# TiVo vs Echostar ... June 30th-July 18th Filings



## James Long

*Previous discussion can be found here.
Please be kind to one another as the discussion calmly continues.*

Two filings today (June 30th) ...
1) "Sealed Response to Motion" ... it looks like DISH's response won't be available to us.
2) "Response in Opposition to Motion" ... Tivo's response to the Interpretation issue (DISH's request that repair replacement units not be counted as new placements).

I have attached the Tivo Response as it is not under seal. Enjoy!


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## Greg Bimson

I'm trying to understand why DISH/SATS filing is sealed. DISH/SATS must be arguing something regarding subscriber numbers. Or, DISH/SATS is arguing new software. The new software argument, of course, could be used by TiVo to get the Delaware suit dismissed.

Maybe we'll see part of DISH/SATS response when TiVo gets a chance to counter it.


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## jacmyoung

Greg Bimson said:


> I'm trying to understand why DISH/SATS filing is sealed. DISH/SATS must be arguing something regarding subscriber numbers. Or, DISH/SATS is arguing new software. ...


Likely the sub numbers.

As far as the replacement deal among the 197,000 units, I thought DISH has been replacing the 9xx's with 622s' for defects? They can easily do so similarly with the 722s'. Why even waste time on this one on both sides? Another "distraction" from DISH?


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## Greg Bimson

Well, we do know what is attached to the response:


> SEALED RESPONSE to Motion re 832 MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF THIS COURT'S PERMANENT INJUNCTION filed by "EchoStar defendants". (Attachments: # 1 Affidavit of Dan Minnick, # 2 Exhibit A-1 to Minnick Decl., # 3 Exhibit A-2 to Minnick Decl., # 4 Exhibit B-D to Minnick Decl., # 5 Affidavit of Rachel Krevans, # 6 Exhibit A-L to Krevans Decl.)(Krevans, Rachel) (Entered: 06/30/2008)


Dan Minnick is a VP of Engineering at Echostar.

DISH/SATS is arguing the new software, and does not want the details of this new software out.


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## CuriousMark

Greg Bimson said:


> DISH/SATS is arguing the new software, and does not want the details of this new software out.


That seems more likely than sub numbers to me. It is also more in line with the statements they made at the status conference.

They obviously feel that argument will get traction with the judge. I am sure TiVo's response would also be very interesting, but if they address anything in DISH/SATS brief, then TiVo's response will also most likely be sealed.

It is too bad that we will have to wait so long to find out what it all means.


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## scooper

Greg Bimson said:


> Well, we do know what is attached to the response: Dan Minnick is a VP of Engineering at Echostar.
> 
> DISH/SATS is arguing the new software, and does not want the details of this new software out.


I would have to strongly agree with Greg on this point.

How it will play before the judge - I do not even know where to guess.


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## Greg Bimson

I'd also bet that it is sealed so that TiVo has a more difficult time using it to dismiss the Delaware case.

So, I'd expect that TiVo's reply in Delaware will also be sealed.


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## jacmyoung

I agree with you Greg too, if the new software is a major issue in the DISH motion. If so then the likely DISH's approach is to demonstrate to the judge that their curernt acts are legal and non-infringing, as such the standards in such cases would not allow a contempt finding.

I know you disagree with me, but this is precisely what DISH should go for, they have so many uniform opinions from the Circuit Court to back that argument.

The case below though not a patent issue, it dealt with a similar civil contempt of an injunction, in which the "spirit" and "letter" of the injunction were discussed:

http://www.mtcwatch.com/pdfiles/4-03_TCM2_ContemptDenial.htm

"A district court may find a party in civil contempt if the following four elements are satisfied: (1) violation of a court order, (2) beyond substantial compliance, (3) not based on a good faith and reasonable interpretation of the order, (4) by clear and convincing evidence. Id. "If a violating party has taken 'all reasonable steps' to comply with the court order, technical or inadvertent violations of the order will not support a finding of civil contempt." General Signal Corp., 787 F.2d at 1379 (citation omitted). *All ambiguities in an order for injunctive relief must be resolved in favor of the party subject to the injunction.* Clark v Coye, 60 F.3d 600, 604 (9th Cir. 1995). A district court's finding of civil contempt is reviewed for an abuse of discretion. Diamontiney v. Borg, 918 F.2d 793, 795 (9th Cir. 1990)."

Also:

"As the foregoing analysis suggests, *MTC cannot be held in civil contempt for violating the letter of the injunction.* The prior statements about the ambiguity of the "expected ridership gains" language notwithstanding, the Court notes, without so finding, that *MTC's interpretation of the disputed portion of the injunction might indeed violate the spirit of the Order.* When the injunction was issued, the Court expected MTC's estimate of "gains" to be something more akin to Plaintiffs' suggested incremental approach. However, the Court sees little value in ordering MTC to revise the RTP Amendment. As noted above, MTC's interpretation is reasonable in light of the overall boardings target the agency must achieve. Moreover, from a practical perspective, whatever harm MTC's alleged error might have cause is minimized by the fact that, because the injunction does not contemplate further amendments to the RTP, this issue will not arise again. *Finally, the Court is not persuaded that Plaintiffs' suggested approach - the contours of which are not entirely clear - is so superior as to justify the expenditure of resources that revising the RTP Amendment a second time will inevitably entail. In sum, Plaintiffs have not shown that MTC's efforts to comply with the Order are so flawed as to justify a finding of civil contempt at this time.* Similarly, Plaintiffs have failed to demonstrate that there exists just cause to order MTC to further modify the RTP. As the Court now declines to hold MTC in civil contempt, there is no basis on which to impose coercive or compensatory sanctions. See United Mine Workers, 330 U.S. at 303-304."

In the above case the defendent was deemed in violation of the letter of the injunction, as argued by the plaintiff, and in violation of the spirit of the order, as noted by the court, but since the overall goal was met, there was no contempt.

The question then becomes what is the goal of the injunction in this case? If you believe it is punitive in nature, you can disregard the above example. If one believes the injunction is to prevent future infringement, the above example is useful.


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## Greg Bimson

I will even agree that most of your arguments are probably in DISH/SATS motion. I just don't believe those arguments will hold much weight, and that is not an attack on your position. DISH/SATS legal counsel is trying to mount as much of a vigorous defense as they can, which is also what you've been trying to do.

Now I personally think that DISH/SATS made a big mistake. From what I recall, TiVo now gets to interview Dan Minnick regarding his deposition. DISH/SATS just opened the door to the new software, and DISH/SATS will have to answer questions about it.


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## CuriousMark

Does Mr. Minnick have any patents to his credit?

[EDIT]Never mind, he is the inventor of the Dish patent that describes the workaround[/EDIT]


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## James Long

Greg Bimson said:


> Now I personally think that DISH/SATS made a big mistake. From what I recall, TiVo now gets to interview Dan Minnick regarding his deposition. DISH/SATS just opened the door to the new software, and DISH/SATS will have to answer questions about it.


Sometimes you have to go "all in" to win the pot.

It is a shame we have to speculate about the content ... I wouldn't mind a redacted version but that isn't the purpose of the filing system. I agree the the filing most likely focus solidly on DISH not infringing now and when they ceased infringing.


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## jacmyoung

Greg Bimson said:


> ... DISH/SATS legal counsel is trying to mount as much of a vigorous defense as they can, which is also what you've been trying to do...


You apparently had not read some of my posts regarding my position on this issue. I would have preferred DISH and Tivo cooperate to have the commend of the DVR market, I said before both DISH and Tivo despite their animosity shown in this case, are more like-minded companies than cablecos and DirecTV, in that they both cater to the end users's needs more so than to the pleasure of the networks and movie industry.

As it stands now, Tivo is forced to focus on how to collect and sell the end users' viewing information in order to survive, and DISH of course will have to pay the big damages. In fact when the judge denied Tivo's request for attorney fees and treble damages from DISH, one of the main reasons was Judge Folsom was equally critical of both parties in their conducts during this trial, which has set several records on the number of motions, counter suits, and time spent by the court. Yes Tivo was equally at fault according to the judge.

But it is not up to us to say if DISH should rigorously defend itself or not. You may think I am rigorously defending DISH, I am only displaying what I have learned from the prior cases and the court opinions to support my own speculation that DISH will not be in contempt of this judge's order, and that has been my only argument all through, no more no less.



Greg Bimson said:


> ...Now I personally think that DISH/SATS made a big mistake. From what I recall, TiVo now gets to interview Dan Minnick regarding his deposition. DISH/SATS just opened the door to the new software, and DISH/SATS will have to answer questions about it.


BTW, DISH never tried to avoid the new software issue, they always wanted to make it an issue, they voluntarily gave Tivo some of the limited new software codes, they spent most of their time in their motion before the 5/30 status meeting describing their new software and why it no longer infringed. It was my speculation the DE filing was to force Tivo to begin discussing the new software in front of Judge Folsom, sooner than later.

So the fact DISH is again focusing on the new software in this latest motion is no surprise to me and I don't think they are going down a new and dangerous path, if it is a dangerous one, at least not a new one, but one DISH has always wanted to go down.

The new software is the only thing that can save DISH.


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## Curtis52

jacmyoung said:


> So the fact DISH is again focusing on the new software in this latest motion is no surprise to me


Fact? I didn't think anyone had read it.

...and it wasn't a motion. It was a reply.


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## Mainer_ayah

Does anyone here think that Dish can address the software and stay non-technical enough to have told the judge in the 5/30 conference that the court need not retain a technical consultant because they agreed that the subject of discussions would revolve around only points of law?

I don't. I think this should answer the question of how the court might react to Dish bringing up the software switcheroo. (If there even was one).

-Mainer


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## jacmyoung

Curtis52 said:


> Fact? I didn't think anyone had read it.
> 
> ...and it wasn't a motion. It was a reply.


The fact that Greg speculated such high probability that most agreed? Getting restless about my choice of words again Curtis? You should know by now not to take my words seriously


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## James Long

It's not about you ... it's about Tivo vs Echostar and the lawsuit.
:backtotop


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## Greg Bimson

Mainer_ayah said:


> Does anyone here think that Dish can address the software and stay non-technical enough to have told the judge in the 5/30 conference that the court need not retain a technical consultant because they agreed that the subject of discussions would revolve around only points of law?
> 
> I don't. I think this should answer the question of how the court might react to Dish bringing up the software switcheroo. (If there even was one).


I'll agree with you, mainer. It's the problem mentioned in the old thread: this is truly the "chicken and egg" argument.

DISH/SATS, if the theory is that their response discusses the new software, is trying to argue "the spirit of the law". DISH/SATS feels that changing the software on the "Infringing Products" affords them to bypass the injunction as written. TiVo is simply trying to argue a point of law, which states simply to disable the "Infringing Products".

It is that darn "procedure" thing I've brought up before. Procedurally, the software doesn't even have to be looked at in this proceeding:


jacmyoung said:


> BTW, DISH never tried to avoid the new software issue, they always wanted to make it an issue, they voluntarily gave Tivo some of the limited new software codes, they spent most of their time in their motion before the 5/30 status meeting describing their new software and why it no longer infringed.


Yet DISH/SATS had conceived this plan for new software while the injunction was being written in August 2006, argued in front of the court that the injunction as written should not disenfranchise *three million* Dish Network DVR customers, and never informed the courts that they may have found a way to make adjudicated "Infringing Products" non-infringing until 23 May 2008, after the injunction was in full force and effect.

Last I recall, one follows the rules of the Court, not whatever one party wants to do.


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## jacmyoung

Greg Bimson said:


> ...Yet DISH/SATS had conceived this plan for new software while the injunction was being written in August 2006, argued in front of the court that the injunction as written should not disenfranchise *three million* Dish Network DVR customers, and never informed the courts that they may have found a way to make adjudicated "Infringing Products" non-infringing until 23 May 2008, after the injunction was in full force and effect...


Yet none of such was against the law. You have bought into Tivo's notion that by not volunteering all the information, or arguing for argument sake, it proved DISH's pattern of deceit, one only needs to look at how successful Tivo was in demanding DISH to pay treble damages and attorney fees, when they used precisely the same line of logic, that DISH behaved very very badly.

Remember what the judge response was? DISH was only exercising their legal rights, and where DISH went over board, so was Tivo, Judge Folsom basically was saying they two both deserved each other. Such sentiment was shown in the 5/30 status meeting, when the judge said you two just couldn't agree on anything, despite the fact the judge had tried so hard within his power to get these two to settle, meaning to agree on something.

What are the chances Judge Folsom will stick his neck out, go against all the standards put forth in the patent infringement/injunction cases, and try to favor one party over the other, when he could care less about either one of them.


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## kmill14

jacmyoung, during my break, I was able to dig up a few more things for you to chew on. Are you aware of prohibitive verses mandatory injunction orders?

I imagine Dish will continue to go down the road that this new software has caused the products in question to cease infringement. However, "non-infringement" is only relevant in the first order:



> are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.


This wording is pretty much the same as every other injunctive wording out there, and is defined as a prohibitory injunction.

But the 2nd order is not to "prohibit"...its a mandatory injunction, which has the goal of undoing E*'s prior act of stealing market share unfairly from TiVo.



> 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.





> a mandatory injunction requires affirmative action concerning the undoing or doing of an act". ("A mandatory injunction commands performance of certain acts whereas a prohibitory injunction prohibits the performance of certain acts.")


http://www.state.hi.us/jud/24857.htm


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## scooper

Since when did a state court ruling have any bearing on a Federal court ?


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## kmill14

Scooper, do you honestly think Hawaii made this up themselves?



> There are two general types of temporary injunctions: prohibitive and mandatory. A prohibitive injunction forbids conduct, whereas a mandatory injunction requires it.


http://rds.yahoo.com/_ylt=A0geu70z9....state.tx.us/case/opinions/102600/000506f.pdf


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## scooper

kmill14 said:


> Scooper, do you honestly think Hawaii made this up themselves?
> 
> http://rds.yahoo.com/_ylt=A0geu70z9....state.tx.us/case/opinions/102600/000506f.pdf


Probably not - but for your argument to hold any value - find a federal equal.

BTW - has the term "television data" been defined for this lawsuit ?


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## Curtis52

kmill14 said:


> Scooper, do you honestly think Hawaii made this up themselves?
> 
> 
> 
> 
> There are two general types of temporary injunctions: prohibitive and mandatory. A prohibitive injunction forbids conduct, whereas a mandatory injunction requires it.
> 
> 
> 
> http://rds.yahoo.com/_ylt=A0geu70z9....state.tx.us/case/opinions/102600/000506f.pdf
Click to expand...

What does Texas state law have to do with a federal lawsuit and what do temporary injunctions have to do with permanent injunctions?


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## jacmyoung

Kmill14, there are several points in the two cases you just cited:

1) They were not patent infringement cases.
2) Both had to do with *temporary injunctions* where a *mandatory injunction* was ordered to *keep the status quo until the trial can take its course*.
3) In both cases the mandatory injunctions were overturned after the defendents appealed the contempt rulings to the higher courts.

Because a *mandatory injunction* not only is merely used in a *temporary injunction form* but it is also an *extraordinary measure*, not to be used lightly. It is meant to *keep the status quo* while the trial is on-going.

None of the above fits the current case, but even if you can somehow force them onto this case, please realize the outcomes of the two cases above were in favor of the defendents, not the plaintiffs.


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## phrelin

James Long said:


> *Please be kind to one another as the discussion calmly continues.*


:grin:

Thanks for keeping us up to date.


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## kmill14

Honestly, when you have no other argument, you want to nitpick the reference of a legal definition. So basically, you have no idea about prohibitive verses mandatory injunctions...

******
A prohibitory injunction is one that "forbids or restrains an act." Black's Law Dictionary 788 (7th ed. 1999). For example, in the typical trademark case a prohibitory injunction seeks to stop alleged infringement. A mandatory 
injunction, in contrast, "orders an affirmative act or mandates a 
specified course of conduct,"
*******


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## Greg Bimson

jacmyoung said:


> Yet none of such was against the law. You have bought into Tivo's notion that by not volunteering all the information, or arguing for argument sake, it proved DISH's pattern of deceit, one only needs to look at how successful Tivo was in demanding DISH to pay treble damages and attorney fees, when they used precisely the same line of logic, that DISH behaved very very badly.


And that was the only point that DISH/SATS won during the trial.

Just because DISH/SATS finally addressed the new software to the court only after the appeals process was complete doesn't mean it is "legal" or not. That is why the parties will be in front of Judge Folsom again on 4 September.

It is absolutely wonderful that DISH/SATS is trying to get the injunction modified. That is their motion about the "Advance Exchange" program. Where is DISH/SATS motion to modify the injunction because the adjudicated products might no longer infringe? Parties inform the court of any issues that may affect a given proceeding. In this case, DISH/SATS should have notified the court about their new workaround.

Or more than likely DISH/SATS was simply scared it wouldn't get real play in court. After all, that is why DISH/SATS has filed a suit in Delaware, hoping that the Delaware court takes a case that is currently ongoing in Texas.


jacmyoung said:


> What are the chances Judge Folsom will stick his neck out, go against all the standards put forth in the patent infringement/injunction cases, and try to favor one party over the other, when he could care less about either one of them.


Because the judge must rule on a motion in front of him. So, you're absolutely right that the judge will rule based upon standards; TiVo will most likely win their contempt motion because DISH/SATS simply hasn't disabled the DVR functionality in their "Infringing Products".


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## Tower Guy

Greg Bimson said:


> DISH/SATS feels that changing the software on the "Infringing Products" affords them to bypass the injunction as written.


If that were indeed true, all previous recordings on the DVR's would still have the infringing "bifurcated" audio and video files on the hard drive. They could not be played on a DVR with the infringing software disabled. There was no outcry about loss of old recordings, so it's reasonable to assume that the new software can play back old video files. Therefore its safe to conclude that the new software still infringes on the TiVo patent.


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## Curtis52

kmill14 said:


> its a mandatory injunction, which has the goal of undoing E*'s prior act of stealing market share unfairly from TiVo.


Judge Folsom said that the damage is irreparable. The goal is to stop infringement.


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## Curtis52

Tower Guy said:


> If that were indeed true, all previous recordings on the DVR's would still have the infringing "bifurcated" audio and video files on the hard drive. They could not be played on a DVR with the infringing software disabled. There was no outcry about loss of old recordings, so it's reasonable to assume that the new software can play back old video files. Therefore its safe to conclude that the new software still infringes on the TiVo patent.


Here is what Dish infringed. I don't see anything about separate files for audio and video.



> 31. A process for the simultaneous storage and play back of multimedia data, comprising the steps of:
> 
> providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data;
> 
> providing a source object, wherein said source object extracts video and audio data from said physical data source;
> 
> providing a transform object, wherein said transform object stores and retrieves data streams onto a storage device;
> 
> wherein said source object obtains a buffer from said transform object, said source object converts video data into data streams and fills said buffer with said streams;
> 
> wherein said source object is automatically flow controlled by said transform object;
> 
> providing a sink object, wherein said sink object obtains data stream buffers from said transform object and outputs said streams to a video and audio decoder;
> 
> wherein said decoder converts said streams into display signals and sends said signals to a display;
> 
> wherein said sink object is automatically flow controlled by said transform object;
> 
> providing a control object, wherein said control object receives commands from a user, said commands control the flow of the broadcast data through the system; and
> 
> wherein said control object sends flow command events to said source, transform, and sink objects.


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## scooper

kmill14 said:


> Honestly, when you have no other argument, you want to nitpick the reference of a legal definition. So basically, you have no idea about prohibitive verses mandatory injunctions...
> 
> ******
> A prohibitory injunction is one that "forbids or restrains an act." Black's Law Dictionary 788 (7th ed. 1999). For example, in the typical trademark case a prohibitory injunction seeks to stop alleged infringement. A mandatory
> injunction, in contrast, "orders an affirmative act or mandates a
> specified course of conduct,"
> *******


Absolutely - that's what the whole practice of law is about !

I suppose you have never been burned because of this ? Well, I have.

Case - We had just moved to the DC area, and while we were waiting for the closing on our condo that we bought, we needed to rent temporary apartment. The landlord put the phrase "as soon as possible" as a condition for when we could notify him that we were moving out. In good faith, that's exactly what we did - notified him as soon as we knew when we were moving out. When we didn't get our deposit back we took him to small claims court. Where upon the judge informed us as that the term was undefined and as such, the minimum time went to the time on the lease (which was a month to month), and since we had notified him with less than a month, we got screwed out of our deposit (in our view, because we had followed what we had believed was a legitimate write-in on the lease contract). We found out later that this same guy was making this a habit.

Next time - if there is any alteration, make SURE it references a specific time - like 24 hours / one day /one week, etc.


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## kmill14

Curtis52 said:


> Judge Folsom said that the damage is irreparable. The goal is to stop infringement.


If the goal was "just" to stop infringement, then why two seperate orders? One saying the company is enjoined from using, selling, etc those adjudicated products, and another saying to disable the ones already in the hands of the end users.


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## Curtis52

kmill14 said:


> If the goal was "just" to stop infringement, then why two seperate orders? One saying the company is enjoined from using, selling, etc those adjudicated products, and another saying to disable the ones already in the hands of the end users.


It doesn't make a difference how many orders were used in the injunction.


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## James Long

Tower Guy said:


> If that were indeed true, all previous recordings on the DVR's would still have the infringing "bifurcated" audio and video files on the hard drive. They could not be played on a DVR with the infringing software disabled. There was no outcry about loss of old recordings, so it's reasonable to assume that the new software can play back old video files. Therefore its safe to conclude that the new software still infringes on the TiVo patent.


Was the patent on indexing the files for playback, using an index in a file existing in a file for playback or not using an index regardless of it's presence?

Seems to me that as long as DISH is no longer using Tivo's patented index method they should be able to use an old file, ignoring any existing indexing and using the new "by guess and by gosh" method of finding one's place in the file. The patented technology is not being used.


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## jacmyoung

kmill14 said:


> If the goal was "just" to stop infringement, then why two seperate orders? One saying the company is enjoined from using, selling, etc those adjudicated products, and another saying to disable the ones already in the hands of the end users.


Because at the time of the framing of the injunction, the DVR functions were infringing, and disabling such infringing functions naturally would stop further infringement of the DVRs in the field, I thought we cleared that one already. The goal of such order was to prevent further infringement, not a punitive measure, because if so as we agreed the second order would have had all DVRs in the field recalled, replaced with new hardware. But the judge did not do that, he allowed the DVRs in the field to be used as standard receivers.

If you can even see the slightest logic in the above explanation, then I hope you can also see the slightest logic in that if the current DVR functions no longer infringe, the goal of the above second order is met. I am not saying you have to agree with me, just that I hope the above does follow some reasonable logic.

Had the second order not added, DISH would have been free to continue to infringe in the field, without even a workaround, that of course would be unreasonable, especially consider that disabling an infringing act is just one software download away.


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## Tower Guy

Curtis52 said:


> Here is what Dish infringed. I don't see anything about separate files for audio and video.


"Parses" means to take apart. Later it refers to streams (plural).

Are you a Dish attorney?


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## jacmyoung

Curtis52 said:


> Judge Folsom said that the damage is irreparable. The goal is to stop infringement.


And an injunction in a patent case has always been defined as injunction on infringement (i.e. to stop the infringement), without which (i.e. the infringement), violation of such injunction simply can not be.


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## jacmyoung

Tower Guy said:


> "Parses" means to take apart.


Parse in this case was defined as "analyze." The point DISH was making was their new software no longer parses the info.


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## Curtis52

Tower Guy said:


> "Parses" means to take apart.


No.

Judge Folsom:

"1. "parses video and audio data from said broadcast data"

TiVo argues these terms should be construed to mean "analyzes video and audio 
data." See TiVo's Opening Br. at 9-11; TiVo's Op. Br. at 11-13; '389 patent at cols. 5:3- 
6, 5:33-36, 6:36-58, & Fig. 6; TiVo's Markman Slides at 135-39; see also id. at col. 
12:48-50 (". . . parses said MPEG stream . . .").

EchoStar argues "parses" means "separates," and "parses video and audio data 
from said broadcast data" means "analyzes the content of broadcast data and from it 
transmits two distinct components: one video component and one audio component." See 
'389 patent at Fig. 3 & col. 4:23-29; EchoStar's Opening Br. at 11-12; EchoStar's 
Response Br. at 7-10; EchoStar's Slide Presentation at 76-98, 123-24.

As was the Court's analysis of the term "parses" in the context of claims 1 and 32, 
the Court similarly finds that "parse" as it is used in claims 31 and 61 means "analyzes." 
These terms are recited clearly by claims 31 and 61 and understood by persons of 
ordinary skill in the art. See '389 patent at cols. 14:55-58, 18:5-8. This definition is 
consistent with the use of the term in claims 31 and 61 and the context of the 
specification. See, e.g., '389 patent at col. 4:23-33 & Fig. 3 (describing the analysis of 
interleaved video and audio streams from an incoming MPEG stream).

Therefore, the court defines "parses video and audio data from said broadcast 
data" as "*analyzes video and audio data from the broadcast data*."


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## jacmyoung

Curtis52 said:


> ...and understood by persons of
> ordinary skill in the art...


And a great point to be used to speculate how the fight in the new software infringement may go down to.

If a person of ordinary skill can understand the word "parse" to mean "analyze", then the word "parse" itself is not patentable. The specific method of which the "parse" is carried out, as described in the Tivo patent claims, were obviously patentable and deemed valid by the court. And that is where DISH will make the most effort to prove that their new software is parsing in a way that does not infringe on the Tivo's method of parsing.

I don't know how successful DISH will be. Unlike last time though, when DISH "relied" on their in-house engineers and attorneys, these time they did get a non-infringing opinion from an outside patent law firm before downloading the new software.


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## Curtis52

jacmyoung said:


> DISH will make the most effort to prove that their new software is parsing in a way that does not infringe on the Tivo's method of parsing.


The infringed claim does not specify a particular method of parsing.


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## Greg Bimson

jacmyoung said:


> I don't know how successful DISH will be. Unlike last time though, when DISH "relied" on their in-house engineers and attorneys, these time they did get a non-infringing opinion from an outside patent law firm before downloading the new software.


DISH/SATS retained outside counsel prior to the trial, to receive an opinion that the old software did not infringe. However, it didn't help any. DISH/SATS was still found guilty.


----------



## Curtis52

Greg Bimson said:


> DISH/SATS retained outside counsel prior to the trial, to receive an opinion that the old software did not infringe. However, it didn't help any. DISH/SATS was still found guilty.


Didn't help any? It prevented treble damages.


----------



## Greg Bimson

Okay, so it prevented trebled damages. But it still didn't dismiss infringement as DISH/SATS was still found guilty.

And here we go again, with more "testimony" about how DISH/SATS is no longer infringing, using almost the exact same tactic as they had done at trial.

Except this isn't a trial.


----------



## jacmyoung

Greg Bimson said:


> DISH/SATS retained outside counsel prior to the trial, to receive an opinion that the old software did not infringe. However, it didn't help any. DISH/SATS was still found guilty.


As I recall that particular item was not even allowed during the trial, the jury did not get to see it.

This time around though one would assume DISH is more careful how solid this non-infringing opinion is.


----------



## jacmyoung

Greg Bimson said:


> Okay, so it prevented trebled damages. But it still didn't dismiss infringement as DISH/SATS was still found guilty.
> 
> And here we go again, with more "testimony" about how DISH/SATS is no longer infringing, using almost the exact same tactic as they had done at trial.
> 
> Except this isn't a trial.


Which makes it easier, because more than colorably different is not hard to demonstrate, even if it still infringes.


----------



## jacmyoung

Curtis52 said:


> The infringed claim does not specify a particular method of parsing.


I see your point. What I think DISH is saying the "parsing" in its new software does not occur at the front end as Tivo's patent, and when the "parsing" occurs at the tail end it has a different purpose. I don't know much to say if that is enough to get DISH off the hook.


----------



## CuriousMark

jacmyoung said:


> I see your point. What I think DISH is saying the "parsing" in its new software does not occur at the front end as Tivo's patent, and when the "parsing" occurs at the tail end it has a different purpose. I don't know much to say if that is enough to get DISH off the hook.


Since both forms of analysis of the video stream are to allow for trick play which is the same purpose and function, it _might_ fall into the equivalents category.

Presumably, instead of looking up the actual frame byte offset from a pre-stored table it looks up an estimate of the byte offset from a statistical table and then searches forward or backward to find the actual start of frame.

