings;
2) Withdraw the case in exchange of E* withdrawing the reexamination (if possible);
3) Cross-liscense or work together on the new ad technologies under a co-branded DVR platform.

While TiVo clearly is on the cutting edge of the new ad technologies, E* is noted to be "the other company" that actively collects and uses sub viewing data, and E* holds the Sling patent which is very critical in combining TV with Internet.


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## dgordo

Speculation mounts on TiVo, DISH settlement
http://www.reuters.com/article/technology-media-telco-SP/idUSN2350278120091023


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## jacmyoung

dgordo said:


> Speculation mounts on TiVo, DISH settlement
> http://www.reuters.com/article/technology-media-telco-SP/idUSN2350278120091023


Hopefully such pre-hearing settlement speculation was based on a leak, not based on the granting of the delay of the sanction issues to 11/6, which is the only known news.

Since this court news can only logically lead to the conclusion that a settlement becomes less likely, my guess is there was some leak that triggered the market movement.


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## jacmyoung

I have long ago said I knew little nor care much about the stock market, only this or some other related court cases, so don't bash me clueless for making the following comments

First let's agree any potential news of a "settlement" between TiVo and E* will lift TiVo's price, not so much DISH's price.

The question is by how much and based on what detail. If the above report is accurate, most of the TiVo trades today were institutional trades. Those are professionals and if we assume they got some leaked info, they should at least know some detail of the leak.

If the settlement involves a wholesale licensing deal, it would have meant a huge revenue boost for TiVo for a long time to come, not only from E*, but potentially from all other DVR providers. Such revenue boost should propel the TiVo stock price into the 20's easily.

But the stock price rose from above $11 to above $12 only, which points to a settlement that has no guaranteed revenue, only that the lawsuit is finally over and there could finally be some cooperation between TiVo and E*, instead of fighting each other.

If the above is close, then who has won the court case?


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## Jhon69

jacmyoung said:


> Hopefully such pre-hearing settlement speculation was based on a leak, not based on the granting of the delay of the sanction issues to 11/6, which is the only known news.
> 
> Since this court news can only logically lead to the conclusion that a settlement becomes less likely, my guess is there was some leak that triggered the market movement.


Looks like Tivo's CEO Tom Rogers may have had some stock to unload.

Well I have now operated the DirecTivo HR10-250,the R15 and R22.Now I am operating a Dish 625 and in my opinion the Dish 625 has the better technology so the reasons for this lawsuit are becoming more and more clearer in my opinion.When a company comes out with a better technology(Dish/Echostar).The other company that lives and dies by the DVR(Tivo) has to file a lawsuit to try and survive or be assimilated and go out of business.It seems that simple to me,I vote assimilation.


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## jacmyoung

Jhon69 said:


> Looks like Tivo's CEO Tom Rogers may have has some stock to unload.


I don't know about Rogers but I did read somewhere that the day after Judge Folsom ruled the contempt, some TiVo inventors (not investors) unloaded good numbers of TiVo stocks and made some handsome profit. Nothing wrong with that though.


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## dgordo

Tivo stock is up 20% this week and 25% for the month. It is clear that there is a rumor our there.


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## jacmyoung

dgordo said:


> Tivo stock is up 20% this week and 25% for the month. It is clear that there is a rumor our there.


Good point!

I did a quick look at the Yahoo charts, since 6/09 after Judge Folsom's contempt ruling, the TiVo stock has been up by 17%, so are NASDAQ and DISH

Being clueless and just throwing some money each month into an index fund did not seem so bad now Of course as soon as I brag about it, TiVo will shoot up another 50% and NASDAQ will drop 20%. I am reminded why I should just focus on the court case


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## jacmyoung

Let's see what should constitute a settlement that may reflect a TiVo's win in this contempt fight. At the bare minimum, E* must pay TiVo a $330M one time payment, because this was the *minimum* E* admitted they would owe TiVo if they had lost on appeal. And of course the minimum $1.25 per DVR per month for 6 million DVRs as long as they continue to infringe, starting from 6/2/09, if the appeals court rules that they still infringe of course. Again the key word is "minimum." Anything short of the above will not be a TiVo's total win.

As I said earlier, the above settlement can easily propel TiVo stock into the 20's. If the lastest stock movement is an accurate reflection of a rumored settlement, TiVo did not win this court case. And a very important point to make is, TiVo cannot blame the judge for not helping them this time, because Judge Folsom not only awarded TiVo the $206M enhanced damages (more than the minimum E* had admitted), but any attorney fees and costs which as I heard would easily be over $150M, those will be on top of the $330M in a hypothetical *minimum* TiVo's "winning settlement".

The fact that TiVo could not get this additional sanction money is because TiVo has delayed the sanction filings three times, despite the fact Judge Folsom told them they could just tell him how much and he would likely have just awarded TiVo the money back in September. But as of now, the sanction money cannot be addressed by the appeals court therefore naturally cannot be a bargain chip, or at least TiVo had weakened its bargaining position when they delayed the additional sanction issues, by removing them from the current court proceeding.

So if there is such a settlement, no matter how undesireable it is to TiVo, TiVo cannot blame the court for letting them down. The question then is, why did TiVo do that?

Because TiVo figured they could not win, so they settled on a much less deal with E*, likely no money paid to TiVo by E*, either one time or on-going. This statement is of course based on the assumption that there is in fact such settlement in the making and the latest TiVo's stock movement is the accurate reflection of how the institutional investors valued such settlement.


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## Jhon69

jacmyoung said:


> I don't know about Rogers but I did read somewhere that the day after Judge Folsom ruled the contempt, some TiVo inventors (not investors) unloaded good numbers of TiVo stocks and made some handsome profit. Nothing wrong with that though.


Think maybe they know something we don't?.


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## scooper

Jhon69 said:


> Think maybe they know something we don't?.


What ? That they didn't really "invent" something and now their plan is about to bomb ? Or maybe come to fruition ?


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## Jhon69

scooper said:


> What ? That they didn't really "invent" something and now their plan is about to bomb ? Or maybe come to fruition ?


Maybe "Let's get out while the getting is good"!.


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## jacmyoung

I just can't wait to listen to the oral argument clips.

I have so far listened to two oral arguments so can't say I know how they run the show, but my impression was the appeals court judges don't fool around, they appeared to have already formed their opinions which makes sense, and their questions were pointed, intended to allow the attorneys to have the final chance to respond to the supposed ruling.

For example during the last TiVo v. E* oral argument, two questions really stood out at me, partly because I already knew the final appeals court ruling when I listened to the audio clip a month ago.

One question was, if the hardware claim verdicts were reversed but the software claims still stood, would the damages and injunction stay the same? TiVo's attorney of course said yes, and E*'s attorney did not dispute it.

The other question the appeals court grilled TiVo's attorney about was, since the hardware claims required separation of the audio and video components, later also required they be assembled into one stream for display, and E* DVRs did not separate, nor assemble, how could he explain why E* infringed on the hardware claims. The TiVo attorney said "logical separation" was all that needed. Sounds familiar?

Of course we knew the outcome already, the appeals court overturned the hardware claim verdicts, but upheld the software claim verdicts, the damages and the injunction.

TiVo by giving up the sanction issues, delaying it to 11/6, allowed both parties to assess their chances after the 11/2 oral argument. The question though as I stated earlier, is why didn't TiVo let Judge Folsom put another hammer down on E* with the attorney fees and costs in September, and more importantly by doing so would have finalized the sanction issue and included it in the appeal so once the appeals court affirmed all the Judge Folsom's rulings, TiVo could go after all the money, instead now the sanction issue will have to wait for another appeal, if there will be one.

Let me repeat why TiVo delayed the sanction issue, because it is very likely E* had made an argument to the appeals court that the court should award E* its attorney fees and costs instead because TiVo knowingly disavowed key elements of the invention in order to get a contempt ruling from Judge Folsom. My basis was that so called "supplemental authority" E* filed with the appeals court, after that, TiVo delayed the sanction filing three times to avoid the issue all together.

The award of the attorney fees and costs (both TiVo and E* have their costs to be on the table BTW) was already "in TiVo's pocket", all TiVo had to to was to have Judge Folsom deposit the money in the bank for TiVo, but TiVo decided not to do it, hard to believe? Not if you consider the possibility the appeals court might decide to have the money re-deposited in E*'s account.

Don't want that to happen


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## jacmyoung

Below is an interesting quote from an investor blog describing the Friday TiVo stock movement. According to the blogger, the CNBC stock reporter reported the unusual high calls at noon time, after a large $12.50 call contract was placed at 10:20 am earlier. The blogger speculated that morning call contract was bought by the CNBC reporter's account and sold later that afternoon when the stock went above $12.50, for a quick profit. Of course the stock jump in the afternoon was due to that CNBC reporter's comment at noon that a TiVo and E* settlement would likely be reported over the weekend.

A quick and legal way to make a profit if you are an investor and also controls the media outlet At least that is what I think the blogger was saying:



> OMG, it was Jon Najarian (link) 24-Oct-09 02:46 am Link: http://www.cnbc.com/id/33449358/site/140...
> Confirmed. I should've guessed my pal Najarian was the rumor monger on Power Lunch that drove the herd of wildebeest into the river on Friday. Damn, I would've shorted at $12.60 had I been at my desk. These Najarian bros are the best at what they do, often picking stocks on a break-out high with "potential" event driving forces on the calendar (IE November 2nd TIVO hearing) and it's almost a sure bet that the 3000 12.50 calls bought at 10:20am for 50 cents was from their account, and probably sold at the close for 98 cents. How can you possibly lose if you're a Najarian and have CNBC as a media outlet to pitch the options that you just bought. This is better than insider trading 'cause it's legal and guaranteed 100% profitable.
> Make no mistake. Look at the huge spike in options and common: 12:49pm, and the traders jumped in throughout the rest of the day.
> Well, now my confidence level is 100% that there will be no news on Monday, good for a quick 4000 shares short at the market on open. Najarian stock picks are good for a one-day stint, and I doubt those that bought after the spike between $11.75 and $12.67 are long term investors with the patience to wait for an uncertain court outcome due out 6 trading days later.
> GLTA long and short


Then someone relied:



> I clicked on the Half-Time video link at the bottom of the page and listened to the Najarian interview. It sounded staged with Melissa Lee. After he tells folks to look at TIVO options, he tells viewers that he likes to see unusual options activity going into a weekend, as it "could" be a harbinger of good news on Monday. Then when Melissa Lee asks him whether there's a deal in play, he goes on to say that "it "could" be a deal, it "could" be a settlement, I don't know any insight beyond that".
> It "could", and probably is nothing but false hype and hope.


Of course we "could" also wake up on Monday seeing Charlie and Rogers shaking hands too, anything is possible.

http://messages.finance.yahoo.com/S...m&bn=18009&tid=429082&mid=429082&tof=19&off=1


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## scooper

well - any big Dish / Tivo announcements today ? (ha, ha, ha)....


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## jacmyoung

scooper said:


> well - any big Dish / Tivo announcements today ? (ha, ha, ha)....


Still one week left for many to hold one's breath.


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## jacmyoung

E* just informed Judge Folsom today they will begin the initial download of their second round of new design for beta test. The message seems to be, three words: settlement my arss

Seriously, I don't think this completely eliminates the likelihood of a settlement, but diminishes it a whole lot.


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## scooper

jacmyoung said:


> E* just informed Judge Folsom today they will begin the initial download of their second round of new design for beta test. The message seems to be, three words: settlement my arss


As anybody here would have said....


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## Curtis0620

jacmyoung said:


> E* just informed Judge Folsom today they will begin the initial download of their second round of new design for beta test. The message seems to be, three words: settlement my arss
> 
> Seriously, I don't think this completely eliminates the likelihood of a settlement, but diminishes it a whole lot.


Looks like they admit that they do still infringe.

Why would you modify software that doesn't?


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## scooper

Curtis0620 said:


> Looks like they admit that they do still infringe.
> 
> Why would you modify software that doesn't?


It's not admitting anything - Judge Folsom ruled that HE thought they still infringed.


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## jacmyoung

Curtis0620 said:


> Looks like they admit that they do still infringe.
> 
> Why would you modify software that doesn't?


It is called "on alternative" plan, or plan B. Not that they admit infringement, but if due to TiVo's brilliant use of different infringement theory they manage to also fool the appeals court (very unlikely), E* has several other options.

Now that we know E* is not bluffing when it comes to alternative design around, let's consider this scenario.

TiVo has already disavowed the start code detection and indexing as the invention claimed by the software claims. E* can now safely bring back this technology without infringement, therefore return to the more efficient method.

The only thing they need to do is to disable the use of the so called "ring of buffers". The "ring of buffers" is used when the data are stored onto the hard drive. Interestingly according to TiVo such "ring of buffers" is not necessary.

If anyone had read one of the arguments TiVo filed to the PTO I have posted earlier, in trying to overcome the PTO's rejection of their "DVR System" patent application, TiVo said the "ring of buffers" was not needed, when the PTO examiner argued it was needed so the hard drive could keep up with the very large amount of data to be stored as the MPEG video data size could be very big.

TiVo's point was, the newer hard drives use multiple heads and have plenty of bandwidth to accommodate such task. Only the very first generation of single headed primitive hard drives might have the need of the buffers.

So now, "on the alternative" that E* accepts TiVo's theory (not that they agree with TiVo), still manages to avoid infringement based on such TiVo's alternative theory.

What is TiVo going to do? Come up with a new theory? Too late.


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## scooper

So now Tivo is claiming to be hard drive engineers as well ?

So according to your theory - if Echostar removes the "ring of buffers" from their DVR software, (thereby relying completely on the harddrive's memory buffer) - this will get them out of the infringement trap. What's preventing Tivo from claiming that said harddrive memory isn't what they meant ? 

Hence my comment that "now Tivo is claiming to be hard drive engineers as well ?" 

You might be able to shove the data to the harddrive interface fast enough (without buffering), but you still have to get it to the disk surface. Our bottleneck here is not the Harddrive interface (motherboard to harddrive) , but rather the speed at which the data can be wrote to the disc. Even parallel ATA is fast enough on the interface, nevermind the Serial ATA interface.


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## jacmyoung

scooper said:


> So now Tivo is claiming to be hard drive engineers as well ?


TiVo can be all it wants to be in terms of its understanding of the technologies and inventions, as long as E*, the "person having ordinary skill in the art" (PHOSITA, I just learned) can glean from their disclosures and work around them, that is all what our patent system is designed for after all.


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## scooper

jacmyoung said:


> TiVo can be all it wants to be in terms of its understanding of the technologies and inventions, as long as E*, the "person having ordinary skill in the art" (PHOSITA, I just learned) can glean from their disclosures and work around them, that is all what our patent system is designed for after all.


I want to see this demonstrated - reads / writes to a physical harddrive without using any memory  And I want it demonstrated by Tivo - the patent holder.


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## jacmyoung

scooper said:


> ...What's preventing Tivo from claiming that said harddrive memory isn't what they meant ? ...


Exactly why I said TiVo will have to again come up with another alternative theory, except they cannot do so at this time, everything is already said and done as far as this case is concerned.

If TiVo is even allowed to produce such alternative theory, say in that new lawsuit, E* can easily prove them wrong. Because TiVo's "automatic flow control" has absolutely nothing to do with the inner working of a hard drive.


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## jacmyoung

scooper said:


> I want to see this demonstrated - reads / writes to a physical harddrive without using any memory  And I want it demonstrated by Tivo - the patent holder.


Hard drives do come with memory embedded, don't they? I usually see two main specs on a hard drive, RPM and RAM memory. So the memory on the hard drive is part of the hardware design, nothing to do with how the DVR software works, as long as the software does not touch that "ring of buffers".

TiVo may be able to show that an average HD is indeed fast enough to store several MPEG data streams with the help of the HD on-board RAM, so what? Even Judge Folsom will laugh at them if this can be used as their infringement theory.


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## jacmyoung

Based on the latest 10/29/09 E* letter to Judge Folsom, the parties are still arguing about some “pre-judgment supplemental damages” back in 2006. So much for the settlement rumor.


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## jacmyoung

Here is another one of my leisure speculations. Consider the timeline and news below:

On 10/23/09, a CNBC financial reporter said he thought a settlement could be announced the next Monday, TiVo stock went up nearly 10% that Friday.

On 10/26/09, no settlement announcement, TiVo Stock went down over 7%.

On 10/27/09, TiVo got a copy of the DISH letter to Judge Folsom informing a design around beta test, the same day TiVo filed a letter to Judge Folsom, arguing for the 3rd time they should have received some additional damages for a 5 months period in 2006. The TiVo’s letter however was not posted by the court so it was not known to the public. Nevertheless DISH’s letter of the beta test was posted by the court after the business hours, signaling a settlement was unlikely this week, before the next Monday’s appeals court hearing.

On 10/28/09, TiVo stock dropped an additional over 5.5%.

On 10/29/09, DISH responded to the TiVo’s 10/27/09 letter to Judge Folsom, again urging the judge to disregard that damages issue, for the 3rd time. TiVo stock returned to the pre-Friday rumor conditions.

What tomorrow may bring is anyone’s guess. I am betting that CNBC reporter will keep his mouth shut this time.

I wonder though why the TiVo’s 10/27/09 letter to the judge was not posted by the court? Did TiVo do something to cause it not being posted? If so, maybe TiVo did not want to send out the signal that there was no settlement, and DISH was the opposite, having no problem sending out that signal.


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## jacmyoung

Is it safe to say the pre-hearing settlement rumor thing is over if you ask a TiVo investor who bought it at the high last Friday and saw his investment down 15% a week later?

If so, I'd like to report that actually there is sign an 11th-hour deal maybe in the making.




















Seriously, what I wanted to report was today E* mailed a letter to the appeals court panel, correcting a mistake in one citation in their response brief. BTW TiVo did a similar thing three days ago.

Hopefully by next Monday night I will be able to talk about my impression of the hearing, one way or the other, after listening to the audio. I will not be able to comment on the judges' facial expressions however. We probably will need one of TiVo's future patents before that can happen.


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## Curtis52

Audio of the oral hearing is available.

http://oralarguments.cafc.uscourts.gov/mp3/2009-1374.mp3


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## dgordo

Curtis52 said:


> Audio of the oral hearing is available.
> 
> http://oralarguments.cafc.uscourts.gov/mp3/2009-1374.mp3


Any thoughts Curtis?


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## Curtis52

dgordo said:


> Any thoughts Curtis?


I think Judge Rader made it clear that only infringement can be enjoined. Dish made a good case that they read the injunction with that in mind. Judge Rader didn't appear to be very familiar with the technical nuances at issue.


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## jacmyoung

Curtis52 said:


> I think Judge Rader made it clear that only infringement can be enjoined. Dish made a good case that they read the injunction with that in mind. Judge Rader didn't appear to be very familiar with the technical nuances at issue.


Let me expand a little on your thought.

If you notice the only questions he asked the E* attorney were why did you not appeal last time? We could have at that time with "a stroke of our pen" to knock those unclear terms out.

What that means is, there is no dispute that if we take TiVo's position as far as what the injunction should mean, then the injunction would be flawed. Therefore the only question is then why E* did not appeal last time.

But the point is, E* did not think the injunction was flawed, because E* interpreted it differently than TiVo, therefore why should E* have appealed?

On the other hand, notice all the questions he asked the TiVo's attorney about had to do with the issue of infringement, how could PID be the parser when it only parsed the header, and when the audio and video data were encrypted. To that the TiVo's attorney said but not all data were encrypted. Yet the judge continued to point out that the audio and video data were encrypted.

What that means is, he understood if the audio and video data are encrypted when they pass through the PID filter, the PID filter simply cannot analyze them. And the TiVo attorney recognized that, which was why he kept saying but some of the data were not encrypted. Of course such response cannot be convincing because at a minimum, you have admitted the PID filter can only meet the claim terms on some of the data but not the other data. It does not make any sense. Taking such position, all E* has to do is to encrypt all the audio and video data, simple as that. About 95% of the data are encrypted anyway so what is a big deal to encrypt another 5%?

The fact the only questions the judge asked TiVo, they all had to do with infringement, they naturally rule out a violation on the face, because a violation on the face has nothing to do with infringement, and the judge asked TiVo nothing other than the questions of infringement.

Lastly, and probably the most important thing that can be easily over looked is the sanction issue. If you notice the judges asked nothing about the sanction issue. If they had inclined to uphold Judge Folsom's ruling, the sanction issue must be sorted out. For example how much is the right amount, TiVo wanted $1B or at least $650M, E* said maximum of $368M but more like $168M.

Judge Folsom ruled $206M. The appeals court cannot make their decision on the sanction issue without asking parties' views on such issue. But since they did not, it likely means in their minds the issue is moot, need not clarified, no need to even allow the parties to have a chance to state their positions on the issue, and the only reason such issue is moot is of course if the Judge Folsom's ruling is reversed.


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## scooper

dgordo said:


> Any thoughts Curtis?


Nothing new - just about everything said there had been said here (including Tivo trying to expand the PID filter function).


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## jacmyoung

scooper said:


> ... - just about everything said there had been said here ...


As I pointed out, the sanction issue was fought out rigorously there, but not a single word of it was mentioned here.

Correction, the "automatic flow control" issue was fought out rigorously there, but not a single word of it was mentioned here either, I almost missed this one.

What that means is, this issue is not even necessary. It appears when E* removed start code detection and indexing, that was enough already. Had the judges were somewhat convinced the PID filter still met the claim terms, they would have gone one step further to ask parties' positions on the flow control issue, because that was the second item E* removed. To prove infringement, they must be convinced that not only the PID filter meets the terms, but E* also did not really remove the flow control feature.

The judges did not even think they needed to go there.


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## scooper

jacmyoung said:


> As I pointed out, the sanction issue was fought out rigorously there, but not a single word of it was mentioned here.
> 
> Correction, the "automatic flow control" issue was fought out rigorously there, but not a single word of it was mentioned here either, I almost missed this one.
> 
> What that means is, this issue is not even necessary. It appears when E* removed start code detection and indexing, that was enough already. Had the judges were somewhat convinced the PID filter still met the claim terms, they would have gone one step further to ask parties' positions on the flow control issue, because that was the second item E* removed. To prove infringement, they must be convinced that not only the PID filter meets the terms, but E* also did not really remove the flow control feature.
> 
> The judges did not even think they needed to go there.


So - do you see this as being a reversal of Judge Folsom's rulings ?


----------



## jacmyoung

scooper said:


> So - do you see this as being a reversal of Judge Folsom's rulings ?


Of course not. I am only pointing out what was said and not said there might point to what the direction or mindset those three judges had.

One other thing I want to point out is, Curtis mentioned he did not think Judge Rader had enough technical understanding of the PID issue.

I disagree, but let's say Curtis is right, the PID issue is too complicated for the judge to rule in a summary proceeding, that is all the reason to sort it out in a new trial. Keep in mind, in a summary proceeding, the issues must be so clear to the point that the judges must not have any doubt in order to rule in favor of the movant. Short of that, a summary proceeding is inappropriate.


----------



## peak_reception

Jac, you act as though this 30 minute hearing before the CAFC panel was some masterpiece of judicial preparation which laid down strong markers for how they will rule. And not just in what was said, but in what was not said also. If only it were true.... 

First of all, the whole thing lasted about 30 minutes. Hardly enough time to explore the merits of either side. 

Secondly, the judge (I believe it was just the one judge who asked questions) followed the lawyers and challenged them as they went. So it was reactive challenging not indicative of a judicial agenda. 

Thirdly, while it's true that the one Judge who asked questions did appear to want to cut to the heart of things, as when he opened his challenge to the TIVO lawyer about infringement, his knowledge of the case was exposed as badly lacking. He barked out a challenge about the "PDI" filter only parsing headers, not audio and video data. At first I figured a slip of the tongue. Then he did it again with exquisite emphasis; "PDI" :lol: If someone here on any of the 1000s of posts on this case had pretended to contest a technical discussion of this case while repeating "PDI" this and "PDI" that, they would've been laughed away with their tail between their legs. It really shows an appalling lack of knowledge of the case before him. 

And that wasn't the only example. The same Judge also barked out a challenge as follows: "How does that require a hardware alteration?!" in response to what the TiVo lawyer was trying to explain about why they asked to have DVR functionality shut down. So then the TiVo lawyer had to really hold the Judge's hand after that and the 1/2 hour was over in no time. A big waste of time made even bigger by the ignorance shown by the CAFC Judge who clearly didn't know what he was talking about. 

My God if this is the level of preparation and consideration both parties can expect at the CAFC in this case then heaven help everyone because the outcome is a crap shoot. Roll the dice and hope for the best.


----------



## david_jr

Crap shoot or no, a lot of us would just like to see a resolution even if it is bad for us (owners of the boxes this affects). Anyone care to Ballpark on when a decision might be expected?


----------



## jacmyoung

peak_reception said:


> Jac, you act as though this 30 minute hearing before the CAFC panel was some masterpiece of judicial preparation which laid down strong markers for how they will rule. And not just in what was said, but in what was not said also. If only it were true....
> 
> First of all, the whole thing lasted about 30 minutes. Hardly enough time to explore the merits of either side.


First off, if the judges are inclined to rule against one party on one issue, that is where they will have to direct the questions to that party to give it the opportunity to respond to such supposed outcome, that is what the oral argument is all about. I don't know how many of such oral arguments you have listened to, I did three of them so far, all showed the same pattern.

The reason is simple, if you are inclined to rule against one party but fails to give it a chance to respond in the oral argument, there is all the reason for the losing party to file for a panel rehearing or rehearing en banc.

Say for example, if the judges decide the PID filter still infringes on step one of the claims, after considering the positions argued by both parties during the hearing, and then simply adopt Judge Folsom's theory on the "flow control" issue, and therefore rule against E*, E* can argue for a rehearing on the ground that the panel never give E* the opportunity to respond to the "flow control" issue. Keep in mind the appeals court judges are supposed to review parties arguments, not Judge Folsom's arguments, to make their decisions. Otherwise why have an appeal in the first place? If the appeals court only needs to adopt the lower court opinion without seeking parties' responses during the hearing.



> Secondly, the judge (I believe it was just the one judge who asked questions) followed the lawyers and challenged them as they went. So it was reactive challenging not indicative of a judicial agenda.


Absolutely not so. It is a clear pattern for the lead judge to dictate his questions in an oral argument. Judge Rader never let either one of them more than 5 seconds of continued statements, he interrupted both of them repeatedly, asking his questions, not following the attorney's train of thoughts. This kind of questioning is consistent in all the oral arguments I have heard so far. The reason is same as you said, they do not have time to listen to those attorneys go on and on, they need their own questions answered.



> Thirdly, while it's true that the one Judge who asked questions did appear to want to cut to the heart of things, as when he opened his challenge to the TIVO lawyer about infringement, his knowledge of the case was exposed as badly lacking. He barked out a challenge about the "PDI" filter only analyzing headers, not audio and video data. At first I figured a slip of the tongue. Then he did it again with exquisite emphasis; "PDI" :lol: If someone here on any of the 1000s of posts on this case had pretended to contest a technical discussion of this case while repeating "PDI" this and "PDI" that, they would've been laughed away with their tail between their legs. It really shows an appalling lack of knowledge of the case before him.
> 
> And that wasn't the only example. The same Judge also barked out a challenge as follows: "How does that require a hardware alteration?!" in response to what the TiVo lawyer was trying to explain about why they asked to have DVR functionality shut down. So then the TiVo lawyer had to really hold the Judge's hand after that and the 1/2 hour was over in no time. A big waste of time made even bigger by the ignorance shown by the CAFC Judge who clearly didn't know what he was talking about.
> 
> My God if this is the level of preparation and consideration both parties can expect at the CAFC in this case then heaven help everyone because the outcome is a crap shoot. Roll the dice and hope for the best.


The rest of your points do not help your case at all. Judge Rader is well regarded in the patent field, he has the final say. If your contention is that he is clueless, then that is just too bad, because no one will replace him in this case.

BTW, please do not argue that Judge Folsom knows better than Judge Rader. Judge Folsom did not even respond to the point of "audio and video data" at all. He did not even realized there is this thing called "audio and video data" which as I have pointed out before, a term repeatedly mentioned in the claims three and one half times. How can you possibly over look a term that is mentioned so many times in the claims as if it did not even exist?

At least Judge Rader is tackling this "audio and video data" issue. TiVo now wants to minimize this term, saying it is just mixed in this massive MPEG data stream, no particular significance. Really? If so why did TiVo see the need to specifically mention this term three and half times throughout the claims?


----------



## peak_reception

jacmyoung said:


> First off, if the judges are inclined to rule against one party on one issue, that is where they will have to direct the questions to that party to give it the opportunity to respond to such supposed outcome, that is what the oral argument is all about. I don't know how many of such oral arguments you have listened to, I did three of them so far, all showed the same pattern.
> 
> The reason is simple, if you are inclined to rule against one party but fails to give it a chance to respond in the oral argument, there is all the reason for the losing party to file for a panel rehearing or rehearing en banc.


 If true, all the more appalling for the Judge's lack of preparation, knowledge, and/or clumsy questioning.



> Say for example, if the judges decide the PID filter still infringes on step one of the claims, after considering the positions argued by both parties during the hearing, and then simply adopt Judge Folsom's theory on the "flow control" issue, and therefore rule against E*, E* can argue for a rehearing on the ground that the panel never give E* the opportunity to respond to the "flow control" issue. Keep in mind the appeals court judges are supposed to review parties arguments, not Judge Folsom's arguments, to make their decisions. Otherwise why have an appeal in the first place? If the appeals court only needs to adopt the lower court opinion without seeking parties' responses during the hearing.


 Appalling or appealing then (as in appeal for a rehearing), take your pick.



> Absolutely not so. It is a clear pattern for the lead judge to dictate his questions in an oral argument. Judge Rader never let either one of them more than 5 seconds of continued statements, he interrupted both of them repeatedly, asking his questions, not following the attorney's train of thoughts. This kind of questioning is consistent in all the oral arguments I have heard so far. The reason is same as you said, they do not have time to listen to those attorneys go on and on, they need their own questions answered.


 If true, it's a screwy format. If true, the lead judge (or all judges) should simply take command from start to finish and ask the pointed questions which are most relevant to the issues needing most clarification or defense.

What you say about neither attorney having more than 5 seconds to expound on his points is just flat wrong. The EchoDish lawyer went on for over a minute twice and over two minutes twice, uninterrupted. He then had a 5 minute speech at the end, uninterrupted. The TiVo lawyer was interrupted with much more frequently and abruptly but even he got a minute in here and there.

According to what you say the oral hearing is for, this could be bad news for EchoDish. If I were a tea leaf reader (like you jac ) it could mean that the judges were giving EchoDish every opportunity to state their case and defend their positions so that there wouldn't be any cause at all to request a rehearing based on what happened in the first one. I personally don't believe that's the case but it's as good as any other theory at this point.



> The rest of your points do not help your case at all. Judge Rader is well regarded in the patent field, he has the final say. If your contention is that he is clueless, then that is just too bad, because no one will replace him in this case.


 The Judge may be well-regarded in the field but it sure didn't show yesterday. Yes, he sounded pretty clueless in the hearing. Hopefully he will get to work and read the case history with care before it's time to decide. Both parties deserve that.



> BTW, please do not argue that Judge Folsom knows better than Judge Rader.


 He sure does about this case at this time.

Good night.


----------



## jacmyoung

peak_reception said:


> If true, all the more appalling for the Judge's lack of preparation, knowledge, and/or clumsy questioning.


I must agree Judge Rader did sound rusty today, but that could just be that he was really annoyed by the fact he is even asked to sit there to help out the two little children who could have resolved the issues between themselves

When I listened to the i4i v. Microsoft argument, Judge Newman sounded much more forceful, she grinded both attorneys into overtime, forcing them to both exceed their allowed time and had to wrap up their arguments prematurely.



> ...What you say about neither attorney having more than 5 seconds to expound on his points is just flat wrong. The EchoDish lawyer went on for over a minute twice and over two minutes twice, uninterrupted. He then had a 5 minute speech at the end, uninterrupted. The TiVo lawyer was interrupted with much more frequency and abruptness but even he got a minute in here and there. According to what you say the oral hearing is for, this could be bad news for EchoDish. If I were a tea leaf reader (like you jac ) it could mean that the judges were giving EchoDish every opportunity to state their case and defend their positions so that there wouldn't be any cause at all to request a rehearing based on what happened in the first one.


It is the opposite if you read me correctly before, when the judge has something in mind that is adverse to one party, so would he grind that party, mainly to give that party the opportunity to respond. If he has nothing to say during one party's talking time, it is a sign that party has little need to respond to any potentially adverse opinions against it. But that party has its 15 or 30 minutes time, you cannot tell him just to stop talking so the judge can have more time to grind the other side. As a result they sit there let the guy use up his time.

There is nothing new in the attorneys' statements, what is really critical is if the judges have some disagreement with one argument that they make sure they give that party the last chance to respond to such disagreement.



> He sure does about this case at this time.
> 
> Good night.


Judge Folsom made two mistakes during the trial that resulted in the reversal of the hardware claims verdicts. He also single handedly delayed this contempt proceeding for months. It should never have lasted this long.

The reason you think Judge Folsom does is because you agree with him, the reason some people think Judge Rader is clueless is because he seems to disagree with them. But the fact of the matter is, such argument misses the point. Whether you agree or not, he is the one that will make the call, not you.


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## James Long

One thing to note is that the oral arguments are only PART of what the appeals court will use to make their decision. Sometimes there are hints, other times the justices may go down the rabbit hole chasing an argument (perhaps to make sure they understood the point). But there is more before them than the brief time the lawyers were in court.

I look forward to the verdict ...


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## Ken_F

I didn't see this posted. Here's a scanned copy of TiVo's formal response to the PTO's preliminary rejection:

Page 5
Page 6-44


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## Greg Bimson

Curtis52 said:


> I think Judge Rader made it clear that only infringement can be enjoined. Dish made a good case that they read the injunction with that in mind.


I think Judge Rader made it clear that ALL means ALL, and that DISH/SATS should have appealed the wording of the injunction.

I finally listened, and this sounds exactly like the "non-infringing" arguments that were brought up in front of Judge Folsom.

Once again, we are back to the fact that over 4 million DVR's were admitted as evidence, found infringing, and had an injunction placed upon them. Those DVR's are forever under Judge Folsom's jurisdiction.

And the time to "re-interpret" the injunction is before the injunction becomes active.


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## jacmyoung

Greg Bimson said:


> I think Judge Rader made it clear that ALL means ALL, ...


Yes, "ALL... from the Infringing Products".

That "ALL..." does not apply to non-infringing products.

There is nothing to appeal the wording of the injunction.


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## jacmyoung

Ken_F said:



> I didn't see this posted. Here's a scanned copy of TiVo's formal response to the PTO's preliminary rejection:
> 
> Page 5
> Page 6-44


I read it last night, only two comments.

One, TiVo offered little new argument, they are still going circle with the PTO examiner. The examiner asked TiVo not to use Figure 8 because it was too high level, that Figure 8 was about those "objects". If you read TiVo's response, they continued to talk nothing but their so called "objects".

Hello? Didn't TiVo hear the PTO? Those "objects" are no longer considered TiVo's invention.

Second, TiVo completely bypassed the PTO's contention that the "parse" step disclosed "analyzing start codes..." TiVo is only arguing that the software claims discloses the "flow control" invention.

Do you know what that means? If the "parse" is not an invention disclosed by the software claims, then the claims must be modified to remove that first step. A claim simply cannot be so broad to contain language that has nothing to do with the invention, doing so obviously serves to capture potential infringers who do not infringe on the invention.

Without the "parsing" step, of course the PID theory is down the toilet.


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## jacmyoung

James Long said:


> One thing to note is that the oral arguments are only PART of what the appeals court will use to make their decision. Sometimes there are hints, other times the justices may go down the rabbit hole chasing an argument (perhaps to make sure they understood the point). But there is more before them than the brief time the lawyers were in court.
> 
> I look forward to the verdict ...


I'd like to point out again that during the last oral argument, the circuit judge grilled both parties on two issues, whether the old E* software "separated" the audio and video data or not as disclosed in the hardware claims, and if only the software claims verdicts were affirmed, but not the hardware claims, should the injunction and damages still be upheld. Both parties had the chances to respond to the above questions.

In the end, the appeals court reversed the hardware claims verdicts, affirmed the software claims verdicts, upheld the injunction and the damages.


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## spear61

Seems to me the Court was trying to help the parties address parts of their written submissions that were lacking so they might strengthen their records.

Dish: Why did you not come back to clarify the injunction?

Tivo: Tell me about this parse thing ( your written explanation is weak) and how can you injunct something that is no longer infringing?


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## peak_reception

david_jr said:


> Crap shoot or no, a lot of us would just like to see a resolution even if it is bad for us (owners of the boxes this affects). Anyone care to Ballpark on when a decision might be expected?


 A decision is supposed to come by early 2010 at the latest but these things are never a sure bet.

As for the boxes, it is very unlikely that any box will ever have its DVR functionality shut down so don't lose any sleep over that. You might have to pay a little more for it/them each month though depending on how things turn out.


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## peak_reception

spear61 said:


> Seems to me the Court was trying to help the parties address parts of their written submissions that were lacking so they might strengthen their records.


 More like the lawyers were helping the judges with their weak preparation.



> Dish: Why did you not come back to clarify the injunction?
> 
> Tivo: Tell me about this parse thing ( your written explanation is weak) and how can you injunct something that is no longer infringing?


Yeah, "Tell me how the PDI filters parse incoming broadcast data?" :nono2:

Not jabbing at you spear, just could hardly believe how unprepared the lead judge (and probably the other two also) was for this hearing.


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## peak_reception

> Judge Folsom made two mistakes during the trial that resulted in the reversal of the hardware claims verdicts. He also single handedly delayed this contempt proceeding for months. It should never have lasted this long.


 I agree that Judge Folsom made mistakes with this case but the question was does he know more about it than Judge Rader. Clearly he does.



> The reason you think Judge Folsom does is because you agree with him, the reason some people think Judge Rader is clueless is because he seems to disagree with them.


 Or maybe people listened to the hearing and decided for themselves how informed Judge Rader sounded? That's how I did it. 



> But the fact of the matter is, such argument misses the point. Whether you agree or not, he is the one that will make the call, not you.


 He and the other two judges on the panel, yes. Hopefully he and they will be more informed when it's time for a verdict.

Question: Were any of these judges on the CAFC panel that decided TiVo v. EchoStar the first time round?


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## peak_reception

James Long said:


> One thing to note is that the oral arguments are only PART of what the appeals court will use to make their decision. Sometimes there are hints, other times the justices may go down the rabbit hole chasing an argument (perhaps to make sure they understood the point). But there is more before them than the brief time the lawyers were in court.


 Very true from my understanding also. Especially in a case this long and complex I would think that this hearing will have little if any effect on the outcome.



> I look forward to the verdict ...


 As will the rest of us. January 2010 will mark the *6 Year Anniversary* from when this case was first filed.


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## Curtis52

peak_reception said:


> Question: Were any of these judges on the CAFC panel that decided TiVo v. EchoStar the first time round?


No.


----------



## jacmyoung

peak_reception said:


> ...Yeah, "Tell me how the PDI filters parse incoming broadcast data?" :nono2:
> ...


Other than the misspelling of PID which I know many TiVo supporters are quick to harp on, the question asked by Judge Rader is the most important question, and one which the TiVo attorney failed to respond to.

He asked this question after the TiVo's attorney said the PID filter clearly "parsed the broadcast data." But that is not the limitation of the claims.

The limitation of the claims is, "parses audio and video data from the broadcast data." The judge called out the attorney's word game, and the attorney had no response to that, he simply talked over the judge.


----------



## Greg Bimson

jacmyoung said:


> The limitation of the claims is, "parses audio and video data from the broadcast data." The judge called out the attorney's word game, and the attorney had no response to that, he simply talked over the judge.


Because the attorney had to educate the judge by stating what a PDI filter does. 

But it is that exact phrase that DISH/SATS cannot defeat. Taking the natural meaning of the above phrase, the PID filter "parses audio and video data from the broadcast data". There is no way around it. The PID filter meets that definition and limitation EXACTLY. That is how TiVo's attorney answered the question.

Let's face it. This hearing was practically a condensed version of the testimony given since the motion for contempt was filed. There was hardly anything new, other than the fact that TiVo finally put to rest "parses" means "analyzes", by simply hooking back the argument to the entire phrase of the limitation.


----------



## jacmyoung

Greg Bimson said:


> Because the attorney had to educate the judge by stating what a PDI filter does.
> 
> But it is that exact phrase that DISH/SATS cannot defeat. Taking the natural meaning of the above phrase, the PID filter "parses audio and video data from the broadcast data". There is no way around it. The PID filter meets that definition and limitation EXACTLY. That is how TiVo's attorney answered the question...


No he did not answer that question, he said the PID filter clearly "parsed the broadcast data." Why do you think he felt compelled to change the wording of the claims?

Later when he realized Judge Rader wasn't so easily fooled by the word game, asking him how the PID filter could parse the audio and video data if such data were scrambled before fed to the PID filter, the attorney's response?

But not all audio and video date were scrambled. Are you not scared of his response? What that means is, the attorney admitted that if the audio and video data were scrambled before they are fed to the PID filter, the PID filter cannot analyze them.

As far as lecturing the judges, those circuit judges are life long patent judges, it is especially true for Judge Rader. I will not hold my breath that Judge Rader may be lectured. He knows what the term "parses audio and video data from the broadcast data" mean, and he knows the TiVo attorney was trying to avoid the issue by saying but you see the PID parsed the broadcast data, taking out "audio and video data from".

Most of all, he got the TiVo attorney to admit, if the audio and video data are scrambled before fed to the PID filter, the PID filter cannot possibly parse such data.


----------



## scooper

Greg - I want you to remember 2 words out of this hearing - "188 bits".


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## jacmyoung

scooper said:


> Greg - I want you to remember 2 words out of this hearing - "188 bits".


Yes that two words are part of Mr. Waxman's lecture. The problem is, the PID filter only analyzes the header, which is a 13-bit code. This 13-bit code is part of the 188-bite stream, but this 13-bit code contains no audio and video data, only the channel ID information.

The audio and video data are contained in the payload of the stream, not in the header, and the playload of the stream is scrambled when the stream hits the PID filter. The PID filter simply analyzes that 13-bit code which is not scrambled, select the correct channel/programming, and send it to the decoder.

BTW, we have not even touched on the next limitation in the first step of the claims, that is, after the audio and video data are analyzed and picked out from the broadcast data, they must then be "temporarily stored." Did TiVo even try to prove the PID filter temporarily stores such data? They did not. How in the world do they expect to prove *by clear and convincing evidence* that the PID filter meets the first step of the claims when they did not even bother to cover that third base?


----------



## Greg Bimson

jacmyoung said:


> No he did not answer that question, he said the PID filter clearly "parsed the broadcast data." Why do you think he felt compelled to change the wording of the claims?


The element of the claim states:

parses audio and video data from said broadcast data

If DISH/SATS never parses audio and video data from said broadcast data, then DISH/SATS has no subscribers as there would be no way to parse audio and video data from the transport stream, i.e., you cannot view a transponder. Something _parses_ the transponder/transport into a viewable picture.

The claim term is "parses audio and video data from said broadcast data" AND a PID filter does exactly that.


----------



## P Smith

_"This 13-bit code is part of the 188-*bite* stream"_ - please correct yourself : it is 188 BYTES.

As to you can't analyze encrypted PIDs for obtain info about it content, well for separation and storing those PIDs (what constitue a channel) you need analyze PMT PIDs after PAT PID, to get the knowledge: which PID is carry video, which audio(s) for selected channel.


----------



## jacmyoung

Greg Bimson said:


> The element of the claim states:
> 
> parses audio and video data from said broadcast data
> 
> If DISH/SATS never parses audio and video data from said broadcast data, then DISH/SATS has no subscribers as there would be no way to parse audio and video data from the transport stream, i.e., you cannot view a transponder. Something _parses_ the transponder/transport into a viewable picture.
> 
> The claim term is "parses audio and video data from said broadcast data" AND a PID filter does exactly that.


Please read the first step of the software claims below carefully:



> [1] providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data;


To prove the new design still meet the above step, TiVo needs to identify that so called "physical data source" that does all three things above, which they say they have found it, it is called the "PID filter". Next TiVo says, look, *the PID filter parses the broadcast data*, bingo!

Now your job is to try to fit the above highlighted sentence into that above claim step, be my guest.

Judge Folsom might have been fooled by TiVo, but I doubt the three circuit judges will do too, else they would not have kept asking TiVo's attorney that question.

Having said all the above, I truly believe both E* and TiVo should work together. The synergy between the two will make their DVRs the clear leader in this new Internet TV/DVR era, set them apart from all the rest of the competitors.

TiVo can sell anything, even to Charlie, if they make a deal even Charlie cannot refuse. It will be the tallest order to fill but anything is possible.


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## jacmyoung

P Smith said:


> _"This 13-bit code is part of the 188-*bite* stream"_ - please correct yourself : it is 188 BYTES...


You should have lectured Mr. Waxman that, before he started lecturing Judge Rader.


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## Curtis52

P Smith said:


> _"This 13-bit code is part of the 188-*bite* stream"_ - please correct yourself : it is 188 BYTES.
> 
> As to you can't analyze encrypted PIDs for obtain info about it content, well for separation and storing those PIDs (what constitue a channel) you need analyze PMT PIDs after PAT PID, to get the knowledge: which PID is carry video, which audio(s) for selected channel.


 TiVo's Red Brief:

"Even if the claims did distinguish between headers and payloads, the PID filtering circuitry must initially analyze portions of the broadcast stream-not limited to the packet headers-to synchronize the incoming packets. See A8164- 8165."


----------



## Greg Bimson

jacmyoung said:


> To prove the new design still meet the above step, TiVo needs to identify that so called "physical data source" that does all three things above, which they say they have found it, it is called the "PID filter". Next TiVo says, look, *the PID filter parses the broadcast data*, bingo!


TiVo has only ever argued that the PID filter meets the element limitation against a device and process which "parses video and audio data from said broadcast data". That doesn't mean there isn't another part of a "phyiscal data source" which fulfills the other element of that step.


----------



## jacmyoung

Greg Bimson said:


> ...That doesn't mean there isn't another part of a "phyiscal data source" which fulfills the other element of that step.


You don't think it is important for TiVo to prove so especially considering in a contempt proceeding the burden of proof of infringement is much higher?


----------



## jacmyoung

Curtis52 said:


> TiVo's Red Brief:
> 
> "Even if the claims did distinguish between headers and payloads, the PID filtering circuitry must initially analyze portions of the broadcast stream-not limited to the packet headers-to synchronize the incoming packets. See A8164- 8165."


Where in the above did TiVo prove the PID filter actually analyzes audio and video part of the payloads? Did TiVo then identify how such audio and video data are "temporarily stored"?

In fact the TiVo expert admitted that the new software no longer temporarily stored the data, the code in the old software that was identified to have served that "temprarily store" function, is now gone.


----------



## Curtis52

Greg Bimson said:


> TiVo has only ever argued that the PID filter meets the element limitation against a device and process which "parses video and audio data from said broadcast data". That doesn't mean there isn't another part of a "phyiscal data source" which fulfills the other element of that step.


Correct. The physical data source could consist of hundreds of components. The claim describes the collective function of the components. Whatever component provides the temporary storage is automatically included as per the definition of physical data source in the claims.


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## P Smith

Curtis52 said:


> TiVo's Red Brief:
> 
> "Even if the claims did distinguish between headers and payloads, the PID filtering circuitry must initially analyze portions of the broadcast stream-not limited to the packet headers-*to synchronize the incoming packets*. See A8164- 8165."


While it is true in general , in a case of encrypted payload (video and/or audio ) the sync between video/audio is impossible, due a location of time stamps inside on encrypted part. Hope TiVo reserved somehow in general diagram such decrypting block.


----------



## jacmyoung

Curtis52 said:


> ... Whatever component provides the temporary storage is automatically included as per the definition of physical data source in the claims.


Nothing is "automatically included", TiVo must prove it as they did last time with regard to the old software, only this time with much higher burden of proof.

One of the limitations of such temporary storage has to be, it only stores the "audio and video data" that have just been parsed out of the broadcast data earlier, not any kind of audio and video data. The other limitation is, such temporarily stored audio and video data must then be "extracted" by that so called "source object" in the second step of the claims.

When E* asked TiVo where in the new design is that so called "source object", TiVo could not even respond, they only said it was in there in that chart, why didn't you go look for it? Is that how you prove to the judges by clear and convincing evidence?

Of course if TiVo cannot identify that "source object" in the new design, they cannot possibly prove the second step is met:



> [2] providing a source object, wherein said source object extracts video and audio data from said physical data source;


Of course if TiVo cannot identify that "source object" in the new design they cannot possibly prove steps 4 and 5 are met either:



> [4] wherein said source object obtains a buffer from said transform object, said source object converts video data into data streams and fills said buffer with said streams;
> 
> [5] wherein said source object is automatically flow controlled by said transform object;


Without the audio and video data being parsed out from the broadcast data, there is no temporarily storing such audio and video data, therefore there is no need for a "source object" because the purpose of the source object is to extract such audio and video data, then convert the video part of the data into data streams, then fill such data streams in a buffer. It is a chain reaction that must have a start and an end. When there is no start, the whole chain crumbles.

The mistake E* made was, they did not go to such distance during the contempt proceeding to make the above points, they only argued they no longer parsed start codes. Only in the latest appeal they had employed all the points above. I had always wondered why ever since they started the contempt proceeding over a year ago. Did Charlie do so intentionally to drag TiVo through the mud? Hard to imagine he would take such risk, but then it is Charlie we are dealing with.

If you look back at the history of the contempt proceeding, Charlie was fully prepared to lose at the Judge Folsom's court. The same day the 5/31/08 status meeting was concluded by Judge Folsom, Charlie filed the declaratory judgment suit against TiVo in the Delaware court, meaning he had already anticipated he was going to lose in that meeting.

After the 09/08 hearing, before anyone knew what Judge Folsom was going to say, Charlie was working on how to invalidate TiVo's software claims through the PTO, and started it right after Judge Folsom said he was going to hold another hearing in 02/09.

Not to mention almost at the same time Judge Folsom issued his contempt ruling and orders on 6/2/09, Charlie had his big response already prepared, addressing point by point the Judge Folsom's ruling, and sent his motion to the appeals court, had the appeals court stayed Judge Folsom's ruling in less than 24 hours. I have never ever seen rapid responses like those before.

It reads like a fiction novel, the only thing missing is a dead body somewhere.


----------



## BobaBird

jacmyoung said:


> Please read the first step of the software claims below carefully:
> [1] providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data;​
> To prove the new design still meet the above step, TiVo needs to identify that so called "physical data source" that does all three things above, which they say they have found it, it is called the "PID filter". Next TiVo says, look, *the PID filter parses the broadcast data*, bingo!


The physical data source parses video and audio data from broadcast data (from the s/w claim).

A DBS satellite transponder carries multiple channels of broadcast data (fact), and the function of the satellite receiver is to display a selected channel by looking to the appropriate transponder stream and tuning that channel.

The PID filter only parses a 188-byte header to identify which packets of the transponder stream to keep together to form the requested broadcast data (as explained in this thread).

The physical data source in the s/w claim gets its broadcast data from an input device. There is no discrete broadcast data until the transponder stream is processed as directed by the PID filter.

There is now a usable signal from which the physical data source can parse video and audio data. The parsing of the header is different from the parsing of audio and video data from the broadcast stream. The PID filter is an essential element of the satellite receiver, whether or not it also has DVR functionality.

DVR functionality is made possible by the parsing and storing of A/V data which is done by a physical data source that requires an input.

Conclusion: The PID filter is the input device in the software claim.


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## jacmyoung

You are absolutely correct that the PID filter is part of the “input device”, right in front of TiVo’s “physical data source”. The “physical data source” “accepts” “broadcast data” from the “input device”. E* tried to explain to Judge Folsom this way during the 02/09 hearing, they even used TiVo’s own figures during the trial (with arrows going all over the places) to point it out to the judge, but it did not work. It was too complicated. Judge Folsom probably dozed off at that point.

I think E* decided to dumb it down for the judges and figured that since it is a fact when the PID filter receives the broadcast data, the audio and video data contained in it are scrambled, so the PID filter cannot possibly analyze such data even if it wants to.

It seems to have worked for the circuit judges. It even worked for the TiVo’s attorney since he pretty much admitted if the audio and video data are scrambled, the PID filter cannot analyze them.


