# TiVo vs. Dish: Appeals courts affirms disablement



## Curtis52 (Oct 14, 2003)

CONCLUSION 
In sum, we vacate the court's holding of contempt of 
the infringement provision and remand for the court to 
make a finding concerning any colorable difference be- 
tween the previously adjudicated infringing devices and 
the newly accused devices. We vacate in part the dam- 
ages awarded for continued infringement. *We affirm the 
district court's finding of contempt of the disablement 
provision of the court's injunction and the sanctions 
imposed by the district court. *
AFFIRMED IN PART, VACATED IN PART, AND 
REMANDED

Link


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## jacmyoung (Sep 9, 2006)

Looks like the en banc made this thing as clear as mud.

Only got to read the remand part by the majority, my impression is, they knew Charlie had offered $120M to settle with TiVo once and for all, now they decided to uphold the $90M to settle it once and for all. With the strong dissent my bet is E*, or both will go to the Supreme Court.


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## Curtis52 (Oct 14, 2003)

I guess the meaning of "Infringing Products" has been settled:

"EchoStar’s reading of the disablement provision is 
contrary to the most natural reading of the provision, as it 
would necessarily render the injunction vague on its face. 
The injunction clearly defines the term “Infringing Prod- 
ucts” in terms of eight actual receiver models, specifically 
listing each model number.5 If the term “Infringing 
Products” in the disablement provision were to refer 
merely to products containing infringing functionality, the 
court’s definition of the term, immediately preceding the 
disablement provision, as a list of eight receiver models 
would directly contradict EchoStar’s understanding of the 
term. If that were the case and the injunction were in 
fact facially vague and susceptible of two alternative 
readings, the burden was clearly on EchoStar to seek 
clarification or modification from the district court. 
McComb, 336 U.S. at 192. EchoStar did neither. Nor did 
it ever disable any DVR functionality in even a single 
receiver that had been found infringing by the jury. It 
unilaterally decided that downloading modified software 
to its infringing receivers was sufficient to comply with 
the district court’s injunction."


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## Curtis0620 (Apr 22, 2002)

TiVo statement:

http://finance.yahoo.com/news/TiVo-Statement-on-Decision-by-iw-2613217056.html?x=0&.v=1


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## Curtis52 (Oct 14, 2003)

TiVo Statement on Decision by U.S. Court of Appeals in Lawsuit Against EchoStar 

ALVISO, CA -- (Marketwire) -- 04/20/2011 -- TiVo Inc. (NASDAQ: TIVO), the creator of and a leader in advanced television services including digital video recorders (DVRs) for consumers, content distributors and consumer electronics manufacturers, offered the following statement today on the ruling by the U.S. Court of Appeals in its lawsuit against EchoStar Communications Corporation:
"We are pleased that the United States Court of Appeals for the Federal Circuit sitting en banc affirmed the district court's finding of contempt and award of sanctions against EchoStar for failing to comply with the district court's injunction. This marks the second time that the district court's contempt ruling has been upheld by the Court of Appeals. We look forward to the permanent injunction against EchoStar and Dish Network finally being enforced with respect to the DVRs they must now disable. This ruling also paves the way for TiVo to receive substantial damages and contempt sanctions regarding the DVRs that EchoStar and Dish Network failed to disable. With respect to the remand of the infringement provision of the District's Courts order, we intend to pursue the most rapid path to resolution. We will continue our efforts to protect our intellectual property from further infringement by EchoStar and Dish Network.


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## sigma1914 (Sep 5, 2006)

Is it finally over?


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## matt (Jan 12, 2010)

So now what happens? In lay person speak please.


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## Curtis0620 (Apr 22, 2002)

It means that DISH will try to appeal to the US Supreme Court.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> I guess the meaning of "Infringing Products" has been settled:
> 
> "EchoStar's reading of the disablement provision is
> contrary to the most natural reading of the provision, as it
> ...


Not at all if you read the strong dissent.

In any case, I just read TiVo's press release, by far the most misleading I have read. The reality of it is, the most TiVo will get is the $90M plus another $16M E* had already conceded in Judge Folsom's court, which comes to about $106M, less than what Charlie said he was willing to pay TiVo to settle the case before the en banc order.

Even if you read the majority, it is clear E*'s modified DVRs no longer infringed. There is no way TiVo can again argue that PID satisfied the claim because E* now can use the PTO statement for support now it is final and on the record. Additionally TiVo can no longer use the same argument that E* did not appeal the injunction, because E* did appeal the new injunction properly, and the majority agreed and vacated the pre-approval provision. While the majority did not explictly vacate the new injunction, it did not lift the stay either, the injunction in part was vacated by the majority, the same injunction no longer exists, so we will have to see how TiVo may fulfil its promise to have Judge Folsom enforce the injunction.

I do agree with TiVo though, both parties will seek the most rapid way to resolve the infringement issue. My prediction is, unless E* seeks review by the Supreme Court, E* will motion the district court for a summary judgment of non infringement, which should be easily done.

So in my view, the most TiVo will get is $106M and this will be over.


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## matt (Jan 12, 2010)

What 8 models infringe, and does anyone know why? Are they even still in use anymore? I thought I read somewhere on here that E* was quickly trying to swap them out while all this was going on.


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## Curtis0620 (Apr 22, 2002)

The stay is automatically lifted after the ruling.

30 days to go.


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## Curtis52 (Oct 14, 2003)

DVR receivers (collectively the “Infringing Products”): DP-501; DP- 
508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


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## dgordo (Aug 29, 2004)

Hello Judge Folsom, its your good friend Charlie. I know I spent that last year trashing you to the CAFC, but just kidding. Now could you help us out?

Good luck with that.

This will end up back at the CAFC after Folsom rules for TiVo again.


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## jacmyoung (Sep 9, 2006)

Curtis0620 said:


> The stay is automatically lifted after the ruling.
> 
> 30 days to go.


The injunction was vacated by the majority in part, it no longer exists.


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## Curtis0620 (Apr 22, 2002)

jacmyoung said:


> The injunction was vacated by the majority in part, it no longer exists.


We affirm the 
district court's finding of contempt of the *disablement 
provision* of the court's injunction and the sanctions 
imposed by the district court.


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## runner861 (Mar 20, 2010)

Whether the Supreme Court will take the case is discretionary. Dish appealed to the Supreme Court in the distants lawsuit back in 2006, but the Court declined to hear it. Typically the Supreme Court will only take appeals on issues of great national importance and when there is a split between the circuits. I don't think either of those factors apply here.

I expect the case to return to the district court for that court to enforce any orders it had imposed that were upheld by the court of appeals.


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## jacmyoung (Sep 9, 2006)

dgordo said:


> Hello Judge Folsom, its your good friend Charlie. I know I spent that last year trashing you to the CAFC, but just kidding. Now could you help us out?
> 
> Good luck with that.
> 
> This will end up back at the CAFC after Folsom rules for TiVo again.


While it is likely it would not surprise me if Judge Folsom refers it to his magistrate judge like what he did to the TiVo v. ATT and Verizon cases. His schedule is likely full and he will retire early next year.

Although I think he will likely conduct a summary review of the infringement issue and rule non-infringement, according to the majority's own instruction.


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## jacmyoung (Sep 9, 2006)

Curtis0620 said:


> We affirm the
> district court's finding of contempt of the *disablement
> provision* of the court's injunction and the sanctions
> imposed by the district court.


That was about the old injunction my friend. At it stands now, there is no more injunction in place because the majority vacated one provision of the new injunction.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> That was about the old injunction my friend. At it stands now, there is no more injunction in place because the majority vacated one provision of the new injunction.


The majority vacated part of the district court's order based upon the injunction, not the injunction. Thus the need to remand to see if there is a violation of the injunction based upon the CAFC ruling.


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## Paul Secic (Dec 16, 2003)

sigma1914 said:


> Is it finally over?


I doubt it.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> The majority vacated part of the district court's order based upon the injunction, not the injunction. Thus the need to remand to see if there is a violation of the injunction based upon the CAFC ruling.


The preapproval order was vacated, which was why there was no mentioning of lifting the stay.

That is why I said the majority was as clear as mud. The dissent on the other hand was very thorough an detailed.


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## Curtis0620 (Apr 22, 2002)

As a result, we affirm the district court's finding of contempt and the $1.00 per subscriber per month, totaling approximately $90 million, awarded by the district court as a sanction against EchoStar. The district court ex-pressly stated that this award was made on alternative grounds, i.e., for violation of either of the two separate provisions of the injunction, that dealing with disable-ment and the other dealing with infringement.10 See TiVo, 655 F. Supp. 2d at 663, 666 (stating that "_n the alternative, the Court found that EchoStar had failed to comply with the plain directives of [its] order," and award-ing the "additional $1.00 sanction to promote EchoStar's compliance with [its] orders."). Although we vacate the finding of contempt of the infringement provision, the finding of contempt of the disablement provision has been affirmed. We therefore have no basis for modifying the amount of the sanction.

9 We note, however, that, although we have strongly discouraged judicial restraint of noninfringing activities, Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1367 (Fed. Cir. 1998), we have never barred it outright and instead have repeatedly stated that district courts are in the best position to fashion an injunction tailored to prevent or remedy infringement. See Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 777 (Fed. Cir. 1993). Because it is not before us in this case, we make no en banc holding on that issue.

10 We do not agree with the dissent's suggestion that the "disablement provision" is limited only to products that had been placed with end users. Dissent at 5-6. On the contrary, the district court and the parties have thus far referred to both directives of that provision, i.e., that relating to units placed with end users as well as that on new placements, together as the "disablement provision," and the district court imposed sanctions for the violation of the entire "disablement provision."_


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## jacmyoung (Sep 9, 2006)

I understand why some of you may not see this, the majority was very subtle when it vacated the new injunction:



> Consequently, *we also vacate* the district court's order awarding TiVo "$1.25 per subscriber per month plus interest," totaling approximately $110 million, for EchoStar's continued infringement by EchoStar's modi-fied software during the stay of the injunction *and the district court's order requiring EchoStar to seek preclear-ance for any future attempts to design around the patent.*


That "order" was part of the new injunction, once vacated, the injunction no longer existed as it was so ordered.


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## Curtis0620 (Apr 22, 2002)

“DISH Network and EchoStar are pleased that the Federal Circuit Court of Appeals has unanimously vacated the district court’s contempt ruling regarding our software design around. We are disappointed, however, that the Federal Circuit in a 7-5 split decision has affirmed the district court’s ruling on the disablement question. We intend to seek review of that part of the decision by the United States Supreme Court and seek a stay of the injunction while doing so. We also will be making a motion to dissolve the injunction based on Tivo’s recent representations to the Patent and Trademark Office substantially limiting the scope of the claims at issue in this case. Existing DISH Network customers with DVRs are not immediately impacted by these recent developments. The disablement ruling covers only certain older generation MPEG2 DVRs. We have already upgraded many of these customers and, if we are unsuccessful in obtaining a stay, we will work as quickly as possible to upgrade the remaining customers to our current generation DVRs, as these are not at issue in the ruling.”

Ok, even DISH says they are to be disabled.


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## dgordo (Aug 29, 2004)

Curtis0620 said:


> "DISH Network and EchoStar are pleased that the Federal Circuit Court of Appeals has unanimously vacated the district court's contempt ruling regarding our software design around. We are disappointed, however, that the Federal Circuit in a 7-5 split decision has affirmed the district court's ruling on the disablement question. We intend to seek review of that part of the decision by the United States Supreme Court and seek a stay of the injunction while doing so. We also will be making a motion to dissolve the injunction based on Tivo's recent representations to the Patent and Trademark Office substantially limiting the scope of the claims at issue in this case. Existing DISH Network customers with DVRs are not immediately impacted by these recent developments. The disablement ruling covers only certain older generation MPEG2 DVRs. We have already upgraded many of these customers and, if we are unsuccessful in obtaining a stay, we will work as quickly as possible to upgrade the remaining customers to our current generation DVRs, as these are not at issue in the ruling."
> 
> Ok, even DISH says they are to be disabled.


they also say that the injunction still exists.


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## spear61 (Sep 19, 2004)

Curtis52 said:


> DVR receivers (collectively the "Infringing Products"): DP-501; DP-
> 508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


minus 190+ thousand boxes that were deemed to be licensed.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> they also say that the injunction still exists.


I am not aware that an injunction may be enforced if a part of it is vacated, I don't think you can dispute a part of that injunction was vacated by the majority, but you are a lawyer, I am not.

As far as the E* statement, just like their quarterly statements, always state the worst case, opposite of TiVo.


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## Curtis0620 (Apr 22, 2002)

jacmyoung said:


> I am not aware that an injunction may be enforced if a part of it is vacated, I don't think you can dispute a part of that injunction was vacated by the majority, but you are a lawyer, I am not.


Disablement was not vacated.


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## jacmyoung (Sep 9, 2006)

"Curtis0620" said:


> Disablement was not vacated.


Yet the majority did not say E* had missed the chance to contest it in the new injunction, nor did it affirm this provision in the new injuction, nor did it say they would lift the stay, taking in whole, such an injunction is at least partly vacated and partly unsettled.


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## DavidMi (Aug 24, 2009)

Curtis0620 said:


> Ok, even DISH says they are to be disabled.


 You need to take off those Tivo Colored glasses, it does NOT say that in there. Learn to read.


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## Curtis0620 (Apr 22, 2002)

As a result, we affirm the district court's finding of contempt and the $1.00 per subscriber per month, totaling approximately $90 million, awarded by the district court as a sanction against EchoStar. The district court ex-pressly stated that this award was made on alternative grounds, i.e., for violation of either of the two separate provisions of the injunction, that dealing with disable-ment and the other dealing with infringement.10 See TiVo, 655 F. Supp. 2d at 663, 666 (stating that "_n the alternative, the Court found that EchoStar had failed to comply with the plain directives of [its] order," and award-ing the "additional $1.00 sanction to promote EchoStar's compliance with [its] orders."). Although we vacate the 9 We note, however, that, although we have strongly discouraged judicial restraint of noninfringing activities, Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1367 (Fed. Cir. 1998), we have never barred it outright and instead have repeatedly stated that district courts are in the best position to fashion an injunction tailored to prevent or remedy infringement. See Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 777 (Fed. Cir. 1993). Because it is not before us in this case, we make no en banc holding on that issue.
10 We do not agree with the dissent's suggestion that the "disablement provision" is limited only to products that had been placed with end users. Dissent at 5-6. On the contrary, the district court and the parties have thus far referred to both directives of that provision, i.e., that relating to units placed with end users as well as that on new placements, together as the "disablement provision," and the district court imposed sanctions for the violation of the entire "disablement provision."
TIVO v. ECHOSTAR
36
finding of contempt of the infringement provision, the finding of contempt of the disablement provision has been affirmed. We therefore have no basis for modifying the amount of the sanction._


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## jacmyoung (Sep 9, 2006)

It appears none of us even realized that TiVo actually included the VIP dvrs in the sanction count. Of course we had no idea because the docs were sealed.

I don't think even the TiVo people had ever argued the contempt of the disablement could touch the VIP dvrs. How screwed up could the majority be not to even respond to this point made by the dissent?


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## drjake (Jun 12, 2002)

The opinion is a hollow victory for TIVO. While it confirms that TIVO is entitled to a monetary award as a result of Echostar violating the disablement injunction (Echostar should have appealed the injunction on the overbreadth issue and failed to do so), it reversed the infringement ruling and remanded the issue to the court to determine if the redesigned software was colorably different. Since the injunction was stayed during the appeal, further sanctions for violating the disablement order are not applicable. While it is possible that the disablement order can be reinstated (the stay lifted), it is also very possible that the Judge (or magistrate or new judge if Folsom retires) could stay the order while the hearings on colorable differences takes place. In any event, all of the Dish customers have continued to be able to use these boxes all this time. Based upon the subsequent determinations regarding the patents, I think it less likely that an absolute finding of infringement will be made going forward (I am an attorney but not a patent attorney so don't take my opinion as gospel). If it is determined that the modified software does not infringe, Charlie will end up being the big winner in this case.


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## Curtis52 (Oct 14, 2003)

drjake said:


> it is also very possible that the Judge (or magistrate or new judge if Folsom retires) could stay the order while the hearings on colorable differences takes place.


Since Judge Folsom stated in his ruling that he would have found contempt on disablement even if infringement had not been found it is doubtful that he would provide a stay.


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## jacmyoung (Sep 9, 2006)

"drjake" said:


> The opinion is a hollow victory for TIVO. While it confirms that TIVO is entitled to a monetary award as a result of Echostar violating the disablement injunction (Echostar should have appealed the injunction on the overbreadth issue and failed to do so), it reversed the infringement ruling and remanded the issue to the court to determine if the redesigned software was colorably different. Since the injunction was stayed during the appeal, further sanctions for violating the disablement order are not applicable. While it is possible that the disablement order can be reinstated (the stay lifted), it is also very possible that the Judge (or magistrate or new judge if Folsom retires) could stay the order while the hearings on colorable differences takes place. In any event, all of the Dish customers have continued to be able to use these boxes all this time. Based upon the subsequent determinations regarding the patents, I think it less likely that an absolute finding of infringement will be made going forward (I am an attorney but not a patent attorney so don't take my opinion as gospel). If it is determined that the modified software does not infringe, Charlie will end up being the big winner in this case.


Since you are an attorney, can an injunction be reinstated as is when part of it is vacated? If not can part of it be reinstated? I have never seen such thing.

If I understand it correctly a reinstatment of an injunction is done by referencing the order number, which refers to the order in its entirety. Yet we know a part of it is vacated.

The appeals court of course is not in the business to issue injunctions therefore they cannot modify it then enforce it.