Again, the judge may not care in this proceeding, if it isn't about whether the new software is different or not. Dish will try to bring this in, of course anyway.


----------



## Greg Bimson

CuriousMark said:


> Again, the judge may not care in this proceeding, if it isn't about whether the new software is different or not. Dish will try to bring this in, of course anyway.


Of course, DISH/SATS has to bring up the new software, to defend the charge that they have ignored complying with the language of the injunction.

DISH/SATS did not update the software in three of the "Infringing Products": the 721, 921 and 942. DISH/SATS position is that the 501, 508, 510, 522 and 625 received new software and no longer infringe, so DISH/SATS is now in "compliance with the spirit of the injunction". If DISH/SATS doesn't mention the new software, they simply should have disabled the DVR functionality in the remainder of the "Infringing Products".

Yet Tower Guy brings up an excellent point. Would a recording from two years ago play on the new software? Or would it still require use of the old, infringing software? After all, the new software is storing the incoming stream differently than the old software did.


----------



## scooper

Greg Bimson said:


> Would a recording from two years ago play on the new software? Or would it still require use of the old, infringing software? After all, the new software is storing the incoming stream differently than the old software did.


Do you know that for certain ? For all we know, Dish could simply be dumping the A/V stream to the HD all along, it's just that the infringing S/W has an additional index file and the new SW can ignore that.

Also - I have seen cases on both my 510 and a 625 where the DVR deletes files over 1 year old, so I'm not sure if what you're saying there is even possible (having a file over 1 year old, that is).


----------



## spear61

No matter how you cut it, data has to be parsed ( analyzed) before storing on a hard drive. Maybe does not analyze type of data stream or pointers within it but definitly have to keep track of bits and bytes.


----------



## Curtis52

jacmyoung said:


> I see your point. What I think DISH is saying the "parsing" in its new software does not occur at the front end as Tivo's patent, and when the "parsing" occurs at the tail end it has a different purpose. I don't know much to say if that is enough to get DISH off the hook.


TiVo's patent does not specify a particular sequence order for when the parsing takes place.


----------



## jacmyoung

CuriousMark said:


> Since both forms of analysis of the video stream are to allow for trick play which is the same purpose and function, it _might_ fall into the equivalents category...


Since the court has already determined "parse" or "analyze" is an art of person of ordinary skill, the fact that the need to analyze data is not patentable. DISH can not infringe on Tivo's patent by simply analyzing the streams, it has to be the way the analyzing is carried out. That is of course only my personal opinion.


----------



## jacmyoung

Curtis52 said:


> TiVo's patent does not specify a particular sequence order for when the parsing takes place.


I thought both in the Tivo claim construction, and in reality, the Tivo's "parse" is done as the very first step.


----------



## jacmyoung

Greg Bimson said:


> ...Yet Tower Guy brings up an excellent point. Would a recording from two years ago play on the new software? Or would it still require use of the old, infringing software? After all, the new software is storing the incoming stream differently than the old software did.


If what the DISH's description is true, then the answer is yes, because the new software does not rely on any parsing, indexing, or temporary stored buffer or files prior to trick play. All streams are dumped onto the HD at first, only when the user initiates a trick play will the parsing begin, based entirely on the raw streams stored in the HD.


----------



## Curtis52

jacmyoung said:


> I thought both in the Tivo claim construction, and in reality, the Tivo's "parse" is done as the very first step.


TiVo does not specify an order.


> *Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.* See Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322, 50 USPQ2d 1865, 1870 (Fed. Cir. 1999) (stating that "not every process claim is limited to the performance of its steps in the order written").


http://www.ll.georgetown.edu/federal/judicial/fed/opinions/99opinions/99-1324o.html


----------



## spear61

jacmyoung said:


> All streams are dumped onto the HD at first, only when the user initiates a trick play will the parsing begin, based entirely on the raw streams stored in the HD.


Data is not "dumped" onto a hard drive. A better analagy of what dish is claiming concerning dumping raw data would be to fill a 5 gallon can with gasoline and then claim that you can pour the gas out and identify each individual molecule and the order it was poured into the can. What they claim can't be done without a logical plan to parse the data stream before storage to enable its storage in a retrieveable manner.


----------



## James Long

Greg Bimson said:


> Curtis52 said:
> 
> 
> 
> 
> 
> Greg Bimson said:
> 
> 
> 
> DISH/SATS retained outside counsel prior to the trial, to receive an opinion that the old software did not infringe. However, it didn't help any. DISH/SATS was still found guilty.
> 
> 
> 
> Didn't help any? It prevented treble damages.
> 
> Click to expand...
> 
> Okay, so it prevented trebled damages.
Click to expand...

I wouldn't give it that much credit ... the judge decided not to order trebled damages (despite a jury verdict) because _he_ did not believe the infringement was willful. Everything offered as evidence likely played into that decision ... I wouldn't give all credit to one piece of evidence.



jacmyoung said:


> As I recall that particular item was not even allowed during the trial, the jury did not get to see it.


Well that could explain why the jury would find "willful" and the judge not ... however the judge may just be more even tempered and less easily swayed than the jury.



jacmyoung said:


> Greg Bimson said:
> 
> 
> 
> Except this isn't a trial.
> 
> 
> 
> Which makes it easier, because more than colorably different is not hard to demonstrate, even if it still infringes.
Click to expand...

This is one of those moments I wish DISH's filing wasn't sealed. If DISH makes any argument claiming that the same receivers with different software is more than colorably different than the adjudicated "Infringing Receivers" we might as well consider our DVRs dead. If anything, changing software _makes_ the receiver "only colorably different".

DISH needs to focus on the legal issues. The legality of the injunction itself. On it's face the injunction does NOT allow DISH to cease infringing by changing to a different DVR software. The order to cease infringing is a total disabling of DVR function in all but 192k existing receivers and NO NEW PLACEMENTS of the "Infringing Products". This filing MUST be on the legal issue ... whether changing the software is enough to avoid contempt. Demonstrating just how different the software is will be part of the issue ... but the issue isn't one of "colorably different".


----------



## Bidderman9

Does anybody know the time line for the SCOTUS appeal? Isn't it something like if SCOTUS does not agree to hear the case by some time in late July that the appeal is automatically denied?


----------



## James Long

spear61 said:


> No matter how you cut it, data has to be parsed ( analyzed) before storing on a hard drive. Maybe does not analyze type of data stream or pointers within it but definitly have to keep track of bits and bytes.


The data does NOT have to be parsed in a way that infringes on a Tivo patent. Tivo does not own the patent on writing data to a hard drive - nor reading data from a hard drive.


spear61 said:


> Data is not "dumped" onto a hard drive. A better analagy of what dish is claiming concerning dumping raw data would be to fill a 5 gallon can with gasoline and then claim that you can pour the gas out and identify each individual molecule and the order it was poured into the can. What they claim can't be done without a logical plan to parse the data stream before storage to enable its storage in a retrieveable manner.


I have dozens (hundreds? thousands?) of pieces of software that rely on an operating system to store data to and deliver data from a hard drive in order. None of them violate Tivo's patent. Getting the file in order isn't the issue. Guessing where 10 sec / 30 sec is for "trick plays" without using the Tivo patent is the issue.


----------



## Curtis52

Bidderman9 said:


> Does anybody know the time line for the SCOTUS appeal? Isn't it something like if SCOTUS does not agree to hear the case by some time in late July that the appeal is automatically denied?


Well, Dish has to file for a SCOTUS appeal first. They haven't done that yet. They have 90 days from when the appeals court decision became final (04-18-08).


----------



## James Long

Curtis52 said:


> Well, Dish has to file for a SCOTUS appeal first. They haven't done that yet. They have 90 days from when the appeals court decision became final (04-18-08).


http://www.supremecourtus.gov/docket/08a1.htm
Jun 26 2008 Application (08A1) to extend the time to file a petition for a writ of certiorari from July 10, 2008 to August 11, 2008, submitted to The Chief Justice.
Jun 27 2008 Application (08A1) granted by The Chief Justice extending the time to file until August 11, 2008.​DISH now has until August 11th.


----------



## Bidderman9

Curtis52 said:


> Well, Dish has to file for a SCOTUS appeal first. They haven't done that yet. They have 90 days from when the appeals court decision became final (04-18-08).


Thanks for the reply. I did not realize that. I always assumed that they had already filed. But it makes sense. That must be where I had the late July date from. So if E* does not file the appeal by 7/19 then essentially they are expected to pay up, correct? If they file (which they keep saying that they are going to do), is there a certain time line that SCOTUS has to decide if they will hear the case by? Or is it one of those things that can go on indefinately at the discretion of the court?


----------



## Curtis52

Bidderman9 said:


> Thanks for the reply. I did not realize that. I always assumed that they had already filed. But it makes sense. That must be where I had the late July date from. So if E* does not file the appeal by 7/19 then essentially they are expected to pay up, correct? If they file (which they keep saying that they are going to do), is there a certain time line that SCOTUS has to decide if they will hear the case by? Or is it one of those things that can go on indefinately at the discretion of the court?





> "As of April 15, 2008, EchoStar has placed approximately $103.8 million in escrow during their appeal of the Company's trial court victory. Pursuant to the terms of the escrow agreement between EchoStar and the Company, the Company shall receive payment of these escrowed funds if a writ of certiorari is not filed or is denied or if certiorari is granted but then the judgment in favor of the Company is affirmed in whole or in part by the Supreme Court."


If the SCOTUS agrees to hear the case (extremely unlikely) I presume they would rule on it next summer.


----------



## jacmyoung

James Long said:


> ... If anything, changing software _makes_ the receiver "only colorably different"....Demonstrating just how different the software is will be part of the issue ... but the issue isn't one of "colorably different".


The whole point of the "colorable difference" determination is to established a *doubt* whether the modified product still infringes or not. "Only colorably different" does not establish such doubt, but "more than colorably different" establishes that doubt.

If Greg is correct that the new software issue will be a main part of the sealed DISH argument, then the purpose is to establish clear doubt in the judge's mind whether the modified DVRs still infringe or not. If the doubt can be established it automatically implies the DVRs with the new software are more than colorably different compared to the adjudicated DVRs. Or you can say if the new software is deemed more than colorably different compared to the old software, then it automatically implies the above doubt has been established.

And it will be such *doubt* that can allow DISH to avoid a contempt.


----------



## kmill14

jacmyoung said:


> The whole point of the "colorable difference" determination is to established a *doubt* whether the modified product still infringes or not. "Only colorably different" does not establish such doubt, but "more than colorably different" establishes that doubt.
> 
> If Greg is correct that the new software issue will be a main part of the sealed DISH argument, then the purpose is to establish clear doubt in the judge's mind whether the modified DVRs still infringe or not. If the doubt can be established it automatically implies the DVRs with the new software are more than colorably different compared to the adjudicated DVRs. Or you can say if the new software is deemed more than colorably different compared to the old software, then it automatically implies the above doubt has been established.
> 
> And it will be such *doubt* that can allow DISH to avoid a contempt.


The Judge will not be listening to technical arguments, so how can there be doubt placed into his mind? He won't be able to draw a conclusion as to colorably different or not. It is very likely he will ignore Dish's entire argument on its face because it is irrelevant to the order he gave.


----------



## Bidderman9

kmill14 said:


> The Judge will not be listening to technical arguments, so how can there be doubt placed into his mind? He won't be able to draw a conclusion as to colorably different or not. It is very likely he will ignore Dish's entire argument on its face because it is irrelevant to the order he gave.


I have to agree. I think the judge made it very clear that technical issues would not come in to play in the comtempt hearings. This is purely a hearing on legal merits.


----------



## jacmyoung

Bidderman9 said:


> I have to agree. I think the judge made it very clear that technical issues would not come in to play in the comtempt hearings. This is purely a hearing on legal merits.


My colorable difference/doubt comments was in response to James's comment, and I merely tried to explain my interpretation of the relation between colorable difference and the doubt issue.

I agree whole heartedly that "contempt on the face of the injunction" argument is a pure legal one, and have spent most of my time trying to looking into the legal merits of such argument, and have found none, not a single example of such contempt on face of injunction could be found in patent infringement cases, to the contrary, there are too many prior cases and higher court's opinions in support of an opposite outcome.

In fact in a few instances when prior cases were cited by the other side, including those cited by Tivo, once we spent time reading them, they all magically ended up supporting the opposite side of the argument.

Now I am not saying you can not prevail, and am not saying I will prevail. I have reasons to think my argument is likely to prevail based on all the supporting evidence, you of course can also believe you will likely to prevail even when there is no supporting evidence.


----------



## James Long

jacmyoung said:


> My colorable difference/doubt comments was in response to James's comment, and I merely tried to explain my interpretation of the relation between colorable difference and the doubt issue.


You're the guy who brought "colorably different" into this ... don't play innocent and say "I was just responding."  

jacmyoung said:


> Greg Bimson said:
> 
> 
> 
> Okay, so it prevented trebled damages. But it still didn't dismiss infringement as DISH/SATS was still found guilty.
> 
> And here we go again, with more "testimony" about how DISH/SATS is no longer infringing, using almost the exact same tactic as they had done at trial.
> 
> Except this isn't a trial.
> 
> 
> 
> Which makes it easier, because more than colorably different is not hard to demonstrate, even if it still infringes.
Click to expand...

My response to that agrees with Bidderman9 ... I wrote "This filing MUST be on the legal issue". This is a question of law, not judging the new software.



> Now I am not saying you can not prevail, and am not saying I will prevail. I have reasons to think my argument is likely to prevail based on all the supporting evidence, you of course can also believe you will likely to prevail even when there is no supporting evidence.


Once we figure out what that argument is ... since it won't be one of "colorably different".

Your previous arguments about the legality of the injunction would have more merit than trying to argue that the same hardware with different software is "more than colorably different" than the "Infringing Product". An argument that states: "The intent of the injunction was to get Echostar to cease infringing - we have ceased infringing - and here is how we ceased infringing. Please don't hold us in contempt."

Best case I see DISH getting is that they are not held in contempt and are allowed to prove with experts (the deep level that will NOT occur at the September 4th hearing) that the software makes the receivers different enough that a new trial is needed or the software is ruled non-infringing. A decision for some day beyond September 4th.

Best case I see Tivo getting is a contempt ruling ... which really won't change much. DISH will do what DISH is doing.


----------



## koralis

spear61 said:


> Data is not "dumped" onto a hard drive. A better analagy of what dish is claiming concerning dumping raw data would be to fill a 5 gallon can with gasoline and then claim that you can pour the gas out and identify each individual molecule and the order it was poured into the can. What they claim can't be done without a logical plan to parse the data stream before storage to enable its storage in a retrieveable manner.


That's just silly. Data can easily be just dumped to a hard drive.

For example: if you download a zip file from the internet and save it, the computer is merely taking the data and storing it in the time-based order in which it was recieved. No analysis has occurred and the computer doesn't even begin to take a stab at analysing the data until you attempt to decompress the file.

The "logical plan to parse the data stream" that you're referring to is simply the acknowlegement that it IS a stream... ie. sequential information. No one has a patent on sequential data as far as I know (and if they did, it was taken out a LOOOOOOOONG time ago and should be in the public domain now.)

How Dish deals with the file on playback is a different kettle-o-fish and remains to be seen.


----------



## Greg Bimson

James Long said:


> Your previous arguments about the legality of the injunction would have more merit than trying to argue that the same hardware with different software is "more than colorably different" than the "Infringing Product". An argument that states: "The intent of the injunction was to get Echostar to cease infringing - we have ceased infringing - and here is how we ceased infringing. Please don't hold us in contempt.


Try this one...

"Your Honor, we don't like the injunction. We think there is a problem with it. We'd like it modified.

"We have examined the injunction, and feel that the section that deals with no new placments must have the DVR functionality disabled. We request a motion to modify or clarify the injunction to allow for warranty replacements."

It is procedure. It is the only one that DISH/SATS has requested of the Court.

One does not get to decide what to do without approval of the court. Just because software may have been changed on "Infringing Products" does not mean that it actually was changed, actually was changed enough so it no longer infringes, and actually was changed *with the court's approval* as a request for a modification or clarification of the injunction was never filed.


----------



## jacmyoung

James Long said:


> ...Best case I see DISH getting is that they are not held in contempt and are allowed to prove with experts (the deep level that will NOT occur at the September 4th hearing) that the software makes the receivers different enough that a new trial is needed or the software is ruled non-infringing. A decision for some day beyond September 4th...


Bingo! Once DISH is found not in contempt due to lack of any basis for contempt on face of injunction in a patent infringement case, the colorable difference issue will have to be addressed. There has not been a single example of contempt ruling without discussing the colorable difference issue in the past.

If you look at the court's own preliminary schedule order, it clearly leaves the door open for an evidentiary hearing where both sides are asked to have their expert witnesses on standby around 9/4 for testimonies, and more time would be allowed if needed. Such request is likely for a hearing on the contempt issue, if needed. The damage issue is pretty much straight forward, the formulas had already been determined during the trial itself.

One can say well it is just a procedural thing, the judges always try to cover all basis, true, but to ask that witnesses from each side ready on standby in case needed, does indicate the *possibility* that a contempt may not be rendered after the 1-hour hearing on 9/4.

One simply can not ignore such possibility.


----------



## jacmyoung

Greg Bimson said:


> Try this one...
> 
> "Your Honor, we don't like the injunction. We think there is a problem with it. We'd like it modified.
> 
> "We have examined the injunction, and feel that the section that deals with no new placments must have the DVR functionality disabled. We request a motion to modify or clarify the injunction to allow for warranty replacements."
> 
> It is procedure. It is the only one that DISH/SATS has requested of the Court.
> 
> One does not get to decide what to do without approval of the court. Just because software may have been changed on "Infringing Products" does not mean that it actually was changed, actually was changed enough so it no longer infringes, and actually was changed *with the court's approval* as a request for a modification or clarification of the injunction was never filed.


I have told you if DISH makes a procedural request to modify the injunction, the judge can give it to them, the judge has the power to do so, I have provided an example of such. It will not be an attack on his injunction.

But I have also said DISH does not need such procedural thing, there has not been a single case in which a contempt ruling was rendered without discussing colorable difference issue. To find DISH in contmept on face of this injunction means when the judge produces his ruling, which always will include the usual background, factual, discussion, the law and the conclusion parts, that he may not be able to cite a single prior case to his support. Because Tivo has tried and failed, their two cases landed to DISH's support if you read them.

Have you ever seen a judge's ruling without any citing of prior cases? So I suggest you guys get busy and try to find those cases that may land to your support, because I assume the judge will need them too.

And please stop saying DISH needed court approval before modifying anything, there is no such requirement, you need to again cite one case in the past that make such requirement a precondition to avoid a contempt. Tivo did try to use two cases to make that point, only when you read them it says no, the courts usually did not approve such thing, there is no need to. In a contempt proceeding, the job of the court is to face with any acts of modification and to determine if such acts constitute a legitimate workaround of the patent, if the answer is yes, no contempt, if the answer is no, a contempt.


----------



## Greg Bimson

jacmyoung said:


> And please stop saying DISH needed court approval before modifying anything, there is no such requirement, you need to again cite one case in the past that make such requirement a precondition to avoid a contempt. Tivo did try to use two cases to make that point, only when you read them it says no, the courts usually did not approve such thing, there is no need to.


Cite one case? In most contempt proceedings, the enjoined party simply follows the court's order. In this case, DISH/SATS is still selling and is still allowing DVR functionality in enjoined, adjudicated infringing products. This is one of the most "off the deep end" cases I've seen. The court says to disable and stop sales. The enjoined party has done neither. And that is why no one can find one case of contempt, because most parties are smart enough to follow a court order.

Even in the lacrosse case cited in the other thread, at least STX was kind enough to stop selling the "X" model after the injunction became active, and marketed the "X2", which was merely colorably different. The "X" model was the enjoined device, the "X2" was the modification. In the TiVo v. Echostar case, the 501, 508, 510, 522 and 625 are enjoined, adjudicated infringing models. Yet they are still being sold and are still DVR-enabled, even though the court says they shouldn't be.


jacmyoung said:


> In a contempt proceeding, the job of the court is to face with any acts of modification and to determine if such acts constitute a legitimate workaround of the patent, if the answer is yes, no contempt, if the answer is no, a contempt.


No. A contempt proceeding simply asks whether or not a party is complying with a court's order:


> In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order.


1) DISH/SATS knows the order is in effect
2) DISH/SATS knows of the required conduct
3) DISH/SATS knows they have not complied with the court's order (and will give a reason why that will not hold water)


----------



## Bidderman9

jacmyoung said:


> Bingo! Once DISH is found not in contempt due to lack of any basis for contempt on face of injunction in a patent infringement case, the colorable difference issue will have to be addressed. There has not been a single example of contempt ruling without discussing the colorable difference issue in the past.
> 
> While I do not argue thta once E* is found in contempt they will try to file a motion to adress the "colorably different" issue. However, once they are found in contempt, isn't it really game over? E* will not let their DVR's be shut down. They will be forced to settle.


----------



## jacmyoung

Greg Bimson said:


> Cite one case? ...


Yes, I hope it is not too much to ask.



> In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order.


Could you kindly provide a link to the above quote? Where did you cite it from?

Remember the case I cited? It was a civil contempt proceeding, during which the defendent was deemed in violation of the letter of the injunction, AND the spirit of the order too, but not in contempt? Because the court had determined what the defendent did was in effect meeting the goal of the injunction, not precisely, but close enough.


----------



## jacmyoung

Bidderman9 said:


> While I do not argue thta once E* is found in contempt they will try to file a motion to adress the "colorably different" issue. However, once they are found in contempt, isn't it really game over? E* will not let their DVR's be shut down. They will be forced to settle.


Which is why the so called "evidentiary hearing" at the end of the court schedule is planned, in case DISH is not in contempt on the face of the injunction, there is no need for DISH to motion for anything, in a contempt proceeding only the patentee motions the court, the infringer just needs to respond. Tivo in such case needs no additional motion, the evidentiary hearing will automatically follow. If after the hearing DISH is still in contempt, DISH can appeal without delay, or if DISH is found not in contempt, then Tivo may appeal the no-contempt ruling.

If DISH is found in contempt after the 9/4 one-hour hearing, DISH can appeal without delay, eveything will be on hold, everyone goes home, while the appeal goes through its own course, which will take awhile.

The likely reason for the planned "evidentiary hearing" was to prepare for the possibility that DISH will not be in contempt after the 9/4 hearing. The judge does not ask everyone (expert witnesses) to be on standby lightly, there has to be a good probability they will be used in order to ask them to be right there, available immediately after the 9/4 hearing.


----------



## Greg Bimson

jacmyoung said:


> Could you kindly provide a link to the above quote? Where did you cite it from?


TiVo cited it in their contempt motion. But it is also the three-part test used for any contempt hearing, whether it is for violations of a restraining order, for violations of an order issued by a judge to force a reporter to name his source, and yes, for violations by ignoring an injunction order in a patent infringement case.


jacmyoung said:


> Remember the case I cited? It was a civil contempt proceeding, during which the defendent was deemed in violation of the letter of the injunction, AND the spirit of the order too, but not in contempt? Because the court had determined what the defendent did was in effect meeting the goal of the injunction, not precisely, but close enough.


Only if the above were true.

There was ambiguity in the injunction order. The court ruled that there was NOT a "violation of the letter of the injunction":


> Turning to the merits of parties' positions, the Court is of the opinion that Plaintiffs have not met their burden of demonstrating that MTC's conduct warrants a finding of civil contempt. First, Plaintiffs have not presented clear and convincing evidence that MTC has violated a "specific and definite court order."


The injunction in Bayview Hunters Point Community Advocates v. Metropolitan Transportation Commission was very murky. The injunction in TiVo v. Echostar is quite clear.


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## jacmyoung

Greg Bimson said:


> ...The court ruled that there was NOT a "violation of the letter of the injunction"...


That is your own words, go back and read the highlighted terms in my citing, the court agreed with the plaintiffs the defendent violated the letter of the injunction, and then the court itself noted the defendent also violated the spirit of the order. If you can't find them let me know I will repost them.

The ambiguity was the direct result of a broad injunction, which is quite common. An injunciton can be broad, and being broad will no doubt creat ambiguity, and when such ambiguity arises, the defendent gets the benefit of it.

I don't think we disagree that the current injunction is also broad, if your interpretation is true, it is broad to a point that the end result may prevent DISH from performing acts that do not infringe on the patent. One can call that an ambiguity becasue it causes a conflict between the letter of this injunction, and the uniform standards established by the higher courts. In such case, the defendent should get the benefit in such conflicting situation.


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## Greg Bimson

> Turning to the merits of parties' positions, the Court is of the opinion that Plaintiffs have not met their burden of demonstrating that MTC's conduct warrants a finding of civil contempt. First, Plaintiffs have not presented clear and convincing evidence that MTC has violated a "specific and definite court order."





> As the foregoing analysis suggests, MTC cannot be held in civil contempt for violating the letter of the injunction.





> ...MTC's interpretation of the disputed portion of the injunction might indeed violate the spirit of the Order.


All from the case you linked, _Bayview Hunters Point Community Advocates v. Metropolitan Transportation Commission_.

The Court did not find contempt for "violating the letter of the injunction".


jacmyoung said:


> The ambiguity was the direct result of a broad injunction, which is quite common. An injunciton can be broad, and being broad will no doubt creat ambiguity, and when such ambiguity arises, the defendent gets the benefit of it.


Disable "Infringing Products". Yep. Sounds broad and ambiguous to me.


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## jacmyoung

In the above case:

"To remedy this deficiency, the Court issued an injunction ordering MTC to adopt an amendment to the 2001 Regional Transportation Plan ("RTP") that describes "*the specific projects* that MTC will fund in order to achieve the required ridership increase by November 9, 2006; *each project* description shall include an implementation schedule, along with estimated costs and *expected ridership gains.*" July 19, 2002 Order Granting Injunctive Relief ("Order") at 18 (emphasis added)."

The language was clear in the order, that the expected ridership gains must be provided in each project, all of them together would lead to the overall goal in 2006.

In an effort to come into compliance with the above order, MTC offered their plan which spelled out each project schedule and cost, but did not specify the ridership gains in each project, only that by 2006 the overall goal would be met. That was where the plaintiffs argued MTC should be found in contempt of the order based on the violation of the letter of the injunction.

The court agreed the MTC implementation did not stick to the letter of the injunction, but argued that MTC could not be found in contempt due to violation of the letter of the injunction, because MTC reasonably argued their plan would have reached the overall goal by 2006, even though the year by year gains, as specifically mandated in the injunction, were not spelled out. In fact later the court even said, even if MTC did nothing from 2002 to 2005, but as long as they met the overall goal all in the last few months of 2006, it would be ok too. The "ambiguity" lied in the fact the specific mandate about the gains of each project in each year, served unclear purpose when the overall goal was also spelled out for 2006.

Yes indeed the court accepted the notion by the plaintiffs that MTC was in violation of the letter of the injunction, and later further noted that MTC was also in violation of the spirit of the order, but MTC was not in contempt, because MTC made a good faith effort to interpret the order, and their implementation, while not sticking to the letter, nor sticking to the spirit of the injunction, was good enough to avoid a contempt.

The analogy here can be, that if we can agree that the overall goal of this injunction is to stop further infringement (if one disagrees with this then stop reading further), then the specific mandate to "disable the DVR functions of the DVRs on the list", while very clearly spelled out indeed, serves unclear purpose when the over all goal is also clear, to stop infringement, no more no less. When such "ambiguity" exists, the ruling will go in favor of the defendent.

Notice in both cases the letters of the injunctions themselves are unambiguous, clear and concise, the ambiguity arised when such clear, concise mandate served unclear purpose when the overall objective itself can be achieved by other means.

Again I want to stress that in such line of logic of the court, there is no attack on the injunctions, the higher court made it clear that an injunction can be broad, the purpose is to encourage parties to agree, if what takes may be to wave a much bigger stick than necessary. But if the parties, even after all the effort by the court, including the use of broad injunctions, undaunted by a bigger than usual stick waved at them, still refuse to agree among themselves, and once we are in a contempt proceeding, the rules change.

In a contempt phase, it is not the letter of the injunction, nor even the spirit of the injunction that is at stake, it is the overall goal of the injunction that is the key to determine a contempt or not.

Or if I can put it this way, no judge should feel compelled to find a contempt due to a perceived disrespect of his or her order, in a civil contempt case. A judge knows what is at stake is not his or her reputation or ego, but what the ultimate goal it is to achieve. Once such goal is achieved, or can be expected to be achieved, there should be no contempt.