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## audiomaster

Greg Bimson said:


> The element of the claim states:
> 
> parses audio and video data from said broadcast data
> 
> If DISH/SATS never parses audio and video data from said broadcast data, then DISH/SATS has no subscribers as there would be no way to parse audio and video data from the transport stream, i.e., you cannot view a transponder. Something _parses_ the transponder/transport into a viewable picture.
> 
> The claim term is "parses audio and video data from said broadcast data" AND a PID filter does exactly that.


______________
Seems to me that if it separates (parses) the data for one channel from the total transponder stream, and if that data contains audio and video as part of the separated signal, then it is parsing audio and video data whether it is encrypted at that point or not, and whether there is other data with it. There is AV data in the part being separated, hence it is "parsed"


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## Curtis52

P Smith said:


> While it is true in general , in a case of encrypted payload (video and/or audio ) the sync between video/audio is impossible, due a location of time stamps inside on encrypted part. Hope TiVo reserved somehow in general diagram such decrypting block.


If some of the channels are scrambled, I wonder how Dish was (supposedly) able to get the start codes from the PID filter previously.


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## scooper

audiomaster said:


> ______________
> Seems to me that if it separates (parses) the data for one channel from the total transponder stream, and if that data contains audio and video as part of the separated signal, then it is parsing audio and video data whether it is encrypted at that point or not, and whether there is other data with it. There is AV data in the part being separated, hence it is "parsed"


How are you going to "parse" encrypted data (in this case audio / video data) without decrypting it ?

All you have at the PID filter level is the header and the encrypted payload. The "packets" of audio video data (with their header information) are encapsulated in the encrypted payload.


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## Curtis52

Exactly. Dish's excuse for the flip flop in whether the PID filter still analyzes audio and video data or not was that they used to get start codes from the PID filter. If that's true, how did they do that with scrambled data?


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## scooper

OK - throw this in the mix - 

satellite data => PRIMARY PID filter =>decryption engine => SECONDARY PID filter


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## Curtis52

What purpose does the first filter accomplish that can't be done by the second filter? Why would Broadcom put in two filters?

Anyway, that would mean that the second filter certainly still analyzes audio and video.


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## P Smith

scooper said:


> OK - throw this in the mix -
> 
> satellite data => PRIMARY PID filter =>decryption engine => SECONDARY PID filter


You don't need "SECONDARY PID filter", from this point you could start parsing payload, extract headers/t_stamps/etc and making idx tables for later trick play and multiple access to same 'channel' ie stored on HDD A/V packets.
In reality, dish is using more complicated processes - for example VOD movies stored as encrypted stream.


----------



## scooper

Curtis52 said:


> What purpose does the first filter accomplish that can't be done by the second filter? Why would Broadcom put in two filters?


Unless you're suggesting that they are looping the data out of the decryption engine back into the PID filter , how can you NOT do it that way ?

You can implement this one of 2 ways - 
You have 2 (or more) PID filters 
OR
you put a flag in the header that states this is encrypted / decrypted data so you can loop it back if encrypted.

Both are equally valid ways of handling it. It really depends on the design priorities - silicon is cheap and fast.

We all know that Dish stores data on the harddrive in encrypted form. We also know that in Dish's DVR designs - EVERYTHING is buffered through the harddrive.


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## P Smith

_"We all know that Dish stores data on the harddrive in encrypted form."_ - telling that is like telling: you or we all know nothing. 

That's simple not true: "_Dish stores data on the harddrive in encrypted form_" and such "_we all know that_".

It was true before - for 721 and 921 but those DVRs become to dead end recently.


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## jacmyoung

Curtis52 said:


> If some of the channels are scrambled, I wonder how Dish was (supposedly) able to get the start codes from the PID filter previously.


E* admits their previous position with regard to the PID filter was wrong, because the jury said so by finding for the TiVo's argument.

The question is then, which would our court prefer? That E* admits they were wrong and now changes its position to that of TiVo's winning position at trial, or E* must stick to its losing position it took during the trial and allow TiVo to also adopt E*'s such losing position to punish E* for it?

In the name of justice, which of the above should the court prefer?

If I make a statement A about you, you correctly point out to the judge I am wrong, the correct statement about you should be B, the court agrees with you and I am ordered to pay you $100 for defamation.

Now I go around telling people you are in fact B. Should you be allowed to go to the judge and ask him to again fine me another $100 for saying your are B?


----------



## scooper

P Smith said:


> You don't need "SECONDARY PID filter", from this point you could start parsing payload, extract headers/t_stamps/etc and making idx tables for later trick play and multiple access to same 'channel' ie stored on HDD A/V packets.
> In reality, dish is using more complicated processes - for example VOD movies stored as encrypted stream.


Certainly - you aren't expecting the PID filter to be doing that parsing payload, extract headers / T-stamps/etc. ? Especially if you had read Echostar's OWN Patent application where they AREN'T creating said idx tables, etc. for doing trick plays and multiple access.


----------



## peak_reception

P Smith said:


> _"We all know that Dish stores data on the harddrive in encrypted form."_ - telling that like telling you or all know nothing.


  intelligibility edit please.


----------



## Greg Bimson

jacmyoung said:


> E* admits their previous position with regard to the PID filter was wrong, because the jury said so by finding for the TiVo's argument.


Funny. Let's get this straight:

All of DISH/SATS' experts state that PID filtering meets the element limitation. Because DISH/SATS lost, the argument cannot be used against DISH/SATS.

TiVo's experts state that PID filtering meets the element limitation. Because DISH/SATS lost, somehow TiVo's *exact same* expert testimony cannot be used against DISH/SATS because DISH/SATS' experts agreed with TiVo.

I seem to recall that if all experts on both sides agree, it becomes an irrefutable fact. Especially when one expert has to recant his testimony so that DISH/SATS can completely reverse positions as compared to trial.


----------



## jacmyoung

Greg Bimson said:


> ...I seem to recall that if all experts on both sides agree, it becomes an irrefutable fact. Especially when one expert has to recant his testimony so that DISH/SATS can completely reverse positions as compared to trial.


The TiVo's expert also completely changed his position, if you had listened to the oral argument, the E* attorney quoted the TiVo's expert's testimony in order to make that point. BTW, all the judges agreed, even Judge Folsom, that both sides completely changed their positions.

Show me where it says if all experts on both sides agree, it becomes an *irrefutable fact*? Experts offer opinions based on facts, not facts based on facts. Experts' opinions cannot be facts.

Have you missed my citation from the appeals court, in which the court had said, expert opinions are "extrinsic evidence", if such "extrinsic evidence" is in conflict with the "intrinsic evidence" provided by the claims and the specification of the patent, the "intrinsic evidence" rules.

Even if all the experts had stated that the PID filter met the "parse" limitation, as long as it does not parse any audio and video data, and also does not temporarily store such audio and video data (both "intrinsic evidence" from the claims), the experts' opinion cannot overcome such claims requirement.


----------



## P Smith

scooper said:



> Certainly - you aren't expecting the PID filter to be doing that parsing payload, extract headers / T-stamps/etc. ? Especially if you had read Echostar's OWN Patent application where they AREN'T creating said idx tables, etc. for doing trick plays and multiple access.


A) yes
b) that patent is not what current dish DVR doing - they are still using indexed cues stored inside of additional files linked to written TS with V/A packets.


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## P Smith

peak_reception said:


> intelligibility edit please.


I did second attempt in that post - check it and approve it, please.


----------



## jacmyoung

P Smith said:


> A) yes
> b) that patent is not what current dish DVR doing - they are still using indexed cues stored inside of additional files linked to written TS with V/A packets.


I hope we at least realize this, at this point whether they index or do start codes are not even the point anymore. The question now is, whether the PID filter analyzes the audio and video data contained in the scrambled payloads of the broadcast data stream? And let me also add, whether the PID filter also temporarily stores any audio and video data so later the "source object" can "extract" such data from the PID filter?

Have you not listened to the oral argument and noticed the question Judge Rader repeatedly asked the TiVo attorney?


----------



## P Smith

I told before - there are round-robin buffers after those PID filters; target routines [FW] taking care of decrypting ( there are a lot of work involved, include listening to special PID with CA stream and interacting with smart card ) and future processing - for viewing or storing to HDD...

No, did not listen to that oral debates - not interesting in twisting real determinated processes by technically incompetent lawyers.


----------



## jacmyoung

P Smith said:


> I told before - there are round-robin buffers after those PID filters; target routines [FW] taking care of decrypting ( there are a lot of work involved, include listening to special PID with CA stream and interacting with smart card ) and future processing - for viewing or storing to HDD...
> 
> No, did not listen to that oral debates - not interesting in twisting real determinated processes by technically incompetent lawyers.


The "real determinated processes" were concocted by the patent lawyers and explained in those software claims, have you read those software claims? Did you read those claim steps I just posted earlier? Those claim steps are the basis of the patent lawsuits, not your technical competence.

Every day defendants in the patent lawsuits are tried based on those "incompetent looking" patent claim terms. Your technical expertise means very little when another expert can easily be obtained to provide an opposing opinion, in much more legible terms. No offense, I usually do not insult people, but you asked for it by attacking others.


----------



## peak_reception

P Smith said:


> I did second attempt in that post - check it and approve it, please.


 *[[Approved]]*

Thanks


----------



## peak_reception

P Smith said:


> No, did not listen to that oral debates - not interesting in twisting real determinated processes by technically incompetent lawyers.


 Not to mention the even more technically incompetent judge pretending to know what he was talking about  [PDI filters and all the rest]. You didn't miss much (though Jac will disagree).


----------



## jacmyoung

peak_reception said:


> Not to mention the even more technically incompetent judge pretending to know what he was talking about  [PDI filters and all the rest]. You didn't miss much (though Jac will disagree).


The software claims were granted by the PTO back in 2004 based on the notion that they disclosed an invention called "objects". These so called "objects" were the only reason the software claims were affirmed in the last reexamination, but after the trial when TiVo easily broadened the "objects" to mean "collection of data and operations" now the PTO decides the "objects" are no longer considered invention.

Either the original PTO examiner did not know what he was talking about when he read the word "object", or Judge Folsom had no idea what the term "collection of data and operations" meant. Take your pick.

But the point is, some lousy worded patent claims got by and was used to convict E* and caused a large sum of money changing hands, because the officials (the PTO, the judge or both) could not understand what TiVo was telling them so they simply rubber stamped it.

Now for any of you to say that Judge Rader has no clue what he was talking about, if it is true, I am only relieved, because garbage in, garbage out, at least it is fair.

Since some of you proclaim to know better than our officials, may I ask you what kind of invention do you think the software claims disclose, please keep in mind TiVo has already said they have nothing to do with start code detection, the so called "flow control" is just some generic hard drive read and write buffer functions, and the PID filter, as ancient as any digital receivers (non DVRs) have been using from the very beginning, is somehow the center piece of this so called TiVo's invention.

Can you tell me with a straight face the above piece of crap even deserves to be brought out in the day light? Has TiVo no shame? Have any of you?


----------



## Greg Bimson

jacmyoung said:


> But the point is, some lousy worded patent claims got by and was used to convict E* and caused a large sum of money changing hands, because the officials (the PTO, the judge or both) could not understand what TiVo was telling them so they simply rubber stamped it.


As I recall, the patent was reviewed back in 2006, and was again affirmed.

So the actual issue is why a patent filed in 1998 and granted in 2001 is finally being challenged in 2008.

The answer is that the patent would have been fine if it weren't for another case, where the Supreme Court ruled two patents could not be combined into one. That was a game changer. And that was the reason why TiVo's patent is facing invalidation.

Even though the rules of the game were changed midstream does not mean the patent is invalid. Yet.


jacmyoung said:


> Since some of you proclaim to know better than our officials, may I ask you what kind of invention do you think the software claims disclose, please keep in mind TiVo has already said they have nothing to do with start code detection, the so called "flow control" is just some generic hard drive read and write buffer functions, and the PID filter, as ancient as any digital receivers (non DVRs) have been using from the very beginning, is somehow the center piece of this so called TiVo's invention.
> 
> Can you tell me with a straight face the above piece of crap even deserves to be brought out in the day light? Has TiVo no shame? Have any of you?


I can sit here all day and refute each point, but let me simply state this:

The patent's software claims did not (nor do not) need to delineate each and every exact step that the TiVo box does. TiVo never characterized the software claims as the "center piece of this so called TiVo's invention"; if DISH/SATS wants to continue to argue the hardware claims, they'll lose. Now that those software claims need to be re-stated in order to be valid, there is ample time to make any argument about shame. Besides, the patent was still valid without issue when Judge Folsom issued his ruling regarding contempt.

Then again:
We only have one buffer (there are ten in a circle)
We don't analyze (something has to analyze in order to get a transport stream to a channel)
We adhered to the injunction (impossible even with tortured redefinitions)

And somehow the shame should be on TiVo?


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## jacmyoung

Greg Bimson said:


> As I recall, the patent was reviewed back in 2006, and was again affirmed.


The software claims were affirmed on the sole base that they disclosed an invention called "objects".



> So the actual issue is why a patent filed in 1998 and granted in 2001 is finally being challenged in 2008.


The patent was filed in 1998 and granted in 2004.



> The answer is that the patent would have been fine if it weren't for another case, where the Supreme Court ruled two patents could not be combined into one. That was a game changer. And that was the reason why TiVo's patent is facing invalidation.


Wrong. Prior art could always be combined to invalidate a patent or patent application. The only difference is, after that SC decision, the same prior art references used before that did not invalidate the patent, can be used again later if new light is later found.



> Even though the rules of the game were changed midstream does not mean the patent is invalid. Yet.I can sit here all day and refute each point, but let me simply state this:


You were wrong on all of the above points already.



> The patent's software claims did not (nor do not) need to delineate each and every exact step that the TiVo box does. TiVo never characterized the software claims as the "center piece of this so called TiVo's invention"; if DISH/SATS wants to continue to argue the hardware claims, they'll lose. Now that those software claims need to be re-stated in order to be valid, there is ample time to make any argument about shame. Besides, the patent was still valid without issue when Judge Folsom issued his ruling regarding contempt.
> 
> Then again:
> We only have one buffer (there are ten in a circle)
> We don't analyze (something has to analyze in order to get a transport stream to a channel)
> We adhered to the injunction (impossible even with tortured redefinitions)
> 
> And somehow the shame should be on TiVo?


Who cares? The point is, TiVo in order to capture E*'s new design in the contempt proceeding, rather fight it out in a new trial, had to lower their software claims to something that borders on junk.


----------



## Greg Bimson

jacmyoung said:


> Who cares? The point is, TiVo in order to capture E*'s new design in the contempt proceeding, rather fight it out in a new trial...


A specific subset of DISH/SATS DVR's were ordered disabled. Nothing was disabled once the injunction became active. That is the basis of using a contempt setting. After all, since none of those devices listed in the injunction were disabled as ordered, DISH/SATS was found in contempt. There is no need for a new trial when the admitted devices found infringing were still within the scope of the injunction and were not disabled as ordered.

New trial. Funny stuff. If DISH/SATS did what they were ordered to do, no one would be in this position right now.


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## Ken_F

jacmyoung said:


> The software claims were affirmed on the sole base that they disclosed an invention called "objects".


Don't forget flow control. That was a key reason for upholding certain claims after the first challenge.



jacmyoung said:


> The patent was filed in 1998 and granted in 2004.


You mean May 15, 2001 (link).

TiVo does have some other variants of the time warp patent that were granted under different names and numbers at later dates, but 6,233,389 is the patent at issue in the Echostar / Dish litigation.


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## Greg Bimson

jacmyoung said:


> Wrong. Prior art could always be combined to invalidate a patent or patent application. The only difference is, after that SC decision, the same prior art references used before that did not invalidate the patent, can be used again later if new light is later found.


The SCOTUS decision simply stated that a combination of two existing patents is no longer patentable. The software claims under review by the PTO were found to be "prior art" within two existing patents. Therefore, what was able to be patented ten years ago is no longer allowed, and that new standard can be used to invalidate patents issued before the SCOTUS decision.


----------



## jacmyoung

Ken_F said:


> Don't forget flow control. That was a key reason for upholding certain claims after the first challenge.


Believe me, you can't even rip that thing out of the memory of my dead body

The "flow control" was never used to affirm the software claims last time, only the so called "objects."

Since some of you apparently did not read my previous posts on this issue, let me try again.

Whatever TiVo said, and is saying now in the court, can be used to later invalidate TiVo's own claims.

In 2006, when E* used those prior art trying to invalidate the patent, the PTO affirmed the two software claims on the sole base that the prior art did not mention the word "object".

At the same time, TiVo was telling Judge Folsom the "object" was just some "collection of data and operations". Judge Folsom accepted the definition, and later in 2008 the appeals court affirmed TiVo's such definition.

As a result, the term "object" no longer had some mysterious implications, as E* pointed out to the PTO, those prior art also disclosed all those "collection of data and operations", even though they did not use the clever word "object". TiVo basically used the word to fool the original PTO examiner.

The PTO agreed with E* and rejected the software claims based on the same prior art references used in 2006/2007.

Now TiVo is saying, its software claims discloses art that are no different than the PID art, and the hard drive read and write art (i.e. your "flow control" art). See my point?

Even if the current reexamination fails, now with even more newly disclosed TiVo's definitions, E* will be able to pick from any one of the ancient PID patents, and any one of the ancient hard drive read and write patents, combine them with the existing prior art references, to invalidate the software claims in a new reexamination, because the SC said they can do just that, every time TiVo offers some new definitions, it provides the "new light" required to trigger a reexamination.


----------



## jacmyoung

BTW Ken, I almost forgot to mention one other thing.

Recall when you posted TiVo's 11/2/09 response to the PTO's rejection earlier, I made two comments, one of which was that TiVo did not even respond to the PTO's contention that the "parse" in the software claims necessarily means analyzing start codes and indexing. The only thing TiVo is saying is, the software claims disclose this "flow control" art.

You would think TiVo would want to refute such key contention, for example by telling the PTO, no, "parse" means PID filtering. But TiVo did not do so because they knew the PTO would laugh at them.

But here is the thing, they could not let E* get the hands on this piece of evidence before the 11/2 appeals court hearing. Had the PTO not allowed TiVo to delay the response to 11/3, E* could have filed TiVo's response to the appeals court as evidence. Such evidence would have easily taken the entire "parse" limitation out of the picture, end of the story.

Now you know why I had repeatedly asked why TiVo requested that their response to the PTO be delayed till 11/3.


----------



## jacmyoung

Now for those who listened to the audio clip and wondering what the hell were the two cases TiVo's attorney cited that supposedly the appeals court upheld the injunctions on "non-infringing materials"?

Those were cases which some materials, by themselves were not infringing materials, but if used, would have produced infringing products that were enjoined in the injunctions. The questions were, should those non-infringing materials be destroyed also?

The answers were yes, since the sole purpose of those non-infringing materials was to make the infringing products.

Again, there has to be "Infringing Products" before one can talk about enjoining anything, if there is no "Infringing Products", nothing to enjoin. Had the infringing products in the above cases later proven to be no longer infringing products, after modifications, they would not have been enjoined, nor the materials used to produce such modified products be ordered destroyed.

I'd like to repeat what Judge Rader said at the beginning of the hearing:

*Infringing is all we can enjoin, of course.*


----------



## audiomaster

scooper said:


> How are you going to "parse" encrypted data (in this case audio / video data) without decrypting it ?
> 
> All you have at the PID filter level is the header and the encrypted payload. The "packets" of audio video data (with their header information) are encapsulated in the encrypted payload.


You are "parsing" the encrypted payload from the header aren't you? That would mean that you would necessarily have to be "parsing" everything that is in the payload at the same time which includes the A/V data. I don't think it says "parsing ONLY the A/V data", or "ONLY the SEPARATED A/V data" ?
So if you in any way separate the signal into one part that has A/V data and one part that doesn't aren't you "parsing "A/V data!


----------



## jacmyoung

audiomaster said:


> You are "parsing" the encrypted payload from the header aren't you? That would mean that you would necessarily have to be "parsing" everything that is in the payload at the same time which includes the A/V data. I don't think it says "parsing ONLY the A/V data", or "ONLY the SEPARATED A/V data" ?
> So if you in any way separate the signal into one part that has A/V data and one part that doesn't aren't you "parsing "A/V data!


Should have lectured Mr. Waxman about that, because Mr. Waxman (as well as Tivo in its brief) admitted if the channel is scrambled, the PID filter cannot parse the audio and video data. They were only saying but some of the channels were not scrambled, so maybe for those channels it was possible.

Hardly a clear and convincing evidence that the PID filter parses audio and video data. The truth is, the PID filter only parses the header, which is never scrambled. The playloads are scrambled, and it is precisely because the PID filter does not parse the payloads (where the audio and video data reside), the playloads need not descrambled before they hit the PID filter.

BTW, the PID filter does not "separate" the header from the playload. The header and the payload together form that 188-bit stream representing one channel, maybe with some subchannels too, the header takes 13-bit, the rest of the 188-bit is the playload, the two go together, not separated by the PID filter.

The separation you are talking about maybe that when the signal is beamed down from the satellite, that beam contains hundreds of such 188-bit streams, i.e. hundreds of channels. The PID filter's job is to find which one of those hundreds of channels should be selected to be sent to the next stage for decoding and TV display, or for storing onto the hard drive, based on the user's remote command. It does so by looking at the headers, because the headers contain the channel ID numbers for those channels.

At least that is how I understand it, based on the descriptions from the briefs. Any additional technical information beyond what was described in those briefs will not be considered by the appeals court. We can sit here talk about technical details all we want, if those details are not in the briefs, they do not matter. The appeals court does not read our posts to make the ruling.


----------



## scooper

Small correction jac - the 188 bits refers to the HEADER, not the actual packet of data itself. You can't hardly store anything in 188 bits - certainly not any significant amount of audio / video data.


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## P Smith

scooper said:


> Small correction jac - the 188 bits refers to the HEADER, not the actual packet of data itself. You can't hardly store anything in 188 bits - certainly not any significant amount of audio / video data.


I did propose to him correct the error, be he want stick to the mistake made in the court.
Plus, there is no 188-bit header, it is 4 bytes or 32 bits header, while whole packet's length ( include the header) is 188 *bytes*.


----------



## jacmyoung

Greg Bimson said:


> The element of the claim states:
> 
> parses audio and video data from said broadcast data
> 
> If DISH/SATS never parses audio and video data from said broadcast data, then DISH/SATS has no subscribers as there would be no way to parse audio and video data from the transport stream, i.e., you cannot view a transponder. Something _parses_ the transponder/transport into a viewable picture.
> 
> The claim term is "parses audio and video data from said broadcast data" AND a PID filter does exactly that.


Then don't tell the judge that the PID filter "parses the broadcast data", tell him the PID filter "parses audio and vidoe data from the broadcast data".

Why do you think Mr. Waxman saw the need to omit "audio and video data from"?


----------



## jacmyoung

P Smith said:


> I did propose to him correct the error, be he want stick to the mistake made in the court.
> Plus, there is no 188-bit header, it is 4 bytes or 32 bits header, while whole packet's length ( include the header) is 188 *bytes*.


Again go lecture Mr. Waxman that, don't lecture me.


----------



## jacmyoung

scooper said:


> Small correction jac - the 188 bits refers to the HEADER, not the actual packet of data itself. You can't hardly store anything in 188 bits - certainly not any significant amount of audio / video data.


Missed that one, so what is the size of the average payloads?

Now after you answer that, I hope we can all stop going circle on this issue, and agree to disagree if they will. Because I have another big piece of new one to post


----------



## P Smith

jacmyoung said:


> Again go lecture Mr. Waxman that, don't lecture me.


Sorry, but you are spreading errors here. Better do not continue looking bad (technically).


----------



## P Smith

jacmyoung said:


> Missed that one, so what is the size of the average payloads?
> ...


Payload size is a constant because by DVB standard the packet size is 188 *BYTE*s; then you could calculate as 188 *BYTE*s minus 4 *BYTE*s (header) equal 184 *BYTE*s.


----------



## deaincaelo

Greg Bimson said:
 

> And somehow the shame should be on TiVo?


It doesn't matter if it used to be legal. Patent trolling is still immoral, and yes they should be shamed for stealing technology.

They did not invent what their patent has the rights to- which is currently anything that can record TV to a hard drive. This makes them thieves.


----------



## Curtis0620

deaincaelo said:


> It doesn't matter if it used to be legal. Patent trolling is still immoral, and yes they should be shamed for stealing technology.
> 
> They did not invent what their patent has the rights to- which is currently anything that can record TV to a hard drive. This makes them thieves.


!rolling


----------



## jacmyoung

P Smith said:


> Sorry, but you are spreading errors here. Better do not continue looking bad (technically).


Do you not understand my point here? I was only telling you what the parties argued in their briefs. If I am "technically wrong", that is only because they are "technically wrong".

For example, E* explained in its brief that the "broadcast data" consisted of two parts, a header and a payload. The header was a 13-bit code, the OID filter only analyzed the header not the payload, but E* did not explain how big was the payload. TiVo did not dispute the above explanation in their briefs.

However during the hearing, Mr. Waxman did say the broadcast data was a 188-bit stream. He did not say if it included a header and a payload for obvious reason, because he wanted to lump all the 188 bits together so TiVo's argument could work.

But Judge Rader pointed out to him several times, mentioned the "header", and the "payload", and the scrambled audio and video data. Mr. Waxman did not try to dispute Judge Rader, he did not try to tell the judge like you are telling me, that, well there is no header, only payload. Mr. Waxman just talked over Judge Rader and went on and on about the "I love Lucy" show.

Who cares if you tell me what you think it is? You are not Mr. Waxman, I am not Judge Rader. Do you read me now?

So stop correcting me, since I am only reporting what the parties are saying.


----------



## jacmyoung

Before I start this big new post, let me first report that yesterday TiVo again filed the usual stipulation to request a delay of filing of the attorney fees and costs to Judge Folsom. This is the 4th such request. So the quiz of the day, if the appeals court issues its ruling on 1/22/2010, how many such TiVo’s delay requests will have been filed?

Seriously though, such delay filings at least serve to keep the TiVo investors’ hope alive that there can still be a settlement. Frankly I think they should settle, it is good for both of them, I just don’t hold my breath, seeing how Charlie has behaved in his several lawsuits.

Now what I am going to talk about is that yesterday, the appeals court also heard the Medtronic v. Brainlab case. Some of you may recall about a month ago I linked up this case after TiVo requested the appeals court to try to schedule the TiVo v. E* hearing apart from the Medtronic hearing. At the time I wondered why, so I researched this case, it turned out the Medtronic case was a case about reward of attorney fees and costs. Coincidence? I thought TiVo might be trying to avoid something.

It turned out it was likely because Mr. Waxman was appearing in both hearings. So my initial speculation became less legit, though not entirely without merit.

Mr. Waxman apparently is a well sought after appeals court attorney, among the four hearings I have listened to so far, he was in three of them. And he deserves such attention, he is the most eloquent and experienced appeals attorney I have heard so far.

The Medtronic decision is posted below. In a nutshell, a senior district judge presided over a lengthy patent infringement case which ended after a two-week jury trial, Medtronic won the jury trial, Brainlab was found by the jury to have willfully infringed Medtronic’s patents, with award of enhanced damages. But after the jury trial, the senior judge realized both he and the jury were misled. He vacated the jury finding and ruled in favor of Brainlab. On appeal, the appeals court upheld the judge’s decision.

On remand, Brainlab asked the senior judge to award them attorney fees and costs, argued on the basis of Meditronic attorneys’ misconduct during the trial. The senior judge again agreed with Brainlab, concluded that Medtronic attorneys not only misled the jury but did so by confusing him too. He awarded Brainlab the attorney fees and costs, in addition he fined the Medtronic’s law firm a few million dollars.

With the above background, the appeal was heard yesterday. This hearing had three attorneys, my guess is Mr. Waxman represented Medtronic (the losing party/appellant), another attorney represented the law firm that was fined, and of course the third attorney represented Brainlab. All three judges grilled the attorneys in length, turning it into a 90-minute hearing. Of course I will not go into detail to talk about the Medtronic case, except to point out a very interesting thing.

During the hearing, the appeals court asked Mr. Waxman, why did he think the appeals court should reverse the district judge’s decision, after all, he was an experienced judge, he sat through the whole trial, we did not. Obviously he was very troubled by something in the end, else he would not have been so hard on Medtronic’s attorneys. Mr. Waxman of course offered his usual clear and compelling arguments as why. I will not try to speculate how it will end up with since it was really complicated, except to say I think the sanctions was too harsh. But hey what can I say, that judge is in the same rank as Judge Folsom, both senior judges.

The reason I went to so much trouble to write about this is, I noticed in the TiVo v. E* hearing, the appeals court never asked E*’s attorney, why should we reverse the decision by an experienced judge (Judge Folsom) who sat through the contempt trial?

Instead Judge Rader asked the E* attorney, why didn’t E* appeal last time, had E* done so to clarify the issue, we could have “with a stroke of our pen” clarified it for you, and the implication was, the appeals court would not have been now forced to clean up the whole mass, in doing so likely will make one of their senior colleagues look bad.

It will not be a happy event, Judge Rader was probably annoyed by the fact he had the misfortune to be randomly selected to be on this panel, and will likely have to author a decision to disagree with Judge Folsom. Of course Judge Rader was not thrilled, of course he sounded rusty and mystified. Of course he slapped E* for not trying to clarify the issue last time. But if he is a good judge as we all heard how good he is, then his opening statement has to mean something:

“Infringing is all we can enjoin, of course!”

The above statement is unconditional and without exceptions. If any of you think that he would go against such unwavering principle as he so clearly stated at the opening, and punish E* with such a rarely used sanction called the contempt of the court, just because E* supposedly made a mistake of not try to clarify what that term “Infringing Products” really meant? Did it really mean the products that infringed, but not the products that no longer infringed?

Well then we are all doomed.


----------



## P Smith

In response to post#1528: Parties was dead wrong on that account, so would be nice you'll not parrot them blindly.
And "_The header was a 13-bit code_," - actually the header is include PID, ie 13-bit number and a few other flags.
FYI, there are DVB standards, include that base one ETSI EN 300 468. Take a look.


----------



## jacmyoung

P Smith said:


> Parties was dead wrong on that account, ...


Well how about we just throw out the whole case then?

BTW, below is the Medtronic decision I forgot to upload:


----------



## spear61

jacmyoung said:


> /..............The reason I went to so much trouble to write about this is, I noticed in the TiVo v. E* hearing, the appeals court never asked E*'s attorney, why should we reverse the decision by an experienced judge (Judge Folsom) who sat through the contempt trial?
> 
> Instead Judge Rader asked the E* attorney, why didn't E* appeal last time, had E* done so to clarify the issue, we could have "with a stroke of our pen" clarified it for you, and the implication was, the appeals court would not have been now forced to clean up the whole mass, in doing so likely will make one of their senior colleagues look bad.


Perhaps Jude Rader agrees with E and is of the opinion the devices are now non infringing, no longer covered by the lower court injunction, and there was no need to ask for clarification. His pointed questions drew out and established a record to that effect, if that is what he is thinking. When the meaning is not clear, the possible infringer gets the benefit of the doubt.
If so, he has established a written record for the final appeal to the highest court.


----------



## peak_reception

jacmyoung said:


> Mr. Waxman just talked over Judge Rader and went on and on about the "I love Lucy" show.


 I wish I'd watched an episode of 'I Love Lucy" instead of listening to that worthless CAFC hearing.


----------



## jacmyoung

It just occurred to me, today as I read Judge Folsom's order granting TiVo's request for the 4th delay of the attorney fees and costs filing, there has never been any settlement discussions between E* and TiVo at all.

These delay requests filed by TiVo are automatic. Because they all read the same, and Judge Folsom never even personally signed the orders, the clerk office stamped them because they are unopposed stipulations. The reason they pop up every two weeks is because the local rules only allow up to two weeks of extension for one extension request.

After Judge Folsom issued his sanction ruling on 9/4, both parties had agreed to shelve the sanction issue until the appeals court ruled. The problem was that Judge Folsom's ruling also ordered TiVo to file for resolution by 9/14 if the parties could not agree on the attorney fees and costs.

To stay in compliance with such order, the parties simply agreed on a stipulation, automatically filed by TiVo every two weeks so no one would risk any violation of such order, until such time the appeals court rules on the appeal. This is entirely a procedural matter.

Sorry for bursting the bubble.


----------



## jacmyoung

peak_reception said:


> I wish I'd watched an episode of 'I Love Lucy" instead of listening to that worthless CAFC hearing.


Easy for you to say, I'd rather I had watched "I love Lucy" instead of reading that worthless sanction ruling.


----------



## Greg Bimson

jacmyoung said:


> It will not be a happy event, Judge Rader was probably annoyed by the fact he had the misfortune to be randomly selected to be on this panel, and will likely have to author a decision to disagree with Judge Folsom. Of course Judge Rader was not thrilled, of course he sounded rusty and mystified. Of course he slapped E* for not trying to clarify the issue last time. But if he is a good judge as we all heard how good he is, then his opening statement has to mean something:
> 
> "Infringing is all we can enjoin, of course!"
> 
> The above statement is unconditional and without exceptions. If any of you think that he would go against such unwavering principle as he so clearly stated at the opening, and punish E* with such a rarely used sanction called the contempt of the court, just because E* supposedly made a mistake of not try to clarify what that term "Infringing Products" really meant? Did it really mean the products that infringed, but not the products that no longer infringed?


That's putting the cart before the horse.

First, there have been plenty of instances where a court not only enjoined infringement, but also enjoined manufacture, use and sale of parts that can make a product infringe. Therefore, infringement isn't all that can be enjoined.

Second, there is a ruling that the products still infringe, which makes the first part moot.

Third, it appears that just like Judge Folsom, Judge Rader was none too pleased with the "interpretation" (in quotes because that is a loose term) that there is some other meaning to "all DVR functionality", because Judge Rader twice said "ALL means ALL".

I can agree that if somehow DISH/SATS made DVR's originally adjudged as infringements into non-infringing products, then they would no longer be subject to injunction until such time those devices may infringe again. However, that does not give carte blanche to ignore the clear order to disable the subset of DVR's that were admitted before the court and found infringing.


----------



## jacmyoung

Greg Bimson said:


> That's putting the cart before the horse.
> 
> First, there have been plenty of instances where a court not only enjoined infringement, but also enjoined manufacture, use and sale of parts that can make a product infringe. Therefore, infringement isn't all that can be enjoined.


Show me when the court ever enjoined the use of non-infringing parts in order to use non-infringing products. Besides the issue of parts is not even relevant here.



> Second, there is a ruling that the products still infringe, which makes the first part moot.


Which makes the whole appeal moot, if that is what you are leading to. Why are we even here? What is the point of an appeal?



> Third, it appears that just like Judge Folsom, Judge Rader was none too pleased with the "interpretation" (in quotes because that is a loose term) that there is some other meaning to "all DVR functionality", because Judge Rader twice said "ALL means ALL".


He said the audio and video data were scrambled (i.e. could not be analyzed by the PID) three times too you know. Are you counting with your fingers?



> I can agree that if somehow DISH/SATS made DVR's originally adjudged as infringements into non-infringing products, then they would no longer be subject to injunction until such time those devices may infringe again. However, that does not give carte blanche to ignore the clear order to disable the subset of DVR's that were admitted before the court and found infringing.


Do you even realize your above two sentences are contradicting each other?

If E* made the original infringing products into non-infringing products [by the new design when the new software was downloaded], according to you, they would no longer be subject to the injunction. If they were no longer subject to the injunction then, how did anything else matter anymore?

Who cares whether they "ignored" anything or not? There was nothing there to be ignored, the non-infringing products simply were not subject to the injunction. You said so, not me.


----------



## Greg Bimson

jacmyoung said:


> Show me when the court ever enjoined the use of non-infringing parts in order to use non-infringing products.


Show me where there have been products declared as non-infringing. Cart before the horse.


jacmyoung said:


> He said the audio and video data were scrambled (i.e. could not be analyzed by the PID) three times too you know.


If data cannot be analyzed by the PID, then programming cannot be watched. I think you may need to redefine (as DISH/SATS has done) your statement.

Think about it. If data cannot be analyzed by the PID, then what must be done to create a viewable television program?


jacmyoung said:


> Do you even realize your above two sentences are contradicting each other?
> 
> If E* made the original infringing products into non-infringing products [by the new design when the new software was downloaded]...


Ahem...

The Court determined that eight models of DVR were infringements. DISH/SATS did something to them, but the ruling on those models still stands until another ruling is made. It is contradictory that by simply beaming down a change that the devices are removed from the scope of the injunction. Only the Court can do that.

DISH/SATS does not have the ability to get out of a court order by doing anything other than what the court order states. That is, unless DISH/SATS petitions the court for some kind of change. You know, like when Judge Folsom asked why he was not informed of a work-around. You know, like when Judge Rader asked why DISH/SATS did not appeal the injunction.


----------



## jacmyoung

Greg Bimson said:


> Show me where there have been products declared as non-infringing. Cart before the horse.


Are you serious? You want me to show you case after case where products were declared non-infringing?



> If data cannot be analyzed by the PID, then programming cannot be watched. I think you may need to redefine (as DISH/SATS has done) your statement.
> 
> Think about it. If data cannot be analyzed by the PID, then what must be done to create a viewable television program?


Well then you need to call Mr. Waxman, because he admitted if the channel was scrambled, the PID could not analyze the audio and video data in it.



> Ahem...
> 
> The Court determined that eight models of DVR were infringements...


And if the appeals court reverses that decision, the eight DVRs would be non-infringements when the new software was downloaded.


----------



## James Long

jacmyoung said:


> Show me when the court ever enjoined the use of non-infringing parts in order to use non-infringing products.


There was a case discussed in one of these threads where the sale of non-infringing repair parts was forbidden because it allowed people to continue to use an infringing product for a longer time. This forced the owners of the infringing products to move on to non-infringing products.


----------



## Curtis52

Greg Bimson said:


> First, there have been plenty of instances where a court not only enjoined infringement, but also enjoined manufacture, use and sale of parts that can make a product infringe. Therefore, infringement isn't all that can be enjoined.


Whoever makes or sells specialized parts for patented items are liable as infringers, can be found to infringe, and enjoined from infringement.


----------



## jacmyoung

Yes, only if the end products are infringing products, not if the end products are no longer infringing products. Besides, why the only things TiVo could possibly cite are related to the "parts" anyway?

The issue at hand in the injunction in this case has nothing to do with parts.


----------



## dgordo

jacmyoung said:


> Yes, only if the end products are infringing products, not if the end products are no longer infringing products. Besides, why the only things TiVo could possibly cite are related to the "parts" anyway?
> 
> The issue at hand in the injunction in this case has nothing to do with parts.


Isnt that one of tivo's arguments? The named devices were to have the dvr functionalities disabled and any non-infringing parts added to the named devices wouldn't make them non-infringing.


----------



## jacmyoung

dgordo said:


> Isnt that one of tivo's arguments? The named devices were to have the dvr functionalities disabled and any non-infringing parts added to the named devices wouldn't make them non-infringing.


Good point, I did not know TiVo had given up the "on the face" argument and TiVo had agreed with E* that if the modified DVRs still infringed, E* is in violation, otherwise if the modified DVRs no longer infringed, TiVo would concede.

But by listening to the audio, it did seem that way didn't it?

Still, this injunction never said anything like non-infringing parts were not to be added. Both cases Mr. Waxman cited had the specific provisions to destroy the "non-infringing parts". Instead this injunction said "infringing parts" were not to be added back, if you are implying that the "DVR functionalities, (i.e. All...)" were equivalent to the "parts" in those cases.


----------



## Zero327

The pages make my eyes burn!!! Someone make it stop!


----------



## jacmyoung

Below is the latest appeals court motion paper involving Medtronic. Recall earlier I mentioned a case which a judge determined Medtronic's law firm misled the judge and the jury in securing an infringement verdict against a defendant? I am not saying Mr. Waxman was part of that law firm though, since I have no idea.

This time the table is turned, Medtronic is the infringer. This time Mr. Waxman apparently failed to convince the motion panel (Judge Rader being the author) to stay the general provision of the injunction, pending appeal.

But the reason I am posting the link below is to demonstrate that the appeals court (or should I say Judge Rader?) does not "automatically" grant a stay of an injunction pending appeal:

http://www.cafc.uscourts.gov/motions/Orders/2009/2009-1538.11-6-09.1.PDF

It is really a small world, isn't it?


----------



## jacmyoung

So this is what I can understand from the news this morning.

E* reported a 240K net new sub gain, at the expense of a 12% profit drop, hardly a bad result.

At the same time after TiVo asked for $1B from E*, Charlie decided to borrow that $1B and just give it to the investors. Here is his finger to TiVo I guess.

E* also reported $358M legal cost, mainly to do with this TiVo fight. The thing the TiVo ladies need to understand is, if it cost E* this much, TiVo’s attorney fees and costs can not be much less.

And yet TiVo just easily given up the chance to recover that money, when Judge Folsom had already handed the money to TiVo, all Judge Folsom asked was, just tell me how much?

My advice to those TiVo investors is, ladies, wake up, you are trying to make a buck, not trying to find your future gentle husband.


----------



## Greg Bimson

jacmyoung said:


> Good point, I did not know TiVo had given up the "on the face" argument and TiVo had agreed with E* that if the modified DVRs still infringed, E* is in violation, otherwise if the modified DVRs no longer infringed, TiVo would concede.


I don't believe that argument had been "given up". Judge Rader certainly questioned both sides on that argument.


jacmyoung said:


> E* also reported $358M legal cost, mainly to do with this TiVo fight. The thing the TiVo ladies need to understand is, if it cost E* this much, TiVo's attorney fees and costs can not be much less.


Wouldn't the bond set-aside be included in that figure? That is, TiVo was awarded just over $100 million in additional ongoing infringement damages and another $200 million or so in contempt damages? Those dollars have to be placed in escrow during an appeal.


----------



## jacmyoung

Greg Bimson said:


> ...Wouldn't the bond set-aside be included in that figure? That is, TiVo was awarded just over $100 million in additional ongoing infringement damages and another $200 million or so in contempt damages? Those dollars have to be placed in escrow during an appeal.


I only read one analyst's report. If you subtract the $132 bound money, that is still $226M "attorney fees and costs" for the last quarter. Or if you say that number also includes the $103M they paid TiVo at the end of the last year (hard to believe), you are still looking at $123M legal fees.

I have asked this question several times, why didn't TiVo try to collect their attorney fees and costs, which should be close to what E* had incurred? Especially when you consider Judge Folsom had already awarded the money, and asked TiVo to just tell him how much the bill was.

E* is making its bill known, and it is a large one. If the appeals court overturns Judge Folsom's ruling, as I have explained before, E* can motion Judge Folsom to award E* the legal fees instead. Of course I don't think Charlie is expecting Judge Folsom to suddenly be kind to him, but if Judge Folsom denies the motion, you can see another appeal on the way.

The key here is to first win on appeal, and then try to convince Judge Folsom he was misled by TiVo. The Medtronic case I used earlier is a perfect example how such scenario had unfolded.


----------



## CuriousMark

P Smith said:


> No, did not listen to that oral debates - not interesting in twisting real determinated processes by technically incompetent lawyers.





peak_reception said:


> Not to mention the even more technically incompetent judge pretending to know what he was talking about  [PDI filters and all the rest]. You didn't miss much (though Jac will disagree).


I agree with both of you completely on this. This thread needs more common sense, even if we come down on opposite sides of some arguments.


----------



## scooper

CuriousMark said:


> I agree with both of you completely on this. This thread needs more common sense, even if we come down on opposite sides of some arguments.


The real problem is we're talking about 2 different worlds here -

The real world where all of us common people live

The "fictious world" of Patent law.

And patent law apparently has little to do with reality....


----------



## jacmyoung

scooper said:


> The real problem is we're talking about 2 different worlds here -
> 
> The real world where all of us common people live
> 
> The "fictious world" of Patent law.
> 
> And patent law apparently has little to do with reality....


You misunderstood what CuriousMark was saying. What he was saying was people with common sense like himself need to come here and talk more

For example, if you take a newspaper as an analogy, say it has the headlines (headers) and stories (payloads), the stories are not legible, so you can only read (parse) the headlines, afterwards you give the paper to the next guy, the next guy askes: "What's the story?"

What is your most natural response? Would the *common sense* response be: "Oh, I just read the headlines, I did not read (parse) the stories?"


----------



## Greg Bimson

jacmyoung said:


> For example, if you take a newspaper as an analogy, say it has the headlines (headers) and stories (payloads), the stories are not legible, so you can only read (parse) the headlines, afterwards you give the paper to the next guy, the next guy askes: "What's the story?"


If the stories (payloads) are not legible, then there is no video and audio data, and people are not watching (let alone trick-playing) television.

The actual analogy is if I give someone a newspaper and ask them to read the first story in the Sports section, they have to parse the newspaper to get to the first story and then read it.

They have to "parse (an article) from (a newspaper)". In order to get an actual programming stream, the PID filter will "parse video and audio data from said broadcast data".


----------



## Curtis52

The PID contains no audio or video data. The video PID code for the History Channel is 6946 on Echostar. The audio PID code is 6947. The PID codes don't change from program to program on the History Channel. That's because there is no audio or video data in the PID. A white screen has the same PID as a black screen. Loud audio has the same PID as soft audio. There is no audio or video data in the PID.


----------



## jacmyoung

Greg Bimson said:


> If the stories (payloads) are not legible, then there is no video and audio data, and people are not watching (let alone trick-playing) television...


"Not legible" as the stories are "encrypted". What you just trying to get familiar with the case there?

After the first guy reads the headlines, he circles the headlines and delivers the papers to the different departments, for example if the headline says "Business Section" he gives that section to the business department.

A guy/gal in the business department then uses a special ink to make the stories readable again, he/she will then give the business section to the analyst in the business department so the analyst can try to make a few worth-a-while comments on the business stories, then the next guy/gal picks up the comments and prints them out on the newsletters...

The first guy was the PID filter circuit, the next guy/gal was the decryption circuit, the "analyst" was the video and audio decoder circuit, the next guy/gal following the analyst was the display circuit. The end result is the newsletter subscribers, who pay big money each month for the letters, gets to read the best information in the newsletters without having to go through all the bits of information (a lot of it just garbage) in the newspaper.


----------



## CuriousMark

jacmyoung said:


> You misunderstood what CuriousMark was saying. What he was saying was people with common sense like himself need to come here and talk more


Please don't put words in my mouth that I did not state myself. I find it rude, and the smiley doesn't make it better.


----------



## jacmyoung

CuriousMark said:


> Please don't put words in my mouth that I did not state myself. I find it rude, and the smiley doesn't make it better.


You really hurt my feeling when you implied I lacked common sense, you know

It happens, especially when one stayed in the village for too long, as he steps out, he finds out it is a jungle out there.

Now give us your common sense for a change, you are pretty big on the PID thing.


----------



## jballard

I think that the firmware release last week which forced my Dish 211 receiver to do a nightly update and took away the option to override it was done to break interoperability between my Dish receiver and my TIVO recorder. I have written a letter to the DOJ to this effect. They could just as easily have put the receiver back into the mode it was in before the update and not broken interoperability. Instead they forced the receiver to go into standby mode EVERY night, even if you have configured the receiver to disable inactivity timeout. Very Vindictive!

Dish is only alienating its own customers who have both types of equipment.

P.S. I also wrote a letter to the TIVO attorney explaining this situation, maybe they can use it to get a little more contempt money from Dish.


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## HobbyTalk

Dang, I think I need that tin foil hat again.


----------



## jballard

It might sound like conspiracy theory but when you have called Dish Tech support for four days and spoken to two different tech support supervisors and they tell you that they are aware of the change in the firmware,they are aware of the problem that it causes for external recorders, they are aware that it could be fixed but have no plans to fix it. Their solution to the problem is for me to get rid of my TIVO and switch to a Dish DVR.

This sounds like coercion to me. Very anti-competitive! And Anti-competitive behavior is something that DOJ loves to hear about.


----------



## Jhon69

jballard said:


> It might sound like conspiracy theory but when you have called Dish Tech support for four days and spoken to two different tech support supervisors and they tell you that they are aware of the change in the firmware,they are aware of the problem that it causes for external recorders, they are aware that it could be fixed but have no plans to fix it. Their solution to the problem is for me to get rid of my TIVO and switch to a Dish DVR.
> 
> This sounds like coercion to me. Very anti-competitive! And Anti-competitive behavior is something that DOJ loves to hear about.


Have you operated a Dish DVR?.I don't have an agenda either way I only know what operates better by my standards.I have operated DirecTV's HR10-250(DirecTivo),R15 and R22(DirecTV's SD version of their HR2xs).I now operate a Dish 625 and out of all those DVRs the Dish DVR has the best technology.So I can understand where the Tivo's lawsuit is coming from now,another company comes out with a better operating system,but your company(Tivo) lives or dies by having the best DVR product so you sue hopeful you will prevail because some other company has designed a better system that is hurting the sale of your product.The courts don't need to be there to restrict competition but to let each system live and die by their own merits.


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## jballard

I understand that some people prefer the Dish DVR to the TIVO. I do not. You are probably not aware of some of the TIVO features which are better than Dish DVR. Have you used TIVO Desktop? 

All of my TIVOs are LAN connected, Anything recorded on one of my TIVOs can be viewed by any TIVO on the LAN. In addition, my wife and I both have TIVO Desktop installed on our laptops. When we travel we can download movies from our TIVO onto the harddrives of our laptops to watch while we travel. Or on to our iPhones.

I also have a server in the house which is running Windows Home Server 2008. It has 2 terabytes of hard drive. It also runs the Server side of TIVO desktop. Any movie or show that I want to keep long term gets downloaded onto this server. Movies on this server are available to any TIVO or PC on the LAN. I can expand the storage on this server at my convenience. In fact since we have VPN software installed on our laptops we have access to this server from any high speed Internet connection anywhere. Can Dish DVR do this?

The bottom line is that both are fine products with their unique features and I resent Dish trying to force me on to their platform. It should be my choice. I think that your statement about Dish being better is YOUR OPINION, not fact. If you think that competition should be free then how can you condone this behavior by Dish, it is very anti-competitive.

The courts will decide the validity of the patent infringement lawsuit as they should but that should have nothing to do with this anti-competitive behavior by Dish.


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## BNUMM

I was not aware that you could do all that with a Tivo. I am going to have to check them out. I am no longer a satellite subscriber so can you tell me which model would have an OTA tuner.


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## BNUMM

Never mind. I found it.


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## jacmyoung

jballard said:


> ...The courts will decide the validity of the patent infringement lawsuit as they should but that should have nothing to do with this anti-competitive behavior by Dish.


DirecTV does the same thing, they have switched so many DirecTiVo subs to their own DVRs it is not even funny.

I see you have always hated DISH going back many years, even though the only service you can get is DISH. What you should have done was to file a brief amicus curiae to the appeals court when DISH was seeking a stay of the injunction pending appeal back in 06/09

You could have cut through all the bureaucratic nonsense and possibly had convinced the appeals court to not stay the injunction, had you done so, you might already have been a 100% TiVo customer since TiVo would have bought DISH by now


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## Jhon69

jballard said:


> I understand that some people prefer the Dish DVR to the TIVO. I do not. You are probably not aware of some of the TIVO features which are better than Dish DVR. Have you used TIVO Desktop?
> 
> All of my TIVOs are LAN connected, Anything recorded on one of my TIVOs can be viewed by any TIVO on the LAN. In addition, my wife and I both have TIVO Desktop installed on our laptops. When we travel we can download movies from our TIVO onto the harddrives of our laptops to watch while we travel. Or on to our iPhones.
> 
> I also have a server in the house which is running Windows Home Server 2008. It has 2 terabytes of hard drive. It also runs the Server side of TIVO desktop. Any movie or show that I want to keep long term gets downloaded onto this server. Movies on this server are available to any TIVO or PC on the LAN. I can expand the storage on this server at my convenience. In fact since we have VPN software installed on our laptops we have access to this server from any high speed Internet connection anywhere. Can Dish DVR do this?
> 
> The bottom line is that both are fine products with their unique features and I resent Dish trying to force me on to their platform. It should be my choice. I think that your statement about Dish being better is YOUR OPINION, not fact. If you think that competition should be free then how can you condone this behavior by Dish, it is very anti-competitive.
> 
> The courts will decide the validity of the patent infringement lawsuit as they should but that should have nothing to do with this anti-competitive behavior by Dish.


I don't condone anything OK? If you have valid proof it should be reported as to does it matter? I have no idea hopefully you will get your problem solved.Good Luck!.


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## jballard

jacmyoung said:


> I see you have always hated DISH going back many years, even though the only service you can get is DISH. What you should have done was to file a brief amicus curiae to the appeals court when DISH was seeking a stay of the injunction pending appeal back in 06/09


You couldn't be more wrong! I don't hate Dish, I love Dish! AS A PROGRAMMING PROVIDER.