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## phrelin (Jan 18, 2007)

Well, I haven't had time to read all 65 pages yet. But truthfully, what I get from the discussion here is that:

The money issue didn't go completely to anyone's preferred choice;
Dish's "software design around" appears to be safe for the time being;
Dish still has options for creating additional delays which could provide plenty of time to finish the MPEG2 boxes replacement program though it would be a push for the Western Arc; and
If Charlie can create delays, TiVo will continue to bleed cash out to a law firm (as will Charlie but it's chump change to him).
Is my understand of any of these items clearly incorrect?


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## jacmyoung (Sep 9, 2006)

"phrelin" said:


> Well, I haven't had time to read all 65 pages yet. But truthfully, what I get from the discussion here is that:
> 
> [*]The money issue didn't go completely to anyone's preferred choice;
> [*]Dish's "software design around" appears to be safe for the time being;
> ...


I wonld not say clearly, I think E* this time will quickly motion the district court to end this thing while the $90M is on appeal.

They can do so by seeking a summary judgment of no infringement based on the PTO reexamination.


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## spear61 (Sep 19, 2004)

phrelin said:


> Well, I haven't had time to read all 65 pages yet. But truthfully, what I get from the discussion here is that:
> 
> The money issue didn't go completely to anyone's preferred choice;
> Dish's "software design around" appears to be safe for the time being;
> ...


Correct, but if SCOTUS does not hear their appeal, the disablement order goes into effect for the affected boxes (the sanction).


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## drjake (Jun 12, 2002)

Curtis52 said:


> Since Judge Folsom stated in his ruling that he would have found contempt on disablement even if infringement had not been found it is doubtful that he would provide a stay.


Judge Folsom saying that he would have found contempt means that he would have imposed sanctions. He did not say that he would leave an injunction in place if the redesigned software were not infringing. He may enforce the injunction or he may not. In any event, it is likely that he is going to be transferring the case. If he does so, it would no longer be his call on whether to stay the injunction.

As I said, this is a hollow victory for TIVO. They now have to pay legal fees for a new trial on the redesigned software. Charlie will continue swapping out boxes for the VIP series which have not been litigated. I see no reason for Charlie to settle with TIVO at this point.


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## drjake (Jun 12, 2002)

jacmyoung said:


> Since you are an attorney, can an injunction be reinstated as is when part of it is vacated? If not can part of it be reinstated? I have never seen such thing.
> 
> If I understand it correctly a reinstatment of an injunction is done by referencing the order number, which refers to the order in its entirety. Yet we know a part of it is vacated.
> 
> The appeals court of course is not in the business to issue injunctions therefore they cannot modify it then enforce it.


This is really irrelevant as the Judge can just craft a new injunction.


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## Curtis0620 (Apr 22, 2002)

drjake said:


> Judge Folsom saying that he would have found contempt means that he would have imposed sanctions. He did not say that he would leave an injunction in place if the redesigned software were not infringing. He may enforce the injunction or he may not. In any event, it is likely that he is going to be transferring the case. If he does so, it would no longer be his call on whether to stay the injunction.
> 
> As I said, this is a hollow victory for TIVO. They now have to pay legal fees for a new trial on the redesigned software. Charlie will continue swapping out boxes for the VIP series which have not been litigated. I see no reason for Charlie to settle with TIVO at this point.


Unless DISH gets a stay, they have 30 days from today to swap out all those boxes.


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## jacmyoung (Sep 9, 2006)

spear61 said:


> Correct, but if SCOTUS does not hear their appeal, the disablement order goes into effect for the affected boxes (the sanction).


That is incorrect, the stay of the injunction must be lifted by the appeals court first, since it has not done so, nothing will go into effect, for now.

The majority has already thrown out the PID gig, on remand, the district court must compare the "start code detection" to the "statistical analysis" methods to determine if the difference between the two is more than colorable, if so, the district court must order a new action. The majority also did not specify how the district court may proceed with the new action if needed.

It would be impossible for TiVo to argue that the "start code detection" is basically the same as the "statistical analysis" because such comparison, according to the majority, will have nothing to do with the patent claims. "Start code detection" obviously does not do any "statistical analysis" so this much the majority has already determined for the lower court, it just wanted the lower court to say it.


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## jacmyoung (Sep 9, 2006)

drjake said:


> This is really irrelevant as the Judge can just craft a new injunction.


Of course he can, but before he crafts a new injunction, do we have an enforceable injunction now, when we know a part of the injunction in question, was already vacated?

As you said in a later post, if there is no more infringement, Judge Folsom will not be able to craft another new injunction. So he isn't going to craft a new one until the infringement issues are again settled.


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## Hoosier205 (Sep 3, 2007)

I love that it isn't about who is/was in the wrong. It's about rooting for Charlie to weasel out of as much responsibility as possible.


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## Curtis0620 (Apr 22, 2002)

disablement was upheld


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## jacmyoung (Sep 9, 2006)

Curtis0620 said:


> Unless DISH gets a stay, they have 30 days from today to swap out all those boxes.


Stay is not automatically lifted upon a decision when such decision does not lift the stay.


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## DavidMi (Aug 24, 2009)

And will get stayed.


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## jacmyoung (Sep 9, 2006)

Hoosier205 said:


> I love that it isn't about who is/was in the wrong. It's about rooting for Charlie to weasel out of as much responsibility as possible.


Yet even the majority has instructed the lower court to allow Charlie to "weasel out". It is of course about right and wrong, everything said both by the majority and by the dissent was about what was right what was wrong.

It was wrong for TiVo to use PID to "weasel out" of the colorable difference analysis for example.


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## Hoosier205 (Sep 3, 2007)

http://www.reuters.com/article/2011/04/20/tivo-dish-patent-idUSN2016275020110420



> By Liana B.Baker
> 
> NEW YORK, April 20 (Reuters) - A federal appeals court upheld a ruling that EchoStar Corp (SATS.O) infringed TiVo Inc (TIVO.O) patents for digital recording technology, raising hopes the long legal battle could end with a TiVo victory.
> 
> ...


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## Curtis0620 (Apr 22, 2002)

Why would they seek a stay if the injunction wasn't in effect?


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## dgordo (Aug 29, 2004)

Curtis0620 said:


> Why would they seek a stay if the injunction wasn't in effect?


Or seek to have the injunction dissolved?


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## Curtis0620 (Apr 22, 2002)

So now the newer DVRs are in-play. DISH better settle now. Don't let this go back to court.

In sum, we vacate the court's holding of contempt of 
the infringement provision and remand for the court to 
make a finding concerning any colorable difference be- 
tween the previously adjudicated infringing devices and 
the *newly accused devices.*


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## SayWhat? (Jun 7, 2009)

> The legal battle dates back to 2004, when TiVo accused satellite TV provider EchoStar's Dish Network of violating TiVo's patent for Time Warp software *that allows users to record one TV program while watching another*.


Although I've asked repeatedly on other threads what this was all about and got no relevant replies, this is the first time I've seen anything even close to an answer.

Now, since my 508 can't do that, there is no need to swap out, right?

Also, like I've said before, I ain't payin' NO stinkin' monthly DVR fee. I bought the box, I don't expect to have to pay to be able to use it.

If I buy a car, I expect to have to buy consumables like gas & oil and to pay for repairs. I do NOT expect to have to pay a monthly fee for the transmission to work.


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## Curtis0620 (Apr 22, 2002)

SayWhat? said:


> Although I've asked repeatedly on other threads what this was all about and got no relevant replies, this is the first time I've seen anything even close to an answer.
> 
> Now, since my 508 can't do that, there is no need to swap out, right?
> 
> ...


DVR receivers (collectively the "Infringing Products"): DP-501; *DP- 
508;* DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


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## SayWhat? (Jun 7, 2009)

Mr. TiVo, your one-track-mind replies don't provide any information. If, as stated in the article posted above, it's about recording one program while watching another, my 508 can't do that.


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## Curtis0620 (Apr 22, 2002)

SayWhat? said:


> Mr. TiVo, your one-track-mind replies don't provide any information. If, as stated in the article posted above, it's about recording one program while watching another, my 508 can't do that.


You don't see the DP-508 listed? Mr DISH. You can't watch a recorded program while another records?


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## SayWhat? (Jun 7, 2009)

> You can't watch a recorded program while another records?


No.

I can record. I can watch. I can watch a program while recording it.

I can't watch one while recording another. No more so than with any VCR.


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## dgordo (Aug 29, 2004)

As jac will tell you the journalists don't always get it right. The so called time warp patent is about more than what was mentioned in that article.


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## drjake (Jun 12, 2002)

Curtis0620 said:


> So now the newer DVRs are in-play. DISH better settle now. Don't let this go back to court.
> 
> In sum, we vacate the court's holding of contempt of
> the infringement provision and remand for the court to
> ...


Why would this have any bearing on whether they should settle? The appeals court opinion gives a road map on how to not find infringement for the lower court. Charlie is not going to settle and this will drag on for years even if the VIP devices are brought in.


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## bobukcat (Dec 20, 2005)

Curtis0620 said:


> So now the newer DVRs are in-play. DISH better settle now. Don't let this go back to court.
> 
> In sum, we vacate the court's holding of contempt of
> the infringement provision and remand for the court to
> ...


Am I wrong in that they just mean the old software versus the new software and to make the determination based on the new method and not the "old" KSM method. I didn't take that to mean the ViP DVRs because, other than TiVO using them (incorrectly so according to the dissent) to calculate damages based on the enablement provision they were never considered in the jury trial.

My reading of the whole thing (for what it's worth) is that E* has 30 days to replace or kill DVR functions on the named (DP series) DVRs and the District Court (Folsom or whomever) has to decide the Less Than Colorably Different requirement for the new software in the named models using the specific methods the CAFC laid out. They specifically shot down using the "PID Filter still meets the "parsing" criteria, that the DC couldn't just use "random pieces" but must make a comparison on the whole with regards to meeting each claim requirement and said that if they are more than colorably different then no judgement is to be made on if it continues to infringe - that must be decided in a new trial.

Crazy stuff - it seems like since the CAFC told the DC they must re-examine if the new software in fact is colorably different and still infringes using the new methods that the injunction forcing them to be replaced or disabled would NOT still go in to affect - it would seem that it should be stayed until that has been decided. Perhaps it is up to E*to request that stay and appeal it (again) if it's denied?


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## scooper (Apr 22, 2002)

dgordo said:


> As jac will tell you the journalists don't always get it right. The so called time warp patent is about more than what was mentioned in that article.


I'd change that to "journalists *RARELY* get it right"....


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## jacmyoung (Sep 9, 2006)

Curtis0620 said:


> disablement was upheld


If you meant the disablement provision in the new injunction was upheld, no it was not. The majority upheld the contempt decision with respect to the disablement provision in the old injunction. The majority did not address the new injunction except that it vacated the pre-approval provision in the new injunction.

It would be difficult to argue that the majority had also upheld the disablement provision in the new injunction when it was silent on it, also when the majority said E* could appeal the vagueness of the provision, had they done so in time, which according to them E* did not do so last time, but E* clearly did not waive the right to appeal the disablement provision in the new injunction this time.


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## jacmyoung (Sep 9, 2006)

dgordo said:


> Or seek to have the injunction dissolved?


As vague as the majority are with regard to the new injunction, as they also did not even dispute that the old injunction might also be vague, but time after time the courts have shown that vagueness did not matter, if we feel you are in violation, you will cite you, we can issue vague orders, it is up to you to seek clarification, if you failed to seek clarification in time, too bad, and if you do seek clarification in time, I don't really have to provide any clarification.

In such environment, of course E* is correct to assume the worst and seek to cover all possible grounds.


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## Curtis52 (Oct 14, 2003)

SayWhat? said:


> Now, since my 508 can't do that, there is no need to swap out, right


The patent allows it. It doesn't require hardware to do it.


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## Davenlr (Sep 16, 2006)

Tivo stock sure made a jump today, while Dish stock stayed about the same... Apparently the investors think this will be good for Tivo, but wont matter much to Dish.


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## P Smith (Jul 25, 2002)

bobukcat said:


> Am I wrong in that they just mean the old software versus the new software and to make the determination based on the new method and not the "old" KSM method. I didn't take that to mean the ViP DVRs because, other than TiVO using them (incorrectly so according to the dissent) to calculate damages based on the enablement provision they were never considered in the jury trial.
> 
> My reading of the whole thing (for what it's worth) is that E* has 30 days to replace or kill DVR functions on the named (DP series) DVRs and the District Court (Folsom or whomever) has to decide the Less Than Colorably Different requirement for the new software in the named models using the specific methods the CAFC laid out. *They specifically shot down using the "PID Filter still meets the "parsing" criteria,* that the DC couldn't just use "random pieces" but must make a comparison on the whole with regards to meeting each claim requirement and said that if they are more than colorably different then no judgement is to be made on if it continues to infringe - that must be decided in a new trial.
> 
> Crazy stuff - it seems like since the CAFC told the DC they must re-examine if the new software in fact is colorably different and still infringes using the new methods that the injunction forcing them to be replaced or disabled would NOT still go in to affect - it would seem that it should be stayed until that has been decided. Perhaps it is up to E*to request that stay and appeal it (again) if it's denied?


They can't do that - it's base of functioning of digital MPEG streams. All channels, video, audio, EPG, etc exist in terms of PID and its using - separation, filtering, parsing, etc.


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## jacmyoung (Sep 9, 2006)

P Smith said:


> They can't do that - it's base of functioning of digital MPEG streams. All channels, video, audio, EPG, etc exist in terms of PID and its using - separation, filtering, parsing, etc.


But they did, the majority shot down the PID theory, stated that it was not a theory tried in front of the jury therefore TiVo could not use it, regardless if E*'s attorney said what back then, because what got TiVo to win the trial was the "start code detection" theory, now replaced with the "statstical estimation" theory.


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## James Long (Apr 17, 2003)

P Smith said:


> They can't do that - it's base of functioning of digital MPEG streams. All channels, video, audio, EPG, etc exist in terms of PID and its using - separation, filtering, parsing, etc.


They shot it down because of the way Tivo used "parsing" originally changed in the second complaint.

Whether or not the new process also violates the patent is a question for the court ... but changing what one called parsing in the original trial to something that has NOTHING to do with DISH's equipment operating as a DVR didn't fly.


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## jacmyoung (Sep 9, 2006)

"scooper" said:


> I'd change that to "journalists RARELY get it right"....


The highlighted quote was not by any journalist, rather by an analyst. Unfortunately I was posting on my phone could not tell, dgordo got away with his for a moment


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## bdhall1313 (Sep 16, 2007)

Hoosier205 said:


> I love that it isn't about who is/was in the wrong. It's about rooting for Charlie to weasel out of as much responsibility as possible.


The Patent office and Tivo were wrong. The patent should never have been granted in the first place. What was patented was obvious to any software developer or VCR user.

A VCR was obvious prior art for all the basic functions. The only difference was the VCR was mostly hardware based and the DVR functions were mostly software based.

There should be no software patents ever.


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## phrelin (Jan 18, 2007)

Ok, I've read it and IMHO it is a logical decision.

Basically, they've said to Dish and their legal counsel: "Hey dimwits, turning off the recording capability of the 8 listed receivers meant that you actually had a legal obligation to turn it off or seek permission to substitute software, not just unilaterally send down some new software." The majority of the Court said:


> ...Where a party faced with an injunction perceives an ambiguity in the injunction, it cannot unilaterally decide to proceed in the face of the injunction and make an after-the-fact contention that it is unduly vague.
> 
> ...We agree that in certain circumstances vagueness can operate as a defense to contempt. In a case such as this, however, where a party has bypassed opportunities to present its asserted vagueness claim on appeal or through a motion to clarify or modify the injunction, the party cannot disregard the injunction and then object to being held in contempt when the courts conclude that the injunction covered the party's conduct.
> 
> ...EchoStar's reading of the disablement provision is contrary to the most natural reading of the provision, as it would necessarily render the injunction vague on its face. The injunction clearly defines the term "Infringing Products" in terms of eight actual receiver models, specifically listing each model number.


Echostar's failure to comply always bothered me. Yes, there is a 5-member (of 12 members) dissenting opinion on this issue. But I think if the Supreme's take it up (a big "if") they would agree with the majority.

But the opinion constitutes a real shift in procedures and standards for the colorably different test:


> We have stated the test for colorable differences as one that requires determining whether "substantial open issues with respect to infringement to be tried" exist. ...Today, we reject that infringement-based understanding of the colorably different test. Instead of focusing solely on infringement, the contempt analysis must focus initially on the differences between the features relied upon to establish infringement and the modified features of the newly accused products.
> 
> The primary question on contempt should be whether the newly accused product is so different from the product previously found to infringe that it raises "a fair ground of doubt as to the wrongfulness of the defendant's conduct." ...The analysis must focus not on differences between randomly chosen features of the product found to infringe in the earlier infringement trial and the newly accused product, ...but on those aspects of the accused product that were previously alleged to be, and were a basis for, the prior finding of infringement, and the modified features of the newly accused product. Specifically, one should focus on those elements of the adjudged infringing products that the patentee previously contended, and proved, satisfy specific limitations of the asserted claims. Where one or more of those elements previously found to infringe has been modified, or removed, the court must make an inquiry into whether that modification is significant. If those differences between the old and new elements are significant, the newly accused product as a whole shall be deemed more than colorably different from the adjudged infringing one, and the inquiry into whether the newly accused product actually infringes is irrelevant. Contempt is then inappropriate.


They did comment on how this change was to be applied in this case:


> Applying the test in this case, one of the features of EchoStar's original receivers that TiVo relied upon to prove infringement to the jury was the start code detection feature. TiVo argued, and the jury accepted, that that feature satisfied the "parsing" limitation found in the software claims. It is undisputed that EchoStar replaced that feature with a statistical estimation feature.
> 
> The district court found no need to evaluate the newly designed statistical estimation feature to determine whether it was significantly different from the start code detection feature, the feature that had been previously alleged by TiVo to meet the parsing claim limitation, and whether the replaced feature continued to meet the parsing limitation of the software claims. Our holding today requires that those issues be determined on remand because the statistical estimation feature is the replacement for a feature that had been previously alleged to be infringing. As noted, the district court's determination that the modified devices are in fact infringing would be irrelevant to the question whether the injunction has been violated if the differences between the two features at issue are indeed significant, thus rendering the new devices more than colorably different from the original ones. It is also possible that, in a new infringement proceeding, a fact finder could conclude that the PID filter in EchoStar's redesigned device meets the "parsing" limitation and that the devices continue to infringe the asserted claims, but that should not be decided in a contempt proceeding.