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## Greg Bimson

jacmyoung said:


> The court agreed the MTC implementation did not stick to the letter of the injunction, but argued that MTC could not be found in contempt due to violation of the letter of the injunction, because MTC reasonably argued their plan would have reached the overall goal by 2006, even though the year by year gains, as specifically mandated in the injunction, were not spelled out.


No.


> First, *Plaintiffs have NOT presented clear and convincing evidence* that MTC has violated a "specific and definite court order." Implicit in this finding is the Court's acknowledgment that its directive to MTC to amend the RTP to include "expected ridership gains" for each project is not without some degree of ambiguity. Such ambiguities in the Order must be resolved in MTC's favor.





> Second, given this uncertainty, MTC's approach to the "expected ridership gains" requirement "appears to be based on a good faith and reasonable interpretation of the Order.





> The Court agrees that MTC's interpretation, which calls for providing an estimate of the total number of riders who will use each project once it is implemented, is logically related to the central requirement of the injunction, to wit: achieving a regional ridership target of 544.8 million boardings by 2006. Because this overall goal is stated as an absolute figure, MTC not unreasonably concluded that estimating the total number of riders on a given system is the most meaningful way of expressing "expected ridership gains."





> Third, Plaintiffs have not shown that MTC has failed to substantially comply with the Order. While the parties may disagree as to MTC's approach to reporting "expected ridership gains," at bottom this requirement is only one provision of a broad injunction. The bulk of the RTP Amendment remains unchallenged.


And the point that TiVo is hammering is ONE PROVISION of a clear, concise injunction appears to be ignored: the section that says to disable the DVR functionality of listed models, of which none have been disabled.


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## jacmyoung

"Implicit in this finding is the Court's acknowledgment that its directive to MTC to amend the RTP to include "expected ridership gains" for each project is not without some degree of ambiguity"

The order to include the expected ridership gains for *each project* itself is unambiguous, tell me which part do you not understand so you end up not to include the ridership gains number in each project?

The ambiguity is that such order itself, while concise in terms and language, itself is ambiguous as far as how such order may be necessary to achieve the overall goal.

In the current order, there is a concise provision to disable the DVR functions, the order like the one cited above, is clear, but ambiguous as far as how it is essential to acheive the overall goal, to stop the infringement, when other means of achieving such exact goal is available. Just like what MTC did, they used a different means, spelled out each project without giving the ridership gains for that project, so what, the high court said, as long as the overall ridership gains could be acheived by 9/06.


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## Greg Bimson

jacmyoung said:


> In the current order, there is a concise provision to disable the DVR functions, the order like the one cited above, is clear, but ambiguous as far as how it is essential to acheive the overall goal, to stop the infringement, when other means of achieving such exact goal is available.


Except that when trying to argue against an injunction, DISH/SATS explained the injunction as written would force three million Dish Network subscribers to lose their DVR functionality. A given party cannot then argue a new interpretation where no one loses functionality. DISH/SATS cannot claim both sides of the coin in their interpretation of the injunction.

It was one of the original reasons the injunction stated to disable the DVR functionality; the software is not going to be allowed to be a moving target.


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## James Long

jacmyoung said:


> "To remedy this deficiency, the Court issued an injunction ordering MTC to adopt an amendment to the 2001 Regional Transportation Plan ("RTP") that describes "the specific projects that MTC will fund in order to achieve the required ridership increase by November 9, 2006; each project description shall include an implementation schedule, along with estimated costs and expected ridership gains."


*What is the clearly stated GOAL of this injunction?*
"achieve the required ridership increase by November 9, 2006"

MTC failed to follow the court ordered steps for meeting that goal (by not providing per project expected ridership gains and only providing an overall expected ridership gain estimate of enough to reach the goal). But the CORE intent of the injunction (which, of course, isn't a patent infringement injunction) is to "achieve the required ridership increase by November 9, 2006".

In the MTC case the one goal was to increase ridership ... and the reporting aspect that MTC failed to do was part of the same command to increase ridership.

In the Tivo vs Echostar case the command to disable DVR functionality is not part of a larger stated goal to "stop infringing" ... it is a command all to itself ... very clear and simple to understand. DISABLE the DVR functionality. Now. No ifs, ands or buts. Now.


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## jacmyoung

James Long said:


> ...In the Tivo vs Echostar case the command to disable DVR functionality is not part of a larger stated goal to "stop infringing" ...


This is your opinion not a fact. All injunctions in patent infringement cases serve the purpose of stopping further infringement, this much is clearly stated in many cases. To say otherwise one needs to offer some proof, like a prior case or some opinion from the court to state that there are other purposes than to stop further infringement.

Besides how did you come to the conclusion that disabling the DVR functions was not part of the overall goal to stop infringement? What part of it clearly indicated to you that it was for some other purpose? If so what is it?


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## scooper

James, can you just close / lock ALL threads on this case until we get the next official from the court ?


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## CuriousMark

scooper said:


> James, can you just close / lock ALL threads on this case until we get the next official from the court ?


Why? Good information seeps out of this debate from time to time. What harm does locking it prevent? What is the value in preventing the gain that does come from it, small and infrequent as it is.

I think many more people than those that post follow this discussion in order to know where things may be going and what possible ramifications it might have. That seems very useful to me.

Besides it is also excellent entertainment.


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## James Long

jacmyoung said:


> This is your opinion not a fact. All injunctions in patent infringement cases serve the purpose of stopping further infringement, this much is clearly stated in many cases.


Was it clearly stated in THIS CASE? Or is it just your opinion and not a fact in THIS CASE.

My statement is based on THIS CASE ... on what THIS JUDGE told THIS DEFENDANT. It seems that you're the one speculating on the real meaning of the injunction.

The MTC injunction made it clear what the goal was ... that injunction also was not to stop further infringement. The injunction you quoted clearly was intended to get MTC to perform the primary act "achieve the required ridership increase by November 9, 2006".



> What part of it clearly indicated to you that it was for some other purpose?


Where in the injunction do you see the primary purpose being "stop infringement"? Many in these threads have read into the injunction an unwritten "punish Echostar". Show us where, in this injunction (not in your opinion based on your "knowledge" of other injunctions) it says the goal is to stop infringement. The MTC injunction made it clear ... this one didn't.

The thing that IS clear in this injunction, the words that you faithfully fail to comprehend and assimilate into reality, is that DISH is directed SPECIFICALLY to perform certain acts that they have failed to perform. Can you _accept_ that in 20 word or less or should we expect another trip down a rabbit hole?


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## James Long

scooper said:


> James, can you just close / lock ALL threads on this case until we get the next official from the court ?


That would be nice ... but we shouldn't let one person ruin the thread for others. If the thread gets to the point of personal annoyance unsubscribe from it. I promise that a new thread will be started or there will be a title change when anything official happens.


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## jacmyoung

James Long said:


> Was it clearly stated in THIS CASE? Or is it just your opinion and not a fact in THIS CASE...


There is no need to even state in this injunction what its purpose, and the only purpose must be. Injunctions in patent infringement cases are injunctions on infringement. You have yet to produce a single prior case, or a single court opinion to prove otherwise, so it is not what my opinion that is at stake, rather yours that is on a very shaky ground without any basis.

I on the other hand had quoted many times what purpose an injunction on infringement is to serve, not by my own opinion, but by quoting the words spelled out by the courts.

Attacking my opinions serves no good purpose, attack the courts' opinions instead, there are many quoted in the past.

A simple "but it is not relevant to this case" does not strengthen one's argument if one fails miserably in finding at least a single "relevant case" himself to come to his own defence, why? If you wish the judge to come to your side of ruling, you must provide at least a few prior cases to support such ruling, that is what a judge must do.

You can not find a single judge's ruling in which he says I need not to cite anything, I need no case law for support, I only rely on my own words.

So again I suggest to prove the notion that an injunction can serve purposes other than prohibiting further infringement, folks get busy finding some examples. Don't be lazy, and unlike the other side, if you find one case that support your theory, I will not simply call it not relevant and brush it off, I will instead give as much attention to your finding as I gave to mine.


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## James Long

jacmyoung said:


> Attacking my opinions serves no good purpose,


Sorry. I forgot that what you write is "fact". 

Why is it that you attack people for their opinions and yet refuse any scrutiny of yours?


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## nobody99

jacmyoung said:


> Injunctions in patent infringement cases are injunctions on infringement. You have yet to produce a single prior case, or a single court opinion to prove otherwise


A single case was mentioned in the last thread in which a company was permanently stopped by injunction from selling *unpatented* pump repair parts.

What infringement was there on this case again? Can you remind me?


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## jacmyoung

James Long said:


> Sorry. I forgot that what you write is "fact".
> 
> Why is it that you attack people for their opinions and yet refuse any scrutiny of yours?


My opinion in this instance is that an injunction on infringement is just that, to prohibit further infringement on the said patent, and such opinion is based all many many prior cort cases and opinions of the court. You are so welcome to scrutinize my such opinion. I am only asking that when you try to do that, offer some factual basis, such as some reference of the opinions by the court, or a few prior cases.

What you are insisting is the only basis needed is the words in this injunction, that is it. And as a result a ruling of contempt in this case will only need to consist three sentences:

1) The injunction ordered disabling of the DVR functions;
2) DISH's DVRs still are using the DVR fucntions, infringing or not;
3) DISH is in contempt.

No referencing any prior court's opinions that clearly gave doubt to the above ruling, no referencing any prior cases, because according to you folks, only an *identical* case shall apply, otherwise they are all *irrelevant* and can not be cited for guidance.

Good luck with the above three-sentence contempt ruling. It will without a doubt change how the court rules on cases forever.

I have never insisted that only my speculation will prevail, things can go different ways. What I have problem with is the notion that a speculation needs to only rely on a few words in the injunction, that somehow this injunction stands out above all the rest, that it is so unique it needs not be bothered with all other prior court's opinions.

I am not even saying this line of thinking has no chance to prevail, just that it lacks persuasion. It is such lack of persuasion that I am attacking, not your opinion. We can certainly agree to disagree.


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## jacmyoung

nobody99 said:


> A single case was mentioned in the last thread in which a company was permanently stopped by injunction from selling *unpatented* pump repair parts.
> 
> What infringement was there on this case again? Can you remind me?


I have responded to that one twice already, the reason is because the use of such unpatented parts constituted an act of assisting the continued infrignement of the patent by allowing the infringing pumps to continue to infringe in the field.

Had the pumps in the field no longer infringed, the use of those parts would have been a non issue, in fact the use of the pumps and any repair of them would have been a non issue, had those pumps not infringed on the patent anymore. But unfortunately they still were, they were allowed to continue to infringe in that case, but only to the extent that they ran their own courses, no repair was allowed, when they die they die, could not be resurrected.

The exact same logic applies to the 179,000 DVRs allowed to continue to infringe in this case, unless DISH downloads the new software on them so they no longer infringe, otherwise once any of them fail, it has to be replace with a non-infringing DVR, can't be repaired to continue to infringe with any parts, can't even be replace by another same model that would have caused it to continue to infringe.

So yes your above single case is indeed relevant to this case, but only in the context of those 179,000 DVRs that are still infringing as they did in the past. The rest of the DVRs, according to DISH are no longer infringing, and therefore your case does not apply on them.


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## spear61

Some seem to have forgotten what is currently on the docket. It is not about patent law, it is not about injunctions, --- what it is about is a simple hearing to decide if a litigant is in contempt of court (did dish do what the judge told them to do) - nothing more.


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## nobody99

jacmyoung said:


> I have responded to that one twice already, the reason is because the use of such unpatented parts constituted an act of assisting the continued infrignement of the patent by allowing the infringing pumps to continue to infringe in the field.


Are you sure? Are you sure it wasn't to allow the patent holder to benefit from the lost sales allowing them to sell the replacement parts?

Look, you are working on the assumption that an injunction in a patent case must only be related to infringement. That assumption is wrong. I'm just trying to help you see the error in your ways 

Besides, spear61 is exactly right - September 4th has nothing to do with patents. It only has to do with the question of whether or not the DVR functionality has been turned off in the adjudicated devices. Simple yes or no question.


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## James Long

spear61 said:


> Some seem to have forgotten what is currently on the docket. It is not about patent law, it is not about injunctions, --- what it is about is a simple hearing to decide if a litigant is in contempt of court (did dish do what the judge told them to do) - nothing more.


Exactly. Perhaps some have more fun discussing things not on the docket, stating "facts" that are not facts and trying to "win" by posting more words?

Seems pretty simple ... this is an infringement case where a clear injunction has been issued giving clear instructions to do specific actions. The clear decision will come based on whether or not Echostar has done those things.

So far despite all the pontifications jacmyoung has failed to provide an infringement case where the clear instruction was ignored and the judge did not find contempt. The cases presented has a loophole or flaw that isn't present in the injunction in this case. The goals of those injunctions were stated ... and although plaintiffs disagreed with the way that those goals were met, the stated goal of the injunction was met.

The question for September 4th is has Echostar followed the court's order or are they in contempt.
* Have they paid the cash compensation? (Not yet.)
* Have they ceased selling and placing the eight "Infringing Products" and any only colorably different? (No.) 
* Have they disabled the DVR functionality on "Infringing Products" already placed? (No.)

If the answer keeps coming up "no" why should DISH not be held in contempt?
That is actually the key question for September 4th ... because despite the refusal to accept the facts that some have demonstrated, DISH has _not_ followed the clear instructions of the court's order. DISH did something else ... and the legal question for September 4th is not a question of infringement or not - it is whether DISH is in contempt for doing "something else" instead of following the clear instruction of the court.


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## Curtis52

spear61 said:


> Some seem to have forgotten what is currently on the docket. It is not about patent law, it is not about injunctions, --- what it is about is a simple hearing to decide if a litigant is in contempt of court (did dish do what the judge told them to do) - nothing more.


Exactly. It's about contempt of court, not patent infringement.
However...



> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. *Nevertheless*, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). *Infringement is the sine qua non of violation of an injunction against infringements*.
> 
> The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction. See, e.g., Panther Pumps Equipment Company, Inc. v. Hydrocraft, Inc.,"


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## scooper

James Long said:


> The question for September 4th is has Echostar followed the court's order or are they in contempt.
> * Have they paid the cash compensation? (Not yet.)
> * Have they ceased selling and placing the eight "Infringing Products" and any only colorably different? (No.)
> * Have they disabled the DVR functionality on "Infringing Products" already placed? (No.)
> 
> If the answer keeps coming up "no" why should DISH not be held in contempt?
> That is actually the key question for September 4th ... because despite the refusal to accept the facts that some have demonstrated, DISH has _not_ followed the clear instructions of the court's order. DISH did something else ... and the legal question for September 4th is not a question of infringement or not - it is whether DISH is in contempt for doing "something else" instead of following the clear instruction of the court.


Because the listed units are now more than colorably different ?

DO you guys HONESTLY think Tivo will ever see any of their settlement money ?


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## HobbyTalk

scooper said:


> DO you guys HONESTLY think Tivo will ever see any of their settlement money ?


Sure, at some point Dish will have pay that $100M+ as that is for past infringment before any new software was downloaded. Just when they will have to pay no one knows


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## scooper

I don't see it being paid without some concessions from Tivo.

If I was Charlie - I'd being secretly buying up as much of Tivo as possible, then announce when we had hit the SEC required reporting limits with our intention to buy them out, Or at least get majority voting stock. And I'd be using the "settlement money" to do it with.


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## Curtis52

scooper said:


> I don't see it being paid without some concessions from Tivo.


The money is in escrow. Dish can't stop it from being paid.



> "As of April 15, 2008, EchoStar has placed approximately $103.8 million in escrow during their appeal of the Company's trial court victory. Pursuant to the terms of the escrow agreement between EchoStar and the Company, the Company shall receive payment of these escrowed funds if a writ of certiorari is not filed or is denied or if certiorari is granted but then the judgment in favor of the Company is affirmed in whole or in part by the Supreme Court. The escrow funds encompass damages through September 8, 2006 and related interest through August 16, 2006 only, and do not reflect damages since that date. "


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## Greg Bimson

From the case Curtis52 cited:


> The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction.


But in that case, the modified device was not an adjudicated device.

In _TiVo v. Echostar_, the infringing party states they have modified their adjudicated, infringing products that are subject to the injunction. If DISH/SATS has an issue with the injunction, they need to file a motion of clarification to have any hope of modifying a clear, concise order. Which is precisely what was filed, but only to ask for a ruling relating to the Advanced Exchange Program.

Meanwhile there are eight adjudicated models that are still active, and DISH/SATS has no intent to ask the court for relief from the injunction on those infringing, adjudcated models.


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## Curtis52

Greg Bimson said:


> From the case Curtis52 cited:But in that case, the modified device was not an adjudicated device.


The modified device has not been adjudicated in this case either.


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## Greg Bimson

Curtis52 said:


> The modified device has not been adjudicated in this case either.


Yes, it has.

Just because DISH/SATS may have modified one byte or one billion lines of code on DVR models 501, 508, 510, 522 and 625, does not mean those devices have not been adjudicated. A modification may have been performed on the adjudicated devices, but there has been no request for modification of the injunction to take those adjudicated devices out of the scope of the injunction. Besides...


> LEGAL STANDARD
> 
> A party's failure to comply with a court order constitutes civil contempt. General Signal Corp. v. Donallco, Inc.,787 F.2d 1376, 1379 (9th Cir. 1986). See Go-Video v. Motion Picture Ass'n of America, 10 F.3d 693, 695 (9th Cir. 1993) (civil contempt "consists of a party's disobedience to a specific and definite court order by failure to take all reasonable steps within the party's power to comply"). A district court may find a party in civil contempt if the following four elements are satisfied: (1) violation of a court order, (2) beyond substantial compliance, (3) not based on a good faith and reasonable interpretation of the order, (4) by clear and convincing evidence. Id. "If a violating party has taken 'all reasonable steps' to comply with the court order, technical or inadvertent violations of the
> order will not support a finding of civil contempt." General Signal Corp., 787 F.2d at 1379 (citation omitted). All ambiguities in an order for injunctive relief must be resolved in favor of the party subject to the injunction. Clark v Coye, 60 F.3d 600, 604 (9th Cir. 1995). A district court's finding of civil contempt is reviewed for an abuse of discretion. Diamontiney v. Borg, 918 F.2d 793, 795 (9th Cir. 1990).
> 
> Sanctions may be imposed in a civil contempt proceeding "to coerce the defendant into compliance with the court's order, or to compensate the complainant for the losses sustained." United States v United Mine Workers of America, 330 U.S. 258, 303-304 (1947); General Signal Corp., 787 F.2d at 1380 (same). A district court imposing coercive sanctions must take into account "the character and magnitude of the harm threatened by continued contumacy, and the probable effectiveness of any suggested sanction in bringing about the result desired." Shuffler v Heritage Bank, 720 F.2d 1141, 1148 (9th Cir. 1983) (citation omitted). Compensatory sanctions must be based on "actual losses sustained as a result of the contumacy." Id.; United Mine Workers, 330 U.S. at 304 (fines imposed for a compensatory purpose must be "based upon evidence of [the] complainant's actual loss"). A district court's decision to impose sanctions for civil contempt is reviewed under an abuse of discretion standard. Gifford v. Heckler, 741 F.2d 263, 266 (9th Cir. 1984).


Although this is Ninth Circuit, this was the legal standard applied to the MTC case.

DISH/SATS is hoping (actually pinning their hopes on) either Judge Folsom at the District Court or the Eleventh Circuit Court of Appeals saying there is enough ambiguity that contempt will not be found. The problem is that DISH/SATS arguments why a permanent injunction should not be placed on the "Infringing Products" shows they had no intention of following the injunction.


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## Curtis52

Greg Bimson said:


> A modification may have been performed on the adjudicated devices, but there has been no request for modification of the injunction to take those adjudicated devices out of the scope of the injunction.


The modified devices are not included in the injunction.


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## James Long

Curtis52 said:


> The modified devices are not included in the injunction.


All "Infringing Products", defined as eight models of DVR, and any other products only colorably different are included in the injunction. Even "Infringing Products" that have been modified as ordered to have their DVR functionality removed remain under the injunction.

Why do you say modified devices are not included? Do you consider a software download as some sort of magic that makes them more than colorably different? Do you believe that a software download magically makes a DP-501 into something other than a DP-501 (even though the "Infringing Products" - which includes the 501 - are still using the same hardware and the same model numbers after modification)?


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## scooper

I certainly have that opinion - a 5xx with new non-infringing S/W is certainly different than the 5xx with the old S/W - and Dish seems to feel the same way, given that Mr Minnick has a deposition going into this hearing as well . As it has been pointed out repeatedly - the difference is not something a person with ordinary skills could detect.

Same goes for the other units.

The part of the injunction that says "shutdown all units already deployed in customer's houses" is WAY extreme - it's unprecedented in its scope. Nor will it help Tivo - many of us who got a Dish DVR did so because the Dish price as well as the integrated functionality was much better. I would NOT be surprised that Dish says to the judge 'We will NOT be disabling DVR functionality on the units already out in the field" - no matter what the cost because of that unprecedented scope.


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## nobody99

scooper said:


> Because the listed units are now more than colorably different ?


And for the fourteen billionth time, we come back to this.

Colorably different only applies when designing around a patent and selling new product. If they came out with a new model (DP-522a) that had new software loaded from the start, I would wholeheartedly agree you have a point.

More to the point, there's never been a case that anyone could find where an infringing device already in the hands of the end user has been ordered to be changed. Regardless of how many cases someone comes up with for examples, this is breaking new ground. I think I've found something reasonably close where an injunction prevents a company from selling a NON-PATENTED part.

That said, the status meeting on September 4th deals with only one thing: has the DVR functionality been turned off on the named DVR models.


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## James Long

nobody99 said:


> That said, the status meeting on September 4th deals with only one thing: has the DVR functionality been turned off on the named DVR models.


More accurately, the main question is "is DISH in contempt for the way they have responded to the injunction". The basic question of whether or not the DVR functionality has been disabled isn't really in dispute (unless DISH is arguing the meaning of the word _the_ in "the DVR functionality - I hope they are not!). The question is whether their actions place them in contempt.

The second question regarding the repair/exchange program will also be dealt with (although I note that Tivo's push on the second issue is over DISH wanting to count receivers placed after the injunction was written as part of the ~192k DISH is allowed to keep active ... which is more than just repair/exchange receivers). On the second issue DISH wants to be able to have a floating 192k "Infringing Receivers" active regardless of the date of placement.


----------



## scooper

nobody99 said:


> And for the fourteen billionth time, we come back to this.
> 
> Colorably different only applies when designing around a patent and selling new product. If they came out with a new model (DP-522a) that had new software loaded from the start, I would wholeheartedly agree you have a point.
> 
> More to the point, there's never been a case that anyone could find where an infringing device already in the hands of the end user has been ordered to be changed. Regardless of how many cases someone comes up with for examples, this is breaking new ground. I think I've found something reasonably close where an injunction prevents a company from selling a NON-PATENTED part.
> 
> That said, the status meeting on September 4th deals with only one thing: has the DVR functionality been turned off on the named DVR models.


So what would be "more than colorably different" between a "522A" released with new software after the injunction and an old 522 with the new software ? I don't see the point about a "name change" and what has happened. Dish has had a history of changing model numbers - Take the old 4700/4900 receivers - they are now all 4900 receivers - no hardware changed, just a new version of software.

This whole case is breaking new ground. If you're going to insist that the devices already placed "must have their DVR functionality disabled" you must also allow that they can be changed to be non-infringing as well.


----------



## Greg Bimson

scooper said:


> I don't see the point about a "name change" and what has happened. Dish has had a history of changing model numbers - Take the old 4700/4900 receivers - they are now all 4900 receivers - no hardware changed, just a new version of software.


One of my points a while ago.

This is all about internal control of your models. Let's say that the as the 522 was found infringing, DISH/SATS turned around and retired the model, and started selling a new version with the pre-loaded new software called the 522A.

The "newly modified" 522A becomes an internal control for DISH/SATS and their model numbers. It is completely a different receiver, because that is how DISH/SATS released it. It wouldn't do anything for the 522's in the hands of the end users, though.



scooper said:


> So what would be "more than colorably different" between a "522A" released with new software after the injunction and an old 522 with the new software ?


That has much less to do with "colorable difference" and more to do with simply being an adjudicated device.

Every discussion we have about this is the fact the injunction states the 522 as one of eight models that are supposed to be disabled. Changing the software at the end user receiver will never change the fact these are 522's.

DISH/SATS will not get to play John Travolta as Vinnie Barbarino in the court room:

Judge: Where are all of your 522 receivers?
DISH/SATS: Wha...?
Judge: The ones you sold to end users?
DISH/SATS: Where...?

The courts like clear and concise information. Don't give the courts clear and concise information, and, well, take a look back at TiVo's motion for contempt to see the list of DISH/SATS pattern of "lack of respect for the law".

If DISH/SATS retired the 522 model once they were found infringing, loaded new software onto it and called it the 522A, then technically, DISH/SATS could have avoided the issue about sales of the model. However, DISH/SATS would have still had to disable all of the old 522's that they retired. Try to change existing 522's to 522A's, and then there is no internal control over those models.

And for those that seem to forget, let's take the time to figure this one out...

What is colorably different from a 522 with infringing software than one that has newer software? They still appear to do the exact same thing. There isn't a colorable difference in the units.


scooper said:


> This whole case is breaking new ground. If you're going to insist that the devices already placed "must have their DVR functionality disabled" you must also allow that they can be changed to be non-infringing as well.


As long as the court OK's modifications to the adjudicated devices.

TiVo does a wonderful job telling the courts that DISH/SATS had already put this plan in place before the permanent injunction was entered. The only reason that DISH/SATS was lucky enough to implement their plan was because the Court of Appeals granted DISH/SATS brief to appeal the case, and therefore stayed the injunction. The "wheels of justice" turned slow enough to give DISH/SATS time to finish implementing their plan. TiVo rightfully points out that the only way to avoid the injunction was for a complete reversal, so this was DISH/SATS plan from Day One.

Now, DISH/SATS may end up being ground up in the same "wheels of justice" that TiVo experienced. I fully expect TiVo to attempt to go after the "not more than colorably different" DVR's after this contempt hearing, while DISH/SATS appeals the "prima facie" contempt ruling (I am assuming TiVo will win that). Meanwhile, this Delaware suit may go nowhere for DISH/SATS, as I'll also assume that TiVo will take the sealed DISH/SATS response brief and use it to reply that the new software issue is actually being discussed right now.

It is almost exactly like the distants case, only in the sense that DISH/SATS may have taken this too far to be able to back out gracefully.


----------



## scooper

Greg Bimson said:


> One of my points a while ago.
> 
> This is all about internal control of your models. Let's say that the as the 522 was found infringing, DISH/SATS turned around and retired the model, and started selling a new version with the pre-loaded new software called the 522A.
> 
> The "newly modified" 522A becomes an internal control for DISH/SATS and their model numbers. It is completely a different receiver, because that is how DISH/SATS released it. It wouldn't do anything for the 522's in the hands of the end users, though.


No kidding - this is exactly what I was responding to nobody99 about.



Greg Bimson said:


> That has much less to do with "colorable difference" and more to do with simply being an adjudicated device.
> 
> Every discussion we have about this is the fact the injunction states the 522 as one of eight models that are supposed to be disabled. Changing the software at the end user receiver will never change the fact these are 522's.
> 
> DISH/SATS will not get to play John Travolta as Vinnie Barbarino in the court room:
> 
> Judge: Where are all of your 522 receivers?
> DISH/SATS: Wha...?
> Judge: The ones you sold to end users?
> DISH/SATS: Where...?
> 
> The courts like clear and concise information. Don't give the courts clear and concise information, and, well, take a look back at TiVo's motion for contempt to see the list of DISH/SATS pattern of "lack of respect for the law".
> 
> If DISH/SATS retired the 522 model once they were found infringing, loaded new software onto it and called it the 522A, then technically, DISH/SATS could have avoided the issue about sales of the model. However, DISH/SATS would have still had to disable all of the old 522's that they retired. Try to change existing 522's to 522A's, and then there is no internal control over those models.
> 
> And for those that seem to forget, let's take the time to figure this one out...
> 
> What is colorably different from a 522 with infringing software than one that has newer software?