I have been a loyal Dish customer for over 10 years, I have 4 receivers and subscribe to almost all of their programming packages, America's Everything, Superstations, networks, HD, etc. I pay by autopay. I am one of their top customers, their customer support number tells me that every time I enter my phone numer.

I have also been a TIVO customer for 9 years and have 3 TIVOs. I love my TIVO DVRs. I had TIVOs connected to my Dish receivers long before Dish offered DVRs.

To me this seems just like the Microsoft Windows browser issue. Should you be forced to use Internet Explorer or should you also be allowed to use FireFox? Should I be forced to use Dish DVR or should I also be allowed to use TIVO?

I don't come to this forum very often. I usually try to resolve my problems with Dish tech support. The last time that I was on was for a similar situation. In that case Dish had updated the firmware in my Model 6000 receiver and broken the IR interface. Not only did my TIVO not work but all aftermarket smart remotes were broken. In that case also Dish initially claimed that it was not their problem. After much outcry from customers they eventually released firmware which fixed the problem. It took 6 weeks.

I have other choices for programming providers. I have two C-Band dishes, a 14.5 and a 12 foot which feed a 4DTV receiver. I also have a variety of Ku dishes, 2.4m, 1.4m and four 1m dishes for FTA. As well as three 1.8 meter dishes that I use for Dish Network. I could also switch to cable. I could also switch to DirecTV LA. I happen to think that Dish is the best.

I simply want Dish to stop putting my receivers into standby mode every night. Check for updates, no problem, but when you finish put my receiver back the way it was, not into standby mode.

I have been using Dish and TIVO for years, until last week when Dish broke the compatibility again. It seems funny that the firmware update which break TIVO compatibility comes just a few weeks after the $200 million judgement. Coincedence?


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## jacmyoung

jballard said:


> You couldn't be more wrong! I don't hate Dish, I love Dish! AS A PROGRAMMING PROVIDER.
> 
> I have been a loyal Dish customer for over 10 years, I have 4 receivers and subscribe to almost all of their programming packages, America's Everything, Superstations, networks, HD, etc. I pay by autopay. I am one of their top customers, their customer support number tells me that every time I enter my phone numer.
> 
> I have also been a TIVO customer for 9 years and have 3 TIVOs. I love my TIVO DVRs. I had TIVOs connected to my Dish receivers long before Dish offered DVRs.
> 
> To me this seems just like the Microsoft Windows browser issue. Should you be forced to use Internet Explorer or should you also be allowed to use FireFox? Should I be forced to use Dish DVR or should I also be allowed to use TIVO?
> 
> I don't come to this forum very often. I usually try to resolve my problems with Dish tech support. The last time that I was on was for a similar situation. In that case Dish had updated the firmware in my Model 6000 receiver and broken the IR interface. Not only did my TIVO not work but all aftermarket smart remotes were broken. In that case also Dish initially claimed that it was not their problem. After much outcry from customers they eventually released firmware which fixed the problem. It took 6 weeks.
> 
> I have other choices for programming providers. I have two C-Band dishes, a 14.5 and a 12 foot which feed a 4DTV receiver. I also have a variety of Ku dishes, 2.4m, 1.4m and four 1m dishes for FTA. As well as three 1.8 meter dishes that I use for Dish Network. I could also switch to cable. I could also switch to DirecTV LA. I happen to think that Dish is the best.
> 
> I simply want Dish to stop putting my receivers into standby mode every night. Check for updates, no problem, but when you finish put my receiver back the way it was, not into standby mode.
> 
> I have been using Dish and TIVO for years, until last week when Dish broke the compatibility again.


Do you realize if you try to file a complaint to the DOJ based on DISH's "anti-competitiveness" claim, your above post will have caused your complaint to be thrown out in an instant?

Be careful what you say

BTW, this thread is about a case titled TiVo. v. E*. The nature of this case is about TiVo asserting a limited monoplistic power in an attempt to eliminate competition by E*. TiVo is attempting to ask the court to prohibit E* from using E*'s own products to perform TiVo-like DVR functions.

Therefore had you had any clue what this thread is about, you would have realized what happened to you, if it were some kind of a plan like you have assumed, then it would be TiVo which had insisted on such a plan.

You should write the TiVo attorney another letter asking them to drop this case, that will be a good start in solving your problem.


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## jballard

Funny you say that, it didn't work for Microsoft. You could always have purchased an Apple computer or a Linux system. The DOJ doesn't like bundling and that is what Dish is doing with their DVR to the exclusion of competition.

Before the moderator cuts me off here like he did on the other thread with the statement "We have talked about this enough. You have been offered a solution to fix your problem but you don't like it."

The only solution that has been offered is to set a timer to wake the receiver up after the nightly update puts the receiver into standby. So that means that if the nightly update occurs at 3:30 I can set a timer for 4:00 to wake up right? Wrong! The update does not always occur on time and occasionally takes more than 30 minutes. My experience is that it works about half the time. The rest of the time the update is still in progress and the timer does not work. So you move the timer to 4:30, this works better.

But this means that for 1 hour every day you cannot record to your DVR. Whether or not an update actually occurs. From 3:30 until 4:30 every day the receiver is unavailable. 

Would Dish DVR customers be happy with this? You are only allowed to schedule programming for 23 hours out of the day? Dish DVR does not have this restriction and TIVO didn't until last week. And the sad part is that it would be easy to fix. Dish is just not yet motivated to do so.


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## jacmyoung

jballard said:


> Funny you say that, it didn't work for Microsoft. You could always have purchased an Apple computer or a Linux system.
> 
> Before the moderator cuts me off here like he did on the other thread with the statement "We have talked about this enough. You have been offered a solution to fix your problem but you don't like it."
> 
> The only solution that has been offered is to set a timer to wake the receiver up after the nightly update puts the receiver into standby. So that means that if the nightly update occurs at 3:30 I can set a timer for 4:00 to wake up right? Wrong! The update does not always occur on time and occasionally takes more than 30 minutes. My experience is that it works about half the time. The rest of the time the update is still in progress and the timer does not work. So you move the timer to 4:30, this works better.
> 
> But this means that for 1 hour every day you cannot record to your DVR. Whether or not an update actually occurs. From 3:30 until 4:30 every day the receiver is unavailable.
> 
> Would Dish DVR customers be happy with this? You are only allowed to schedule programming for 23 hours out of the day? Dish DVR does not have this restriction and TIVO didn't until last week. And the sad part is that it would be easy to fix. Dish is just not yet motivated to do so.


I have added some more information for your benefit, please read my above post again, I hope after reading it, you will agree to stop whining before anyone tries to "cut you off" again.


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## jballard

jacmyoung said:


> BTW, this thread is about a case titled TiVo. v. E*. The nature of this case is about TiVo asserting a limited monoplistic power in an attempt to eliminate competition by E*. TiVo is attempting to ask the court to prohibit E* from using E*'s own products to perform TiVo-like DVR functions.
> 
> Therefore had you had any clue what this thread is about, you would have realized what happened to you, if it were some kind of a plan like you have assumed, then it would be TiVo which had insisted on such a plan.
> 
> You should write the TiVo attorney another letter asking them to drop this case, that will be a good start in solving your problem.


Excuse me! I thought this case was about E* infringing on TIVOs patents. And I though that the courts have sided with TIVO so far to the tune of almost $400 million.

Just out of curiosity, I do not work for either Dish or TIVO, I do not own stock in either company and I have no affiliation with either company except as a customer of both. How about you? Just like to know who I am talkng to.


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## jacmyoung

jballard said:


> Excuse me! I thought this case was about E* infringing on TIVOs patents. And I though that the courts have sided with TIVO so far to the tune of almost $400 million.


Yes, and you are the first "victim" of the "disabled DVR" arrangement, you can thank TiVo for that. You are barking on the wrong tree.

It is TiVo which wanted this to happen, to disable any and all DVR functions associated with DISH's products. You had been trying to use DISH's products to perform TiVo-like DVR functions, shame on you, and you are writing to TiVo to complain?

TiVo will be so happy to know you are the first example of TiVo's injunction actually working


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## P Smith

This time jac you're out of base - that bug have nothing common with TiVo patent and Dish violations. It's a problem with any receivers not just DVR. Yeah, man !


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## jballard

jacmyoung said:


> Yes, and you are the first "victim" of the "disabled DVR" arrangement, you can thank TiVo for that. You are barking on the wrong tree.
> 
> It is TiVo which wanted this to happen, to disable any and all DVR functions associated with DISH's products. You had been trying to use DISH's products to perform TiVo-like DVR functions, shame on you, and you are writing to TiVo to complain?
> 
> TiVo will be so happy to know you are the first example of TiVo's injunction actually working


What are you talking about? "Using DISH's products to perform Tivo-like functions".

I use my Dish receiver to receive Dish programming which I pay for, and I use a TIVO recorder to record programming which I pay for.

You didn't answer my last question.

Just out of curiosity, I do not work for either Dish or TIVO, I do not own stock in either company and I have no affiliation with either company except as a customer of both. How about you? Just like to know who I am talkng to.


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## jacmyoung

jballard said:


> What are you talking about? "Using DISH's products to perform Tivo-like functions".
> 
> I use my Dish receiver to receive Dish programming which I pay for, and I use a TIVO recorder to record programming which I pay for.
> 
> You didn't answer my last question.
> 
> Just out of curiosity, I do not work for either Dish or TIVO, I do not own stock in either company and I have no affiliation with either company except as a customer of both. How about you? Just like to know who I am talkng to.


Me neither, what is your point?

When you use DISH products to achieve the TiVo DVR functions, who cares how you do it? TiVo wants any DVR capabilities associated with DISH products to stop. You are the first victim, face it!


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## jballard

jacmyoung said:


> When you use DISH products to achieve the TiVo DVR functions, who cares how you do it? TiVo wants any DVR capabilities associated with DISH products to stop. You are the first victim, face it!


My understanding is that they only want those illegal DVR functions which infringe their patents to stop. A Tivo DVR does not infringe on their patents, I purchased my legal DVR from Tivo and I pay them a monthly fee? How about you? Do you pay Tivo to use their Intellectual Property?

My point is, do you have a financial interest in the outcome of this lawsuit?


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## jacmyoung

jballard said:


> My understanding is that they only want those illegal DVR functions which infringe their patents to stop. A Tivo DVR does not infringe on their patents, I purchased my legal DVR from Tivo and I pay them a monthly fee? How about you? Do you pay Tivo to use their Intellectual Property?
> 
> My point is, do you have a financial interest in the outcome of this lawsuit?


My understanding is TiVo's software claims are invalid, their software claims are "stolen" from prior inventors.

Your understanding, or my understanding, your background, or my background, make absolutely no difference whether your sorry TiVo boxes are working or not.

If E* today declares no TiVo boxes shall work with E*'s receivers, that is their right to do so (not that I am saying they are doing so), there is nothing "anti-competitive" about it. All businesses have the right to refuse certain service. Eat it.


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## jballard

jacmyoung said:


> My understanding is TiVo's software claims are invalid, their software claims are "stolen" from prior inventors.
> 
> Your understanding, or my understanding, your background, or my background, make absolutely no difference whether your sorry TiVo boxes are working or not.
> 
> If E* today declares no TiVo boxes shall work with E*'s receivers, that is their right to do so (not that I am saying they are doing so), there is nothing "anti-competitive" about it. All businesses have the right to refuse certain service. Eat it.


Now I understand. You are not worth talking to. Good Night, and grow up!


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## jacmyoung

jballard said:


> Now I understand. You are not worth talking to. Good Night, and grow up!


You understood nothing, you did not even know where to post your complaint. You are in the wrong thread.

Let me repeat, if today E* declares no TiVo boxes shall be able to work with their receivers, it is their right to do so.

If TiVo today declares none of their TiVo boxes can work with E* receivers, it is their right to do so too. No one is sorry for you.


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## deaincaelo

jballard said:


> I think that the firmware release last week which forced my Dish 211 receiver to do a nightly update and took away the option to override it was done to break interoperability between my Dish receiver and my TIVO recorder.


As has been explained to you in your locked thread, you are wrong. The firmware update prevents people like my and many people's parents and grandparents from breaking the system.

There is built in functionality that will allow your tivo to work with the receiver even with this new functionality. You have been given several ways of restoring functionality, and declined further help when it didn't work right away. The slight inconvenience to your optional third party equipment, which has not been broken by dish and should not be supported by dish, does not outweigh the many more numerous people that would suffer service loss beyond their cognitive and technical abilities to fix.


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## deaincaelo

jballard said:


> The only solution that has been offered is to set a timer to wake the receiver up after the nightly update puts the receiver into standby. So that means that if the nightly update occurs at 3:30 I can set a timer for 4:00 to wake up right? Wrong! The update does not always occur on time and occasionally takes more than 30 minutes. My experience is that it works about half the time. The rest of the time the update is still in progress and the timer does not work. So you move the timer to 4:30, this works better.
> 
> But this means that for 1 hour every day you cannot record to your DVR. Whether or not an update actually occurs. From 3:30 until 4:30 every day the receiver is unavailable.
> 
> Would Dish DVR customers be happy with this? You are only allowed to schedule programming for 23 hours out of the day? Dish DVR does not have this restriction and TIVO didn't until last week. And the sad part is that it would be easy to fix. Dish is just not yet motivated to do so.


Update requirements are no different with dish DVR's, as you should know if you've ever used one. Additionally, powering on necessary equipment is rightly a requirement of your recording device.


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## deaincaelo

jballard said:


> My understanding is that they only want those illegal DVR functions which infringe their patents to stop. A Tivo DVR does not infringe on their patents, I purchased my legal DVR from Tivo and I pay them a monthly fee? How about you? Do you pay Tivo to use their Intellectual Property?
> 
> My point is, do you have a financial interest in the outcome of this lawsuit?


Not all interests are financial. Right now, with terms as defined by the court, a plain reading of Tivo's patent includes all devices that can record TV. A betamax player, for example, would be infringing. As a geek who likes to play around with old devices and a citizen, I have a great interest in weather or not the law allows private individuals and companies to quire the rights to public domain IP.

Some people agree with the court. Some, such as me, don't. None of this has anything to do with your issue.


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## dgordo

deaincaelo said:


> Right now, with terms as defined by the court, a plain reading of Tivo's patent includes all devices that can record TV. A betamax player, for example, would be infringing.


No matter how many times you make this claim it is still wrong.


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## jballard

deaincaelo said:


> There is built in functionality that will allow your tivo to work with the receiver even with this new functionality. You have been given several ways of restoring functionality, and declined further help when it didn't work right away.


This is simply not true. No one has offered a solution which restores functionality to what it was prior to this firmware release.

People have never explained why Dish could not have put the receiver back into its previous state instead of forcing it into standby following an update even though I have inactivity timeout standby disabled.



deaincaelo said:


> .... optional third party equipment, which has not been broken by dish and should not be supported by dish, does not outweigh the many more numerous people that would suffer service loss beyond their cognitive and technical abilities to fix.


By optional third party equipment I guess you mean as opposed to the illegal, patent infringing internal equipment?

Don't you get it? They have given their internal DVR an artifical advantage. This is exactly like Microsoft selling software which has special hooks into the operating system that only their software can take advantage of. The DOJ didn't like that and they probably will not like Dish's little games either.


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## jacmyoung

Curtis52 said:


> Freedom can be scary. Companies should be free to sell products and services that earn them profits in any legal manner. Other companies should be free to compete. Consumers should be free to choose. Nanny government is anti-consumer. The marketplace is King.


You are wasting your time, this guy does not even understand what "anti-competitive" means.

When DISH decides to remove/disable a function (if he is even correct), they have made themselves less competitive. And yet he is writting to DOJ accusing DISH of "anti-competition".

It is no wonder a lot of our tax money are wasted.


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## jacmyoung

jballard said:


> ...Don't you get it? ...


Do you?

Microsoft had a virtual monopoly in the PC OS market. DISH does not have a monopoly in the TV market.

As you said so yourself, you can easily switch to cable or DirecTV or some other means, to get your standalone TiVo boxes to work again. Dish will have lost your business as a result of their lack of ability to work with your TiVo boxes.

Do you get it now?


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## jballard

So do you not like patent law in general or is this one just inconvienent for you? I guess when they shut down the Dish DVRs you will be whining about how unfair it is.


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## BobaBird

This thread is about the specific patent(s) for which TiVo got a court in Marshall TX to agree that Dish infringed, and more specifically about the appeal of the contempt finding. It is not about the patent system in general and definitely not about Dish's non-DVR receivers.
:backtotop


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## scooper

BobaBird said:


> This thread is about the specific patent(s) for which TiVo got a court in Marshall TX to agree that Dish infringed, and more specifically about the appeal of the contempt finding. It is not about the patent system in general and definitely not about Dish's non-DVR receivers.
> :backtotop


And it's certainly not about one person's problems with integrating Tivo and Dish receivers.

:backtotop :backtotop


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## jacmyoung

jballard said:


> ...I guess when they shut down the Dish DVRs you will be whining about how unfair it is.


You guessed wrong. You are the one who is whining here.

If the modified E* DVRs still are infringing on TiVo's patent, they should be shut down, because our patent law says so.

But if the modified DVRs no longer infringe, there is absolutely no way and no how our court can shut down those DVRs, period.


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## jballard

I will explain to you why I think this interoperability problem is related to the TIVO vs Dish case.

This lawsuit has been going on for some time. There have been many appeals. The courts have ruled in Tivos favor. The Supreme Court recently declined to hear Dish's appeal. This means that Dish's hope rides on the re-examinaton of Tivo's patent. Tivo's patent has been re-examined before and the courts ruled in Tivos favor. The last contempt award to Tivo was because the courts did not feel that Dish's re-written firmware no longer infringed on Tivos patents. All of Dish's hopes ride on the next re-examination of Tivo's patents.

I am a former software development manager for Microsoft. We did not feel that we were a monopoly either. Customers could always have chosen an Apple Computer or a Linux computer or a Sun Workstation or a DEC minicomputer. We felt that customers chose Microsoft because it was better. The DOJ differed. They felt that Microsoft was engaging in predatory marketing practices by offering deep discounts to computer manufacturers for pre-loading windows and only windows on their computers.

Predatory Marketing practices is what got Microsoft into trouble.

Now look at Dish. Until last week my Tivo recorder was functioning perfectly. Dish introduced a firmware change to their Stand-alone receivers which broke the interoperability between them and a Tivo recorder. They suggested a work-around but told me that they did not intend to change the behavior of the receiver to fix the problem. The workaround does not restore full functionality only partial. They could just as easily have restored the receiver to its previous state following the update.

The long term solution suggested to me by Dish was to convert to one of their inferior internal DVRs. I explained that I was happy with my Tivo and did not want to switch I only wanted my Tivo to work the way it did last week. They told me that if that was what I wanted then they had no solution for me.

This sounds like predatory marketing practices to me. The DOJ considers this very anti-competative.

I am a Dish customer. I want their programming. I just do not want their DVR. I consider the Tivo DVR superior for my needs as I have explained earlier. They seem to be unwilling to separate their Programming business from their DVR business. This is bundling and is another thing which got Microsoft into trouble. I think that it is unfair for them to break my Tivo interoperability unneccessarily and then try to cross sell me a Dish DVR.

It seems like a major coincedence that this firmware change which broke the interoperability came just a couple of weeks after the supreme court declined to hear Dish's appeal and they were forced to play Tivo $200 million.

If it was unintentional then why won't they simply release firmware which puts the stand-alone receiver back into active mode following checking for updates. I never want my receiver to go into standby unneccessarily.


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## HobbyTalk

And IF they did, so what? It is their right to do so and is in no way illegal. It is done all the time by a number of companies (disabling unauthorized 3rd party apps/equipment).


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## jacmyoung

jballard said:


> ...Predatory Marketing practices is what got Microsoft into trouble...


Not if Microsoft only had 10% of the market share and the customers can have two or three other providers to switch to without any hassle.

Ask any PC users to switch to another OS system you have mentioned above, they will not be able to work with their PCs.

If E* had cornered the pay-TV market by 90% market share, then you bet the DOJ should knock on its door if they use predatory marketing practice. Have you ever wondered why the FCC has a lot more regulations for the big cable companies?

BTW, Microsoft Windows has never been the better OS system in my memory, but I am forced to use it because my employer use it and they insist I use it too.


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## peak_reception

jballard said:


> I have been a loyal Dish customer for over 10 years, I have 4 receivers and subscribe to almost all of their programming packages, America's Everything, Superstations, networks, HD, etc. I pay by autopay. I am one of their top customers, their customer support number tells me that every time I enter my phone numer.


 If you really want to get their attention, or, failing that, punish them for the change(s) they made, then terminate your service with them and tell them exactly why you're doing it. The DOJ is not going to care one way or the other I guarantee that.


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## jacmyoung

peak_reception said:


> If you really want to get their attention, or, failing that, punish them for the change(s) they made, then terminate your service with them and tell them exactly why you're doing it. The DOJ is not going to care one way or the other I guarantee that.


He did imply he wanted some special programming from E*. Many had offered suggestions too.

If E* did do this to try to convert a few TiVo standalones, I can't blame them. I don't know if there was any promise the E* receivers would work with TiVo standalones.


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## jballard

I want Dish programming, they offer the best channel lineup in my area. I just don't want to have their DVR forced on me. I like my Tivo, I just want it to work the way it did two weeks ago.
You might be right about DOJ. I guess I'll forward the info on to CNN and FoxNews and maybe NYT and WSJ. Somebody might care. Maybe it's a slow news day.


----------



## jacmyoung

jballard said:


> I want Dish programming, they offer the best channel lineup in my area. I just don't want to have their DVR forced on me. I like my Tivo, I just want it to work the way it did two weeks ago.
> You might be right about DOJ. I guess I'll forward the info on to CNN and FoxNews and maybe NYT and WSJ. Somebody might care. Maybe it's a slow news day.


Since you said you would write to the TiVo's attorney too, I have suggested you ask the TiVo attorney to advise TiVo to drop the case against E*. I think such good gesture will be the most effective way to get your E* receivers to work with your TiVo boxes again

But if you must write to those news outlets, don't forget to also write to that CNBC stock analyst/reporter. A few weeks ago, with his single comment on the CNBC show, TiVo moved up by nearly 9% while his account made a nice profit, although the following week TiVo dropped back down after his speculation fell flat on the face, at least you know that guy holds a lot of influence. He might just be the best person to talk to


----------



## jballard

jacmyoung said:


> Since you said you would write to the TiVo's attorney too, I have suggested you ask the TiVo attorney to advise TiVo to drop the case against E*. I think such good gesture will be the most effective way to get your E* receivers to work with your TiVo boxes again
> 
> But if you must write to those news outlets, don't forget to also write to that CNBC stock analyst/reporter. A few weeks ago, with his single comment on the CNBC show, TiVo moved up by nearly 9% while his account made a nice profit, although the following week TiVo dropped back down after his speculation fell flat on the face, at least you know that guy holds a lot of influence. He might just be the best person to talk to


I did write to Tivo's attorney. But I don't see why I would want them to drop their lawsuit. For me the best outcome would be for Tivo to prevail and Dish be forced to pay royalties to Tivo. That would help ensure that the company whose DVR I like best continues to be financially viable.

As far as influencing the stock price, that does not interest me. I did notice on another site that someone had written a letter to the SEC accusing you of trying to influence the stock price by releasing false information about the lawsuit in an attempt to negatively influence TIVO stock.


----------



## jacmyoung

jballard said:


> I did write to Tivo's attorney. But I don't see why I would want them to drop their lawsuit. For me the best outcome would be for Tivo to prevail and Dish be forced to pay royalties to Tivo. That would help ensure that the company whose DVR I like best continues to be financially viable.
> 
> As far as influencing the stock price, that does not interest me. I did notice on another site that someone had written a letter to the SEC accusing you of trying to influence the stock price by releasing false information about the lawsuit in an attempt to negatively influence TIVO stock.


You did not see my  did you?

It is people like you and him, losely called the "TiVo pumpers", who time after time surprise us by providing endless supply of laughing materials for our entertainment.

Are you prepared to wait another 4 years for your TiVo boxes to work again, if you are even lucky it might happen?


----------



## Shades228

I bet a "fix" comes out if/when the DirecTV Tivo launches. People who haven't migrated to a Dish DVR at that point would be more willing to leave than to give up their Tivo.


----------



## jacmyoung

Shades228 said:


> I bet a "fix" comes out if/when the DirecTV Tivo launches. People who haven't migrated to a Dish DVR at that point would be more willing to leave than to give up their Tivo.


Nothing is stopping him from leaving now. His TiVo boxes should work with DirecTV receivers.

As far as the new DirecTiVo DVR, I know I have made a few enemies out of my fellow DirecTV subscribers over there at the DirecTV forum (damn those TiVo lovers are really sensitive bunch no matter where they are), but I am still saying, don't hold your breath for that to happen soon, even if it happens, don't expect it to have much traction.

The agreement calls for a "significantly higher" monthly fee to use the new DirecTiVo DVR. The latest DirecTV CE program has made their HR series of HD DVRs more pleasant to use, with surprisingly solid MRV, DB and other features you can enjoy already.

TiVo just slashed the prices on their own HD DVRs. I will not be surprised if they put out some bad quarterly numbers next week. DirecTV will not be there to the rescue. TiVo can really use some help from Charlie.

But as I said before, making a deal Charlie cannot refuse is a very tall order to fill.


----------



## jballard

jacmyoung said:


> It is people like you and him, losely called the "TiVo pumpers", who time after time surprise us by providing endless supply of laughing materials for our entertainment.


I guess that means that people like you who are always putting Tivo down can loosely be called "Tivo Poopers"?  That makes me laugh.


----------



## deaincaelo

dgordo said:


> No matter how many times you make this claim it is still wrong.


I'm interested in your reasoning why Betamax, digital VCRs, HTPC's, and the like use a different process than TIVO. (while E* receivers with the new software use the same process)


----------



## jacmyoung

jballard said:


> I guess that means that people like you who are always putting Tivo down can loosely be called "Tivo Poopers"?  That makes me laugh.


Great, make a joke then laugh at your own joke, just great.

Notice we are laughing at the kind of materials the "TiVo pumpers" supply to us on a regular basis, we don't have to make a joke ourselves.

BTW, you cannot have a "TiVo pooper" because there ain't no party at TiVo these days. TiVo just slashed their prices in order to try to move their products that they cannot sell.



deaincaelo said:


> I'm interested in your reasoning why Betamax, digital VCRs, HTPC's, and the like use a different process than TIVO. (while E* receivers with the new software use the same process)


I don't know about HTPCs, but VCRs do not use "start code detection and indexing method", therefore they use different processes than the TiVo's.

Likewise, the E* new software does not use "start code detection and indexing" so it is also different than the TiVo's. Just ask the PTO examiners.


----------



## Jhon69

jacmyoung said:


> Nothing is stopping him from leaving now. His TiVo boxes should work with DirecTV receivers.
> 
> As far as the new DirecTiVo DVR, I know I have made a few enemies out of my fellow DirecTV subscribers over there at the DirecTV forum (damn those TiVo lovers are really sensitive bunch no matter where they are), but I am still saying, don't hold your breath for that to happen soon, even if it happens, don't expect it to have much traction.
> 
> The agreement calls for a "significantly higher" monthly fee to use the new DirecTiVo DVR. The latest DirecTV CE program has made their HR series of HD DVRs more pleasant to use, with surprisingly solid MRV, DB and other features you can enjoy already.
> 
> TiVo just slashed the prices on their own HD DVRs. I will not be surprised if they put out some bad quarterly numbers next week. DirecTV will not be there to the rescue. TiVo can really use some help from Charlie.
> 
> But as I said before, making a deal Charlie cannot refuse is a very tall order to fill.


Tivo needs more help from the courts to achieve a monopoly in the DVR marketplace.


----------



## jacmyoung

Jhon69 said:


> Tivo needs more help from the courts to achieve a monopoly in the DVR marketplace.


No, TiVo knew very well they couldn't have a monopoly in the DVR market, they just wanted DVR makers to give them a small cut. They picked one of them to show what could happen if they did not agree to pay. Normally it should have worked.

Except they picked the wrong guy. That is all there is to it.


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## jacmyoung

Do you guys know what I really want to see?

I’d like to see E* quickly wrap up the beta test for the second round of the design around, and ask Judge Folsom to approve it for national implementation ASAP.

Wouldn’t it be fun to see how Judge Folsom and TiVo react to that?


----------



## harsh

jacmyoung said:


> The agreement calls for a "significantly higher" monthly fee to use the new DirecTiVo DVR.


What "agreement" is that?

From what I understand of the current deal, $2/month would be a significantly higher fee.


----------



## Curtis52

http://finance.yahoo.com/news/EchoStar-CEO-Charles-Ergen-apf-1019024337.html?x=0&.v=1

*EchoStar CEO Charles Ergen steps down from position, succeeded by board member Michael Dugan*

ENGLEWOOD, Colo. (AP) -- EchoStar Corp. said Wednesday that President and CEO Charles Ergen has stepped down from those posts and is being succeeded by board member Michael T. Dugan.

Ergen will stay on as the satellite service and TV equipment company's chairman and also serves as CEO of Dish Network Corp.

Dugan served as EchoStar's president and chief operating officer from 1990 to 2004, which was prior to its separation from Dish Network in January 2008.


----------



## jacmyoung

harsh said:


> What "agreement" is that?
> 
> From what I understand of the current deal, $2/month would be a significantly higher fee.


Of course. Why would any DirecTV subs want to pay a significantly higher fee when their HR DVRs are making all the nice improvement already?


----------



## jacmyoung

Curtis52 said:


> http://finance.yahoo.com/news/EchoStar-CEO-Charles-Ergen-apf-1019024337.html?x=0&.v=1
> 
> *EchoStar CEO Charles Ergen steps down from position, succeeded by board member Michael Dugan*
> 
> ENGLEWOOD, Colo. (AP) -- EchoStar Corp. said Wednesday that President and CEO Charles Ergen has stepped down from those posts and is being succeeded by board member Michael T. Dugan.
> 
> Ergen will stay on as the satellite service and TV equipment company's chairman and also serves as CEO of Dish Network Corp.
> 
> Dugan served as EchoStar's president and chief operating officer from 1990 to 2004, which was prior to its separation from Dish Network in January 2008.


What happened? The E* stockholders mad at Charlie for not giving them a special $2 dividend?


----------



## deaincaelo

jacmyoung said:


> I don't know about HTPCs, but VCRs do not use "start code detection and indexing method", therefore they use different processes than the TiVo's.
> 
> Likewise, the E* new software does not use "start code detection and indexing" so it is also different than the TiVo's. Just ask the PTO examiners.


but none of that is in the standing claim. The only things in the claim are input, source, transform, sink, control, output, and buffers (am I missing one?)


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## jacmyoung

deaincaelo said:


> but none of that is in the standing claim. The only things in the claim are input, source, transform, sink, control, output, and buffers (am I missing one?)


You are missing the patent specification and the PTO prosecution history of the patent. The same mistake made by Judge Folsom


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## jacmyoung

TiVo filed another request to Judge Folsom to delay the filing of the attorney fees and costs. If only I can get a nickle every time TiVo files this thing every two weeks...


----------



## jacmyoung

Now here is something interesting, in one of the most recent orders, this is what the appeals court said about Judge Folsom:



> The court holds that the district court [Judge Folsom] clearly abused its discretion in denying petitioners' motion to transfer venue pursuant to 28 U.S.C. § 1404(a). Accordingly, we grant petitioner's petition for a writ of mandamus.


http://www.cafc.uscourts.gov/opinions/09-M911.pdf

Keep in mind a petition for a writ of mandamus is rarely granted, the petitioner has to prove the judge did something so erroneous and unreasonable.


----------



## harsh

Note that the above post seems to have little to do with the TiVo .vs. Echostar/DISH case other than having the same judge and a similar petition.


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## jacmyoung

harsh said:


> Note that the above post seems to have little to do with the TiVo .vs. Echostar/DISH case other than having the same judge and a similar petition.


Wrong, the petitions are no where "similar"

Do TiVo people always need baby steps to explain everything to them?


----------



## Curtis0620

jacmyoung said:


> *Wrong, the petitions are no where "similar"*
> 
> Do TiVo people always need baby steps to explain everything to them?


Then why post this?


----------



## jacmyoung

Curtis0620 said:


> Then why post this?


You just proved my point.

But I am tired of baby sitting TiVo folks.


----------



## HobbyTalk

Curtis0620 said:


> Then why post this?


Maybe because the Judge in the TiVo case was shown to have abused his discretion in another case he also could have done so in the TiVo case?


----------



## James Long

Looks like Jac has nothing better to post than an attack on the judge in general?

Please, restrict your posts to the case at hand. Thanks!


----------



## jacmyoung

James Long said:


> Looks like Jac has nothing better to post than an attack on the judge in general?
> 
> Please, restrict your posts to the case at hand. Thanks!


Please do not get me started on this one.

Time after time one of the main arguments from TiVo was well we have this well respected judge, not only was he a senior judge, but also recently elevated to the Chief Judge status. Judge Folsom's decision and contempt ruling were well thought out. More over, Judge Folsom "did not clearly abuse his discretion", as Mr. Waxman argued time after time in front of the appeals court during the hearing. At least in the end he realized such statement did not sound too convincing, he added, not only did the judge not clearly abuse his discretion, but in fact he was right!

The link above, which was an order issued by the appeals court today, clearly points out not only Judge Folsom is capable of abuse of discretion, but his decision can be "patently erroneous" as the appeals court stated.

I am certainly not saying he has committed the same abuse in TiVo v. E*, only to show TiVo that the status of the judge is irrelevant in determining the merits of the argument. Though if the appeals court finds Judge Folsom clearly abused his discretion in this TiVo v. E* case, I will not be surprised at all.


----------



## James Long

jacmyoung said:


> The link above, which was an order issued by the appeals court today, clearly points out not only Judge Folsom is capable of abuse of discretion, but his decision can be "patently erroneous" as the appeals court stated.


Point made ... now stick with the topic of this thread: Tivo vs Echostar.
:backtotop


----------



## jacmyoung

As usual, TiVo filed its request to extend the filing of attorney fees and costs by two weeks, however this time there is one big difference.

Today parties actually have reached an agreement with regard to how much the attorney fees and costs in principle!

Two weeks from now, we may fine out (unless it is sealed) how much those costs are, that is if the appeals court has not yet ruled.


----------



## jacmyoung

On a second thought, the filing did not really say they have reached an agreement on how much the attorney fees and costs, only that an agreement has been reached in principle.

It could be that they could not agree on the costs, therefore they have agreed to let Judge Folsom settle the costs. Or some other form of agreement.

However, it is possible that the parties have received the word that the appeals court had reached a decision and will issue it soon, if so there is no reason to continue to delay the last remaining issue further. Pure speculation of course.


----------



## jacmyoung

Below is a link to one of the most recent appeals court rulings which demonstrates a shifting view that offers greater protection for the companies when they might be faced with potential infringement litigation threat:

http://www.cafc.uscourts.gov/opinions/09-1283.pdf

It has to do with the application of the declaratory judgment suit in patent cases. As many readers are aware that E* filed a declaratory judgment suit in the DE court after E* learned TiVo was moving forward with the contempt proceeding in 5/08.

TiVo immediately tried to dismiss the E* DE case, in the end the dismissal request was denied but the case was transferred to Judge Folsom.

In the above case, Acceleron is a known patent troll, they informed HP of one of their patents in an attempt to extract license fees from HP but did in a way to carefully avoid being sued by HP in a declaratory judgment lawsuit. So careful that the DE court agreed, though with some reluctance, that the HP DJ suit should be dismissed.

But the appeals court reversed the DE court decision. While the appeals court has made a point of the fact the DE court decision was well thought out, they still reversed the DE court decision because the appeals court said the time has changed, the standard should also change.

What has changed is that now a company faced with any potential threat of an infringement lawsuit, can take the initiative to file a declaratory judgment suit against a patent owner even if there is no clear perceived threat of an infringement suit by the patent owner.

As long as a patent owner tries to contact the company while mentioning its patent, the company can fight back in court without the patent owner even has the chance to file his own infringement suit.

If one has read my posts from some time back, we should know this all basically started in that little Texas town where Judge Folsom is now. This Texas court had provided the venue for all patentees to assert their patent rights, and had become the forum of choice for them because the local juries had the reputation of siding with the patentees.

But the wind is shifting, hopefully for a more balanced approach in the future. In this particular case, there is no doubt if the appeals court had upheld the DE court ruling, Acceleron would have filed an infringement suit against HP in the Texas court next. Acceleron is known for doing so, but since the appeals court allowed HP's DJ suit in the DE court to proceed, HP now has the choice of the forum in the DE court, not the TX court.


----------



## jacmyoung

It is worth noting that the two most recent appeals court decisions I have linked lately, have one thing in common, *after reversing the lower court decisions*, the appeals court denied the patent owners' choice of forum (Judge Folsom's TX court) for infringement litigation, and directed the cases to the other forums that are more neutral and friendly to companies under the threat of patent infringement litigation.


----------



## Greg Bimson

It is also worthy to note that the two "reversals" were about the issue of forum shopping.

However, the current stage of this case is about contempt of a court order. Specifically, it is about failure to adhere to two provisions of a standing injunction:
1) Failure to disable functionality of the listed devices as ordered within the injunction
2) Failure to stop infringement as ordered within the injunction

Any possible reversal will relate to the two points listed above. And I personally believe that there is no problem with point one as the defense of that point is sorely lacking, and that point two is simply an extension of the trial testimony, that there will not be a reversal.


----------



## jacmyoung

Greg Bimson said:


> ...Any possible reversal will relate to the two points listed above. And I personally believe that there is no problem with point one as the defense of that point is sorely lacking, and that point two is simply an extension of the trial testimony, that there will not be a reversal.


Personally Judge Folsom had no problem trying to keep the patentees' case in his court room, despite the fact the underlying evidence clearly were against him, it took the appeals court to tell him he was "patently erroneous" in order to force him to give up that case and have it moved to the defendants' choice of forum.

Personally Judge Folsom may think his injunction is the word of God and without any ambiguity, that does not mean he was right. Not to mention even the word of God can be interpreted in as many ways as people want to, but I will not go there.


----------



## jacmyoung

http://blogs.usatoday.com/technologylive/2009/12/tivo-ceo-sees-broadcast-and-cable-wreck.html



> TiVo CEO sees broadcast and cable "wreck"
> 
> Buzz up!
> Like this story? Share it with Yahoo! Buzz
> In contrast to Comcast and NBC, which see great thing ahead for cable networks, TiVo CEO Tom Rogers -- who used to run cable channels at NBC -- says he sees "a train wreck coming for the broadcast and cable industry on the advertising front." The reason: paying attention to 30-second ads that interrupt shows "is not the way people elect to watch television" when they have a DVR.
> 
> As you might expect, Rogers told Wall Street analysts on Monday that he has a solution: Companies can advertise on TiVo, and make ad campaigns more effective by tapping the massive amount of data that the DVR pioneer collects to show what people watch as well as what they buy.
> 
> "To think of TiVo as a DVR company is past history," Rogers says. With its ad research service, and ability to integrate Internet videos with conventional TV in a user friendly way, "We are a television behavior company at our heart," he says.
> 
> It's been losing subscribers, though, as cable and satellite companies market DVR services that cost less than TiVo, and offer fewer services.
> 
> While it works to turn things around, Rogers says TiVo may soon comfort itself with "over half a billion of cash and no debt" if it wins its patent infringement case against Dish Network, now at a Federal Circuit Court of Appeals. If that happens, then Dish might have to pay as much as $300 million to TiVo.
> 
> The companies have butted heads over the issue for the last few years, but Rogers says he thinks the case is "coming to the final chapter." TiVo recently filed similar patent infringement suits against Verizon and AT&T's television services.


It is interesting to note that even if TiVo wins, Rogers still only believes TiVo "might" get "as much as $300 million" from E*. Additionally, there is no mentioning of any settlement, such as a potential licensing deal, as the case is "coming to the final chapter."

"To think of TiVo as a DVR company is past history," this almost sounded like Rogers would rather forget this DVR infringement lawsuit and TiVo's shrinking DVR sub base, what a nightmare they must be for him.


----------



## Curtis0620

jacmyoung said:


> http://blogs.usatoday.com/technologylive/2009/12/tivo-ceo-sees-broadcast-and-cable-wreck.html
> 
> It is interesting to note that even if TiVo wins, Rogers still only believes TiVo "might" get "as much as $300 million" from E*. Additionally, there is no mentioning of any settlement, such as a potential licensing deal, as the case is "coming to the final chapter."
> 
> "To think of TiVo as a DVR company is past history," this almost sounded like Rogers would rather forget this DVR infringement lawsuit and TiVo's shrinking DVR sub base, what a nightmare they must be for him.


Give up the TiVo hate already.


----------



## jacmyoung

Curtis0620 said:


> Give up the TiVo hate already.


I don't recall ever asking you not to hate E*

It is interesting the TiVo supporters keep providing the news for me to point out how bad it is for TiVo.

On the issue of attorney fees and costs, TiVo filed the extension request last Thursday as usual, only at this time Judge Folsom has yet approved the request. In the past the requests had always been approved the next day.


----------



## jacmyoung

Did anyone pay attention to TiVo CEO Tom Rogers' Q/A on Monday when he said TiVo being a DVR company was history?

While we still have not heard anything from Judge Folsom regarding the 12/3/09 TiVo request for extension to file the attorney fees and costs agreement, E* just informed the judge that they are expanding the design around beta test to 1,000 testers, also they now have two more design around options in engineering testing:


----------



## Curtis52

Dish has notified Judge Folsom that they intend to expand their beta testing to 1,000 testers and to include other design around options.:



> Your Honor:
> While the Court's injunction is stayed pending appeal, EchoStar wishes to inform the Court that it continues to develop and test potential design-around options in an engineering environment and, as part of its standard development process, plans to expand its current "beta" testing to include two additional design-around options. The total number of subscribers involved in the beta testing of the three design-around options will be less than 1000.
> Sincerely,
> /s/ Rachel Krevans


----------



## jacmyoung

Curtis52 said:


> Dish has notified Judge Folsom that they intend to expand their beta testing to 1,000 testers and to include other design around options.:


A few hours ahead of you. Who said back then that nothing much would be happening between the stay of the injunction and the appeals court final ruling?

Charlie is poking fun at the TiVo/Judge Folsom's "inform/approval" mandate. Of course it is not all the judge's fault, TiVo argued that E* was in contempt because they did not first inform the court of the design around, supposedly had E* informed the court it would have been very different.

Let's see how different it might become now E* is informing the court. This is the third time E* informed the judge, the first time was a few months back. Judge Folsom so far has not responded by telling E*, but you must first disable! Without a response, the judge is allowing E* to continue to try to design around to avoid violating his injunction.

So much for informing the court.


----------



## James Long

It can backfire ... each time they say "we are modifying the software so it doesn't infringe" they are (arguably) admitting that the old software infringed and redraw the line where they were still admittedly infringing. That is the worst part about this notification rule. "It never infringed but we're changing the software so it doesn't do what it never did."

Of course they all infringe because the hard drive still stores programs ... but that is a different issue than if DISH has finally removed the "Tivo" way from their product.


----------



## scooper

Even Tivo has said in court that it is possible to make a DVR without infringing their patent (which has basically been emasculated anyway).

And just because they are trying different strategies doesn't mean the other versions were infringing.


----------



## jacmyoung

scooper said:


> ...And just because they are trying different strategies doesn't mean the other versions were infringing.


Which is why I said they were just trying to point out how stupid is TiVo's contention that the major part of why E* was in contempt was because they did not inform the court of the design around.

On the other hand, if E* cannot possibly design around the disabling provision, then the court should have made it very clear to E*. E* informed Judge Folsom three times already in the past several months that they are trying to continue to design around the disabling provision, the judge never warned them any additional consequences of such attempt.

Without a clear warning of additional consequences of the continued attempts, the court will have hard time imposing damages for such attempts, even if they eventually fail. That of course is not to say they had failed, it is clear to you and me they succeeded. But better have a plan B for damage control in the worst case.

Notice E* always has a plan B, they repeatedly warn the investor of the worst case scenario. TiVo on the other hand does not. They repeatedly tell the investors if they win... Never did you see they say, what happens if TiVo loses on appeal.


----------



## Greg Bimson

jacmyoung said:


> Let's see how different it might become now E* is informing the court. This is the third time E* informed the judge, the first time was a few months back. Judge Folsom so far has not responded by telling E*, but you must first disable! Without a response, the judge is allowing E* to continue to try to design around to avoid violating his injunction.
> 
> So much for informing the court.


Understanding of the law has been completely misconstrued. That's because currently the court doesn't need to be informed of anything. There is currently no standing, active injunction in force.

Besides, it wasn't that the court found DISH/SATS in contempt for failing to inform the court about anything. DISH/SATS was found in contempt for failure to disable functionality as ordered once the injunction was in full force and effect, and for continuing to infringe upon the patent.


----------



## jacmyoung

That is exactly the point. When the court issues an order, it has to be very clear, without ambiguity. If the court meant to disable the DVRs, without any attempt to design around such disabling provision, then the court had to make it clear. For example when Judge Folsom issued his amended injunction on 6/2/09, when he put in the “inform and approval” provision, he should have said something to the extent that:

Notwithstanding the above disabling provision, if the defendants wish to design around on the DVRs beyond the four million (or 6 million) DVRs subject to the disabling order, then the defendants must inform the court of such attempts, and obtain approval for implementation.

But the order did not say so. Therefore it is assumed the court would allow design around on the 6 million DVRs to avoid violating the disabling provision. Such ambiguity renders the court order ineffective, if later the court should find design around on the 6 million DVRs not permissible. E* is following the order now, E* can argue it is not doing anything in violation of the letter of the current injunction, even if the injunction had not been stayed.

Because ordering E* to inform and obtain approval for any additional design around attempts without any limitation, is legitimizing E*’s design around effort on any DVRs, including the 6 million subject to the disabling order. The order allows E* to do so, as long as E* informs and obtains approval.


----------



## Greg Bimson

jacmyoung said:


> If the court meant to disable the DVRs, without any attempt to design around such disabling provision, then the court had to make it clear.


And by stating that the devices must have their DVR functionality disabled, without an exception, accomplishes the same goal.

If DISH/SATS needed clarification of that otherwise simple, direct order, they only needed to file a motion for clarification.


----------



## jacmyoung

Greg Bimson said:


> And by stating that the devices must have their DVR functionality disabled, without an exception, accomplishes the same goal...


But then allowing E* to continue to design around, as long as they inform and get approval, it muddies the water again. There is nothing unclear about the inform and approval provision, it says yes you can design around, just inform and get approval first. What is unclear about that?

What is unclear is that the two provisions contradict each other, one seems to disallow design around, the other does allow design around.


----------



## Greg Bimson

jacmyoung said:


> But then allowing E* to continue to design around, as long as they inform and get approval, it muddies the water again.


Nothing is contradictory. The Amended Final Judgment and Injunction Order needs to be re-read, but simply enough:

1) Pay TiVo more money during the stay period.
2) Do not infringe on the Time Warp patent any longer.
3) Disable DVR functionality in the devices found to infringe.
4) Any attempted work-around must have approval before implementation

Nothing contradictory about any of that.


----------



## jacmyoung

Greg Bimson said:


> Nothing is contradictory. The Amended Final Judgment and Injunction Order needs to be re-read, but simply enough:
> 
> 1) Pay TiVo more money during the stay period.
> 2) Do not infringe on the Time Warp patent any longer.
> 3) Disable DVR functionality in the devices found to infringe.
> 4) Any attempted work-around must have approval before implementation
> 
> Nothing contradictory about any of that.


First off you are already confusing the issues. We are not talking about the final judgment, only the amended injunction, and whether the amended injunction was clear or not, and whether E* is in violation of it, assume it is not stayed.

Only your above 2), 3) and 4) are relevant to the issue we are discussing, but then only 3) and 4) is where the confusion arise.

In 3) if we assume you are correct, then it prohibits design around to avoid violating the disabling provision.

In 4) it clearly allows design around, else it would not have ordered E* to inform and obtain approval of a design around. Therefore this provision is based on the presumption that E* is allowed to design around the injunction, therefore also allowed to design around any provision in the injunction.

As I said earlier, if the court intended not to allow design around of the disabling provision 3), then it should have made it clear in 4) that any design around only applied to DVRs outside of the 6 million specified in 3). But it did not.


----------



## Greg Bimson

jacmyoung said:


> We are not talking about the final judgment, only the amended injunction, and whether the amended injunction was clear or not, and whether E* is in violation of it, assume it is not stayed.
> 
> Only your above 2), 3) and 4) are relevant to the issue we are discussing, but then only 3) and 4) is where the confusion arise.


No confusion. Really.


jacmyoung said:


> In 3) if we assume you are correct, then it prohibits design around to avoid violating the disabling provision.


If we _assume_ the injunction is in full force and effect, the court trapped eight models of DVR in an injunction, and those eight models are to be disabled. A design-around could be implemented as long as DVR functionality is disabled. If DVR functionality is to be enabled...


jacmyoung said:


> In 4) it clearly allows design around, else it would not have ordered E* to inform and obtain approval of a design around. Therefore this provision is based on the presumption that E* is allowed to design around the injunction, therefore also allowed to design around any provision in the injunction.


I've been saying that for years. Especially that part where if DISH/SATS wants to enable DVR functionality on the DVR's ordered disabled, they need to address the court.


jacmyoung said:


> As I said earlier, if the court intended not to allow design around of the disabling provision 3), then it should have made it clear in 4) that any design around only applied to DVRs outside of the 6 million specified in 3). But it did not.


The main goal of an injunctive order in a patent case is to stop infringement. If DISH/SATS can address the court with enough information that their design-around will no longer infringe and can be applied to all of the DVR's (subject to disablement or not), then the court will allow the disabled devices to be re-enabled.

A reminder: a four-year old 625 by Joe Blow is the same as the new one that DISH/SATS is selling. Both are covered by the "no design-around" injunction. And Joe Blow's four-year old 625 is subject to the disablement provision.

These are all items I've discussed in the past.


----------



## jacmyoung

Greg Bimson said:


> ...A design-around could be implemented as long as DVR functionality is disabled...


The injunction never says so, please do not make it up.

The disabling provision, *according to Judge Folsom*, simply does not allow design around to avoid a violation without disabling the DVRs. There is no "as long as" in the injunction. This provision does not control the other provision below.

The other provision says if E* wishes to design around, E* must inform and get approval, this provision never clarifies its relation with the disabling provision, therefore the design around permitted by the injunction is assumed that its aim is to try to comply with the injunction, not any one provision of the injunction, but the whole injunction.

If Judge Folsom intended to say the "inform and approval" provision did not apply to the disabling provision, then he should have made it clear, but he did not.

An order that is not clear cannot be enforced.


----------



## jacmyoung

On a separate issue, one week after TiVo requested an extension to file parties' agreement on the attorney fees and costs, Judge Folsom still has not act on the request. In the past such joint stipulations had always received approval the next day, but not this time.

Unless he is on his long fishing trip not made it back yet, one can speculate that maybe he has concluded such issue (i.e. the sanction issue) would likely be moot, therefore no need to continue to approve it.

Now this is of course pure speculation, for all I know we could see him approve it the next business day.


----------



## Greg Bimson

jacmyoung said:


> The other provision says if E* wishes to design around, E* must inform and get approval, this provision never clarifies its relation with the disabling provision, therefore the design around permitted by the injunction is assumed that its aim is to try to comply with the injunction, not any one provision of the injunction, but the whole injunction.


Uh, you do realize that contempt was found twice, within two different provisions of the same injunction. Not the whole injunction, but provisions of the injunction. One can only comply with "provisions", not the whole injunction if it contains more than one provision.


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## jacmyoung

Greg Bimson said:


> Uh, you do realize that contempt was found twice, within two different provisions of the same injunction. Not the whole injunction, but provisions of the injunction. One can only comply with "provisions", not the whole injunction if it contains more than one provision.


You are still confusing the issues. E* was only found in contempt of the initial injunction, not the amended injunction. We are now talking about the amended injunction in which the two provisions overwrite each other. At least in the initial injunction there was no "inform and approval" provision to muddy the water.

And please don't give us the "but E* did not appeal the injunction" argument, again do not confuse the two things, E* is now appealing the amended injunction in every way.

The initial injunction no longer exists.


----------



## Greg Bimson

jacmyoung said:


> You are still confusing the issues. E* was only found in contempt of the initial injunction, not the amended injunction. We are now talking about the amended injunction in which the two provisions overwrite each other.


I am not confusing any issues. The two provisions are mutually exclusive; they do not overwrite each other at all.