They then simply split the whole contempt/infringement into before and after:


> We therefore vacate the district court's finding of contempt for violation of the infringement provision and remand to the district court to make that factual determination under the guidance that we have provided today. If the district court determines that there are more than colorable differences between the two devices, EchoStar is entitled to a new infringement proceeding.
> 
> Consequently, we also vacate the district court's order awarding TiVo "$1.25 per subscriber per month plus interest," totaling approximately $110 million, for EchoStar's continued infringement by EchoStar's modified software during the stay of the injunction and the district court's order requiring EchoStar to seek preclearance for any future attempts to design around the patent. On remand, the district court is required to separately calculate and award TiVo damages at the rate of "$1.25 per subscriber per month plus interest" for the use of the original infringing software during the stay of the injunction.


That's how they arrived at the conclusion at the end:


> In sum, we vacate the court's holding of contempt of the infringement provision and remand for the court to make a finding concerning any colorable difference between the previously adjudicated infringing devices and the newly accused devices. We vacate in part the damages awarded for continued infringement. We affirm the district court's finding of contempt of the disablement provision of the court's injunction and the sanctions imposed by the district court.


It's really simple.

Dish screwed up by not disabling putting themselves in contempt and making themselves subject to sanctions.
In terms of damages, TiVo gets damages on each and every listed box (except for the exempt quantity) up to the time of the modified software.
In terms of damages, apply the new procedures and standards - namely determine if the newly designed statistical estimation feature is significantly different from the start code detection feature - to determine if the new software infringes or is "colorably different."
I'm not sure what "significantly different" means here, but I guess someone will figure it out.


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## dgordo (Aug 29, 2004)

phrelin said:


> [*]Dish screwed up by not disabling putting themselves in contempt and making themselves subject to sanctions.


I disagree. Dish knew that any damages from this act would be significantly less than the costs of disabling the named devices. You have analysts saying that shutting down the named devices could cost billions vs the 90 million in awarded damages.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> The highlighted quote was not by any journalist, rather by an analyst. Unfortunately I was posting on my phone could not tell, dgordo got away with his for a moment


yes, well we know how you feel about analysts too.


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## jacmyoung (Sep 9, 2006)

phrelin said:


> [*]Dish screwed up by not disabling putting themselves in contempt and making themselves subject to sanctions.


Not so, according to the majority E* screwed up because they did not seek clarification. Except that as the dissent pointed out, E*'s interpretation was just as good as TiVo's if not better. So how could you insist they seek clarification when at the time E* was clear they did not have to disable if the non-infringing software would make the Infringing Products non infringing?



> [*]In terms of damages, TiVo gets damages on each and every listed box (except for the exempt quantity) up to the time of the modified software.


Also not true. First there is no damages, only sanctions. As dissent pointed out the sanctions was assessed on three kinds of DVRs, the 8 named DVRs already with the users, the 8 named DVRs not already with the users, and some VIP DVRs too. Yet the disablement provision clearly only applied to the 8 named DVRs already with the users, not the two other kinds.



> [*]In terms of damages, apply the new procedures and standards - namely determine if the newly designed statistical estimation feature is significantly different from the start code detection feature - to determine if the new software infringes or is "colorably different."


Not entirely true, first off this has nothing to do with damages either, just to find if the two are "only colorably different" or "more than colorably different", not if the new software infringes or is only colorably different.

Here is the other problem, as the dissent pointed out, the above two are clearly very different, the majority should have already made such decision and ordered a new trial.


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## jacmyoung (Sep 9, 2006)

dgordo said:


> yes, well we know how you feel about analysts too.


You were wrong about how I feel about journalists, so don't assume you are correct this time


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## scooper (Apr 22, 2002)

phrelin said:


> Ok, I've read it and IMHO it is a logical decision.
> 
> Basically, they've said to Dish and their legal counsel: "Hey dimwits, turning off the recording capability of the 8 listed receivers meant that you actually had a legal obligation to turn it off or seek permission to substitute software, not just unilaterally send down some new software." The majority of the Court said: Echostar's failure to comply always bothered me. Yes, there is a 5-member (of 12 members) dissenting opinion on this issue. But I think if the Supreme's take it up (a big "if") they would agree with the majority.
> 
> ...


Let me save you some time and brainpower - Echostar's Statistical Estimation bears no resemblence to Tivo's indexing of start code detection. That's EXACTLY what the CAFC was saying here. Echostar even has their own patent on this.

My take on the Decision - 
Echostar will have to pay damages for not "disabling the DVR functions on the original 8 models" - at least up until the time they changed the S/W to their new method.

If Tivo want's to go after the VIP models - good luck - start with a new trial.

Tivo's hands got slapped for A - including the VIP models for damages (they have not been shown to infringe yet) and B - changing the rules in the middle of the game (switching the parsing to mean the PID filter).

Settlement - not on your life. Maybe not by the end of mine. Or maybe if Tivo offers very favorable terms for doing so...


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## jacmyoung (Sep 9, 2006)

dgordo said:


> I disagree. Dish knew that any damages from this act would be significantly less than the costs of disabling the named devices. You have analysts saying that shutting down the named devices could cost billions vs the 90 million in awarded damages.


So E* will not shut them down then. Since Charlie had already offered to settle with TiVo for about $120M lump sum per year (initially I said $120M but now I recall it was $120M per year), Charlie got off easier than even the settlement TiVo refused to accept.


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## jacmyoung (Sep 9, 2006)

scooper said:


> Or maybe if Tivo offers very favorable terms for doing so...


Llikely less than the previous offer Charlie made to TiVo, else why not just pay the $90M and battle on? Not to mention the $90M is not a sure thing, there is clear error in that amount the majority did not even dispute.


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## dgordo (Aug 29, 2004)

http://blogs.barrons.com/techtrader...ish-sags-large-settlement-coming/?mod=BOLBlog


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## dgordo (Aug 29, 2004)

jacmyoung said:


> So E* will not shut them down then. Since Charlie had already offered to settle with TiVo for about $120M lump sum per year (initially I said $120M but now I recall it was $120M per year), Charlie got off easier than even the settlement TiVo refused to accept.


Uh, yeah, that was my point.


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## James Long (Apr 17, 2003)

dgordo said:


> http://blogs.barrons.com/techtrader...ish-sags-large-settlement-coming/?mod=BOLBlog


ALWAYS PROVIDE A QUOTE!

TiVo (TIVO) shares are up $2.86, or 34%, at $11.23, after the U.S. Court of Appeals for the Federal Circuit in Washington ruled Dish Network (DISH) was in contempt of a court order last year to shut down the DVR service it provides to subscribers, after a long-running patent infringement suit brought by TiVo.

The court also, however, rejected a ruling that Dish's software "workaround" was insufficient to avoid infringement.

TiVo said it looked forward to a permanent injunction against Dish, and that the ruling, "paves the way for TiVo to receive substantial damages and contempt sanctions regarding the DVRs that EchoStar and Dish Network failed to disable."

Dish, whose stock is down 35 cents, or 1.5%, at $23.52, said in a statement it will take its case for continuing its DVR service to the Supreme Court, and said it was pleased its software workaround will get another hearing.​


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## jacmyoung (Sep 9, 2006)

According to the majority there was a total of $110M damages assessed for about 41 months at $1.25 per box per month, and a total of $90M sanctions for about 24 months at $1.00 per box per month.

My quick and dirty math showed the number of the DVRs assessed of sanctions was about 1.75 times the number of DVRs assessed of damages. I recall the base number was 6 million, so 6 million were assessed damages but 10.5 million were assessed sanctions. Maybe that was where the dissent objection came from with regard to the sanctions.

I thought Charlie knew his math if he knew how to count cards


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## dgordo (Aug 29, 2004)

Math has never been a strength but I don't understand your numbers. Were did the 6M come from? Wouldn't it look more lie this?



Boxes	rate months	Damages
2,146,341.46	$1.25	41	$110,000,000.00
3,750,000.00	$1.00	24	$90,000,000.00


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## phrelin (Jan 18, 2007)

dgordo said:


> I disagree. Dish knew that any damages from this act would be significantly less than the costs of disabling the named devices. You have analysts saying that shutting down the named devices could cost billions vs the 90 million in awarded damages.


Guess I should have started that long post with something indicating I was looking at the decision from a law standpoint, not reality.

I recognized that Charlie's actions are real world economic decisions based on risk which is why I made my earlier post:


phrelin said:


> ...What I get from the discussion here is that:
> 
> The money issue didn't go completely to anyone's preferred choice;
> Dish's "software design around" appears to be safe for the time being;
> ...


After going over every sentence in the decision, it appears to me Charlie and lawyers did just about everything they could have done to manipulate the legal system to get the delays needed. Particularly by creating a 7-5 dispute over one element, the chance of a Supreme Court review increased from what I thought would be 0% to, oh, maybe 33%.

If I have a problem with Echostar/Dish it is because I believe that some engineers basically used TiVo's design in those old DVR's like the two 508's I have sitting in a closet. I see that as a bit unethical.

On the other hand, the Court has completely overhauled how you legally determine "colorably different." That's interesting case law evolution in this kind of law, though I'm not sure they really clarified anything for future cases.

I see it like a big old 5-card draw poker game. This case is just about if and when TiVo will settle. By sending back the review of the "workaround" using the new approach to "colorably different" it's like Charlie asked for two cards to fill out a straight and one of them gave him a pair of aces. Whether he now has two pair, we don't know. What we do know is TiVo asked for three cards. Both players have put a lot of money in the pot, but Charlie's about to raise again.


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## Satelliteracer (Dec 6, 2006)

scooper said:


> Settlement - not on your life. Maybe not by the end of mine. Or maybe if Tivo offers very favorable terms for doing so...


I'd take that bet...there will be a settlement.


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## jacmyoung (Sep 9, 2006)

"Satelliteracer" said:


> I'd take that bet...there will be a settlement.


If so I think TiVo people will end up wishing they did not have one. Not that I don't like to see one, just they will not like it.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Math has never been a strength but I don't understand your numbers. Were did the 6M come from? Wouldn't it look more lie this?
> 
> 
> 
> ...


The 6M came from what I read in the 9/08 hearing. The initial number in 06 was 4M. Maybe they used some kind of curve, I have no idea, it was done by a PhD. I never made it that far.

Speaking of the injunction, since the full court vacated the infringement finding, even if the half injunction still exists, it should not be reinstated by the same court until and if infringement is found and affirmed again. If no infringement will be found, of course there cannot be any injunction.


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## DavidMi (Aug 24, 2009)

Curtis will tell you otherwise since he works for tivo.


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## Curtis0620 (Apr 22, 2002)

http://finance.yahoo.com/news/Dish-in-contempt-of-court-in-apf-1247622743.html?x=0&.v=6



> The latest ruling upholds a finding by a three-judge panel of the same federal court that concluded that Dish and EchoStar were in violation of an injunction issued by the U.S. District Court for the Eastern District of Texas that prohibited the companies from using the disputed technology in eight set-top box models and ordered them to disable those boxes. *Wednesday's ruling requires Dish and EchoStar to disable the boxes and awards $90 million in damages to TiVo.*
> 
> *Wednesday's ruling also sends the dispute back to the district court in Texas to determine whether a "software design around" in newer-model Dish boxes is substantially different than the disputed technology in the older boxes.*


Mistake to let the newer DVRs get involved.


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## RasputinAXP (Jan 23, 2008)

Tivo already TRIED to get the newer DVRs involved.


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## jacmyoung (Sep 9, 2006)

"DavidMi" said:


> Curtis will tell you otherwise since he works for tivo.


I know you are joking but no one associated with the parties is likely allowed to comment on the case.

If Charlie's attorneys are any good, they would have told him the injunction, if still exists, cannot take effect because the infringement finding was vacated by the full court.

As for the question why they said they would seek another stay, other than what I said last time, I now recall that after the CAFC stayed the injunction while waiting for the en banc decision, Judge Folsom briefly also stayed the injunction himself. I suppose there is this kind of "double it up" thing for no apparent reason.

Asking the district court to dissolve the injunction is the same as asking it to declare no infringement. Only when the court makes such declaration one can be certain there will be no injunction.

Despite the appearance, Charlie finally won something he fought this fight all these years for, to prove his guys can innovative and TiVo is not the only DVR game in town. One has to believe this is one of his most important causes in his life for now, if not the most. $90M is a small price to pay for such cause.

Heck he just paid over $300M for Blockbuster, no one has figured out what his cause is yet.


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## david_jr (Dec 10, 2006)

phrelin said:


> If I have a problem with Echostar/Dish it is because I believe that some engineers basically used TiVo's design in those old DVR's like the two 508's I have sitting in a closet. I see that as a bit unethical.


Dish will give you ten bucks apiece for those Phrelin!!


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## dgordo (Aug 29, 2004)

jacmyoung said:


> Speaking of the injunction, since the full court vacated the infringement finding, even if the half injunction still exists, it should not be reinstated by the same court until and if infringement is found and affirmed again. If no infringement will be found, of course there cannot be any injunction.


This is a permanent injunction. The injunction will exist in some shape until the expiration of the patent. Just because the current software may not infringe on the patent doesn't mean that the injunction disappears. DISH will never be allowed to infringe on the patent during the life of the patent.


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## P Smith (Jul 25, 2002)

jacmyoung said:


> But they did, the majority shot down the PID theory, stated that it was not a theory tried in front of the jury therefore TiVo could not use it, regardless if E*'s attorney said what back then, because what got TiVo to win the trial was the "start code detection" theory, now replaced with the "statstical estimation" theory.


I don't get it - it's in a description of Broadcom chips what E* using (and DTV):


> *The MPEG-2 DVB-compliant transport stream/PES parser and demultiplexer is capable of simultaneously processing 256 PIDs via 128 PID channels in up to five independent external transport stream inputs and two internal playback channels. All 128 PID channels can be used by the record, audio, and video interface engine (RAVE), PCR processing, message filter, and for output via the high-speed transport or remux module. The data transport module can be configured to support eight record channels for PVR functionality and six AV channels to interface to audio and video decoders*.


The SW using the chips must utilize PID parsing and can not avoid it.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> This is a permanent injunction. The injunction will exist in some shape until the expiration of the patent. Just because the current software may not infringe on the patent doesn't mean that the injunction disappears. DISH will never be allowed to infringe on the patent during the life of the patent.


Not so. If infringement is no longer there, the disabling provision must be dissolved, so is the enabling provision. A generally worded injunction will not stand because the law requires the order to be specific, not just a general prohibition of the infringement of a patent. Time after time injunctions with only the general prohibition clause have been struck down by the CAFC.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> Not so. If infringement is no longer there, the disabling provision must be dissolved, so is the enabling provision. A generally worded injunction will not stand because the law requires the order to be specific, not just a general prohibition of the infringement of a patent. Time after time injunctions with only the general prohibition clause have been struck down by the CAFC.


Just because infringement isn't there today, and I have no idea whether it is or not, doesn't mean it wont be there at some point in the future. Just as the injunction states, it remains in effect for the life of the patent.

If DISH thought the injunction was generally worded they should have challenged that.


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## jacmyoung (Sep 9, 2006)

"P Smith" said:


> I don't get it - it's in a description of Broadcom chips what E* using (and DTV):
> 
> The SW using the chips must utilize PID parsing and can not avoid it.


Tell it to the CAFC, they had unanimously thrown out the PID theory. If there is a new trial TiVo might be able to bring the issue back, but I don't think it will go that far. E* basically had already said they will seek a sunmary judgment of no infringement, if denied I think they can appeal.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Just because infringement isn't there today, and I have no idea whether it is or not, doesn't mean it wont be there at some point in the future. Just as the injunction states, it remains in effect for the life of the patent.
> 
> If DISH thought the injunction was generally worded they should have challenged that.


No I said this injunction was specifically worded, with a general prohibition, a disabling provison, an enabling and a preapproval provisions.

If later the court makes, as E* is seeking, a declaration of no infringement, the disabling and enabling provisions must be dissolved, leaving only the general prohibition which will be an improper order because it will be without specifics.

Once non-infringement is determinded, obviously the court can no longer order anything disabled nor the same thing not enabled. The preapproval provision has already been dissolved.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> No I said this injunction was specifically worded, with a general prohibition, a disabling provison, an enabling and a preapproval provisions.
> 
> If later the court makes, as E* is seeking, a declaration of no infringement, the disabling and enabling provisions must be dissolved, leaving only the general prohibition which will be an improper order because it will be without specifics.
> 
> Once non-infringement is determinded, obviously the court can no longer order anythig disabled. The preapproval provision has already been dissolved.


Folsom made it pretty clear, and the CAFC didn't disagree, that he could order the named devices disabled whether they infringe or not.


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## Curtis0620 (Apr 22, 2002)

dgordo said:


> Folsom made it pretty clear, and the CAFC didn't disagree, that he could order the named devices disabled whether they infringe or not.


Here you go. :bang


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## scooper (Apr 22, 2002)

P Smith said:


> I don't get it - it's in a description of Broadcom chips what E* using (and DTV):
> 
> The SW using the chips must utilize PID parsing and can not avoid it.


What you missed is that Tivo did NOT originally use the PID filter as their "Parsing function" - but rather - they tried to add it when Echostar came out with their new Software . Tivo just got slapped for trying to retroactively adding that.


----------



## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Folsom made it pretty clear, and the CAFC didn't disagree, that he could order the named devices disabled whether they infringe or not.