You still don't get this one, do you ? :nono2: Go read Echostar's brief for the 30 May status hearing for a complete answer. This is the one that Dish has filed for their own patent. I'd also bet that this is what is in the sealed reply brief, albiet with more details.



Greg Bimson said:


> They still appear to do the exact same thing. There isn't a colorable difference in the units.As long as the court OK's modifications to the adjudicated devices.


Before or after ? You seem to be saying that the court must approve the changes before they are implemented, while jacmyoung found many cases where the infringer found and implemented a workaround before contempt was found. Also the whole point on patents is "things that are not apparent to a person of ordinary skills".


----------



## Greg Bimson

Greg Bimson said:


> They still appear to do the exact same thing. There isn't a colorable difference in the units.As long as the court OK's modifications to the adjudicated devices.





scooper said:


> Before or after ? You seem to be saying that the court must approve the changes before they are implemented, while jacmyoung found many cases where the infringer found and implemented a workaround before contempt was found. Also the whole point on patents is "things that are not apparent to a person of ordinary skills".


The cases jacmyoung found are regarding "modified products", i.e., retiring and ceasing sales of an infringing model, and restarting sales of a hopefully non-infringing modification of the adjudicated product.

The short version:
DVR models 501, 508, 510, 522, 625, 721, 921 and 942 have been found to infringe. They are now adjudicated and subject to an injunction. Those models are history.

Don't want them to be history? File a motion to modify the injunction with the courts, to get those models out of the scope of the injunction...


scooper said:


> You still don't get this one, do you ? Go read Echostar's brief for the 30 May status hearing for a complete answer. This is the one that Dish has filed for their own patent. I'd also bet that this is what is in the sealed reply brief, albiet with more details.


DISH/SATS may have a complete answer, but until a court rules that eight infringing models of DVR's no longer infringe, the injunction stands as is. Asking the court to ignore its own order because of some new "modification" to the Infringing Products ignores one of the basic tenets of law: request a motion to modify the injunction so that *the court* can determine if you are truly in compliance regarding adjudicated products.

After all, DISH/SATS has requested a clarification or modification of the injunction for their warranty program for the 721, 921 and 942. It isn't like they don't know process.


----------



## scooper

So to get around your intreprtation - all Dish has to do is change the model number by pushing out new software and then Tivo has to start all over . I can deal with that - at this point it only takes a short amount of time to make that change - they are no longer "Infringing models" - and yes - doing it this way, they CAN play Vinny Barbarino "What infringing models your honor ? we don't have any more of those models in the field".

And I still haven't heard a CONVINCING REASON WHY currently deployed units MUST be shutdown (and no Judges' order explains this unprecedented outreach).


----------



## Greg Bimson

scooper said:


> So to get around your intreprtation - all Dish has to do is change the model number by pushing out new software and then Tivo has to start all over.


No.

DVR 522 - the adjudicated, infringing model, which should have been retired after the trial.
DVR 522A - the new software model.

DISH/SATS stops selling the 522. Now they start selling the 522A. TiVo would have to go after DISH/SATS on a continuing infringement contempt motion if they want to go after the 522A. However, the 522's with customers are toast and should be disabled.

In addition, if DISH/SATS then makes all 522's in the field 522A's, that would draw scrutiny to all existing 522's, either infringing or the "A" model. Customers purchased 522's; just because there is a software download doesn't make them 522A's.


scooper said:


> I can deal with that - at this point it only takes a short amount of time to make that change - they are no longer "Infringing models" - and yes - doing it this way, they CAN play Vinny Barbarino "What infringing models your honor ? we don't have any more of those models in the field".


You will not see that stand.

There were four million "Infringing Products" in the field. They didn't all just disappear. Most of those are still in use. All "Infringing Products" are adjudicated. Simply changing the name of existing installs will not get around the injunction, as those models were adjudicated.


----------



## spear61

James Long said:


> More accurately, the main question is "is DISH in contempt for the way they have responded to the injunction". The basic question of whether or not the DVR functionality has been disabled isn't really in dispute (unless DISH is arguing the meaning of the word _the_ in "the DVR functionality - I hope they are not!). The question is whether their actions place them in contempt.
> 
> QUOTE]
> 
> You got it right. And, that is why the judge is taking arguements and will decide if the words or the "spirit" of the injunction will control and also why Tivo whacks at the "shell game with the missing pea" in their arguements. It's going to be interesting no matter how it turns out.
> 
> The question I have (I don't know if there is an answer) that this case has presented relates to the possibility that an infringer can legally escape the clutches of a software injunction by continually making modifications to software each time an injunction hits them. (and I have no firm opinion on this case whether dish has or has not developed a non-infringing workaround). If so, the courts have a problem since a new download could effectively muzzle the power of an injunctionn for an indeterminate time.


----------



## Curtis52

spear61 said:


> The question I have (I don't know if there is an answer) that this case has presented relates to the possibility that an infringer can legally escape the clutches of a software injunction by continually making modifications to software each time an injunction hits them. (and I have no firm opinion on this case whether dish has or has not developed a non-infringing workaround). If so, the courts have a problem since a new download could effectively muzzle the power of an injunctionn for an indeterminate time.


In a few cases the appeals court has approved adding pre-approval requirements to injunctions where infringers have cried wolf several times about creating work arounds. In those egregious cases the appeals court said that the pre-approval requirement added by the district court was justified.


----------



## scooper

But this case doesn't have that "pre-approval" stipulation - it only says the infringing models are to be shutdown. Then, to confuse things, the injunction lists particular models. 

So - the question becomes - do you follow the "literal list" (words) (as Greg seems to be saying) or do you follow the phrase "infringing products" (spirit) (as Dish and me seem to be arguing) ?


----------



## jacmyoung

Regardless, remember what the higher court said, the *only* acts an injunction may prohibit are infringement of the patent by *adjudicated devices* and infringement buy devices only colorably different than the adjudicated devices.

Whether the current DVRs are "modified DVRs", or "adjudicated DVRs", the treatment is the same, if the acts they are performing currently do not infringement on the patent, an injunction can not prohibit such acts, regardless what is the language of the injunction.


----------



## jacmyoung

spear61 said:


> The question I have (I don't know if there is an answer) that this case has presented relates to the possibility that an infringer can legally escape the clutches of a software injunction by continually making modifications to software each time an injunction hits them. (and I have no firm opinion on this case whether dish has or has not developed a non-infringing workaround). If so, the courts have a problem since a new download could effectively muzzle the power of an injunctionn for an indeterminate time.


If the new software is later found to still infringe not once but twice, there can be a case for willingful infringement or bad faith workaround, and the infringer can face treble damages and pay attorney fees.

The problem I have with some folks is, they believe since the judge granted Tivo's motion, the judge will therefore rule in Tivo's favor, it is almost the same as saying if I decide to sue you, and if the court agrees to hear my complaint, it is an automatic indication I will prevail and you will be guilty.


----------



## Greg Bimson

jacmyoung said:


> Regardless, remember what the higher court said, the *only* acts an injunction may prohibit are infringement of the patent by *adjudicated* devices and infringement buy devices only colorably different than the adjudicated devices.


If this was so open and shut, why didn't DISH/SATS appeal the injunction? Maybe because it isn't easy.

And let's not forget the eight "Infringing Products" are adjudicated devices, modified or not. They would still be adjudicated devices if DISH/SATS did disable them.


jacmyoung said:


> Whether the current DVRs are "modified DVRs", or "adjudicated DVRs", the treatment is the same, if the acts they are performing currently do not infringement on the patent, an injunction can not prohibit such acts, regardless what is the language of the injunction.


I believe that is wholly incorrect.

DISH/SATS has been ordered to cease selling and disable DVR functionality of the infringing, adjudicated devices. If DISH/SATS feels that is an error, or they have found a way to fix the problem, DISH/SATS should *request a motion for modification of the injunction*. After all, it is the court that determines legality of devices adjudicated as infringing. It isn't DISH/SATS that makes that determination.


----------



## jacmyoung

Greg Bimson said:


> ...DISH/SATS has been ordered to cease selling and disable DVR functionality of the infringing, adjudicated devices. If DISH/SATS feels that is an error, or they have found a way to fix the problem, DISH/SATS should *request a motion for modification of the injunction*. After all, it is the court that determines legality of devices adjudicated as infringing. It isn't DISH/SATS that makes that determination.


I agree in a perfect situation DISH should have insisted the letter of the injunction be more clear, but not doing so is hardly the end for DISH, as long as DISH's interpretation is a good faith attempt, that "*the* DVR functions" refers to the fucntions that infringed under the old infringing software. No one can say such interpretation is an intentional misinterpretation of the injunction.

Of course you can disagree with such interpretation, and insist that "*the* DVR functions" refers to *all* DVR functions, past, present, and into the future, regardless if such functions infringe or not.

Here lies two ways to interpret the letter of the injunction, no matter how strongly you feel you are correct and DISH is wrong, or how strongly DISH feels they are correct and Tivo is wrong, as long as the disagreement is reasonable, an *ambiguity* then arises as far as how to interpret the term: "The DVR functions...", and when such ambiguity exists, the ruling must go in favor of the defendant.

I know you what to say but it is clear, because it also said: "(i.e. all storage and playback from the harddrive...)" uses the word *all*, you say the word "all" means all DVR functions, but I say the word "all" describes all the stuff (all storage and playback) by "the" DVR fucntions that infringed under the old software, why? Because the words after "i.e." usually are a further clarification within the context of the term immidiately before it.

Again, two different interpretations, each has its logic, both together establish a similar ambiguity as how to interpret that word "all".

Remember in that MTC case, the letter of the injunction also appeared very *clear*, give us your each project, its schedule, costs and ridership gains. Yet when MTC failed to offer the exact ridership gains for each project, the court said nevertheless, hey, the above language was ambiguous, so MTC was not in contempt.

In addition, let's also remember in another one of the cases I cited, during the contempt proceeding, the judge agreed with the infringer to modify his injunction to exclude one specific legal action from the injunction, despite the objection from the patentee. Of course we don't know if this is what the DISH is asking too, but the possibility does exist.

The bottomline is, if what DISH is doing right now does not infringe on the Tivo's patent, or should we say what DISH is doing now is legal, then DISH can not be in contempt, in a civil contempt forum that is.


----------



## Greg Bimson

jacmyoung said:


> Here lies two ways to interpret the letter of the injunction, no matter how strongly you feel you are correct and DISH is wrong, or how strongly DISH feels they are correct and Tivo is wrong, as long as the disagreement is reasonable, an ambiguity then arises as far as how to interpret the term: "The DVR functions...", and when such *ambiguity* exists, the ruling must go in favor of the defendant.


The injunction order:


> 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)


That part in parentheses is the definition of "disable the DVR functionality".

It is so crystal clear that DISH/SATS argued for a stay of the injunction while appealing the verdict:


> If the district court's injunction were not stayed, EchoStar would be required to disable the DVR functionality of DVRS installed in over three million households.


Now all of a sudden there is a new interpretation?


jacmyoung said:


> The bottomline is, if what DISH is doing right now does not infringe on the Tivo's patent, or should we say what DISH is doing now is legal, then DISH can not be in contempt, in a civil contempt forum that is.


It most likely won't work like that. There was only one order proscribed for the adjudicated devices at an end user, and that order has not been followed.


----------



## jacmyoung

Greg Bimson said:


> The injunction order:That part in parentheses is the definition of "disable the DVR functionality".


Exactly, to disable *the* DVR functionality, not the current DVR functions if they no longer infringe.



> It is so crystal clear that DISH/SATS argued for a stay of the injunction while appealing the verdict:


Of course, at the time DISH made such argument, the DVR functions in the DVRs were still *the* DVR functions proscribed in the injunction.



> ...Now all of a sudden there is a new interpretation?


The interpretation itself did not change, *the* DVR functions changed, from the old, infringing ones, as proscribed in the injunction, to the current DVR functions that no longer infringe.



> It most likely won't work like that. There was only one order proscribed for the adjudicated devices at an end user, and that order has not been followed.


There was only one order to ask MTC to provide ridership gains for *each project*, that order was not followed. But MTC was not in contempt. Not to mention that according to my above interpretation, the order was in fact followed, when DISH downloaded the new software, they did disable the old, infringing DVR functions, and replaced them with the new, non-infringing DVR functions.

Again if you disagree with me, that itself only gives rise to how each interprets the injunction differently, DISH says this, Tivo says that, you have no doubt about your interpretation, I have no doubt about my interpretation, you can call me confused, I can call you confused, not able to make it clear? Whose fault is that? No one, only thing is, the defendant has the benefit, when confusion, doubt, ambiguity, or whatever you wish to call it, has been established. And according to all the court past rulings, such so called confusion, doubt, ambiguity, or whatever, did not even have to be substantial, as long as they existed, the defendants always received the benefit of them.

What Tivo should have done back then was to ask the judge to use such terms: disable the DVR functions (i.e. disable the DVR functions and to never allow any DVR functions to be reintalled). Of coursed we know that would not fly, because the judge would not do that, because DISH would have objected to that, the judge knew he could not refuse to allow non-infringing DVR functions to be reinstalled later, he knew his injunction could not prohibit acts that did not infringe, only the ones infringed.

Remember DISH did ask to allow modified software? Had Tivo not objected, it could be added into the injunction, there were in fact some injunctions that did that, but only if the patentees agreed to such, if the patentee does not agree, the infringer has no right to such request. But why didn't Tivo ask the judge to put in the language to disallow DISH to use the modified software? They already knew DISH's intention, why not stop it at that time? Because had Tivo asked to do so, DISH would have objected, and the judge would have agreed with DISH and not put in the prohibition that DISH would not be allowed to use any new software to replace *the* DVR functions discussed during the trial. The judge can not prohibit any future acts that may not infringe on the patent.


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## Greg Bimson

jacmyoung said:


> But why didn't Tivo ask the judge to put in the language to disallow DISH to use the modified software?


Because that was DISH/SATS request, which was denied.

See?


----------



## Curtis52

Greg Bimson said:


> Because that was DISH/SATS request, which was denied.
> 
> See?


Do you mean this?



> Regarding the form of an injunction, Defendants argue only new placements should be enjoined because, at trial, Plaintiff's counsel represented that Plaintiff would seek only to enjoin new placements. Id. at 15-16. Now, Defendant argues, Plaintiff is bound to this limitation on injunctive relief. Id. Defendants also argue that because their DVRs have substantial non-infringing uses, Plaintiff's requested injunction is "improperly broad." Id. at 16. And, *Defendants argue, the injunction should not extend to DVRs already distributed but not placed because they cannot infringe until the infringing software is downloaded. * Id. at 17. Lastly, Defendants argue the injunction should extend only to the specific devices for which the jury found infringement. Id. at 17.


It's not surprising that Judge Folsom denied that request. The hardware was found to infringe.


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## scooper

Curtis52 said:


> It's not surprising that Judge Folsom denied that request. The hardware was found to infringe.


Which was later remanded at the Appeals court, and therefore makes shutting down "in excess".


----------



## jacmyoung

Greg Bimson said:


> Because that was DISH/SATS request, which was denied.
> 
> See?


So what, even though it was denied, Tivo should have known DISH would bring up such proposal again in a future contempt proceeding, DISH's intention was clear at that time, and according to the higher court's opinion, while such proposal was not necessarily to be considered during the injunction phase (which was why it was denied), the infringer can certainly bring it up in the contempt phase, in fact the higher court said that was one of the purposes of a contempt proceeding, to review such proposed acts, any acts.

So to be clear, Tivo should have asked to have specific language added in the injunction to prohibit such proposed modification, without doing so, it most certainly gave rise to the debate whether such modification was prohibited by the injunction nor not. And when such uncertainty exists, the defendant must receive the benefit of it.

When considering a contempt of an injunction, only the injunction itself is reviewed, without any outside reference and other documents, the denial of that DISH's proposal at one time cannot be used as a reference. Want your injunction to be effective? Put in the injunction that such proposed acts would not be allowed.

"Rule 65(d) of the Federal Rules of Civil Procedure specifies the proper form and scope of an injunction issued by a district court:

(d) Form and Scope of Injunction or Restraining Order. Every order granting an injunction and every restraining order shall set forth the reasons for its issuance; shall be specific in terms; shall describe in reasonable detail, *and not by reference to the complaint or other document*, the act or acts sought to be restrained; and is binding only upon the parties to the action, their officers, agents, servants, employees, and attorneys, and upon those persons in active concert or participation with them who receive actual notice of the order by personal service or otherwise."

Yes, do not assume something that was one time denied in another document can later be referenced in arguing for a contempt, if Tivo wants to argue that the proposed modification is prohibited under this injunction, they need to find the wording in this injunction that specifially prohibits such proposed modification.

And I think we can agree, such wording does not exist in this injunction.


----------



## Greg Bimson

Curtis52 said:


> It's not surprising that Judge Folsom denied that request. The hardware was found to infringe.


Yes, but if the Court of Appeals let stand both the software and hardware verdict, we'd still be right where we are today: a contempt hearing. Even if DISH/SATS lost the appeal and the hardware verdict stood, it appears DISH/SATS course of action would be to keep the "Infringing Products" on, and not disable them.


scooper said:


> Which was later remanded at the Appeals court, and therefore makes shutting down "in excess".


Yet the Court of Appeals let the injunction stand, by removing the stay and allowing the injunction to go active.


jacmyoung said:


> So to be clear, Tivo should have asked to have specific language added in the injunction to prohibit such proposed modification, without doing so, it most certainly gave rise to the debate whether such modification was prohibited by the injunction nor not. And when such uncertainty exists, the defendant must receive the benefit of it.


Oh, there isn't any ambiguity in the 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.


No ambiguity at all.

It was so clear that when the injunction was issued, DISH/SATS filed an emergency stay with the Court of Appeals, stating they needed a stay otherwise they would have to disable DVR functionality from over three million customers. Hardly anything has changed since that stay; adjudicated infringing models may have some new software, while the injunction states all but 193K of the adjudicated infringing models must be disabled.


----------



## Curtis52

Curtis52 said:


> It's not surprising that Judge Folsom denied that request. The hardware was found to infringe.





Greg Bimson said:


> Yes


So TiVo's claim that Judge Folsom denied the request due to a fear that it would be


> "an invitation for EchoStar to engage in mischief. Such an injunction would only result in EchoStar providing what it deemed as "non-infringing" DVR software to its already-found-to-be-infringing DVRs, creating the opportunity for interminable disputes to determine what exactly is "infringing DVR software."


... is BS.


----------



## Greg Bimson

Curtis52 said:


> So TiVo's claim that Judge Folsom denied the request due to a fear that it would be
> 
> 
> 
> "an invitation for EchoStar to engage in mischief. Such an injunction would only result in EchoStar providing what it deemed as "non-infringing" DVR software to its already-found-to-be-infringing DVRs, creating the opportunity for interminable disputes to determine what exactly is "infringing DVR software."
> 
> 
> 
> ... is BS.
Click to expand...

How? It is exactly what is going on right now. Talk about nailing it on the head like Nostradamus.

Again, there are eight models which have been adjudicated infringing. The injunction was issued because those models infringed. The only action proscribed by the injunction for units in end users hands was to disable the DVR functionality.

Not change the software.


----------



## Curtis52

Greg Bimson said:


> How?


You just got through agreeing that the reason Judge Folsom denied the request was that the hardware infringed. That's why the units were enjoined, not for the reason TiVo states.


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## kmill14

Curtis52 said:


> It's not surprising that Judge Folsom denied that request. The hardware was found to infringe.


Actually, it wasn't software OR hardware that was found to infringe, or did you not read what the Appeals Court already said on the matter:



> As an initial matter, software alone cannot extract data from a physical device; it can only control hardware that extracts data. Therefore, when a device "extracts video and audio data from [a] physical data source," it is necessarily the case that certain hardware operations are performed. For that reason, the hardware/software distinction made by EchoStar is unhelpful. What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term


----------



## Greg Bimson

Curtis52 said:


> You just got through agreeing that the reason Judge Folsom denied the request was that the hardware infringed. That's why the units were enjoined, not for the reason TiVo states.


What exactly did I agree to?


----------



## jacmyoung

Greg Bimson said:


> How? It is exactly what is going on right now. Talk about nailing it on the head like Nostradamus...


What Curtis said was, based on the facts, such Tivo's argument, going on right now, is BS, just like you believe DISH's modification argument, going on right now, is BS.

Again, some of you somehow believe Tivo's arguments are the law, once Tivo makes such argument, it is the end. The judge will have to accept Tivo's arguments. But Curtis just pointed out, the reason as quoted by Tivo to make that argument, was a total BS.


----------



## jacmyoung

kmill14 said:


> Actually, it wasn't software OR hardware that was found to infringe, or did you not read what the Appeals Court already said on the matter:


So if I understand you correctly, the appeals court was wrong by reversing the hardware verdict? Afterall, if the software infringed, the hardware must have also infringed, because the two are inseparable.

And if you take such path, then you must admit, the injunction cannot prohibit based only on the hardware, such as DP501s, it has to also consider the software in it, because both are inseparable.

You cannot have it both ways.


----------



## jacmyoung

Greg Bimson said:


> How? It is exactly what is going on right now. Talk about nailing it on the head like Nostradamus.
> 
> Again, there are eight models which have been adjudicated infringing. The injunction was issued because those models infringed. The only action proscribed by the injunction for units in end users hands was to disable the DVR functionality.
> 
> Not change the software.


But change of software is not prohibited, find it for me where does it say in the injunction change of software is not allowed?

The point is, DISH's argument is they did disable *the* DVR functions, as ordered by the injunction. There is a dispute of interpretation of the letter of the injunction, which creats ambiguity.

Just because you think it is crystal clear, does not mean there is no ambiguity, because just like the MTC case, when the plaintiffs argued the letter of the injunction, to state the ridership gains for *each* project, was crystal clear, but when MTC did not do so, the court said there was ambiguity in that language.

Do not apply your interpretation, as if it is already decided to be the chosen one, do not refuse to even acknowledge there is a different interpretation, let the judge, and/or the appeals court, decide for us which interpretation is correct.

And I never said DISH's interpretation will be accepted by the judge, or Tivo's will be. What I am saying is if there is a reasonable dispute as for which interpretation is correct, the defendant should receive the benefit of such dispute:

"All ambiguities in an order for injunctive relief must be resolved in favor of the party subject to the injunction. Clark v Coye, 60 F.3d 600, 604 (9th Cir. 1995)"--a quote used in the MTC case to find no contempt in a civil contempt of injunction proceeding.


----------



## Greg Bimson

jacmyoung said:


> The point is, DISH's argument is they did disable the DVR functions, as ordered by the injunction.





> *...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.*


That isn't DISH/SATS argument at all, and DISH/SATS never did "disable the DVR functions". DISH/SATS argument is:


> EchoStar providing what it deemed as "non-infringing" DVR software to its already-found-to-be-infringing DVRs


...a request that Judge Folsom denied when crafting the injunction. Now there's this other DISH/SATS interpretation that simply changing the software makes "adjudicated products" no longer in the scope of the injunction, which is not a plain language reading of the injunction.

You can say there is ambiguity in the above bolded phrase from the injunction. Most reasonable people would state the bolded phrase from the injunction leaves no doubt nor ambiguity, just simply shut down the DVR functions. Not rewrite them.


----------



## peak_reception

The Appeals Court really screwed things up with that hardware remand.


----------



## jacmyoung

peak_reception said:


> The Appeals Court really screwed things up with that hardware remand.


They did not at all, because at the time the software still infringed. Let's assume for argument sake the appeals court had reversed both the hardware, and the software verdicts, one could agree the appeals court would have overturned the injunction too.

And this is what DISH is doing right now, by demonstrating that the new software no longer infringes, and since the hardware does not infringe, they are not in contempt of such injunction which would have been overturned had both the hardware and software were non-infringing at the time.

Changes occured since the last time the judge, and the appeals court looked at the case. No matter how insignificant the change, or no matter how irrelevant you believe such change is to the injunction, a change did occur, no one can deny that.

The only question is, whether such change is relevant to the contempt issue or not, there is a clear difference of opinion here.


----------



## Mainer_ayah

jacmyoung said:


> Changes occured since the last time the judge, and the appeals court looked at the case. No matter how insignificant the change, or no matter how irrelevant you believe such change is to the injunction, a change did occur, no one can deny that.


Yes, changes have occurred, the price of oil went up, my hair is a bit grayer, the stock market has taken a nose dive. These are all things that are indisputable (if you have a few pictures of me). What is completely disputable is the alleged software download that E* implemented. As far as the case is concerned, it didn't happen. And now, as the judge said, the financial burden should now be born by the defendant in this case. I suspect that if Folsom sees fit to hear any arguments about new, and allegedly non-infringing software, it will be after E* complies with the injunction.


----------



## Greg Bimson

jacmyoung said:


> And this is what DISH is doing right now, by demonstrating that the new software no longer infringes, and since the hardware does not infringe, they are not in contempt of such injunction which would have been overturned had both the hardware and software were non-infringing at the time.


The problem is this...

It took a trial over two years ago to determine that eight models of DVR's infringed upon TiVo's patents. DISH/SATS claimed those eight models did not infringe. An outside law firm wrote an opinion that those eight models did not infringe. These *facts* were *adjudicated*, and DISH/SATS eight models were still found to infringe.

There is now new software, which DISH/SATS claims those eight models no longer infringe. An outside law firm wrote an opinion that those eight models with new software no longer infringe. Those are *facts* which would need to be *adjudicated*. Yet the *fact* there has been no motion to *adjudicate* the new software on the eight infringing DVR models speaks volumes.

DISH/SATS can present all kinds of software and all kinds of arguments that they no longer infringe in this contempt proceeding. The *fact* is that the new software will not be *adjudicated*, as this contempt proceeding is about a matter of law.

For all anyone knows, DISH/SATS could have changed one byte of code. The fact there was a change in software doesn't matter. The fact that the eight infringing DVR models have not been disabled is all that matters.


jacmyoung said:


> The only question is, whether such change is relevant to the contempt issue or not, there is a clear difference of opinion here.


In *fact*, the only change mandated by and relevant to the injunction is to "disable all storage to and playback from a hard disk drive of television data" in the eight DVR models *adjudicated* to infringe.


----------



## Greg Bimson

Mainer_ayah said:


> I suspect that if Folsom sees fit to hear any arguments about new, and allegedly non-infringing software, it will be after E* complies with the injunction.


Bingo. We have a winner.


----------



## kmill14

jacmyoung said:


> So if I understand you correctly, the appeals court was wrong by reversing the hardware verdict? Afterall, if the software infringed, the hardware must have also infringed, because the two are inseparable.


You are missing the Appeals Court explanation completely. They affirmed certain operations that involved software and hardware, but not others. Just changing out software does not mean that the operations themselves changed, and it certainly doesn't mean they get to not obey a clear court order.


----------



## jacmyoung

Mainer_ayah said:


> .... I suspect that if Folsom sees fit to hear any arguments about new, and allegedly non-infringing software, it will be after E* complies with the injunction.


Possible, certainly.

It is also possible that Judge Folsom will hear the new software right after he finds no contempt after the 9/4 hearing, which is why he ordered expert witnesses from both parties to be on standby on 9/4 for a followup "evidentiary hearing" if necessary, and more time will be allowed too.

Judge Folsom clearly had prepared for both possibilities, so was Tivo, when they said themselves several times, if somehow the judge does not rule in their favor, then their next step will be to discuss the new software.

The "evidentiary hearing" mentioned in the court order will be for such purpose, if necessary. The reason I said the likelihood of such "evidentiary hearing" is quite high is because you don't just ask all expert witnesses from both parties to be on standby so lightly. Such order impacts many people who command high salaries or fees, their schedules, movement, hours spent in preparations and travel, a great deal of expenses will be incured as a result of such order.

The judge would not have added in such order had the need for such followup "evidentiary hearing" being remote. He could always set another order after 9/4, no need to plan so far ahead of the time, unless of course in his mind, such followup hearing will be very likely.


----------



## jacmyoung

kmill14 said:


> You are missing the Appeals Court explanation completely. They affirmed certain operations that involved software and hardware, but not others. Just changing out software does not mean that the operations themselves changed, and it certainly doesn't mean they get to not obey a clear court order.


You have missed my point, my point was if you firmly believe hardware and software can not be separated, then you can not argue when it comes to contempt of the injunction, only the hardware can be relevant, not the software.


----------



## nobody99

jacmyoung said:


> It is also possible that Judge Folsom will hear the new software right after he finds no contempt after the 9/4 hearing, which is why he ordered expert witnesses from both parties to be on standby on 9/4


wow, ordering witnesses to be on "standby." That's a new one to me. Is "standby" a common thing? is it a legal term?