A) Disable DVR functionality with the receivers found infringing the Time Warp patent
B) Any work-around must be approved by the court prior to implementation

If DISH/SATS has a workaround that they implement prior to gaining any approval, DISH/SATS will be in contempt of both provisions A and B of the points I've listed above. If the workaround still infringes not more than colorably different than the first infringing workaround, they will also be in contempt of the provision against infringement.

It should be understood rather easily. Many people linked the "non-infringement" provision to the "disable" provision and thought that when Judge Folsom ordered a bench hearing to test infringement that the "disable" provision was not in contempt.

Each provision has its own process to determine contempt. The belief that the "disable" provision and the new "inform" provision can "overwrite" each other is ludicrous.


----------



## jacmyoung

Greg Bimson said:


> ...B) Any work-around must be approved by the court prior to implementation...


Any work around for what purpose?

To comply with the disabling provision?

To comply with the not-to-infringe provision?

Work around on what products?

On the 4 million DVRs?

On the 6 million DVRs?

On the VIP DVRs?

Or on all of them?

The work around provision makes absolutely no specific instruction as to what the work around is supposed to accomplish.

Therefore the one who reads the order can interpret it as to work around on all of the products in order to come into compliance with all the provisions in the injunction, including work around to comply with the disabling provision.

Now if you just sit there do nothing at all, then yes you will be in big trouble, because then you are not trying to work around the injunction at all.

Putting a work around provision after all the other provisions in the injunction implies that all the provisions above may be worked around, as long as you inform and get approval.

If there is any exception, then the order must make it clear which provision above is not subject to work around.

What does the term "work around" mean to you? To me it means trying to get around it, to circumvent it. The amended injunction allows E* to circumvent, except it did not specify what may be circumvented, what may not, therefore E* can try to circumvent anything they see fit, as long as they keep the court informed and obtain approval for implementation.

If the court sees that E* has been making a mistake by trying to work around the disabling provision, then the court must inform E*. The court has known E*'s continued work around effort for months, and also clearly knew E* did not disable the DVRs. Therefore it is the court obligation to tell E* if E* is not clear about the order. The court so far said nothing, therefore it is assumed the court is ok with what E* is doing at this time. If later the court says but hey you are bad because you did not disable the DVRs while trying to work around, E* simply can tell the court that hey you knew for months this is going on and knew that was how we interpreted your order to allow this to go on, why didn't you say something? We not only told you once, but twice, three times, or even more. What's the matter with you, trying to set us up?

Further more, why didn't TiVo say a word? After all it was TiVo's duty to bring the issues up to the court, and TiVo's duty to investigate and ensure that E* complies with the order. E* informed TiVo for months and three times too what they are doing, what is the matter with TiVo? Trying to set E* up for more damages? You don't think this is going to fly do you?

If TiVo for months and months sits there does not even complain, not say a word, while E* keeps telling both TiVo and the court what they have been doing excatly, then how can TiVo possibly after months and months go to the court and complain that TiVo has been gravely injured in the past months and months?


----------



## Greg Bimson

jacmyoung said:


> Any work around for what purpose?
> 
> To comply with the disabling provision?
> 
> To comply with the not-to-infringe provision?
> 
> Work around on what products?
> 
> On the 4 million DVRs?
> 
> On the 6 million DVRs?
> 
> On the VIP DVRs?
> 
> Or on all of them?
> 
> The work around provision makes absolutely no specific instruction as to what the work around is supposed to accomplish.
> 
> Therefore the one who reads the order can interpret it as to work around on all of the products in order to come into compliance with all the provisions in the injunction, including work around to comply with the disabling provision.


It is *FURTHER ORDERED* that Defendants shall inform this Court of any further attempt to design around the '389 Patent and shall seek approval from this Court before any such designaround is implemented.​More in a moment...


jacmyoung said:


> Now if you just sit there do nothing at all, then yes you will be in big trouble, because then you are not trying to work around the injunction at all.


Normally when there is an injunction, the enjoined party should *comply* with it, instead of finding a way to work around it.


jacmyoung said:


> Putting a work around provision after all the other provisions in the injunction implies that all the provisions above may be worked around, as long as you inform and get approval.


No. Putting a work around provision keeps the court informed. If there is approval of a workaround, then a new "amended final injunction" will be issued. Most likely, that would be in the form of removing the disable provision from the injunction.

As the order states, a designaround the Time Warp patent is what must trigger a notification to the court. If DISH/SATS states they are designing around for the 622/722, they are implicitly admitting that the current version infringes.


jacmyoung said:


> If the court sees that E* has been making a mistake by trying to work around the disabling provision, then the court must inform E*. The court has known E*'s continued work around effort for months, and also clearly knew E* did not disable the DVRs. Therefore it is the court obligation to tell E* if E* is not clear about the order. The court so far said nothing, therefore it is assumed the court is ok with what E* is doing at this time. If later the court says but hey you are bad because you did not disable the DVRs while trying to work around, E* simply can tell the court that hey you knew for months this is going on and knew that was how we interpreted your order to allow this to go on, why didn't you say something? We not only told you once, but twice, three times, or even more. What's the matter with you, trying to set us up?
> 
> Further more, why didn't TiVo say a word? After all it was TiVo's duty to bring the issues up to the court, and TiVo's duty to investigate and ensure that E* complies with the order. E* informed TiVo for months and three times too what they are doing, what is the matter with TiVo? Trying to set E* up for more damages? You don't think this is going to fly do you?


Is this keyboard on?

The order is STAYED. None of what DISH/SATS informs the court matters.

And the court has no responsibility to notify any party about anything. It is up to the injured party that has the power of the injunction to notify the court of a perceived problem. Since there isn't an active injunction in full force and effect, TiVo cannot complain about anything. Yet.


----------



## jacmyoung

Greg Bimson said:


> ...Normally when there is an injunction, the enjoined party should *comply* with it, instead of finding a way to work around it.​




Normally? What is not normally? What if this is not normal?

If the order says you may not contact someone by coming within 100' of that person, can you comply with the order while calling that person? If the order intends to prevent you from contacting that person, the order would better specify all the forms of contact to prohibit.



> No. Putting a work around provision keeps the court informed. If there is approval of a workaround, then a new "amended final injunction" will be issued. Most likely, that would be in the form of removing the disable provision from the injunction.


Really? Are you a judge now? Can you give us some examples this is how it works, "normally"?



> As the order states, a design around the Time Warp patent is what must trigger a notification to the court.


But what is the purpose of a design around? Apparently design around is permitted in this amended injunction. Did the order say design around is not allowed to avoid the disabling part? No it did not. The last design around by E* was done "solely" to avoid the disabling part. Did the court envision the next design around to have a different purpose? If so the order better make it clear since the order clearly allows design around, the same kind of design around E* performed last time to try to avoid the disabling part.



> If DISH/SATS states they are designing around for the 622/722, they are implicitly admitting that the current version infringes.


No, E* is clearly still trying to design around the disabling part, if the court cannot see that then it is blind. The court has to be fully aware that E*'s design arounds 2, 3 and 4 are still to avoid the disabling part, that is how E* interprets the amended injunction. If the court sees any misunderstanding on the part of E* in reading the amended injunction, better make it clear to them, otherwise future court action can be compromised. Because unlike last time, this time E* informed the court of their intention time after time that they were working on design arounds to avoid disabling the DVRs. If it is not ok, tell them so, it is not that hard.



> The order is STAYED. None of what DISH/SATS informs the court matters.


Of so then why was E* ordered to pay damages for the period during the stay of the injunction last time? If when the order was stayed last time, none of what E* did during that stay period mattered, then E* could not be responsible for anything they did during the last stay. Please do not make things up as you move along.



> Since there isn't an active injunction in full force and effect, TiVo cannot complain about anything. Yet.


Of course TiVo can complain, who told you TiVo cannot complain, even I can complain if I want to, this is a free country. Anyone can file brief or motion the court for any reason, if the court sees no reason to grant such request, court will simply explain why. Third parties regularly motion the court, not to mention parties in the dispute.

If you were correct, then E* simply could not have informed the court either since the order is stayed. Again please do not make things up as you move along.

Does TiVo not want to make sure they will get as much awards as possible in the future? How do you get award of money? By proving that you are injured. If you do not complain but wait for months and months, especially when you are informed repeatedly of the activities, then the injury, if there is any, must not be that bad.​


----------



## Greg Bimson

Greg Bimson said:


> Normally when there is an injunction, the enjoined party should comply with it, instead of finding a way to work around it.





jacmyoung said:


> Normally? What is not normally? What if this is not normal?


Them most of the time the offending party is found in contempt.


Greg Bimson said:


> No. Putting a work around provision keeps the court informed. If there is approval of a workaround, then a new "amended final injunction" will be issued. Most likely, that would be in the form of removing the disable provision from the injunction.





jacmyoung said:


> Really? Are you a judge now? Can you give us some examples this is how it works, "normally"?


You already did. Go look at the egg processing case. Informing the court of a workaround that the plaintiff couldn't find infringement defeated a contempt motion.


jacmyoung said:


> But what is the purpose of a design around? Apparently design around is permitted in this amended injunction. Did the order say design around is not allowed to avoid the disabling part? No it did not. The last design around by E* was done "solely" to avoid the disabling part. Did the court envision the next design around to have a different purpose? If so the order better make it clear since the order clearly allows design around, the same kind of design around E* performed last time to try to avoid the disabling part.


DISH/SATS was found in contempt of the disablement provision of the injunction. As contempt for failure to comply with the disablement provision will more than likely be upheld, there will be no need to "make it clear", as following the disablement provision will have no workaround.


jacmyoung said:


> Of so then why was E* ordered to pay damages for the period during the stay of the injunction last time? If when the order was stayed last time, none of what E* did during that stay period mattered, then E* could not be responsible for anything they did during the last stay.


Because DISH/SATS was still infringing.


jacmyoung said:


> Of course TiVo can complain, who told you TiVo cannot complain, even I can complain if I want to, this is a free country. Anyone can file brief or motion the court for any reason, if the court sees no reason to grant such request, court will simply explain why. Third parties regularly motion the court, not to mention parties in the dispute.


Really? And for what reason would TiVo motion the court?

Again. Trying to make mountains out of mole hills. When the injunction became active in April 2008, DISH/SATS was required to disable DVR functionality and stop infringing. DISH/SATS was found in contempt of both, as they didn't comply with either provision.

During the previous stay, DISH/SATS was allowed to develop any workaround they desired. But when the injunction became active, they needed to disable DVR functionality within the subset of admitted DVR's and stop infringement. They did neither.

During this stay, DISH/SATS is allowed to develop any workaround they desire. If upheld with no changes, when this injunction becomes active, they need to disable DVR functionality within the subset of admitted DVR's, stop infringement, inform the court of designs to workaround the Time Warp patent and obtain approval before implementing said workaround.


jacmyoung said:


> If you were correct, then E* simply could not have informed the court either since the order is stayed. Again please do not make things up as you move along.


Really? Then why did Judge Folsom ask DISH/SATS during the first hearing why they didn't inform the court? All I've said is that DISH/SATS does not need to inform the court right now, as there isn't an active injunction in effect.

I am far from making anything up.


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## TulsaOK

:zzz:


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## jacmyoung

Greg Bimson said:


> ...You already did. Go look at the egg processing case. Informing the court of a workaround that the plaintiff couldn't find infringement defeated a contempt motion.


Not true at all, but suppose you are correct that informing the court can defeat any future contempt, then why are you even arguing with me? We are in agreement it seems, that now E* is informing the court, likely there will be no future contempt? So we only have the past contempt?



> I am far from making anything up.


You have made up several things you can't even defend. Now you just made up one more above about the egg processing case, it had nothing to do with the *inform* part, rather that the design around no longer infringed, without any *approval* from the court.

But hey even under your made up scenario above, you ended up agreeing with me


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## Greg Bimson

jacmyoung said:


> Not true at all, but suppose you are correct that informing the court can defeat any future contempt, then why are you even arguing with me? We are in agreement it seems, that now E* is informing the court, likely there will be no future contempt? So we only have the past contempt?


We are not in agreement.

Informing the court of a workaround isn't the only step to avoid contempt.


jacmyoung said:


> You have made up several things you can't even defend. Now you just made up one more above about the egg processing case, it had nothing to do with the *inform* part, rather that the design around no longer infringed, without any approval from the court.


*In a series of motions* Defendant alleged that it had added a vacuum process to the beginning of its prior process (which was formerly adjudicated as infringing). Defendant further alleged that this vacuum process caused the thermal treatment to result in coagulation, and soluble protein loss (SPL) greater than 5%. As a result the Defendant asserts the new process does not violate the wording of the adjudicated claims. Plaintiffs argue, on a totally theoretical basis, that the vacuum process made the new process merely colorably different, and hence still infringed.​Obviously the defendant filing a "series of motions" is not simply to defend against contempt; the defense doesn't file a motion in a contempt hearing. The defense not only informed the court of the workaround, they had concrete data that they avoided infringement.

In other words, by keeping the court informed that they worked around the patent, contempt was not found.

That of course is unlike this setting, where DISH/SATS did not inform the court of a workaround until it was in defense of a motion for contempt, and there wasn't any concrete data that infringement was avoided.


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## jacmyoung

Greg Bimson said:


> ...That of course is unlike this setting, ...


It is exactly like the current setting *now*. Please pay attention to every word I said. I said for "future possible contempt".

According to your own interpretation, which I do not agree, but let's suppose you are correct that by motion the court the defendants in the egg processing case managed to void a contempt, despite that fact they did not disable the plant, even though the court order specifically said they had to disable the plant.

Now E* is informing the court over and over too, according to you, to avoid future possible contempt. So what do you think? If E* may prove the design arounds 2, 3 or 4 no longer infringe, while repeatedly informing the court of such work around, according to your own theory, E* would not be in contempt of the amended injunction?

As far as the past contempt, it is all paid for, E* already put up all the money for it.

That is of course according to your own theory, which I do not agree, but hey I am all for what you have to say.


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## Greg Bimson

jacmyoung said:


> It is exactly like the current setting now. Please pay attention to every word I said. I said for "future possible contempt".
> 
> According to your own interpretation, which I do not agree, but let's suppose you are correct that by motion the court the defendants in the egg processing case managed to void a contempt, despite that fact they did not disable the plant, even though the court order specifically said they had to disable the plant.


First, please do not assume I didn't read the "future possible contempt" passage.

Second, we do not know the exact wording of the injunction in the egg processing case. We do know that the plaintiff brought a motion to compel to find contempt, but it was regarding the "cease infringement" provision. So, when accused of continued infringement in defiance of an injunction, infringement must be found in order to find contempt. In _TiVo v. EchoStar_, that is but one of a few provisions within the injunction.


jacmyoung said:


> Now E* is informing the court over and over too, according to you, to avoid future possible contempt. So what do you think? If E* may prove the design arounds 2, 3 or 4 no longer infringe, while repeatedly informing the court of such work around, according to your own theory, E* would not be in contempt of the amended injunction?


As long as DISH/SATS meets ALL provisions of the injunction when it is in full force and effect. Informing the court of a design around is but one part of a provision. Obtaining approval to implement the workaround is the other part of that provision; there's still a provision to cease infringement and another to disable DVR functionality within admitted units. All of these provisions must be followed to avoid contempt, unless the Court of Appeals reverses some of Judge Folsom's findings or even strikes out some of the injunction language.


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## jacmyoung

Greg Bimson said:


> ...Second, we do not know the exact wording of the injunction in the egg processing case. We do know that the plaintiff brought a motion to compel to find contempt, but it was regarding the "cease infringement" provision. ...


No, the patentees asked to find the defendants in contempt for not disabling, or cease the egg processing plant operations, which was one of the provisions in the injunction. All injunctions contain "not to infringe" provision, but some injunctions also contain additional provisions, such as the one in the egg processing case to disable, or cease the plant operations, and in this case, to disable the DVR functions.

Look you brought up this egg processing case, it may actually demonstrate why E* is now informing the court over and over their continued design around effort, not just one, but three more options. While I do not agree at all that the defendants in the egg processing case avoided a contempt in part because they informed the court of the design around, rather because they proved the design around no longer infringed, yet did not try to disable or cease the plant operations, but at a minimum, I must give you credit for making the connection to this case and what E* appears to be doing in lock step with such precedent.


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## Greg Bimson

jacmyoung said:


> No, the patentees asked to find the defendants in contempt for not disabling, or cease the egg processing plant operations, which was one of the provisions in the injunction. All injunctions contain "not to infringe" provision, but some injunctions also contain additional provisions, such as the one in the egg processing case to disable, or cease the plant operations, and in this case, to disable the DVR functions.


MODIFIED1 ORDER ON PLAINTIFFS' MOTION TO COMPEL DEFENDANT TO SHOW CAUSE WHY IT SHOULD NOT BE HELD IN CONTEMPT
KOVACHEVICH, District Judge.
INTRODUCTION/OVERVIEW
On January 8, 1993 Plaintiffs filed a MOTION TO COMPEL DEFENDANT TO SHOW CAUSE TO THE COURT AS TO WHY IT SHOULD NOT BE HELD IN CONTEMPT.

In this motion Plaintiffs allege that Defendant is violating the Court's June 29, 1992 ruling. *This order enjoins Defendant from infringing on Plaintiffs' patent, number 4,808,425 ('425).*​According to the decision, the order was to cease infringement. The order did not contain a disable provison.

No one was ever able to produce the exact injunction for discussion. We can only go by the decision.


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## Jim5506

:sleeping::sleeping::sleeping::sleeping:


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## l8er

This thread certainly has been entertaining at times when it's not putting people to sleep. 

There are five basic rules you can be fairly sure of in this country when it comes to judges and "their" courts:

1) In his court, the judge is King. It ain't no democracy, it ain't no republic and since it's a Kingdom, there may not be much common sense.

2) Precedent, if it exists and is found by at least some of the parties involved in a case, may very well make or break the case. (Judges usually take the easy way out - if there is precedent, they'll usually go along with it, but somebody else usually has to find it).

3) Judges usually get their start as lawyers and/or legislators and consequently have no trouble "talking down" to lawyers in their courtrooms. (You can read into this whatever you wish pertaining to lawyers).

4) Power corrupts. Absolute power corrupts absolutely. Don't ever think the judge isn't there for the power.

5) Don't ever forget number 1.


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## jacmyoung

Greg Bimson said:


> ...No one was ever able to produce the exact injunction for discussion. We can only go by the decision.


Why don't you link up the whole case here, not just quote whatever you like us to read? The injunction contained a provision to cease the operation of that particular egg processing assembly line.

Besides, it was your contention that the reason the defendants in the egg processing case were not found in contempt was because they repeatedly informed the court of the design around. When I pointed out hey this is exactly what E* is doing right now, you now conveniently try to point out that the two cases are different. Of course no two cases are the same, but if we follow your logic, no precedent can be of any use at all, because for a precedent to be useful, according to you, the cases must be identical.

Can't have it both ways, either the "inform" helps, or you shouldn't have brought it up in the first place, it undermined your argument.


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## Greg Bimson

Greg Bimson said:


> ...No one was ever able to produce the exact injunction for discussion. We can only go by the decision.





jacmyoung said:


> Why don't you link up the whole case here, not just quote whatever you like us to read?


As I recall, you were the one that brought up the Bartow Foods case almost two years ago. You had the link for it, and you cited pieces to support your argument. I can only go by what was cited, even though there was a request for you to provide more information regarding that case.

Either way, the decision itself is quite clear: the order enjoins Defendant from infringing on Plaintiffs' patent, number 4,808,425 ('425). The motion for contempt was filed by the plaintiff because they believed that the defendant violated said order: the cease infringement provision.


jacmyoung said:


> The injunction contained a provision to cease the operation of that particular egg processing assembly line.


Citation, please.

The decision states that the order enjoins infringement, not cessation of operations of the assembly line (i.e., a disable provision).


jacmyoung said:


> Besides, it was your contention that the reason the defendants in the egg processing case were not found in contempt was because they repeatedly informed the court of the design around. When I pointed out hey this is exactly what E* is doing right now, you now conveniently try to point out that the two cases are different.


The defendants in the egg processing case motioned the court with proof that they no longer infringed. The defendant provided actual data to back up their assertion, while the plaintiff could only espouse theories as to why the modified process didn't work. Fact outweighs theory, so no contempt.

DISH/SATS has not done the same. DISH/SATS has not filed a motion with the court for consideration. There isn't any data to back up the assertion they no longer infringe, just a note that beta tests 2, 3 and 4 are in progress. In fact, all the beta tests could still infringe, as nothing has been provided to the court other than an inform letter. Therefore, this is nowhere near "exactly what E* is doing right now".

My contention isn't that informing the court led to no contempt; my contention was the defendant's motion contained actual data proving they no longer infringed, so when the plaintiff filed a motion for contempt there was no way for the plaintiff to win it:


Greg Bimson said:


> Informing the court of a workaround that the plaintiff couldn't find infringement defeated a contempt motion.


And that is exactly opposite of this case. DISH/SATS provided information of their workaround to defend against a contempt motion, instead of moving the court. TiVo proved that much of what was introduced at trial, such as five of five experts taking an oath stating PID filtering met the "parse video and audio data from broadcast data" claim limitation and that the circular buffer met the "self-regulating" claim limitation, were still present in said DVR's.


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## jacmyoung

Greg Bimson said:


> ...DISH/SATS has not done the same. DISH/SATS has not filed a motion with the court for consideration. There isn't any data to back up the assertion they no longer infringe, just a note that beta tests 2, 3 and 4 are in progress. In fact, all the beta tests could still infringe, as nothing has been provided to the court other than an inform letter. Therefore, this is nowhere near "exactly what E* is doing right now"...


First off, yes that case was linked by me a long time ago, it was a full page text, you only picked a sentence out of it. The injunction included a provision to cease the operation of the assembly line. I just don't have the time to go back and find it. It is not my burden of proof to go find it for you, you used that case to try to prove your point that informing the court got the defendants out of trouble, so it is your burden of proof by citing the whole text I posted a long time ago.

How do you know E* is not doing exactly the same NOW? How do you know E* is not preparing all the data on the design arounds 2, 3 and 4? How do you know E* only is trying to inform? What does the beta test mean to you? Are you so sure that E* is not prepared to motion the court to go over the new design arounds after the beta tests are complete, with full technical examinations to prove the new designs no longer infringe?

PID is not the only thing that is related to the issue, even though it is clear PID simply cannot infringe the DVR patent, but even if it can stand, all E* needs to do is to remove the automatic flow control function, i.e. render that "ring buffer" useless, all the Brodacom based DVRs will no longer infringe, that includes all the new DVRs. You will only have some discontinued old 5XX DVRs which there is practically few in the field anyway.

Are you so sure E* is not prepared to show such proof? Not that I know what they are doing, just that it is very bold for you to claim E* cannot show any proof and cannot move the court after the beta tests are complete. Of course they will move the court after the tests are complete, the court order said so, E* will have to move the court to approve the implementation. You can't even see that coming?

The above of course is to assume the appeals court delays the ruling, or the ruling is not in E*'s favor.


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## Greg Bimson

jacmyoung said:


> First off, yes that case was linked by me a long time ago, it was a full page text, you only picked a sentence out of it. The injunction included a provision to cease the operation of the assembly line. I just don't have the time to go back and find it. It is not my burden of proof to go find it for you, you used that case to try to prove your point that informing the court got the defendants out of trouble, so it is your burden of proof by citing the whole text I posted a long time ago.


If the assertion is that "The injunction included a provision to cease the operation of the assembly line", that is not my assertion. Since that is your claim, I'll ask you to cite it. I will state that the post in question does not have any reference to "cease the operation", or any other disable provision.


jacmyoung said:


> How do you know E* is not doing exactly the same NOW? How do you know E* is not preparing all the data on the design arounds 2, 3 and 4? How do you know E* only is trying to inform? What does the beta test mean to you? Are you so sure that E* is not prepared to motion the court to go over the new design arounds after the beta tests are complete, with full technical examinations to prove the new designs no longer infringe?


I don't. But as of right now, DISH/SATS has not motioned the court for anything. So until they do, my statement is quite true. Besides, until the injunction is active, approval to implement a workaround is NOT required as ordered. However, as you point out, DISH/SATS may be gearing up for a motion to get approval of their workaround, so that if the court blesses the workaround the court can then address the workaround's relationship to the disable order.


jacmyoung said:


> Are you so sure E* is not prepared to show such proof? Not that I know what they are doing, just that it is very bold for you to claim E* cannot show any proof and cannot move the court after the beta tests are complete.


Keep in mind all I have stated is that DISH/SATS has not moved the court. They may be preparing a motion, but I never claimed DISH/SATS won't do it.


jacmyoung said:


> Of course they will move the court after the tests are complete, the court order said so, E* will have to move the court to approve the implementation. You can't even see that coming?


The order said to disable DVR functionality, so did DISH/SATS follow it?

Just because the court ordered it does not mean DISH/SATS will comply. Just take a look at the history. And as I said, until the injunction is active, DISH/SATS can implement a workaround without obtaining approval from the court.


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## jacmyoung

Greg Bimson said:


> ...And as I said, until the injunction is active, DISH/SATS can implement a workaround without obtaining approval from the court.


E* implemented a workaround without obtaining approval from the court last time when the injunction was not "active", how come TiVo made such a big deal about it? So much so that TiVo actually convinced Judge Folsom to put an unprecedented "inform and approval" provision in the amended injunction.

Please, before you say something, think first. This is not the first time already.


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## Greg Bimson

Is this keyboard on?


jacmyoung said:


> E* implemented a workaround without obtaining approval from the court last time when the injunction was not "active", how come TiVo made such a big deal about it?


DISH/SATS was ordered to disable functionality within the DVR's admitted at trial and within customers' homes. DISH/SATS was found in contempt of the disable provision, even with this "new and improved" functionality, where contempt of the provision enjoining infringement was also found.

DISH/SATS refused to comply with the disable provision in deference to their workaround. Of course TiVo would complain that the injunction wasn't followed. Loudly.


jacmyoung said:


> So much so that TiVo actually convinced Judge Folsom to put an unprecedented "inform and approval" provision in the amended injunction.


An injunction which is stayed, i.e., not active nor enforceable. And it certainly isn't "unprecedented".

As the injunction is stayed, DISH/SATS can pretty much do anything they want.

The difference is that this time, when the Court of Appeals renders their decision, it will be the blueprint for a case such as this. If the Court of Appeals says that "all means all" in reference to disabling the DVR functionality, then even if DISH/SATS comes up with a workaround by the time that the injunction is active, it is expected by the courts that the DVR's admitted as infringements within customer homes must be disabled. DISH/SATS can't use their interpretation of the injunction (the one where they complied with the injunction) as defense of failure to disable.


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## jacmyoung

Greg Bimson said:


> ...Of course TiVo would complain that the injunction wasn't followed. Loudly.


"Is this keyboard on?"

I was talking about TiVo's complaint that E* did not inform the court of the last design around during the stay of the injunction, hello?

And the judge agreed, because E* did not inform last time, therefore E*'s design around was in bad faith. You yourself had made such argument time after time before, did you already forget? Now you are saying E* should be allowed to do anything they wanted without infroming the court, as long as the injunction was stayed. Are you changing your view?



> An injunction which is stayed, i.e., not active nor enforceable. And it certainly isn't "unprecedented".


The "inform and approval provision" at this stage is unprecedented. "Is this keyboard on?"



> As the injunction is stayed, DISH/SATS can pretty much do anything they want.


Again you haved just refuted your own contention from the past that E*'s design around was in bad faith because they did not inform the court, supposedly did so behind their back.



> The difference is that this time, when the Court of Appeals renders their decision, it will be the blueprint for a case such as this.


Ok, if you believe this will be the new KSM of the 21th century, more power to you.



> If the Court of Appeals says that "all means all" in reference to disabling the DVR functionality, then even if DISH/SATS comes up with a workaround by the time that the injunction is active, it is expected by the courts that the DVR's admitted as infringements within customer homes must be disabled. DISH/SATS can't use their interpretation of the injunction (the one where they complied with the injunction) as defense of failure to disable.


Whether E* complied with the last injunction is not even decided yet by the appeals court. Please do not get too much ahead of yourself.


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## jacmyoung

Speaking of E* providing proof of the additional new design around options, today they just filed four additional "sealed patent documents", presumably related to the new design around options, and possibly indicating E* also filed patent applications on such new designs. Since they are sealed I cannot download the actual docs, so I would just copy the captions below for our readers' entertainment:



> 12/15/2009 1004 SEALED PATENT DOCUMENT Letter to Judge Folsom. (Attachments: # 1 Index, # 2 11/17/09 Opinion Letter, # 3 12/9/09 Opinion Letter, # 4 Appendix A, # 5 Appendix B-1, # 6 Appendix B-2)(Krevans, Rachel) (Entered: 12/15/2009)
> 12/15/2009 1005 SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: 1004 Sealed Patent Document. (Attachments: # 1 Appendix C-1, # 2 Appendix C-2, # 3 Appendix C-3, # 4 Appendix C-4, # 5 Appendix C-5, # 6 Appendix C-6, # 7 Appendix C-7, # 8 Appendix C-8, # 9 Appendix C-9, # 10 Appendix C-10, # 11 Appendix C-11, # 12 Appendix C-12, # 13 Appendix C-13, # 14 Appendix C-14, # 15 Appendix C-15, # 16 Appendix C-16)(Krevans, Rachel) (Entered: 12/15/2009)
> 12/15/2009 1006 SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: 1004 Sealed Patent Document. (Attachments: # 1 Appendix C-17, # 2 Appendix C-18, # 3 Appendix C-19, # 4 Appendix C-20, # 5 Appendix C-21, # 6 Appendix C-22, # 7 Appendix C-23, # 8 Appendix C-24, # 9 Appendix C-25, # 10 Appendix C-26, # 11 Appendix C-27, # 12 Appendix C-28, # 13 Appendix C-29, # 14 Appendix C-30, # 15 Appendix C-31, # 16 Appendix C-32)(Krevans, Rachel) (Entered: 12/15/2009)
> 12/15/2009 1007 SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: 1004 Sealed Patent Document. (Attachments: # 1 Appendix C-33, # 2 Appendix C-34, # 3 Appendix C-35, # 4 Appendix C-36, # 5 Appendix C-37, # 6 Appendix C-38, # 7 Appendix C-39, # 8 Appendix C-40, # 9 Appendix C-41, # 10 Appendix C-1 to 11/17/09 Letter, # 11 Appendix C-2 to 11/17/09 Letter, # 12 Appendix C-3 to 11/17/09 Letter, # 13 Appendix C-4 to 11/17/09 Letter, # 14 Appendix C-5 to 11/17/09 Letter)(Krevans, Rachel) (Entered: 12/15/2009)


It showed two opinion letters, presumably by a patent law firm.


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## jacmyoung

Greg Bimson said:


> ...However, as you point out, DISH/SATS may be gearing up for a motion to get approval of their workaround, so that if the court blesses the workaround the court can then address the workaround's relationship to the disable order...


Now that we actually have proof that E* may be gearing up for an approval, if Judge Folsom blesses the workaround it is possible that E* may not be in trouble in the future?


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## Greg Bimson

That is what I've said all along, isn't it?


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## scooper

Greg Bimson said:


> That is what I've said all along, isn't it?


Actually - the sense I get from your posts is that Echostar / Dish can't have the "infringing devices" recording at all, even if they manage to get a valid, non-infringing workaround....


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## Greg Bimson

scooper said:


> Actually - the sense I get from your posts is that Echostar / Dish can't have the "infringing devices" recording at all, even if they manage to get a valid, non-infringing workaround....


My contention has always been that the injuncton (when active) must be followed. It was always up to DISH/SATS to motion the court to do anything other than disable functionality within the admitted infringing devices.


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## jacmyoung

Greg Bimson said:


> That is what I've said all along, isn't it?


I am glad we are all happy now Can't wait to see how Judge Folsom will react to all the activities.

Who knows, maybe he will approve, three times the charm you know


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## Curtis52

Greg Bimson said:


> My contention has always been that the injuncton (when active) must be followed. It was always up to DISH/SATS to motion the court to do anything other than disable functionality within the admitted infringing devices.


I'm pretty sure that Judge Folsom wouldn't approve a workaround until Dish wins a declaratory lawsuit.


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## jacmyoung

Curtis52 said:


> I'm pretty sure that Judge Folsom wouldn't approve a workaround until Dish wins a declaratory lawsuit.


The problem is on what ground? On the ground that E* did not disable the DVR functions? Or on the ground that the workaround still infringes?

If earlier, then his "inform and approval provision" is clearly for show, which can be easily used on appeal.

If latter, it all depends on what the new design is. It is clear that when E* said they removed something, they did, because TiVo did not dispute any of the things E* said they removed, TiVo only tried to use "alternative infringement theories" which Judge Folsom happened to have bought into.

Let's say E* does the following according to TiVo's alternative theories:

1) Disable the "ring buffer" in the Broadcom DVRs, after that, what can TiVo pin E* on the "automatic flow control" thing?

2) Make sure the PID filters in the 5XX DVRs only parse the encrypted streams, not any unencrypted streams, because TiVo already admitted if the streams are encrypted, the PID filters could not parse the audio and video data, TiVo just argued that not all streams were encrypted when parsed by the PID filters.

Will TiVo be able to come up with some other "alternative theories"? If so E* has options 3 and 4.

Let's be clear, all of the above assume that the appeals court will totally agree with Judge Folsom. We are just talking the worst case for E*, yet you can see even under such condition TiVo will need some real talent to come up with more infringement theories.


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## Greg Bimson

jacmyoung said:


> Let's be clear, all of the above assume that the appeals court will totally agree with Judge Folsom. We are just talking the worst case for E*, yet you can see even under such condition TiVo will need some real talent to come up with more infringement theories.


Then let me play devil's advocate...

DISH/SATS implemented Herculean Workaround v. 1.0 while the prior injunction was stayed. DISH/SATS also filed a patent for this workaround.

If DISH/SATS was using the workaround in the manner described in the patent, and that workaround has been found infringing, it means that the patent filed for Herculean Workaround v. 1.0 could require use of TiVo's Time Warp patent.

Think about it. DISH/SATS is using the process in their patent application. It has also been ruled that the devices using that process still infringe the Time Warp patent.

What's so special that another patent was filed in support of Herculean Workaround v 2.0, 3.0 or 4.0?


Curtis52 said:


> I'm pretty sure that Judge Folsom wouldn't approve a workaround until Dish wins a declaratory lawsuit.


I am unsure about that.

First, the disable provision relates to the DVR's that have been adjudged by Judge Folsom. They are under his jurisdiction. Therefore, a declaratory lawsuit does not address devices which were previously ruled as infringements since they are subject to another court. Yes, I understand that tomorrow's 625 may have new non-infrnging software, and that software can be downloaded to the 625 admitted before Judge Folsom as an infringement, but...

Second, DISH/SATS has been ordered to inform Judge Folsom regarding workarounds and gain approval before implementation. So technically, this ends up like the case where non-infringing pieces were ordered not to be sold, as the 625, like the rest of the infrining DVR's, is sold without software. That software is implemented upon DVR activation.

The inform and approve provision should technically wipe away an attempt at a declaratory lawsuit. And here is why:

It could take over a year to get to trial. By that time the injunction should be active and by the terms of the injunction once it is active (if there is an affirmation of Judge Folsom's disable provision ruling) the devices must be disabled. DISH/SATS once again would be found in contempt for failure to disable, and the penalties this time would be more severe. And DISH/SATS would certainly be in contempt of the inform and approval provision if going after a declaratory lawsuit, simply because they would need a workaround in order to start proceedings for a declaratory lawsuit.


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## jacmyoung

Greg Bimson said:


> Then let me play devil's advocate...


No you are not, you first assume the workaround 1.0 still infringes, that is not playing devil's advocate, please get your definition right first.



> What's so special that another patent was filed in support of Herculean Workaround v 2.0, 3.0 or 4.0?


Who said it was special? In fact it was a pure speculation, for all we know the caption says "sealed patent documents" which the phrase had been used many times before.



> Therefore, a declaratory lawsuit does not address devices which were previously ruled as infringements since they are subject to another court.


Did you read E*'s declaratory suit? It addresses all DVRs, including the 8 named DVRs. Again do not make things up, what do you mean subject to another court? This declaratory suit is on Judge Folsom's shelf, not "another court", not even "another court room".



> The inform and approve provision should technically wipe away an attempt at a declaratory lawsuit. And here is why...


Judge Folsom did not "wipe it away", even TiVo had given up trying to "wipe it away", please stick to the scripts of the parties, don't play the role of the Supreme Court


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## scooper

The inform and approve provision has NOTHING to do with the Declartory judgement lawsuit - they are totally unrelated items except for both covering different aspects of DVR operation. There was absolutely NO reason to move that suit from Delaware to East Texas, and I believe the Appeals court just ruled that as well.


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## Greg Bimson

jacmyoung said:


> No you are not, you first assume the workaround 1.0 still infringes, that is not playing devil's advocate, please get your definition right first.


The Amended Final Judgment and Injunction Order has been stayed. The decision finding DISH/SATS in contempt was not stayed. DISH/SATS was found in contempt of the injunction twice, for violations of two provisions: the disable provision, and more importantly the enjoining infringement provision, where DISH/SATS' workaround was found to infringe. Therefore, Herculean Workaround 1.0 is infringing UNLESS the Court of Appeals reverses it.


scooper said:


> The inform and approve provision has NOTHING to do with the Declartory judgement lawsuit - they are totally unrelated items except for both covering different aspects of DVR operation. There was absolutely NO reason to move that suit from Delaware to East Texas, and I believe the Appeals court just ruled that as well.


No, DISH/SATS declaratory judgment lawsuit is sitting on hold in East Texas. The movement from Delaware was based upon the fact that much of the subject matter was being discussed in East Texas. And that ruling was never appealed.


jacmyoung said:


> Did you read E*'s declaratory suit? It addresses all DVRs, including the 8 named DVRs. Again do not make things up, what do you mean subject to another court? This declaratory suit is on Judge Folsom's shelf, not "another court", not even "another court room".


DISH/SATS filed their declaratory judgment lawsuit before TiVo filed their motion for contempt. Somehow, that motion for contempt took precedence over the declaratory action regarding the admitted infringing receivers. So it could be that those ruled as infringements do not get counted within the declaratory suit.


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## jacmyoung

Greg Bimson said:


> ...Therefore, Herculean Workaround 1.0 is infringing UNLESS the Court of Appeals reverses it...


Therefore you are not playing devils advocate. Playing devils advocate means you take your opponents position, then play it to again prove him wrong.

To do so you must first assume the workround 1.0 was a success and the appeals court will reverse it, then you can begin to play your devils advocate.

Let me give you another example, E* is now playing devils advocate to its heart's content, how so?

E* now takes TiVo and Judge Folsom's postion that somehow design around needs inform and approval, and is filing all the papers to play into their game, with the intent to again prove TiVo and the judge wrong.

That is called playing devils advocate. When you play this game, you never give up your own position, only that you take your opponent's position and prove him wrong under his own terms.

It is also called "on alternative argument", I have explained this many times in the past, did you forget already?


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## Curtis52

scooper said:


> The inform and approve provision has NOTHING to do with the Declartory judgement lawsuit - they are totally unrelated items except for both covering different aspects of DVR operation. There was absolutely NO reason to move that suit from Delaware to East Texas, and I believe the Appeals court just ruled that as well.


The declaratory lawsuit I was referring to would be a future declaratory lawsuit that Dish would probably have to file and win before Judge Folsom would even consider approving workaround 2.0.


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## jacmyoung

scooper said:


> ...and I believe the Appeals court just ruled that as well.


If you believe so because of a recent appeals court order against Judge Folsom I have just linked up a week ago, it was a different case.

However since we are on that issue, let me inform you guys that just today, the appeals court issued another order against the TX court, this time against Judge Davis. The appeals court ordered him to transfer his case to a different forum:

http://www.cafc.uscourts.gov/opinions/09-M914.pdf

As explained in the earlier case against Judge Folsom, the appeals court rarely grants a writ of mandamus, the district judge must have made a glaring error for such order to be granted.

Yet in less than two weeks, the appeals court issued two such orders to compell two judges in this TX court to give up two patent infringement cases, contended that both judges "clearly abused their discretions."

This TX court used to be the forum of choice for the patent trolls, the judges in this court are used to hoarding all the patent trolls' cases and they apparently still do. But the appeals court lately seems fed up with this TX court


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## jacmyoung

Curtis52 said:


> The declaratory lawsuit I was referring to would be a future declaratory lawsuit that Dish would probably have to file and win before Judge Folsom would even consider approving workaround 2.0.


All future workarounds can be easily incorporated into the existing declaratory suit.


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## Greg Bimson

jacmyoung said:


> Therefore you are not playing devils advocate. Playing devils advocate means you take your opponents position, then play it to again prove him wrong.


No.

In common parlance, a devil's advocate is someone who takes a position he or she does not agree with for the sake of argument. This process can be used to test the quality of the original argument and identify weaknesses in its structure. - Wikipedia

The position is that DISH/SATS has filed a new patent, and it is the attempted workaround. My argument simply was that DISH/SATS filed a patent for Herculean Workaround v 1.0, and Herculean Workaround v 1.0 was found as an infringement of the Time Warp patent.

Playing Devil's Advocate, I am simply using history as the reminder that just because an opinion letter or two were filed along with a patent doesn't mean DISH/SATS has a valid workaround. DISH/SATS produced opinion letters for the DVR's using either original software and Herculean Workaround v. 1.0, and both were found infringing.


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## jacmyoung

Thank you for clarifying your point. But if so you are only arguing yourself, no one here was saying E* actually filed another patent application, nor asserted that the two new opinion letters would make or break the next workaround.

On the other hand, Judge Folsom did not completely ignore the last opinion letter, in his sanction ruling he said he considered the first design around a “good faith” one, in part because E* might have honestly believed the workaround was a good one, and E* still believes so BTW. We will have to see whose side the appeals court will be on on this issue.

You see, opinion letters from reputable patent law firms are relevant, in fact had you read many patent cases, one of the most important proofs of a good faith effort is to obtain legal opinions from patent law firm before implementation.


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## jacmyoung

Let’s not totally rule out this possibility either. It might seem odd that E* is so busy working on all kinds of workaround options, getting opinion letters, filing papers, therefore incurring all the cost of doing all the work, a lot of them legal costs, even though the injunction is currently stayed.

But remember what I said before, evidence is already there to prove that TiVo lied to Judge Folsom when TiVo said start code detection and indexing were irrelevant to the software claims. The evidence is in TiVo’s 11/2/09 response to the PTO’s rejection, in which TiVo said not a word to refute the PTO’s contention that the software claims actually “required” start code detection and indexing. TiVo knew it could not tell the same lie to the PTO.

Misconduct such as this can be basis for asking the court to award E* its legal costs. All the activities E* is doing now cost money and I have a feeling Charlie is busy saving the receipts in his shoeboxes


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## Greg Bimson

jacmyoung said:


> But remember what I said before, evidence is already there to prove that TiVo lied to Judge Folsom when TiVo said start code detection and indexing were irrelevant to the software claims.


Huh?

One of the main reasons contempt via infringement was found was because five of five experts agreed during trial that PID filtering met the limitation against "parsing video and audio data from said broadcast data". The workaround did not remove the limitation.

The trial record agreed that "start code detection and indexing were irrelevant to the software claims". There is no dispute, unless of course the three expert witlesses for DISH/SATS lied under oath to advance some other litigation theory.


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## jacmyoung

Greg Bimson said:


> ... five of five experts agreed ...


You can sleep on the opinions of the experts all you want, opinions are not facts, even if the opinions are from the experts.

The fact is, E* said the software claims required start code detection and indexing, TiVo said no they were irrelevant to the software claims, then the PTO said yes the software claims required start code detection and indexing, then TiVo refused to dispute the PTO's contention.

Facts always trump expert opinions, I have explained it several times using the appeals court's own case law, you just again conveniently forgot about it.

The unfortunate part is, the PTO decision came after Judge Folsom's ruling, more over, the TiVo's response to the PTO came after the appeals court hearing, after TiVo managed to delay their response by 30 days, to be one day after the hearing.

But facts are facts, they are there, just need someone to bring them up to the court in the future when the timing is right.


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## Greg Bimson

jacmyoung said:


> You can sleep on the opinions of the experts all you want, opinions are not facts, even if the opinions are from the experts.
> 
> The fact is, E* said the software claims required start code detection and indexing, TiVo said no they were irrelevant to the software claims, then the PTO said yes the software claims required start code detection and indexing, then TiVo refused to dispute the PTO's contention.


Did this happen during either the trial or the bench hearing to determine continuing infringement?


jacmyoung said:


> The unfortunate part is, the PTO decision came after Judge Folsom's ruling, more over, the TiVo's response to the PTO came after the appeals court hearing, after TiVo managed to delay their response by 30 days, to be one day after the hearing.


I see.

So the validity of the patent in in question, yet there has been no final determination of that outcome. So the patent stands as written until all appeals are exhausted. Yet for some reason there is thought that continuing proceedings in front of the PTO have bearing on the contempt action, and its review at the appelate court.


jacmyoung said:


> Facts always trump expert opinions, I have explained it several times using the appeals court's own case law, you just again conveniently forgot about it.


Fact: The proceedings in front of the PTO have no bearing on the actions currently in front of the Court of Appeals.

Fact: The patent claims are still valid today. They are as valid as when the patent was granted and as when the trial was held over three and a half years ago.

Judge Folsom only had what was available in the record to determine contempt. The PTO actions did not (nor should not) be considered until the final action is available.

The Court of Appeals cannot rule based upon "new evidence" which would have been rendered after a decision. It is prejudical.


jacmyoung said:


> But facts are facts, they are there, just need someone to bring them up to the court in the future when the timing is right.


The timing isn't there, yet.


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## jacmyoung

Greg Bimson said:


> Did this happen during either the trial or the bench hearing to determine continuing infringement?


I already said, the PTO's contention that the software claims "required" start code detection and indexing came after Judge Folsom's ruling, and the TiVo's response (or the lack of) to the PTO's contention came after the appeals hearing.



> Fact: The proceedings in front of the PTO have no bearing on the actions currently in front of the Court of Appeals.


Wrong, E* motioned the appeals court to take judicial notice of the PTO's contentions, TiVo opposed, and the court granted the motion. Meaning the appeals court took the PTO's contentions in as evidence.



> Fact: The patent claims are still valid today. They are as valid as when the patent was granted and as when the trial was held over three and a half years ago.


Who said anything about the validity of the software claims? Read carefully, it is the PTO's contentions that are at issue.



> The PTO actions did not (nor should not) be considered until the final action is available.


Again it is what the PTO described of the software claims that is at issue, not the PTO's action (i.e. the rejection) itself.



> The Court of Appeals cannot rule based upon "new evidence" which would have been rendered after a decision. It is prejudical.


Again as said above, the appeals court already took that new evidence in, TiVo had its chance to oppose, they failed.



> The timing isn't there, yet.


Who said the timing is here already?


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## Curtis52

Greg Bimson said:


> The trial record agreed that "start code detection and indexing were irrelevant to the software claims". There is no dispute, unless of course the three expert witlesses for DISH/SATS lied under oath to advance some other litigation theory.


Start code detection etc. are no more irrelevant to TiVo's software claims than any other form of analysis. TiVo never said those forms of analysis were irrelevant. What they said was that Dish's claims that they no longer infringe because they no longer do those things is irrelevant. Those specific types of parsing were never required in the software claims to begin with so of course any statement from Dish that they no longer do those particular types of parsing is irrelevant.


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## jacmyoung

Curtis52 said:


> Start code detection etc. are no more irrelevant to TiVo's software claims than any other form of analysis. TiVo never said those forms of analysis were irrelevant. What they said was that Dish's claims that they no longer infringe because they no longer do those things is irrelevant. Those specific types of parsing were never required in the software claims to begin with so of course any statement from Dish that they no longer do those particular types of parsing is irrelevant.


If so then why did TiVo not say anything after the PTO agreed with E* that the software claims actually "required" start code detection and indexing?

Did TiVo not know that such PTO's agreement was accepted by the appeals court as evidence? Why didn't TiVo try to refute such agreement? TiVo actually had the perfect opportunity to do so because their response to the PTO action was due one month before the hearing, TiVo could have easily filed their response to the PTO on time then filed a copy to the appeals court at the same time, in time to dispute such agreement, instead they sought a delay of such filing to one day after the hearing.


----------



## jacmyoung

Well looks like TiVo again filed a request to extend the filing date to 01/08/09 to file the attorney fees and costs. So much for the agreement reached. Judge Folsom did not even grant TiVo's last request. I guess you can just keep informing the court of your delay now?


----------



## jacmyoung

Question for the lawyers, when TiVo filed the last request to extend the filing of the attorney fees and costs, Judge Folsom never approved it. Does that not make the attorney fees and costs issue time barred for court intervention?

Although on the other hand since E* and TiVo had reached an agreement on the issue, there is not even the need for court intervention, so the original court order for TiVo to file, is now moot consider the intent was for court intervention.


----------



## jacmyoung

I guess my question was answered. When TiVo filed for delay of the filing of the attorney fees and costs two weeks ago, I asked why Judge Folsom never approved it as he did every time before. I then speculated above that likely because E* and TiVo had reached an agreement on the cost, therefore the court original filing order became moot.

Today the court just informed TiVo the Friday filing was wrong, TiVo needed to enter a motion this time.

So here is again speculation based on the new info, the TiVo filing was indeed time barred because the court did not approve the extension two weeks ago, now TiVo has to use a new motion to address the issue. If so, that may mean the original court order for TiVo to file by 9/14 had expired, probably due to repeated delays by TiVo. It is now a matter of TiVo entering a new motion to address the issue with the court. The question is then will E* agree to such motion, since such motion (unlike the 9/14 filing) was never ordered by the court, therefore E* can oppose it. Of course E* does not have to oppose it either.


----------



## jacmyoung

Hmmm, TiVo just “corrected” the filing format to a "motion", but nothing seems changed in the wording from last Friday, so this so called “agreement” TiVo wants delay the filing to 1/8/09, might just be an agreement that they could not agree on the attorney fees and costs after all


----------



## dgordo

1700 :eek2:


----------



## jacmyoung

I have linked two most recent appeals court orders against the judges at the E. TX court, apparently according to the link below there were two earlier ones making it a total of four orders against Judge Folsom's court this year:

http://www.law.com/jsp/tal/digestTA..._of_Texas_Judge_for_Refusing_to_Transfer_Case

Quoting one of the patent owners' lawyers: "There appears to be a war going on between the Federal Circuit and the Eastern District of Texas." A reversal in the TiVo v. E* case before the year end would wrap this year up nicely it seems

Too bad the local businesses will have to find other revenue sources now less and less patent trolls file their cases in this court.


----------



## harsh

jacmyoung said:


> Hmmm, TiVo just "corrected" the filing format to a "motion", but nothing seems changed in the wording from last Friday, so this so called "agreement" TiVo wants delay the filing to 1/8/09, might just be an agreement that they could not agree on the attorney fees and costs after all


Could you include some documentation that indicates the 1/8/09 date? I wouldn't put it past them to get the year wrong.


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## jacmyoung

harsh said:


> ...I wouldn't put it past them to get the year wrong.


It should be the very least you need to worry about them.


----------



## harsh

jacmyoung said:


> It should be the very least you need to worry about them.


Many a judicial event has had its path changed on incorrect filings.

My question remains: Is the year a reporting oversight on your part or a failure on the part of TiVo's representatives?


----------



## jacmyoung

harsh said:


> Many a judicial event has had its path changed on incorrect filings.
> 
> My question remains: Is the year a reporting oversight on your part or a failure on the part of TiVo's representatives?


There is no requirement that all questions must be answered, when the answer should be obvious to a person of ordinary skill, and the questioner is clearly pretending to be a person of extraordinary skill

Today the appeals court made the ruling on the i4i v. Microsoft case. I have mentioned this case before because it was also an "expedited" review, though by a different merits panel. The hearing was on 9/23, it took about three months to hand out the ruling.

Assume the TiVo v. E* case is handled in similar way since it is also an "expedited" review, and assume the turnaround from this panel is the same, then it is not unreasonable to guess the ruling can be out in late 01/10 or early 02/10.

The i4i v. Microsoft case is also interesting on another front. It is a case also came out of the E. TX court, but under Judge Davis. In this case Judge Davis awarded i4i a $200M jury award plus a $40M enhanced damage. Consider the size of Microsoft, the award was pocket change.

He also issued an injunction which was very "narrow". He allowed all the old Word products to continue to infringe the XML patent, prohibited infringing XML patent in all newly sold Word products, gave Microsoft 60 days to comply with the injunction to remove the infringing XML add-ons in the new Word products.

The appeals court however accepted Microsoft's request that they needed 5 months to design around the injunction, and modified the injunction to reflect such time frame. Clearly if Microsoft managed to design around the XML patent but still keeps the XML functions in some fashion or another, the appeals court did not see any problem of it.