That is not what the majority said, what they said was E* could have appealed such contention by the judge, they missed the opportunity last time, but they do not miss it this time.

E* now continues to argue the disabling provision in the new injunction does not prohibit design around, they did not waive such appeal this time, yet the majority is silent on this issue while remanding the case. Therefore it did not uphold Judge Folsom's such contention as far as this new injunction is concerned, they also did not lift the stay.

I am no lawyer but being silent in the face of a proper appeal while on remand would be a signal that what is been contested by E* may not be enforced, until the remanded issue is resolved.


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## Curtis0620 (Apr 22, 2002)

They said disablement was upheld.

:bang


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## Jhon69 (Mar 28, 2006)

So has it been decided yet if Tivo infringed on Dish's patent?.


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## Tower Guy (Jul 27, 2005)

Jhon69 said:


> So has it been decided yet if Tivo infringed on Dish's patent?.


Yes and maybe.

The original software infringement and disablement was upheld.

The workaround software was returned to the lower court for a new proceeding.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> That is not what the majority said, what they said was E* could have appealed such contention by the judge, they missed the opportunity last time, but they do not miss it this time.
> 
> E* now continues to argue the disabling provision in the new injunction does not prohibit design around, they did not waive such appeal this time, yet the majority is silent on this issue while remanding the case. Therefore it did not uphold Judge Folsom's such contention as far as this new injunction is concerned, they also did not lift the stay.
> 
> I am no lawyer but being silent in the face of a proper appeal while on remand would be a signal that what is been contested by E* may not be enforced, until the remanded issue is resolved.


Please provide a quote from the majority that makes this point.

Also, please refer to the appendix of the decision which incorporates the injunction in question. Notice anything about it?


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## L3G3ND (Mar 2, 2011)

Jmacyoung : he is PRO DISH, ANTI TIVO. Nothing will ever change his mind. He reads everything with a bias for DISH. the judges who ruled with tivo are confused while the dissenting judges are just and precise. LOL. 

DISH and Ergen : they have gotten away cheap, and litigation has absolutely been the correct route for them having paid appx $300 mill to grow their business and save billions of licensing fees. Perhaps they will settle but I don't see why they don't continue fighting it out in court. This is Ergen's MO. He's brash and willing to gamble. 

Dish's workaround: Contrary to Jmac's analysis nowhere is it clearly stated that dish's workaround clearly does not infringe. They will figure this out in court eventually. 

Tivo : they have a long haul ahead of them and many tough court battles. this is not the end of the line for the tivo court battle. this court "win" was only a 40-50% win. At least they get another $100 million which is very much material for a $1 billion company. What is unclear is whether they will ever be able to fully take advantage of their intellectual property or if they even are entitled.


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## drjake (Jun 12, 2002)

It looks like the stock market may have discounted TIVO's "win" a little bit today. TIVO closed down $0.72 today, Dish closed up $0.79 and Echostar closed up $0.70.


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## jacmyoung (Sep 9, 2006)

"L3G3ND" said:


> Jmacyoung : he is PRO DISH, ANTI TIVO. Nothing will ever change his mind. He reads everything with a bias for DISH. the judges who ruled with tivo are confused while the dissenting judges are just and precise. LOL.
> 
> DISH and Ergen : they have gotten away cheap, and litigation has absolutely been the correct route for them having paid appx $300 mill to grow their business and save billions of licensing fees. Perhaps they will settle but I don't see why they don't continue fighting it out in court. This is Ergen's MO. He's brash and willing to gamble.
> 
> ...


Wow you say I am anti TiVo but your outlook for TiVo seems more dim than mine


----------



## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Please provide a quote from the majority that makes this point.


Which point?



> Also, please refer to the appendix of the decision which incorporates the injunction in question. Notice anything about it?


That was the old injunction in its entirety, what do you think I should notice? It no longer existed.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> Which point?


This one:
That is not what the majority said, what they said was E* could have appealed such contention by the judge, they missed the opportunity last time, but they do not miss it this time.



jacmyoung said:


> That was the old injunction in its entirety, what do you think I should notice? It no longer existed.


The court must be confused because they refer to the appendix and reference it repeatedly.


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## drjake (Jun 12, 2002)

dgordo said:


> This one:
> That is not what the majority said, what they said was E* could have appealed such contention by the judge, they missed the opportunity last time, but they do not miss it this time.
> 
> The court must be confused because they refer to the appendix and reference it repeatedly.


You do realize that a major issue in the case was about whether the lower court properly held E* in contempt under the original injunction. That they mentioned it and cited to it has no bearing as to whether it is still in effect.


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## dgordo (Aug 29, 2004)

drjake said:


> You do realize that a major issue in the case was about whether the lower court properly held E* in contempt under the original injunction. That they mentioned it and cited to it has no bearing as to whether it is still in effect.


of course i realize that. i also realize that the current injunction is identical to it since the CAFC removed the requirement for pre-approval. Its a permanent injunction, it doesn't just go away without a court vacating it. When the stay is lifted this is the same wording as the injunction that goes into effect, whether there is currently infringement or not.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> of course i realize that. i also realize that the current injunction is identical to it since the CAFC removed the requirement for pre-approval. Its a permanent injunction, it doesn't just go away without a court vacating it. When the stay is lifted this is the same wording as the injunction that goes into effect, whether there is currently infringement or not.


The stay was not lifted by this ruling.

Think about it this way, by remanding the infringement issue, the majority must have agreed the possible outcome of a no infringement ruling by the district court. I don't think you would dispute that if such is the outcome, the injunction as is, needs to be dissolved. Without infringement the court may not order any disabling or not enabling. Therefore it would be improper to lift the stay now, because a stay is under the guidance whether E* has the chance to succeed. By vacating the infringement finding, at a minnimum E*'s chance has increased, therefore if the injunction, when E* was in a less favorable position, was stayed, now it naturally should continue be stayed.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> The stay was not lifted by this ruling.


Im not saying it was. But that will happen soon enough.



jacmyoung said:


> Think about it this way, by remanding the infringement issue, the majority must have agreed the possible outcome of a no infringement ruling by the district court. I don't think you would dispute that if such is the outcome, the injunction as is, needs to be dissolved.


Of course I dispute that. Whether or not there is infringement today is completely irrelevant to the injunction.



jacmyoung said:


> Without infringement the court may not order any disabling or not enabling.


Of course the court can do that. Judge folsom made it perfectly clear that his injunction requires disablement whether there is infringement or not and the CAFC agreed with this.



jacmyoung said:


> Therefore it would be improper to lift the stay now, because a stay is under the guidance whether E* has the chance to succeed. By vacating the infringement finding, at a minnimum E*'s chance has increased, therefore if the injunction, when E* was in a less favorable position, was stayed, now it naturally should continue be stayed.


The rest of this makes no sense because you have confused the possibility of a finding of colorably different with non-infringement.


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## L3G3ND (Mar 2, 2011)

"We affirm the district court’s finding of contempt of the disablement provision of the court’s injunction and the sanctions imposed by the district court."

this SEEMS to be stating that that they are affirming the disablement provision, thereby lifting the stay. Even Dish's own press release seems to acknolwedge this. .


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## jacmyoung (Sep 9, 2006)

dgordo said:


> Im not saying it was. But that will happen soon enough.


It cannot happen because currently there is not a valid injunction for E* to follow. When the injunction was crafted, it listed items, and copies of them were sent to all parties and individuals who were intended recipients. If the CAFC lifts the stay, they cannot simply ask the recipients to scratch out one item and follow it. The court must re-craft a new injunction with one item removed. Such duty lies in the district court, which cannot do so unless the stay is lifted.



> Of course I dispute that. Whether or not there is infringement today is completely irrelevant to the injunction.


For the new injunction, it is not settled that it orders disabling whether infringing or not, because E* is appealing such interpretation, E* did not waive its right for such appeal, and the majority declined to rule whether the new injunction orders E* to disable regardless of infringement. Therefore you cannot again say E* still infringe when E* properly asked for clarification yet such clarification was not given. Whether the injunctions were identical is irrelevant although they were not identical, E* asked for clarification properly, clarification must be given for the order to be clear. Of course E* is properly arguing against such interpretation now, without waiving its right. The court cannot stay silent now then later find contempt by saying again E* failed to appeal because it does not fail this time.


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## jacmyoung (Sep 9, 2006)

L3G3ND said:


> "We affirm the district court's finding of contempt of the disablement provision of the court's injunction and the sanctions imposed by the district court."
> 
> this SEEMS to be stating that that they are affirming the disablement provision, thereby lifting the stay. Even Dish's own press release seems to acknolwedge this. .


They affirmed the contempt ruling, they did not lift the stay.


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## L3G3ND (Mar 2, 2011)

jacmyoung said:


> Not at all if you read the strong dissent.
> 
> Even if you read the majority, it is clear E*'s modified DVRs no longer infringed. There is no way TiVo can again argue that PID satisfied the claim because E* now can use the PTO statement for support now it is final and on the record. Additionally TiVo can no longer use the same argument that E* did not appeal the injunction, because E* did appeal the new injunction properly, and the majority agreed and vacated the pre-approval provision. While the majority did not explictly vacate the new injunction, it did not lift the stay either, the injunction in part was vacated by the majority, the same injunction no longer exists, so we will have to see how TiVo may fulfil its promise to have Judge Folsom enforce the injunction.
> 
> So in my view, the most TiVo will get is $106M and this will be over.


the settlement would be over $100 Million PER YEAR. to think that it's $106 million and it's over is plain foolish. It's $106 million until they dish remedies the situation.

Even if you read the majority, it is clear E*'s modified DVRs no longer infringed.

the majority NEVER EVER insinuated this. They only differentiated between those boxes that WERE found to infringe and the boxes that were not yet found to infringe. They never ever made a statement that they examined the boxes that were not yet determined to be infringing and determined that these boxes indeed pass the test.

The difference between you and me is i believe that Tivo has been taken advantage of by larger more deep pocketed companies. I believe that these companies have essentially stolen Tivo's IP and have gotten away with it for the most part. I believe that it is important for the little(r) guy to be able to defend his IP against companies that could in theory litigate forever paying hundreds of millions of dollars in legal fees instead of the billions of dollars of licensing fees they should be paying.

I believe that allowing DISH/Echostar to constantly appeal by making insignificant tweaks to their technology is basically allowing them to steal from Tivo at very little detriment to them. In my mind, this case sets a precedent that large deep pocketed companies SHOULD simply steal technologies and just perpetually litigate to defend their theft.


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## jacmyoung (Sep 9, 2006)

As pointed out already, before the en banc order Charlie had already offerred TiVo about $120M per year to settle, TiVo clearly did not bite. Whose fault was that?


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## L3G3ND (Mar 2, 2011)

jacmyoung said:


> They affirmed the contempt ruling, they did not lift the stay.


even dish believes you are wrong.

DISH - 
"We have already upgraded many of these customers and, if we are unsuccessful in obtaining a stay, we will work as quickly as possible to upgrade the remaining customers to our current generation DVRs, as these are not at issue in the ruling,"


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## dgordo (Aug 29, 2004)

jacmyoung said:


> It cannot happen because currently there is not a valid injunction for E* to follow. When the injunction was crafted, it listed items, and copies of them were sent to all parties and individuals who were intended recipients. If the CAFC lifts the stay, they cannot simply ask the recipients to scratch out one item and follow it. The court must re-craft a new injunction with one item removed. Such duty lies in the district court, which cannot do so unless the stay is lifted.


This makes so little sense its almost not worth addressing, however, "The court must re-craft a new injunction with one item removed. Such duty lies in the district court, which cannot do so unless the stay is lifted."

Wow, a stay has to be lifted to create a new injunction. This would be shocking news to anyone who has ever taken a basic civil procedure class.



jacmyoung said:


> For the new injunction, it is not settled that it orders disabling whether infringing or not, because E* is appealing such interpretation, E* did not waive its right for such appeal, and the majority declined to rule whether the new injunction orders E* to disable regardless of infringement. Therefore you cannot again say E* still infringe when E* properly asked for clarification yet such clarification was not given. Whether the injunctions were identical is irrelevant although they were not identical, E* asked for clarification properly, clarification must be given for the order to be clear.


Dish never appealed the interpretation of the injunction. Show me where the court declined to rule on that issue.

And im still waiting for you to provide quotes from the previous points you were wrong about.


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## scooper (Apr 22, 2002)

L3G3ND said:


> the settlement would be over $100 Million PER YEAR. to think that it's $106 million and it's over is plain foolish. It's $106 million until they dish remedies the situation.
> 
> Even if you read the majority, it is clear E*'s modified DVRs no longer infringed.
> 
> ...


Except that Dish/Echostar is not claiming to have made a small insignificant change - they made a MAJOR change in the way their DVRs operate to get away from Tivo's index of start codes.

Go back and do some reading before you make any more error filled statements.

And so far as Tivo's supposed IP - please - they did not do any thing innovative in my opinion with respect to DVRs.


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## L3G3ND (Mar 2, 2011)

If a large company infringes on the intellectual property of a smaller company AND is found guilty of doing so -- the onus should be on them to prove that they are no longer infringing before continuing to offer the product/service.
Tivo should not be forced to constantly defend their IP at every little tweak DISH implements. DISH should have been forced to prove to the courts their product no longer infringes before being allowed activate their DVRs. 

If tivo does not prevail, large companies are being encouraged to steal IP from the small guy. They can simply pay millions of dollars in lawyers fees and fines over an extremely long period of time, rather than paying the billions of dollars it would cost to license these valuable products/service. 

jaymc you still have not showed me where the justices say the workaround DOES NOT infringe.


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## L3G3ND (Mar 2, 2011)

scooper said:


> Except that Dish/Echostar is not claiming to have made a small insignificant change - they made a MAJOR change in the way their DVRs operate to get away from Tivo's index of start codes.
> 
> Go back and do some reading before you make any more error filled statements.
> 
> And so far as Tivo's supposed IP - please - they did not do any thing innovative in my opinion with respect to DVRs.


DiSH should be forced to prove that their updated product is no longer infringing. not be allowed to obtain a stay based on their "belief" that their new product no longer infringes. Would you allow convicted child molester to baby sit for your child -- you would if they SAID -- "I changed!"

The district court evaluated the two modifications and found by clear and convincing evidence that the modified DVR software was not more than colorably different from the infringing software, and did continue to infringe the software claims. On EchoStar's contention that the "parsing" limitation was not met, the court held that the modified receivers, like the adjudicated ones, continued to utilize "PID filtering," which EchoStar itself had recog-nized as "parsing," and thus were not more than colorably different from the adjudicated receivers. -- SO ESSENTIALL DISH said it's different, but the course said NO.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> This makes so little sense its almost not worth addressing, however, "The court must re-craft a new injunction with one item removed. Such duty lies in the district court, which cannot do so unless the stay is lifted."
> 
> Wow, a stay has to be lifted to create a new injunction. This would be shocking news to anyone who has ever taken a basic civil procedure class.


Of course the distrct court cannot do anything about the injunction unless its stay is lifted. I am just saying the stay is not lifted but even if it is, the injunction issued by Judge Folsom is now a defective one because it contains one thing that was vacated. There is no proper way to lift a stay of an injunction that is defective.



> Dish never appealed the interpretation of the injunction. Show me where the court declined to rule on that issue.


Yes they did, they said so repeatedly, you as a lawyer should know, they are appealing those same interpretations across the board, the court can only find waiver on the old injunction but not on the new one. Yet they declined to address the new one. I do not intend to waste my time to dig up those quotes for you, you should be able to read for yourself.



> And im still waiting for you to provide quotes from the previous points you were wrong about.


Which one again?


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## scooper (Apr 22, 2002)

L3G3ND said:


> DiSH should be forced to prove that their updated product is no longer infringing. not be allowed to obtain a stay based on their "belief" that their new product no longer infringes. Would you allow convicted child molester to baby sit for your child -- you would if they SAID -- "I changed!"


As I said - go back and read the old threads. Your concerns have been addressed already.


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## dgordo (Aug 29, 2004)

L3G3ND said:


> jaymc you still have not showed me where the justices say the workaround DOES NOT infringe.


He's not good at finding quotes. He merely says find it yourself.

Let me help you both, they never said it, in fact they said:

"in a new infringement
proceeding, a fact finder could conclude that the PID filter
in EchoStar's redesigned device meets the "parsing"
limitation and that the devices continue to infringe the
asserted claims, but that should not be decided in a
contempt proceeding. "


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## jacmyoung (Sep 9, 2006)

Judge Folsom may craft a new injunction again, after the status meeting post remand, when both parties have the opportunities to argue several things out.

If they do what they said, E* would motion the court for a summary judgment of no infringement citing the new PTO statements, then dissolve the injunction.

TiVo would argue E* still infringes and the court to again issue an injunction and award damages/sanctions. The court would likely take all of such motions and make a final ruling again.

Of course they can also settle.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> Of course the distrct court cannot do anything about the injunction unless its stay is lifted. I am just saying the stay is not lifted but even if it is, the injunction issued by Judge Folsom is now a defective one because it contains one thing that was vacated. There is no proper way to lift a stay of an injunction that is defective.


This just doesnt make any sense and it isnt worth discussing with you anymore.



jacmyoung said:


> Yes they did, they said so repeatedly, you as a lawyer should know, they are appealing those same interpretations across the board, the court can only find waiver on the old injunction but not on the new one. Yet they declined to address the new one. I do not intend to waste my time to dig up those quotes for you, you should be able to read for yourself.


Thats exactly the point, I cant read it for my self because it was never said. If it was said repeatedly it should be easy to find.



jacmyoung said:


> Which one again?


"E* could have appealed such contention by the judge, they missed the opportunity last time, but they do not miss it this time." The same point you claim was repeatedly made but cant seem to find.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> He's not good at finding quotes. He merely says find it yourself.
> 
> Let me help you both, they never said it, in fact they said:
> 
> ...