----------



## spear61

jacmyoung said:


> Possible, certainly.
> 
> It is also possible that Judge Folsom will hear the new software right after he finds no contempt after the 9/4 hearing, which is why he ordered expert witnesses from both parties to be on standby on 9/4 for a followup "evidentiary hearing" if necessary, and more time will be allowed too.
> 
> .


Look at the superceding 6/18 order. The final agreed on schedule agreed to by the parties and it is very limited. 1-- Is there contempt of court and 2. - the exchange program. Nothing else is shown on the agenda. He runs a tight ship.


----------



## Mainer_ayah

jacmyoung said:


> Possible, certainly.
> 
> The "evidentiary hearing" mentioned in the court order will be for such purpose, if necessary. The reason I said the likelihood of such "evidentiary hearing" is quite high is because you don't just ask all expert witnesses from both parties to be on standby so lightly. Such order impacts many people who command high salaries or fees, their schedules, movement, hours spent in preparations and travel, a great deal of expenses will be incured as a result of such order.
> 
> The judge would not have added in such order had the need for such followup "evidentiary hearing" being remote. He could always set another order after 9/4, no need to plan so far ahead of the time, unless of course in his mind, such followup hearing will be very likely.


Here is a link to the order, would you please point out the areas regarding an evidentiary hearing, and having experts on "standby"

--southernme.com/DAVY_v_GOLIATH/Tivo%20v%20Echostar/06-05ORDER.pdf--

Sorry, I'm a noob here, and I don't have enough posts to include a proper link. Just cut, paste and delete the hyphens.


----------



## Greg Bimson

jacmyoung said:


> It is also possible that Judge Folsom will hear the new software right after he finds no contempt after the 9/4 hearing, which is why he ordered expert witnesses from both parties to be on standby on 9/4 for a followup "evidentiary hearing" if necessary, and more time will be allowed too.


There are two motions pending: a motion for contempt of court for prima facie violations of an injunction filed by TiVo, and a motion for modification/clarification of an injunction regarding the Advance Exchange program and DVR models 721, 921 and 942.

There is no motion to examine the new software. Yet somehow you believe that will be discussed on 4 September?

It has taken from 30 May to 4 September to hear the contempt motion, and somehow the new software will be discussed in one shot while it isn't even on the docket.

Right.


----------



## kmill14

jacmyoung said:


> You have missed my point, my point was if you firmly believe hardware and software can not be separated, then you can not argue when it comes to contempt of the injunction, only the hardware can be relevant, not the software.


I didn't say they can't be separated...the Appeals Court did. And its not either the hardware or the software that is in question for the injunction....its the operations performed by the device. There is no mention of software OR hardware in the injunction.


----------



## jacmyoung

Greg Bimson said:


> There are two motions pending: a motion for contempt of court for prima facie violations of an injunction filed by TiVo, and a motion for modification/clarification of an injunction regarding the Advance Exchange program and DVR models 721, 921 and 942.
> 
> There is no motion to examine the new software. Yet somehow you believe that will be discussed on 4 September?
> 
> It has taken from 30 May to 4 September to hear the contempt motion, and somehow the new software will be discussed in one shot while it isn't even on the docket.
> 
> Right.


If the judge tells Tivo sorry there is no such thing as contempt on the face of the injunction, I must look at the difference between the current PD501s, and compare them to the DP501s described in my injunction, then of course he can begin that "evidentiary hearing" right the way, which was why he ordered to have the witnesses from both parties to be available for that hearing, if necessary, and more time will be allowed.



> Sorry, I'm a noob here, and I don't have enough posts to include a proper link. Just cut, paste and delete the hyphens.


Thank you! I have made an over-statement two days ago, and tried to see how long would it take for anyone to even go look for that piece of order and come back to dispute my claim. While you admitted you are a noob, at least you spent time to do that.

Did it strike you as strange that no one else even cared to look for that piece of evidence? I tell you why, some people here really don't care about the truth, just their belief what should happen.

What you have linked was an order signed by the judge on 6/18/08, in which it only mentioned the very first item, the contempt item, nothing else, because nothing else had been agreed on at the time between DISH and Tivo. This order will be amended as the parties begin to agree on the rest of the items.

One day prior, the judge also signed the first order, on 6/17/08, which listed all the anticipated items, agreed or not, and in the end below the time table, it stated that if an evidentiray hearing will be needed, both parties are to make the witnesses available, not on standby literally, but to be ready. This very first order shows the judge's frame of mind, as he saw what should be done as he saw fit, which included an evidentiary hearing to immediately follow the 9/4 hearing, if necessary.

In the end the final order will be something similar to the 6/17/08 order, with items "not agreed" changed to "agreed", with some modifications if necessary.


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## kmill14

jacmyoung said:


> I
> 
> Did it strike you as strange that no one else even cared to look for that piece of evidence? I tell you why, some people here really don't care about the truth, just their belief what should happen.


You write small books on every response, and you expect everyone to follow up on each of your various hypotheses?


----------



## jacmyoung

Greg Bimson said:


> ...You can say there is ambiguity in the above bolded phrase from the injunction. Most reasonable people would state the bolded phrase from the injunction leaves no doubt nor ambiguity, just simply shut down the DVR functions. Not rewrite them.


Now since many of you simply are not interested in finding the facts, how about I do it for you. I know you have argued that in that MTC case, the injunction was "ambiguous" as the reason for no contempt, and you are very clear there is no ambiguity in this injunction, but wait, ambiguity did not even matter in that MTC case, in a later section the higher court wrote:

"The Court agrees with Plaintiffs that MTC would be well-advised to set interim ridership milestones to be achieved by 2004 and 2005. However, TCM 2 only requires that a 15% increase be achieved and does not provide any timetable by which that increase must be incrementally achieved. Thus, in theory at least, MTC could comply with TCM 2 by keeping ridership constant for the first four years and boosting ridership to the requisite levels in the fifth year. In other words, intermediate milestones are not required to comply with TCM 2 and the Court therefore does not include them in this remedial order."

If you read the above and understand what it meant, besically, the higher court said even though the injunction was designed according to the plaintiff's wish, to set incremental milestones for each year and for *each project* in order to ensure the final goal of 15% ridership gains in 2005, since such year by year requirement was not required to reach the final goal, MTC could in effect not do anything in the first few years, only to reach the 15% gain in the very last year, it would be ok.

So the higher court even rejected the details of the lower court's injunction itself, as insisted by the plaintiff, and upheld the ruling that MTC was not in contempt.

See how the specifics of the injunction itself did not even matter, and what really mattered was whether the overall goal was reached or not?


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## jacmyoung

kmill14 said:


> You write small books on every response, and you expect everyone to follow up on each of your various hypotheses?


Yes that is how every court ruling, every party's arugument, and everything in our legal system works, if you refuse to go into detail and find out how the system works, don't be suprised your "face of everything" argument in less than 15 words not produce the desired results.


----------



## kmill14

So jacmyoung, you mention this other case where as long as the other company reached the overall goal, there was no contempt. Well, has E* reached the overall goal of making sure the adjudicated devices had the ability to write TV data to the hard-drive *disabled*?


----------



## kmill14

jacmyoung said:


> Yes that is how every court ruling, every party's arugument, and everything in our legal system works, if you refuse to go into detail and find out how the system works, don't be suprised your "face of everything" argument in less than 15 words not produce the desired results.


Thankfully this message board is not our country's legal system, so I am not required to respond and research every single parcel of information you produce....and it would be fair to point out that you pick and choose what you respond to and research as well.


----------



## nobody99

I just realized something. Jacmyoung may be on to something - the ability to commit any crime and get away even after being convicted.

Let's say that my name is Bob Smith. I rob a bank. The cops catch me and convict me. The court order says that I must go to jail.

But I change my name to Scott Smith after the trial. Clearly, the order to send me to jail doesn't apply to me. It applies to Bob Smith. I am now free to go.

Sarcasm aside: jacmyoung, once a device is adjudicated, it's adjudicated. It doesn't matter how much its changed - if nothing but a single machine screw remains, that machine screw is the adjudicated device. Why are you having so much difficulty understanding that?


----------



## nobody99

jacmyoung said:


> Did it strike you as strange that no one else even cared to look for that piece of evidence? I tell you why, some people here really don't care about the truth, just their belief what should happen


Could it be that the contortions you go through are too mind boggling for us simple folk to understand?


----------



## Curtis52

There seems to be some confusion.

There are depositions involved in the Sept. 4 hearing. If the written submissions raise disputed issues of fact or seem to require determinations of credibility, the court retains the power to order an evidentiary hearing, and to order discovery of a scope broad enough to prepare the parties for that hearing. An evidentiary hearing is where those persons deposed would be sworn in to answer questions when their depositions need clarification. If the depositions suffice, there is no need for an evidentiary hearing.


----------



## Mainer_ayah

jacmyoung said:


> What you have linked was an order signed by the judge on 6/18/08, in which it only mentioned the very first item, the contempt item, nothing else, because nothing else had been agreed on at the time between DISH and Tivo. This order will be amended as the parties begin to agree on the rest of the items.
> 
> One day prior, the judge also signed the first order, on 6/17/08, which listed all the anticipated items, agreed or not, and in the end below the time table, it stated that if an evidentiray hearing will be needed, both parties are to make the witnesses available, not on standby literally, but to be ready. This very first order shows the judge's frame of mind, as he saw what should be done as he saw fit, which included an evidentiary hearing to immediately follow the 9/4 hearing, if necessary.
> 
> In the end the final order will be something similar to the 6/17/08 order, with items "not agreed" changed to "agreed", with some modifications if necessary.


The only thing that I think is telling of the judges frame of mind is that on 6/16/08 Echostar submitted their proposed docket control order (doc #834), and the court was silent. On 6/17/08 Tivo submitted their proposed docket control order (doc #835, which included, by the way, the mention of the evidentiary hearing) And within , as i recall, a couple of hours the court fired the same document out, unedited, (doc #836) as an order. Yes, I think that spoke volumes to the judges frame of mind, he was pissed off because all E* had told him about was the stuff that was agreed to, TiVo showed all the items and noted which were not agreed to. The judge was obviously livid with Echostar and their ongoing obstinance.

The notation of the witnesses and evidentiary hearing was an item included in Tivos original submission, it was not something that was included by the judge as you seem to be implying.

And as far as me being a noob, I am a noob to this board, not to this case. If you'd like to see any of the documents referenced above please feel free to visit my web site on the topic: -southernme.com/DAVY_v_GOLIATH/


----------



## jacmyoung

kmill14 said:


> So jacmyoung, you mention this other case where as long as the other company reached the overall goal, there was no contempt. Well, has E* reached the overall goal of making sure the adjudicated devices had the ability to write TV data to the hard-drive *disabled*?


Did MTC gave the ridership gains for each project as specifically ordered in that injunction?

You seem to believe the overall goal of an injunction on infringement is a specific act that is ordered in the injunction, you run into the exact problem as the plaintiff in that MTC case did.

The goal of an injunction of infringement is to prohibit further infringement. Are you read to dispute this one? If so I am ready, I will cite many many patent cases to prove it to you, and I only need you to cite one case in which it said the injunction on infringement was for some other purpose.


----------



## jacmyoung

Mainer_ayah said:


> ... Yes, I think that spoke volumes to the judges frame of mind, he was pissed off because all E* had told him about was the stuff that was agreed to, TiVo showed all the items and noted which were not agreed to. The judge was obviously livid with Echostar and their ongoing obstinance...


Oh really, then why the next day the judge signed another order (on 6/18/08, the latest order so far) which listed only the single item which both DISH and Tivo agreed on for 9/4, and stated that for all other items that were not agreed on the parties would work out the differences and he would then issue an amended order?

Did that strike you as him pissed off by DISH? I guess you are not so careful about your investigation afterall.


----------



## jacmyoung

Curtis52 said:


> There seems to be some confusion.
> 
> There are depositions involved in the Sept. 4 hearing. If the written submissions raise disputed issues of fact or seem to require determinations of credibility, the court retains the power to order an evidentiary hearing, and to order discovery of a scope broad enough to prepare the parties for that hearing. An evidentiary hearing is where those persons deposed would be sworn in to answer questions when their depositions need clarification. If the depositions suffice, there is no need for an evidentiary hearing.


Most of the written statements from DISH would likely be from the head of the engineering department talking about the new software, whether Tivo likes it or not it will be part of the records for the judge to read, and yes to *have the actual persons ready to be on the stand if further clarifications are needed*, at least shows such written statements will be paid attention to.

According to some, judge will not look at such statements, or somehow Tivo would not let the judge look at them, or even if the judge looks at them, he will disregard them, if so why bother with the reqruiement that witnesses be available? There is really no point of depositions that can run as long as three hours, is there?

The so called "face of injunction contempt" needs no outside arguments, only a one sentence ruling: DISH you are in contempt because you did not disable the DVR functions, period.


----------



## James Long

jacmyoung said:


> Regardless, remember what the higher court said, the *only* acts an injunction may prohibit are infringement of the patent by *adjudicated devices* and infringement buy devices only colorably different than the adjudicated devices.
> 
> Whether the current DVRs are "modified DVRs", or "adjudicated DVRs", the treatment is the same, if the acts they are performing currently do not infringement on the patent, an injunction can not prohibit such acts, regardless what is the language of the injunction.


It is a shame DISH didn't appeal the injunction when it was written. Raising an objection now ... years late ... puts them in an uphill battle.


----------



## James Long

Mainer_ayah said:


> The only thing that I think is telling of the judges frame of mind is that on 6/16/08 Echostar submitted their proposed docket control order (doc #834), and the court was silent. On 6/17/08 Tivo submitted their proposed docket control order (doc #835, which included, by the way, the mention of the evidentiary hearing) And within , as i recall, a couple of hours the court fired the same document out, unedited, (doc #836) as an order. Yes, I think that spoke volumes to the judges frame of mind, he was pissed off because all E* had told him about was the stuff that was agreed to, TiVo showed all the items and noted which were not agreed to. The judge was obviously livid with Echostar and their ongoing obstinance.


Your timeline is incorrect.

The court actually signed the incorrect docket control ... the one with all the "not agreed" markings and then a day later signed another docket control that had all the "not agreed" entries removed. The documents are included in our previous thread on this topic.


----------



## James Long

jacmyoung said:


> Did MTC gave the ridership gains for each project as specifically ordered in that injunction?
> 
> You seem to believe the overall goal of an injunction on infringement is a specific act that is ordered in the injunction, you run into the exact problem as the plaintiff in that MTC case did.
> 
> The goal of an injunction of infringement is to prohibit further infringement. Are you read to dispute this one? If so I am ready, I will cite many many patent cases to prove it to you, and I only need you to cite one case in which it said the injunction on infringement was for some other purpose.


The MTC injunction specifically stated it's goal ... while the ridership gains from each project were omitted it was considered to be unimportant - as the main thing is the main thing ... coming up with plans that would increase ridership as ordered.

You keep spitting out this "The goal of an injunction of infringement is to prohibit further infringement" line, but it isn't from _this_ case. It isn't part of the injunction that was written by Judge Folsom and approved by the Appeals Court when they ruled on DISH's verdict appeal. It does not apply to this case until a court says so. And no, a court has not said so!


----------



## Greg Bimson

jacmyoung said:


> Thank you! I have made an over-statement two days ago, and tried to see how long would it take for anyone to even go look for that piece of order and come back to dispute my claim. While you admitted you are a noob, at least you spent time to do that.


Which then leads to these questions:

1) how many times have you made an "over-statement"?
2) are you simply sending people on this thread on a wild goose chase to prove multiple over-statements?
3) does the shotgun approach really work, where someone can throw any excuse on a wall to hope to make it stick?
4) why would anyone resort to simply trolling on this thread?


jacmyoung said:


> The so called "face of injunction contempt" needs no outside arguments, only a one sentence ruling: DISH you are in contempt because you did not disable the DVR functions, period.


Funny how the distants case is looking eerily similar. "But Your Honor, we have a changed circumstance since our last meeting, as we've updated our software. We can guarantee that it is no longer infringing, but please don't give TiVo discovery on it; just take our word."

I am done with this until there are more responses from court.


----------



## kmill14

jacmyoung said:


> Did MTC gave the ridership gains for each project as specifically ordered in that injunction?
> 
> You seem to believe the overall goal of an injunction on infringement is a specific act that is ordered in the injunction, you run into the exact problem as the plaintiff in that MTC case did.
> 
> The goal of an injunction of infringement is to prohibit further infringement. Are you read to dispute this one? If so I am ready, I will cite many many patent cases to prove it to you, and I only need you to cite one case in which it said the injunction on infringement was for some other purpose.


jacmyoung, the goal of the injunction is whatever the Judge determines it to be in that particular case. He has been given guidelines in other cases, and he certainly used those guidelines in this case. There are 2 very clear orders in this particular injunction, are there not? Why two orders? What do they each mean?


----------



## Mainer_ayah

jacmyoung said:


> Did that strike you as him pissed off by DISH? I guess you are not so careful about your investigation afterall.


If you look at the docket information that accompanied that "order" it is plain to see that its purpose was to establish the time and place for the 9/24 hearing. I suspect the clerk involved in the scheduling simply copied the wrong version of the document. Besides, the 9/18 document was silent on the dates that the 9/17 document established.


----------



## Mainer_ayah

James Long said:


> Your timeline is incorrect.
> 
> The court actually signed the incorrect docket control ... the one with all the "not agreed" markings and then a day later signed another docket control that had all the "not agreed" entries removed. The documents are included in our previous thread on this topic.


How do you know the second document (the one issued on 6/17) wasn't issued in error. It was included with new scheduling information on the docket. my theory is that the clerk involved in the scheduling simply included the wrong document.


----------



## Curtis52

Mainer_ayah said:


> How do you know the second document (the one issued on 6/17) wasn't issued in error. It was included with new scheduling information on the docket. my theory is that the clerk involved in the scheduling simply included the wrong document.


The second document was signed by the judge on 6/18. I don't think a clerk commits an error by issuing a signed document.


----------



## jacmyoung

James Long said:


> It is a shame DISH didn't appeal the injunction when it was written. Raising an objection now ... years late ... puts them in an uphill battle.


It was a shame MTC did not raise the issue in an appeal of the injunction, but they did not follow it and during the contempt proceeding, they were not only not in contempt, the Circuit Court also went further agreed with MTC (when MTC raised the issue during the contempt proceeding) and said even though the injunction specifically ordered MTC to spell out ridership gains for each project for each year, MTC could literally do nothing until the very last few months in 2006.

How much more do you need to concede that only the goal is important, not the specific order and language in the injunction? How much more evidence do you need that both the district court, and the appeals court, agreed with MTC's "appeal" during the contempt hearings, even though MTC did not raise such issue during the injunction phase?

Here I am not even arguing about the goal, rather a procedure, during which in contempt hearing, the defendant raised issues with the letter of the injunction, and both courts agreed with the defendant, despite stronge resistance from the plaintiff.

Certainly not something you and some others want to hear, because according to some, there can not be any deviation from the letter of the injunction, and there can not be any dispute raised of the letter of the injunction during a contempt proceeding, if there is any, it has to be done during the appeal of the injunction, after that it would be too late, it would be an "attack" on the injunction, but the above case proved you wrong, MTC did "attack" the injunction, regardless for what reason, it was not too late, both courts agreed with them.



> You keep spitting out this "The goal of an injunction of infringement is to prohibit further infringement" line, but it isn't from this case. It isn't part of the injunction that was written by Judge Folsom and approved by the Appeals Court when they ruled on DISH's verdict appeal. It does not apply to this case until a court says so.


An injunction on infringement has always been to prohibit further infringement, the Circuit Court went so far to say:

Without infringement, the violation of an injunction on infringement, simply can not happen.

In what way you are not clear about the language from the higher court? Please do not use the fact the appeals court blessed the injunction during the appeal as some proof, they blessed the injunction because at the time *the DVR functions* were infringing.

If there is clear doubt whether the current DVR functions still infringe or not, then DISH can not be in contempt.


----------



## Mainer_ayah

Curtis52 said:


> The second document was signed by the judge on 6/18. I don't think a clerk commits an error by issuing a signed document.


Then how do you explain the fact that the 6/17 document was signed as well?


----------



## nobody99

jacmyoung said:


> How much more do you need to concede that only the goal is important, not the specific order and language in the injunction?


So what you're saying is it doesn't matter about "*the* DVR functionality?" You've given up on that silly line of reasoning?


----------



## jacmyoung

nobody99 said:


> So what you're saying is it doesn't matter about "*the* DVR functionality?" You've given up on that silly line of reasoning?


Please finish reading my post before responding.


----------



## Curtis52

Mainer_ayah said:


> Then how do you explain the fact that the 6/17 document was signed as well?


The judge screwed up.


----------



## spear61

Mainer_ayah said:


> And as far as me being a noob, I am a noob to this board, not to this case./


Take Care- some of the posters on this thread can get downright nasty.


----------



## Mainer_ayah

Curtis52 said:


> The judge screwed up.


Exactly my point. On the 18th an error was made. Thank you for agreeing with me.


----------



## nobody99

jacmyoung said:


> Please finish reading my post before responding.


You want us to believe that the language of an injunction does not matter. Yet you say DISH will not be found in contempt because of the meaning of the word "the."

Seriously, you can't see the the problem with your reasoning?


----------



## Mainer_ayah

spear61 said:


> Take Care- some of the posters on this thread can get downright nasty.


Believe me, it doesn't bother me a bit. All you have to do is read a couple of posts ands you can tell the blowhards from the real contributors. Not much different on any board. I kind of enjoy trading "punches" with some of these shoot from the hip types, it helps keep the swords sharp, although sometimes they just make it too darn easy to come out on top.


----------



## Curtis52

Mainer_ayah said:


> Exactly my point. On the 18th an error was made. Thank you for agreeing with me.


You didn't ask me anything about the 6/18 document.


----------



## jacmyoung

Curtis52 said:


> You didn't ask me anything about the 6/18 document.


He was just being argumentitive, because what he was insisting was, on 6/17, an order was signed, then next day another order was signed to modify the order from the previous day. But in his view, the later order was wrong, the previous order correct.

Boy did he prove how screwed up the judge was with his sharp sword.


----------



## jacmyoung

nobody99 said:


> You want us to believe that the language of an injunction does not matter. Yet you say DISH will not be found in contempt because of the meaning of the word "the."
> 
> Seriously, you can't see the problem with your reasoning?


When you insisted that only the letter of the injunction mattered, I showed you how the letter of the injunction could be interpreted in different ways, which established "ambiguity" that must go in favor of the defendant.

Then I further gave you more ground by handicaping myself, conceded that even if you were correct of your interpretation of the letter of the injunction, somehow the word "the" should be interpreted as "all", it still has no ground to stand, because I have prior cases to prove, the letter of the injunction is of less value, when the overall goal of the injunction may be achieved through other means.

There is no inconsistency.

I have been given up ground after ground to you people, which I did not have to, but in the interest of proving my point, I did so, and at each step, after given up some ground, I was still able to prove you wrong by citing prior cases and the opinions from the higher courts, not from things thought of in my own head, but from the actual cases and the courts' opinions.


----------



## Mainer_ayah

jacmyoung said:


> He was just being argumentitive, because what he was insisting was, on 6/17, an order was signed, then next day another order was signed to modify the order from the previous day. But in his view, the later order was wrong, the previous order correct.
> 
> Boy did he prove how screwed up the judge was with his sharp sword.


So Perry, please cite for me the portion of the 6/18 order or its associated docket entry (where such things are noted) that was meant to modify the 6/17 order. The attachment on the 6/18 docket entry that established the time and place for the hearing was an error pure and simple.


----------



## Mainer_ayah

Mainer_ayah said:


> So Perry, please cite for me the portion of the 6/18 order or its associated docket entry (where such things are noted) that was meant to modify the 6/17 order. The attachment on the 6/18 docket entry that established the time and place for the hearing was an error pure and simple.


Here is the docket text associated with document 837. No mention of any modification.

06/18/2008 837 SCHEDULING ORDER:Hearing set for 9/4/2008 AM in Ctrm 319
(Texarkana) before Judge David Folsom.. Each side shall have 30
minutes. Signed by Judge David Folsom on 6/18/08. (mrm, ) (Entered:
06/18/2008)


----------



## Curtis52

Mainer_ayah said:


> Here is the docket text associated with document 837. No mention of any modification.


It is not a modification. The 6/18 document suoercedes the 6/17 document in its entirety.


----------



## Mainer_ayah

Curtis52 said:


> It is not a modification. The 6/18 document suoercedes the 6/17 document in its entirety.


Then the docket information for the 6/17 item would have been modified to show that, and it in fact has not been.


----------



## jacmyoung

Curtis52 said:


> It is not a modification. The 6/18 document suoercedes the 6/17 document in its entirety.


You are correct, I used the word "modification" in a sense that the 6/18/08 order clearly contained modifications compared to the 6/17/08 order, a later order always supercedes a prior one, there is no need to clarify the purpose of a new order. There is also no need to modify a prior order which had been replaced, therefore rendered invalid.

If in a later time, a new order will be produced, it will then supercede the 6/18/08 order, until then, this 6/18/08 order is the standing order, not the 6/17/08 one, that is how the court works.


----------



## jacmyoung

Mainer_ayah said:


> So Perry, ...


If that is your so called sharp sword, my fear was unfounded.


----------



## Mainer_ayah

jacmyoung said:


> You are correct, I used the word "modification" in a sense that the 6/18/08 order clearly contained modifications compared to the 6/17/08 order, a later order always supercedes a prior one, there is no need to clarify the purpose of a new order. There is also no need to modify a prior order which had been replaced, therefore rendered invalid.
> 
> If in a later time, a new order will be produced, it will then supercede the 6/18/08 order, until then, this 6/18/08 order is the standing order, not the 6/17/08 one, that is how the court works.


So then, Perry, why did you put so much weight on the witnesses and evidentiary item that was included (by the TiVO attorneys) at the bottom of the 6/18 order after it was "rendered invalid".


----------



## jacmyoung

Mainer_ayah said:


> So then, Perry, why did you put so much weight on the witnesses and evidentiary item that was included (by the TiVO attorneys) at the bottom of the 6/18 order after it was "rendered invalid".


Because the 6/17/08 order was a standard order, which included up to three hours of witness depositions on each side as part of the records in 9/4 hearing. The court realized the next day that the "not agreed" items should not have been put in there, until the agreements were reached.

But once the agreements are reached, the order will look close to the 6/17/08 one, depending on what will be agreed on.

One thing seems clear, when DISH in its sealed response on 6/30/08 included several witnesses, including the head of the engineering department, that it intended to produce evidence of the new software, and such argument will not be limited to 20 pages, such exhibitions are in addition to the 20-page response.

Tivo will be allowed to depose any and all witnesses in DISH's exhibits, for up to 3 hours, and if so such up-to-three-hour long depositions will also be part of the record for the 9/4 hearing.

Of course DISH will also be able to depose any Tivo's witnesses for up to 3 hours.

In any event, the 9/4 hearing will not be a one liner "face of the injunction" contempt ruling, from the earlier indications. But it could end up being a short one still, if the parties refuse to agree on any not-agreed items by 9/4. I simply don't know what the judge can or can not do if the parties can not agree on anything.

BTW, and this is important, Tivo's own proposed schedule, which was based on the Paice v. Toyota, (not by the genius of the Tivo's attorneys) did not contain the "evidentiary hearing" clause in the end, only when the judge signed the 6/17/08 order, which agreed with the Tivo's schedule, he added that "evidentiary hearing" provision in there at the end, so this item was through his own frame of mind, not that of the Tivo's.

Of course the next day he signed a new order which removed most all items, left only the agreed upon items, and noted that the parties would work to agree on the rest of the items.

Also, the continued use of your very "sharp sword" will not land you any more credibility.


----------



## spear61

I think I recall that Tivo told the judge that he would not need his own expert at the hearing to interpret what he is hearing (no tech testimony) and Tivo is expecting to sum it up in their allocated time.


----------



## Curtis52

jacmyoung said:


> when the judge signed the 6/17/08 order, which agreed with the Tivo's schedule, *he* added that "evidentiary hearing" provision in there at the end, so this item was through his own frame of mind, not that of the Tivo's.


Are you making this up?