If we gleam from this case, it is clear designing around an injunction must be allowed. Otherwise there would be no reason for the appeals court to disturb the 60-day removal time in the original injunction, because removal is removal, period! Design around or not would be irrelevant.

I know the TiVo folks like to point out that but Microsoft appealed the wording of the injunction, E* did not. Such argument misses the point.

As long as design around must be allowed to get around an injunction, any injunction, regardless what specific "narrow" provisions may be in the injunction, the question then is no longer whether the infringer contested the wording of the injunction, rather whether the infringer succeeded in designing around the injunction.

Microsoft argued they needed 5 months to do so, the appeals court gave them the time.

E* argued they designed around during the stay of the injunction last time, therefore the appeals court should have no problem with it, as long as the design around was a success. If the new design still infringed, of course it will be a different story.


----------



## Greg Bimson

I'd love to see a copy of the decision. However, based upon the inferences here:


jacmyoung said:


> The i4i v. Microsoft case is also interesting on another front. It is a case also came out of the E. TX court, but under Judge Davis. In this case Judge Davis awarded i4i a $200M jury award plus a $40M enhanced damage. Consider the size of Microsoft, the award was pocket change.


This sum has grown to $290 million. I wonder if there is some ongoing royalty payment setup for the infringement for each license in use? The increase would be for fees and damages since the decision.

And once again, another upholding of an Eastern District of Texas case...


jacmyoung said:


> The appeals court however accepted Microsoft's request that they needed 5 months to design around the injunction, and modified the injunction to reflect such time frame. Clearly if Microsoft managed to design around the XML patent but still keeps the XML functions in some fashion or another, the appeals court did not see any problem of it.


I don't know about that:Copies of Word 2007 and Office 2007, with this feature removed, will be available for U.S. sale by Jan. 11, and "beta versions of Microsoft Word 2010 and Microsoft Office 2010, which are available now for downloading, don't contain the technology covered by the injunction," said company spokesman Kevin Kutz.​As this decision was issued today, and the injunction is to take effect 11 January 2010, I don't see where the Court of Appeals re-wrote any injunction.


jacmyoung said:


> If we gleam from this case, it is clear designing around an injunction must be allowed. Otherwise there would be no reason for the appeals court to disturb the 60-day removal time in the original injunction, because removal is removal, period! Design around or not would be irrelevant.


Of course designing-around an injunction is allowed, _unless expressly forbidden_. However, in this case, not following the provision to disable the receivers adjudged as infringements also was cause for contempt. And I don't believe that the 60-day injunction was disturbed in _i4i v. Microsoft_.


----------



## Curtis0620

jacmyoung said:


> There is no requirement that all questions must be answered, when the answer should be obvious to a person of ordinary skill, and the questioner is clearly pretending to be a person of extraordinary skill
> 
> Today the appeals court made the ruling on the i4i v. Microsoft case. I have mentioned this case before because it was also an "expedited" review, though by a different merits panel. The hearing was on 9/23, it took about three months to hand out the ruling.
> 
> Assume the TiVo v. E* case is handled in similar way since it is also an "expedited" review, and assume the turnaround from this panel is the same, then it is not unreasonable to guess the ruling can be out in late 01/10 or early 02/10.
> 
> The i4i v. Microsoft case is also interesting on another front. It is a case also came out of the E. TX court, but under Judge Davis. In this case Judge Davis awarded i4i a $200M jury award plus a $40M enhanced damage. Consider the size of Microsoft, the award was pocket change.
> 
> *He also issued an injunction which was very "narrow". He allowed all the old Word products to continue to infringe the XML patent, prohibited infringing XML patent in all newly sold Word products, gave Microsoft 60 days to comply with the injunction to remove the infringing XML add-ons in the new Word products.*
> The appeals court however accepted Microsoft's request that they needed 5 months to design around the injunction, and modified the injunction to reflect such time frame. Clearly if Microsoft managed to design around the XML patent but still keeps the XML functions in some fashion or another, the appeals court did not see any problem of it.
> 
> If we gleam from this case, it is clear designing around an injunction must be allowed. Otherwise there would be no reason for the appeals court to disturb the 60-day removal time in the original injunction, because removal is removal, period! Design around or not would be irrelevant.
> 
> I know the TiVo folks like to point out that but Microsoft appealed the wording of the injunction, E* did not. Such argument misses the point.
> 
> As long as design around must be allowed to get around an injunction, any injunction, regardless what specific "narrow" provisions may be in the injunction, the question then is no longer whether the infringer contested the wording of the injunction, rather whether the infringer succeeded in designing around the injunction.
> 
> Microsoft argued they needed 5 months to do so, the appeals court gave them the time.
> 
> E* argued they designed around during the stay of the injunction last time, therefore the appeals court should have no problem with it, as long as the design around was a success. If the new design still infringed, of course it will be a different story.


Maybe it is because it is nearly impossible to remove the older versions from customers computers. Not so for DISH.


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## dgordo

Greg Bimson said:


> I'd love to see a copy of the decision.


http://www.cafc.uscourts.gov/opinions/09-1504.pdf


----------



## Greg Bimson

So the injunction was disturbed, albeit basically for only a three-week period.


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## jacmyoung

Curtis0620 said:


> Maybe it is because it is nearly impossible to remove the older versions from customers computers. Not so for DISH.


Have you ever attempted to remove an add-on from your computer? Have you ever failed to do so in less than 5 minutes?

The TiVo people are on their feel-good-forum using this i4i case to point out the appeals court will uphold the injunction in this TiVo case. They do not even know what to compare.

The i4i case is similar to the last TiVo v. E* in 2006's appeal, except E* did not even contest the injunction.

The issue today is whether E* was allowed to design around the injunction, including the disabling provision.

In this i4i case, the injunction also contained a provision to prohibit Microsoft from selling Word products that had the "infringing custom XML editor" add-on. As i4i argued, it should only take a software patch to accomplish such goal, implying that not much time was needed. i4i was correct it would not take much time to remove an add-on.

But Microsoft argued their software engineers needed at least 5 months to design around the XML patent. It was undisputed Microsoft had its own XML patents, it made clear in the briefing and during the hearing that it wanted to retain the XML functions by designing around the i4i's XML patent. It wanted at least 5 months to do so, The district court gave them only 60 days. The appeals court had no problem giving Microsoft the 5 months.

If you read the i4i injunction, it simply orders Microsoft to stop selling Word products with the "infringing custom XML editor", no where does it say anything about design around. And as i4i correctly pointed out, removing such editor only took some software patch, very little time was needed if you only try to remove that editor.

Why then give Microsoft 5 months? You mean 60 days were not enough? Did the appeals court say, but removal is removal, who cares if you need time to design around?

Now whether Microsoft actually is trying to design around or not is not even the issue there. Although unlikely, but Microsoft could be blowing smoke on the design around, or we could see some settlement too. But this much is clear, they are allowed to design around the injunction, any injunction, no matter what kind of special provisions are in the injunction. If more time is needed, the appeals court has no problem giving it to them, even though i4i was correct you did not need even 60 days to just remove that add-on.

The TiVo people first need to know how to compare the issues, before even attempt to compare.


----------



## jacmyoung

Greg Bimson said:


> Copies of Word 2007 and Office 2007, with this feature removed, will be available for U.S. sale by Jan. 11, and "beta versions of Microsoft Word 2010 and Microsoft Office 2010, which are available now for downloading, don't contain the technology covered by the injunction," said company spokesman Kevin Kutz. ...[/i].


Thank you for digging up this piece.

Remember the injunction ordered Microsoft to stop selling *new* Word products that contained the "infringing XML custom editor".

The "beta versions of Microsoft Word 2010" are the *new* Word products.

The statement from Microsoft implies that they had already designed around the i4i XML patent and had no plan to remove the XML custom editor from any *new* versions of the Word products 2010. The reason I say so is because apparently the 2007 versions of the Word products (old versions but still for sale) did not receive the design around, just the removal.

The position Microsoft takes is not so different that E*'s.


----------



## dfd

jacmyoung said:


> Have you ever attempted to remove an add-on from your computer? Have you ever failed to do so in less than 5 minutes?
> 
> The TiVo people are on their feel-good-forum using this i4i case to point out the appeals court will uphold the injunction in this TiVo case. They do not even know what to compare.
> 
> The i4i case is similar to the last TiVo v. E* in 2006's appeal, except E* did not even contest the injunction.
> 
> The issue today is whether E* was allowed to design around the injunction, including the disabling provision.
> 
> In this i4i case, the injunction also contained a provision to prohibit Microsoft from selling Word products that had the "infringing custom XML editor" add-on. As i4i argued, it should only take a software patch to accomplish such goal, implying that not much time was needed. i4i was correct it would not take much time to remove an add-on.
> 
> But Microsoft argued their software engineers needed at least 5 months to design around the XML patent. It was undisputed Microsoft had its own XML patents, it made clear in the briefing and during the hearing that it wanted to retain the XML functions by designing around the i4i's XML patent. It wanted at least 5 months to do so, The district court gave them only 60 days. The appeals court had no problem giving Microsoft the 5 months.
> 
> If you read the i4i injunction, it simply orders Microsoft to stop selling Word products with the "infringing custom XML editor", no where does it say anything about design around. And as i4i correctly pointed out, removing such editor only took some software patch, very little time was needed if you only try to remove that editor.
> 
> Why then give Microsoft 5 months? You mean 60 days were not enough? Did the appeals court say, but removal is removal, who cares if you need time to design around?
> 
> Now whether Microsoft actually is trying to design around or not is not even the issue there. Although unlikely, but Microsoft could be blowing smoke on the design around, or we could see some settlement too. But this much is clear, they are allowed to design around the injunction, any injunction, no matter what kind of special provisions are in the injunction. If more time is needed, the appeals court has no problem giving it to them, even though i4i was correct you did not need even 60 days to just remove that add-on.
> 
> The TiVo people first need to know how to compare the issues, before even attempt to compare.


Please explain how this 'patch' would remove the infringing software from end users computers.


----------



## jacmyoung

dfd said:


> Please explain how this 'patch' would remove the infringing software from end users computers.


Have you ever received a massage when you started your computer that your Microsoft operating system was updated?

Besides, it was i4i that argued a software patch could be used to remove and update. What do you ask me for?

The point is, when the injunction prohibited the sale of the *new* products with the infringing custom XML editor, and when Microsoft told the appeals court they needed 5 months to design around the i4i patent, and when the appeals court granted the 5 months request, and now, when Micorsoft is saying they have the *new* products with the custom XML editor for sale, after designing around the i4i patent.

How do you figure it all out? Will Microsoft violate the injunction by continuing to sell the *new* products with the newly designed custom XML editor after 1/11/2010? Keep in mind the injunction prohibits them from selling *new* Word products with infringing custom XML editor after 1/11/2010.


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## dfd

jacmyoung said:


> Have you ever received a massage when you started your computer that your Microsoft operating system was updated?


IF I enable updates AND I am connected to a network then I can get updates.

There is no way for M$ to force an update to my machine if I take measures to stop it AND I can still use the software (Word).

Is there a way for an E*/Dish customer to avoid software updates AND still use the service (programming)?


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## jacmyoung

dfd said:


> IF I enable updates AND I am connected to a network then I can get updates.
> 
> There is no way for M$ to force an update to my machine if I take measures to stop it AND I can still use the software (Word).


Are you so sure about that? Besides who cares, i4i wanted all exsiting products updated, but it did not get that.



> Is there a way for an E*/Dish customer to avoid software updates AND still use the service (programming)?


Similarly, E* has the ultimate control over the system. While a user may choose to disallow any update, E* can override it.


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## P Smith

jacmyoung said:


> ...
> Similarly, E* has the ultimate control over the system. *While a user may choose to disallow any update*, E* can override it.


In real life, E* has the *FULL* control over the system.
User choice is not exist anymore - Dish killed the user's ability to choose a while ago.


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## jacmyoung

P Smith said:


> Not exist anymore - Dish killed the user's ability to choose a while ago.


May I suggest you do not edit others' quotes? I did not ask you to edit my words.


----------



## dfd

jacmyoung said:


> Are you so sure about that? Besides who cares, i4i wanted all exsiting products updated, but it did not get that.
> 
> Similarly, E* has the ultimate control over the system. While a user may choose to disallow any update, E* can override it.


Yes, I am sure of that. I can disconnect the NIC and I can use Word.

You cannot do likewise with E*.

E* can force an update. M$ cannot.

That is why E* was ordered to disable and M$ was ordered to stop selling.


----------



## jacmyoung

dfd said:


> ...That is why E* was ordered to disable and M$ was ordered to stop selling.


Are you trying to prove me wrong or i4i wrong?

So now we know E* continued to use the DVRs, and Microsoft also says they will continue to sell Word products with the XML editor. Both claim they have successfully designed around the patents.

Can Microsoft continue to sell Word products with the XML editor after 1/11/2010 or not?


----------



## dfd

jacmyoung said:


> Are you trying to prove me wrong or i4i wrong?
> 
> So now we know E* continued to use the DVRs, and Microsoft also says they will continue to sell Word products with the XML editor. Both claim they have successfully designed around the patents.
> 
> Can Microsoft continue to sell Word products with the XML editor after 1/11/2010 or not?


I would say no and according to Greg's post M$ says they will not:

Copies of Word 2007 and Office 2007, with this feature removed, will be available for U.S. sale by Jan. 11, and "beta versions of Microsoft Word 2010 and Microsoft Office 2010, which are available now for downloading, don't contain the technology covered by the injunction," said company spokesman Kevin Kutz.


----------



## jacmyoung

dfd said:


> I would say no and according to Greg's post M$ says they will not:
> 
> Copies of Word 2007 and Office 2007, with this feature removed, will be available for U.S. sale by Jan. 11, and "beta versions of Microsoft Word 2010 and Microsoft Office 2010, which are available now for downloading, don't contain the technology covered by the injunction," said company spokesman Kevin Kutz.


Read very carefully please. The injunction prohibits the sell of the products *"with the infringing custom XML editor."*

First, for the 2007 versions, the XML editor is removed, so yes they can still sell the 2007 versions.

Second, for the new 2010 versions, the XML editor is *not* removed, rather the XML technology in the new 2010 versions is not covered by the injunction, i.e. not covered by the i4i patent.

The above statement means they did not design around for the 2007 versions, or maybe it was not easy to do so, but they did design around for the 2010 versions. How similar is this to E*.

In early 2008, E* said they designed around the 5XX and 6XX DVRs, but for the 9XXs the design around could not work properly so later they discontinued selling new 9XXs. The existing 9XXs were still used as DVRs because the injunction allowed a set number of them continued to be used.

Now of course you can say hey, Microsoft is throwing BS too just like E* back then. I have no problem if you say so. But let's be clear, both believe they can design around the patents to avoid violating the injunctions. And in the i4i case the appeals court never had any problem with design around, Microsoft told the court in the brief and during the hearing they were working on design around, they needed more time, the court gave them the time.

Whether the design around is a successful one is a whole new issue of course.


----------



## dfd

jacmyoung said:


> Read very carefully please. The injunction prohibits the sell of the products *"with the infringing custom XML editor."*
> 
> First, for the 2007 versions, the XML editor is removed, so yes they can still sell the 2007 versions.
> 
> Second, for the new 2010 versions, the XML editor is *not* removed, rather the XML technology in the new 2010 versions is not covered by the injunction, i.e. not covered by the i4i patent.
> 
> The above statement means they did not design around for the 2007 versions, or maybe it was not easy to do so, but they did design around for the 2010 versions. How similar is this to E*.
> 
> In early 2008, E* said they designed around the 5XX and 6XX DVRs, but for the 9XXs the design around could not work properly so later they discontinued selling new 9XXs. The existing 9XXs were still used as DVRs because the injunction allowed a set number of them continued to be used.
> 
> Now of course you can say hey, Microsoft is throwing BS too just like E* back then. I have no problem if you say so. But let's be clear, both believe they can design around the patents to avoid violating the injunctions. And in the i4i case the appeals court never had any problem with design around, Microsoft told the court in the brief and during the hearing they were working on design around, they needed more time, the court gave them the time.
> 
> Whether the design around is a successful one is a whole new issue of course.


So, M$ was told to stop selling the product with the infringing software and in response they stopped selling the software with the infringing software.

On the other hand, E* was told to disable units and they didn't.

Yes, now I see that these two cases and the actions of the accused are very similar.


----------



## Jim5506

I agree they are very similar, Microsoft changed the coding, Echostar changed the coding.

When the software was changed, DVR capability was, maybe only for seconds, disabled, untio the new software once again re-enabled recording using a different method.

There is more than one way to split a hair.

(Let the hornets out!)


----------



## jacmyoung

dfd said:


> So, M$ was told to stop selling the product with the infringing software and in response they stopped selling the software with the infringing software.


No, Microsoft is not asked to stop selling the "software" with "infringing software", rather to stop selling the "products" with the "infringing XML editor". Don't change the wording of the injunction.

Now Microsoft is saying for the new products (the 2010 versions) they still will sell them with the XML editor, but the redesigned editor does not infringe the i4i patent, therefore not covered by the injunction.



> On the other hand, E* was told to disable units...


Wrong again, E* was told to disable the DVR functions *from the Infringing Products*, all of the storage and playback *from the Infringing Products*. Don't change the wording of the injunction.



> and they didn't.


They did, when they downloaded the new software, the Infringing Products were disabled, anyone who used any kind of satellite DVRs knows the DVRs are disabled when the new software are downloaded.

After the new software were downloaded and the DVRs began to function again, the DVRs were no longer "Infringing Products" anymore. Since they were no longer "Infringing Products", the injunction no longer covered them.



> Yes, now I see that these two cases and the actions of the accused are very similar.


That I agree.


----------



## jacmyoung

Jim5506 said:


> ... maybe only for seconds, disabled, ...


I can tell you from experience definitely more than seconds, sometimes can be days


----------



## James Long

Jim5506 said:


> When the software was changed, DVR capability was, maybe only for seconds, disabled, untio the new software once again re-enabled recording using a different method.


Yep. The DVR capability of my DISH receiver is disabled every night for about five minutes. When there is a firmware update that ability is disabled for 30-45 minutes. Audio/video data is not able to be stored or retrieved on the hard time during these periods.



jacmyoung said:


> I can tell you from experience definitely more than seconds, sometimes can be days


DISH has had some interesting firmware updates but nothing that disabled the hard drive for days. Some believe updates have permanently killed their DVRs ... but these were individual cases NOT the systemwide shutdown of the adjudicated as infringing receivers.


----------



## Greg Bimson

Jim5506 said:


> When the software was changed, DVR capability was, maybe only for seconds, disabled, untio the new software once again re-enabled recording using a different method.
> 
> There is more than one way to split a hair.


Sure there is more than one way to split a hair:

DISH/SATS was ordered to "disable storage to and playback from the hard drive of television data", "in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber", "until the expiration of the '389 patent." The Infringing Products are, "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."

Disabling functionality is supposed to be longer than "maybe only for seconds".


----------



## jacmyoung

Greg Bimson said:


> Sure there is more than one way to split a hair:
> 
> DISH/SATS was ordered to "disable storage to and playback from the hard drive of television data", "in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber", "until the expiration of the '389 patent." The Infringing Products are, "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."
> 
> Disabling functionality is supposed to be longer than "maybe only for seconds".


You are selectively quoting and connecting quotes together again.

The injunction said to: disable the DVR functionalities (i.e. disable all storage and playback from hard drive) *of the Infringing Products*...

Now if the appeals court agrees with E* that the modified DVRs may no longer be "Infringing Products" after the new software download, should the above term still apply to the non-infringing products?

It applied to the Infringing Products before the new software download, yes, but after the download, if the appeals court agrees that the same products may no longer be Infringing Products?


----------



## Greg Bimson

jacmyoung said:


> You are selectively quoting and connecting quotes together again.
> 
> The injunction said to: disable the DVR functionalities (i.e. disable all storage and playback from hard drive) of the Infringing Products...


Re-read what I wrote. The first two are pieced together because the definition of "DVR functionality" , the first phrase I quoted, was placed in parentheses. The second phrase which follows is taken verbatim, and follows the first phrase.


jacmyoung said:


> Now if the appeals court agrees with E* that the modified DVRs may no longer be "Infringing Products" after the new software download, should the above term still apply to the non-infringing products?


Infringing Products has one definition. Only one definition. The Court of Appeals will not agree with DISH/SATS on that subject, IMO.

The only real issue is whether or not the Court of Appeals upholds the finding of infringement. If it is reversed, then IMO DISH/SATS will be in contempt for failure to disable, but the Infringing Products will no longer have to be disabled. That is the foundation of DISH/SATS defense.


----------



## jacmyoung

Greg Bimson said:


> Re-read what I wrote. The first two are pieced together because the definition of "DVR functionality" , the first phrase I quoted, was placed in parentheses. The second phrase which follows is taken verbatim, and follows the first phrase.


That is the problem, you should not alter the wording, and the order of the wording of the injunction to fit your own needs, but quote it as it is. Because the wording of the injunction was argued for by the parties for weeks to result in its final form, there are critical reasons why it is in such form. The statutes demand the injunctions to be clear, specific and concise, so it will do you some good to follow it to its exact form.



> Infringing Products has one definition. Only one definition. The Court of Appeals will not agree with DISH/SATS on that subject, IMO.


I am so glad in the end you used the "IMO". You have no basis to say the appeals court "will not agree" with E*.

The appeals court has the power to determine whether the new software had rendered the DVRs likely no longer infringing or not, if its answer is yes, it has every power to decide the "Infringing Products" were likely no longer "Infringing Products" once the new software were installed.

Please do not tell us you know the appeals court cannot make such determination.


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## Daniel

jacmyoung said:


> Please do not tell us you know the appeals court cannot make such determination.


Hello pot, have you met kettle?


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## James Long

jacmyoung said:


> Please do not tell us you know the appeals court cannot make such determination.


Gentlemen: Please discuss the topic of the thread and not other posters within it, or said thread will be taking a vacation until some significant court activity occurs.

(Significant to the level of disabling or allowing the receiver's DVR functionality.)


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## Greg Bimson

jacmyoung said:


> That is the problem, you should not alter the wording, and the order of the wording of the injunction to fit your own needs, but quote it as it is. Because the wording of the injunction was argued for by the parties for weeks to result in its final form, there are critical reasons why it is in such form. The statutes demand the injunctions to be clear, specific and concise, so it will do you some good to follow it to its exact form.


I did. Just because I replaced "DVR functionality" with the definition given in the injunction does not make it fit my own needs.

Even if I quoted it as-is doesn't change the meaning one iota, contrary to the opinion of others.


jacmyoung said:


> I am so glad in the end you used the "IMO". You have no basis to say the appeals court "will not agree" with E*.


"All means ALL".

It is easy to read the tea leaves on the issue regarding contempt for failure to disable. DISH/SATS challenge was that they followed the injunction. Their arguments are so out of touch that Judge Folsom barely spent a page and a half on it in his decision. And Judge Rader was talking down to the advocate that had to fight that case in front of him.


jacmyoung said:


> The appeals court has the power to determine whether the new software had rendered the DVRs likely no longer infringing or not, if its answer is yes, it has every power to decide the "Infringing Products" were likely no longer "Infringing Products" once the new software were installed.


It has nothing to do with whether "Infringing Products" are no longer "Infringing Products". It only matters if "Infringing Products" are no longer infringing.


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## jacmyoung

Greg Bimson said:


> ..."All means ALL".
> 
> It is easy to read the tea leaves on the issue regarding contempt for failure to disable.


Yes, this is the only "tea leaf" you got from that hearing, while refusing to read many other "tea leaves".

Judge Rader asked E*'s attorney didn't all mean all? E* attorney gave the answer, all meant all for products that infringed, no injunction can read to mean to prohibit design around.



> And Judge Rader was talking down to the advocate that had to fight that case in front of him.


Of course Judge Rader really talked up TiVo's attorney. I suggest you listen to the i4i v. Microsoft audio, you will notice the judges "talked down" on both attorneys, especially on the i4i attorney with regard to how their experts came up with the huge damages figures. Unfortunately Microsoft screwed it up during the trial on that one issue, they did not dispute the high damages.



> It has nothing to do with whether "Infringing Products" are no longer "Infringing Products". It only matters if "Infringing Products" are no longer infringing.


If the "Infringing Products" were no longer infringing after the new software download, can you not see that the court may say after that point they were no longer "Infringing Products"?

I am not saying this is what the court will have to say, but you seem to imply the appeals court cannot say and will not say, hey after that point, we no longer should view them as "Infringing Products" any more.


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## l8er

Motion to shut up and wait for the "courts" to do what courts do. Anything else is a waste of electrons at this point.


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## jacmyoung

Greg Bimson said:


> ...Even if I quoted it as-is doesn't change the meaning one iota, contrary to the opinion of others...


If so, why not quote it as-is? Why do you always see the need to cut and paste and replace key words? Why did TiVo always cut and past and replace the words? What was TiVo afraid of by quoting the exact "disabling provision" in the injunction in its exact form?

After all, TiVo provided it to the judge, and the judge adopted it. You mean to tell me now TiVo cannot even stare down at the exact wording of the disabling provision TiVo insisted to put in there in the first place?


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## Greg Bimson

jacmyoung said:


> After all, TiVo provided it to the judge, and the judge adopted it. You mean to tell me now TiVo cannot even stare down at the exact wording of the disabling provision TiVo insisted to put in there in the first place?


Simple.

There are key words that can be removed and replaced with its definition. The disable provision in the injunction reads:Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable storage to and playback from the hard drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.​And it can simply be restated as:DISH/SATS was ordered to "disable storage to and playback from the hard drive of television data", "in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber", "until the expiration of the '389 patent." The Infringing Products are, "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."​The phrase reads "disable the DVR functionality" and has a definition in parentheses following it. Of course the phrase "disable the DVR functionaligy" can be replaced with its following defintion. It is both basic English and even basic legalese.

Besides, I've seen many a citation here simply taken out of context and presented in this thread. And the most bogus and egregious violation of that?Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.​Infringing Products has a definition. "Interpreting" Infringing Products to mean something else is completely idiotic, as the meaning is right there in black and white.

The only way DISH/SATS can say they complied with the injunction is to try and redefine terms that have a given meaning. The courts will not buy that.

I find it peculiar that DISH/SATS can take snippets of any case law that supports their position, but the complaints rise when TiVo does the same.


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## Greg Bimson

jacmyoung said:


> Of course Judge Rader really talked up TiVo's attorney. I suggest you listen to the i4i v. Microsoft audio, you will notice the judges "talked down" on both attorneys, especially on the i4i attorney with regard to how their experts came up with the huge damages figures. Unfortunately Microsoft screwed it up during the trial on that one issue, they did not dispute the high damages.


Funny this should be mentioned.

The Court of Appeals may have decided to reduce the damages that Microsoft would have to pay to i4i, but because of a procedural error by Microsoft, the judgment was upheld.

So...


jacmyoung said:


> Judge Rader asked E*'s attorney didn't all mean all? E* attorney gave the answer, all meant all for products that infringed, no injunction can read to mean to prohibit design around.


Stating "no injunction can read to mean to prohibit design around" is stating the injunction contains errors. According to *procedure*, errors within an injunction must be challenged upon appeal before it goes into effect. Once in effect, it is too late to state the injunction cannot "prohibit design around", when given the plain and defined terms the injunction doesn't prohibit design around at all. Of course, this goes back to that idiotic argument that "Infringing Products" mean products that infringe, when there is only one definition of the phrase and it is the eight models of DVR adjudged as infringements before the court.

The injunction however does give a single course of action to follow regarding the admitted DVR's found infringing and within customers' homes: disable storage to and playback from the hard drive of television data. And the other idiotic argument was that somehow the injunction was followed before it became active, when injunctions are to be followed WHEN they become active.


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## jacmyoung

Greg Bimson said:


> Funny this should be mentioned.
> 
> The Court of Appeals may have decided to reduce the damages that Microsoft would have to pay to i4i, but because of a procedural error by Microsoft, the judgment was upheld.


It has to do with JMOL issue only, go read the case law. The law said before you can appeal the judgment, the losing party must first raise the issue to the district court, and if the district court refuses to hear it or rules against your JMOL, then you may appeal.

After the district court issued the final judgment, Microsoft simply failed to raise the damages issue in their JMOL, before they appealed.

In this case, E* raised all of their objections after Judge Folsom issued his amended final judgment and the contempt order, E* stated clearly that the district court declined to reconsider. All appeals procedures were met.



> So...Stating "no injunction can read to mean to prohibit design around" is stating the injunction contains errors.


Wrong. E* never said the original injunction had any error, they only said the amended injunction had error, specifically the "inform and approval" provision.

E* has been consistently arguing that the original injunction was correct and they followed it to the letter. What the above statement means is that it is E*'s contention TiVo and the judge read the injunction wrong.

This is precisely why it is ridiculous for TiVo and the judge to argue that E* did not appeal the wording of the injunction last time, how do you suppose to appeal it if you agree with it?



> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable storage to and playback from the hard drive of television data) in all but 192,708 units *of the Infringing Products* that have been placed with an end user or subscriber.


Now the above is the exact wording of the so called "disabling provision", or at least the main part of it. TiVo accused E* of violation of the *letter of the injunction*, specifically the above provision. Remember the "prima facie" crap?

What dose "letter of the injunction" mean to you? And yet in TiVo's briefs, it consistently avoided the use of the term "Infringing Products", every time it is forced to quote it, TiVo replaced the term "Infringing Products" with something else such as "adjudicated DVRs".

Why? If your theory is entirely based on the "letter of the injunction" yet you can't even face the "letters", what in the world are you accusing others of not following the "letter"?


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## Greg Bimson

jacmyoung said:


> E* has been consistently arguing that the original injunction was correct and they followed it to the letter. What the above statement means is that it is E*'s contention TiVo and the judge read the injunction wrong.


And DISH/SATS was found in contempt of the disable provision, thus reinforcing that DISH/SATS interpreted the injunction incorrectly.

It is as if DISH/SATS invalid interpretation of the injunction actually has any merit. It doesn't...


jacmyoung said:


> This is precisely why it is ridiculous for TiVo and the judge to argue that E* did not appeal the wording of the injunction last time, how do you suppose to appeal it if you agree with it?


Because the determination that "E* attorney gave the answer, all meant all for products that infringed, no injunction can read to mean to prohibit design around..." is a faulty and incorrect interpreation of the injunction. _That is what happens when faced with a bulletproof injunction and an attempt to defend by obfuscation._

It starts with strained definitions, none of which can possibly stand up to any scrutiny:

1) Infringing Products was defined as the eight models of DVR. DISH/SATS' interpretation tries to change the definition.
2) Disable the DVR functionality was defined as disabling the storage to and playback from the hard drive of television data. DISH/SATS tries to change the definition
3) DISH/SATS argues they followed the injunction because they disabled the targeted DVR's for a moment way before the injunction became active. But when the injunction became active they did nothing, and the injunction required them to do something, i.e., disable the DVR functionality.

It strains all credibility to believe that interpretation will somehow be upheld, when all of the definitions are there in black and white.

Besides, DISH/SATS doesn't care if they are in contempt of the disable provision. DISH/SATS cares that they no longer infringe, because it would lead to the ability to remove the formerly infringing devices from the scope of the injunction. That has been DISH/SATS gameplan all along.


jacmyoung said:


> Wrong. E* never said the original injunction had any error, they only said the amended injunction had error, specifically the "inform and approval" provision.


Ah. So here is the problem. DISH/SATS raised no objection to the injunction which then became active, yet because their argument that an injunction is invalid if it prohibits non-infringing devices is a collateral attack on a standing injunction. That makes it a procedural error as the injunction wasn't challenged before it became active.


jacmyoung said:


> Now the above is the exact wording of the so called "disabling provision", or at least the main part of it. TiVo accused E* of violation of the letter of the injunction, specifically the above provision. Remember the "prima facie" crap?
> 
> What dose "letter of the injunction" mean to you? And yet in TiVo's briefs, it consistently avoided the use of the term "Infringing Products", every time it is forced to quote it, TiVo replaced the term "Infringing Products" with something else such as "adjudicated DVRs".


I remember the "prima facie" crap, as in the fact that the disable provision wasn't followed. And when a bench hearing was ordered to determine infringement, DISH/SATS (and many here) gleefully said that the "prima facie" crap had no merit. I was one of the few that stated it was still an issue.

Then when the decision was released and DISH/SATS was not only found in contempt for continuing infringement but also in "prima facie" contempt for failure to disable as ordered, many were in disbelief.

I'll simply stand by my track record.

When the defense decides to attempt to redefine "Infringing Product", the plaintiffs simply go back to the definition provided, and even name it something else.

If DISH/SATS can redefine in defense, TiVo can redefine in pursuit.

DISH/SATS states "Infringing Products" means products which infringe.
TiVo states "Infringing Products" means the adjudged DVR's, the eight models which were found to infringe, exactly as the definition states.


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## scooper

Greg Bimson said:


> If DISH/SATS can redefine in defense, TiVo can redefine in pursuit.


No they can't - else their whole prosecution of the patent infringement falls apart.

If I was the judge - I'd be telling Tivo " OK, which definition are you using for all time - there will be no changing of definitions."

If the Patent holder can change definitions anytime they feel like it - then they can can change it to counter any / all workarounds. And that is simply not fair.


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## Greg Bimson

Greg Bimson said:


> If DISH/SATS can redefine in defense, TiVo can redefine in pursuit.





scooper said:


> No they can't - else their whole prosecution of the patent infringement falls apart.


In this case, I am talking about the redefining of the injunction, not the infringement. DISH/SATS is trying to confuse by redefining "Infringing Products" to mean something other than the definition provided within the injunction. TiVo is simply creating a definition that is inline with the provided definition clarifying DISH/SATS attempt to redefine.

However, since you brought this up about redefining infringement...

Every expert (all five; three from DISH/SATS and two from TiVo) testified under oath during trial that PID filtering met the "parse video and audio data from broadcasting data" limitation. In order to defeat this, one of the experts from DISH/SATS had to recant his testimony during the bench hearing because he felt once DISH/SATS was found guilty that what he said under oath didn't matter.

Five experts agreed that PID filtering meet the claim. The expectation is that a panel of judges is going to dismiss those experts' testmonies and overturn a contempt ruling for continuing infringement that is simply an extension of the evidence used during trial.

TiVo did not redefine the testimony that was used to find infringement during the trial. DISH/SATS is trying to do just that.


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## jacmyoung

Greg Bimson said:


> And DISH/SATS was found in contempt of the disable provision, thus reinforcing that DISH/SATS interpreted the injunction incorrectly.
> 
> It is as if DISH/SATS invalid interpretation of the injunction actually has any merit. It doesn't...


Whether E*'s interpretation is correct, or TiVo and the judge's interpretation is correct, has not been determined by the appeals court yet. You keep jumping ahead, as if your opinion will be the appeals court's opinion.



> Because the determination that "E* attorney gave the answer, all meant all for products that infringed, no injunction can read to mean to prohibit design around..." is a faulty and incorrect interpreation of the injunction.


That is your opinion, the appeals court has not made the determination yet.



> That is what happens when faced with a bulletproof injunction and an attempt to defend by obfuscation.


Again this is your opinion. If the injunction is as "bulletproof" as you think, why would TiVo be forced to replace the term "Infringing Products" with something like "adjudicated DVRs" every time it was faced with that term? Because there is this 18-letter bullet hole in that injunction.



> Besides, DISH/SATS doesn't care if they are in contempt of the disable provision.


What are you talking about? E* spent half of their time arguing they were not in contempt that they followed the letter of the injunction.



> Ah. So here is the problem. DISH/SATS raised no objection to the injunction which then became active, yet because their argument that an injunction is invalid if it prohibits non-infringing devices is a collateral attack on a standing injunction.


You continue to not understand the "on alternative" argument. E* does not say the injunction is invalid, E* continues to insist the original injunction was valid, and they followed that injunction to the letter.

But "on alternative", even if we take TiVo's position and TiVo's interpretation, it can only lead to the conclusion that the injunction would prohibit design around. Since we all know and agree that no injunction can prohibit design around, for that very reason, TiVo's interpretation is wrong. Not the original injunction was wrong, but TiVo's interpretation was wrong.

When you argue on the alternative, you do not give up your position, you only take your opponent's position which you do not agree with, but use that position to again prove your opponent wrong.



> When the defense decides to attempt to redefine "Infringing Product", the plaintiffs simply go back to the definition provided, and even name it something else.
> 
> If DISH/SATS can redefine in defense, TiVo can redefine in pursuit.


E* did not redefine the terms, E* simply quoted the term. It was TiVo who tried to redefine the term buy replacing it with "adjudicated DVRs." To disguise itself, TiVo tried to accuse E* of "redefining", an offense TiVo was committing itself.

If you are accusing E* of violation of the "letter" of the injunction, then show us the "letter", don't change the "letter". If TiVo is forced to change the "letter" every time it needs it, then it shows how hollow TiVo's "letter of injunction" theory is.


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## jacmyoung

scooper said:


> No they can't - else their whole prosecution of the patent infringement falls apart.
> 
> If I was the judge - I'd be telling Tivo " OK, which definition are you using for all time - there will be no changing of definitions."
> 
> If the Patent holder can change definitions anytime they feel like it - then they can can change it to counter any / all workarounds. And that is simply not fair.


This was exactly why TiVo delayed their response to the PTO rejection to one day after the oral argument. As I said earlier, had TiVo responded to the PTO before the original deadline, which was 30 days before the oral argument, TiVo's response would have been submitted by E* to the appeals panel as evidence.

In this evidence, TiVo did not even dispute the PTO's contention that the software claims required start code detection and indexing. The evidence, had it been submitted to the appeals panel, would undoubtedly add to the merits of E*'s argument, that was exactly why TiVo tried to delay it to one day after the oral argument, i.e. after the case submission.

But it shouldn't matter, the PTO's contention that the software claims required start code detection and indexing, was already on file with the appeals court.


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## Curtis52

scooper said:


> If the Patent holder can change definitions anytime they feel like it - then they can can change it to counter any / all workarounds. And that is simply not fair.


It isn't within TiVo's power to change definitions. The court determined the definitions during claim construction.


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## jacmyoung

Curtis52 said:


> It isn't within TiVo's power to change definitions. The court determined the definitions during claim construction.


Not so. Anything TiVo says during the litigation and/or the PTO proceedings can be used against TiVo because it is part of the patent prosecution history.

I have already used one example. During the first reexamination, the PTO did not reject the software claims, the sole base was the software claims disclosed this art called "objects", which was not present in the prior art references.

But during the trial TiVo told the court the "object" was merely a "collection of data and operations". And the courts affirmed such TiVo's interpretation. E* in turn informed the PTO of such new interpretation, which allowed the PTO to reject the software claims this time around simply because the prior art references also disclosed "collection of data and operations".

Here is another example. During the contempt proceeding TiVo insisted that the software claims had nothing to do with start code detection and indexing, had the PTO not corrected such nonsense, and if again the courts affirm such nonsense, then later E* would be able to bring back the start code detection and indexing to its DVRs without infringing on the TiVo's patent.

Everything TiVo says, or E* says, are on the record and if affirmed by the courts, can be used for or against them in future proceedings.


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## Greg Bimson

jacmyoung said:


> Whether E*'s interpretation is correct, or TiVo and the judge's interpretation is correct, has not been determined by the appeals court yet. You keep jumping ahead, as if your opinion will be the appeals court's opinion.


The opinion of the Court of Appeals doesn't matter UNTIL the body renders its decision. The current ruling is that DISH/SATS interpretation is incorrect. That ruling has not been stayed. That ruling is being questioned, but it has not been stayed.


jacmyoung said:


> You continue to not understand the "on alternative" argument. E* does not say the injunction is invalid, E* continues to insist the original injunction was valid, and they followed that injunction to the letter.


And the only way to come to that conclusion is a collateral attack on a standing injunction.


jacmyoung said:


> But "on alternative", even if we take TiVo's position and TiVo's interpretation, it can only lead to the conclusion that the injunction would prohibit design around.


No. Wholly incorrect.


jacmyoung said:


> Since we all know and agree that no injunction can prohibit design around, for that very reason, TiVo's interpretation is wrong.


No. Wholly incorrect.

First, there wasn't anything within the original injunction to prohibit a design-around. There was simply an order to follow regarding a large majority of DVR's found infringing and installed in customers' homes. Once that injunction became active, the order was to disable those DVR's. Just because software may have been changed does not negate the need to follow the injunction. If anyone is reading something more into the injunction, so be it. Stating that a design-around is prohibited is a wholly incorrect conclusion.

Second, there have been numerous citations where infringers can no longer work-around without court approval. Even in this case, there is now an injunction (stayed) that work-arounds must have court approval before implementation. So to say "that no injunction can prohibit design around" is wholly incorrect.


jacmyoung said:


> You continue to not understand the "on alternative" argument. E* does not say the injunction is invalid, E* continues to insist the original injunction was valid, and they followed that injunction to the letter.


I understand it fine. DISH/SATS states they followed the injunction to the letter and has been found in contempt for failure to follow that injunction to the letter. Which means the argument that DISH/SATS followed the injunction to the letter is wholly incorrect.

What is DISH/SATS going to say? They didn't follow the injunction because it was invalid? They'd admit the didn't adhere to the injunction's terms? That is contempt.


jacmyoung said:


> E* did not redefine the terms, E* simply quoted the term.


Really?By its plain terms, the Injunction, including the "disable DVR functionality" clause, can only cover "Infringing Products," not the non-infringing technology EchoStar has now deployed. It does violence to the natural meaning of the phrase "Infringing Products" to argue, as TiVo does, that it encompasses units supplied with EchoStar's non-infringing software.​Obfuscation.

There is only one meaning to the term "Infringing Products", and DISH/SATS tried to change it.


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## jacmyoung

Greg Bimson said:


> The opinion of the Court of Appeals doesn't matter UNTIL the body renders its decision. The current ruling is that DISH/SATS interpretation is incorrect. That ruling has not been stayed. That ruling is being questioned, but it has not been stayed.


Actually the ruling has been stayed, despite the fact both TiVo and the judge refused to admit it.

Just go read the appeals court stay order, it defined *"the order"* to mean:



> (1) holding EchoStar in contempt of its previous injunction, (2) enjoining EchoStar, and (3) requiring that EchoStar take certain steps in light of its contempt holdings.


It then clearly stated that *"the order"* was stayed. By plain reading of the stay order, yes the contempt finging was stayed. I know the judge did not agree, that is fine. I see a lot of disagreement between Judge Folsom and the appeals court lately, in one case the appeals court said he was "patently erroneous".



> Second, there have been numerous citations where infringers can no longer work-around without court approval.


Please show me which ones, don't just claim, show us. There was only single citation TiVo made in one case when the infringers tried to design around four times, each time was later determined to continue to infinge, only after that the district court told the infringer to obtain approval first.



> Even in this case, there is now an injunction (stayed) that work-arounds must have court approval before implementation. So to say "that no injunction can prohibit design around" is wholly incorrect.


Even TiVo and the judge agreed no injunction may prohibit design around, so please at least follow their train of thought. Asking the infringer to inform and obtain approval is actually to tell them, yes, they can design around the injunction, just that they need to inform and get aprpoval first.



> I understand it fine.


We shall see.


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## jacmyoung

In reviewing the oral argument, I noticed one very important exchange between Judge Rader and the TiVo's attorney Mr. Waxman, which was totally overlooked, even by E* in their briefs and argument during the hearing.

Mr. Waxman when trying to explain exactly what TiVo asked for from the "disabling provision", he quoted TiVo's own 2006 statement from the appendices, which said: "disable all infringing DVR functions from the DVRs." Judge Rader followed him by repeating TiVo's statement: "disable all infringing DVR functions from the DVRs."

Basically in trying to get Mr. Waxman to clarify what the disabling provision really meant, i.e. what did that "all" mean? Judge Rader got Mr. Waxman to disclose that TiVo actually had the answer back then, which said it meant "all infringing DVR functions".

Not any DVR functions, but all *infringing* DVR functions. I could hear Mr. Waxman after mentioned that TiVo's statement, quickly tried to move on, but Judge Rader repeated that statement back to him.

If the modified DVRs may no longer be infringing, then of course the DVR functions they perform may no longer be "infringing DVR functions". Since TiVo clearly stated the purpose of the "all means all" was to "disable all *infringing* DVR functions," I guess people can fill in the blank for me.

I am only very disappointed of the fact E* never caught that TiVo's statement in the appendices which TiVo made in 2006. By some luck, Mr. Waxman offered it to judge Rader during the oral argument, and it seemed the judge took notice of it, by repeating it back to Mr. Waxman.

Of course in reality it should not matter, because the term "Infringing products" is good enough. But TiVo and Judge Folsom's entire argument has been hinged on the "all means all", yet no one at E* even bothered to dig up what TiVo actually said to the court back in 2006 what that "all" meant? And it took Judge Rader to get it out of Mr. Waxman, both of them did so probably unintentionally.

That is a major oversight on E*'s part without a doubt.


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## jacmyoung

BTW, Judge Rader also quoted TiVo when TiVo told both the district court and E* back in 2006 how to implement the "disablement provision":

"E* can disable *the infringing DVR functionality* from all of its DVRs by reprogramming the DVRs through a software transmission."

Now this was the method TiVo said E* could use to comply with the "disablement provision".

It is E*'s contention they did just as TiVo said they could do, by downloading a new software to disable *the infringing DVR functionality*, after reprogramming the DVRs, the infringing DVR functions were gone.

TiVo now says but they still have DVR functions, who cares if they are infringing or not? Well back in 2006 TiVo cared, they specifically said to disable "the infringing DVR functionality".

Maybe TiVo shoud have "appealed" the last time to change their meaning from "the infringing DVR functionality" to "all DVR functionality"?


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## jacmyoung

Interesting have not seen Judge Rader appearing in any of the recent appeals court rulings. Assume he will be the lead judge in the TiVo v. E* case, either he is on vacation, preparing his next lecture/trip, or he is hard at work on this case.

I'd like to suggest TiVo prepare to sue E* for infringement by all the new TV Everywhere hardware just rolled out at the CES.


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## jacmyoung

Not much except that Verizon just in the past few days filed for the appearances of 7 attorneys in the TiVo v. Verizon case. I guess finally both the ATT and the Verizon lawsuits are taking shape.

Depend on the timing, if the TiVo's software claims stay rejected by the PTO, one of the first things ATT and Verison can do is to have the court stay any proceedings with respect to the software claims. If so they have E* to thank for.


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## Greg Bimson

IIRC, The "Time Warp" patent was one of three patents where TiVo is claiming infringement. Not sure how the courts would handle that, but I have to believe that since the other two patents have yet to be challenged, the case could go on with the other two patents, and probably drag the third with it.


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## jacmyoung

Greg Bimson said:


> IIRC, The "Time Warp" patent was one of three patents where TiVo is claiming infringement. Not sure how the courts would handle that, but I have to believe that since the other two patents have yet to be challenged, the case could go on with the other two patents, and probably drag the third with it.


The other two patents are the "continuations" of the Time Warping patent. I am no lawyer, but maybe that means if the Time Warping patent is not infringed, the other two cannot be infringed. Correct me if I am wrong.

I have read the other two patent claims some time ago, they both contain key claims in the Time Warping patent claims.


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## Curtis52

Wrong thread.


----------



## Maverickjoe

jacmyoung said:


> Depend on the timing, if the TiVo's software claims stay rejected by the PTO, one of the first things ATT and Verizon can do is to have the court stay any proceedings with respect to the software claims. If so they have E* to thank for.


It should not go uncorrected that TiVo's software claims (i.e. the '389 patent) have NOT been rejected by the USPTO, nor would AT&T or Verizon have any claim to stay their proceedings on the basis that those patents are invalid. If and when the USPTO issues a 'final' ruling, any party who has relied upon the TiVo patent (including TiVo) has the right to appeal any modifications through the CAFC and beyond. Until due process is complete the '389 patent is the law of the land. Furthermore, if the CAFC upholds the current appeal, any pending cases in the EDTX can rely upon the Markman hearings, claim constructions and judicial orders of that court. That might make for an expedient trial.


----------



## jacmyoung

Maverickjoe said:


> It should not go uncorrected that TiVo's software claims (i.e. the '389 patent) have NOT been rejected by the USPTO,


Yes they have, go read the 8/4/09 PTO's initial office action rejecting the software claims.



> ...nor would AT&T or Verizon have any claim to stay their proceedings on the basis that those patents are invalid.


No one said they could stay the proceedings for the entire patents, only that proceedings with respect to the claims that are under rejection.



> ... Until due process is complete the '389 patent is the law of the land.


Yet as long as the claims are under the PTO's rejection, the patent owners may not have a valid complaint against any accused infringers with respect to those rejected claims, as long as the complaint has not gone too far beyond the initial discoveries.

Please don't confuse the validity of the patent with the rejection of the patent claims. Yes until the PTO final rejection action is upheld on appeals (if the patent owners should appeal), the patent is assumed valid, but still if the patent claims are under rejection, the patent owners may not have a valid complaint against any newly accused infringers until such time the patent owners succeed in overcoming the PTO's rejection on appeal.



> Furthermore, if the CAFC upholds the current appeal, any pending cases in the EDTX can rely upon the Markman hearings, claim constructions and judicial orders of that court. That might make for an expedient trial.


I think you meant to say "if the CAFC upholds Judge Folsom's ruling". Even if the CAFC reverses Judge Folsom judgment and/or vacate his order, most of the claim constructions can still be relied on in the ATT/Verizon case.


----------



## Maverickjoe

jacmyoung said:


> No one said they could stay the proceedings for the entire patents, only that proceedings with respect to the claims that are under rejection.


Actually, you stated "that ATT and Verizon can...have the court stay any proceedings with respect to the software claims". You missed your own point and my counterpoint - that is that there are NO claims that have been 'rejected' in the eyes of the law, nor will any claims be 'rejected' until the CAFC affirms a rejection. And that will take many,many years.:nono2:



jacmyoung said:


> Yet as long as the claims are under the PTO's rejection, the patent owners may not have a valid complaint against any accused infringers with respect to those rejected claims, as long as the complaint has not gone too far beyond the initial discoveries.


This is simply not true, unless you are hanging your theory on the verb "may", which is typically meant to mean "having a possibility". Sure, anything is possible, but there is NO established case law that a post-acceptance and later preliminary ex parte rejection of a patent claim has EVER been succesfully used to defer the enforcement of patent rights.:nono2:



jacmyoung said:


> Please don't confuse the validity of the patent with the rejection of the patent claims.


I am not confused at all, it seems you are confounded by the principle of due process.



jacmyoung said:


> if the patent claims are under rejection, the patent owners may not have a valid complaint against any newly accused infringers until such time the patent owners succeed in overcoming the PTO's rejection on appeal.


This is patently false, there is no basis in law for making this assertion and you should be ashamed for posting such a blatently misinformed or fabricated statement.:nono2:


----------



## jacmyoung

Maverickjoe said:


> ...that is that there are NO claims that have been 'rejected' in the eyes of the law, ...


Trial courts regularly stay patent infringement suits when the claims are rejected in reexaminations even though the patents are valid, as long as the court proceedings are not too far beyond the initial discoveries. In E*'s own 10K they listed no less than three cases, involving E*, DirecTV and a few cable companies, which were sued by patent trolls, most of those cases have been stayed for years because the claims have been rejected by the PTO in reexaminations at the early stages of the lawsuits, despite the fact all the patents are still valid. The patent owners must first overcome those rejections before suing people for infringement.

As for other arguments obviously you have no intention to cite any support for your contentions other than saying I am patently wrong, you are free to say so.


----------



## Maverickjoe

jacmyoung said:


> Trial courts regularly stay patent infringement suits when the claims are rejected in reexaminations even though the patents are valid, as long as the court proceedings are not too far beyond the initial discoveries. In E*'s own 10K they listed no less than three cases, involving E*, DirecTV and a few cable companies, which were sued by patent trolls, most of those cases have been stayed for years because the claims have been rejected by the PTO in reexaminations at the early stages of the lawsuits, despite the fact all the patents are still valid.


Your claim that "E*'s own 10K...listed no less than three cases involving E*... which were sued by patent trolls, most of those cases have been stayed for years because the claims have been rejected by the PTO in reexaminations" is misleading. Are any of these so-called cites from cases in which the patents have been adjudicated? I will guarantee you the answer is no, which makes your assertion false and misleading.

Second, your lack of command of English makes it difficult to comprehend your assertions that in "E*'s own 10K they listed no less than three cases, involving E*, DirecTV and a few cable companies, which were sued by patent trolls, most of those cases have been stayed for years because the claims have been rejected by the PTO in reexaminations at the early stages of the lawsuits, despite the fact all the patents are still valid".