You have not read all the briefs, let me save you some time, when repeatedly faced with TiVo's argument that E* failed to appeal back then, E* repeatedly said but we were appealing the new injunction now.

You think E* is that stupid when faced with the same assertion over and over that they would let the same happen again?


----------



## jacmyoung (Sep 9, 2006)

"dgordo" said:


> This just doesnt make any sense and it isnt worth discussing with you anymore.


We can certainly let our statements stand so others may determine for themselves, no need to try to point out to the others how this make sense or not, people are more than capable of deciding for themselves.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> You have not read all the briefs, let me save you some time, when repeatedly faced with TiVo's argument that E* failed to appeal back then, E* repeatedly said but we were appealing the new injunction now.
> 
> You think E* is that stupid when faced with the same assertion over and over that they would let the same happen again?


Then just show me one time where they said it, just one.

And show me just one time where the CAFC mentioned it, just one.


----------



## scooper (Apr 22, 2002)

L3G3ND said:


> The district court evaluated the two modifications and found by clear and convincing evidence that the modified DVR software was not more than colorably different from the infringing software, and did continue to infringe the software claims. On EchoStar's contention that the "parsing" limitation was not met, the court held that the modified receivers, like the adjudicated ones, continued to utilize "PID filtering," which EchoStar itself had recog-nized as "parsing," and thus were not more than colorably different from the adjudicated receivers. -- SO ESSENTIALL DISH said it's different, but the course said NO.


That was such a crock of an infringment hearing that the CAFC just VACATED that decision and remanded it back for a proper hearing.

Get with the program. You are so far out of your depth it's not even worth talking to you about it.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> We can certainly let our statements stand so others may determine for themselves, no need to try to point out to the others how this make sense or not, people are more than capable of deciding for themselves.


I'm very willing to let people decide for themselves who is correct. I was the one, along with many others, that said that Folsom had correctly applied KSM and the only way the CAFC could not find infringement was to create a new test. I am the one, along with many others, who said that the disablement contempt would stand because DISH waived the right to contest the injunction. You basically got the whole thing wrong.


----------



## L3G3ND (Mar 2, 2011)

scooper said:


> That was such a crock of an infringment hearing that the CAFC just VACATED that decision and remanded it back for a proper hearing.
> 
> Get with the program. You are so far out of your depth it's not even worth talking to you about it.


u crack me up. not one place does anyone state that the workaround is colorably different -- only DISH. They'll remand it back to court -- they'll determine that it's not colorably different, DISH will appeal again, delay delay delay, steal steal steal, and pay peanuts on what it should owe.


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## L3G3ND (Mar 2, 2011)

dgordo said:


> I'm very willing to let people decide for themselves who is correct. I was the one, along with many others, that said that Folsom had correctly applied KSM and the only way the CAFC could not find infringement was to create a new test. I am the one, along with many others, who said that the disablement contempt would stand because DISH waived the right to contest the injunction. You basically got the whole thing wrong.


what do you predict for the future of Tivo vs DISH?


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## L3G3ND (Mar 2, 2011)

do you think the lower court will find that dish's workaround still infringes?


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Then just show me one time where they said it, just one.
> 
> And show me just one time where the CAFC mentioned it, just one.


Do you agree that E* is appealing the old injunction now? Do you also agree the new injunction shared the same items in the old one?

Therefore when E* is appealing the interpretation of the same items, of course they do so against both injunctions at the same time. I am not going to quote you because I have no time to go back dig up all the files, I only need to ask for some common sense.

The majority never said E* did not appeal the new injunction in time this time, they only said E* missed it last time. The fact they are silent on the new injunction is an indication that there is no need to respond, if once one item of it is vacated, the whole thing needs to be crafted again by Judge Folsom, if he sees the need for it after figuring out whether there is still infringement or not.

The fact we have a sizable dissent agreeing with me completely does not give you a claim of surpriority, consider that I am no lawyer and five senior level CAFC judges agreed with me, the other side has a few newly joined district judges to tip the balance.

It is also well established that district court judges are much less familiar with patent issues since on average only 3 to 5% of their cases are patent related, while 40% of the CAFC judges' cases are.

I am not saying I do not recognize the ruling, only that you are far from being so right than me, consider that you are an attorney.


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## dgordo (Aug 29, 2004)

L3G3ND said:


> what do you predict for the future of Tivo vs DISH?


Several more years of court battles.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> Do you agree that E* is appealing the old injunction now? Do you also agree the new injunction shared the same items in the old one?
> 
> Therefore when E* is appealing the interpretation of the same items, of course they do so against both injunctions at the same time. I am not going to quote you because I have no time to go back dig up all the files, I only need to ask for some common sense.
> 
> The majority never said E* did not appeal the new injunction in time this time, they only said E* missed it last time. The fact they are silent on the new injunction is an indication that there is no need to respond, if once one item of it is vacated, the whole thing needs to be crafted again by Judge Folsom, if he sees the need for it after figuring out whether there is still infringement or not.


Unless of course you can show me just one instance where DISH has challenged the language of the "new" injunction this argument isn't valid. The language is the same, you dont get another chance at that which you waived.


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## jacmyoung (Sep 9, 2006)

dgordo said:


> Unless of course you can show me just one instance where DISH has challenged the language of the "new" injunction this argument isn't valid. The language is the same, you dont get another chance at that which you waived.


If E* had not challenged the new injunction, the majority would not have vacated the preapproval provision. Show me where one cannot challenge an injunction just because it contained the same provisions as one before? Even the majority could not say so, they could only say E* did not appeal last time, in fact no one, not the majority, not TiVo nor Judge Folsom even remotely said E* could not challenge the new injunction.

I have another point to make. Although you insisted the majority did not disagree with Judge Folsom's contention that he could still find violation even if there was no infringement, the majority did dismiss such contention, but in the most subtle way.

To understand this, one must be familiar with what was Judge Folsom's basis for making the above argument. In his contempt ruling, he offered a single reason, according to him, when it came to the finding of violation of an injunction, it was not specific to patent law (the federal circuit law), therefore only his regional circuit law (which does not require infringement because it is not patent related) would apply. Below is the majority's rebuttal:



> The criteria for adjudicating a violation of a prohibition against continued infringement by a party whose products have already been adjudged to be infringing is a matter of Federal Circuit law.


Therefore the majority also dismissed the sole basis Judge Folsom used to argue that he could still find violation without infringement, because the federal circuit law is very clear, no infringement, no violation of an injunction against infringement. The reason why Judge Folsom argued above was precisely that he knew the Federal Circuit Law, once applied, his above contention would be defeated.

Now again, once the preapproval provision was vacated, the majority needed not to say more, the new injunction was made ineffective, it will be at Judge Folsom's hand to decide what to do. The majority basically give him a face saving way out on that above point which no one could support.

Now that we know there is not an effective injunction, we also know that infringement finding was vacated, there will not be another injunction for some time, because the process of seeking a permanent injunction, which TiVo said they looked forward to, takes time. The court must first find infringement before deciding whether to issue a permanent injunction. Which was why I specuated earlier the likely process that will follow at the district court next.

What both E* and TiVo had said was, they would seek the most rapid way to get down to it.


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## SayWhat? (Jun 7, 2009)

Back and forth.

Tit for tat.

Yes, they did.

No, they didn't.

Yes, they will.

No, they won't.

Bottom line, nobody really knows anything. Everything here is all speculation and conjecture. It don't even seem like Dish, TiVo and/or the courts know what anybody else is saying.

And I STILL have no idea what the supposed infraction(s) is/are/were. I'm not sure anybody else does either.


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## Curtis52 (Oct 14, 2003)

dgordo said:


> Unless of course you can show me just one instance where DISH has challenged the language of the "new" injunction this argument isn't valid. The language is the same, you dont get another chance at that which you waived.


There is only one injunction. The injunction was amended to add a pre-approval requirement. There is no new injunction. There is only an amended injunction.

"the court amended its earlier injunction, requir- 
ing EchoStar to seek the court's approval before imple- 
menting future noninfringing workarounds to its DVR 
software." ​


----------



## dgordo (Aug 29, 2004)

Curtis52 said:


> There is only one injunction. The injunction was amended to add a pre-approval requirement. There is no new injunction. There is only an amended injunction.
> 
> "the court amended its earlier injunction, requir-
> ing EchoStar to seek the court's approval before imple-
> ...


Thank you, that was exactly my point and why I put new in "". You dont get a second bite at an challenging the language of an injunction just the amended part.


----------



## jacmyoung (Sep 9, 2006)

Curtis52 said:


> There is only one injunction. The injunction was amended to add a pre-approval requirement. There is no new injunction. There is only an amended injunction.
> 
> "the court amended its earlier injunction, requir-
> ing EchoStar to seek the court's approval before imple-
> ...


The amended injunction was different than the original injunction, "new" and "old" are just layman's term to point out they were different. No one, not the majority, not TiVo nor Judge Folsom ever contended that E* was precluded from appealing the amended injunction, or part of it.

The majority knew "Federal Circuit Law" does not permit an injunction to prohibit design around. They knew if the original injunction, interpreted in the way Judge Folsom did, would have just done that, to prohibit design around. Since they agreed with Judge Folsom's interpretation, they also agreed the injunction was wrong. Only that E* failed to appeal the wrong injunction last time.

Since the preapproval provision was stuck down, if such amended injunction still exists, it is identical to the original therefore must also be wrong. They simply cannot uphold an injunction when they have already concluded it is wrong, even though they declined to say it. But if E*'s attorneys are any good hopefully they will see it and ask the CAFC to say it, or at least ask the Supreme Court to say it for them.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> If E* had not challenged the new injunction, the majority would not have vacated the preapproval provision. Show me where one cannot challenge an injunction just because it contained the same provisions as one before? Even the majority could not say so, they could only say E* did not appeal last time, in fact no one, not the majority, not TiVo nor Judge Folsom even remotely said E* could not challenge the new injunction.
> 
> I have another point to make. Although you insisted the majority did not disagree with Judge Folsom's contention that he could still find violation even if there was no infringement, the majority did dismiss such contention, but in the most subtle way.
> 
> ...


I guess the majority must have been confused then when they said this:

We note, however, that, although we have
strongly discouraged judicial restraint of noninfringing
activities, Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d
1342, 1367 (Fed. Cir. 1998), we have never barred it
outright and instead have repeatedly stated that district
courts are in the best position to fashion an injunction
tailored to prevent or remedy infringement. See Joy
Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 777 (Fed. Cir. 1993).


----------



## jacmyoung (Sep 9, 2006)

dgordo said:


> I guess the majority must have been confused then when they said this:
> 
> We note, however, that, although we have
> strongly discouraged judicial restraint of noninfringing
> ...


Which may explain why the majority did not lift the stay of the amended injunction, if it even exists. Because if they admit they strongly discourage such injunction, they cannot logically then reinstate it, it will be hypocrisy at its most obvious.


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## peak_reception (Feb 10, 2008)

> They simply cannot uphold an injunction when they have already concluded it is wrong, even though they declined to say it.


No one who counts has concluded that the injunction is "wrong" in any way except for the pre-approval requirement which is going to be taken out now. Nothing else will be changed. The CAFC majority opinion (the one that counts) is that there is a time and place for one party or the other to challenge an injunction, and that opportunity has come and gone.


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## jacmyoung (Sep 9, 2006)

> 10 We do not agree with the dissent's suggestion that the "disablement provision" is limited only to products that had been placed with end users. Dissent at 5-6. On the contrary, the district court and the parties have thus far referred to both directives of that provision, i.e., that relating to units placed with end users as well as that on new placements, together as the "disablement provision," and the district court imposed sanctions for the violation of the entire "disablement provision."


That is incorrect. TiVo initially asked recall of all named DVRs, including those still in the warehouse not placed with the end users. Judge Folsom agreed with E* to limit the disabling provision to only those already placed with the end users. This much even TiVo did not dispute, in fact TiVo even said the provision did not prevent design around for the new placements. The majority was factually incorrect. Which was why the dissent pointed out, because the disabling and the not enabling lauguages are identical, the interpretation of it goes to E* not TiVo because it conformed to what Judge Folsom had agreed with E*.

Because the issue here is about whether E* had reasonably interpreted the injunction to mean they could re-enable the DVRs with non-infringing software, it is irrelevant whether E* should have appealed it, E* could not appeal it if they did not believe the injunction needed appealed.


----------



## jacmyoung (Sep 9, 2006)

peak_reception said:


> No one who counts has concluded that the injunction is "wrong" in any way except for the pre-approval requirement which is going to be taken out now. Nothing else will be changed. The CAFC majority opinion (the one that counts) is that there is a time and place for one party or the other to challenge an injunction, and that opportunity has come and gone.


Wrong in a sense that had E* appealed it last time they would have struck it down because they agreed they strongly discourage such thing. Can they now reinstate it even if it still exists? When they say they strongly discourage such?


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> Wrong in a sense that had E* appealed it last time they would have struck it down because they agreed they strongly discourage such thing. Can they now reinstate it even if it still exists? When they say they strongly discourage such?


You dont get to ignore the end of the sentence just because it proves you are wrong.

We note, however, that, although we have
strongly discouraged judicial restraint of noninfringing
activities, we have never barred it
outright and instead have repeatedly stated that district
courts are in the best position to fashion an injunction
tailored to prevent or remedy infringement.


----------



## jacmyoung (Sep 9, 2006)

dgordo said:


> You dont get to ignore the end of the sentence just because it proves you are wrong.
> 
> We note, however, that, although we have
> strongly discouraged judicial restraint of noninfringing
> ...


I don't need to pay attention to it, because I only asked you did you think when they had already admitted that the injunction, interpreted the way Judge Folsom insisted, would have been "strongly discouraged", that they would, with a straight face, still have reinstated such injunction that they said they strongly discouraged?


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> I don't need to pay attention to it, because I only asked you did you think when they had already admitted that the injunction, interpreted the way Judge Folsom insisted, would have been "strongly discouraged", that they would, with a straight face, still have reinstated such injunction that they said they strongly discouraged?


yes, think they would have because they made it clear that district courts are in the best position to fashion an injunction tailored to prevent or remedy infringement.


----------



## jacmyoung (Sep 9, 2006)

L3G3ND said:


> do you think the lower court will find that dish's workaround still infringes?


I believe the district court must found the workaround non infringing, whether it will do it or not I don't know. If Judge Folsom could ignore the statistical estimation method all together last time, even though now he can no longer ignore it, who knows what else he would simply try to ignore.

Since you have been going on a philosophical dance how TiVo being a little guy was victimized by this giant thief, let me try my own philosophical dance too.

TiVo had time and time painted the picture that they were the smartest guy when it came to DVR technologies, so much so that Charlie had to pay and pay big or else. TiVo during the trial even said start code detection was the genius of TiVo, without which a DVR would not work.

But Charlie proved them wrong, his guys found a new way to do DVR, called statistical estimation. The two methods could not be farther apart from each other, one relies on detecting the precise location data to do DVR functions, the other relies on statistical estimation, which is the opposite of using precise data points.

But TiVo now says hey it is the same, not different at all, why? Because we are the genius, you are not. So you must pay and pay big.

If you were Charlie and you have ample means to clear your name, would you not do the same he is doing? Especially when you consider he has finally begun to win this game of proving who is the only "genius" thing?


----------



## bobukcat (Dec 20, 2005)

scooper said:


> That was such a crock of an infringment hearing that the CAFC just VACATED that decision and remanded it back for a proper hearing.


I agree, the Majority basically ruled that the District Court had only examined "random samples" of the code to determine if the new s/w was no more than colorably different and that they must examine all pieces to determine if the merits of all claims are met or not to determine if infringement still exists. If the changed "product" is more than colorably different a new trial would be required to determine infringement - that determination should not take place in a contempt hearing in that case.

How that effects the injuction(s), etc. I have no idea because I can't understand half of the legal-speak in these documents, much less how to interpret it. I imagine will see some more paperwork filed within the next two weeks, but I could be wrong about that too!

As for the "Big Business stiffs the little guy" assertions some make, I would say that E* should definitely be held accountable for reasonable damages while infringing products were / are being used by customers. I would argue though that just because some one or company breaks a law they should then be denied due process and considered to be guilty, or even more likely to be guilty, of breaking the same law again.

I think there is also a lesson to be had in all this for patent holders: there is a fine line between holding out for higher licensing fees and when a company will just spend money to design around your patent or litigate the snot out of you. I know there's no real evidence that any meaningful negotiations took place in this particular case bit I still have to think that a licensing agreement would be way better for both parties involved but not the lawyers, if you know what I mean!


----------



## spear61 (Sep 19, 2004)

Back to Contempt;

The dissenters position is that the judge defined " infringing devices" differently when describing boxes customers are using vs boxes "on the shelf" and go on to say the Supreme Court has specified that a definition can only define one object, and therefore, Dish/Echostar should not be in comtempt.

I wonder if that it the type of thing they consider when deciding what appeals to consider?


----------



## jacmyoung (Sep 9, 2006)

"spear61" said:


> Back to Contempt;
> 
> The dissenters position is that the judge defined " infringing devices" differently when describing boxes customers are using vs boxes "on the shelf" and go on to say the Supreme Court has specified that a definition can only define one object, and therefore, Dish/Echostar should not be in comtempt.
> 
> I wonder if that it the type of thing they consider when deciding what appeals to consider?


The dissent had listed case law after case law, Supreme Court ruling after ruling to gave Charlie the best chance to gain a review. Charlie stands in his best chance in life to get his company names on one of those Supreme Court cases and be remembered and cited over and over regardless the outcome. I can only imagine he is having the most fun in his life right now, even more so than when he was kicked out of the casinos for card counting back then


----------



## Voyager6 (Apr 17, 2006)

Some important quotes from Judge Dyk's dissent. All reasons for a Supreme Court review. Judge Folsom's injunction does not specifically prohibit modifying the software to make it non-infringing.