----------



## Greg Bimson

So I came back early, because I am tired of correcting mis-statement, over-statements, mistakes or lies:


jacmyoung said:


> BTW, and this is important, Tivo's own proposed schedule, which was based on the Paice v. Toyota, did not contain the "evidentiary hearing" clause in the end, only when the judge signed the 6/17/08 order, which agreed with the Tivo's schedule, he added that "evidentiary hearing" provision in there at the end, so this item was through his own frame of mind, not that of the Tivo's.


TiVo's proposed schedule, at the bottom of TiVo's filing


> If an evidentiary hearing is required, the parties are to make available for testimony the witnesses who provided declarations to support the briefing, and additional time will be allowed.


The above statement was courtesy of TiVo, not Judge Folsom.

TiVo's stance is simple *procedure*. Parties must be able to cross-examine in court those witnesses which gave a deposition. An evidentiary hearing, where people or witnesses that signed declarations stating fact in their depositions, is the forum to challenge those facts.

If anyone flat out lied in their depositions, that would be a reason an evidentiary hearing is needed. Can you guess why TiVo addressed that issue now?


----------



## Mainer_ayah

Curtis52 said:


> Are you making this up?


I'm sure he is not making it up, he isn't quite up to that level yet. If he bothered to go look at document 835-04 pg2 he would see the proposed docket control order that TiVO submitted on 6/17.

He is one of those "shoot from the hip" types that don't bother to do any fact checking before they hit the enter key.


----------



## Mainer_ayah

By the way, as I mentioned before, all the documents we are speaking of here are on my web site at: http://southernme.com/DAVY_v_GOLIATH/ including the Paice v Toyota scheduling order that carried no such statement regarding an evidentiary hearing since it was a scheduling order leading up to an evidentiary hearing.


----------



## Mainer_ayah

spear61 said:


> I think I recall that Tivo told the judge that he would not need his own expert at the hearing to interpret what he is hearing (no tech testimony) and TiVo is expecting to sum it up in their allocated time.


Which, of course E* agreed to without reservation. Seems to me they are including statements from some pretty "techie" people if this is going to revolve around points of law, and not technology, *as the court is now fully expecting.*


----------



## jacmyoung

Greg Bimson said:


> So I came back early, because I am tired of correcting mis-statement, over-statements, mistakes or lies:TiVo's proposed schedule, at the bottom of TiVo's filingThe above statement was courtesy of TiVo, not Judge Folsom.
> 
> TiVo's stance is simple *procedure*. Parties must be able to cross-examine in court those witnesses which gave a deposition. An evidentiary hearing, where people or witnesses that signed declarations stating fact in their depositions, is the forum to challenge those facts.
> 
> If anyone flat out lied in their depositions, that would be a reason an evidentiary hearing is needed. Can you guess why TiVo addressed that issue now?


You are absolutely correct, I was looking at Exhibit A, but Tivo's proposed schedule was in Exhibit B, which included the evidentiary hearing at the end. My mistake.


----------



## jacmyoung

Mainer_ayah said:


> Which, of course E* agreed to without reservation. Seems to me they are including statements from some pretty "techie" people if this is going to revolve around points of law, and not technology, *as the court is now fully expecting.*


That only referred to the "advanced Exchange Program", which was a nonsense from DISH anyway. Even DISH is currently replacing the 722s, 9xxs with new DVRs, disposing all bad 722s, 9xxs.

The judge did allow witness statements be added in addition to the 20-page argument, and allowed up to 3 hours for the opposing party to depose the witnesses if needed. The only thing both agreed needed no technical witnesses is for this minor program.


----------



## Mainer_ayah

jacmyoung said:


> Of course the next day he signed a new order which removed most all items, left only the agreed upon items, and noted that the parties would work to agree on the rest of the items.
> 
> Also, the continued use of your very "sharp sword" will not land you any more credibility.


Oh, and Perry, the notation that the parties would work to agree on the rest of the items was also put there by TiVos attorneys. As a matter of fact the whole document was a product of the TiVo legal team. The only thing the judge did was sign it and as I said earlier *fired it right back in a matter of a couple of hours,* firmly establishing, I believe, his frame of mind after seeing the E* filing (proposing absolutely nothing for the balance of the discovery items) just the day before. I think he was just a little pissed off.

I added a new avatar just to remind you of my always present sword.


----------



## jacmyoung

Mainer_ayah said:


> Oh, and Perry, the notation that the parties would work to agree on the rest of the items was also put there by TiVos attorneys. As a matter of fact the whole document was a product of the TiVo legal team. The only thing the judge did was sign it and as I said earlier *fired it right back in a mateer of a couple of hours,* firmly establishing, I believe, his frame of mind after seeing the E* filing (proposing absolutely nothing for the balance of the discovery items) just the day before. I think he was just a little pissed off.


Even if that was true, the judge on the very next day over-wrote his own order, removed all Tivo's suggested items that were not agreed on, including the brilliant evidentiary hearing idea, are you saying he did so under the suggestion of the Tivo's attorneys? Wouldn't that make Tivo's attorneys look pretty stupid?

If not, then why did he change the order, pretty much rendering Tivo's suggested schedule meaningless when only a small portion of it is now standing?


----------



## Mainer_ayah

jacmyoung said:


> Even if that was true, the judge on the very next day over-wrote his own order, removed all Tivo's suggested items that were not agreed on, including the brilliant evidentiary hearing idea, are you saying he did so under the suggestion of the Tivo's attorneys? Wouldn't that make Tivo's attorneys look pretty stupid?


No, I am saying that the only reason for the next days order was to establish the place and time for the hearing as shown in the docket text. I believe that the clerk inadvertently attached the E* proposed schedule (from document 834) rather than the TiVo proposed schedule. (from document 835, or 836 the previous days order) In other words an error was made.


----------



## jacmyoung

Mainer_ayah said:


> No, I am saying that the only reason for the next days order was to establish the place and time for the hearing as shown in the docket text. I believe that the clerk inadvertently attached the E* proposed schedule (from document 834) rather than the TiVo proposed schedule. (from document 835, or 836 the previous days order) In other words an error was made.


If the only purpose was to open a time slot, then why went through the length to notify all parties the "not agreed" items would be worked on by the parties in order to reach some agreement? Presumably to be added onto the order once agreement was reached for each additional item.

According to you, DISH would just have to agree with those not agreed items, am I right?

The 6/18/08 order was unceessary if it were to open a time slot, the 6/17/08 order had already opened such time slot.


----------



## Curtis52

Mainer_ayah said:


> I believe that the clerk inadvertently attached the E* proposed schedule (from document 834) rather than the TiVo proposed schedule. (from document 835, or 836 the previous days order) In other words an error was made.


...and Judge Folsom inadvertently signed it? That's a lot of errors.


----------



## jacmyoung

Curtis52 said:


> ...and Judge Folsom inadvertently signed it? That's a lot of errors.


Now I see his proposition, the 6/18/08 order used DISH's proposed schedule by mistake, but wait, DISH's proposed schedule was longer than Tivo's, how could it even be possible the 6/18/08 order was on DISH's schedule by mistake? The 6/18/08 order is the shortest schedule ever. All other items will have to be agreed on before added to the schedule.

In another word, the 6/18/08 order contains the only items that were agreed on by both parties, nothing else. The current standing order does not adopt any other proposed items, whether by Tivo, or by DISH.

If the judge made any error, the likely one was when he saw Tivo's proposal, it looked familiar to his Paice schedule, so he quickly signed off on it, he then realized DISH's proposal was very different, so the next day he issued a new order which contained only the agreed-on items. The parties will have to work things out between themselves before he would waste any more time on it.

His mistake was he assumed those two already agreed on something, it turned out he was too optimistic.


----------



## Greg Bimson

Mainer_ayah said:


> Which, of course E* agreed to without reservation. Seems to me they are including statements from some pretty "techie" people if this is going to revolve around points of law, and not technology, as the court is now fully expecting.





jacmyoung said:


> That only referred to the "advanced Exchange Program", which was a nonsense from DISH anyway. Even DISH is currently replacing the 722s, 9xxs with new DVRs, disposing all bad 722s, 9xxs.


From DISH/SATS motion for clarification of the injunction:


> Prior to April 18, 2008, the date of the remand from the Federal Circuit, EchoStar's Advance Exchange program would send a customer who had one of the Unenjoined Units either a new or previously-repaired set-top DVR box of the same model number as the one needing repair. (LaRocque Decl. at ¶ 6.) EchoStar believes that utilizing its Advance Exchange program with respect to the Unenjoined Units is legally permissible under the Injunction and resulting implied license for these Unenjoined Units, as fully set forth below. However, in an abundance of caution, on April 18, 2008, EchoStar altered its normal Advance Exchange program with respect to the Unenjoined Units, and now sends different DVR boxes containing redesigned software that has not been adjudged to infringe to customers having Unenjoined Units needing repair. (Id. at ¶ 7.) This alteration of the Advance Exchange program is disruptive both to the customer and to EchoStar. (Id. at ¶ 8.) EchoStar would like the option to resume exchanging previously-repaired, but not new, same-model-number boxes with Unenjoined Units needing repair.2 (Id. at ¶ 9.)


DISH/SATS wants to start replacing the 721, 921 and 942 with the 721, 921 and 942 respectively. Not necessarily DISH nonsense.

Transcript of the 30 May hearing regarding the need for a technical advisor:


> The Court: Very well. I appreciate everyone -- oh, *the Court did not have a technical advisor initially. What are the parties' thoughts on perhaps a technical advisor for this phase of the case?
> Mr. Chu: I don't think one will be necessary. That is certainly the case for the September 4th hearing.*
> The Court: And I meant primarily in connection with the injunction issue.
> Mr. Chu: Right. I think it's strictly a legal question, your Honor.
> The Court: Very well.
> *Mr. McElhinny: I agree with that for the September 4th hearing.*
> The Court: Very well. Then if there is nothing more, we will be in recess.


No technical advisor for the whole hearing. The new software will not be adjudicated.


----------



## Mainer_ayah

jacmyoung said:


> Now I see his proposition, the 6/18/08 order used DISH's proposed schedule by mistake, but wait, DISH's proposed schedule was longer than Tivo's, how could it even be possible the 6/18/08 order was on DISH's schedule by mistake? The 6/18/08 order is the shortest schedule ever. All other items will have to be agreed on before added to the schedule.
> 
> In another word, the 6/18/08 order contains the only items that were agreed on by both parties, nothing else. The current standing order does not adopt any other proposed items, whether by Tivo, or by DISH.
> 
> His mistake was he assumed those two already agreed on something, it turned out he was too optimistic.


The 6/18 scheduling order mistakenly contains the schedule submitted in document 834 the jointproposed schedule submitted by both parties. By the way, if you bother to look at it you will see it carries the "the parties will work together" item that you think the Judge added. On 6/17, I believe the judge issued the order he wanted to with the correct schedule attached.

On the issue of the Judge signing these orders, the signatures are cut and paste into the documents by the clerks. If you hover your mouse over the signature you will wee the initials of the clerk. The judge does not do this himself. I am convinced that the attachment on the 6/18 order was a clerical error and it should have carried the TiVo proposed order. THe clerk saw the TiVo attorneys signature on the joint proposal and attached it in error.


----------



## spear61

The judge seems to have asked " Do, I need my expert to help decide if the new software continues to infringe and that gives Dish a pass on the contempt motion" and Tivo has said " No". 

So the hearing is on the literal words vs the spirit of the injunction and nothing more (He was willing to have his expert available to hear arguements on whether the new software is infringing.)


----------



## Curtis52

Mainer_ayah said:


> I am convinced that the attachment on the 6/18 order was a clerical error and it should have carried the TiVo proposed order.


If it was an error it would have been corrected by now.


----------



## peak_reception

Curtis52 said:


> If it was an error it would have been corrected by now.


 Your confidence is not supported by judicial reality


----------



## James Long

jacmyoung said:


> How much more do you need to concede that only the goal is important, not the specific order and language in the injunction?


I don't believe you know the meaning of the word "concede" ... so you should not be using it. If you knew the meaning of the word you would have conceded a long time ago that the plain language of the injunction places DISH in contempt. But that's not the way you discuss a topic. You would rather lay traps. 

When will you understand that in the MTC case what MTC did was in keeping with the injunction ... perhaps they did not follow every instruction down to the letter but they DID perform the core act specified in the injunction.

Dish has neither performed every instruction down to the letter nor followed the injunction's core instruction. They MAY have performed an action outside of the injunction that will stop infringement, but that is NOT what the injunction asks them to do. (If you need a list of what the injunction requires, please see several previous posts of the injunction itself.)

How many times does it have to be said to sink in? Read the injunction. See what was directed. See what they did. "Concede" that DISH has not performed the requested acts.

PS: Don't waste server space posting a definition here. Just learn the words you use and model them.



> An injunction on infringement has always been to prohibit further infringement, the Circuit Court went so far to say:
> 
> Without infringement, the violation of an injunction on infringement, simply can not happen.


That was not said in the case of Tivo vs Echostar nor referred to in ANY of the filings in this case. It does not apply. If you can find a reference to that quote in anything filed in this case please let us know!


----------



## James Long

Mainer_ayah said:


> Exactly my point. On the 18th an error was made. Thank you for agreeing with me.


The error was made on the 17th and corrected by the later act on the 18th. The judge should not have signed off on a timetable that both sides had not agreed to and that was contrary to his previous orders.


----------



## Greg Bimson

James Long said:


> The error was made on the 17th and corrected by the later act on the 18th. The judge should not have signed off on a timetable that both sides had not agreed to and that was contrary to his previous orders.


I don't think there was an error...

The 17 June "order", which was simply TiVo's proposed docket control order, had four of ten points agreed between the two parties, including the hearing date.

By signing TiVo's order with the "not agreed" wording on the six points, Judge Folsom is basically affirming that wasn't agreed. Then when the two parties "agreed" to continue to discuss a timetable for the remaining six points, and submitted that to Judge Folsom, Judge Folsom also agreed that TiVo and DISH/SATS need to work out the schedule by issuing the 18 June order.

I'll re-read it a bit later.


----------



## Mainer_ayah

James Long said:


> The error was made on the 17th and corrected by the later act on the 18th. The judge should not have signed off on a timetable that both sides had not agreed to and that was contrary to his previous orders.


You have your theories, I have mine. There is nothing in the order of the 18th to indicate an error was being corrected. It has not been noticed because when those that regularly view the docket saw the time and place being scheduled they simply assumed that the attached order was the same. It will be noticed eventually.

Judges constantly sign off on things that two sides cannot find agreement on. That is why they are called orders.

In the interest of server space economy  this will be my last post on the subject of the order of the 18th.


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## Curtis52

Mainer_ayah said:


> It will be noticed eventually.


A mistake by the clerk. A mistake by the judge. And now attorneys from both sides are incompetent. It just gets more and more elaborate. Where's Occam's Razor when we need it?


----------



## Mainer_ayah

Greg Bimson said:


> I don't think there was an error...
> 
> The 17 June "order", which was simply TiVo's proposed docket control order, had four of ten points agreed between the two parties, including the hearing date.
> 
> By signing TiVo's order with the "not agreed" wording on the six points, Judge Folsom is basically affirming that wasn't agreed. Then when the two parties "agreed" to continue to discuss a timetable for the remaining six points, and submitted that to Judge Folsom, Judge Folsom also agreed that TiVo and DISH/SATS need to work out the schedule by issuing the 18 June order.
> 
> I'll re-read it a bit later.


Sorry, I lied about no more posts. Server space is pretty cheap anyway.

The document attached to the order of the 18th was submitted (as a joint proposal) before the TiVo proposal of the 17th so the parties had already agreed to work out the dates. On the 16th both parties submitted their own proposed schedules. The court took issue with the way TiVo structured their submission so they resubmitted on the 17th. The judge issued a scheduling order on the 17th signing off on the TiVo submission. That order still carried the notations of what was not agreed to, which I'm certain the judge doesn't give a rats ass about. It also carries TiVos proposed dates for all of the remaining discovery items. On the 18th the court issued a scheduling order noting the courtroom and time of the hearing. Attached to that docket entry was a copy of the joint proposal (doc #833) entered on the 13th. I believe this document to have been attached in error. It is silent on the dates that TiVo included in their proposal. I don't think that one can assume that the court meant to override its previous order without mention of the error. Just take a look at the docket it is loaded with entries correcting documents that had been posted in error. Why wouldn't that be done in this case when it was realized and supposedly corrected by issuing another order. No, that is not consitent with the way the docket has been being managed. When the error of the 18th is realized, I'm sure we will see an entry correcting it.


----------



## Mainer_ayah

Curtis52 said:


> A mistake by the clerk. A mistake by the judge. And now attorneys from both sides are incompetent. It just gets more and more elaborate. Where's Occam's Razor when we need it?


I honestly don't think the judge made any errors. Whatever error was made was probably the clerk thinking he/she was following the orders of the judge, but simply grabbed the wrong document.


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## jacmyoung

James Long said:


> I don't believe you know the meaning of the word "concede" ... so you should not be using it. If you knew the meaning of the word you would have conceded a long time ago that the plain language of the injunction places DISH in contempt. But that's not the way you discuss a topic. You would rather lay traps.  ...


What you have failed to realize was by rolling your eyes facts will not suddenly disappear.

What we have here is a prior case, in which yes a goal was clearly stated, and as a result, the letter of the injunction did not matter, according to both courts, and that fact alone destroyed the argument that once an injunction has been entered and not appealed, the defendant must follow it by the letter, too late to not to do so. When in fact I have an actual case that destroys such notion:

The defendant did not follow the letter of the injunction, not only that, the apeals court said they did not have to follow the letter of the injunction, the appeals court refused to grant the plaintiff's request to produce a remedial order that confirms the letter of the lower court's injunction, and said MTC could literally do nothing until the last few months of 2006, as long as they reached the 15% gains then.

The above are facts.

Now what is unknown is what will happen on 9/4, we don't have facts yet since it has yet to happen, so all we are doing is to speculate.

Some appear to think the fact are known already that DISH will be in contempt, I said not so fast, it has yet to happen, it can go the other way, and I have gave many prior cases to support such notion.

You give none what's so ever in support your notion that DISH in contempt on the face of the injunction is already a foregone conclusion. You have cited not a single case even remotely resembled such outcome.

Now I can agree that in the MTC case, there was this MTC 2 plan, which spelled out the ultimate goal of the 15% gains by 11/06.

But in this case there is no specific goal cited. But I hope reasonable people, after reading all the court's opinions and such, can agree on one thing, the goal of an injunction on infringement, is that and only that, to prohibit further infringement, there is no need to specifically say such in the injunction, in fact you can not find any injunction on infringement that specifically states such goal, there is no need to, the goal has being spelled out by the higher courts, anyone involved in the patent cases should know it already.

Could I be wrong, certainly, are you more likely to be wrong, yes, because you have no single base to demonstrate that an injunction on infringement can be for some other goal, I have many that support mine.

I am not here to try to get anyone to concede to any opinion, the fact you refuse to concede does not in any way diminish the facts in the cases and the opinions cited many times. Those facts are here for anyone to read and make their own interpretations as what they may conclude.

My only problem is when one simply can not even concede to a fact.

I never refused to concede to the posibility that your letter of injunction interpretation may be the one the judge will agree, what I am saying is according to all the prior cases all indications are DISH ultimately will not be in contempt. But I also said nothing is certain until it is a known fact.

That is my opinion I am not conceding at least for now, because you have produced no prior cases, none what's so ever, to even offer me an opportunity to try to concede.


----------



## Greg Bimson

I think I have this...

Filed 13 June, Document 833

DISH/SATS and TiVo submitted a Joint [Proposed] Docket Control Order. It lists the four items agreed upon, and this text:


> The parties are working on the remainder of the schedule, but have not yet reached agreement. The parties will continue their discussions and will file further agreements, and/or submit remaining disputes, to the Court by Monday, June 16, 2008.


There is also a space for Judge Folsom to sign, making it an order once signed. One of the four items agreed upon is the 4 September hearing. We'll be back to this in a moment.

Filed 16 June:
Document 834, DISH/SATS Proposed Docket Control
Document 835, TiVo Proposed Docket Control

These would be the documents outlining how the ten points are to be scheduled; the four that were agreed and the six that were not.

Filed 17 June and signed by Judge Folsom as an order, Judge Folsom's Docket Control Order, Document 836, which was simply TiVo's Docket Control Order as Document 835.

However, why was that order ever signed? There was no order forcing each side to produce a docket control order, as Judge Folsom never signed Document 833, the Joint [Proposed] Docket Control order. In order to accept TiVo's proposed docket control order, Judge Folsom had to agree that both parties were to submit proposed docket control orders.

Filed 18 June and signed by Judge Folsom as an order, Document 837, which was essentially Judge Folsom signing the Document 833 and turning it into an order.

With the court accepting and ordering the parties to submit their proposed docket control order, then it gives validity to accepting TiVo's proposed docket control as the timeline for the docket. And if the Court actually had made this an order prior to accepting TiVo's proposed docket as an order, the hearing would have been scheduled from this order, because the parties had agreed to it first, and should have been ordered first.

So, long story really short: it appears the Court will be using TiVo's proposed docket control as the docket going forward. The second order should have been signed and ordered prior to the proposed docket motions.

Or, for those needing a scorecard:

Document 833 was filed with the Court on 13 June, and became an order as Document 837 on 18 June.
Document 835 was filed with the Court on 16 June, and became an order as Document 836 on 17 June, the very next day. The "proposed dockets" became an order before the court ever ordered the "proposed dockets".


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## dgordo

Not sure if this should be a separate topic but I heard that Tivo filed a motion to dismiss in the Delaware case and it was granted. I didn't see anything on pacer. Any one know if this is true?


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## dgordo

DISHs motion in opposition to being held in contempt was released.


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## Mainer_ayah

dgordo said:


> Not sure if this should be a separate topic but I heard that Tivo filed a motion to dismiss in the Delaware case and it was granted. I didn't see anything on pacer. Any one know if this is true?


If anyone is interested, the major documents from the TiVo filing are on my website. They are the 4 documents across the very top row.

http://southernme.com/DAVY_v_GOLIATH/


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## dgordo

Mainer_ayah said:


> If anyone is interested, the major documents from the TiVo filing are on my website. They are the 4 documents across the very top row.
> 
> http://southernme.com/DAVY_v_GOLIATH/


Thanks, dont know how I missed that on pacer. So it wasnt dismissed, Tivo just filed the motion to dismiss.


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## James Long

Mainer_ayah said:


> Judges constantly sign off on things that two sides cannot find agreement on. That is why they are called orders.


When they do that they generally pick a side. They accept one party's argument. In this case an order was signed that was contrary to the judge's prior decisions in the case and no explanation nor directive was given to DISH to actually comply with all the steps that were suggested.



Mainer_ayah said:


> Sorry, I lied about no more posts. Server space is pretty cheap anyway.


It is when you're not paying for it.


> The court took issue with the way TiVo structured their submission so they resubmitted on the 17th.


Where do you read that? Between the lines?


> I believe this document to have been attached in error. It is silent on the dates that TiVo included in their proposal. I don't think that one can assume that the court meant to override its previous order without mention of the error.


You don't think you can assume but you assume that you can think?

We will find out pretty soon as the first "Not Agreed" step is due this week (along with the agreed to reply briefs from DISH and Tivo). _If_ DISH is expected "to produce interrogatory responses and documents responsive to TiVo written discovery" the court should have made it clearer than signing an order a day later that does not have those requirements on the schedule.

I believe _at best_ the court signing the 835 order was the court acknowledging the dispute ... but the core issue was dealt with back on May 30th ... Tivo is once again trying to expand the September 4th hearing to be more than the judge ordered it to be. The judge was flat against it ... NO DISCOVERY.



Greg Bimson said:


> Document 833 was filed with the Court on 13 June, and became an order as Document 837 on 18 June.
> Document 835 was filed with the Court on 16 June, and became an order as Document 836 on 17 June, the very next day. The "proposed dockets" became an order before the court ever ordered the "proposed dockets".


We'll find out Friday when DISH doesn't file the interrogatory responses. Then again, they may file something under seal (again) and leave the guessing to us!


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## James Long

jacmyoung said:


> What you have failed to realize was by rolling your eyes facts will not suddenly disappear.


Refusal to read the injunction in the case you are discussing isn't a good way to discover facts.


> You give none what's so ever in support your notion that DISH in contempt on the face of the injunction is already a foregone conclusion. You have cited not a single case even remotely resembled such outcome.


And you have FAILED to consider that DISH can be found in contempt ... you are so busy with other cases that you are not reading this one.


> But I hope reasonable people, after reading all the court's opinions and such, can agree on one thing, the goal of an injunction on infringement, is that and only that, to prohibit further infringement,


Reasonable people defined as "those who agree with jacmyoung?" After all, no one can be reasonable and disagree with you, can they?  


> My only problem is when one simply can not even concede to a fact.


You should have a problem with yourself then ... since you consistently refuse to concede facts IN THIS CASE. Too busy down the rabbit hole looking for an excuse not to concede.


> I never refused to concede to the posibility that your letter of injunction interpretation may be the one the judge will agree, what I am saying is according to all the prior cases all indications are DISH ultimately will not be in contempt.


So I may be right, but only if the judge is wrong? And (of course) you will never be wrong (if the court rules against you it will be an error!). 

Nice, you're conceding nothing of value. "They might be found in contempt but they won't be in contempt." :lol: Perhaps you can loan those rose colored glasses to Charlie Ergen? Or did you borrow them from him?  


> That is my opinion I am not conceding at least for now, because you have produced no prior cases, none what's so ever, to even offer me an opportunity to try to concede.


You don't need proof to have the _opportunity_ to concede. All you need is an open mind. The ability to say "Yes, it is possible that DISH isn't right and that they are IN CONTEMPT". Not that some whack judge will find them in contempt incorrectly, but that DISH could actually be in contempt.

But I don't expect you to ditch the rose colored glasses and see that possibility ... after all, you won't even take the first step and concede that DISH has NOT performed the tasks ordered in the injunction.


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## James Long

Courtesy of Tivo's filing in Delaware ...

*DISH's Opposition to Tivo's Motion for Contempt in the Texas case - Redacted.*

(Document 14 Exhibit L in the Delaware case.)
(It looks like Mainer_ayah has it on the "southernme" site as well.)


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## dgordo

James Long said:


> Courtesy of Tivo's filing in Delaware ...
> 
> *DISH's Opposition to Tivo's Motion for Contempt in the Texas case - Redacted.*
> 
> (Document 14 Exhibit L in the Delaware case.)
> (It looks like Mainer_ayah has it on the "southernme" site as well.)


http://www.dbstalk.com/showpost.php?p=1671191&postcount=224
My post wasnt good enough for you?


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## James Long

No, it wasn't. I thought you were referring to the Delaware action ... I'm probably not the only one that bypassed it not knowing that it was a _slightly_ redacted Texas document filed in Delaware. We could have been discussing something REAL! 

*Highlights:*
Accordingly, the installation of the new software disabled the DVR functionality of the set-top boxes and rid them of the old, infringing DVR software. It also disabled the indexing hardware in the DP-522 boxes (one of the Broadcom models).
...
Had the Federal Circuit not stayed this Court's Injunction on August 18, 2006, EchoStar would have been forced to disable the DVR functionality in millions of customers' set-top boxes and leave them without DVR features for a period of weeks or months before the new, non-infringing DVR software could be delivered.
...
The Injunction ordered EchoStar to "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber." (Amended Final Judgment and Permanent Injunction (Docket No. 776) at 2.) This EchoStar did. Spooling software from its satellites, it disabled the DVR functionality in the DP-501, DP-508, DP-510, DP-522, and DP-625 models that it had already deployed in subscribers' homes. This process took place on a rolling basis between late October 2006 and early April 2007, while the Injunction was stayed pending appeal. Although EchoStar did not disable the DVR functionality in its DP-721, DP-921, and DP-942 models, those models existed in quantities that, taken together, fell far below the 192,708-unit threshold expressly permitted by the Injunction. (Minnick Decl. ¶¶ 21-23, 25.) EchoStar accordingly is, and at all times has been, in full compliance with the Injunction.

TiVo now takes the untenable position that EchoStar violated the injunction because, after disabling the DVR functionality in its Infringing Products, EchoStar immediately supplied those units with new software that provides DVR functionality _without_ infringing TiVo's patent. TiVo's argument is inconsistent with the plain language of the injunction, has been soundly rejected in the case law, is contrary to TiVo's own arguments to this Court in support of the Injunction in 2006, and turns on its head the fundamental purpose of injunctive relief in patent cases, namely, to prevent a competitor from continuing to sell products that infringe plaintiff's patent.