I checked numerous E* 10k's and can not find any instances where E* referred to PTO reexaminations causing litigation to be stayed. Perhaps your poor grammer was intended to mean that they referred to cases where this may have happened, albeit in some other context.

In any event, there is no case where a patent holder has successfully defended a patent through trial and after having been upheld in appeal another violater has successfuly stayed the proceedings "for years because the claims have been rejected by the PTO in reexaminations ".

In psychotherapy terms, your confusion can be attributed to "cognitive dissodance". You wish for an outcome and bend reality to meet that outcome ignoring the plain facts and circumstances obvious to an independent observer.


----------



## jacmyoung

Maverickjoe said:


> Your claim that "E*'s own 10K...listed no less than three cases involving E*... which were sued by patent trolls, most of those cases have been stayed for years because the claims have been rejected by the PTO in reexaminations" is misleading. Are any of these so-called cites from cases in which the patents have been adjudicated? I will guarantee you the answer is no, which makes your assertion false and misleading.


Are any of the ATT/Uverse DVRs adjudicated already? They were the subjects of my statement. Perhaps you were confused since you did not read carefully? To go one step further, are any of the newer DISH VIP DVRs adjudicated? No, therefore TiVo may not even be able to continue to chase after those newer DVRs, while TiVo's software claims are under rejection, because DISH's old adjudicated DVRs only infringed the software claims, which are now under the PTO's rejection.



> Second, your lack of command of English makes it difficult to comprehend your assertions that in "E*'s own 10K they listed no less than three cases, involving E*, DirecTV and a few cable companies, which were sued by patent trolls, most of those cases have been stayed for years because the claims have been rejected by the PTO in reexaminations at the early stages of the lawsuits, despite the fact all the patents are still valid".


It is a know fact all the stays in E*'s 10K were the result of rejections due to reexaminations. How else the claims may be rejected after the patent is granted?



> I checked numerous E* 10k's and can not find any instances where E* referred to PTO reexaminations causing litigation to be stayed. Perhaps your poor grammer was intended to mean that they referred to cases where this may have happened, albeit in some other context.


They have happened, not may have happened.



> In any event, there is no case where a patent holder has successfully defended a patent through trial and after having been upheld in appeal another violater has successfuly stayed the proceedings "for years because the claims have been rejected by the PTO in reexaminations ".


Your above statement is almost the same as saying there is no case after a patent holder has successfully validated his patent through *trial* and appeal, another [alleged or not] violator has succeeded in having the PTO rejecting some or all of the patent claims through reexamination.

This is clearly not true, not only there are cases like that, one of the latest CAFC patent reexamination case was such case, but in this case, it is already true. The reason this can happen is because the courts demand "clear and convincing evidence" to invalidate claims, while the PTO only requires "substential evidence". The burden of proof by the PTO is much lower, which is why reexamination is a tool often used by parties accused of infringement.



> In psychotherapy terms, your confusion can be attributed to "cognitive dissodance". You wish for an outcome and bend reality to meet that outcome ignoring the plain facts and circumstances obvious to an independent observer.


Thanks for the lesson.


----------



## jacmyoung

Yesterday Microsoft motioned the district court to intervene in the TiVo v. ATT case. According to MS, the ATT/Uverse service uses MS Mediaroom product, ATT has asked MS to intervene in the case, also asked MS to indemnify.

MS' motion is opposed by TiVo. MS stated that TiVo can make MS participation unnecessary if TiVo clearly states MS Mediaroom does not infringe, which I doubt TiVo will do because that will make their case very difficult, since it appears now Mediaroom is the main part of the Uverse DVR functionalities.

By motioning for intervention, MS laid out their goal in the form of a declaratory judgment suit (combined with the TiVo v. ATT case), asking the court to declare the MS Mediaroom does not infringe the three TiVo patents, and that the three TiVo patents are invalid. MS also seeks the award of attorney fees and costs from TiVo.

As I said, and this is now supported by MS, the first two TiVo patents are very much the same, the third patent is somewhat different. Therefore their attack on the first two patents will be relevant to E*'s attack on the Time Warping patent, only that MS will have some help already from E*, mainly the PTO's recent rejection of the software claims.

Below are the main files:


----------



## jacmyoung

Sometimes it is interesting to go back in time and read how this all got started, the CNET article back in 2001 described how TiVo stock shot through the roof to stand at $11.21 after it was granted the Time Warping patent, the major players at the time were mainly ReplayTV, Microsoft, AOL and Gemstar, and no mentioning of E* yet.

It is important to note that even though ReplayTV at the time had just struck a 5-year deal with Motorola, it had since gone out of business and now the ReplayTV IPs are in DirecTV's hands, and TiVo today is pretty much standing at the same place as it was back then. Since Microsoft was one of the earliest DVR players back then along with ReplayTV and TiVo, also had its own DVR IPs, the MS participation (if granted) in the latest TiVo v. ATT case cannot be good for TiVo:

http://news.cnet.com/Industry-ponders-impact-of-TiVo-patent/2100-1040_3-258345.html


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## jacmyoung

One item I overlooked from the above CNET article was in 2001, when TiVo just received its DVR patent, ReplayTV had already struck a 5-year licensing agreement with Motorola. It is reasonable to speculate that Motorola hardware are based on the ReplayTV technology, and according to some members there, some of the functions are now embedded in the hardware such as the Broadcom chips.

Verizon DVRs are based on Motorola hardware, so are the ATT/Uverse DVRs, and most cable DVRs.

ReplayTV was in fight with TiVo for years, after they ran out of money, they settled with TiVo for nothing, only some about face cross-licensing.

DISH on the other hand had no DVR IPs of their own to defend against TiVo. And yet TiVo's fight with DISH has hardly been easy at all.

TiVo's so called "hardware claims" are narrow claims, they "require" separation and reassembly of audio and video streams, which turned out to be totally unnecessary, which was why DISH did not infringe those claims.

TiVo's software claims are broader, which was why DISH was found to have infringed them back then, but the downside of having broad claims is they are easier to be invalidated, as they are rejected by the PTO right now.

Both ATT/Uverse and Verizon hardware are backed by either the ReplayTV IPs or the DVR IPs held by MS. If TiVo's fight with DISH was hardly a walk in the park, wait till you see TiVo's next fight against the DVR technologies from the other two original DVR providers, ReplayTV and Ultimate TV.

There is a good reason TiVo never fought against Motorola or MS, and still does not want to fight them today.


----------



## jacmyoung

Something new worth noting. A few days ago TiVo amended one of their "Change of Control of Corporation" provisions in their 8K, the new provision basically guarantees their presidents' pays, stock options and bonuses in the event of a buyout, even if TiVo fails to meet the stated performance goals.

Today I found this that explains more about why companies change such provisions:

http://boards.fool.com/Message.asp?mid=28245832

And the speculation:



> So I have little doubt that someone has offered to buy Tivo, but there is no guarantee that they will accept anything, or that anything will happen anytime soon. I suspect that E* has decided it might be cheaper to just buy the company than continue fighting it, and Tivo's execs want to make sure they get paid if E* tries a hostile takeover, or something like that.


Personally I have doubts Charlie decided to buy TiVo, but if true, given how we know Charlie is, TiVo's investors can count on themselves being screwed

The TiVo heads will of course be covered. Seems to me if the above speculation is true, TiVo has already decided they will lose the appeal. Because if TiVo believes it will win, there is no possible chance TiVo would even consider selling to Charlie, not when there is another $300M+ from DISH awarded by the court and a licensing agreement, not to mention TiVo has the "poison pill" to prevent a hostile takeover, so the above comment was a cover, besides Charlie does not even have the money to buy TiVo at the current TiVo stock value. Therefore the only likely reason is TiVo realized they would lose, of course if that happens, Charlie will actually be able to afford it

But in that case, all TiVo's heads are covered by the new provision.

What the guy did not speculate was, someone else might have wanted to buy TiVo, if so, it has to be one of the big guys, Google? MSFT? ATT? But regardless they will wait after the court ruling, so TiVo's heads trying to cover themselves still indicate they are preparing for a loss at the appeals court.

But even if you disagree with the above, the mere fact TiVo is preparing for a change of control, is an indication TiVo is preparing to give up the court fight, because whoever buys TiVo will not likely to stay on the litigation course. The big guys usually do not sue everyone, only to buy IPs to defend themselves from being sued by patent trolls. Not to mention many of the big guys actually have business deals with DISH, such as Google and MSFT.


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## phrelin

I can't imagine Charlie buying TiVo at this point. Microsoft is suing TiVo so maybe Google wants control of all those patents just to spite Microsoft. Then again, spite is a strong motive for Charlie....


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## jacmyoung

phrelin said:


> I can't imagine Charlie buying TiVo at this point. Microsoft is suing TiVo so maybe Google wants control of all those patents just to spite Microsoft. Then again, spite is a strong motive for Charlie....


I just think any one of the big ones who ends up buying TiVo (if it happens), will likely mean the end of this ugly litigation path. Remember TiVo is suing E*, ATT, and Verizon, now MSFT is also part of the lawsuit because of TiVo. Other than TiVo I think most others will be glad to put this whole thing behind them.

Charlie might be an exception though, he seems to really enjoy the fight.


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## P Smith

Sure, he is smell a money ( either way ).


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## bobukcat

jacmyoung said:


> Yesterday Microsoft motioned the district court to intervene in the TiVo v. ATT case. According to MS, the ATT/Uverse service uses MS Mediaroom product, ATT has asked MS to intervene in the case, also asked MS to indemnify.
> 
> MS' motion is opposed by TiVo. MS stated that TiVo can make MS participation unnecessary if TiVo clearly states MS Mediaroom does not infringe, which I doubt TiVo will do because that will make their case very difficult, since it appears now Mediaroom is the main part of the Uverse DVR functionalities.
> 
> By motioning for intervention, MS laid out their goal in the form of a declaratory judgment suit (combined with the TiVo v. ATT case), asking the court to declare the MS Mediaroom does not infringe the three TiVo patents, and that the three TiVo patents are invalid. MS also seeks the award of attorney fees and costs from TiVo.
> 
> As I said, and this is now supported by MS, the first two TiVo patents are very much the same, the third patent is somewhat different. Therefore their attack on the first two patents will be relevant to E*'s attack on the Time Warping patent, only that MS will have some help already from E*, mainly the PTO's recent rejection of the software claims.
> 
> Below are the main files:


I stopped following this for months because nothing really new was happening but MS getting involved throws a whole new twist into it. I wonder if Tivo's lawyers and top executives didn't have an "oh sh**!" moment when they saw that, taking on AT&T is big enough, but MS is in a different league all together!


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## Pretend Internet Lawyer

bobukcat said:


> I wonder if Tivo's lawyers and top executives didn't have an "oh sh**!" moment when they saw that, taking on AT&T is big enough, but MS is in a different league all together!


Do you really think TIVO and their lawyers didn't know that Microsoft wrote the infringing software?

Besides, Microsoft ALWAYS gets their butts handed to them when they try to bully little companies in court.

Just ask I4I.


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## Pretend Internet Lawyer

jacmyoung said:


> Sometimes it is interesting to go back in time and read how this all got started, the CNET article back in 2001 described how TiVo stock shot through the roof to stand at $11.21 after it was granted the Time Warping patent]


I thought stock talk was off limits on this board?


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## Pretend Internet Lawyer

jacmyoung said:


> Something new worth noting. A few days ago TiVo amended one of their "Change of Control of Corporation" provisions in their 8K, the new provision basically guarantees their presidents' pays, stock options and bonuses in the event of a buyout, even if TiVo fails to meet the stated performance goals.


What does this have to do with "TiVo vs EchoStar: Echostar found to be in Contempt"?

Please stay on topic.


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## scooper

Pretend Internet Lawyer said:


> Do you really think TIVO and their lawyers didn't know that Microsoft wrote the infringing software?
> 
> Besides, Microsoft ALWAYS gets their butts handed to them when they try to bully little companies in court.
> 
> Just ask I4I.


In the Eastern Texas Federal District Court, 80%+ of the time the accused infringer gets their butts handed to them on the initial trial. Come up with something new...


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## Pretend Internet Lawyer

scooper said:


> In the Eastern Texas Federal District Court, 80%+ of the time the accused infringer gets their butts handed to them on the initial trial. Come up with something new...


Microsoft is suing TIVO in San Francisco, not Eastern TX. Not to mention the suit is over 2 patents that have nothing to do with the ATT, VERIZON, or DISH cases. The patents will be easily invalidated.

Microsoft is being a "patent troll".

But lets stay on topic.


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## jacmyoung

scooper said:


> In the Eastern Texas Federal District Court, 80%+ of the time the accused infringer gets their butts handed to them on the initial trial. Come up with something new...


To be fair, the trend is changing. The bottom line is, they don't care who is winning, they just care about having all the cases tried in their court and drag them on forever so to bring revenues to the local businesses. Big shot lawyers don't spend $50 a night at a motel and $15 for dinner you know.

Remember what TiVo did when they won the trial in 2006? They went across the street bought a cow at the local livestock auction house. Nothing against the town, I just wish my local township can be that smart to draw businesses in.


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## jacmyoung

Yesterday TiVo filed another 8-K to allow Blackrock to acquire up to 16.99% TiVo positions without triggering the poison pill. The existing trigger is 15%.

This most recent filing, in conjunction with the previous "golden parachute" filing indicate TiVo might be preparing a takeover while trying to prevent a takeover by Charlie in case of a court reversal, at least TiVo's execs do not want to see Charlie do so under their own watch.

In any event, the fact TiVo is preparing a takeover is evidence that TiVo's execs are at least preparing to give up the litigation effort. A takeover will likely mean a change of path due to change of control. If the TiVo execs are confident about their litigation effort, this would be the worst timing to consider a takeover when several lawsuits are in motion.

It is also an indication TiVo might not be a takeover target by MSFT, Google or Apple..., at least not at this time, as many want to believe.


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## dgordo

I doubt if Blackrock has any interest in taking over Tivo.

If Charlie is going to win why would he need to buy Tivo?


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## jacmyoung

dgordo said:


> I doubt if Blackrock has any interest in taking over Tivo.


I did not say Blackrock might be interested in buying TiVo, just that I don't think any of the main suspects approached TiVo for a buyout idea.



> If Charlie is going to win why would he need to buy Tivo?


It all depends on how much, TiVo certainly has value. Even if DISH wins on appeal, TiVo can still press on in the new action currently pending.


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## jacmyoung

For those who haven't read all the posts here, especially those TiVo folks, let me stress one thing. Please do not assume whatever Judge Folsom has decided, will be the blueprint for the appeals court to base their decisions on.

There are two part of this, one, many of the issues to be determined by the appeals court will be done so "de novo", or "without difference". Meaning on many of the issues, such as the interpretation of the old injunction, the colorable difference and the infringement determinations, will be done without any regard of Judge Folsom's opinions at all, i.e. things will be done all over again by the appeals court as if Judge Folsom had not done any of them. They cannot even consider Judge Folsom's opinions.

Second, Judge Folsom himself has planted several seeds in his own final judgment and the injunction for the appeals court to pick on. I have mentioned the new "inform and approval" provision he planted in the current injunction, by doing so it may appear he had handed TiVo exactly what they asked for, but the current injunction, unlike the old one, now allows design around by the letter. The condition is DISH must inform the court and ultimately obtain approval of the design around.

Another seed he planted in his final judgment is the "enhanced damages" item. While TiVo wanted the $2.25 damage rate, and while the judge appeared to have given TiVo the $2.25 rate, he in reality stayed the damage rate at $1.25, and called the additional $1.00 sanctions.

Sanctions can be easily appealed, unlike actual damages. Damages are much more difficult to reverse as long as the rate has sufficient factual basis to rely on. Sanctions on the other hand are based on the proof of exceptional case, and are almost always reversed or modified on appeal.

Had the judge awarded TiVo the $2.25 damage rate, as requested by TiVo, since the $2.25 damage rate had sufficient basis for support on its own as argued by TiVo, it would be almost impossible for DISH to reduce this amount, but since the damage rate is still at $1.25, the $1.00 sanction rate can be more easily defeated.

On the surface, it may appear Judge Folsom did TiVo a big favor, and really hammered DISH hard, but reading between the lines, the truth might be far from it.


----------



## phrelin

jacmyoung said:


> For those who haven't read all the posts here, especially those TiVo folks...


Yeah, just whip through the 1780 posts and catch up. Actually, those folks need to go back through all the threads on this matter. I think that's only another 12,000 posts, plus or minus.


----------



## harsh

jacmyoung said:


> In any event, the fact TiVo is preparing a takeover is evidence that TiVo's execs are at least preparing to give up the litigation effort.


But what is TiVo without its IP? If they don't defend it, they will lose it.


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## jacmyoung

harsh said:


> But what is TiVo without its IP? If they don't defend it, they will lose it.


Which is probably why those TiVo exces are covering themselves regardless how TiVo performs in case of a takeover. The IPs are only good if they can win.

Let me rephrase, the IPs are only good if they can win, or others think they can win therefore settle before a fight.


----------



## Greg Bimson

jacmyoung said:


> In any event, the fact TiVo is preparing a takeover is evidence that TiVo's execs are at least preparing to give up the litigation effort.


After recently filing another patent infringement suit against AT&T and Verizon, causing Microsoft to sue under the guise of obtaining a licensing agreement with TiVo?

I'd believe it is a bit more mundane that a simple takeover. I'm beginning to think that TiVo, which does quite a bit more than simply DVR's, might be a takeover target of one of the big boys. The bread crumbs are all there: golden parachutes for the management team and allowing a mutual firm to cross the poison pill threshold regarding the size of the ownership stake.

To me, that means the executive team is waiting on the outcome at the Court of Appeals. A decision in favor of TiVo would not only jump the stock price immediately, but also force Verizon, AT&T and Microsoft's hands. A negative outcome would only preclude TiVo from using a contempt hearing to find infringement on receivers already adjudged to infringe by a jury (which doesn't make any sense because those receivers are under jurisdiction of Judge Folsom's court no matter what DISH/SATS does to them).

Either way, someone will want the IP and most likely the measurement business. And everyone appears to be waiting for the decision.


----------



## jacmyoung

Greg Bimson said:


> After recently filing another patent infringement suit against AT&T and Verizon, causing Microsoft to sue under the guise of obtaining a licensing agreement with TiVo?


Remember the two most recent moves by the TiVo exces are after the lawsuit filed by MSFT. TiVo still in their most recent response to the MSFT lawsuit, refuses to accuse MSFT of anything, only ATT.



> ...golden parachutes for the management team and allowing a mutual firm to cross the poison pill threshold regarding the size of the ownership stake.


How does that translate into a takeover by one of the big boys? I just don't see the structure is prepared for a takeover by one of those big boys.



> A decision in favor of TiVo would not only jump the stock price immediately,


True if it is a clear win.



> but also force Verizon, AT&T and Microsoft's hands.


Not necessarily true but it does at least help TiVo in the ATT/Uverse case.



> A negative outcome would only preclude TiVo from using a contempt hearing to find infringement on receivers already adjudged to infringe by a jury (which doesn't make any sense because those receivers are under jurisdiction of Judge Folsom's court no matter what DISH/SATS does to them).


No, it will likely crash TiVo stock first.



> Either way, someone will want the IP and most likely the measurement business. And everyone appears to be waiting for the decision.


If the decision is against TiVo, it is likely over for TiVo.


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## HobbyTalk

Greg Bimson said:


> Either way, someone will want the IP and most likely the measurement business. And everyone appears to be waiting for the decision.


I would think if they lose that the IP will have little value since SATS no longer infringes and it appears that the ATT/Microsoft system doesn't either. At the very least, they couldn't afford another 10 year court battle. The measurement business is declining with every loss of a TiVo customer.


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## Greg Bimson

HobbyTalk said:


> I would think if they lose that the IP will have little value since SATS no longer infringes and it appears that the ATT/Microsoft system doesn't either.


"..since SATS no longer infringes..."

That depends on a "negative outcome", not necessarily a loss. The biggest negative outcome to TiVo is a finding by the Court of Appeals that DISH/SATS no longer infringes. Other negative outcomes include a retrial or a permanent stay of the injunction under review. There isn't only one way for TiVo to lose, just as there isn't one way for DISH/SATS to be put through the grinder.

The evidence presented during the bench hearing certainly leads me to believe that upholding the finding of infringement is truly the only outcome. Even with a _de novo_ review of the finding, the bench will simply take what is available in the record of both the trial and of the bench hearing. A _de novo_ review doesn't allow the bench to define whatever they want without deference to the presented evidence.


HobbyTalk said:


> At the very least, they couldn't afford another 10 year court battle. The measurement business is declining with every loss of a TiVo customer.


The clock is ticking, but this has only just become six years of litigation. And it's possible someone could pick up the measurement business IP and apply it to something else.


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## jacmyoung

Greg Bimson said:


> ...And it's possible someone could pick up the measurement business IP and apply it to something else.


Someone already did, this someone is Google, after signing a deal with TiVo just most recently, probably for next to no cost.

So not only is this "measurement IP" (if there is such thing) worth very little, it is already spoken for.


----------



## Greg Bimson

jacmyoung said:


> Someone already did, this someone is Google, after signing a deal with TiVo just most recently, probably for next to no cost.


"...probably for next to no cost."

Is there a source? A rumor? Innuendo, even?


jacmyoung said:


> So not only is this "measurement IP" (if there is such thing) worth very little, it is already spoken for.


The "measurement IP" would be patents filed relating to the measurement business. We know how much TiVo likes to patent their processes...

And just because Google has contracted for the measurement certainly doesn't preclude others from trying to obtain a license.


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## jacmyoung

Greg Bimson said:


> "...probably for next to no cost."
> 
> Is there a source? A rumor? Innuendo, even?


TiVo made a big deal about that agreement with Google, but mentioned not a single word about its actual revenue potential. We know how much TiVo likes to mention revenue potential even when there is little.



> The "measurement IP" would be patents filed relating to the measurement business. We know how much TiVo likes to patent their processes...
> 
> and just because Google has contracted for the measurement certainly doesn't preclude others from trying to obtain a license.


Since it is likely Google got it for cheap, there is no reason to believe others will pay big, that is to assume others are even interested in it. The Google's ad model is on life support of its own right now.


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## dfd

jacmyoung said:


> TiVo made a big deal about that agreement with Google, but mentioned not a single word about its actual revenue potential. We know how much TiVo likes to mention revenue potential even when there is little.
> 
> Since it is likely Google got it for cheap, there is no reason to believe others will pay big, that is to assume others are even interested in it. The Google's ad model is on life support of its own right now.


More FUD, http://en.wikipedia.org/wiki/Fear,_uncertainty_and_doubt


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## jacmyoung

dfd said:


> More FUD, http://en.wikipedia.org/wiki/Fear,_uncertainty_and_doubt


Isn't this what the lawsuits are all about, especially in civil cases such as patent infringement? To create doubt, having cloud over, put fear in the defendants so that they might cave in and pay you? TiVo started all this and you TiVo investors are banking on this to get rich, why can't others play the same game back at you?


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## Curtis0620

Since DISH has lost every step, they should just give up.


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## jacmyoung

Curtis0620 said:


> Since DISH has lost every step, they should just give up.


Maybe, but so far, I can only find evidence to show that the TiVo exces are preparing to give up.


----------



## phrelin

Curtis0620 said:


> Since DISH has lost every step, they should just give up.


!rolling

Charlie Ergen would pay his last dollar before allowing Dish to "give up" in a lawsuit. He's a billionaire, Dish Network is basically profitable, and while there's a lot at stake, Charlie believes regardless of the court decisions his companies will be around doing pretty much what they do now.

TiVo, on the other hand, is a small company embroiled in many lawsuits with big players who have deep legal resources, has never been profitable from operations, and in the eyes of the investment world a loss would effectively reduce their net worth to zero. Had they just focused on improving their technology and creating and keeping long-term value partnerships with signal carriers things might have been different.


----------



## Curtis0620

phrelin said:


> !rolling
> 
> Charlie Ergen would pay his last dollar before allowing Dish to "give up" in a lawsuit. He's a billionaire, Dish Network is basically profitable, and while there's a lot at stake, Charlie believes regardless of the court decisions his companies will be around doing pretty much what they do now.
> 
> TiVo, on the other hand, is a small company embroiled in many lawsuits with big players who have deep legal resources, has never been profitable from operations, and in the eyes of the investment world a loss would effectively reduce their net worth to zero. Had they just focused on improving their technology and creating and keeping long-term value partnerships with signal carriers things might have been different.


Not "giving up" doesn't mean he won't lose.

He is continuing to fight a losing battle, the shareholders will not be happy that he is throwing money away.


----------



## dfd

jacmyoung said:


> Isn't this what the lawsuits are all about, especially in civil cases such as patent infringement? To create doubt, having cloud over, put fear in the defendants so that they might cave in and pay you? TiVo started all this and you TiVo investors are banking on this to get rich, why can't others play the same game back at you?


I don't think this is what law suits are supposed to be about. In this case in particular, we saw one company sue another for violating their IP. Facts were presented, a verdict reached, and the verdict was upheld upon appeal. Where is the FUD?

And for the record, I have never purchased a share of any publicly traded company.


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## jacmyoung

dfd said:


> I don't think this is what law suits are supposed to be about. In this case in particular, we saw one company sue another for violating their IP. Facts were presented, a verdict reached, and the verdict was upheld upon appeal. Where is the FUD?


The most obvious FUD in this is the PTO's current rejection of the software claims. If TiVo fails to overcome such rejection in the end, this whole lawsuit will be nothing but FUD.


----------



## jacmyoung

Curtis0620 said:


> ...the shareholders will not be happy that he is throwing money away.


Please don't pretend as if you care. I think DISH shareholders can determine for themselves.


----------



## Curtis0620

jacmyoung said:


> Please don't pretend as if you care. I think DISH shareholders can determine for themselves.


I don't care, whatever gave you that idea? So the shareholder are just happy to keep throwing money at another losing cause (DNS was so successful).


----------



## Greg Bimson

jacmyoung said:


> The most obvious FUD in this is the PTO's current rejection of the software claims.


The FUD is since a rejection of patent claims has taken place that it applies to the current litigation at hand.

After all, until the contempt decision was issued, those patent claims were in full standing.


jacmyoung said:


> If TiVo fails to overcome such rejection in the end, this whole lawsuit will be nothing but FUD.


But it could still cost DISH/SATS money in the end. After all, DISH/SATS did infringe upon a valid patent.


----------



## jacmyoung

Curtis0620 said:


> I don't care, whatever gave you that idea? So the shareholder are just happy to keep throwing money at another losing cause (DNS was so successful).


I don't know, you brought us this idea. Whether they are happy or not I am saying it is not our business, they can manage for themselves.


----------



## jacmyoung

Greg Bimson said:


> ...But it could still cost DISH/SATS money in the end. After all, DISH/SATS did infringe upon a valid patent.


But would the whole lawsuit be a FUD if TiVo in the end fails to overcome the current PTO's rejection of the software claims?

I am not asking you whether anyone will have spent a lot of money or not. In fact I did not even ask this question, dfd brought it up, asking me to show one single evidence of an FUD on the part of this whole thing.

How about Judge Folsom waiting for over a year to sort this out? Is it not some kind of "FUD" on his part?

How about the appeals court staying Judge Folsom's order? Do you not at least feel it was a "FUD" as far as TiVo is concerned?

You don't think it is a "FUD" on the PTO's part that now they have rejected the software claims, after affirming them back in 2007?

TiVo has relied on our patent system to cast "FUD" on DISH, TiVo cannot now complain that the same system is "FUDDING" TiVo back.


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## Greg Bimson

jacmyoung said:


> But would the whole lawsuit be a FUD if TiVo in the end fails to overcome the current PTO's rejection of the software claims?


Why would it be? DISH/SATS has been found to infringe a valid patent, the infringement finding was upheld through due process, and DISH/SATS was then found guilty again of infringing on a valid patent through the contempt process. Fear, uncertainty and doubt were removed once guilt was established.

FUD is simply counter-attacking with conjecture that may not be related to the points at hand. Bringing up the actions at the PTO have nothing to do with the finding of contempt. Those actions may bear fruit at the end of the review process at the PTO. However, it is FUD if it is to be believed that the actions at the PTO have any bearing on the appeal process now.


----------



## jacmyoung

Greg Bimson said:


> Why would it be? DISH/SATS has been found to infringe a valid patent, the infringement finding was upheld through due process, and DISH/SATS was then found guilty again of infringing on a valid patent through the contempt process. Fear, uncertainty and doubt were removed once guilt was established.
> 
> FUD is simply counter-attacking with conjecture that may not be related to the points at hand. Bringing up the actions at the PTO have nothing to do with the finding of contempt. Those actions may bear fruit at the end of the review process at the PTO. However, it is FUD if it is to be believed that the actions at the PTO have any bearing on the appeal process now.


If TiVo fails to overcome the PTO rejection, it means the PTO should have not allowed the software claims in the first place, none of the so called "wins" would have been possible. In other words, if the software claims should have never been allowed in the first place, TiVo has won the original case based on FUD, legally yes, but FUD nevertheless.

The entire PTO system is never a certainty, patents are granted then often invalidated later in reexaminations and in court. As such the system itself is in doubt, creates fear on both sides, on the patent owners' side they never know if their patents, once granted, may or may not be legally defendable, and on the defendants' side, it creates fear of unnecessary interruption to their businesses and legal costs, even if they believe those patents may not truly be legit inventions.

But I am not complaining, it is a necessary evil we must endure for the good of the public, as long as in sum, the benefit out-weigh the harm to the public, TiVo investors' and DISH investors' interests notwithstanding.


----------



## phrelin

Curtis0620 said:


> Not "giving up" doesn't mean he won't lose.
> 
> He is continuing to fight a losing battle, the shareholders will not be happy that he is throwing money away.


Well, Charlie really has to worry about that. From a Nov 10, 2009 Form SC 13D/A Amended General Statement of Beneficial Ownership:


> Mr. Ergen beneficially owns securities convertible into or exercisable for 218,078,109 shares of Class A Common Stock representing 51.2% of the class after giving effect to conversion and exercise of all derivative securities held by Mr. Ergen. Such shares include: (i) 448,652 shares of Class A Common Stock; (ii) 18,833 shares of Class A Common Stock held in the Company's 401(k) Employee Savings Plan (the "401(k) Plan"); (iii) the right to acquire 1,170,000 shares of Class A Common Stock within 60 days upon the exercise of employee stock options; (iv) 235 shares of Class A Common Stock held by Mr. Ergen's spouse, Cantey Ergen; (v) 1,273 shares of Class A Common Stock held in the 401(k) Plan by Mrs. Ergen; (vi) 27,175 shares of Class A Common Stock held as custodian for Mr. Ergen's children; and (vii) 216,411,941 shares of Class A Common Stock issuable upon conversion of Mr. Ergen's shares of Class B Common Stock. Mr. Ergen has sole voting power with respect to 216,906,601 shares and holds sole dispositive power with respect to 216,906,601 shares.


Of course, Charlie's net worth dropped leaving him #146 among the world billionaires and only #49 among the richest Americans according to Forbes. Yep, he's worrying about those disgruntled shareholders.


----------



## scooper

phrelin said:


> Well, Charlie really has to worry about that. From a Nov 10, 2009 Form SC 13D/A Amended General Statement of Beneficial Ownership: Of course, Charlie's net worth dropped leaving him #146 among the world billionaires and only #49 among the richest Americans according to Forbes. Yep, he's worrying about those disgruntled shareholders.


Yeah - I knew he really DOESN'T need to worry about the "disgruntled stockholders" , but I didn't have the actual numbers. It's the Tivo people who keep bringing this up - when the math clearly shows that it is NOT a problem...

Charlie owns more Class A stock than every other stockholder COMBINED. Not to mention the Class AA stock.


----------



## dfd

scooper said:


> Yeah - I knew he really DOESN'T need to worry about the "disgruntled stockholders" , but I didn't have the actual numbers. It's the Tivo people who keep bringing this up - when the math clearly shows that it is NOT a problem...
> 
> Charlie owns more Class A stock than every other stockholder COMBINED. Not to mention the Class AA stock.


The managers of the company have a responsibility to all the owners even if the managers own the majority of the company.


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## jacmyoung

dfd said:


> The managers of the company have a responsibility to all the owners even if the managers own the majority of the company.


I think he treated DISH investors fine when he just gave them a $2 dividend and he is sticking around not trying to bail.

I don't know about those TiVo execs though, who just wrote themselves a golden parachute without mentioning anything for the investors in case they bail.


----------



## Maverickjoe

scooper said:


> Yeah - I knew he really DOESN'T need to worry about the "disgruntled stockholders" , but I didn't have the actual numbers. It's the Tivo people who keep bringing this up - when the math clearly shows that it is NOT a problem...


All management of every public company has an absolute fiduciary duty to their shareholders - just ask the hundreds serving prison time and/or the shareholders of MCI, Enron, Tyco et al. So yes, he DOES need to worry about it.

And please tell us how you know who the "Tivo people are who keep bringing this up". For the record I'm not a "Tivo person", I'm a Dish user and shareholder. Did you ever think that maybe the people who are concerned are users worried about losing service or concerned shareholders?


----------



## phrelin

Maverickjoe said:


> All management of every public company has an absolute fiduciary duty to their shareholders - just ask the hundreds serving prison time and/or the shareholders of MCI, Enron, Tyco et al. So yes, he DOES need to worry about it.
> 
> And please tell us how you know who the "Tivo people are who keep bringing this up". For the record I'm not a "Tivo person", I'm a Dish user and shareholder. Did you ever think that maybe the people who are concerned are users worried about losing service or concerned shareholders?


You must be very concerned to have joined this Forum and made 4 posts all to this thread.
:welcome_s
If Dish wins, it wins big. If it has to license the code from TiVo, a large amount of money must be at stake as TiVo hasn't offered any settlement acceptable to Charlie. So as a minority shareholder and Dish user you should be hoping Charlie wins in order to save us money which is his fiduciary duty.

I dumped my shares after the split, so I'm not a shareholder.


----------



## Maverickjoe

phrelin said:


> You must be very concerned to have joined this Forum and made 4 posts all to this thread.
> :welcome_s
> If Dish wins, it wins big. If it has to license the code from TiVo, a large amount of money must be at stake as TiVo hasn't offered any settlement acceptable to Charlie. So as a minority shareholder and Dish user you should be hoping Charlie wins in order to save us money which is his fiduciary duty.
> 
> I dumped my shares after the split, so I'm not a shareholder.


Thank you for your welcome, from a long time reader and recent poster.

We all hope Dish wins outright, but I would have thought that a geezer like you would have learned that "hope" is not a strategy. As to saving us money, the best outcome for everyone would be removing the uncertainty of the litigation, or of losing valuable DVR services, and settling. Both companies would be worth more, and this thread would finally end.


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## scooper

I want Dish to WIN - to put the final nail that Tivo did NOT actually invent the concept of the DVR and their method is the only way to do it.


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## P Smith

You're wishing to win to whom ? 
Who intentionally violated the patent and began preparation for the outcome back to first Dp510 [2001] by adding mythical that time "DVR fee" ?! 
How many $M they collected from us during those years? And continue ...


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## TulsaOK

Maverickjoe said:


> ... I would have thought that a geezer like you ... would have learned that "hope" is not a strategy.


I "hope" the geezer comment was made with the most flattering of intentions.


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## jacmyoung

Maverickjoe said:


> ...We all hope Dish wins outright...


Yeah right, you might be able to fool a new comer, but a geezer like phrelin?


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## phrelin

Maverickjoe said:


> Thank you for your welcome, from a long time reader and recent poster.
> 
> We all hope Dish wins outright, but I would have thought that a geezer like you would have learned that "hope" is not a strategy. As to saving us money, the best outcome for everyone would be removing the uncertainty of the litigation, or of losing valuable DVR services, and settling. Both companies would be worth more, and this thread would finally end.


As a geezer and a long time Echostar customer who has an impersonal love/hate relationship with "Charlie", let me reiterate exactly what I said:


> So as a minority shareholder and Dish user you should be hoping Charlie wins....


What I'm saying is you should hope, I should hope, all Charlie's customers should hope...that he wins.

And I hope that _he and his legal team_ have a strategy that's a heck of a lot more complex than hope.

Unfortunately for me, I don't have a strategy if he loses and rates jump. I live in a rural area in the coastal redwoods of Northern California. For reasons to complicated to explain, I do have Comcast for an ISP but their HD offering is limited because the system they inherited isn't adequate. DirecTV is out because of redwood trees blocking the LOS. Dish is my only real option.


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## jacmyoung

P Smith said:


> ...and began preparation for the outcome back to first Dp510 [2001] by adding mythical that time "DVR fee" ?!...


Please elaborate for us about this plan back in 2001, this is the first time I have heard of it. TiVo did not sue him until 2004, you mean to tell us he was anticipating such a lawuit back in 2001?


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## P Smith

I'm see it that way; what was a trigger to introduce such "fee" if year before same model with different drive size [40 and 80 GB] [PVR501/PVR508] didn't imply it.


----------



## GrumpyBear

jacmyoung said:


> Please elaborate for us about this plan back in 2001, this is the first time I have heard of it. TiVo did not sue him until 2004, you mean to tell us he was anticipating such a lawuit back in 2001?


Not sure about the idea, but there is a big difference in timelines from between the actual lawsuit, and when negotiations/talks that might bring up a lawsuit, may have started.
Who knows what Dish and Tivo were doing between 2001-2004 that finally made Tivo take a lawsuit action. Still say the lawsuit was over the fact Dish improved the DVR and made the Tivo look slow, sluggish, and down right difficult.


----------



## jacmyoung

P Smith said:


> I'm see it that way;...


Okay, I thought you had additional info.


----------



## jacmyoung

GrumpyBear said:


> ...Who knows what Dish and Tivo were doing between 2001-2004 that finally made Tivo take a lawsuit action...


Charlie didn't want to pay TiVo?


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## dgordo

Sounds like we should have a decision in the next 2 weeks. :righton:


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## Greg Bimson

GrumpyBear said:


> Still say the lawsuit was over the fact Dish improved the DVR and made the Tivo look slow, sluggish, and down right difficult.


Nah, TiVo felt that DISH/SATS had simply used their patented process and method, pausing, rewinding and fast-forwarding while recording. And surprsingly enough, a jury agreed, a judge agreed, and a panel of judges agreed that the patent was infringed.


----------



## Herdfan

dgordo said:


> Sounds like we should have a decision in the next 2 weeks. :righton:


What did I miss that leads you to beleive this?


----------



## jacmyoung

Greg Bimson said:


> ...And surprsingly enough, a jury agreed, ...


Not surprising at all if you know the history of that district. What was surprising was the appeals court overturned the jury's hardware claims verdict, i.e. half of the jury's verdict were overturned, that was not easy.


----------



## jacmyoung

Herdfan said:


> What did I miss that leads you to beleive this?


Because the clock is still ticking?

As it continues to tick and tick, the prediction of a decision in the next two weeks can only get better and better


----------



## Greg Bimson

jacmyoung said:


> What was surprising was the appeals court overturned the jury's hardware claims verdict, i.e. half of the jury's verdict were overturned, that was not easy.


I don't mean to throw out the "semantics" card here, but as we know the law is all about sematics...

The verdict may have been overturned on the finding of guilt regarding the Hardware Claims, but it wasn't because the jury did something wrong. DISH/SATS successfully argued that the claim construction defined by Judge Folsom was not correct, and upon review and correction by the Court of Appeals, the jury's verdict had to be set aside.

This contempt issue is different, as claim constructions are not reviewable. Those were set in stone once the appeals from the trial were exhausted. What can be reviewed is whether or not the application of a piece of technology meets the claim construction, i.e., if the PID filter does meet the "parse video and audio data from said broadcast data" limitation.


----------



## dgordo

Herdfan said:


> What did I miss that leads you to beleive this?


Thats what a clerk told someone.


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## jacmyoung

Greg Bimson said:


> I don't mean to throw out the "semantics" card here, but as we know the law is all about sematics...
> 
> The verdict may have been overturned on the finding of guilt regarding the Hardware Claims, but it wasn't because the jury did something wrong. DISH/SATS successfully argued that the claim construction defined by Judge Folsom was not correct, and upon review and correction by the Court of Appeals, the jury's verdict had to be set aside.
> 
> This contempt issue is different, as claim constructions are not reviewable. Those were set in stone once the appeals from the trial were exhausted. What can be reviewed is whether or not the application of a piece of technology meets the claim construction, i.e., if the PID filter does meet the "parse video and audio data from said broadcast data" limitation.


Who is to say Judge Folsom cannot make another mistake?

The PID filter not only has to parse, but to parse "audio and video data", and in addition, it also has to temporarily store those data. Did Judge folsom read the claim itself?


----------



## jacmyoung

TiVo just filed their response to MSFT’s motion to intervene in the TiVo v. ATT case. TiVo basically anticipated that MSFT would likely be allowed to intervene, only that TiVo is requesting:

1)	MSFT and ATT are treated as a single party in motions, discoveries, etc. to save TiVo cost.
2)	MSFT does not use the grant of intervene motion to try to move the case to N. CA.

I found it interesting TiVo is so obsessed about keeping everything in the E. TX court. They did not like E*’s case filed in the DE court, nor do they now like the case MSFT filed in the N. CA court. They don’t seem to like any of their cases tried outside of this E. TX court, despite the fact Judge Folsom had dragged things out for them for years in the TiVo v. E* case.

Keep things going in this E. TX court seems the preferred game for TiVo.

Although in my view, TiVo’s fear that MSFT will try to move the case to N. CA was unnecessary, because MSFT actually filed a countersuit against TiVo in the E. TX court, i.e. the declaratory judgment suit, asking the court to attach it to the TiVo v. ATT case. Correct me if I am wrong, if you file a case in the court as a plaintiff, in a forum that is preferred by the defendant also, it would be strange to later try to move it out of this court.


----------



## Greg Bimson

jacmyoung said:


> Although in my view, TiVo's fear that MSFT will try to move the case to N. CA was unnecessary, because MSFT actually filed a countersuit against TiVo in the E. TX court, i.e. the declaratory judgment suit, asking the court to attach it to the TiVo v. ATT case.


I was under the impression that MSFT was asked by AT&T to intervene in the case TiVo filed in East Texas against AT&T and VZ. I don't know if TiVo countersued in East Texas.

About a week or two ago, MSFT filed a patent infringement suit against TiVo in Northern California, for infringements of completely different patents. So technically, not a countersuit in Northern California, but another infringement issue somewhat related to a DVR just like the case in East Texas.

So I guess the question here is did MSFT actually countersue in East Texas, and if yes would they attempt to hijack the litigation from East Texas to Northern California? TiVo obviously doesn't want that to happen.


----------



## Greg Bimson

jacmyoung said:


> Who is to say Judge Folsom cannot make another mistake?
> 
> The PID filter not only has to parse, but to parse "audio and video data", and in addition, it also has to temporarily store those data. Did Judge folsom read the claim itself?


Judge Folsom may have made a mistake. DISH/SATS made a much larger one if that is their defense...

If DISH/SATS says the only difference between the 5XX DVR's with old software and new software is that the newer software version of the receiver no longer meets the claim limitation "parse video and audio data from said broadcast data", that means the tacit admission that the rest of the limitations are met.

After all, by use of the colorable difference test, one simply uses the old version (found infringing) to adjudge the new version by only testing the differences. Since DISH/SATS didn't say that the new version is missing the "temporary storage" (or whatever you are calling it) limitation, it can only be implied that the limitation still exists. No evidence was produced to the contrary.


----------



## jacmyoung

Greg Bimson said:


> ...About a week or two ago, MSFT filed a patent infringement suit against TiVo in Northern California, for infringements of completely different patents. So technically, not a countersuit in Northern California, but another infringement issue somewhat related to a DVR just like the case in East Texas...


The lawsuit filed by MSFT against TiVo in N. CA has nothing to do with DVR functions, rather how TiVo uses the technologies to allow online ordering of products and VODs.

The "countersuit" I mentioned was MSFT's declaratory judgment suit against TiVo in the E. TX court, much like the E*'s declaratory judgment suit currently pending in the E. TX court. Once MSFT filed such a suit against TiVo in the E. TX court, there is no good reason for MSFT to later try to move the case out of the E. TX court because both sides obviously has chosen the same E. TX forum for the DVR patent case.


----------



## jacmyoung

Greg Bimson said:


> ...If DISH/SATS says the only difference between the 5XX DVR's with old software and new software is that the newer software version of the receiver no longer meets the claim limitation "parse video and audio data from said broadcast data", that means the tacit admission that the rest of the limitations are met...


I will agree with you that during the contempt proceeding E* almost entirely focused on the "parse video and audio data" (i.e. analyze audio and video start codes) part, which I have said several times that was their weak point, they should have also pointed out that "temporarily store the audio and video data" part, and the "extract", "convert"&#8230;parts in later steps, which they no longer perform either.

However during the appeal, they have clearly cured that weak link, remember they asked TiVo to fill out the blanks in 10 questions, each was necessary element to meet several steps of the claims, TiVo responded by simply saying you go look for the elements in that chart. Instead, TiVo must prove by clear and convincing evidence that each and every one of those 10 elements is still present in the modified DVRs. E* said they were no longer there, TiVo cannot just say hey they are still there, you just have to go look for them for yourself. It is not the appeals court job to look for them for TiVo, rather Tivo's job to prove they are still there, by clear and convincing evidence.

The appeals court must review evidence and arguments, including anything new in the appeal briefs by both sides, *without* considering Judge Folsom's opinions.

E* focused on just one element in Judge Folsom's court, that should have been sufficient, but I agree, and said several time before they did not try hard enough. I continue to wonder why? Was it simply a mistake by E*'s lawyers? Or was it that the E* lawyers did so to keep the case going and keep the money flowing in? Or could it be Charlie's strategy all along since he had determined that he could not possibly win in front of Judge Folsom because the judge clearly wanted E* to license from TiVo. If so Charlie and his lawyers could have decided to reserve more arguments during the appeal, in front of the appeals court that is less biased, in that case TiVo would not have the support from a judge who is clearly biased in TiVo's favor for a license deal, TiVo must counter those new arguments on its own without any favorable opinons from Judge Folsom. In my view TiVo had failed to address those 10 elements E* now is saying they no longer exist.

Anything is possible.


----------



## Greg Bimson

jacmyoung said:


> The appeals court must review evidence and arguments, including anything new in the appeal briefs by both sides, *without* considering Judge Folsom's opinions.


Actually, here is the problem I have with the above statement:


jacmyoung said:


> The appeals court must review evidence and arguments, *including anything new in the appeal briefs by both sides*, without considering Judge Folsom's opinions.


There shouldn't be any *new* evidence nor arguments within the appeal. In front of the appeals court, one tries to find fault with procedure or an erroneous application of law within a decision. The Court of Appeals is not the place to "retry" the case.

What doesn't help is the fact that the workaround was applied to the DVR's that were admitted and reviewed by the court, adjudged as infringements and ordered to have their DVR functionality disabled. DISH/SATS had to defend that they were no longer infringements in order to attempt to skirt by the disable clause of the injunction As you said, they didn't try hard enough AND they are now attempting to introduce new arguments in front of the Court of Appeals as with the finding of contempt they realized they didn't argue those points in front of Judge Folsom correctly.

I agree that anything is possible. It is very possible that the Court of Appeals feels that a closer infringement examination should be completed but also reinstates the old injunction because the formerly admitted receivers must have their DVR functionality removed while that evaluation takes place.

Who knows?


----------



## jacmyoung

Greg Bimson said:


> Actually, here is the problem I have with the above statement:There shouldn't be any *new* evidence nor arguments within the appeal...


Of course there can be, as long as they were submitted before the case submission, which happened after the oral argument, and as long as parties were briefed properly and given proper chance to respond.

The PTO's rejection of the software claims came after Judge Folsom's ruling, it is now evidence accepted by the appeals court. If you were correct, the appeals court simply could not have accepted the new PTO evidence.

As far as new arguments, as long as they are based on the same evidence, as long as parties are given proper chance to respond to them, of course they will be reviewed. If one party believes the new evidence or argument should not be part of the review, they can oppose them, which TiVo did in the case of the PTO evidence, but failed.



> In front of the appeals court, one tries to find fault with procedure or an erroneous application of law within a decision. The Court of Appeals is not the place to "retry" the case.


The appeals court is the place to retry the contempt finding, determinations of colorable difference and infringement by the modified DVRs, else they would not have called it a "de novo review".

The Judge Folsom's final judgment (damages, etc) and amended injunction will not be "retried", rather reviewed for abuse of discretion.



> &#8230;but also reinstates the old injunction because the formerly admitted receivers must have their DVR functionality removed while that evaluation takes place.
> 
> Who knows?


They cannot possibly reinstate the old injunction, it had been replaced by the amended injunction, i.e. the current injunction, which allows design around by the "inform and approval" provision, as long as DISH informs and obtains approval for design around. DISH is following the current injunction to the T, there is no violation of the current injunction.

The appeals court will however decide whether to reinstate the current injunction or not, since it is currently stayed. They just cannot reinstate the old injunction because it no longer exists.


----------



## jacmyoung

BTW TiVo just amended its case against Verizon today, adding two Verizon affiliates to the case. I guess no one has decided to settle yet All eyes are on TiVo v. E*.


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## jacmyoung

Some of you may recall a few month ago I talked about one of the TiVo patent applications called "Digital Video Recording System" (the DVR patent app) filed in 2003, which is a "continuation" of the "Multimedia Time Warping System" (the Time Warping patent) patent related to this TiVo v. E* case.

The DVR patent app had been rejected three times since 06/08, the latest of which happened in 06/09. Yesterday the PTO issued the 4th non-final rejection of this DVR patent app.

I said back then the DVR patent app read almost identical to the Time Warping patent in both the hardware claims and software claims. The fact the DVR patent app continues to be rejected gives rise to the likelihood that the Time Warping patent may be rejected on the same grounds, because the rejection was based on prior patents before the Time Warping patent.

Below is a copy of the latest PTO non-final rejection of the DVR patent app., if anyone cares to read it, you will notice it reads like reading the Time Warping patent. What that means is, if this rejection continues to stand, it can be used by other parties to try not only to reject the software claims (which currently stands rejected already) but also the hardware claims in this Time Warping patent:


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## jacmyoung

Finally both TiVo and E* had reached an agreement which was filed yesterday!

Before anyone gets too excited, they only agreed on how much the attorney fee and cost TiVo incurred during the contempt proceeding, which is $5.8M. E* continues to appeal the decision of the award of such cost.

This agreement sure saves a little bit of Judge Folsom’s time and our tax money, since he no longer has to spend the next three months to resolve the issue for the parties.


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## jacmyoung

On another related issue, there are a few analysts' speculations on why TiVo has run out of stock on their HDDVRs to sell, the guess is they are planning on rolling out the new generation of DVRs. But TiVo never said a thing during this CES last month about any new gears, also TiVo's CEO Rogers said that people should consider TiVo as a DVR company past history.

I am not saying those analysts were wrong, I only wonder if those analysts ever took the above two facts into consideration when they made their predictions?

BTW, did I mention a few days ago Rogers were awarded 60K TiVo shares, and sold 22K shares of it right the way? I know there can be many reasons to sell shares, but at this very moment when the appeals court ruling is "imminent" and the stock can go to $18? For some reaon I think this is a lot similar to a week ago when the TiVo execs filed a new "poison pill" for themselves in case of a "change of control" and guaranteed their full pays no matter how TiVo would perform afterwards.

I know this may sound strange, but for some reason I begin to feel that some of you are correct that Charlie and TiVo execs are talking and preparing for something to happen after the ruling, only that the TiVo execs are busy taking cover for such outcome, Charlie is just sitting there comfortably waiting for it to happen.

I can be wrong of course.


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## Tulsa1

It seems you may also have way too much time on your hands.


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## jacmyoung

Tulsa1 said:


> It seems you may also have way too much time on your hands.


Sure saves others a lot of time trying to be up to date on this one, if you look at how many hits per day we get on this case.


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## jacmyoung

I guess TiVo's 90-day ruling prediction did not work, never mind their "imminent" and "near term" ones.


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## grooves12

jacmyoung said:


> I know this may sound strange, but for some reason I begin to feel that some of you are correct that Charlie and TiVo execs are talking and preparing for something to happen after the ruling, only that the TiVo execs are busy taking cover for such outcome, Charlie is just sitting there comfortably waiting for it to happen.
> 
> I can be wrong of course.


The impact on Charlie will be a lot less if Dish loses the case. At worst they will be forced into a licensing agreement... the law does not allow unreasonable licensing fees because of the lawsuit. So at worst, they will be paying something similar to what DirecTV/Comcast pay to TiVo.

If TiVo loses however, they are basically headed for bankruptcy and being out of business, because they won't be able to attack anyone else in the industry for violation of their patent, as the blueprint for how to beat with have been laid out (and they won't have the money to pursue anymore lawsuits anyways.)