> Indeed, in our own decision in Abbott, such an appeal had been taken, and the injunction had been affirmed, yet *we reversed the contempt finding on the ground that the injunction did not clearly prohibit the conduct on which the contempt allegation was founded.* See 503 F.3d at 1377. Thus, the burden lies on the party seeking to enforce the order to "establish that . . . the order the contemnor failed to comply with is clear and unambiguous . . . ," King v. Allied Vision Ltd., 65 F.3d 1051, 1058 (2d Cir. 1995),7 and "[t]he failure of the equity court to spell out in a decree's text the specific obligations resting upon the defeated litigant is fatal to any contempt proceeding," H.K. Porter, 568 F.2d at 27.





> Here we are dealing with a challenge to the application of the injunction, not a challenge to its validity.





> Ironically, nothing more clearly demonstrates the majority's error than the fact that the very circuit cases on which the majority relies recognize the essential principle that *contempt is improper where the injunction does not clearly prohibit the accused conduct*. The cases even characterize this principle as "well settled."


----------



## Curtis52 (Oct 14, 2003)

Voyager6 said:


> Judge Folsom's injunction does not specifically prohibit modifying the software to make it non-infringing.


That isn't the reason for the contempt finding. They were in contempt because they didn't disable the DVRs.


----------



## scooper (Apr 22, 2002)

bobukcat said:


> I agree, the Majority basically ruled that the District Court had only examined "random samples" of the code to determine if the new s/w was no more than colorably different and that they must examine all pieces to determine if the merits of all claims are met or not to determine if infringement still exists. If the changed "product" is more than colorably different a new trial would be required to determine infringement - that determination should not take place in a contempt hearing in that case.


Absolutely - I was absolutely floored that Folsom could not find that "more than colorably different" - the 2 methods have almost nothing to do with each other - I pretty much lost all respect for him after that ruling.



bobukcat said:


> As for the "Big Business stiffs the little guy" assertions some make, I would say that E* should definitely be held accountable for reasonable damages while infringing products were / are being used by customers. I would argue though that just because some one or company breaks a law they should then be denied due process and considered to be guilty, or even more likely to be guilty, of breaking the same law again.


Again - I agree with you. But the "pre-approval requirement" was way out of proportion for this stage - Echostar had only just put out their initial try of a workaround out.



bobukcat said:


> I think there is also a lesson to be had in all this for patent holders: there is a fine line between holding out for higher licensing fees and when a company will just spend money to design around your patent or litigate the snot out of you. I know there's no real evidence that any meaningful negotiations took place in this particular case bit I still have to think that a licensing agreement would be way better for both parties involved but not the lawyers, if you know what I mean!


I think Tivo seriously underestimated what Echostar / Dish / Charles Ergen would be willing to spend on this  OTOH, for the Dish perspective - all this delay has enabled them to get close enough to put away all the infringing DVRs with their now current generation, while making money doing it. In the long run - I don't see Tivo living too much past the expiration of their patents - Echostar has a solid (although sometimes a bit tumultous) core business away from DVR technology.

Tom Rogers (of Tivo) is not even within 2-4 decimal points of the worth of Ergen.


----------



## jacmyoung (Sep 9, 2006)

scooper said:


> Absolutely - I was absolutely floored that Folsom could not find that "more than colorably different" - the 2 methods have almost nothing to do with each other - I pretty much lost all respect for him after that ruling.


It is evident to me now many judges do not necessarily operate on legal principle, rather on who they like or do not like. Aside from the above point, I also pointed out Judge Folsom was clearly wrong by arguing that when it came to violation, the CAFC law did not apply, which was clearly untrue even by the en banc majority.

Judges Mayer and Lourie operated similarly, initially they did not find anything wrong with what Judge Folsom ruled at all, now they had a change of heart, reversed themselves on the colorable difference test and the preapproval requirement by Judge Folsom. But why did they do so if they knew what they were talking about last time?

Well here is my speculation. Earlier I also ponited out this en banc included several new judges who were district judges recently joined the CAFC. I think Judges Lourie and Mayer had difficulties getting the majority to agree with them, so they decided to gave up some to get some not out of principle but only to get to the guy they did not like. Those district judges naturally tend to root for Judge Folsom, one of their fellow district court senior colleagues. Even so Judges Mayer and Lourie still demonstrated the same lack of principle by insisting the $90M sanctions were proper, even though they did not dispute the dissent's discovery that such sanctions applied to the VIP DVRs also, something no one could have expected, not even the TiVo supporters here can have a good explanation.

The point I am making is, by now we should have learned that arguing on the merits does not always get you where you want to be. Apparently it is okay for judges to ignore facts. So why should we be held to a higher standard?

In response to such nonsense, you know what I would do if I were E*? I would simply motion Judge Folsom. I would make a few points. First I would argue his injunction is no longer workable since one part of it was vacated, additionally since his infringement finding was also vacated, he should vacate his own injunction.

Alternatively I would ask him to at least stay his own injunction. The reason is simple, last time when E* requested him to review the second workaround for preapproval, while he said he did not have time, for unknown reason he decided to stay his own injunction, despite the fact the injunction was already stayed by the CAFC. So whatever the basis he had at that time to stay his injunction, additional justifications most certainly have added to that unknown basis now. Let's see what he says.

In the past I used to think but you don't want to upset the judges, be nice. Now it is clear to me being nice does one no good, so why bother? If the judges like to operate on emotion level not on facts, maybe you just have to rub that in a little more for them. Who knows maybe they will blow up and show their true selves and that might help E*.


----------



## L3G3ND (Mar 2, 2011)

No question Ergen > Tom Rogers DUH. 

"But Charlie proved them wrong, his guys found a new way to do DVR, called statistical estimation. The two methods could not be farther apart from each other, one relies on detecting the precise location data to do DVR functions, the other relies on statistical estimation, which is the opposite of using precise data points." LOL at thinking these are markedly different. Ultimately we'll find out if they decide that this is legitimately different.


----------



## L3G3ND (Mar 2, 2011)

do you short tivo stock lOL


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## Curtis52 (Oct 14, 2003)

It seems odd that the $90 million would go to TiVo instead of the court:

On the record before us the $400,000 suspended sanction cannot be justified as a coercive sanction either. If the fine, or any portion of the fine, is coercive, it should be payable to the court, not General Signal. See Winner Corp. v. H.A. Caesar & Co., 511 F.2d 1010, 1015 (6th Cir.1975) (purpose of limiting prevailing party to actual losses in civil contempt actions would be defeated by allowing prevailing party to collect coercive civil contempt fine); Woods v. O'Brien, 78 F.Supp. 221, 222-23 (D.Mass.1948) (compensatory portion of contempt award payable to complainant, coercive portion payable to the United States if defendant failed to comply with court order within 30 days).​
GSC v. Donallco


----------



## jacmyoung (Sep 9, 2006)

Curtis52 said:


> It seems odd that the $90 million would go to TiVo instead of the court:
> 
> On the record before us the $400,000 suspended sanction cannot be justified as a coercive sanction either. If the fine, or any portion of the fine, is coercive, it should be payable to the court, not General Signal. See Winner Corp. v. H.A. Caesar & Co., 511 F.2d 1010, 1015 (6th Cir.1975) (purpose of limiting prevailing party to actual losses in civil contempt actions would be defeated by allowing prevailing party to collect coercive civil contempt fine); Woods v. O'Brien, 78 F.Supp. 221, 222-23 (D.Mass.1948) (compensatory portion of contempt award payable to complainant, coercive portion payable to the United States if defendant failed to comply with court order within 30 days).​
> GSC v. Donallco


Judge Folsom did make it clear that his $90M sanction was to "promote" E*'s compliance of his injunction therefore a coersive sanction, the above is a great find. But so many oddities had already been pointed out about this majority ruling, finding another oddity should not be a surprise.

Now the quote below refutes dgordo's contention that the majority "did not disagree with Judge Folsom's assertion that he could still find violation even if there was no infringement."



> Conversely, when a court concludes that there are no more than colorable differences between the adjudged infringing product and modified product, a finding that the newly accused product continues to infringe the relevant claims is additionally *essential* for a violation of an injunction against infringement.


Unlike the footnote dgordo cited, the above quote is not in a footnote. The majority refuted Judge Folsom's assertion that finding of contempt had nothing to do with the federal circuit law, only his regional circuit law mattered, therefore infringement was not required to find contempt, as I quoted in an earlier post that yes, in patent cases, a violation of injunction is indeed governed by the federal circuit law, not regional circuit law. In the above quote the majority once again affirmed what the federal circuit law is, that no infringement, no violation of an injunction against infringement.

Unless dgordo wants to argue the injunction was NOT an injunction against infringement.

So how can we then explain why the majority still affirmed the violation ruling while vacating the infringement finding? Another oddity don't you think? Now I can understand why the dissent said, the disabling and infringement provisions must both be violated for a contempt. The majority cannot affirm the earlier, once they vacated the latter.


----------



## dgordo (Aug 29, 2004)

When you predict every result wrong its only natural to claim that the judges are stupid and that you know more about the law then they do. Lets be honest, you have never been wrong, the judges just don't understand the law like you do. The majority is always wrong but those dissenters are pure genius. 

And since you asked, the injunction serves more than one function. The disablement clause was remedial in nature, not preventive. 

Regardless, no judge will ever rule on this issues since DISH failed to appeal it. You can claim all you want that they are now challenging it, but the reality is they cant. As Curtis helped me point out, there is no new and old, there is only an amended. That is why Dish was only allowed to challenge the part that was added. The disablement provision will never get a hearing. At this point its all Judge Folsom's, and only he can change it.


----------



## Curtis52 (Oct 14, 2003)

Yep. "Injunction" is the name of the document. It can contain several distinct and unrelated proscriptions (injunctions).


----------



## jacmyoung (Sep 9, 2006)

"Curtis52" said:


> Yep. "Injunction" is the name of the document. It can contain several distinct and unrelated proscriptions (injunctions).


"Injunction against infringement" is the key term here, not just any "injunction". Judge Folsom had already tried to argue like you did but failed by the majority dismissing it.

As far as dgordo your assertion that I was wrong on every prediction. First off I had not predicted anything lately until two days ago when I predicted a likely next course of actions at the district court. You clearly can't even tell a difference between an assertion and a prediction, are you really a lawyer?

Secondly when it comes to the assertions I made, I can think of at least 4 assertions I made that were supported by this majority ruling alone.


----------



## James Long (Apr 17, 2003)

Please keep the personal comments OUT of the thread if you wish to continue discussing this topic. Talk about the case, not each other.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> "Injunction against infringement" is the key term here, not just any "injunction". Judge Folsom had already tried to argue like you did but failed by the majority dismissing it.





Curtis52 said:


> Yep. "Injunction" is the name of the document. It can contain several distinct and unrelated proscriptions (injunctions).


An injunction is the name of a document. An injunction as curtis and I tried to explain, can be created to accomplish more than one purpose. The disablement clause, which the majority never explicit addressed, was remedial.


----------



## jacmyoung (Sep 9, 2006)

So what else is about this case? Now that Curtis has pointed out the $90M should go to the United States not TiVo, maybe Charlie should just propose to have the money paid to the CAFC and the E. TX court. As to how the two should divide the money I guess they can work out a settlement

BTW the above is just a proposal, not a prediction.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> First off I had not predicted anything lately until two days ago when I predicted a likely next course of actions at the district court. You clearly can't even tell a difference between an assertion and a prediction, are you really a lawyer?


Predictions usually accompany evidence, assertions don't. So I guess you are correct.


----------



## jacmyoung (Sep 9, 2006)

"dgordo" said:


> An injunction is the name of a document. An injunction as curtis and I tried to explain, can be created to accomplish more than one purpose. The disablement clause, which the majority never explicit addressed, was remedial.


Why did the majority never explicitly address it? Because they couldn't, so they declined to address it, or to put it bluntly, ignored it. Not the only thing they ignored of course.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> Why did the majority never explicitly address it? Because they couldn't, so they declined to address it, or to put it bluntly, ignored it. Not the only thing they ignored of course.


I'm confused, now they ignored it? Before you said they refuted it? I guess they refuted it by ignoring it?

Obviously they didnt explicitly address it because Dish failed to raise the objection timely.


----------



## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Predictions usually accompany evidence, assertions don't. So I guess you are correct.


The 4 assertions I mentioned earlier that were supported by the majority, there are of course evidence that they are supported by the majority, not merely some claim.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> The 4 assertions I mentioned earlier that were supported by the majority, there are of course evidence that they are supported by the majority, not merely some claim.


So they weren't really assertions?


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> I'm confused, now they ignored it? Before you said they refuted it? I guess they refuted it by ignoring it?


Just like they refuted the claim that the sanctions were wrong by ignoring the fact sanctions were wrongly applied to the VIP DVRs. I know it defies logic and is confusing, I don't blame you.

They refuted Judge Folsom's assertion the violation was not governed by the CAFC law, they then ignored its own CAFC law by supporting him on the violation.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> An injunction is the name of a document. An injunction as curtis and I tried to explain, can be created to accomplish more than one purpose. The disablement clause, which the majority never explicit addressed, was remedial.


Does this piece of document still exist, as issued by Judge Folsom in 3/10?


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## dgordo (Aug 29, 2004)

jacmyoung said:


> Just like they refuted the claim that the sanctions were wrong by ignoring the fact sanctions were wrongly applied to the VIP DVRs. I know it defies logic and is confusing, I don't blame you.
> 
> They refuted Judge Folsom's assertion the violation was not governed by the CAFC law, they then ignored its own CAFC law by supporting him on the violation.


You are referring to the infringement provision. The court went to great lengths to include headings that describe what they are discussing. They also, as noted in a footnote, express CAFC law on the separate remedial issue;

"We note, however, that, although we have strongly discouraged judicial restraint of noninfringing activities, we have never barred it outright and instead have repeatedly stated that district courts are in the best position to fashion an injunction tailored to prevent or remedy infringement."

Notice how they use the word remedy, because the disablement clause of the injunction (a piece of paper) was made to be remedial.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> Does this piece of document still exist, as issued by Judge Folsom in 3/10?


Clearly there is still an injunction. You are the only one who has expressed a contrary opinion. IMO the injunction is the same as it was then with the pre-approval provision removed. Whether Judge Folsom has to physically create a new document or not is irrelevant as the language will remain the same as the original injunction rendering the disablement provision unchallengeable.


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## jacmyoung (Sep 9, 2006)

"dgordo" said:


> Clearly there is still an injunction. You are the only one who has expressed a contrary opinion. IMO the injunction is the same as it was then with the pre-approval provision removed. Whether Judge Folsom has to physically create a new document or not is irrelevant as the language will remain the same as the original injunction rendering the disablement provision unchallengeable.


If he does not have to, and if the CAFC lifts the stay of that injunction, what would that piece of document look like? As issued by Judge Folsom in 3/10? As issued by him in 06? Don't they have to refer to a piece of document? Obviously they cannot refer to that piece of document issued in 06, neither can they refer the piece of document issued in 03/10. I don't think you then suggest the CAFC would draft a document then refer to it when they lift the stay?

Clearly E* has said they would ask Judge Folsom to dissolve that injunction, even though they also said they would seek a stay by the Supreme Court. I argued that the injunction was no longer a valid one, since you want to be picky, how about I say that piece of document issued in 3/10 was no longer a valid piece of document? Would that satisfy you?


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## Curtis52 (Oct 14, 2003)

The US Constitution has been amended many times. There is still one Constitution.


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## jacmyoung (Sep 9, 2006)

"Curtis52" said:


> The US Constitution has been amended many times. There is still one Constitution.


You are then confusing the law with an order. There is not currently a valid order any layman can read and follow, and follow to a T, as you so insist, without regard of the law.

This is again called on alternative argument. Not that I agree with you on the "too late to appeal" theory, but if I apply such theory, I manage to defeat your other contention that there current still is some valid order in place. Since an "order" and an "injunction" are interchangeable, there is currently not a valid injunction in place.


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## phrelin (Jan 18, 2007)

Oddly when I read the Court's statement near the beginning and at the end, I think they think there is something approximating an injunction:








Otherwise, why would they say:


> However, we once again affirm the district court's finding of contempt of the disablement provision of the permanent injunction and its sanctions award in its entirety....
> 
> ...We affirm the district court's finding of contempt of the disablement provision of the court's injunction and the sanctions imposed by the district court.


But, I probably don't understand what you guys are talking about.


----------



## jacmyoung (Sep 9, 2006)

phrelin said:


> Oddly when I read the Court's statement near the beginning and at the end, I think they think there is something approximating an injunction:
> 
> 
> 
> ...


We affirm the "finding of the contempt of..." is not the same as we affirm "the injunction". There is not a fine line between a "finding" and "an injunction", they are two entirely different things.

The majority did the very best they could to save Judge Folsom's face when they disagreed with him, while hammered E*'s contentions when they did not agree, in the case where they could not even disagree with E*, they simply said it did not matter because we decided to modify KSM.

In reality they did not modify KSM, KSM required to first find only colorable difference by clear and convincing evidence, if found, then prove infringement by clear and convincing evidence, if not found, then the defendants deserved a new trial.

The majority did not really change anything in all practicality, they said they changed it so they did not have to make E* look good by conceding to E*'s argument.


----------



## dgordo (Aug 29, 2004)

jacmyoung said:


> You are then confusing the law with an order.


Curtis can correct me if I'm wrong, but I don't believe that he was saying that the constitution is an order.


----------



## dgordo (Aug 29, 2004)

http://www.lightreading.com/document.asp?doc_id=207082&site=lr_cable&f_src=lightreading_gnews



> What Is Dish's Magic DVR Number?
> 
> Dish Network Corp. could soon find itself in a financial hole after an en banc panel ruled this week that the satellite TV giant must disable older MPEG-2-based DVRs that infringe on TiVo Inc. "Time Warping" patent. How many boxes Dish may have to hamstring will determine just how deep that hole really goes.
> 
> ...