By its plain terms, the Injunction, including the "disable DVR functionality" clause, can only cover "Infringing Products," not the non-infringing technology EchoStar has now deployed. It does violence to the natural meaning of the phrase "Infringing Products" to argue, as TiVo does, that it encompasses units supplied with EchoStar's non-infringing software. TiVo cannot argue that any of EchoStar's boxes infringe any of the "hardware" claims of the '389 patent. The Federal Circuit reversed the judgment of infringement as to all of those claims (claims 1, 5, 21, 23, 32, 36 and 52). TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290, 1312 (Fed. Cir. 2008). And TiVo does not argue that the boxes supplied with new software infringe any of the "software" claims of the patent. On the contrary, it is TiVo's position that enabling DVR functionality in any of the model numbers listed in the Injunction violates the injunction, regardless of whether the DVR technology infringes TiVo's patent. But, of course, if the software used in an EchoStar product has been changed so that the software claims are no longer infringed, the product can no longer meet the definition of an "Infringing Product," so DVR capability can be enabled without violating the Injunction.

This is true irrespective of whether a DVR-capable unit is still identified by a model number called out in the Injunction. TiVo implies that EchoStar should be held in contempt because it provides its non-infringing, redesigned software in hardware that uses the same DVR model number as a formerly Infringing Product. Another district court in the Fifth Circuit has already found that this label-over-substance argument "lacks merit." _Star Brite Distributing, Inc. v. Gavin,_ 746 F. Supp. 633, 644 n.3 (N.D. Miss. 1990). In _Star Brite_, the defendant had "continue[d] to market the six products named in [the] court's injunction" but (as here) had modified certain key internal features of the products. _Id_. at 641. As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendant to cease the manufacture and sale of any product using the same brand names as were listed in the injunction." _Id_. at 644 n.3. The court rejected this theory: "First, the court believes that its intention to enjoin the production of only the infringing formulation was clear. Second, injunctions as broad as plaintiff's proposed reading are disapproved. And third, such a reading would not constitute a clear order of the court for purposes of a motion for contempt." _Id_. (citation omitted). As in _Star Brite_, the Injunction issued by this Court was a "clear order" that cannot accommodate TiVo's current, overbroad reading.


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## nobody99

James Long said:


> Had the Federal Circuit not stayed this Court's Injunction on August 18, 2006, EchoStar would have been forced to disable the DVR functionality in millions of customers' set-top boxes and leave them without DVR features for a period of weeks or months before the new, non-infringing DVR software could be delivered.


I have a problem with this, and I wonder if the court will too.

They didn't ask for a stay so they could download the new software. They asked for a stay because three million "innocent families" would need to go out and buy a new DVR and they convinced the appeals court that they would win on appeal. They lied to the court to buy time.

I'm surprised they even brought attention to it.


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## Curtis52

Dish disabled *the* DVR functionality and replaced it with *other* DVR functionality. Sounds familiar.


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## James Long

EchoStar wrote requesting the stay:Approximately three million of EchoStar's existing customers have EchoStar DVRs, and appoximately fifty percent or EchoStar's new customers opt for DVRs. If EchoStar, during the pendacy of the appeal, can neither continue providing DVR service to its existing customers nor offer DVRs to its new customers, EchoStar faces a high risk of losing a significant portion of its existing and potential subscribers to competitors who can provide DVR service (for examplem DirecTV and Comcast), Withouth the ability to offer DVRs, EchoStar thus would los its ability to compete in the marketplace.

Indeed, if the injunction were to cause just half of EchoStar's current customers with DVRs to leave EchoStar for another provider, EchoStar's revenues would fall by nearly $90 million _per month_. Moreover, since customers tend to stay with their current providers absent a reason to change, even if EchoStar were to ultimately prevail on appeal, it would have little hope of regaining its lost customers and its lost revenue woul become permanent. Under such circumstances, any victory on appeal would be hollow since there is no judicial mechanism for compensating EchoStar for the harm it would suffer while the injunction was in force.​
Tivo read this they way they wanted the injunction to work ... a permanent disabling of the DVRs never to be enabled as a DVR again. DISH's response in their opposition to the motion is clarifying the harm they were speaking about.


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## nobody99

James Long said:


> DISH's response in their opposition to the motion is clarifying the harm they were speaking about.


Ok, jacmyoung


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## jacmyoung

nobody99 said:


> Ok, jacmyoung


What did you mean?

DISH has said pretty much what I said over and over, and they also, with their legal expertise of course, cited a prior case that seemed "identical" to this one to support their argument.


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## scooper

From reading the 6/30/2008 pdf found and posted by dgordo, I'd say jacmyoung pretty much exactly summed up Echostar's position, almost point by point, albiet without all the extra supporting cases in the Echostar document (understandable - I don't think he is a lawyer  )


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## James Long

Yes ... it was nice to see a relevant reference for a change.


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## Greg Bimson

> TiVo now takes the untenable position that EchoStar violated the injunction because, after disabling the DVR functionality in its Infringing Products, EchoStar immediately supplied those units with new software that provides DVR functionality without infringing TiVo's patent.


The position, however, is tenable. The new software has not been adjudicated, yet DISH/SATS is claiming it doesn't infringe. It doesn't matter how many opinions have been rendered. It only matters that "Infringing Products" were adjudicated infringing, and that the only change ordered is to have those products disabled.


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## jacmyoung

scooper said:


> From reading the 6/30/2008 pdf found and posted by dgordo, I'd say jacmyoung pretty much exactly summed up Echostar's position, almost point by point, albiet without all the extra supporting cases in the Echostar document (understandable - I don't think he is a lawyer  )


Well I did cite many prior cases I researched myself, of course DISH has more pointed cases, which I anticipated. Afterall why the lawyers are paid big bucks, I am not

If you read it, DISH said not only the proposed modification was well known, from many public statements made by DISH went all the way back to 2006, but the modification started in 10/06. DISH is trying to establish the notion that they should not pay much damages during the stay of the injunction at all.


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## jacmyoung

Greg Bimson said:


> The position, however, is tenable. The new software has not been adjudicated, yet DISH/SATS is claiming it doesn't infringe. It doesn't matter how many opinions have been rendered. It only matters that "Infringing Products" were adjudicated infringing, and that the only change ordered is to have those products disabled.


That is all they need to claim, that the new software is no longer infringing, that is why Tivo wanted to seek more evidence of the new software. DISH does not have to prove their new software is no longer infringing, only to establish *doubt* whether it still infringes or not, and if such doubt can be established, DISH is not in contempt. Tivo will have to seek a new trial to find it out.


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## James Long

Echostar's push is that once the software was downloaded the "Infringing Products" were no longer "Infringing Products".  

We're watching the tide roll in and out. This Friday Tivo will submit their reply comments and the tide will shift again. It won't be until after the September 4th hearing that we'll know who had the winning argument. So goes life in court.


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## jacmyoung

James Long said:


> Echostar's push is that once the software was downloaded the "Infringing Products" were no longer "Infringing Products".
> 
> We're watching the tide roll in and out. This Friday Tivo will submit their reply comments and the tide will shift again. It won't be until after the September 4th hearing that we'll know who had the winning argument. So goes life in court.


That I agree 100%.

I will only add that, as a defendant, DISH enjoys the benefit of all uncertainty, doubt, ambiguity, confusion, and reasonable disagreements without definitive correct answers.


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## Curtis0620

jacmyoung said:


> That is all they need to claim, that the new software is no longer infringing, that is why Tivo wanted to seek more evidence of the new software. DISH does not have to prove their new software is no longer infringing, only to establish *doubt* whether it still infringes or not, and if such doubt can be established, DISH is not in contempt. Tivo will have to seek a new trial to find it out.


The burden of proof is on DISH, not TiVo.


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## jacmyoung

Curtis0620 said:


> The burden of proof is on DISH, not TiVo.


You dont know law, burden of proof is always on the plaintiff, not defendant.

The defendant's job is to establish doubt, and if successful, the defendant gets the benefit of such doubt.


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## Curtis0620

jacmyoung said:


> You dont know law, burden of proof is always on the plaintiff, not defendant.
> 
> The defendant's job is to establish doubt, and if successful, the defendant gets the benefit of such doubt.


Then this will go on forever. They will just say we changed the software over and over and over. When does it end?

Oh, I know, it ends when DISH is cleared. So TiVo should just give up now.


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## Curtis52

Curtis0620 said:


> Then this will go on forever. They will just say we changed the software over and over and over. When does it end?


deja vu

The judge can add pre-approval requirements to the injunction. The appeals court has allowed pre-approval in a few flagrant cases.



> "In Spindelfabrik, the district court originally entered an injunction that, like this Court's Injunction, contained no requirement of advance approval before implementation of a design- around. The court later broadened its original injunction following "defendants' repeated and 'flagrant' violations of the district court's earlier injunction. The district court in Additive Controls relied upon the Spindelfabrik decision to broaden an existing injunction in similar circumstances. See id. The broadened injunctive relief granted in Spindelfabrik and Additive Controls was only appropriate because the defendants had been serial contemnors in the same case, which EchoStar is assuredly not (irrespective of TiVo's bid to dredge up irrelevant issues from unrelated litigation).5 The Federal Circuit made crystal-clear that "such broad injunctions should be used only in exceptional cases," Additive Controls, 154 F.3d at 1356 (emphasis added), in which an infringer has already violated an injunction."


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## scooper

IF Dish doesn't get cited for contempt in September, then, yes, Tivo might as well give it up on this case with Dish and take what they have already been awarded / will be awarded for subsequent damages. I don't see Dish doing the licensing thing with Tivo with this new software out and supposedly in place on all their subsequent DVRs as well - it would not even surprise me if Dish starts competing with Tivo if they get their patent approved.

Unless Tivo wishes to start a whole new trial regarding the new software.


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## James Long

jacmyoung said:


> You dont know law, burden of proof is always on the plaintiff, not defendant.


Always? Nope.

In the distants case the burden of proof was, by law, on the defendant ... the company carrying distant network channels. The plaintiff just has to make an accusation - it is up to the defendant to prove they are following the law.

The burden of proof is on whomever the law and the courts say it is on. It isn't _always_ the plaintiff.


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## kmill14

jacmyoung said:


> You dont know law, burden of proof is always on the plaintiff, not defendant.
> 
> The defendant's job is to establish doubt, and if successful, the defendant gets the benefit of such doubt.


If a defendant is found guilty and put in jail, but gets a new trial because of new evidence, he still stays in jail until the court rules in his favor.

So once you are found guilty, the burden of proof is on you to prove your innocence.


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## Curtis52

kmill14 said:


> If a defendant is found guilty and put in jail, but gets a new trial because of new evidence, he still stays in jail until the court rules in his favor.
> 
> So once you are found guilty, the burden of proof is on you to prove your innocence.


No. There can be no new trial until the first verdict is vacated. At that point the defendant can be released on bond. In the new trial the prosecutor has to prove guilt just like he had to prove guilt in the first trial.


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## kmill14

Curtis52 said:


> No. There can be no new trial until the first verdict is vacated. At that point the defendant can be released on bond. In the new trial the prosecutor has to prove guilt just like he had to prove guilt in the first trial.


I suppose I misspoke with the phrase "new trial"....an appeal does not allow the guilty person to get out of jail first.


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## Curtis52

kmill14 said:


> I suppose I misspoke with the phrase "new trial"....an appeal does not allow the guilty person to get out of jail first.


An appeal is not used to prove guilt or innocence. An appeal is for arguing that there was an error in the trial.


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## kmill14

Well, my analogy was no good...but that does not remove E* from having the burden of proof in this case to say that they are in compliance with the injunction regarding the adjudicated boxes. There can still be a future motion regarding new boxes, and the burden on NEW boxes would be on TiVo, but TiVo hasn't put that one out there yet


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## jacmyoung

James Long said:


> Always? Nope.
> 
> In the distants case the burden of proof was, by law, on the defendant ... the company carrying distant network channels. The plaintiff just has to make an accusation - it is up to the defendant to prove they are following the law.
> 
> The burden of proof is on whomever the law and the courts say it is on. It isn't _always_ the plaintiff.


You know you are just being argumentative. In the distant case, the plaintiffs proved beyond reasonable doubt DISH was in violation of the law, DISH on the other hand failed to establish such doubt, because substential evidence proved DISH without a doubt violated the law.

In this case the plaintiff proved beyond reasonable doubt DISH's old software infringed, they almost proved the hardware too but as it stands for now Tivo only proved beyond reasonable doubt the old DISH software infringed.

What they have not done is to prove that there is no doubt the new software still infringes, Tivo said themself, "to be sure...", so the doubt exists, even by Tivo's own admission. And as long as this doubt exists, DISH is not in contempt.

By being not in contempt, it does not mean DISH was not guilty of the infringement of the old software, and got away with paying for the "crime", they will pay for it, only that you can not punish DISH for the current acts which may or may not infringe. A new trial will be needed to prove beyond reasonable doubt that the new acts are still infringing.

I know a lawyer can probably point out some wordings above that are not precise, but the idea is sound.


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## James Long

While Tivo (and their fans) may consider DISH's actions criminal they only violated civil laws. No one is going to jail, DISH will simply have to pay a lot of money (eventually) and probably not as much as Tivo (or their fans) want to see paid.


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## James Long

jacmyoung said:


> You know you are just being argumentative. In the distant case, the plaintiffs proved beyond reasonable doubt DISH was in violation of the law, DISH on the other hand failed to establish such doubt, because substential evidence proved DISH without a doubt violated the law.


I'm being accurate. I've read the law that DISH violated in the distants case as well as the law that proscribed the exact penalty that was imposed on DISH for that violation.

§ 119 · Limitations on exclusive rights: Secondary transmissions of superstations and network stations for private home viewing(a) Secondary Transmissions by Satellite Carriers.-(7) Violation of territorial restrictions on statutory license for network stations.-(D) Burden of proof.-In any action brought under this paragraph, the satellite carrier shall have the burden of proving that its secondary transmission of a primary transmission by a network station is to a sub-scriber who is eligible to receive the secondary transmission under this section.​"[T]he satellite carrier shall have the burden of proving". Not "always the plaintiff".



jacmyoung said:


> A new trial will be needed to prove beyond reasonable doubt that the new acts are still infringing.


Like it or not, "only colorably different" is still within the control of this court and the existing court action. DISH has done a fairly good job of covering the issues in their response. Hopefully Tivo won't do so good in their reply.


----------



## nobody99

jacmyoung said:


> You know you are just being argumentative


Wow, is that the biggest "pot, meet kettle" you've ever heard or what??:lol:


----------



## kmill14

jacmyoung said:


> *In this case the plaintiff proved beyond reasonable doubt DISH's old software infringed*, they almost proved the hardware too but as it stands for now Tivo only proved beyond reasonable doubt the *old DISH software *infringed.


You (and E*) continue to ignore what the Appeals Court themselves said:



> As an initial matter, software alone cannot extract data from a physical device; it can only control hardware that extracts data. Therefore, when a device "extracts video and audio data from [a] physical data source," it is necessarily the case that certain hardware operations are performed. *For that reason, the hardware/software distinction made by EchoStar is unhelpful. What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term*.


jacmyoung (and others arguing this software/hardware thing), when will you actually read what the Appeals Court said??? Software by itself it irrelevant, hardware by itself is irrelevant. Its the "operations performed by the interaction of [both] software and hardware....taken as a whole".

There was no such thing in this case as "infringing software".


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## scooper

Well then - I guess Dish is off scot-free, since the H/W claims have been remanded for now, right kmill14 ?


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## kmill14

Huh? You perhaps don't know that the Appeals Court made the above statement prior to ruling on the "software" claims...with that knowledge...what do the hardware claims have to do with their statement?


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## Herdfan

James Long said:


> While Tivo (and their fans) may consider DISH's actions criminal they only violated civil laws. No one is going to jail,


No one is going to jail over the patent infringement. Jail is still a possibility for contempt.


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## Greg Bimson

> By its plain terms, the Injunction, including the "disable DVR functionality" clause, can only cover "Infringing Products," not the non-infringing technology EchoStar has now deployed. It does violence to the natural meaning of the phrase "Infringing Products" to argue, as TiVo does, that it encompasses units supplied with EchoStar's non-infringing software.


This is probably one of my all-time favorites. As "Infringing Products" are adjudicated devices, and only has a definition of eight specific, listed models.

"Infringing Products" is not a natural phrase. There is a natural phrase called "infringing products". This has to be one of the most ridiculous arguments I have ever seen.

And no one knows whether or not the software on the adjudicated devices still infringes. If I were TiVo, I'd simply go buy one of the "Infringing Products" from a reseller, to see if the software was actually changed.


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## scooper

Greg - that dog ain't gonna hunt.


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## jacmyoung

James Long said:


> I'm being accurate. I've read the law that DISH violated in the distants case as well as the law that proscribed the exact penalty that was imposed on DISH for that violation.
> 
> § 119 · Limitations on exclusive rights: Secondary transmissions of superstations and network stations for private home viewing(a) Secondary Transmissions by Satellite Carriers.-(7) Violation of territorial restrictions on statutory license for network stations.-(D) Burden of proof.-In any action brought under this paragraph, the satellite carrier shall have the burden of proving that its secondary transmission of a primary transmission by a network station is to a sub-scriber who is eligible to receive the secondary transmission under this section.​"[T]he satellite carrier shall have the burden of proving". Not "always the plaintiff".


That was a specific language in the law to explain how the DBS carrier must do to ensure they follow the rules, not how such carrier must do to clear itself in a lawsuit.

When the networks brought the lawsuit against DISH, they most certainly had to prove beyond doubt that DISH had violated the law, including in this specific case, with substantial evidence, that DISH failed to demonstrate that the specific requirement above was met. There was no doubt DISH did not have proof that they met such requirement, as such the networks was able to prove beyond doubt DISH violated that law.

DISH failed to establish the doubts of whether the above accusations were incorrect or not, therefore they were found guilty.



> Like it or not, "only colorably different" is still within the control of this court and the existing court action. DISH has done a fairly good job of covering the issues in their response. Hopefully Tivo won't do so good in their reply.


On the issue of colorable difference, I was not addressing it, I was responding to an argument on infringement only, so my response was to that only, the infringement issue.

If you want to talk about the "colorable difference" issue, of course we can start on that one too, or you can just go back to read all the things I said about the "colorable difference" issue, that could take a few days to read


----------



## kmill14

The Colorably Different standard does not apply to this hearing, since the Colorably Different standard only applies to new devices. TiVo has only brought forth a motion to address devices already adjudicated on.


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## jacmyoung

kmill14 said:


> The Colorably Different standard does not apply to this hearing, since the Colorably Different standard only applies to new devices. TiVo has only brought forth a motion to address devices already adjudicated on.


That we agree, once the judge tells Tivo sorry there is no such thing called "face of injucntion contempt", then they can plan on what's next to talk about, including the colorable difference issue if needed.

Let me put it this way, the judge could say, look the letter of my injunction means what DISH explained, so DISH is not in contempt.

Or the judge could say, the letter of the injunction means what Tivo explained, so DISH is in contempt.

On appeal, DISH can point out to these two different versions of the interpretations of the letter of the injunction, and all DISH has to do is to convince the appeals court that either way the interpretation can be considered reasonable, and therefore there is ambiguity in the letter of the injunction, and therefore according to the law, the DISH's interpretation should be chosen.


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## jwhayn

If you followed the Groklaw's coverage of the SCO vs IBM and everyone else, you should be reminded of this thread. The conversations included 'instant experts', trolls, non-advocate lawyers, and obvious SCO lawyers hiding under false colors. SCO will be lamented only by their creditors.


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## kmill14

jacmyoung said:


> all DISH has to do is to convince the appeals court that either way the interpretation can be considered reasonable, and therefore there is ambiguity in the letter of the injunction, and therefore according to the law, the DISH's interpretation should be chosen.


There is no ambiguity in the order to disable the ability to write TV data to the hard-drive with respect to products DP-501, etc that have already been placed with an end user.


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## scooper

You didn't read Echostar's brief of 30 June 2008, did you ?


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## peak_reception

> It won't be until after the September 4th hearing that we'll know who had the winning argument.


 And it could be quite a while after that. 2009 here we come...


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## jacmyoung

scooper said:


> You didn't read Echostar's brief of 30 June 2008, did you ?


I finally had a chance to read through it, and even I was surprised how close it was to what I had anticipated point by point, of course with more pointed citing of case law and other quotes.

That is however not to said DISH will suddenly be more likely to prevail. What does it indicate is, when one does not rely on the words of a partial party (DISH) in the dispute, rather rely on one's own reseach of the facts and the law, and ends up at the same positions as the partial party (DISH),

You then compare it to the other side, when the only thing they could rely on was to wait for the words from their own partial party (Tivo) involved in the dispute, then applauded whatever that party's rhetorics, as if they were their own and also true.

You can see the difference in which the two approaches are, and draw some opinion as which appears more credible.


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## James Long

jacmyoung said:


> That was a specific language in the law to explain how the DBS carrier must do to ensure they follow the rules, not how such carrier must do to clear itself in a lawsuit.


No, that is specific language placing the burden of proving that only authorized people are receiving the signal. The language CLEARLY identifies that in a lawsuit ... "any action brought under this paragraph" ... the *burden of proof* remains with the satellite carrier ... who would most likely be the defendant. There is no reasonable doubt ... there is a burden on the carrier to be able to prove they are operating legally whenever challenged. If they cannot prove they are operating legally there can be fines and even a "death penalty" of never being able to offer the service again.

The burden of proof is on the satellite carrier. The burden of proof is on the satellite carrier. The burden of proof is on the satellite carrier. OK? Or are you now rewriting US Code to suit your whims?



> On the issue of colorable difference, I was not addressing it, I was responding to an argument on infringement only, so my response was to that only, the infringement issue.


OK, DISH walks into court waving their hand and trying the Jedi mind trick on the judge ... "these are not the "Infringing Devices" you wrote an injunction requiring the disabling of". The reply comes back "Yes, they are, and you are in contempt for not obeying my order."

Or the reply is "Yes, you have apparently changed the devices ... but an "Infringing Product" with a minor software change is only colorably different from the actual "Infringing Product" ruled on originally. You are in contempt for not obeying my order."



kmill14 said:


> The Colorably Different standard does not apply to this hearing, since the Colorably Different standard only applies to new devices. TiVo has only brought forth a motion to address devices already adjudicated on.


The injunction covers the named devices and any that are "only colorably different". Which could be a ViP receiver (a new device) or a DP-501. If DISH gets to claim that the same hardware with the same model number and different software is a "new device" (as they have) then that "new device" by your own admission could be ruled as "only colorably different". All devices "only colorably different" have been adjudicated ... which fits your statement as well.

TiVo has only brought forth a motion to address devices already adjudicated on. (The named "Infringing Products" and all products only colorably different have been adjudicated.) DISH claims that "Infringing Products" with new software have ceased being "Infringing Products" and are now new devices ... leaving them open for the "only colorably different" label.

The point is Judge Folsom has many ways that he can find DISH in contempt and rule the products DISH is currently selling as infringing. He doesn't have to limit himself to having a new trial every time DISH claims to have changed the software.


----------



## jacmyoung

kmill14 said:


> There is no ambiguity in the order to disable the ability to write TV data to the hard-drive with respect to products DP-501, etc that have already been placed with an end user.


Yes there is, when one thing can be explained in two ways, the ambiguity exists. It has nothing to do with how strongly you believe in your way, or how strongly I believe in my way, as long as there exists these two ways, the ambiguity exists.

The only time the above is false is when you can prove with any doubt that your way is right, the other way is wrong.

So prove me wrong when I said *the* DVR functions... in the *Infringing Products* means *the* DVR functions described during the trial which infringed, and used in the products that can be defined as the products that infringe on the patent.

On the other hand I want to say, your are wrong when you insisted, that *the* DVR fucntions...in the *Infringing Products* means *all* DVR functions, whether infringe or not, and used in the products even if such products are no longer infringing products.

Just on the face of the above two ways of interpretations can not honestly say there is no dispute that yours are absolutely the correct way?


----------



## jacmyoung

James Long said:


> No, that is specific language placing the burden of proving that only authorized people are receiving the signal. The language CLEARLY identifies that in a lawsuit ... "any action brought under this paragraph" ... the *burden of proof* remains with the satellite carrier ... who would most likely be the defendant. There is no reasonable doubt ... there is a burden on the carrier to be able to prove they are operating legally whenever challenged. If they cannot prove they are operating legally there can be fines and even a "death penalty" of never being able to offer the service again.


That specific provision was in the law itself, it was not intended to offer a guidence how to argue who has the burden of proof in case a lawsuit occurs.

That specific provision places burden of proof on the DBS carrier to provide proof on a regular basis, at the start, at every month, every 6 months...and if someone cancels... all such incremental information, to be provided to the networks, truthfully, and accompanied by required payments and deposits. That is what the burden of roof that particular provision is all about. The carrier must at all times prove to the networks the status of the eligibility of the distant users, as a reqiurement to continue to be allowed to carry the distant signals, not after a lawsuit, but without any lawsuit, rather in day to day operations, *not* to say in case of a lawsuit, somehow the burden of proof will be magically turned on to the defendant just because of this single provision in the law, and destroys the fundamantal standard that the accused is presumed innocent until proven guilty in a criminal case, and in a civil case, the accuser must meet the "preponderance of the evidence" standard, not the other way around.



> Or the reply is "Yes, you have apparently changed the devices ... but an "Infringing Product" with a minor software change is only colorably different from the actual "Infringing Product" ruled on originally. You are in contempt for not obeying my order."


Bingo, you brought up this issue, so yes indeed to find it out, which is precisely what a contempt proceeding supposed to do, then let's find it out, shall we? How to find it out? Let's look at the differences, and determine if they are more than colorable or not. Clear now?



> TiVo has only brought forth a motion to address devices already adjudicated on. (The named "Infringing Products" and all products only colorably different have been adjudicated.) DISH claims that "Infringing Products" with new software have ceased being "Infringing Products" and are now new devices ... leaving them open for the "only colorably different" label.


The problem is you somehow believe just because Tivo wanted to avoid the discussion of anything else, the court must agree with such. It is like saying if I accuse you of assulting me, and the court says ok I will grant your motion and look at your complaint, it automatically means the court must find you guilty, no other outcome will be allowed, how do you like that so far?



> The point is Judge Folsom has many ways that he can find DISH in contempt and rule the products DISH is currently selling as infringing. He doesn't have to limit himself to having a new trial every time DISH claims to have changed the software.


No he in theory has only one way to find DISH in contempt of an injunction on infringement, that is there is no doubt DISH's products are still infringing on the Tivo's patent, there is no other way. Go read the law.


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## Bidderman9

dgordo said:


> DISHs motion in opposition to being held in contempt was released.


When reading E*'s motion, it sure seems to me that they are trying to argue the technical points. I'm note so sure Folsom will be happy with that.

You got to love the arguement that they disabled the DVR functionality (thereby complying with the injunction) and then immediately followed up with an installation of their non-infringing software enabling the DVR.

What is this, Kindergarten? No teacher, I did not lie, I just did not tell the whole truth.


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## jacmyoung

Bidderman9 said:


> When reading E*'s motion, it sure seems to me that they are trying to argue the technical points. I'm note so sure Folsom will be happy with that.
> 
> You got to love the arguement that they disabled the DVR functionality (thereby complying with the injunction) and then immediately followed up with an installation of their non-infringing software enabling the DVR.
> 
> What is this, Kindergarten? No teacher, I did not lie, I just did not tell the whole truth.


Show me with your evidence the above statement is false or untrue.


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## Bidderman9

jacmyoung said:


> Show me with your evidence the above statement is false or untrue.


That is the best part about it. I don't have to prove it. E* does. That should make for a good comedy.


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## James Long

jacmyoung said:


> That specific provision was in the law itself, it was not intended to offer a guidence how to argue who has the burden of proof in case a lawsuit occurs.


"any action brought under this paragraph"  
A paragraph on lawsuits, not a paragraph on reporting. 



> Bingo, you brought up this issue, so yes indeed to find it out, which is precisely what a contempt proceeding supposed to do, then let's find it out, shall we? How to find it out? Let's look at the differences, and determine if they are more than colorable or not. Clear now?


It wouldn't take much to declare the current receivers infringing under the injunction and hold DISH in contempt.