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## Greg Bimson

grooves12 said:


> The impact on Charlie will be a lot less if Dish loses the case. At worst they will be forced into a licensing agreement... the law does not allow unreasonable licensing fees because of the lawsuit. So at worst, they will be paying something similar to what DirecTV/Comcast pay to TiVo.


Ahh, but I have to wonder...

Right now DISH/SATS is being ordered to pay $2.25 per DVR to TiVo for contempt and ongoing infringement, but only on eight models named in the injunction. TiVo probably wants the ViP series included as well on that licensing agreement.

So because of the ongoing litigation, it may be reasonable for TiVo to ask for $3 per DVR. And _there isn't a law against unreasonable licensing fees_. TiVo could simply force DISH/SATS to disable DVR's by refusing to license. That is, until DISH/SATS decides the offer to license is fine.

I still think someone is lining up to buy TiVo. That's what the "golden parachutes" are for.


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## Curtis52

grooves12 said:


> the law does not allow unreasonable licensing fees because of the lawsuit.


Because of the law, (not the lawsuit), TiVo doesn't have to give Dish a license at any price. It's called the right to exclude. The intellectual property is their property. This is still a free country.


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## Curtis0620

Curtis52 said:


> Because of the law, (not the lawsuit), TiVo doesn't have to give Dish a license at any price. It's called the right to exclude. The intellectual property is their property. This is still a free country.


But Charlie will cry foul.


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## dfd

grooves12 said:


> ... the law does not allow unreasonable licensing fees because of the lawsuit. So at worst, they will be paying something similar to what DirecTV/Comcast pay to TiVo.


What makes you think this? Do you have anything to back this up?


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## jacmyoung

Greg Bimson said:


> ...I still think someone is lining up to buy TiVo. That's what the "golden parachutes" are for.


Here is the problem, if we assume TiVo's exces are preparing for a change of control, can you see my point that after the change of control, TiVo may no longer continue to pursue the litigation route?

Who do you think might buy TiVo? MSFT? Google?... most of the big guys will not sue E* because they have business deals with Charlie already.


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## dgordo

jacmyoung said:


> I guess TiVo's 90-day ruling prediction did not work, never mind their "imminent" and "near term" ones.


I hate to say this because its a rumor and I don't personally know the source, but 2/10 is supposed to be the day.


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## jacmyoung

dgordo said:


> I hate to say this because its a rumor and I don't personally know the source, but 2/10 is supposed to be the day.


I am not very surprised to hear this because I thought parties might be informed of a date when the court would make the decision known, it just cannot disclose the decision until that date. Though a two-week heads up seems a little too far ahead of the time.


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## jacmyoung

It appears the PTO is ready to issue TiVo another patent called "Multimedia Signal Processing System", app #12/125,002. The specification reads almost the same as the "Multimedia Time Warping System" patent related to this TiVo v. E* case. But the detailed description seems to suggest it is about picture in picture or MRV or somthing similar. Basically do multiple programming storage and trickplay at the same time.

I will not be surprised if TiVo amends the cases agaisnt ATT and Verizon once this patent is issued on 2/23. Heck TiVo may file a new suit against E* with their three new patents. Although I recall E* started to provide two-room DVRs before this TiVo application was filed in 5/08, so maybe not.

Can't wait.


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## jacmyoung

dgordo said:


> I hate to say this because its a rumor and I don't personally know the source, but 2/10 is supposed to be the day.


Oh BTW I see that your rumor has already got some TiVo folks excited about a possible settlement before 2/10, interpreting the rumor as the appeals court pressuring parties to settle.

Can't wait to see how this one pans out. Job well done though.


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## jacmyoung

While lately TiVo has been talking about how they no longer should be considered a DVR company, rather an ad measurement data company, today DISH did this:

http://finance.yahoo.com/news/DISH-NetworkR-and-Rentrak-prnews-4240637863.html?x=0&.v=1

Of course DISH is known to have the ad agreement with Google since some time ago, much earlier than TiVo's recent agreement with Google. It looks to me Charlie is not going to even let TiVo have the ad cake and eat it too.

On the same day TiVo released its Super Bowl ad measuring results (IMHO a semi joke) Charlie issues this news (IMHO also a semi joke), talk about timing.


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## jacmyoung

A week ago, TiVo filed its response to MSFT's motion to intervene in the TiVo v. ATT case, I have discussed such motion earlier.

While TiVo argued MSFT had no right or at least should not be permitted to intervene, TiVo seemed to concede that MSFT had the right to intervene, so alternatively TiVo sought to put conditions that MSFT be treated as the same party as ATT (My guess was TiVo wanted to save its money and time), and MSFT should not be allowed to try to move the case out of the E. TX court. At the time I commented it was strange because MSFT did not seek to transfer the case.

What I did not bother to mention was, on that same day, the court granted MSFT's motion to intervene, also granted TiVo's wish to set the above two conditions in. I thought it was odd Judge Ward moved so fast, but did not think it was a big deal.

Yesterday, both MSFT and ATT filed their responses to TiVo's 2/1/10 response to the MSFT's motion to intervene. Both argued the motion should be granted without the conditions TiVo sought.

As I commented that time, they argued TiVo cannot be allowed to try to achieve several goals at the same time, the issue here is not whether the case should be transferred or not because no one was seeking a transfer (though MSFT and ATT did not forfeit their right to seek a transfer), and since MSFT has the right to intervene, it should be considered an independent party. They echoed my feeling that TiVo was trying to save its time and resources by asking the court to treat MSFT and ATT as a single party.

Interestingly the court also removed its 2/1/10 entry granting the MSFT's motion and the TiVo's conditions, likely under the objection from MSFT and ATT.

What the above tells me is, just like Judge Folsom, Judge Ward is biased. He did not even consider that both MSFT and ATT had the procedural right to respond to TiVo's response and request for conditions, he just granted TiVo's requests.

What the above also tells me is, both MSFT and ATT, just like E*, aren't just sitting down, they will not only fight TiVo, but they know they have to fight that E. TX court every step of the way.

On the TiVo v. Verizon front, I mentioned before in 1/10 Verizon filed for the appearances of 7 attorneys in this case, a few days ago TiVo amended its case against Verizon by adding two Verizon affiliates, yesterday Verizon filed an unopposed motion for a 5-day extension to respond, it was granted.

Seems to me an inch by inch fight just like the TiVo v. E* case.


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## dgordo

Looks like the rumor was wrong. I guess Craig Moffett has a research note saying maybe not before the end of the month.


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## jacmyoung

Guess what, Judge Ward today just excused himself from the TiVo v. ATT/MSFT case, gave the case to Judge Folsom. I guess no one even wants to touch TiVo's cases anymore

Somehow I have the feeling Judge Folsom will wait for the appeals court decision, ultimately might combine the E* v. TiVo case currently pending in his court, and the TiVo v. ATT/MSFT, and the MSFT v. TiVo (not the N. CA one) cases all together, if necessary.

The MSFT v. TiVo case I am talking about is the declaratory judgment suit MSFT filed (or will file) along with the TiVo v. ATT/MSFT case.


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## phrelin

jacmyoung said:


> Guess what, Judge Ward today just excused himself from the TiVo v. ATT/MSFT case, gave the case to Judge Folsom. I guess no one even wants to touch TiVo's cases anymore
> 
> Somehow I have the feeling Judge Folsom will wait for the appeals court decision, ultimately might combine the E* v. TiVo case currently pending in his court, and the TiVo v. ATT/MSFT, and the MSFT v. TiVo (not the N. CA one) cases all together, if necessary.
> 
> The MSFT v. TiVo case I am talking about is the declaratory judgment suit MSFT filed (or will file) along with the TiVo v. ATT/MSFT case.


:grin:

So.... Two of the largest corporations in the world added to the mix certainly will have an impact, psychologically if no in no other way. I'm just not sure whether that's good or bad for Dish/Echostar.


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## jacmyoung

phrelin said:


> :grin:
> 
> So.... Two of the largest corporations in the world added to the mix certainly will have an impact, psychologically if no in no other way. I'm just not sure whether that's good or bad for Dish/Echostar.


I know Charlie always likes to split the cost with others if he can, who knows, since ATT and MSFT seem to take a page out of Charlie's book, maybe they will even cover his cost for him


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## phrelin

jacmyoung said:


> I know Charlie always likes to split the cost with others if he can, who knows, since ATT and MSFT seem to take a page out of Charlie's book, maybe they will even cover his cost for him


:lol:


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## They'reBaaaack

jacmyoung said:


> Guess what, Judge Ward today just excused himself from the TiVo v. ATT/MSFT case, gave the case to Judge Folsom. I guess no one even wants to touch TiVo's cases anymore


I don't suppose it occurred to you that Judge Folsom's involvement in the epic Tivo v echostar case uniquely qualifies him as a judicial expert on the matter.


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## jacmyoung

They'reBaaaack;2359663 said:


> I don't suppose it occurred to you that Judge Folsom's involvement in the epic Tivo v echostar case uniquely qualifies him as a judicial expert on the matter.


Or maybe just that after Judge Ward issued a decision "after having duly considered all matters" (his words not mine) and granted MSFT's motion as well as TiVo's conditions, only had to withdraw the decision after MSFT and ATT filed the responses opposing TiVo's conditions, he decided the hell with it, I am not going to deal with them anymore


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## Lake Lover

Due to the complexity of technical issues of this case, Judge Ward made a wise decision in turning the case over to Judge Folsom, who probably has a more comprehensive knowledge of the issues than any jurist in the country. IMO, that will prove helpful to proceed to trial with less delay than would be the case if Ward had retained the case, which should prove of benefit to the court as well as the litigants.

Being a shareholder owned corporation, MSFT likely would not subsidize T's legal costs in this action, or the legal costs of any other corporation, for fear of antagonizing MSFT shareholders. Anyway, T is certainly able to their legal fees.

I am surprised that MSFT chose to enter the fray. Unless, of course, they are really worried about something we don't know.


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## jacmyoung

Lake Lover said:


> ...IMO, that will prove helpful to proceed to trial with less delay than would be the case if Ward had retained the case, which should prove of benefit to the court as well as the litigants.


Sure, we all know Judge Folsom has the reputation of being very swift I do agree though, had Judge Folsom being the one, he might have been more careful not to grant a motion and TiVo's request before all parties had the chances to file their legal responses.



> Being a shareholder owned corporation, MSFT likely would not subsidize T's legal costs in this action, or the legal costs of any other corporation, for fear of antagonizing MSFT shareholders. Anyway, T is certainly able to their legal fees.


If what you are saying is MSFT will try to end it as soon as possible by settling with TiVo, just take a look at the i4i v. MSFT case, after years of litigation, after losing it to i4i, after screwing up and ended up having to pay $200M which they could have easily avoided, did you see MSFT settling with i4i? No, MSFT simply did what E* did, put out a press release claiming that they had designed around the i4i patent and continued to sell the Word, when the injunction ordered them to stop selling Word with the infringing XML editor.



> I am surprised that MSFT chose to enter the fray. Unless, of course, they are really worried about something we don't know.


It is obvious to anyone by just reading MSFT's motion why and what MSFT is worried about, they had made the point as loudly as they possibly could in order to be part of the lawsuit.


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## HobbyTalk

I thought this thread was about TiVo vs EchoStar? :backtotop


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## phrelin

HobbyTalk said:


> I thought this thread was about TiVo vs EchoStar? :backtotop


Seems like it just got expanded by the courts to TiVo v The World.


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## jacmyoung

HobbyTalk said:


> I thought this thread was about TiVo vs EchoStar? :backtotop


(TiVo v E* + TiVo v ATT + ATT x MSFT + TiVo v MSFT/intervener + MSFT v TiVo + E* v TiVo) / Judge Folsom = on topic.

How was my math?


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## P Smith

Fuzzy.


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## jacmyoung

P Smith said:


> Fuzzy.


(TiVo v E* + TiVo v ATT + ATT x MSFT + TiVo v MSFT/intervener + MSFT v TiVo + E* v TiVo - TiVo v Verizon) / Judge Folsom = TiVo.

Better?


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## Curtis52

TiVo awarded important patent:

"TiVo doesn't yet know if their injunction against DISH DVRs will hold in court, but that hasn't stopped them from expanding their patent portfolio. In a remarkable filing with the USPTO, TiVo appears to have now won an important patent for analyzing and displaying closed caption and meta data to DVR customers. That appears to encompass enhanced TV services, including a "clip and sling" type technology and could eventually allow TiVo users to automatically remove commercials from time shifted programs."

link


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## peak_reception

What a Soap Opera.


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## Jhon69

phrelin said:


> Seems like it just got expanded by the courts to TiVo v The World.


"We are the world,we're being sued by Tivo"!.:grin:

Would somebody please get this Tivo leech off my back?

I know it's an endangered species but you know when you gotta go,you gotta go!.


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## Curtis0620

Jhon69 said:


> "We are the world,we're being sued by Tivo"!.:grin:
> 
> Would somebody please get this Tivo leech off my back?
> 
> I know it's an endangered species but you know when you gotta go,you gotta go!.


As soon as DISH pays up.

Quit copying, and invent something on your own.


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## jacmyoung

Curtis0620 said:


> As soon as DISH pays up.
> 
> Quit copying, and invent something on your own.


As far as E* is concerned, they have already done all of the above, we'll see if the appeals court agrees.


----------



## phrelin

Sometimes it's the way of the world. Any experienced brand manager will tell you that when your brand becomes the generic noun for all the products in the class (Kleenix, for instance) it is already in trouble. And TiVo has also become a verb for recording a TV show.

Facts are facts, but in technology what you invented yesterday is yesterday's technology. TiVo doesn't own the idea of video recording, maybe just a method of making the process better. That is worth money, but not a lot of money, just enough, because it's yesterday's technology. In TiVo's situation you sell your process through a reasonable license fee which is determined within the marketplace not by what you think it ought to be worth. If you have to sue the world to protect it, you want too much money for it.

Part of what's gone wrong for TiVo may have been too many engineers and lawyers. The DirecTV's, Dish's, Comcast's and Time Warner's were the exact wrong place to set the market value. If in 2004 most small cable companies had stuck a co-label on TiVo's products, establishing the value of what TiVo owned would be relatively easy and asserting rights would be a public relations fact. Instead, their name is a generic noun and verb, but they aren't predominant and familiar.

They still may win against Charlie, but from the standpoint of the courts there's going to be much grimacing going on when everyone realizes TiVo is in battle with the world, or Charlie, Microsoft and ATT.

And in the law, there is no right or wrong just winners and losers.


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## jacmyoung

Some TiVo folks at the village questioned my statement that Judge Ward granted the MSFT motion and TiVo's requests before MSFT and ATT had filed their legal responses, please if you don't have any idea what you are talking about, be polite, below is a copy of the discussion I had with Ken F on another site which recorded Judge Ward entry on 2/1/10, later removed after MSFT and ATT filed to oppose TiVo's requests:



> #115 (permalink) 02-02-2010, 11:40 AM
> *Ken F *
> ...Join Date: Mar 8th, 2004
> Posts: 715
> 
> Quote:
> Originally Posted by jacmyoung
> I don't know how TiVo got the idea that MSFT was trying to move the case to N. CA. MSFT actually filed their countersuit (declaratory judgment suit) in the E. TX court, asking the court to combine its suit with the TiVo v. ATT case. I dont see how MSFT can later try to move this case out of E. TX.
> 
> Perhaps because Microsoft has done it before? Microsoft legal has sought a change of venue on multiple occasions, and given the i4i result, I think they'd do anything possible to avoid another case in the Eastern District of Texas.
> 
> In any case, the Court ruled on the motion yesterday.
> 
> Quote:
> *After duly considering the motion, the evidence and the record, the Court GRANTS the Motion, subject to the following conditions. Microsoft and Defendant AT&T Inc. shall be treated as one entity in connection with their seeking discovery from TiVo, and Microsoft's intervention shall not be used as a basis for transferring venue in this action.*


Judge Ward jumped the gun on 2/1/10 right after TiVo filed its response to the MSFT motion, not realizing that motion should not have been ruled on until MSFT had the chance to respond to TiVo's response.


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## jacmyoung

Now that I think about it, there might be a perfect reason why Judge Ward transferred the TiVo v. ATT case to Judge Folsom, after MSFT and ATT filed to oppose TiVo’s requests. He likely sensed that since he had to grant the motion, MSFT and ATT might just try to move the case. Transferring the case to Judge Folsom might be the best way to later defeat such transfer motion since Judge Folsom can argue he is the “expert” in the TiVo patents.

As I said before this E. TX court is well known to encourage patent lawsuits and also will do anything they can to keep those suits at its location. The local economy depends on those lawyers and CEOs paying premiums to stay and dine and support the local businesses. I said I had no problem they try to do that, I only hoped my local authorities were this smart.

In the past year or so alone, there were four cases which the judges in that court refused to grant motions to transfer, only later ordered by the appeals court to transfer the cases to other venues, citing “patently erroneous” decisions by those judges, including Judges Folsom and Ward.


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## Curtis52

Inventing the DVR was just a warmup...

link


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## phrelin

Curtis52 said:


> Inventing the DVR was just a warmup...
> 
> link


Yeah, right. Or


> The two early consumer DVRs, ReplayTV and TiVo, were launched at the 1998 Consumer Electronics Show in Las Vegas. Microsoft also demonstrated a unit with DVR capability but commercial availability of this software would have to wait until the end of 1999 for full DVR features in Dish Network's DISHplayer receivers. TiVo shipped their first units on March 31, 1999, and to this day the last Friday in March is celebrated as a company holiday known as 'Blue Moon'.


But the lawsuits aren't really about who invented the DVR, they're about who's willing to waste the most money on legal fees.


----------



## bnborg

Curtis52 said:


> Inventing the DVR was just a warmup...
> 
> link


I always thought ATI invented the DVR. Adding an All In Wonder card to a PC gave it that capability, and AIW cards were around before 1998. But there was also Rainbow Runner and other products.AMD now owns ATI. I do not know if they made some sort of agreement with Tivo that keeps them out of this. This may have been discussed before. I have been watching this thread, but I admit I have not studied it thoroughly. Flame me, correct me, or ignore me if I am wrong.


----------



## Herdfan

phrelin said:


> Any experienced brand manager will tell you that when your brand becomes the generic noun for all the products in the class (Kleenix, for instance) it is already in trouble. And TiVo has also become a verb for recording a TV show.


Yes, but that generally is about protecting a brand name or service mark. TiVo really is not fighting this battle.



phrelin said:


> In TiVo's situation you sell your process through a reasonable license fee which is determined within the marketplace not by what you think it ought to be worth. If you have to sue the world to protect it, you want too much money for it.


I agree with that when you are dealing with reasonable people. Charlie is not reasonable and he has already paid way more in legal fees and settlements than he could have just licensed the technology for. He may still pay more.


----------



## Ken_F

bnborg said:


> I always thought ATI invented the DVR. Adding an All In Wonder card to a PC gave it that capability, and AIW cards were around before 1998. But there was also Rainbow Runner and other products.AMD now owns ATI. I do not know if they made some sort of agreement with Tivo that keeps them out of this. This may have been discussed before. I have been watching this thread, but I admit I have not studied it thoroughly. Flame me, correct me, or ignore me if I am wrong.


The early tuner cards offered only liveTV without recording.

The first PC record software with VCR-like timers came about a year after the TiVo was released. PC solutions with the ability to pause/replay live programming, and watch recordings before completion, came almost two years after TiVo. The first public release of PC name-based software came about three years later (2002), IIRC.


----------



## grooves12

Lake Lover said:


> I am surprised that MSFT chose to enter the fray. Unless, of course, they are really worried about something we don't know.


Microsoft is the provider of the software in the FIOS boxes... and has long been planning implementing them in the xbox and other converged devices for the living room. If they allow Tivo to win this battle it will potentially take them out of the dvr business entirely and drastically changed their plans for digital media devices.


----------



## Curtis0620

grooves12 said:


> Microsoft is the provider of the software in the FIOS boxes... and has long been planning implementing them in the xbox and other converged devices for the living room. If they allow Tivo to win this battle it will potentially take them out of the dvr business entirely and drastically changed their plans for digital media devices.


NO it wouldn't. They just have to license it.


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## phrelin

Herdfan said:


> Yes, but that generally is about protecting a brand name or service mark. TiVo really is not fighting this battle.


What I meant is that others inevitably will start marketing their own tissues.


> I agree with that when you are dealing with reasonable people. Charlie is not reasonable and he has already paid way more in legal fees and settlements than he could have just licensed the technology for. He may still pay more.


Oh, when it comes to money, Charlie's everyone's combative, skinflint uncle.


----------



## jacmyoung

Herdfan said:


> ...I agree with that when you are dealing with reasonable people. Charlie is not reasonable and he has already paid way more in legal fees and settlements than he could have just licensed the technology for. He may still pay more.


How much DirecTV has paid TiVo so far? If you consider $0.90/DVR/mo, say on average 2 million DVRs since 2006? That is about $86 million just license fees over the years, not to mention DirecTV was solely responsible for the manufacturing costs of all the DirecTiVo hardware, then subsidizing them.

The above numbers could be wrong, the point is, it is very difficult to determine which way is a better way, each company must determine for itself what is the best course of action. I have no problem if Charlie simply had decided to license with TiVo from the beginning or half way through, but since he did not, and still wishes to "clear the path", we just have to wait and see.


----------



## jacmyoung

Ken_F said:


> The early tuner cards offered only liveTV without recording.
> 
> The first PC record software with VCR-like timers came about a year after the TiVo was released. PC solutions with the ability to pause/replay live programming, and watch recordings before completion, came almost two years after TiVo. The first public release of PC name-based software came about three years later (2002), IIRC.


We know TiVo has its DVR patent, ReplayTV has its own, MSFT has its DVR related patent too. We also know currently some of the TiVo patent claims, and/or DVR patent applications are under rejections by the PTO.

I will not be surprised those ReplayTV and MSFT DVR patents can be invalidated through PTO reexaminations also, just take parties to seek such reexaminations, and usually these only happen if you use your patents to sue others, then it often triggers the defendants' reexamination requests.

BTW Ken, I have copied Judge Ward's grant of the MSFT's motion and TiVo's requests on 2/1/10 you have posted on 2/2/10, which I had confirmed later that day. According to certain person in the village you have lied about it, you simply made that thing up, because he could not find such entry anymore.

What is your response as a TiVo supporter to such accusation?


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## bnborg

Ken_F said:


> The early tuner cards offered only liveTV without recording.
> 
> The first PC record software with VCR-like timers came about a year after the TiVo was released. PC solutions with the ability to pause/replay live programming, and watch recordings before completion, came almost two years after TiVo. The first public release of PC name-based software came about three years later (2002), IIRC.


Well, my 1998 All In Wonder came with software called "Digital VCR". As the name implies it could record. It had Instant Replay and a timer but there was no program guide. The program guide required WebTV, a feature of Microsoft Windows 98, that never really worked anyway.

So I guess it must be the integration of digital recording with a working program guide that is what Tivo claims ownership for.


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## HobbyTalk

Ken_F said:


> The early tuner cards offered only liveTV without recording.
> 
> The first PC record software with VCR-like timers came about a year after the TiVo was released. PC solutions with the ability to pause/replay live programming, and watch recordings before completion, came almost two years after TiVo. The first public release of PC name-based software came about three years later (2002), IIRC.


The AIW 128 had DVR functions and was available Jan. 1999. I think that was their first one with DVR functions.


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## jacmyoung

bnborg said:


> ...So I guess it must be the integration of digital recording with a working program guide that is what Tivo claims ownership for.


Nothing to do with programming guide, TiVo "invented" a way to do DVR trickplays, just like ReplayTV invented their way, and MSFT too. Three different ways from three of them, though MSFT's DVR patent came a few years later than TiVo's and ReplayTV's.

However the fact we have three such patents means they are different from one another, i.e. likely not infringing on one another.

But MSFT holds quite a few patents on programming guide related items.

Just because someone had a working DVR device before does not automatically invalidate the later patents, it took someone who is willing to go through the trouble to try to invalidate the patent through PTO reexaminations. In such reexamination that DVR card technology can be used to try to invalidate the later patent.

But someone has to try it. The PTO did not care, they simply reviewed the patent applications based on the prior art references provided by the patent owners themselves, the PTO's own search was very limited, so often times a patent was granted only later to be invalidated after a third party tried to disprove it.


----------



## phrelin

As I said before:


phrelin said:


> But the lawsuits aren't really about who invented the DVR, they're about who's willing to waste the most money on legal fees.


I thought it was Charlie, but now I think TiVo has established itself as the big loser regardless of the outcome(s).


----------



## bnborg

Mine was an All-in-Wonder® PRO, 7/24/98 version. And, yes it had the "Digital VCR" with "Instant Replay", as part of ATI MMC (multimedia center).

If they are SOL for not patenting the _concept_, why are they not getting sued also?


----------



## jacmyoung

bnborg said:


> ...If they are SOL for not patenting the _concept_, why are they not getting sued also?


Because the fact they predated TiVo's patent? A predated technology (prior art), whether patented or not, can be used to invalidate a later patent.

TiVo can't sue ATI for infringement if the ATI thing was before TiVo's patent application, but even if they could, TiVo would be like trying to commit suicide.


----------



## HobbyTalk

bnborg said:


> Mine was an All-in-Wonder® PRO, 7/24/98 version. And, yes it had the "Digital VCR" with "Instant Replay", as part of ATI MMC (multimedia center).
> 
> If they are SOL for not patenting the _concept_, why are they not getting sued also?


Guess I don't see where it has TV-on-Demand listed as a feature as the 128 has.


----------



## Ken_F

jacmyoung said:


> BTW Ken, I have copied Judge Ward's grant of the MSFT's motion and TiVo's requests on 2/1/10 you have posted on 2/2/10, which I had confirmed later that day. According to certain person in the village you have lied about it, you simply made that thing up, because he could not find such entry anymore.
> 
> What is your response as a TiVo supporter to such accusation?


Someone sent me a one page PDF on 2/2/2010 that certainly read like a ruling on a motion. I quoted it. If this was indeed TiVo's proposed motion, and not an actual motion, then my apologies for any confusion it caused. If that is the case, I am surprised it took someone 9 days to correct the error.


----------



## jacmyoung

Ken_F said:


> Someone sent me a one page PDF on 2/2/2010 that certainly read like a ruling on a motion. I quoted it. If this was indeed TiVo's proposed motion, and not an actual motion, then my apologies for any confusion it caused. If that is the case, I am surprised it took someone 9 days to correct the error.


If you simply quoted it from a PDF document, then it was likely a proposed order by TiVo, but after you posted that one on 2/2/10, I immediately went into Pacer and found that court entry matching your quote, without any "proposed" wording, and what I saw was not a PDF file, rather a line item entry in the court docket table/report. That line entry is no longer there anymore.

The line entry in the court docket table/report can only be entered by the court clerk, or removed by the court clerk. Any lawyer correct me if I am wrong. In any event, it was clear at the time based on that line item entry that the court granted the motion and also the TiVo's requests. Of course we cannot rule out the possibility that the court clerk made a wrong entry and later simply removed it. I just have never seen such a mistake happen before.

Judging by Judge Ward's speed, I still think he made a quick decision, later removed it after MSFT and ATT filed their sur-responses.


----------



## jacmyoung

HobbyTalk said:


> Guess I don't see where it has TV-on-Demand listed as a feature as the 128 has.


According to you two, ATI was selling those "digital VCR" PC cards in 7/98 or 01/99. TiVo filed the "Multimedia Time Warping System" patent application in 7/98.

Since ATI was already selling one of the cards in 7/98, they had to already have the DVR technology documented before TiVo filed the patent application. The tricky part is, if ATI did not make their DVR technology public, describing it in details in public, then the ATI DVR technology cannot be used as a prior art to invalidate TiVo's patent.

TiVo of course cannot sue ATI because ATI at least had the technology offered for sale before TiVo filed its patent application.


----------



## Ken_F

bnborg said:


> Well, my 1998 All In Wonder came with software called "Digital VCR". As the name implies it could record. It had Instant Replay and a timer but there was no program guide. The program guide required WebTV, a feature of Microsoft Windows 98, that never really worked anyway.
> 
> So I guess it must be the integration of digital recording with a working program guide that is what Tivo claims ownership for.





HobbyTalk said:


> The AIW 128 had DVR functions and was available Jan. 1999. I think that was their first one with DVR functions.


Thanks for the correction. It's nice to learn something new from time to time. 

I bought the AIW Radeon AGP in late November or December, 2000 (i.e. for Christmas), as soon as I could find it locally. IIRC, it was delayed multiple times before it finally became available. I could've sworn it was the first product with MMC 7.0 (with ability to pause/replay liveTV and play recordings in progress), as I recall waiting for that functionality before I would buy a tuner card. I was not aware that the software shipped with earlier products.

Does anyone have a firm date on when that software became available? All I could find was a July, 2001 reference for MMC 7.1.


----------



## jacmyoung

Ken_F said:


> Thanks for the correction. It's nice to learn something new from time to time.
> 
> I bought the AIW Radeon AGP in late November or December, 2000 (i.e. for Christmas), as soon as I could find it locally. IIRC, it was delayed multiple times before it finally became available. I could've sworn it was the first product with MMC 7.0 (with ability to pause/replay liveTV and play recordings in progress), as I recall waiting for that functionality before I would buy a tuner card. I was not aware that the software shipped with earlier products.
> 
> Does anyone have a firm date on when that software became available? All I could find was a July, 2001 reference for MMC 7.1.


If ATI merely claimed "digital VCR" capbility but did not deliver it until after TiVo delivered a functional DVR, then ATI is not protected, unless as I said ATI had publicly disclosed their DVR technology in detail before TiVo filed its patent application.

But here is the scenario that is really interesting.

We know TiVo, ReplayTV and MSFT all hold their own DVR patents. We know ATT uses MSFT technology. We also know Verizon uses Motorola technology, likely all other big cablecos also use Motorola technology.

We know that Motorola had a 5-year deal with ReplayTV back in 2001, so it is likely Motorola is using the ReplayTV technology. Of course we also know DirecTV now holds the ReplayTV IP.

If we accept the above assumptions, then MSFT can easily defend ATT because it has its own DVR IP, Verizon (and ultimately Motorola) should be able to defend itself if they use the ReplayTV technology.

But if Verizon and Motorola admit they use the ReplayTV Technology, they will open themselves up to lawsuit by DirecTV. Since Verizon/cablecos are some of the biggest DirecTV competitors, there is a strong incentive for DirecTV to go after them.

The alternative is if Verizon settles with TiVo before getting into the detailed discoveries so they do not expose themselves. But then settling with TiVo so soon will send a signal to DirecTV Verizon/Motorola may have something to hide too.

The question is, will DirecTV go after Verizon and/or the cablecos? On one hand there is this strong incentive to do so, on the other hand DirecTV is no TiVo, they can stand on their own, they may not want to give the public the perception that they cannot compete rather have to go to court with its comptetitors. But then again DirecTV is not known to shy away from lawsuits either.

But if all the big guys start fighting in court, it will be the best thing ever happened to Charlie, and he has only TiVo to thank for


----------



## phrelin

jacmyoung said:


> But if all the big guys start fighting in court, it will be the best thing ever happened to Charlie, and he has only TiVo to thank for


That's really the irony here. I really can't get a good feel for Folsom, but at some point this stuff is going to get old and the failure of TiVo and Charlie to settle could become a serious sore point in his mind.


----------



## dgordo

Doesn't directv own replaytv?


----------



## jacmyoung

phrelin said:


> That's really the irony here. I really can't get a good feel for Folsom, but at some point this stuff is going to get old and the failure of TiVo and Charlie to settle could become a serious sore point in his mind.


I don't think he cares, had he cared, he would have ruled way before 6/09, he could have ruled right after the 9/4/08 hearing. Or he could have sanctioned E* for the stay period, and raised the damage rate to $2.25 rather kept it at $1.25. He had all the discretion to impose such awards to give E* more incentive to settle with TiVo.

The interest of the judges in E. TX court is to attract as many patent lawsuits to their court as possible, and keep them there.


----------



## Albie

dgordo said:


> Doesn't directv own replaytv?


Yes, they bought what was left of Replay (mostly the IP portfolio) a few years ago.


----------



## HobbyTalk

Does the Moxi use it's own softwware or someone elses?


----------



## P Smith

Thread is going off course !
:backtotop


----------



## phrelin

P Smith said:


> Thread is going off course !
> :backtotop


Darned! I figured being off topic would get this thread to 2000 posts faster.


----------



## jacmyoung

As mentioned earlier, below are the four appeals court orders, ordering the judges in the E. TX court to transfer their cases to other courts. It goes to show the E. TX judges will do anything to keep patent infringement cases in their court, even though they had no business handling those four cases.

In the case of TiVo v. ATT/MSFT, Judge Ward did a smart thing, he sensed MSFT and ATT might try to move the case out of E. TX, by reassigning it to Judge Folsom, it is unlikely MSFT/ATT can succeed in moving the case.

The appeals court rarely issue such writ of mandamus, they do so only when the petitioners demonstrate the lower courts have clearly abused their discretion. Therefore issuing four such orders in less than a year against one district court was highly unusual.

Again nothing particular against what they were doing, they were just trying to bring businesses to their own community, and keep the businesses locally as long as possible. Just to put things in proper perspective.


----------



## Ken_F

TiVo was recently granted a patent for a DVR "Data storage management and scheduling system" (7,665,111), one of the company's early applications from 1999.

This appears to be one of the first patents related to program scheduling and space management on a DVR.


----------



## jacmyoung

Just an update, Judge Folsom initiated a scheduling of conference and discovery order in the TiVo v. ATT case today. A copy of the order is attached.

The order appears related to the conference and discoveries between TiVo and ATT only. Since TiVo almost conceded that MSFT would be allowed to intervene in this case, the lack of the reference to MSFT may indicate that there could be separate conference and discoveries between TiVo and MSFT.

A few days ago TiVo also motioned the court to remove one of its lead lawyers Alexander Giza from the case. Today Judge Folsom granted the motion to terminate him. Alexander Giza was instrumental in the TiVo v. E* case so I guess his resume stops at TiVo v. E*.


----------



## Curtis52

Ken_F said:


> TiVo was recently granted a patent for a DVR "Data storage management and scheduling system" (7,665,111), one of the company's early applications from 1999.


TiVo was awarded a patent a few days ago for a patent that will let people use data that tells where the commercials are in a TV program so that the commercials could be skipped on playback (among other uses). The data could be supplied by third parties on the internet and accessed automatically by the DVR. Seemingly, TiVo wouldn't have a legal liability if third parties supply the data.

http://www.zatznotfunny.com/2010-02/tivo-patents-closed-captions-meta-data-analysis/


----------



## jacmyoung

TiVo's patents are of little value if TiVo does not assert its rights over such patents, by including them in the lawsuits. Let's wait and see what TiVo will do. If TiVo continues to lose subs, soon it may just become one of those "patent holding companies".

Unlike TiVo the other DVR companies secure their own patents or buy IPs as a defensive measure.


----------



## jacmyoung

Let me make it simple for those still wondering how E* could have kept the DVR functionalities in the modified DVRs. As the Village expert quoted what Mr. Waxman quoted what TiVo described of the disablement provision, something I explained a while ago:



> 6064 we said Echostar can *disable the infringing DVR functionality* in "all DVR units" by updating their software via satellite transmission.


Now the above was TiVo's interpretation of what could be accomplished to conform to the disabling provision. Keep in mind that an injunction is constructed by the patentee, approved by the court. The court does not go beyond what the patentee requested. Therefore if E* met TiVo's request and/or followed TiVo's instruction, E* was not in violation of the order which TiVo had sought to impose.

E* did disable the "infringing DVR fucntionality" in "all DVR units" (the 8 named DVRs), then restored non-infringing DVR functions. The question is one and only, were the DVR functions in the modified DVRs still "infringing DVR functions"?

If yes, E* was in violation, if no, or not certain anymore (new action needed), no contempt.


----------



## jacmyoung

Another point Mr. Waxman was making was, during the last appeal E* argued that they knew they had to disable the DVR functions, E* succeeded in appealing to the appeals court that disabling the DVR functions would cause great harm, as a result the appeals court granted the stay. All the while E* was planning to modify the DVRs without disabling the DVRs.

I guess the point was E* lied to the court. Yet Mr. Waxman and TiVo never cared to look at what was happening at that time. E* did not complete its modification until mid 2007. Had the appeals court denied the stay, E* would have to disable the DVRs, then waited for modification to be done months later, causing great harm.

There is no inconsistency with what E* said.


----------



## jacmyoung

BTW, if any of the TiVo folks are still thinking that the following line is irrelevant, I just want to point out that Judge Rader repeated this line to Mr. Waxman twice during their exchange:



> Echostar can disable *the infringing DVR functionality* in "all DVR units" by updating their software via satellite transmission.


Can't say Judge Rader was not impressed by what TiVo said E* could do.


----------



## jacmyoung

I want to credit the village folks with the following quote, just need to point out one thing, it was the same analyst that said before the appeals court granted the stay of the injunction pending appeal, that it was *highly unlikely* the appeals court would grant a stay:



> Credit Suisse -
> 
> Potential for Near Term Stock Volatility: We expect the Federal Circuit to
> hand down its ruling in the DISH-Tivo IP litigation in the next several weeks.
> We believe that investor anxiety over the ruling has been pressuring DISH
> shares recently (DISH down 13% YTD vs. -4% for the S&P 500). We also
> contend that consensus expects the ruling will be negative for DISH, given
> that DISH has lost its court battle with Tivo at virtually turn. Nevertheless, an affirmation of the June 2 ruling could pressure DISH shares in the near term.
> 
> DISH options pricing appears to indicate that investors anticipate the Federal Circuit to affirm the district court's ruling, and suggests that some of the Tivo litigation risk may be somewhat "priced in." Nevertheless, a Federal Circuit affirmation of the June 2 ruling could pressure DISH shares as it may increase the risk of a shutdown of DISH's DVR fleet and further shift bargaining leverage to TiVo. While we acknowledge the near term litigation overhang, we view the risk as manageable for DISH as:
> 
> We ultimately expect DISH and Tivo to reach a commercial deal as believe it is in Tivo's best interest to build a business model around its IP rather than simply force DISH to replace its set top boxes. In turn, this should (finally) remove the overhang, which we think would be well received by the Street.
> 
> DISH has ample liquidity to fund a licensing deal with Tivo. DISH is levered at 1.6x LTM EBITDA, suggesting ample room for incremental debt capacity. As such we see little liquidity risk to DISH.
> 
> We view DISH shares as fundamentally inexpensive, trading at 4.5x EV/EBITDA, the lowest among its peers. Assuming a commercial deal with Tivo entails DISH paying $3 monthly fee per set top box through the 2018 expiration of the '389 patent, we calculate DISH's EV/2010E EBITDA multiple would increase to ~5.2x, still a 6% discount to DTV.
> 
> The Federal Circuit, which held an appeals hearing on Nov 2, 2009, and is likely to render its decision in the near future, has three basic options (although its ruling could be nuanced and include a number of variables/variations):
> 
> (1) Uphold the District Court Ruling: Likely a Win for Tivo: The Federal Circuit could uphold Judge Folsom's contempt ruling, and in so doing, confirm that DISH's workaround infringes Tivo intellectual property. In our view, such a ruling would most likely force DISH to agree to a licensing arrangement with Tivo.
> 
> (2) Overturn the District Court Ruling: Likely a Win for DISH, but Perhaps Not Entirely : The Federal Circuit could overturn Judge Folsom's contempt ruling for a number of reasons. Such a ruling would likely be a win for DISH, but perhaps not entirely. For example, the appellate court could rule that DISH was not in contempt of the original injunction because the injunction was "facially overbroad" based on the fact that the original appellate decision overturned the infringement ruling as to the hardware claims. Because DISH did not challenge the scope of the injunction on appeal, nor raise the issue with the district judge before proceeding with the work-around, this is an unlikely scenario. Nevertheless, even if the appellate court were to overturn the contempt ruling, it could still uphold the district court's ruling that DISH's workaround does in fact infringe. Therefore, DISH could be required to shut down its DVRs, a major setback for the company, despite the fact that Judge Folsom's contempt ruling had been overturned.
> 
> (3) Remand the Case to the District Court: Not Clear but Likely to Favor Tivo: The Federal Circuit could remand the case back to the district court, stating that the district court had failed to consider enough evidence, and that it would need to consider other evidence/factors in making its ruling. While not necessarily a setback for DISH, unless the appellate court dismissed all the factors that the district court previously considered in finding contempt, we would be surprised if a remand would lead to a different outcome concerning contempt before judge Folsom.


One more thing, when Credit Suisse talked about a $3/DVR/mo. fee being a reasonable rate for a future settlement, they clearly had no clue that Judge Folsom had pegged the reasonable rate at $1.25/DVR/mo. and more importantly, they clearly do not know Charlie as well as most of the DBSTalk members know him

And yet our retirement outlooks are at the mercy of those analysts


----------



## phrelin

jacmyoung said:


> And yet our retirement outlooks are at the mercy of those analysts


Whether this particular guess ends up being even a little bit right, someone needs to hold these idiot analysts accountable. I wonder if Credit Suisse got taxpayers bailout money indirectly from AIG.:nono2:


----------



## phrelin

Ken_F said:


> TiVo was recently granted a patent for a DVR "Data storage management and scheduling system" (7,665,111), one of the company's early applications from 1999.
> 
> This appears to be one of the first patents related to program scheduling and space management on a DVR.


From the TiVo Granted Season Pass Patent thread started today:


Draconis said:


> Over ten years after it was filed, the US patent office has finally granted TiVo's patent on a "season pass".
> 
> I can see a LOT of lawsuits from TiVo in the future. :nono2:
> 
> http://www.zatznotfunny.com/2010-02/tivo-granted-season-pass-patent/


I know, of course, that this would only be a minor pause in Charlie's day.:sure:


----------



## jacmyoung

phrelin said:


> From the TiVo Granted Season Pass Patent thread started today:I know, of course, that this would only be a minor pause in Charlie's day.:sure:


After the TiVo v. E* experience, I wonder if TiVo will even consider suing Charlie in any new patent lawsuits anymore

But just reading the new TiVo patent description, I am pretty sure my DirecTV scheduling method likely does not infringe it, because the DirecTV scheduling is not automatic, I have to tell the DVR which TV series is the top priority before the next one will be recorded, in case the hard drive is out of space.

Besides, the issue today is not hard drive running out of space, rather lack of the number of tuners to record a channel due to hour conflict, which is not the subject of this patent. This patent deals with limited hard drive space and how to better use the space especially when the free space is running very low. We will have less and less of such issue due to bigger and bigger hard drives in the DVRs.

This is similar to the TiVo's DVR patent, which aimed to better manage the use of the CPU power, at a time when the CPU power was hard to come by, but not anymore.

The world is a lot different than what it was ten years ago when TiVo filed those patent applications.


----------



## scooper

jacmyoung said:


> After the TiVo v. E* experience, I wonder if TiVo will even consider suing Charlie in any new patent lawsuits anymore


If you want to swim with the sharks - you must be prepared to eat or be eaten.


----------



## dfd

jacmyoung said:


> After the TiVo v. E* experience, I wonder if TiVo will even consider suing Charlie in any new patent lawsuits anymore


Me too. I mean they've won all along the way so far and put quite a bit of E*'s $ in the Tivo coffers. Why would they want to continue?


----------



## banned for life

dfd said:


> Me too. I mean they've won all along the way so far and put quite a bit of E*'s $ in the Tivo coffers. Why would they want to continue?


Charlie has TiVo exactly where he wants them! :lol:


----------



## jacmyoung

dfd said:


> Me too. I mean they've won all along the way so far and put quite a bit of E*'s $ in the Tivo coffers. Why would they want to continue?


Yet you don't see TiVo suing Charlie based on those two new patents. They could have easily done so to put more pressure on E*.

Now since you continue to talk about winning all along, let me give you my take on what may happen if, and only if the modified DVRs may no longer infringe.

We know that the old injunction no longer exists, let's suppose TiVo is correct that E* did violate the old injunction by not disabling the DVR functions even though the modified DVRs no longer infringed. Since Judge Folsom did not impose any sanctions for the last stay period, TiVo would get no award for that period because Judge Folsom only awarded damages for that period, and the damages can only be awarded if infringement still existed.

For the contempt period, Judge Folsom did impose the $1.00 sanctions along with the $1.25 damages. But if the DVRs no longer infringed, like the above the $1.25 damages would be out, as far as the sanctions, I have never seen one patent case where there was no damages but only sanctions on the products, so likely the sanctions would be out too.

What will be left is the current injunction, let's say TiVo manages to convince the appeals court to reinstate the current injunction, yet since E* is following the "inform and approval" provision of the current injunction religiously, the court naturally cannot find E* in violation of the current injunction even if it reinstates the injunction.

So in all practicality, there would likely be no award of money, no finding of a contempt of the current injunction, even if E* is found to be in contempt of the old injunction. How do you like that outcome? Are you surprised the outcome is not that different?

That is if the modified DVRs may no longer infringe. Of course there has never been any dispute if the modified DVRs still infringe, E* will be in big trouble.

You see TiVo's so called "on the face" violation argument is meaningless, if you care to consider the different languages in the old and new injunctions, and the way Judge Folsom had formulated his awards.

As long as the DVRs no longer infringe, there is no chance the DVRs will be disabled and no money will change hands, because Judge Folsom formulated his new injunction and final judgment this way, despite all the harsh words thrown at E*, whether E* was in good faith or bad faith, whether E* should have appealed or not, whether E* changed its argument or not, all of those are just for show, to try to scare E* off, to try to pressure Charlie into a settlement with TiVo.


----------



## dfd

jacmyoung said:


> Yet you don't see TiVo suing Charlie based on those two new patents. They could have easily done so to put more pressure on E*.


Huh? They could "easily" have filed suit on a patent that was granted one or two days ago?

Should the lawsuit have already been prepared and kept ready to go waiting for the USPTO to issue the patent? Would that be the best use of company money?


----------



## jacmyoung

dfd said:


> Huh? They could "easily" have filed suit on a patent that was granted one or two days ago?
> 
> Should the lawsuit have already been prepared and kept ready to go waiting for the USPTO to issue the patent? Would that be the best use of company money?


You didn't know that?

First off, I was talking about the two patents TiVo used to sue ATT/Verizon, secondly, patentees regularly prepare lawsuits to be filed immediately after the PTO grants the patents, to claim their first choice of forum, called forum shopping. Same is true for any companies who are threatened by a potential patent infringement suit, they rush to file declaratory judgment suits to claim their choice of forum.


----------



## dfd

jacmyoung said:


> You didn't know that?
> 
> First off, I was talking about the two patents TiVo used to sue ATT/Verizon, secondly, patentees regularly prepare lawsuits to be filed immediately after the PTO grants the patents, to claim their first choice of forum, called forum shopping. Same is true for any companies who are threatened by a potential patent infringement suit, they rush to file declaratory judgment suits to claim their choice of forum.


Maybe if a company has the resources like Microsoft, it would do that but if you are a struggling company I doubt that they would want to prepay all those legal fees in anticipation of a patent that may not be granted.

Either way, the patents have been granted and Tivo can go after any company or individual that it feels is infringing their patents for the next 20 years or so.


----------



## banned for life

jacmyoung said:


> You didn't know that?
> 
> patentees regularly prepare lawsuits to be filed immediately after the PTO grants the patents, ....


They do? Can you provide a link to the statistics of when patents owners file their lawsuits? I'd be curious to see that.


----------



## jacmyoung

dfd said:


> Maybe if a company has the resources like Microsoft, it would do that but if you are a struggling company I doubt that they would want to prepay all those legal fees in anticipation of a patent that may not be granted.
> 
> Either way, the patents have been granted and Tivo can go after any company or individual that it feels is infringing their patents for the next 20 years or so.


As I said before, big companies secure patents mainly to defend themselves from being sued by others.

It is often the "struggling companies" or "patent holding companies" (AKA "patent trolls") that rush to file infringement suits right after the patents are granted. If you just read some of the quarterly filings by E*, they describe several patent suits filed by several patent trolls against not just E*, but DirecTV and somce cablecos. Some of the suits were filed on the same days when the PTO issued the patents. Had you read enough court patent docs, you would have noticed many instances when patent trolls filed their suits immediately after the patents were granted. There was no time to waste.

The patent applicants get notified of the exact dates of the patents to be issued a few weeks ahead of time.

As for "banned for life", you need to last at least through your 100th posts (I know it is almost insurmountable for you but anything is possible) for me to take you seriously


----------



## phrelin

As we all know, if you don't have at least 1,000 posts among the 12,000 or so posted on this subject in the various threads since the lawsuit began, you can't be serious about the subject.


----------



## RasputinAXP

I don't think I can EVER be too serious about a subject.


----------



## jacmyoung

phrelin said:


> As we all know, if you don't have at least 1,000 posts among the 12,000 or so posted on this subject in the various threads since the lawsuit began, you can't be serious about the subject.


I don't think anyone has to be serious about the subject, but I do think people have to be able to act like they are more than 3 years old to survive in the real world

BTW, about the only prediction I had made during this appeal process was after the CNBC analyst ran the rumor of a settlement over the weekend back in 10/09, I said on the Yahoo TiVo Board that TiVo would stay around $10 before the court ruling or a meaningful event, notwithstanding any general market crash or similar things of course.

It appears I have been quite right so far. All the ones betting on a TiVo win (whether through the court or through a settlement) have been losing their money on options consistently while TiVo stands almost at $10 sharp today on expiration, rendering all contracts worthless. Yet there will be no shortage of suckers to come


----------



## Maverickjoe

jacmyoung said:


> BTW, about the only prediction I had made during this appeal process was after the CNBC analyst ran the rumor of a settlement over the weekend back in 10/09, I said on the Yahoo TiVo Board that TiVo would stay around $10 before the court ruling or a meaningful event, notwithstanding any general market crash or similar things of course.


How about this gem:


jacmyoung said:


> And a very important point to make is, TiVo cannot blame the judge for not helping them this time, because Judge Folsom not only awarded TiVo the $206M enhanced damages (more than the minimum E* had admitted), but any attorney fees and costs which as I heard would easily be over $150M, those will be on top of the $330M in a hypothetical minimum TiVo's "winning settlement".


The attorney fees agreed to by Tivo and E* was $5.8M, closely predicted by several others boards.


----------



## jacmyoung

Maverickjoe said:


> How about this gem:
> 
> The attorney fees agreed to by Tivo and E* was $5.8M, closely predicted by several others boards.


How about this as a mistake? It was never a prediction rather reading the numbers wrong. I have made many mistakes and educated myself throughout this whole legal battle, thanks to folks on both sides. I am grateful for this experience.

I hope I have also helped a few others, on both sides, to get more out of this legal battle. Here is to another year of rambling to come


----------



## Maverickjoe

jacmyoung said:


> BTW, about the only prediction I had made during this appeal process was after the CNBC analyst ran the rumor of a settlement over the weekend back in 10/09, I said on the Yahoo TiVo Board that TiVo would stay around $10 before the court ruling or a meaningful event, notwithstanding any general market crash or similar things of course.


Then there's this beauty from Dec 3, 2009:



jacmyoung said:


> It could be that they could not agree on the costs, therefore they have agreed to let Judge Folsom settle the costs. Or some other form of agreement.
> 
> However, it is possible that the parties have received the word that the appeals court had reached a decision and will issue it soon, if so there is no reason to continue to delay the last remaining issue further. Pure speculation of course.


----------



## Maverickjoe

jacmyoung said:


> How about this was a mistake? It was never a prediction rather reading the numbers wrong. I have made many mistakes and educated myself throughout this whole legal battle, thanks to folks on both sides. I am grateful for this experience.
> 
> I hope I have also helped a few others, on both sides, to get more out of this legal battle. Here is to another year of rambling to come


So it's easy to understand making a mistake, but after the other guy made an impressively accurate prediction showing his math, you're saying you made a second mistake?



jacmyoung said:


> If you subtract $200M and $10M from the $360M, there is still $150M in the balance, not $7M as you assumed to be the attorney fees and costs.


And then taunted the guy who got it right with a third wrong prediction on the same topic?



jacmyoung said:


> BTW, I have just used your own math to come out with $150M attorney fees and costs in the last post, why don't you go back to learn your math again?


----------



## jacmyoung

Maverickjoe said:


> Then there's this beauty from Dec 3, 2009:


Oh that was certainly a beauty, a speculation of mine based on many you TiVo folks' insistence that the appeals court hammer would fall at any moment, after you folks listened to Rogers' "imminent" comment, you forgot about that detail? How long ago was that? How many of you have predicted a ruling week after week?