Makes it sound like Dish has already requested a stay?


----------



## jacmyoung (Sep 9, 2006)

dgordo said:


> Curtis can correct me if I'm wrong, but I don't believe that he was saying that the constitution is an order.


If so he was off the subject because we were talking about the order, whether the order, supposedly it said it was permanent, actually existed or not.



dgordo said:


> http://www.lightreading.com/document.asp?doc_id=207082&site=lr_cable&f_src=lightreading_gnews
> 
> Makes it sound like Dish has already requested a stay?


If so it should not come as a surprise at all, because they said they would do so. That however does not change the fact currently there is not a valid order, which according to you is just a piece of document, that someone can read and follow to a T, without regard of the law.

You and Curtis said it, I did not.

The benefit of the debate is I learn more as the debate goes on. For example, initially I speculated that the way E* said they would ask the district court to dissolve the injunction was to first argue that there is no longer infringement, so after a summary judgment of no infringement, the court should dissolve the injunction.

Now I speculate that what E* meant was they were going to ask the district court to dissolve the injunction simply because after a part of it was vacated, it was no longer a valid order as issued in 3/10. That was the only order in existence, and it is no longer a valid one, therefore should be dissolved.


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## dgordo (Aug 29, 2004)

jacmyoung said:


> If so it should not come as a surprise at all, because they said they would do so. That however does not change the fact currently there is not a valid order, which according to you is just a piece of document, that someone can read and follow to a T, without regard of the law.
> 
> You and Curtis said it, I did not.
> 
> ...


If the injunction really wasn't valid it wouldn't need to be dissolved as it would already be gone. Moving to dissolve something that doesnt exist would be odd.


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## phrelin (Jan 18, 2007)

jacmyoung said:


> We affirm the "finding of the contempt of..." is not the same as we affirm "the injunction". There is not a fine line between a "finding" and "an injunction", they are two entirely different things.
> 
> The majority did the very best they could to save Judge Folsom's face when they disagreed with him, while hammered E*'s contentions when they did not agree, in the case where they could not even disagree with E*, they simply said it did not matter because we decided to modify KSM.
> 
> ...


Yes but....

They affirmed the finding of contempt and the sanctions imposed. What's left to worry about?


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## jacmyoung (Sep 9, 2006)

phrelin said:


> Yes but....
> 
> They affirmed the finding of contempt and the sanctions imposed. What's left to worry about?


Nothing, they were the end of it. The agony is over knowing this was all they could muster. From now on they will have no more infringement to prove, no more you-failed-to-appeal excuse, no longer can they use alternative theories. The playing field is leveled.

They did not fight a good fight but they have to start to fight a good fight now. All the tricks used are learned and can now be used against them, at least I hope E* did learn, unless Charlie paid his attorneys too little so they held back hoping to drag it on to get paid more

Remember when dgordo and Curtis argued the order was just a piece of document to be followed to a T, without the regard of the law? When they rely on a theory to the extreme, it can be used against them.

Dish did use that pre-approval provision, an extreme measure, against them, Dish motioned for the court to pre-approve, knowing the court could not arrange time to do so, in the end the majority had no choice but vacate that extreme measure, now Dish can argue that the injunction must be dissolved. There are many such examples you would have noticed since you followed this long discussion from the very beginning.


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## Curtis52 (Oct 14, 2003)

When Prohibition ended, the Constitution was amended. It wasn't dissolved.


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## Voyager6 (Apr 17, 2006)

Curtis52 said:


> That isn't the reason for the contempt finding. They were in contempt because they didn't disable the DVRs.


Which then sets up the question as to why would E* have to disable non-infringing devices? This clearly shows that Folsom's injunction was flawed. Modifications were not prohibited by his injunction. And yet in his contempt ruling, he is insisting that the DVR's be shut down even if they are no longer infringing. This is clearly against prior case law.

This remand back to Folsom to determine if E*'s modifications are "colorably different" will set up a crazy situation. Folsom (or his successor) will be in a position to say that the mods are significant enough to warrant a new trial but still insisting that E* disable these DVR's because Folsom wants them shut down.


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## jacmyoung (Sep 9, 2006)

Curtis52 said:


> When Prohibition ended, the Constitution was amended. It wasn't dissolved.


The patent law has not changed or been amended during the course of this litigation, or at least not related to this case. On the other hand the prohibition in this case did not end, only the original order ended once it was amended, for the first time, then the amended order ended again when a part of it was vacated. It may take E*'s motion to the district court for it to be officially dissolved, or may be not.

When E* said they would motion to have the injunction dissolved, they did not say where they would file such motion. They could probably also file such motion to the CAFC, after all it was the CAFC that had unanimously vacated the preapproval provision, therefore invalidated that piece of document issued in 3/10.

In any event the CAFC cannot lift the stay of that piece of document, if they do so and people read it, they would interpret it to mean preapproval is required, when in fact it was vacated.


----------



## Curtis52 (Oct 14, 2003)

Voyager6 said:


> This remand back to Folsom to determine if E*'s modifications are "colorably different" will set up a crazy situation. Folsom (or his successor) will be in a position to say that the mods are significant enough to warrant a new trial but still insisting that E* disable these DVR's because Folsom wants them shut down.


Thus the appeal. That's what about half the appeal was about. Dish lost that argument.


----------



## jacmyoung (Sep 9, 2006)

Voyager6 said:


> Folsom (or his successor) will be in a position to say that the mods are significant enough to warrant a new trial but still insisting that E* disable these DVR's because Folsom wants them shut down.


That is why I said the same crap is learned not to happen again.

Once the injunction is dissolved, another order must wait until infringement is again found because the infringement finding was vacated.

In the new trial, E* will not be so foolish again to only focus on the "parse" limitation, but all others. The "audio and video data", the "temporarily store", the "source object", the "extract"...all gone. The mistake was they only raised such issues on appeal, not in front of Judge Folsom so he did not have to consider them. The majority on the merits panel ignored such newly raised issues, the en banc majority did not have to pay attention to such newly raised issues once they vacated the infringement finding.

The same mistake cannot happen again in a new trial, if it does happen again, E* only has itself to blame.


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## harsh (Jun 15, 2003)

Do they infringe? The court is not sure.

Did DISH willfully ignore the court's explicit instructions? Yes.

If the judge orders you to sit down and you stand defiant, that's contempt. It doesn't matter why the judge made the order.


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## jacmyoung (Sep 9, 2006)

"harsh" said:


> Do they infringe? The court is not sure.
> 
> Did DISH willfully ignore the court's explicit instructions? Yes.
> 
> If the judge orders you to sit down and you stand defiant, that's contempt. It doesn't matter why the judge made the order.


Except in this case ordering him to sit down was an illegal order when interpreted the way the judge said should be interpreted, the issue was he did not protest such order, so he was doomed.

Think about it for yourself, how often an ordinary citizen even knows very well what a judge does is even legally correct or not? How confident you are about your lawyer to know? To say that a judge can violate the law, if you miss your chance to protest, you must pay, that concept alone should scare the -&& out of most of us.


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## phrelin (Jan 18, 2007)

"jacmyoung" said:


> Nothing, they were the end of it. The agony is over knowing this was all they could muster. From now on they will have no more infringement to prove, no more you-failed-to-appeal excuse, no longer can they use alternative theories. The playing field is leveled.
> 
> They did not fight a good fight but they have to start to fight a good fight now. All the tricks used are learned and can now be used against them, at least I hope E* did learn, unless Charlie paid his attorneys too little so they held back hoping to drag it on to get paid more
> 
> ...


Then we're back to the real world. The listed devices are technologically irrelevant and within two years from being economically irrelevant. In fact, within two years the VIP series as we know it likely will become the "old" line of boxes replaced by "app" filled net enabled DVR-Sling boxes. And, as is true today, there will be hundreds of lawsuits and/or thousands of licensing agreements.

All this lawsuit has established is that the courts are not a very good place to resolve licensing disputes over the details of today's (well, really yesterday's) complex consumer technology.

Sent from my iPad using DBSTalk


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## scooper (Apr 22, 2002)

phrelin said:


> Then we're back to the real world. The listed devices are technologically irrelevant and within two years from being economically irrelevant. In fact, within two years the VIP series as we know it likely will become the "old" line of boxes replaced by "app" filled net enabled DVR-Sling boxes. And, as is true today, there will be hundreds of lawsuits and/or thousands of licensing agreements.
> 
> All this lawsuit has established is that the courts are not a very good place to resolve licensing disputes over the details of today's (well, really yesterday's) complex consumer technology.
> 
> Sent from my iPad using DBSTalk


Well Said.

In short - the courts don't move fast enough to be relevant.


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## P Smith (Jul 25, 2002)

phrelin said:


> Then we're back to the real world. The listed devices are technologically irrelevant and within two years from being economically irrelevant. In fact, within two years the VIP series as we know it likely will become the "old" line of boxes replaced by "app" filled net enabled DVR-Sling boxes. And, as is true today, there will be hundreds of lawsuits and/or thousands of licensing agreements.
> 
> All this lawsuit has established is that the courts are not a very good place to resolve licensing disputes over the details of today's (well, really yesterday's) complex consumer technology.


That's more broaden then that - not just in the area, but much widely - include DMCA and complicated computer/technological disputes. 
Those judges easy lost in nature of the lawsuits and totally relay to lawyers' wording and sometimes ignoring law of physics follow the papers with twisted logic.


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## jacmyoung (Sep 9, 2006)

Speaking of changing rules to meet the challenging real world of resolving dispute.

It seems clear that E* correctly interpreted KSM as far as what was the proper procedure in such a contempt process. The majority did not dispute it, instead they told E* we decided to change the rule a little because KSM was no longer suitable. After the rule change, E*'s correct interpretation of KSM no longer mattered. E* is now subject to the new rule.

But the conduct in question occurred when the rule did not change and KSM was still the rule of the CAFC, correct?

I can undestand if the rule change will impact any future review of such E*'s conduct if repeated again, but logic says the court may not retroactively apply a new standard to capture a conduct that was not improper based on the rule at the time.

I wonder if any lawyer would have a satisfactory answer to my above question.


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## Jim5506 (Jun 7, 2004)

I seems to me that the affirmation of disablement was a foregone conclusion since all it says is that the original sortware and hardware on the suspect receivers was assertained to be infringing, so they must be disabled.

HOWEVER, the next part, the remanding, has cast major doubt on the fate of those now nearly obsolete, possible no longer infringing units with new software.

If the judge finds the new software more than colorably different, the case dies.

If the judge finds they are not more than colorably different, Dish finishes their replacement and walks off into the sunset whistleing, maybe forking offer a little moola to TiVo to keep it alive for another year or two.

Thus the Judge must now decide if the software fixes the infringement of these obsolete dinosaurs.

Regardless of the judges decision, Dish has managed to string this tempest in a teapot out for so long that it is becoming irrelevant.


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## jacmyoung (Sep 9, 2006)

"Jim5506" said:


> I seems to me that the affirmation of disablement was a foregone conclusion since all it says is that the original sortware and hardware on the suspect receivers was assertained to be infringing, so they must be disabled.


Your above statement would have been spot on if the original software was not disabled, but it was disabled, then the new software was installed in its place.

The majority said it was not about disabling the infringing software, nor disabling the infringing hardware, rather "all DVR functionality", despite the fact this term never appeared in the injunction, the term it used was "the DVR functionality". Apparently according to them ALL means THE, THE means All.


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## Curtis52 (Oct 14, 2003)

Jim5506 said:


> If the judge finds the new software more than colorably different, the case dies.


Well, not completely. If more than colorably different there would be a new infringement action, either a summary judgment by the Judge or with a new trial with the possibility of a preliminary injunction. If there's a jury trial it would be abbreviated by res judicata and most things like claim construction and patent validity were already settled in the first trial. They would just need to look at the changes.

Also, Dish might decide they can't live with disabling millions of DVRs this summer.


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## jacmyoung (Sep 9, 2006)

"Curtis52" said:


> If there's a jury trial it would be abbreviated by res judicata and most things like claim construction and patent validity were already settled in the first trial. They would just need to look at the changes.


Not so, claim terms that did not have claim constructions last time maybe reviewed for constructions. There are several key terms not addresses in the last trial, such as "audio and video data" and "temporarily store". The terms never addressed or not settled before can be reviewed again, in the same manner those other terms were constructed last time, only this time the newly available definitions in the PTO reexamination history will be relied on to construct those not yet settled terms.


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## Tower Guy (Jul 27, 2005)

jacmyoung said:


> Speaking of changing rules to meet the challenging real world of resolving dispute.
> 
> It seems clear that E* correctly interpreted KSM as far as what was the proper procedure in such a contempt process. The majority did not dispute it, instead they told E* we decided to change the rule a little because KSM was no longer suitable. After the rule change, E*'s correct interpretation of KSM no longer mattered. E* is now subject to the new rule.
> 
> ...


The courts can't change the law, but the interpretation and implementation of the rules can be modified.


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## jacmyoung (Sep 9, 2006)

"Tower Guy" said:


> The courts can't change the law, but the interpretation and implementation of the rules can be modified.


No one said the majority attempted to change the law. Only Congress has that power. But the majority did not change the interpretation or implementation of the rule, in this case they simply changed the rule, established a new rule. A new rule can only be interpreted and implemented from the time it is established.


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## dgordo (Aug 29, 2004)

Ex post facto doesn't apply in civil cases, and even in criminal cases it is far from absolute.


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## jacmyoung (Sep 9, 2006)

The case in the E. TX is now back to life:



> Date Entered # Docket Text
> 04/25/2011 1042 NOTICE OF OPINION AND JUDGEMENT, dated 4/20/2011, from US Court of Appeals for Federal Circuit re 933 Notice of Appeal - PATENT CASE, filed by Dish Network Corporation, Echosphere Limited Liability Company, Echostar Satellite LLC, Echostar DBS Corporation, Echostar Communications Corporation ORDERING a Remand that is Essential to Recalculate the sanctions award (case reopened). (Attachments: # 1 FedCircuitopinion)(sm, ) (Entered: 04/25/2011)


What I tried to figure out is the following:

"ORDERING a Remand that is Essential to Recalculate the sanctions award."


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## Curtis0620 (Apr 22, 2002)

No Stay yet? clock is ticking.


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## jacmyoung (Sep 9, 2006)

dgordo said:


> Ex post facto doesn't apply in civil cases, and even in criminal cases it is far from absolute.


I wish you could say it in layman's term.


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## jacmyoung (Sep 9, 2006)

"jacmyoung" said:


> The case in the E. TX is now back to life:
> 
> What I tried to figure out is the following:
> 
> "ORDERING a Remand that is Essential to Recalculate the sanctions award."


Unless the above note was made with error, the only thing I can think of is trying to recalculate the $90M sanctions by removing the amount assessed on the VIP models. If true, don't expect to see any money going anywhere, whether to Uncle Sam (as Curtis noted) or to TiVo.

The i4i v. Microsoft case was discussed extensively here too due to some similarities in the injunctions. No need to go there except that the Supreme Court just heard the case.

I guess MS was successful in getting the SC to review the case. I don't recall there was dissent in the CAFC ruling in that case but I could be wrong.


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## DavidMi (Aug 24, 2009)

Curtis52 said:


> Also, Dish might decide they can't live with disabling millions of DVRs this summer.


 Why are you such a fearmonger? There are not even millions of the old DVR's in use today. In fact I saw last week that it was estimates there were only about 300,000 of them still out there.

If thats true and 190,000 do not need to be shut off thats only 110,000 that dish needs to replace.

I know you work for Tivo and want to see them win, but take a look at the fact that it is really too late for Tivo and by my count they have 7 more lawsuits to go. I would say its game over for Tivo.


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## jacmyoung (Sep 9, 2006)

DavidMi said:


> Why are you such a fearmonger? There are not even millions of the old DVR's in use today. In fact I saw last week that it was estimates there were only about 300,000 of them still out there.
> 
> If thats true and 190,000 do not need to be shut off thats only 110,000 that dish needs to replace.
> 
> I know you work for Tivo and want to see them win, but take a look at the fact that it is really too late for Tivo and by my count they have 7 more lawsuits to go. I would say its game over for Tivo.


Do you have a source? Back in 2008 when the contempt proceeding just started, I recall the number was 6 million. They must have been replacing them like crazy since then. Or maybe many of them simply left Dish as part of the normal churn. Both Dish and DirecTV lose about 700K subs each quarter if I recall correctly. As long as Dish stopped installing those 8 DVRs for the new subs, many of them naturally died.

I want to follow up with my above post with respect to the "recalculation of the sanctions award" issue, assume this is true. I begin to think it was not because TiVo's expert applied sanctions against some of the VIP DVRs, rather he used the reasonable monthly rate charged on a VIP DVR, and applied to the old DVRs. If so the CAFC might have instructed the lower court to use a reasonable rate for the old DVRs to assess sanctions.

If the $1.00 sanction was reasonable for a VIP DVR, which is an MPEG4 HDTV DVR, I wonder what would a reasonable rate be for an ancient MPEG2 SD DVR?


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## P Smith (Jul 25, 2002)

jacmyoung said:


> Do you have a source? Back in 2008 when the contempt proceeding just started, I recall the number was 6 million. They must have been replacing them like crazy since then. Or maybe many of them simply left Dish as part of the normal churn. Both Dish and DirecTV lose about 700K subs each quarter if I recall correctly. As long as Dish stopped installing those 8 DVRs for the new subs, many of them naturally died.
> 
> I want to follow up with my above post with respect to the "recalculation of the sanctions award" issue, assume this is true. I begin to think it was not because TiVo's expert applied sanctions against some of the VIP DVRs, rather he used the reasonable monthly rate charged on a VIP DVR, and applied to the old DVRs. If so the CAFC might have instructed the lower court to use a reasonable rate for the old DVRs to assess sanctions.
> 
> If the $1.00 sanction was reasonable for a VIP DVR, which is an MPEG4 HDTV DVR, I wonder what would a reasonable rate be for an ancient MPEG2 SD DVR?