You think that $5.8M number was so hard to figure out, it took TiVo's 6 delay motions, 5 months to iron out? Of course TiVo was expecting a quick decision from the appeals court, after it did not happen, they had to hand out the number to Judge Folsom, any more TiVo delay motion would make it look absurd.


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## jacmyoung

Maverickjoe said:


> So it's easy to understand making a mistake, but after the other guy made an impressively accurate prediction showing his math, you're saying you made a second mistake?
> 
> And then taunted the guy who got it right with a third wrong prediction on the same topic?


Why don't you ask Jason to come here and talk about it? As long as he can talk like an adult, I am sure he will survive here, you are surviving now just fine, so can he

I don't think Jason needs your help, I am sure he is more than capable of standing on his own, as long as he has the guts to face me, instead of attacking that "jacmyoung" account you folks faked out in your Village

Jason was right on that attorney fees, he was also wrong on things too. No one is perfect. I do want to point out that between the endless predictions of an "imminent" appeals court ruling from you folks every week for the last few months, and my only prediction of TiVo at around $10, my prediction would have made a lot of money for you TiVo folks than your own predictions would have done, it seemed


----------



## jacmyoung

First I want to thank you for quoting me in full context in your Village.

Now let me make one comment, this is not meant to be a prediction, just a comment. I will not be surprised TiVo makes an announcement on 3/2 about the new DirecTiVo. Even though I had said over and over I doubt DirecTV cared about it at all. DirecTV has been working on its own new DVRs and adding new features to their own DVRs, while letting its DirecTiVo subs die off by the tens of thousands each quarter.

But DirecTV also is known to jab at DISH from time to time. Recall on 9/3/08 they announced this new DirecTiVo DVR and the "significantly higher fees", one day before TiVo went into that 9/4/08 hearing with DISH and asked for a higher damage rate?

It can happen again. DirecTV is suing DISH for false ads, though the judge denied its request to stop the DISH ads, being direct competitors, there is still nothing wrong if DirecTV tries to jab at DISH again, by letting TiVo make an announcement of the new DirecTiVo again, as long as there is no commitment to actually deploy certain numbers of such new DVRs in certain time frame.

Of course I am not holding my breath either for such an announcement.


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## Maverickjoe

jacmyoung said:


> Why don't you ask Jason to come here and talk about it? As long as he can talk like an adult, I am sure he will survive here, you are surviving now just fine, so can he
> 
> I don't think Jason needs your help, I am sure he is more than capable of standing on his own, as long as he has the guts to face me, instead of attacking that "jacmyoung" account you folks faked out in your Village
> 
> Jason was right on that attorney fees...


I don't know who Jason is. The guy who was extraordinarily accurate about the award of fees was init_2_winitall.

It's not constructive to impute the ravings of every E* or Tivo poster - or imposter - to anyone but those who posted them. So let's not water down the discussion by pretending you're talking to "you people" making predictions. I haven't made any you are aware of. We're talking about a flagrantly wrong claim that you have only made one prediction when in fact you've been wrong on several predictions.:lol:

It's fine to make predictions, risky maybe without being properly informed, but it's a sign of character to own up to making them even if they're wrong.


----------



## jacmyoung

Maverickjoe said:


> ...I haven't made any you are aware of...


That is the problem with you all along, you think I am only talking to you, but this is not about you or what you have said or not said, rather TiVo v. E* and any and all comments posted in its regard, no matter who posted them. If you think you can pick on a few mistakes I made and enjoy the heck out of them, be my guest, I am happy if you are happy. I will continue to make mistakes in the future, so you are guaranteed to have your own amusement.

So long as E*'s DVRs continue to work, DirecTiVo subs continue to die off, TiVo's execs continue to find ways to instill confidence in your TiVo investors while preparing themselves for a bail out, while the courts (the appeals court or the district court) and the PTO continue to drag this out into the future, I am more than happy to enjoy the ride, knowing that somhow you can also discover joy along the way. It's a win win situation


----------



## Maverickjoe

jacmyoung said:


> That is the problem with you all along, you think I am only talking to you, but this is not about you or what you have said or not said, rather TiVo v. E* and any and all comments posted in its regard, no matter who posted them. If you think you can pick on a few mistakes I made and enjoy the heck out of them, be my guest


The problem with me all along? for all nine of my posts?  I'm not generalizing here, just disproving one patently false post that "the only prediction [you] had made during this appeal process...". I don't know why other members put up with postings this obviously self-serving and false. I didn't even mention this whopper:



jacmyoung said:


> It appears there is a good reason why TiVo wanted to have the dates of the two appeal cases set as apart from each other as possible. Maybe as I have said earlier, E* indeed had told TiVo E* would ask Judge Folsom to award E* their attorney fees and costs as the defendants, though as I said Judge Folsom will undoubtedly deny such motion, but nevertheless E* can appeal such denial.
> 
> Why? TiVo's lawyers knew E*'s new design no longer infringed, but they pressed on with the contempt proceedings anyway, rather tried to resolve the issues in a new infringement suit.


The fact of the matter was that attorney Waxman, a pre-eminently successful appeals court litigator, was presenting both cases and could not do them both at the same time!:eek2:


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## scooper

Maverickjoe said:


> The problem with me all along? for all nine of my posts?  I'm not generalizing here, just disproving one patently false post that "the only prediction [you] had made during this appeal process...". I don't know why other members put up with postings this obviously self-serving and false. I didn't even mention this whopper:
> 
> The fact of the matter was that attorney Waxman, a pre-eminently successful appeals court litigator, was presenting both cases and could not do them both at the same time!:eek2:


I believe if you go forward a few more posts, you'll see we DID find that out....


----------



## Maverickjoe

scooper said:


> I believe if you go forward a few more posts, you'll see we DID find that out....


Find out what?...


----------



## jacmyoung

scooper said:


> I believe if you go forward a few more posts, you'll see we DID find that out....


Yup, we also found out on 6/2/09 Judge Folsom, the TiVo patent expert and the well respected senior and chief judge, ruled E* in contempt, squarely against what we had argued for. Joe needs a few more posts to figure that out I guess

So what? TiVo is still at $10 and E*'s DVRs are still working. Charlie is still billions rich, Rogers and his companies will still be covered, Blackrock will not notice a thing if TiVo should tank in case of a bad ruling, nor will any other institutional investors care, nor will any of your analysts care, as long as Rogers and his companies are well treated, the courts will still take their sweet little time to drage things out.

As I said if Joe is making all the great effort to dig out all the old posts and enjoy the heck out of doing so, we should be happy for him because if he is an individual TiVo investor, that is the only thing he can feel good about doing these days, nobody else is looking after him


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## jacmyoung

Maverickjoe said:


> ...The fact of the matter was that attorney Waxman, a pre-eminently successful appeals court litigator, was presenting both cases and could not do them both at the same time!:eek2:


Oh just for your information Joe, the other party Mr. Waxman was representing in that other case was Medtronics. Mr. Waxman argued on behalf of Medtronics for a stay of the injunction against Medtronics but failed. Guess who wrote the order denying a stay of the injunction pending Medtronics' appeal? Judge Rader.

I guess in this case, at least the not so pre-eminently successful appeals court litigators working for Charlie were one notch above Mr. Waxman?

As far as whether people should put up with what I have to say or put up with what you have to say, why not trusting them to make the decision for themselves? I am sure they are adult enough to do so.


----------



## jacmyoung

Today Verizon finally responded to TiVo's lawsuit. Recall a few weeks ago Verizon filed an unopposed motion to delay its response by 5 days. That was likely due to the fact TiVo amended its original complaint by adding two other Verizon affiliates to the case.

Other than those similar responses ATT filed against TiVo, Verizon's response seemed much more aggressive. For one, it asserted that TiVo may not seek recovery due to "unclean hands", and TiVo actually had some ancient license agreement with some one that was associated with Verizon.

With respect to "unclean hands", I have touched on such similar issue before, how TiVo lied to Judge Folsom about how start codes and indexing had nothing to do with the software claims, when in reality both TiVo and the PTO knew start code detection and indexing was required by the software claims. Though we don't know what kind of "unclean hands" Verizon was referring to, but if there were any they likely occurred during the patent application prosecution period.

With respect to any prior licensing agreements, I mentioned earlier that back in 2001 Motorola and ReplayTV had a 5-year license agreement, we know Verizon FIOS DVRs are based on the Motorola technology. We also know that TiVo and ReplayTV settled their lawsuits with some cross-licensing deals. Not that I am saying Verizon was talking about the same agreements I had mentioned, only that since Verizon is based on the Motorola gig, the history of the dealing among the parties are more complicated for TiVo to assert damages, this is unlike TiVo v. E*.

But more importantly Verizon is countersuing TiVo for infringement of five patents assigned to Verizon.

On another note, as soon as Verizon hinted they might try to move the case to NJ, Judge Ward immediately transferred this case to Judge Folsom as well


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## jacmyoung

A decision (Espeed) by the appeals court yesterday is worth noting, not the case itself, rather Judge Clark's concurring statement at the end of the Judge Rader's decision. Keep in mind Judge Clark is from E TX court sitting by designation on this appeals panel, so his comment could indicate his opinion might have drawn experience from the E TX court cases, which TiVo v. E* is one of the significant ones now before the appeals court.

As I mentioned before, it seemed to me Charlie had anticipated and even intended to get past Judge Folsom and go directly to the appeals court. His behavior strongly suggested so. He prepared his suit against TiVo to be filed in the DE court the same day TiVo/Judge Folsom agreed on a contempt proceeding in 5/08, he also clearly prepared for an adverse ruling from Judge Folsom and immediately filed and received a stay on 6/2/09 when the contempt decision was made.

Most importantly, his attorneys had clearly reserved some important arguments on several claim elements for the appeals court only. As I pointed out they focused on the "parse" element, only at the end of the contempt proceeding raised the issue of the "audio and video data" element, which Judge Folsom did not even catch. They clearly omitted the "temporarily stores the audio and video data" element of the claims, only raised it during the appeals brief, and by that time TiVo had nothing to respond to, merely said hey it was somewhere in that claims chart, why didn't you go look for it?

I am quoting Judge Clark's concurring opinion below and highlighting some of the issues related to the TiVo v E* case above, let the readers be the judge why Judge Clark, coming from the E TX court, made a point of such an issue, when such issue really had little to do with that Espeed case:



> CLARK, District Judge, concurring.
> Believing that the judgment is correct and that the opinion correctly analyzes the issues in this case in light of current law, I concur. I write separately to respectfully suggest that the current de novo standard of review for claim construction may result in the unintended consequences of discouraging settlement, encouraging appeals, and, in some cases, multiplying the proceedings.
> Determination of the meaning that would have been attributed to a claim term by one of ordinary skill in a sophisticated field of art on the date of filing often requires examination of extrinsic evidence-a determination of crucial facts underlying the dispute, as outlined by Judge Rader in the majority opinion. On some occasions, a determination will be made based, in part, on the weight to be given to conflicting extrinsic evidence or even to an evaluation of an expert's credibility.
> The standard of review that will be applied by a higher court sets one of the important benchmarks against which competent counsel evaluates decisions regarding
> 2008-1392, -1393, -1422
> 2
> settlement and appeal. The importance is highlighted by the fact that every brief must state the standard of review. See Fed. R. App. P. 28(a)(9)(B), (b)(5); Fed. Cir. R. 28(a)(10),(b).
> The de novo review standard has at least two practical results, neither of which furthers the goal of the "just, speedy, and inexpensive determination of every action and proceeding." Fed. R. Civ. P. 1. *First, rejection of settlement is encouraged, and a decision to appeal is almost compelled, where counsel believes the client's position is valid, even if debatable, depending on the view taken of extrinsic evidence. It is a natural reaction upon receiving an unfavorable claim construction from a trial court to conclude that one's own view of complicated facts will be better understood by the judges of the Federal Circuit, who generally have more experience with patent cases, and who, by their own authoritative rule, review the claim construction without regard to any determination the lower court has made.*
> A patentee has the opportunity to write clearly enough so that the meaning of the claims can be determined from the specification. What public policy is advanced by a rule requiring the determination of underlying facts by more than one court, especially when the likely result is that another group of citizens will be required to "volunteer" for lengthy jury duty on remand?
> *A second, although less common, consequence of the de novo review standard is the opportunity it offers to the party that presents a case with an eye toward appeal rather than the verdict. Skilled counsel who believes a client may not be well received by a jury is tempted to build error into the record by asking for construction of additional terms, and/or presenting only a skeleton argument at the claim construction stage.*
> 2008-1392, -1393, -1422
> 3
> This is risky, but it would be unusual for this Court to consider a point waived if a particular claim construction had been requested of the trial court and some argument made, but the clearest explanation was presented on appeal. *An appellate court normally does not consider an unpreserved point of error, but a more sharply focused argument regarding points presented on appeal, from among those that are technically preserved, is actually the goal of the appellate specialist.* This tactic would be less inviting if claim construction was officially accorded some measure of deference, even if it was applied only in those cases in which resort to extrinsic evidence was necessary.


The question is why Judge Clark spent all this time making this particular point when it had little to do with the Espeed case itself, since it was fully affirmed? Was he sensing a case out of his own court (E. TX) in which one party had used the above tactic and he was voicing concerns and making a suggestion as to how the appeals court could discourage such tactic in the future?

Of course in the TiVo v. E* case, claim constructions are not the issue, rather whether the modified DVRs can be mapped onto the claim elements in order to prove infringement by clear and convincing [extrinsic] evidence. It was my speculation before that Charlie's lawyers used the above tactic during the contempt proceeding, i.e. at the district court level, with their eyes on winning at the appeals court. Now I have Judge Clark, a fellow judge of Judge Folsom, making the same point.


----------



## deaincaelo

This is silly. All the experts already testified that the infringing part was the broadcom chip. That's disabled. Only an idiot would think that the PID parser and the broadcom chip are the same. . . oh wait.

Then again, all the lawyers say you can build a DVR without infringing on the patent. how that works is a bit fuzzy technically however.


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## Curtis52

deaincaelo said:


> This is silly. All the experts already testified that the infringing part was the broadcom chip. That's disabled. Only an idiot would think that the PID parser and the broadcom chip are the same. . . oh wait.


On the DVRs that contain a Broadcom chip, the PID filter is on the chip. Obviously, the Broadcom chips were not disabled.


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## jacmyoung

Curtis52 said:


> On the DVRs that contain a Broadcom chip, the PID filter is on the chip. Obviously, the Broadcom chips were not disabled.


What was undisputed was, on that Broadcom chip, there was on the old DVR a portion of it that did the analyzing the audio and video start codes, then temporarily stored those codes, that part of the Broadcom chip was disabled.

During the contempt proceeding, E* devoted almost all its attention on the "analyzing" element, preserved the "audio and video data" part at the very last moment, causing Judge Folsom to completely miss that latter element, more importantly, E* preserved the "temporarily stores said audio and video data" argument entirely for the appeals court, bypassing Judge Folsom.

They used the same tactic during the last appeal, recall they preserved their arguments on the separation and assembly part of the hardware claims constructions? They succeeded in having the appeals court overturning the hardware claims verdict as a result, after the appeals court ruled Judge Folsom made two errors on the hardware claims constructions, when in fact it could very well be that E*'s attorneys intentionally did not put forward their best arguments on the hardware claims constructions in the first place, anticipating that they had no chance to win at the jury trial, therefore the strategy was to preserve the best arguments on appeal to overturn the jury verdict.

I can understand Judge Clark's concern. By existing law, the standard of review at the appeals court level is a de novo review when it comes to claim construction and interpretation of the injunction, without taking into consideration of the lower court opinions. As such skilled appeals court attorneys often preserve their best arguments for the appeals court without fear because they know the appeals court cannot consider the lower court claim constructions and/or interpretations.

Such arrangement puts the district judges in a disadvantage, because a district judge can only respond to what the parties present to him/her and rule accordingly, if one party intentionally makes a weak argument and loses at the district level, then later wins at the appeals court level by putting forward their best arguments, it often makes the district court judge look bad, when in reality it was not the district judge's fault, he/she was never offered the strongest arguments for consideration from that party to begin with.

What Judge Clark was suggesting was, if it was very clear that the attorneys preserved their best technical arguments for the appeal, then maybe, just maybe, the appeals court should consider modifying the current standard so under certain conditions such arguments are waived on appeal, that way it forces all parties to put forward their best arguments from the very beginning.

A similar thing I have touched on was the i4i v. MSFT case, recall when MSFT attorneys failed to raise the issue of the damage calculation in their district court JMOL filing, the appeals court considered the argument waived when MSFT brought this issue up during the appeal, in the end MSFT was forced to pay the very high $200M damages, even though the appeals court agreed with MSFT the damage calculation was too high.

But the standard of review for claim construction, infringement analysis and interpretation of the injunction is different than that of the damages calculations.


----------



## Maverickjoe

jacmyoung said:


> I have touched on such similar issue before, how TiVo lied to Judge Folsom about how start codes and indexing had nothing to do with the software claims, when in reality both TiVo and the PTO knew start code detection and indexing was required by the software claims.


Nope, wrong again in spite of how many times you say it. There is no mention anywhere in the '389 patent, the claims constructions settled in the Markman hearings or any of the reexeamination records of the words "start codes" or "indexing".:eek2:

While TiVo successfully argued that these steps satisfied some of the claim limitations in the patent, it has never been suggested (other than by you) that these were the only ways to satisfy those claim limitations.:nono2:

So maybe it's time to stop saying it, or for that matter misleading people with wild and crazy predictions, attorney's fees calculations (oops, we showed you didn't understand that one anyway), or accusing people of lying and cheating.


----------



## jacmyoung

Maverickjoe said:


> Nope, wrong again in spite of how many times you say it. There is no mention anywhere in the '389 patent, the claims constructions settled in the Markman hearings or any of the reexeamination records of the words "start codes" or "indexing".:eek2:
> 
> While TiVo successfully argued that these steps satisfied some of the claim limitations in the patent, it has never been suggested (other than by you) that these were the only ways to satisfy those claim limitations.:nono2:
> 
> So maybe it's time to stop saying it, or for that matter misleading people with wild and crazy predictions, attorney's fees calculations (oops, we showed you didn't understand that one anyway), or accusing people of lying and cheating.


I only made one prediction during the appeal, that was TiVo would be around $10 until the appeals court ruled or until some meaningful news came out, so far so good. The attorney fee issue was not a prediction, rather a speculation after the fact, you need to learn the definitions first. Yes that speculation after the fact was wrong. I miscalculated the number based on several figures E* stated in its quarterly statements.

As far as whether TiVo lied to Judge Folsom about the start code detection, the reason I said so was because after they told Judge Folsom that the start code detection had nothing to do with the software claims, the PTO issued its rejection of the software claims, in its rejection, the PTO examiner specifically noted that the software claims required start code detection and indexing, more importantly TiVo did not even try to correct the PTO examiner in its response.

I would think the PTO knows what the software claims require or not, more so than Judge Folsom, and TiVo knew what the PTO knew, which was why they could not dispute the PTO statement. IMHO all of the above can be used as evidence.

Now whether I should continue to say the above or not is up to you, if you continue to try to dispute my statements, then you force me to respond. So if you think I should stop saying the same things, maybe you should stop disputing what I said?

But of course you have every right to dispute my statements, just don't be surprised if I try to respond.


----------



## jacmyoung

Now to speculate whether Verizon, ATT or MSFT will settle with TiVo in TiVo's favor, in fear of the lawsuits, one needs to understand what E* has done to TiVo's DVR patent so far.

E* has already proven that while the TiVo hardware claims are narrower, therefore more difficult to invalidate, for the same reason they are also more difficult to infringe on. Because for some odd reason when TiVo described its hardware claims, it required that the digital audio and video streams had to be first separated, then later reassembled for the DVR functions to work.

Of course we know that such separation and reassembly are not necessary to perform DVR functions. The ancient E* DVRs were able to do the DVR functions without the separation and reassembly, as a result they did not infringe on the hardware claims.

As far as the software claims, need I say more? E* had managed to have the PTO rejecting them. To put it this way, E* has shown Verizon, ATT and MSFT how weak the TiVo's DVR patent is. I am pretty sure their attorneys would take such litigation history into consideration when they advise their clients what will be the best course of action.

And BTW, this is for some of the TiVo village folks' information, just because TiVo had referenced some specific prior patents during the patent prosecution, does not mean TiVo cannot infringe on those prior patents. The two prior patents E* used to have the PTO reject TiVo's software claims, those two prior patents were picked out of the TiVo's reference list. That two patents combined made the TiVo software claims obvious, which is almost the same as saying TiVo's software claims "infringed" on that two prior patents referenced by TiVo itself.


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## P Smith

> it required that the digital audio and video streams had to be first separated,


Satellite mux content separate video/audio(s) streams for each channel.



> The ancient E* DVRs were able to do the DVR functions without the separation and reassembly, as a result they did not infringe on the hardware claims.


Those PVR501/508/510 does store video/audio(s) stream separately on HDD.


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## jacmyoung

P Smith said:


> Satellite mux content separate video/audio(s) streams for each channel.
> 
> Those PVR501/508/510 does store video/audio(s) stream separately on HDD.


You have time after time disputed what the courts had said in terms of technical details, I wonder why TiVo has yet discovered you and hired you as their technical advisor?

Either TiVo was stupid, or what you have said were irrelevant to the specific infringement issues at hand.


----------



## scooper

P Smith said:


> Satellite mux content separate video/audio(s) streams for each channel.
> 
> Those PVR501/508/510 does store video/audio(s) stream separately on HDD.


But did the DVR separate them, or was that separation done elsewhere (i.e. the upload center) ? It DOES make a difference in the patent...


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## P Smith

It happen before uplink - MPEG-2/4 stream always carry separate PIDs [ES] for video/audio/CC/etc, multiplexed into one stream for one transponder.

Well, if we will go into technicality ... TS - transport stream - coming from one transponder, so there are many video/audio substreams (sometimes there 10+ channels), so SW/FW should pick and route particular video/audio ES[elementary stream] for that channel what you watch or recording. Rod have extensive page with the info here.


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## scooper

P Smith said:


> It happen before uplink - MPEG-2/4 stream always carry separate PIDs [ES] for video/audio/CC/etc, multiplexed into one stream for one transponder.
> 
> Well, if we will go into technicality ... TS - transport stream - coming from one transponder, so there are many video/audio substreams (sometimes there 10+ channels), so SW/FW should pick and route particular video/audio ES[elementary stream] for that channel what you watch or recording. Rod have extensive page with the info here.


My question was rhetorical...


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## Greg Bimson

jacmyoung said:


> Now whether I should continue to say the above or not is up to you, if you continue to try to dispute my statements, then you force me to respond.


Oh, so that's why there are way more than 10,000 posts on this subject. 

The point here is that discourse is allowed. Simply responding until you believe you've won a point is won is darn near ludicrous. More on that after this...


jacmyoung said:


> I would think the PTO knows what the software claims require or not, more so than Judge Folsom, and TiVo knew what the PTO knew, which was why they could not dispute the PTO statement. IMHO all of the above can be used as evidence.


Evidence in what? This is the whole problem.

First, no matter what "the PTO knows" is irrelevant until a final action is completed. What is continually argued here is that the courts are somehow involved with evolving patent disputes in front of the PTO. What is forgotten is that in *this case*, there is a record of the claim construction and what limitations have been met.

Unfortunately for Dish Network and Echostar, they espoused a theory that PID filtering met the "parses video and audio data from said broadcast data", and now you are suggesting that because of what happened in front of the PTO (which didn't occur until AFTER Judge Folsom ruled on what was presented to him) completely rewrites the case law. The problem is there hasn't been a final action at the PTO, which currently allows all claims and claim constructions to stand until APPEALS at the PTO and the courts are final.

Yet the argument always turns to what is going on in front of the PTO. What goes on in front of the PTO has no influence on the court proceedings, yet...

So to continue bringing the PTO "evidence" into this discusson at this point is moot. And the argument is ridiculous to use as it doesn't matter (yet).


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## jacmyoung

scooper said:


> My question was rhetorical...


But his answer was not, and if you read his answer, it seems he is saying the audio and video streams for a particular channel are never separated


----------



## jacmyoung

Greg Bimson said:


> Oh, so that's why there are way more than 10,000 posts on this subject.
> 
> The point here is that discourse is allowed. Simply responding until you believe you've won a point is won is darn near ludicrous. More on that after this...


I never said I had won, in fact if you look at the court standing ruling right now, I have lost, or more precisely, E* has lost, so I don't know what you really try to say

You do not have to contribute to the 10K posts, you did add a lot to the 10K posts before though so don't be modest.



> Evidence in what? This is the whole problem. First, no matter what "the PTO knows" is irrelevant until a final action is completed. What is continually argued here is that the courts are somehow involved with evolving patent disputes in front of the PTO. What is forgotten is that in *this case*, there is a record of the claim construction and what limitations have been met.


What you forgot is we had talked about this point before, TiVo argued on the exact same you stated above when they tried to oppose E*'s motion to take judicial notice of the PTO action, but failed, the appeals court granted E*'s motion to take the PTO's action, specifically the statement about start codes and indexing, in as evidence. Please go back read the notes.



> Unfortunately for Dish Network and Echostar, they espoused a theory that PID filtering met the "parses video and audio data from said broadcast data", and now you are suggesting that because of what happened in front of the PTO (which didn't occur until AFTER Judge Folsom ruled on what was presented to him) completely rewrites the case law. The problem is there hasn't been a final action at the PTO, which currently allows all claims and claim constructions to stand until APPEALS at the PTO and the courts are final.
> 
> Yet the argument always turns to what is going on in front of the PTO. What goes on in front of the PTO has no influence on the court proceedings, yet...
> 
> So to continue bringing the PTO "evidence" into this discusson at this point is moot. And the argument is ridiculous to use as it doesn't matter (yet).


No, the above point has nothing to do with the PTO at all, if you read me carefully lately. At one point I thought why did E* only focus on the "parse" limitation, as you pointed out E* had a disadvantage in that during the jury trial their expert argued the PID filter met the "parse" limitation, so you are correct that focusing only on "parse" could get E* in trouble.

Until you read my latest analysis, in light of Judge Clark's opinion. It turns out there is this thing called preserving the best arguments for the appeals court only, bypassing the district court. Don't argue with me, Judge Clark, who is Judge Folsom's colleague, said so.

According to Judge Clark's theory, it could be that E* had been preserving their arguments, knowing that they were at a disadvantage before Judge Folsom, so they might have prepared to lose at his court, and planned to show their other cards (specifically the "audio and video card" but more importanly the "temorarily stores card") for the appeals court.

Whether this tactic will work or not is yet known, but given Judge Clark's theory, I now consider this a valid point in this case, and this is a new point.

But if you do not have anything new to contribute, you do not have to contribute, maybe we will not reach 15K posts as fast


----------



## jacmyoung

Today E* just filed a bunch of patent documents with Judge Folsom. The files are sealed but similar to what they filed a few months ago, could be related to one of the new designs E* said they were working on. It appears now E* has at least two new designs ready to be reviewed by Judge Folsom, that is if they are necessary.

Also today the appeals court issued a decision on another case which was heard by the same panel and on the same day the TiVo v. E* case was heard, so a decision on this case could come soon, or not


----------



## Maverickjoe

So here we have several more predictions that you probably are not even aware you just made:



jacmyoung said:


> 1. Today E* just filed a bunch of patent documents with Judge Folsom...could be related to one of the new designs E* said they were working on
> 
> 2. It appears now E* has at least two new designs ready to be reviewed by Judge Folsom, that is if they are necessary
> 
> 3. ...a decision on this case could come soon, or not


Do you even know when the things you say constitute a "prediction"? Or are you confused that they might be "speculation". That distinction would take a nuanced interpretation of the English language that you do not possess. So we'll leave it that when you are called out for making misinformed or misguided predictions (or "speculations"), when denying that you have made these predictions your response is...



jacmyoung said:


> ...if you continue to try to dispute my statements, then you force me to respond.


P.S. I almost forgot to mention that part of your "forced response" has been to revert to slamming TiVo stock values in a Forum where "stock talk" is not allowed. That's an odd and inappropriate response, seems like someone hit a nerve. To set the record straight, as of TODAY:

DISH stock 5-year performance: +53.36%
TIVO stock 5-year performance: +151.50%


----------



## jacmyoung

Maverickjoe said:


> So here we have several more predictions that you probably are not even aware you just made:


You are confused, I did not call them "predictions", they were speculations. I said I only made one prediction, TiVo at around $10.



> Do you even know when the things you say constitute a "prediction"? Or are you confused that they might be "speculation".


Thank you for correcting yourself.



> P.S. I almost forgot to mention that part of your "forced response" has been to revert to slamming TiVo stock values in a Forum where "stock talk" is not allowed. That's an odd and inappropriate response, seems like someone hit a nerve. To set the record straight, as of TODAY:
> 
> DISH stock 5-year performance: +53.36%
> TIVO stock 5-year performance: +151.50%


If by predicting TiVo at $10, and being correct so far, in your view is slamming TiVo stock value, I can only feel bad for you, like many other TiVo investors these days, you all seem very frustrated about the TiVo performence, yet I found most Dish investors quite content these days, I will just leave it at that.


----------



## harsh

Maverickjoe said:


> DISH stock 5-year performance: +53.36%
> TIVO stock 5-year performance: +151.50%


"Performance" means different things to different people and share price is only part of the overall picture when it comes to the value of a stock share.

TiVo has never offered a dividend and if I recall correctly, they've only booked a profit for two or three quarters of their existence. One of those quarters, Q3 2009, included an 87 million dollar infusion from DISH Network or it would have otherwise been a $900,000 loss.


----------



## phrelin

harsh said:


> Maverickjoe said:
> 
> 
> 
> DISH stock 5-year performance: +53.36%
> TIVO stock 5-year performance: +151.50%
> 
> 
> 
> "Performance" means different things to different people and share price is only part of the overall picture when it comes to the value of a stock share.
> 
> TiVo has never offered a dividend and if I recall correctly, they've only booked a profit for two or three quarters of their existence. One of those quarters, Q3 2009, included an 87 million dollar infusion from DISH Network or it would have otherwise been a $900,000 loss.
Click to expand...

You've got that right. The TiVo stock price increase is a good example of why we have economic problems in this country. Producing a profit each year and sending some to the shareholders as the fair return on investment is what a company is supposed to do and share prices should reflect that.

A rise in share price based on PR and speculation is not "performance" IMHO. It means someone put a pile of chips down on "even" at the roulette wheel and the ball landed on 8, so at that point in time he made money and got an adrenaline rush. And if he leaves it on "even" and it comes up 17 the next time, his bubble burst like the "dot-com bubble" and the "housing price bubble" and the....

But it's part of the history of America, those people who talk about winning every time they go to Las Vegas.


----------



## TulsaOK

Maverickjoe said:


> So here we have several more predictions that you probably are not even aware you just made:
> 
> Do you even know when the things you say constitute a "prediction"? Or are you confused that they might be "speculation". That distinction would take a nuanced interpretation of the English language that you do not possess. So we'll leave it that when you are called out for making misinformed or misguided predictions (or "speculations"), when denying that you have made these predictions your response is...
> 
> P.S. I almost forgot to mention that part of your "forced response" has been to revert to slamming TiVo stock values in a Forum where "stock talk" is not allowed. That's an odd and inappropriate response, seems like someone hit a nerve. To set the record straight, as of TODAY:
> 
> DISH stock 5-year performance: +53.36%
> TIVO stock 5-year performance: +151.50%


Come on now, let's play nice. No need for the personal insults. 
How about getting back to the subject?


----------



## jacmyoung

Let's be fair, part of investing is speculative in nature, what's driving the market and feed the smart investors. This is not America, rather capitalism.

The problem is, there are some investors who tried to get rich fast by relying on our government enforcing the patent law, they invest in companies like TiVo for that reason, yet when the same government can't manage to deliver the goods to them, they blame the government for not been efficient, slow, don't know what they are doing.

Not realizing it was the exact same reason TiVo managed to make $100M from E* in the first place. If you rely on our government's lack of ability and efficiency to get rich, don't complain when it delays your dream.


----------



## Paul Secic

jacmyoung said:


> Today E* just filed a bunch of patent documents with Judge Folsom. The files are sealed but similar to what they filed a few months ago, could be related to one of the new designs E* said they were working on. It appears now E* has at least two new designs ready to be reviewed by Judge Folsom, that is if they are necessary.
> 
> Also today the appeals court issued a decision on another case which was heard by the same panel and on the same day the TiVo v. E* case was heard, so a decision on this case could come soon, or not


Geez how many years will this go on?????????????


----------



## phrelin

Paul Secic said:


> Geez how many years will this go on?????????????


It's only limited by the imagination and greed of the attorneys and the patience of the judges. It could be forever.


----------



## Lake Lover

phrelin said:


> You've got that right. The TiVo stock price increase is a good example of why we have economic problems in this country. Producing a profit each year and sending some to the shareholders as the fair return on investment is what a company is supposed to do and share prices should reflect that.
> 
> A rise in share price based on PR and speculation is not "performance" IMHO. It means someone put a pile of chips down on "even" at the roulette wheel and the ball landed on 8, so at that point in time he made money and got an adrenaline rush. And if he leaves it on "even" and it comes up 17 the next time, his bubble burst like the "dot-com bubble" and the "housing price bubble" and the....


As an investor for nearly 46 years now, I can't let this go without comment. The last thing that I and many long term investors need is to receive "a fair return on investment" in form of heavily taxed cash dividends. Two out of several of my best long term investments are Apple, Inc., and Berkshire Hathaway which do not, and I hope never will, pay cash dividends. These companies have done pretty well for their shareholders over the years, no? Microsoft Corp. has started to pay cash dividends and the stock has been straight line ever since. If we should require cash, we are better off selling a few shares and taking a long term gain on which the income tax is at a lower rate than regular dividend income.

Over the past six years I have laddered up on shares of TiVo, Inc., selling some off as they became long term. I still hold some, speculating that long term TiVo will continue to provide capital gains. The loss of subscribers is already priced into the issue. A loss for the next few quarters is a given. Sometimes a little speculation returns the biggest long term returns.

I think the recent poison pills were instituted not so much in relation to a favourable pending decision and a possible related bid by DISH, but rather as a delaying tactic to a potential bid by a third party.

Sorry to have strayed off target for this topic. I will now slink off into the bleachers and enjoy the verbal sparring. It nearly as good as Letterman and Leno!:lol:


----------



## dfd

phrelin said:


> It's only limited by the imagination and greed of the attorneys and the patience of the judges. It could be forever.


Is there any limit to greed in an attorney? I could link to a number of stories from our local paper that would suggest otherwise.


----------



## jacmyoung

dfd said:


> Is there any limit to greed in an attorney? I could link to a number of stories from our local paper that would suggest otherwise.


Yet both TiVo and E* have no problem feeding them, so whose fault is that?


----------



## jacmyoung

Lake Lover said:


> As an investor for nearly 46 years now, I can't let this go without comment. The last thing that I and many long term investors need is to receive "a fair return on investment" in form of heavily taxed cash dividends. Two out of several of my best long term investments are Apple, Inc., and Berkshire Hathaway which do not, and I hope never will, pay cash dividends. These companies have done pretty well for their shareholders over the years, no? Microsoft Corp. has started to pay cash dividends and the stock has been straight line ever since. If we should require cash, we are better off selling a few shares and taking a long term gain on which the income tax is at a lower rate than regular dividend income.
> 
> Over the past six years I have laddered up on shares of TiVo, Inc., selling some off as they became long term. I still hold some, speculating that long term TiVo will continue to provide capital gains. The loss of subscribers is already priced into the issue. A loss for the next few quarters is a given. Sometimes a little speculation returns the biggest long term returns.
> 
> I think the recent poison pills were instituted not so much in relation to a favourable pending decision and a possible related bid by DISH, but rather as a delaying tactic to a potential bid by a third party.
> 
> Sorry to have strayed off target for this topic. I will now slink off into the bleachers and enjoy the verbal sparring. It nearly as good as Letterman and Leno!:lol:


I think his point was, with TiVo it is a lot like rolling the dice, depending on which way the court might rule, not based on its business performence. You didn't invest in Apple because of pending lawsuits, did you? Or let me ask you this, what is the reason Apple has been a good investment?

Don't get me wrong, there are cases which a court ruling or government approval can lift the stock and make some investors rich overnight, but one must also be willing to accept the opposite can happen too.


----------



## phrelin

Lake Lover said:


> As an investor for nearly 46 years now, I can't let this go without comment. The last thing that I and many long term investors need is to receive "a fair return on investment" in form of heavily taxed cash dividends. Two out of several of my best long term investments are Apple, Inc., and Berkshire Hathaway which do not, and I hope never will, pay cash dividends. These companies have done pretty well for their shareholders over the years, no?


There are always exceptions - companies that invest their _*profits*_ in developing new products or in expanding their value through investment when that is their purpose.


> Microsoft Corp. has started to pay cash dividends and the stock has been straight line ever since.


Microsoft, like IBM before it and I suspect Google after it, produced a very successful product line, but is struggling to adapt. Like many, I sold MSFT right after I tried out Windows ME. When all you're doing is updating products to keep pace with technological changes, you've matured as a company. As a profitable company they quite correctly started offering a modest dividend a couple of years later IMHO.


> If we should require cash, we are better off selling a few shares and taking a long term gain on which the income tax is at a lower rate than regular dividend income.
> 
> Over the past six years I have laddered up on shares of TiVo, Inc., selling some off as they became long term. I still hold some, speculating that long term TiVo will continue to provide capital gains. The loss of subscribers is already priced into the issue. A loss for the next few quarters is a given. Sometimes a little speculation returns the biggest long term returns.


I do that too, but speculation "means engagement in business transactions involving considerable risk but offering the chance of large gains." I don't think it's good for the country for speculators to swap money around between each other. Until retirement I loved putting small amounts of moeny money into IPO's to help grow a company - and the economy - in a real way, as I really couldn't participate in the economy as a venture capitalist.

More recently I've become a real speculator/gambler such as when I bought Ford and GM near rock bottom. GM became worthless and Ford is worth double what I paid for both. It was speculation based on my gut feeling that one or both might not go under. I could have also put the money down on black at the roulette table.


> Sorry to have strayed off target for this topic. I will now slink off into the bleachers and enjoy the verbal sparring. It nearly as good as Letterman and Leno!:lol:


No, no, don't leave! Sometimes it's good to expand the discussion in this thread.

By the way, I think TiVo deserves some royalties from Dish and others, not because of the patents, just because they did make people other than techies aware of the DVR and its benefits which in turn benefited other companies. But I'm a sentimentalist.


----------



## Albie

Lake Lover said:


> As an investor for nearly 46 years now, I can't let this go without comment. The last thing that I and many long term investors need is to receive "a fair return on investment" in form of *heavily taxed cash dividends*. Two out of several of my best long term investments are Apple, Inc., and Berkshire Hathaway which do not, and I hope never will, pay cash dividends. These companies have done pretty well for their shareholders over the years, no? Microsoft Corp. has started to pay cash dividends and the stock has been straight line ever since. If we should require cash, we are better off selling a few shares and taking a *long term gain on which the income tax is at a lower rate than regular dividend income*.


Certainly a long term investor would know that currently Long Term Capital Gains and Qualified Dividends are both taxed at 15%


----------



## jacmyoung

phrelin said:


> ... But I'm a sentimentalist.


And also a gambler? I don't know if the two will work out together


----------



## Lake Lover

Albie said:


> Certainly a long term investor would know that currently Long Term Capital Gains and Qualified Dividends are both taxed at 15%


Hmmm. Am getting senile? I am sure that I paid the same tax rate on dividends as the tax bracket I fell into, and only 15% on long term gains. I have not done my own tax returns for some time, but I left a call on my cpa's phone, and he will resolve it.


----------



## dfd

Albie said:


> Certainly a long term investor would know that currently Long Term Capital Gains and Qualified Dividends are both taxed at 15%


Dividends are paid from what is left after paying corporate taxes so they are really doubly taxed.


----------



## jacmyoung

So what can you TiVo folks report us on the new TiVo DVR released today? I heard it has caught up with the TV anywhere you want it, when you want it concept, but hopefully they did not use terms like "TV Everywhere" or "Sling", don't want to be sued by Charlie you know


----------



## dgordo

Lake Lover said:


> Hmmm. Am getting senile? I am sure that I paid the same tax rate on dividends as the tax bracket I fell into, and only 15% on long term gains. I have not done my own tax returns for some time, but I left a call on my cpa's phone, and he will resolve it.


Up until 2003 qualified dividends were taxed at income tax rates, since then they are taxed at the same rate as long term capital gains. Without changes in the laws, they will revert to pre 2003 levels starting in 2011.


----------



## jacmyoung

dgordo said:


> Up until 2003 qualified dividends were taxed at income tax rates, since then they are taxed at the same rate as long term capital gains. Without changes in the laws, they will revert to pre 2003 levels starting in 2011.


Hmmmm, I guess his CPA is not that much better than those blood sucking lawyers, no pun intended.


----------



## Lake Lover

Ha ha! My cpa informs, as did posters here, that the tax rate for QUALIFIED dividends changed to 15% in 2003. That rate stands to be higher this year, unless congress gets its act together and reinstates the 2003 -2010 provision. retroactive maybe, to January 1st.

He reminded me of some years back I went into a rampage becaussed I had to pay 28% tax on something called nonqualified dividends on some REITs and mutual funds, which I don't think I understand at all.

So, my apologies where apologies are due, for misinformation which I thought was accurate !! I still feel strongly that although there are many people who feel comfortable with receiving dividend income, which I can understand, I feel that the best run companies are those which are able to retain earnings and use it for growth of the corporation, which will ultimately be reflected in increased share value.


----------



## Curtis52

Judge Folsom and Judge Rader worked together on a recent appeal. I wonder whether Folsom told Rader what he thought of Dish.


"Judgment 


ON APPEAL from the United States Court of Appeals for Veterans Claims 

in CASE NO(S). 06-1596 

This CAUSE having been heard and considered, it is 

ORDERED and ADJUDGED: 

Per Curiam (MICHEL, Chief Judge, RADER, Circuit Judge, and FOLSOM*, District 
Judge). 

AFFIRMED. See Fed. Cir. R. 36. 


ENTERED BY ORDER OF THE COURT "


----------



## jacmyoung

Lake Lover said:


> ...I feel that the best run companies are those which are able to retain earnings and use it for growth of the corporation, which will ultimately be reflected in increased share value.


The question is, is TiVo one of those?


----------



## jacmyoung

Curtis52 said:


> Judge Folsom and Judge Rader worked together on a recent appeal. I wonder whether Folsom told Rader what he thought of Dish.


Personally I think if they had any discussions about this case, or Dish, or TiVo, there is another reason for further appeal, by Dish, or TiVo, whoever ends up at the short end

On a side note, yesterday Verizon filed for appearances of a few more attorneys in the TiVo v. V* case, likely adding them to the two new defendants TiVo added in its amended complaint, or maybe even a few more new attorneys, didn't care to look further.


----------



## HobbyTalk

Lake Lover said:


> I still feel strongly that although there are many people who feel comfortable with receiving dividend income, which I can understand, I feel that the best run companies are those which are able to retain earnings and use it for growth of the corporation, which will ultimately be reflected in increased share value.


And this is TiVo? How? They haven't grown in years.


----------



## jacmyoung

HobbyTalk said:


> And this is TiVo? How? They haven't grown in years.


To be fair, had Charlie not fought the case rather settled to pay TiVo a per box fee, TiVo could have grown and actually turned a profit. As it stands, TiVo is forced to try to grow on its own, which should not be an alien concept for those TiVo investors, or any investors.


----------



## turnbjr

The patent runs out in 2018?

Where can I easily find more info on this?


----------



## jacmyoung

turnbjr said:


> The patent runs out in 2018?
> 
> Where can I easily find more info on this?


http://portal.uspto.gov/external/portal/pair


----------



## jacmyoung

Curtis52 said:


> Judge Folsom and Judge Rader worked together on a recent appeal. I wonder whether Folsom told Rader what he thought of Dish.
> 
> "Judgment
> 
> ON APPEAL from the United States Court of Appeals for Veterans Claims
> 
> in CASE NO(S). 06-1596
> 
> This CAUSE having been heard and considered, it is
> 
> ORDERED and ADJUDGED:
> 
> Per Curiam (MICHEL, Chief Judge, RADER, Circuit Judge, and FOLSOM*, District
> Judge).
> 
> AFFIRMED. See Fed. Cir. R. 36.
> 
> ENTERED BY ORDER OF THE COURT "


Oh BTW, if any of you think this is a news item, please don't. A few months ago the appeals court heard many cases in Houston, TX, having several TX district judges sitting by designations on various panels. The fact Judges Clark and Folsom are on some of the decisions these days is not "news", they happened a few months ago, in fact they happened right around the same time this TiVo v. E* case was heard back in 11/09. Back then no one cared, because the TiVo folks were expecting some settlement to lift TiVo

Nowadays any "news" is good news, that includes the news about this TiVo's new DVR yesterday.

Back in 11/09, I made my only prediction on the appeals issues, that TiVo would be around $10 until the appeals court ruled, or some meaningful news broke. Today TiVo still stands at around $10, therefore using my own criteria, I must admit that the yesterday's new DVR news is not a "meaningful news".


----------



## Michael P

jacmyoung said:


> To be fair, had Charlie not fought the case rather settled to pay TiVo a per box fee, TiVo could have grown and actually turned a profit. As it stands, TiVo is forced to try to grow on its own, which should not be an alien concept for those TiVo investors, or any investors.


I'm willing to bet that Charlie feels that paying a per box fee would amount to extortion.

I still cannot understand how Tivo won anything in this case. This thread is so full of legalese that the "mere mortals" cannot understand.

I propose a parallel thread where no legalese is allowed, so that us "common folk" can begin to understand whats going on with this case.


----------



## dfd

jacmyoung said:


> Oh BTW, if any of you think this is a news item, please don't.


But every time a decision by Folsom is overturned it is news because you post it here.


----------



## Curtis52

Michael P said:


> I still cannot understand how Tivo won anything in this case. .


Given that a jury, several busloads of judges, and the Supreme Court said that TiVo won, is there any reason to go over it again just for you or can you look it up?


----------



## jacmyoung

dfd said:


> But every time a decision by Folsom is overturned it is news because you post it here.


A news is a news not because I post it here.

The above was not a news to me because it was about Judge Folosm and Judge Rader working on the same panel in a case, since it happened a few months ago, it is not news to me, no matter who posted it here today.

But if you say it is news to you, I can't argue with that. Some people might have just heard the news that Earth is round, if they only learned it now, that is news to them.


----------



## jacmyoung

Curtis52 said:


> Given that a jury, several busloads of judges, and the Supreme Court said that TiVo won, is there any reason to go over it again just for you or can you look it up?


But you left out some other details, such as half of the jury's verdicts were wrong, two of Judge Folsom's claim constructions were wrong. He said he can't understand, so asking him to look it up is somewhat less genuine, especially when you had no intention to tell the whole story.

Not that I ask you to tell the whole story, as dfd correctly pointed out, we tend to post things that we like to post, so it is up to me to post what I like to post, and up to you to post what you like to post, but I will never ask someone to just read what I have to tell him and stop there, never to learn the other side of the story.


----------



## dfd

jacmyoung said:


> But you left out some other details, such as half of the jury's verdicts were wrong, two of Judge Folsom's claim constructions were wrong. He said he can't understand, so asking him to look it up is somewhat less genuine, especially when you had no intention to tell the whole story.
> 
> Not that I ask you to tell the whole story, as dfd correctly pointed out, we tend to post things that we like to post, so it is up to me to post what I like to post, and up to you to post what you like to post, but I will never ask someone to just read what I have to tell him and stop there, never to learn the other side of the story.


please explain how the jury was wrong.


----------



## jacmyoung

dfd said:


> please explain how the jury was wrong.


When a jury's verdict is overturned, I consider the verdict wrong. You might have some different definition for it.

TiVo was a great company for coining the verb "tivo" for us, they just have not been focused on the DVR business for some time, putting most of the chips down on the lawsuits. It is good TiVo finally said yesterday they would roll out a new DVR, but it turns out the new DVR only adds things what Sling (owned by Charlie) had started a few years ago, under a concept which Charlie actually had the name "TV Everywhere" registered as trademark. A little too late don't you think?


----------



## dfd

jacmyoung said:


> When a jury's verdict is overturned, I consider the verdict wrong. You might have some different definition for it.
> 
> TiVo was a great company for coining the verb "tivo" for us, they just have not been focused on the DVR business for some time, putting most of the chips down on the lawsuits. It is good TiVo finally said yesterday they would roll out a new DVR, but it turns out the new DVR only adds things what Sling (owned by Charlie) had started a few years ago, under a concept which Charlie actually had the name "TV Everywhere" registered as trademark. A little too late don't you think?


This is why many of your acrobatic leaps in logic are flawed. The CAFC ruled that the judge's instructions were wrong but you claim the jury's verdict was wrong.


----------



## jacmyoung

dfd said:


> This is why many of your acrobatic leaps in logic are flawed. The CAFC ruled that the judge's instructions were wrong but you claim the jury's verdict was wrong.


Wrong instructions led to wrong verdicts. Had the verdicts been correct, why were they overturned? Before you begin to use colorful language, beware that it is a sign that you might have already, or on the verge of losing the argument.



> please explain how the jury was wrong.


I said the verdicts were wrong, not the jury was wrong, you did not even read carefully.


----------



## dfd

jacmyoung said:


> Wrong instructions led to wrong verdicts. Had the verdicts been correct, why were they overturned? Before you begin to use colorful language, beware that it is a sign that you might have already, or on the verge of losing the argument.
> 
> I said the verdicts were wrong, not the jury was wrong, you did not even read carefully.


You said that the jury's verdicts were wrong. I stated that the rulings were overturned because the CAFC ruled that the judge made an error; they did not say the jury made a mistake.

Nothing I have written could be considered colorful, just the facts.


----------



## jacmyoung

dfd said:


> You said that the jury's verdicts were wrong. I stated that the rulings were overturned because the CAFC ruled that the judge made an error; they did not say the jury made a mistake.


In fact the appeals court overturned the jury's hardware claims because the jury's verdicts were wrong, if you read the appeals court decision carefully. Though in the end it blamed Judge Folsom's wrong instructions for the jury to reach the wrong verdicts.



> Nothing I have written could be considered colorful, just the facts.


"This is why many of your acrobatic leaps in logic are flawed."

The above statement is a generalized opinion, not a fact, you don't even know the difference between a fact and an opinion? Now I can show you many more flawed statements said by you and your TiVo folks, but that is never useful in determining whether the next statement is correct or not. Whether the next statement/opinion is correct or not will be soley based on the facts related specifically to that statement.


----------



## James Long

turnbjr said:


> The patent runs out in 2018?
> 
> Where can I easily find more info on this?


Which will end first, the patent or the legal battle?

(My money is on the patent ending first.)


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## Michael P

Curtis52 said:


> Given that a jury, several busloads of judges, and the Supreme Court said that TiVo won, is there any reason to go over it again just for you or can you look it up?


I go cross-eyed trying to "look it up". Too much mumbo-jumbo for a layman to understand. Can't anybody just state the facts in plain terms here?


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## Curtis52

Michael P said:


> I go cross-eyed trying to "look it up". Too much mumbo-jumbo for a layman to understand. Can't anybody just state the facts in plain terms here?


Well, since it took a jury, several busloads of judges, and the Supreme Court to figure it out, I'm not sure what plain terms there are except that TiVo won. Perhaps if there was a focused cogent question...


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## jacmyoung

Michael P said:


> ...I still cannot understand how Tivo won anything in this case. This thread is so full of legalese that the "mere mortals" cannot understand...


Curtis, while his question was not focused, his confusion is well within reason, because as much as you want to emphasize that TiVo had won, the reality does not seem to support such simple statement.

E* never really lost any useful DVRs, the court continues to allow them to be used, E* had logged two quarters of large sub additions, DISH investors just received a $2 dividend at the end of last year, and Dish stock is near its 52-week high.

TiVo in the same period lost 1/3 of its sub base, has yet made a profit except when E* deposited that $103M two years ago, and its stock is still stuck at $10, more importantly many TiVo investors are not happy.

So yes, his confusion is well found, but I am sure you can clear it all up for him in one clear sentence I know I can't.


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## Curtis52

TiVo won appeal. New thread started.


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## Lake Lover

TIVo got the deccision! TiVo stock is currently up over 50%!!!


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## Lake Lover

Time for me to sell 10,000 shares. I will keep 5,000 as a speculation.


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## Lake Lover

I Can't find the new thread? url please


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## phrelin

TiVo vs. Dish: TiVo won appeal


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## phrelin

Well, we did get over 2,000 posts on this thread.:sure: 

A moderator needs to lock it.


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## Stuart Sweet

So noted.


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