I see no meaning in your idea to change the rate - the sanction based on a patent while a content is irrelevant. :nono2:


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## jacmyoung (Sep 9, 2006)

"P Smith" said:


> I see no meaning in your idea to change the rate - the sanction based on a patent while a content is irrelevant. :nono2:


It was not my idea, rather TiVo's idea to use the VIP rate on the 501, why don't you tell TiVo to drop that idea?


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## VDP07 (Feb 22, 2006)

jacmyoung said:


> Do you have a source? Back in 2008 when the contempt proceeding just started, I recall the number was 6 million. They must have been replacing them like crazy since then. Or maybe many of them simply left Dish as part of the normal churn. Both Dish and DirecTV lose about 700K subs each quarter if I recall correctly. *As long as Dish stopped installing those 8 DVRs for the new subs*, many of them naturally died.
> 
> Nope. Installed and activated a 625 for a new customer 2 hours ago.


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## jacmyoung (Sep 9, 2006)

Well then Charlie is doomed isn't he? But where is that piece of document called injunction? There did not appear to be a valid one out there after the majority vacated one part in it.

Since you are "an officer" of Dish, were you ever provided with a copy of that injunction?


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## dfd (Aug 29, 2008)

"jacmyoung" said:


> Well then Charlie is doomed isn't he? But where is that piece of document called injunction? There did not appear to be a valid one out there after the majority vacated one part in it.
> 
> Since you are "an officer" of Dish, were you ever provided with a copy of that injunction?


Only some installers are employees of either E* or D*.

I'd be willing to bet that not one installer is an officer of the corporation.


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## jacmyoung (Sep 9, 2006)

"dfd" said:


> Only some installers are employees of either E* or D*.
> 
> I'd be willing to bet that not one installer is an officer of the corporation.


If you mean he is not required to be provided a copy of that injunction, then that 625 he just installed is not subject to the injunction?


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## James Long (Apr 17, 2003)

When the initial injunction went in to effect (after all appeals were exhausted) DISH provided notice as required of the injunction to all parties that needed to know. That was many years ago ... and one can do the research if they so choose.

As the "amended" injunction didn't make it past the appeals level (and such amendment did not affect installers or distributors) no further notification was needed. Even if the notification amendment were upheld there would be nothing more that an installer or distributor would need to do.


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## jacmyoung (Sep 9, 2006)

"James Long" said:


> When the initial injunction went in to effect (after all appeals were exhausted) DISH provided notice as required of the injunction to all parties that needed to know. That was many years ago ... and one can do the research if they so choose.
> 
> As the "amended" injunction didn't make it past the appeals level (and such amendment did not affect installers or distributors) no further notification was needed. Even if the notification amendment were upheld there would be nothing more that an installer or distributor would need to do.


I thought the amended injunction was identical to the initial one, with just the preapproval added?

Besides if we are to take TiVo's word for it, E* was allowed to install the new placements of those 8 named DVRs with non infringing software, therefore we only need to find out how many of those are still in the field that were installed years ago? The 625 he installed earlier today is not subject to the disabling provision?


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## Herdfan (Mar 18, 2006)

dgordo said:


> Ex post facto doesn't apply in civil cases, and even in criminal cases it is far from absolute.





jacmyoung said:


> I wish you could say it in layman's term.


I think that is about as clear as you could say it.


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## L3G3ND (Mar 2, 2011)

jacmyoung said:


> Unless the above note was made with error, the only thing I can think of is trying to recalculate the $90M sanctions by removing the amount assessed on the VIP models. If true, don't expect to see any money going anywhere, whether to Uncle Sam (as Curtis noted) or to TiVo.
> 
> The i4i v. Microsoft case was discussed extensively here too due to some similarities in the injunctions. No need to go there except that the Supreme Court just heard the case.
> 
> I guess MS was successful in getting the SC to review the case. I don't recall there was dissent in the CAFC ruling in that case but I could be wrong.


Please read the ruling carefully.

For the purposes of this post OLD BOX = original infringing boxes , NEW BOX = Boxes with DIsh's Workaround.

Originally, Folsom decided that Tivo was owed $200 million -- of which $90 million was for the OLD BOXES, and $110 million was for the NEW BOXES.

The ruling vacates the $110 Million for the NEW boxes completely. 
The $90 million for the OLD BOXES is upheld, what is being recalculated is that DISH has still been using some of the OLD BOXES since the date of the original ruling, Folsom needs to put a figure on what additional moneys is owed to Tivo for that only.


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## jacmyoung (Sep 9, 2006)

L3G3ND said:


> Please read the ruling carefully.
> 
> For the purposes of this post OLD BOX = original infringing boxes , NEW BOX = Boxes with DIsh's Workaround.
> 
> ...


You don't even know the difference between the damages and the sanctions.


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## scooper (Apr 22, 2002)

L3G3ND said:


> Please read the ruling carefully.
> 
> For the purposes of this post OLD BOX = original infringing boxes , NEW BOX = Boxes with DIsh's Workaround.
> 
> ...


There are no more boxes with the original, infringing software. Dish should be able to supply a date when the last active unit was changed to their workaround.


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## phrelin (Jan 18, 2007)

From The Morning Bridge:


> It really depends on the "stay," says Stifel Nicolaus' Rebecca Arbogast. "Based on our current calculation and understanding of the procedural rules, we see the week of May 30 as the first point when the District Court injunction could be enforced by TiVo requiring Dish to shut down its installed base of eight covered DVR models." While DISH has several court options to avoid a lifting of the stay, Arbogast sees none of them as likely. However, she notes, there are a lot of variables to help minimize the pain ... and don't discount DISH CEO Ergen's potential to "pull a rabbit out of a hat."


Arbogast is a legal expert on the subject who advises an investment firm.


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## Curtis0620 (Apr 22, 2002)

phrelin said:


> From The Morning Bridge: Arbogast is a legal expert on the subject who advises an investment firm.


Expert opinion not permitted here.


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## jacmyoung (Sep 9, 2006)

"phrelin" said:


> From The Morning Bridge: Arbogast is a legal expert on the subject who advises an investment firm.


I know you are an investor or at least try to think that way but do not want to say it because some TiVo people will breath down your neck accuse you of being off the topic. So let me be the one to take the blame if they will.

If indeed as those experts all contend the gun is on Charlie's head, he would be $3B (not M but B) in the hole if he does not pay TiVo, why is DISH (or SATS) at all year high, TiVo is back down from the initial rush after the en banc ruling?


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## Curtis0620 (Apr 22, 2002)

jacmyoung said:


> I know you are an investor or at least try to think that way but do not want to say it because some TiVo people will breath down your neck accuse you of being off the topic. So let me be the one to take the blame if they will.
> 
> If indeed as those experts all contend the gun is on Charlie's head, he would be $3B (not M but B) in the hole if he does not pay TiVo, why is DISH (or SATS) at all year high, TiVo is back down from the initial rush after the en banc ruling?


TiVO was below $8.50 before the ruling. Currently they are above $9.50.


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## James Long (Apr 17, 2003)

Curtis0620 said:


> TiVO was below $8.50 before the ruling. Currently they are above $9.50.


Tivo stock always swings when there is a ruling or other change in case status. Apparently those who trade in that stock see this case as a major influence on Tivo. As for DISH, not so much.


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## Curtis52 (Oct 14, 2003)

> It really depends on the "stay," says Stifel Nicolaus' Rebecca Arbogast. "Based on our current calculation and understanding of the procedural rules, we see the week of May 30 as the first point when the District Court injunction could be enforced by TiVo requiring Dish to shut down its installed base of eight covered DVR models."


I think she may be including the 30 days grace period mentioned in the injunction. That was up a long time ago.


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## jacmyoung (Sep 9, 2006)

"Curtis52" said:


> I think she may be including the 30 days grace period mentioned in the injunction. That was up a long time ago.


Yup, the shut off can happen as early as next week, anyone who does not load up TiVo stocks is a fool


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## phrelin (Jan 18, 2007)

I guess I've got the memory of a gnat.

The order was 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."

Which were the 192,708 units?


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## P Smith (Jul 25, 2002)

phrelin said:


> I guess I've got the memory of a gnat.
> 
> The order was 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."
> 
> Which were the 192,708 units?


I would think those are replaced already to 522/625 or ViP models.


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## phrelin (Jan 18, 2007)

P Smith said:


> I would think those are replaced already to 522/625 or ViP models.


Well maybe, but I don't remember what they were. The Final Judgement and Permanent Injunction just says:


> ...In accordance with the jury verdict delivered on April 13, 2006..., the Court thereby enters judgment for Plaintiff against Defendants for infringement...by 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.
> 
> ...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.


I just can't remember what the deal was with the 192,708 units. And I can't find in my PDF files something that tells me.


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## Curtis52 (Oct 14, 2003)

phrelin said:


> Which were the 192,708 units?


No particular model among the named models. Dish could mix or match to get to that number. The 193K number just represents the number that were awarded damages for life. The rest were awarded damages on a monthly license type basis and Dish was told to disable them.


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## jacmyoung (Sep 9, 2006)

Did anyone recall when E* petitioned the Supreme Court last time? Did they have to wait for the CAFC to issue the mandate first? I don't know how to access the Supreme Court site, but last I checked there was nothing happening at CAFC site, on the E. TX district court site however a remand by the CAFC was entered on 4/25 but it said to "recalculate the sanctions award."

Sounded as if the first business at the district court would be to recalculate that $90M sanctions. We do know that the dissent pointed out that TiVo expert incorrectly used the VIP rate rather the old SD DVR rate to calculate the sanctions.


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## phrelin (Jan 18, 2007)

Curtis52 said:


> No particular model among the named models. Dish could mix or match to get to that number. The 193K number just represents the number that were awarded damages for life. The rest were awarded damages on a monthly license type basis and Dish was told to disable them.


So it seems like Dish might have to accelerate replacement the MPEG2 boxes with MPEG4 boxes in Western Arc customers' homes and RV's, generally finishing off the HD MPEG4 conversion.

But in theory, could Dish continue 193K of the MPEG2 boxes for folks who use the 118 satellite for foreign channels only?

Of course, this would depend on whether the devices with the new code still infringe. We'll have to see how the District Court handles the remand "to make a factual determination of colorable differences under the new standard we lay out here" which involves figuring out whether the "statistical estimation feature" is "significantly different from the start code detection feature."

Though technically this was all about contempt, if I'm reading the decision correctly the new standard was put in place by the majority of the appeals court as follows:


> (a) ...The analysis must focus not on differences between randomly chosen features of the product found to infringe in the earlier infringement trial and the newly accused product, ...but on those aspects of the accused product that were previously alleged to be, and were a basis for, the prior finding of infringement, and the modified features of the newly accused product. Specifically, one should focus on those elements of the adjudged infringing products that the patentee previously contended, and proved, satisfy specific limitations of the asserted claims. Where one or more of those elements previously found to infringe has been modified, or removed, the court must make an inquiry into whether that modification is significant.
> 
> (b) ...Applying the test in this case, one of the features of EchoStar's original receivers that TiVo relied upon to prove infringement to the jury was the start code detection feature. TiVo argued, and the jury accepted, that that feature satisfied the "parsing" limitation found in the software claims. It is undisputed that EchoStar replaced that feature with a statistical estimation feature.
> 
> ...


And regarding the work around, Circuit Judge Dyk's dissent joined by Chief Judge Rader and Circuit Judges Gajarsa, Linn, and Prost simply states:


> In my view, the disablement provision does not bar the installation of modified software that renders the devices non-infringing...
> 
> I also dissent from the majority's decision to remand to the district court to determine whether EchoStar violated the infringement provision. In my view, that provision plainly was not violated.


 With this level of dissent, I wonder if the Supremes may want to look at the decision which would give Charlie more time. Or maybe they'll take it up without a stay letting the District Court fumble its way through the whole infringement issue.

What really puzzles me in the majority decision is the term "randomly chosen features of the product." Is that reflective of something Folsom allegedly did?


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## Curtis52 (Oct 14, 2003)

phrelin said:


> But in theory, could Dish continue 193K of the MPEG2 boxes for folks who use the 118 satellite for foreign channels only?


I don't understand the question. Dish can continue using the 193K for whatever purpose they want (except to reiisue them after a repair). It is only the remainder of the named models the have to be disabled.



phrelin said:


> What really puzzles me in the majority decision is the term "randomly chosen features of the product." Is that reflective of something Folsom allegedly did?


Folsom read case law as requiring that only differences in the context of the claim mattered. The CAFC went a step further this time and said in addition to that, the complainant's position had to have been argued by them during the trial. Folsom had said in the contempt hearing that a PID filter met the claim. The CAFC said in the appeal that wasn't enough because (they said) TiVo never definitively argued in the trial that the PID filter was the parser referred to in the claim.


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## jacmyoung (Sep 9, 2006)

One thing needs to be cleared, DISH does not have to replace all of the 8 named DVRs, only those already in the homes of the end users at the time the injunction went into effect, which was in 4/08 I think. After that date all the same named DVRs installed were considered "new placements", which according to TiVo could be designed around, this much is not in dispute.

It was in such context I believe DISH said they could replace all of them in a short time, I think someone said earlier there might be just 100k plus of them needed replaced. If they have to replace all of the 8 named DVRs currently in service regardless when they were installed, I don't think they could swap them in a short time frame.


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## phrelin (Jan 18, 2007)

Curtis52 said:


> phrelin said:
> 
> 
> > But in theory, could Dish continue 193K of the MPEG2 boxes for folks who use the 118 satellite for foreign channels only?
> ...


That's just me musing about the possibility that since the foreign channels on 118.7 are SD and presumably MPEG2 that a 508, for instance, could continue to be used if it were counted among the 192,708.


jacmyoung said:


> One thing needs to be cleared, DISH does not have to replace all of the 8 named DVRs, only those already in the homes of the end users at the time the injunction went into effect, which was in 4/08 I think. After that date all the same named DVRs installed were considered "new placements", which according to TiVo could be designed around, this much is not in dispute.
> 
> It was in such context I believe DISH said they could replace all of them in a short time, I think someone said earlier there might be just 100k plus of them needed replaced. If they have to replace all of the 8 named DVRs currently in service regardless when they were installed, I don't think they could swap them in a short time frame.


Given the decision and the dissent, I'm not sure TiVo's going to buy the idea that the "design around" is a gift they're giving to Dish. I would assume at least until the issue of the "design around" is resolved they'll hang their hat on the language in the injunction:


> 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.


 There seems to me to be a great deal of incentive for TiVo to settle for some reasonable licensing fee to avoid any consideration of the "design around." But there certainly are some bull-headed people on both sides of this.


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## Curtis52 (Oct 14, 2003)

En banc ruling:

"The district court further defined "DVR functionality" as "all storage to and playback of . . . television data." Id. Plainly, the word "all" refers to all DVR functionality, infringing or not, and that is not an unnatural reading of the disablement provision. The second directive of the disablement provision, *requiring EchoStar not to enable DVR functionality in any new placements of the receivers*, i.e., DVR functionality that could potentially be noninfringing, supports a plain reading of the word "all." *It was therefore not "unnatural" to read the court's order as a prohibition on employing any type of DVR software, infringing or not, on those listed receiver models*."


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## jacmyoung (Sep 9, 2006)

phrelin said:


> ...Given the decision and the dissent, I'm not sure TiVo's going to buy the idea that the "design around" is a gift they're giving to Dish...


TiVo in its attempt to secure the contempt of the disabling provision, decided to gave up some ground. They on several occasions told Judge Folsom during the contempt proceeding the prohibition of design around was only for the DVRs already at the end users, not for the "new placements". There was no dispute of that, they cannot now change that interpretation.

It was because of such interpretation, the dissent pointed out that TiVo's interpretation was impossible, because the disabling clause and the not-to-enable clause were identical as far as what needed to be done, therefore they could not have meant two different things, one prohibited design around, the other did not.

That is not to say however TiVo can now abandon its narrowed prohibition interpretation to go back and argue that hey now we are saying the not-to-enable clause also prohibited design around, they said already this clause did not prohibit design around, only the disabling clause did.

The injunction was TiVo's injunction, TiVo proposed it, the court only adopted it, this is why you did not read the dissenting judges disagreed with TiVo's interpretation on the alternative, they agreed with it, but pointed out if we agreed with it, it resulted in an impossible outcome.

BTW the majority did not dispute it either, they never countered the dissent by correcting them and telling them but no, the not-to-enable clause also prohibited design around, because the record is clear that TiVo said the not-to-enable clause did not prohibit design around.


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## Curtis52 (Oct 14, 2003)

$500 settlement reached.

http://www.dbstalk.com/showthread.php?t=192671


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## P Smith (Jul 25, 2002)

Curtis52 said:


> *$500* settlement reached.
> 
> http://www.dbstalk.com/showthread.php?t=192671


Umm, it was 'millions'.  I was fall from my chair reading the amount.


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## tsmacro (Apr 28, 2005)

All that time and money basically wasted, hardly seems it was worth it for either company, only the lawyers really got rich here. I guess TiVo gets a little operating $$$ out of the deal for the next few years and the Feds didn't have to send someone to hold a gun to Charlie's head and make him turn off Dish's DVR's because that's probably what it would've taken.


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## P Smith (Jul 25, 2002)

tsmacro said:


> All that time and money basically wasted, hardly seems it was worth it for either company, only the lawyers really got rich here. I guess TiVo gets a little operating $$$ out of the deal for the next few years and the Feds didn't have to send someone to hold a gun to Charlie's head and make him *turn off Dish's DVR's* because that's probably what it would've taken.


I think it was the reason to settle the case for $500M.


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