> It is like saying if I accuse you of assulting me, and the court says ok I will grant your motion and look at your complaint, it automatically means the court must find you guilty, no other outcome will be allowed, how do you like that so far?


At this point it would be a miracle if you would admit that DISH could actually be guilty of continued infringement and in contempt.


> No he in theory has only one way to find DISH in contempt of an injunction on infringement, that is there is no doubt DISH's products are still infringing on the Tivo's patent, there is no other way. Go read the law.


As long as you are theorizing keep an open mind.


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## jacmyoung

James Long said:


> "any action brought under this paragraph"
> A paragraph on lawsuits, not a paragraph on reporting.


What action? Can you lay it out for us? The action by DISH when they failed to provide the required month by month distant sub database to the networks? When DISH provided incomplete database? Or when DISH provided the database which showed many ineligible subs got the signals? What? You mean the networks during the trial did not have to provide any evidence to the court that DISH failed to provide them those required information?

In the provision it spelled out what the carrier must do on a monthly basis in order to deserve the right to retransmit, if they failed to prove their sub base were eligible base, the networks could flip the swith and not give DISH the signals, with or without any lawsuit. That is what that provision requires, it says no the networks does not have to go to the carrier and audit their database to demonstrate the subs are not eligible in order to stop giving the carrier their signal, the carrier has the burden of proof their subs are eligible by providing the networks the data on a regular basis, in order to convince the networks they should continue to provide the carrier their signals, not the other way around.

Of course in a lawsuit by the networks, the networks only needed to provide the court the evidence that DISH failed to comply with the "burden of proof" provision because DISH failed to provide the database, or failed to provide complete database or the database showed subs that are not eligible received the signals, on a regular basis. After the networks provided such evidence, which should be readily on file, they easily proved their case, yes they proved their case, that DISH did not comply to the specific "burden of proof" provision in that law. And because the networks proved their case, and because DISH failed to dispute that, DISH was guilty.



> It wouldn't take much to declare the current receivers infringing under the injunction and hold DISH in contempt.


At least you did not say it wouldn't take anything to declare DISH's current receivers still infringe, at least it takes something, not much but still something, so can you tell me what would it take to declare DISH's current receivers still infringe?



> At this point it would be a miracle if you would admit that DISH could actually be guilty of continued infringement and in contempt.
> As long as you are theorizing keep an open mind.


Not at all, if after hearing evidence on the new software, the judge can determine the new software is essentially the same as the old software, DISH will be in contempt. Unlikely but I would not call it a miracle. Are you willing to wait to see what the judge's decision will be?



> As long as you are theorizing keep an open mind


Are you not willing to read the law? If you are then how about offer use a few quotes of yours from the prior cases that prove your argument? I did plenty myself, you only need to give a few. I am ready to read them when you are ready.


----------



## kmill14

jacmyoung said:


> So prove me wrong when I said *the* DVR functions... in the *Infringing Products* means *the* DVR functions described during the trial which infringed, and used in the products that can be defined as the products that infringe on the patent.


Prove you wrong? You refuse to admit being wrong ever, but thats fine. I don't have to prove you wrong. If you want to know what "the DVR functionality" mean, just read the Judge's own order...he tells you:



> the DVR functionality (i.e., disable all storage to and playback from a hard
> disk drive of television data)


That is all "the DVR functionality" means when the Judge put it in the injunction. Feel free to make stuff up, but unless you can find any other reference to "the DVR functionality" anywhere else in the injunction, you are wasting everyone's time.

Oh, and I noticed you never responded to my direct quote from the Appeals Court regarding the irrelevance of software or hardware on their own. Why is that?


----------



## jacmyoung

kmill14 said:


> Prove you wrong? You refuse to admit being wrong ever, but thats fine. I don't have to prove you wrong. If you want to know what "the DVR functionality" mean, just read the Judge's own order...he tells you:
> 
> That is all "the DVR functionality" means when the Judge put it in the injunction. Feel free to make stuff up, but unless you can find any other reference to "the DVR functionality" anywhere else in the injunction, you are wasting everyone's time.


All you have established was you have your interpretation, I have mine, you don't agree with me, I don't agree with you. Now we turn to that MTC case, in which the injunction said MTC you must spell out each project and the ridership gains for each project, MTC did not do that, the plaintiffs argued for contempt, MTC argued they didn't have to follow the letter, because they correctly interpreted the goal of the injunction, both courts agreed with the defendant, not the plaintiffs, because each had their own interpretation of the letter of the injunction, so there was an ambiguity, and the benefit went to defendant. Want to try your luck here, be my guest.



> Oh, and I noticed you never responded to my direct quote from the Appeals Court regarding the irrelevance of software or hardware on their own. Why is that?


I have responded to it you only ignored it. What I said was apparently you believe the software and hardware can not be separated, if so how can you honestly insist that only the hardware (i.e. the name of those DVRs) be the only consideration when deciding a contempt, regardless what kind of software is in them? You can not have it both ways.

If the hardware on its own means nothing, then you can not say just because the hardware is still the same, DISH is in contempt. Not to mention the hardware is not infringing.

The hardware and software must be viewed together at all times (yes?) to decide if the products are still infringing or not. If the hardware no longer infringes, and if at the same time the software also no longer infringes, then in what way can you still say the products still infringe?


----------



## James Long

jacmyoung said:


> What action? Can you lay it out for us? The action by DISH when they failed to provide the required month by month distant sub database to the networks? When DISH provided incomplete database? Or when DISH provided the database which showed many ineligible subs got the signals? What? You mean the networks during the trial did not have to provide any evidence to the court that DISH failed to provide them those required information?


Do you even know what you are talking about at all or are you just spitting out words? The claim was that DISH was providing signals illegally to customers who did not qualify to receive them. Obviously you know nothing about the case, which of course won't stop you from discussing it.

The least you could do is read the law I quoted earlier where it clearly says that the burden of proof is on the satellite carrier. The plaintiffs did not have to prove the extent of DISH's illegal activities ... DISH had to prove that they were only providing service legally. They failed to do so. They got spanked.


> In the provision it spelled out what the carrier must do on a monthly basis in order to deserve the right to retransmit, if they failed to prove their sub base were eligible base, the networks could flip the swith and not give DISH the signals, with or without any lawsuit.


Not "give" DISH signals that are available free OTA? You really don't understand what you are talking about.

Satellite carriers need NO PERMISSION AT ALL from the station or network to carry network stations as distants. None, zero, nada. All they have to do is follow the law in who those stations are delivered _to_. The stations have no say in the matter ... other than to sue if they feel that their signals are being delivered to customers who don't qualify.


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## James Long

jacmyoung said:


> It wouldn't take much to declare the current receivers infringing under the injunction and hold DISH in contempt.
> 
> 
> 
> At least you did not say it wouldn't take anything to declare DISH's current receivers still infringe, at least it takes something, not much but still something, so can you tell me what would it take to declare DISH's current receivers still infringe?
Click to expand...

Judge Folsom's signature.


> At this point it would be a miracle if you would admit that DISH could actually be guilty of continued infringement and in contempt.
> 
> 
> 
> Not at all, if after hearing evidence on the new software, the judge can determine the new software is essentially the same as the old software, DISH will be in contempt. Unlikely but I would not call it a miracle.
Click to expand...

The miracle isn't court action, the miracle I referred to is YOU admitting that DISH could be actually guilty. Or are you admitting that now?


> Are you willing to wait to see what the judge's decision will be?


Are you? Or is this another time where others are supposed to follow different rules than you have set for yourself?


> As long as you are theorizing keep an open mind
> 
> 
> 
> I did plenty myself, you only need to give a few.
Click to expand...

You say that as if the cases you quoted were relevant and not shot down nearly immediately by people in this thread! Yes, I admit that you have filled this thread with more words than anyone else. Relevancy would be nice in the future.

You could start with keeping up with THIS case. Look at what is actually being filed and argued by the high priced people responsible for getting the right verdict for DISH. Your fan fiction speculation is "fun" but there is so much more that could be learned if you could stick to the facts in THIS case - and keep an open mind.


----------



## jacmyoung

James Long said:


> ...Not "give" DISH signals that are available free OTA? You really don't understand what you are talking about....


First let's make sure we are talking about the distant signals, not local station LIL signals.

Now let's be clear how a DBS may obtain such distant signals, for example the signals from NY and LA. Those signals are fiber linked to the DBS facilities nearby, then unllinked to the satellites, then offered to eligible subs.

What the law says is how a DBS carrier must do specifically in order to qualify as a carrier to legally retransmit such signals, for example by providing monthly database, distant churn rate, 6-months database, by making deposits, by making monthly payments. It is the DBS carrier's burden to prove that they provide those signals only to those that are eligible, in order to continue to have the legal right to retransmit.

The networks clearly had evidence that DISH did not comply with the law, they offered signals to ineligible subs, so they filed the suit. Please don't tell me networks did not have to provide anything in order for the court even to entertain a lawsuit on DISH, or on anyone, the plaintiffs must show cause for accusing someone of violation of something, anything. The evidence must be there and substantial, provided by the networks, not DISH, to even begin to file a complaint.

Of course once there is cause to accept such complaint, it did not take much to find DISH guilty, because DISH did provide the signals to ineligible subs, it of course was DISH's job to prove the networks were wrong by filing the lawsuit, and of course since DISH could not dispute the charges, because they could not prove they did not violate the law, because, the evidence was clear they did violate the law.

That is in no way of saying the plaintiffs can bring up a lawsuit agaisnt anyone without cause, without evidence which the plaintiff must prove. That somehow a lawsuit can be initiated by a plaintiff on no grounds at all, that it will be up to the accused to defend a groundless accusation.


----------



## jacmyoung

James Long said:


> ...You say that as if the cases you quoted were relevant and not shot down nearly immediately by people in this thread! Yes, I admit that you have filled this thread with more words than anyone else. Relevancy would be nice in the future.


Yes and guess what you can call all the cases cited by the courts irrelevant because none of them are identical anyway.

But that is not even the point, I am simply asking you to provide your own cases, "relevant" cases to prove your argument, the problem is you have yet even provided one, much less to determine if yours are "relevant or not."



> You could start with keeping up with THIS case. Look at what is actually being filed and argued by the high priced people responsible for getting the right verdict for DISH. Your fan fiction speculation is "fun" but there is so much more that could be learned if you could stick to the facts in THIS case - and keep an open mind.


Some of the cases DISH cited are in fact what I also cited, and I will give you a few:

"infringement of the patent is the sine quo non of violation of an injunction on infringement"

"If there is ambiguity in injunction, the defendant must have all the benefits"

"Legitimate workaround must be allowed and in fact is encouraged"

"That there is nothing in the injucntion that required DISH must seek pre-approval before modification"

"DISH is not attacking the injunction"

All the above said by the high priced DISH attorneys were said by me, through my citing of the prior cases.

My question is, where was your single citing? Where did you even make an effort to seek the law? All you have been doing is read this injunction over and over, and insisted that only the letter of this injunction matters, never mind even the interpretation of the letter of the injunction can go different ways.

But no no, there is no need to seek the law, to learn what the higher court said, to learn what this judge's bosses said. No no you only need the letter of this injunction to know for certain that your reading of it is the only correct one, and DISH in contempt is a done deal, who cares about anything outside of this case?

Need I go on?


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## kmill14

jacmyoung said:


> All you have established was you have your interpretation, I have mine, you don't agree with me, I don't agree with you.


I quoted the Judge in this case...I didn't have to give an interpretation. Are you telling me that a direct quote from the Judge on the meaning of "the DVR functionality" is wrong? Do you not know the meaning of (i.e.) ?????



> Now we turn to that MTC case, in which the injunction said MTC you must spell out each project and the ridership gains for each project, MTC did not do that, the plaintiffs argued for contempt, MTC argued they didn't have to follow the letter, because they correctly interpreted the goal of the injunction


The end goal of that injunctive order was spelled out clearly in the injunction itself, just as the end goal of this injunctive order is spelled out. E* wasn't given 6 different tasks for how to get there, but the Judge was quite clear in his order to "disable all storage to and playback from a hard disk drive of television data"



> I have responded to it you only ignored it. What I said was apparently you believe the software and hardware can not be separated, if so how can you honestly insist that only the hardware (i.e. the name of those DVRs) be the only consideration when deciding a contempt, regardless what kind of software is in them? You can not have it both ways.


You STILL don't get it. I (or the Federal Court) never said anything about software OR hardware...it is all about the OPERATIONS performed by the device.

And this contempt hearing is about E*'s failure to obey a court order to disable hard-drive writing functionality in devices that were already adjudicated. Not contempt for anything related to what software is in the device, or what hardware, or anything else.


----------



## jacmyoung

kmill14 said:


> I quoted the Judge in this case...I didn't have to give an interpretation. Are you telling me that a direct quote from the Judge on the meaning of "the DVR functionality" is wrong? Do you not know the meaning of (i.e.) ?????


I have also explain the i.e. issue with an exmaple:

A group of kids having birth day party during which they are told to finish each share of the cake plus a plate of salad, before going into the pool to play. All kids complied but three boys, who refuse to eat the salad.

The mother of one boy said to him, you must finish *the* salad in your plate before going into the pool, i.e. all of them, no picking and choose only the tomatos, not the olives but all of them.

According to you, because of the *all* used in the i.e. clarification, that boy must eat all the salad, not only in his plate, but in the plates of the two other boys'.

What I am saying is, the i.e. clarification is only limited to *the* salad, which describes only *the* salad in that boy's plate, not every other salad plates.

Can you say my above intepretation is totally unreasonable and yours are more logical that the mother of that boy was ordering him to eat the other boys' salad too?



> The end goal of that injunctive order was spelled out clearly in the injunction itself, just as the end goal of this injunctive order is spelled out. E* wasn't given 6 different tasks for how to get there, but the Judge was quite clear in his order to "disable all storage to and playback from a hard disk drive of television data"


Why do you keep ignoring the fact the end goal of any injunction on infringement is to prohibit further infringement? And it was made clear over and over by the higher courts if an act is not infringing on the patent, it can not be prohibited by the injunction, any injunction.

Even Greg had admitted by interpreting the letter of the injunction the way you do, it does appear the injunction is broad, that DISH should have apealed the specific language of the injunction to narrow it down. The only argument was since DISH did not appeal, it was too late, DISH must do excatly what the letter of the injunction says, never mind whether the interpretation of it can take a different path or not.

The MTC case clearly detroyed such "too late" defense, MTC did not follow the letter of the injunction, MTC was not "too late", that fact had nothing to do with what was the ultimate goal spelled out in the case, as the plaintiff argued, same as Tivo is doing now, that MTC had to do exactly what the injunction said, it was too late to change it. But the courts said not true, there was ambiguity as far as how relevant the specific order in the injunction related to the achieving of the ultimate goal. So MTC was not in contempt.



> You STILL don't get it. I (or the Federal Court) never said anything about software OR hardware...it is all about the OPERATIONS performed by the device.


You quoted it not me, your quote of the appeal court said hardware and software must be viewed together in determining whether an infirngement exists or not, do you have a different interpretation of that quote? Then repost it and prove my interpretation is wrong.

Because you believed, as the appeals court said, hardware and software must be considered together when it comes to deciding if the DVRs still infringe or not, I asked you a simple question, how can you then insist, that in determining whether the Infringing Products still currently infringe or not, you need suddenly only consider the name, label, look, all to do with hardwware only, and yet totally disregard the new software in it? How can it be that way when you yourself insisted just earlier that in determining whether the DVR is infringing or not, both the hardware and the software must be considered together?



> And this contempt hearing is about E*'s failure to obey a court order to disable hard-drive writing functionality in devices that were already adjudicated. Not contempt for anything related to what software is in the device, or what hardware, or anything else.


The appeal court, the judge boss, had said many times, an act performed by the*adjudicated devices*, if not an infringing act, can not passibly be prohibited by an injunction on infringement, period, and yes it specifically referred to *adjudicated devices*.


----------



## scooper

To respond to kmill14 - 

And again - you have totally ignored what was in Dish's brief, which stated exactly what they did (and what you insisted they do) - disabled the DVR functionality (not permanently), then downloaded and enabled new DVR functionality.

As has been repeatedly pointed out -
Dish DOES NOT (at this time) require court approval to modify their DVRs
Is ALLOWED to design around Tivo's '389 patent
your concept about "OPERATIONS" is totally off the wall.

You seem to be of the opinion that Tivo is the only company allowed to make a DVR with trickplay functions (or that the '389 patent is the only way to do it and requires licensing). Well - you're wrong on that one too - as long as their devices don't use the '389 patent - other companies can design and implement DVR's as well.


----------



## kmill14

jacmyoung said:


> I have also explain the i.e. issue with an exmaple:
> 
> A group of kids having birth day party during which they are told to finish each share of the cake plus a plate of salad, before going into the pool to play. All kids complied but three boys, who refuse to eat the salad.
> 
> The mother of one boy said to him, you must finish *the* salad in your plate before going into the pool, i.e. all of them, no picking and choose only the tomatos, not the olives but all of them.
> 
> According to you, because of the *all* used in the i.e. clarification, that boy must eat all the salad, not only in his plate, but in the plates of the two other boys'.


Your salad eating analogy is the most bizarre thing I have ever seen. The Judge isn't asking E* to *"disable all storage to and playback from a hard disk drive of television data"* for Comcast DVRs, or even DVRs owned by E* not a part of the original order.

But make no mistake, the Judge DID ask E* to *"disable all storage to and playback from a hard disk drive of television data"* for the adjudicated DVRs (DP-501, etc) already in the hands of customers. 
If you think you can get a DVR working on those adjudicated devices without the ability to store and play TV data from the hard-drive, so be it.



jacmyoung said:


> Why do you keep ignoring the fact the end goal of any injunction on infringement is to prohibit further infringement? And it was made clear over and over by the higher courts if an act is not infringing on the patent, it can not be prohibited by the injunction, any injunction.


Did you forget that the DP-501 etc have already been ruled on (twice) and that those rulings all said they infringe?



jacmyoung said:


> You quoted it not me, your quote of the appeal court said hardware and software must be viewed together in determining whether an infirngement exists or not, do you have a different interpretation of that quote? Then repost it and prove my interpretation is wrong.


It didn't say anything of the kind, and I have posted the quote numerous times...but here you go again:



> For that reason, the hardware/software distinction made by EchoStar is unhelpful. What matters is whether the *operations performed* by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.


There are so many key words in here, and it is quite obvious you either refuse to acknowledge the Appeals Court's own statement on this entire line of thinking, or you just can't comprehend it.


----------



## peak_reception

Hey, I like the salad-eating analogy. It reminded me that I'm hungry and it's almost lunchtime


----------



## kmill14

scooper said:


> To respond to kmill14 -
> 
> And again - you have totally ignored what was in Dish's brief, which stated exactly what they did (and what you insisted they do) - disabled the DVR functionality (not permanently), then downloaded and enabled new DVR functionality.


Downloaded new DVR functionality? Perhaps you also aren't clear on what the Judge meant by "DVR functionality"...here is the Court's definition in this case:

*"all storage to and playback from a hard disk drive of television data"*

and the order was to disable that functionality for devices already adjudged to have infringed and in the hands of customers.

Unless there is a way to use a DVR as a DVR that doesn't require storage to and playback from a hard disk drive, E* is still not in compliance with the order as written.



scooper said:


> As has been repeatedly pointed out -
> Dish DOES NOT (at this time) require court approval to modify their DVRs
> Is ALLOWED to design around Tivo's '389 patent
> your concept about "OPERATIONS" is totally off the wall.


It isn't my concept...its the Federal Appeals Court's concept. And Dish is certainly within their right to market and sell DVRs that have been modified (so long as they are more than colorably different) , that is not what this contempt hearing is about. This contempt hearing has nothing whatsoever to do with Dish marketing and selling new, modified DVRs.

It has everything to do with DVRs already adjudged to infringe and that have been placed with an end user (customer). 
Those adjudged DVRs are within the Court's juristiction, and it is up to the Court to decide if they can perform different than what the Injunction has ordered.


----------



## jacmyoung

kmill14 said:


> ...The Judge isn't asking E* to *"disable all storage to and playback from a hard disk drive of television data"* for Comcast DVRs, or even DVRs owned by E* not a part of the original order.
> 
> But make no mistake, the Judge DID ask E* to *"disable all storage to and playback from a hard disk drive of television data"* for the adjudicated DVRs (DP-501, etc) already in the hands of customers.
> If you think you can get a DVR working on those adjudicated devices without the ability to store and play TV data from the hard-drive, so be it. ...


Again your interpretation of all storage and playback of the &#8230; is different than mine, when I read the i.e. part, I read as to clarify that when the judge said to disable *the* DVR functions, he meant *all* the DVR functions existed in *the* DVR functions that was under the old software, like not just the storage of the data, but also the playback of the data, and everything else all of them under *the* DVR functions operated under the old software, like not just the tomatoes in that salad, but also the olives, and everything else in that salad, all of them.

You cannot destroy the logic of my interpretation, you can only say look I think you are wrong, and I am right. But guess what, the defendant only needs to establish that a reasonable disagreement exists, therefore the ambiguity exists, that is all the defendant needs. The ambiguity can even tilt largely to the plaintiff's favor too, not that much in the defendant's favor, but it does not matter, as long as the ambiguity is there, even if it is not that much, the defendant still gets the benefits of such ambiguity, doubt, confusion, and disagreement in interpretations.

Got that?


----------



## Curtis0620

jacmyoung said:


> Again your interpretation of all storage and playback of the &#8230; is different than mine, when I read the i.e. part, I read as to clarify that when the judge said to disable *the* DVR functions, he meant *all* the DVR functions existed in *the* DVR functions that was under the old software, like not just the storage of the data, but also the playback of the data, and everything else all of them under *the* DVR functions operated under the old software, like not just the tomatoes in that salad, but also the olives, and everything else in that salad, all of them.
> 
> You cannot destroy the logic of my interpretation, you can only say look I think you are wrong, and I am right. But guess what, the defendant only needs to establish that a reasonable disagreement exists, therefore the ambiguity exists, that is all the defendant needs. The ambiguity can even tilt largely to the plaintiff's favor too, not that much in the defendant's favor, but it does not matter, as long as the ambiguity is there, even if it is not that much, the defendant still gets the benefits of such ambiguity, doubt, confusion, and disagreement in interpretations.
> 
> Got that?


No, they must prove it is more than colorably different. That is highly doubtful.


----------



## Curtis52

"However, to the extent that the language of *the Injunction is not crystal-clear regarding whether it covers products that do not infringe - which it cannot as a matter of law *- the language must be construed in EchoStar's favor as the alleged contemnor. See Abbott, 503 F.3d at 1382-83. "[C]ontempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace." Arbek Mfg., 55 F.3d at 1570.


----------



## jacmyoung

kmill14 said:
 

> ...There are so many key words in here, and it is quite obvious you either refuse to acknowledge the Appeals Court's own statement on this entire line of thinking, or you just can't comprehend it.


"For that reason, the hardware/software distinction made by EchoStar is unhelpful. What matters is whether the *operations performed* by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term."

Good, whether the *operations performed* by both the software and hardware in the accused DVRs, taken as a whole, are coverd by the claim term (i.e. still infringe nor not).

The question is whether the *operations performed* by the current DVRs still infringe or not, agreed? Yes DISH could not separate the hardware and software when answering this question, nor can you.

So when you insisted that to answer the question whether the *operations performed* by the current DVRs still infringe on the Tivo patent or not, it is wrong to say yes they are still infringing on the Tivo patent because they still have the same name, label and look, regardless what is the software in them, then yes it is wrong, it was wrong for DISH to suggest to do that then, it is wrong for you to do it now.


----------



## scooper

kmill14 said:


> Downloaded new DVR functionality? Perhaps you also aren't clear on what the Judge meant by "DVR functionality"...here is the Court's definition in this case:
> 
> *"all storage to and playback from a hard disk drive of television data"*
> 
> and the order was to disable that functionality for devices already adjudged to have infringed and in the hands of customers.
> 
> Unless there is a way to use a DVR as a DVR that doesn't require storage to and playback from a hard disk drive, E* is still not in compliance with the order as written.
> 
> It isn't my concept...its the Federal Appeals Court's concept. And Dish is certainly within their right to market and sell DVRs that have been modified (so long as they are more than colorably different) , that is not what this contempt hearing is about. This contempt hearing has nothing whatsoever to do with Dish marketing and selling new, modified DVRs.
> 
> It has everything to do with DVRs already adjudged to infringe and that have been placed with an end user (customer).
> Those adjudged DVRs are within the Court's juristiction, and it is up to the Court to decide if they can perform different than what the Injunction has ordered.


Fine - using YOUR definition of "Operation" - "the interaction of Hardware and software"
Change the way the software interacts with the hardware, and you have changed the "OPERATION" -

IOW - Old software used the "Media Switch" ala the '389 Barton patent. The new Software now ignores that piece of hardware (which is actually harder to do than to interact with it - without causing the "ignore" to blow up the new software).


----------



## Curtis0620

scooper said:


> Fine - using YOUR definition of "Operation" - "the interaction of Hardware and software"
> Change the way the software interacts with the hardware, and you have changed the "OPERATION" -
> 
> IOW - Old software used the "Media Switch" ala the '389 Barton patent. The new Software now ignores that piece of hardware (which is actually harder to do than to interact with it - without causing the "ignore" to blow up the new software).


Sounds like that is only colorably different.


----------



## Curtis52

scooper said:


> IOW - Old software used the "Media Switch" ala the '389 Barton patent. The new Software now ignores that piece of hardware (which is actually harder to do than to interact with it - without causing the "ignore" to blow up the new software).


There is no mention of a media switch or indexing in the patent claim that Dish infringed.


----------



## scooper

Curtis0620 said:


> Sounds like that is only colorably different.


If that's what you're going to say - then there can never be a DVR made without infringing on the '389 patent - and I KNOW you're wrong on that one !


----------



## Curtis0620

scooper said:


> If that's what you're going to say - then there can never be a DVR made without infringing on the '389 patent - and I KNOW you're wrong on that one !


Yes there can. After the patent expires.


----------



## jacmyoung

Curtis0620 said:


> No, they must prove it is more than colorably different. That is highly doubtful.


Regardless, I never said DISH can *certainly* prove more-than-colorable-difference, all I am saying is that it is wrong to concluded the judge need not to look at the colorable issue before rendering a contempt charge. The colorable issue will have to be looked at. Just because Tivo refused to have the judge look at it, does not mean the judge can not look at it, the judge can do whatever he wants, he has wide latitude and power, at the same time he should also conform to the standards, one of the standards is:

During a contempt proceeding, the judge must *first* look at the differences between the accused devices (the current DVRs with the new software) and the adjudicated devices (the DVRs with the same names and models and with the old software), and determine based on the differences (the differences between the old software and the new software), whether the differences are more than colorable or not.

Yes the above should be the *first* thing a judge to do in a contempt proceeding. Tivo has tried to avoid to have the judge look at it, but according to the standard, the judge should look at it. We don't know whether the judge will look at it or not yet, we don't have that fact yet, it has yet to happen.

As far as how easy it is to rule the difference is more than colorable, according to DISH's most recent case law, if two things are not essentially the same, they are more than colorably different. If you simply read what DISH described of their new software, and compared it to the old software, it is reasonable to say the two are quite different, as far as how they go about performing the DVR functions.

If the assertion is since they are all *DVR functions* therefore they are essentially the same, then the entire DVR community is in serious trouble, in fact the entire computer industry as well, as long as a computer can to storage and playback of TV signals from its hardrive. If this is what you like to think, I guess you can do that. I am not going to give it much credibility though.


----------



## jacmyoung

Curtis52 said:


> There is no mention of a media switch or indexing in the patent claim that Dish infringed.


They were certainly repeatedly used in Tivo's depositions and testimonies to prove infringement, those key elements, while not explicitly mentioned in the claims, were fundamental instruments in finding infringement, so if those instruments are removed, the finding of infringement naturally goes away too.

Remember all DISH needs now is to establish the *doubt* whether the new software still infringe or not, they don't have to prove it is not infringing.


----------



## Curtis0620

jacmyoung said:


> Regardless, I never said DISH can *certainly* prove more-than-colorable-difference, all I am saying is that it is wrong to concluded the judge need not to look at the colorable issue before rendering a contempt charge. The colorable issue will have to be looked at. Just because Tivo refused to have the judge look at it, does not mean the judge can not look at it, the judge can do whatever he wants, he has wide latitude and power, at the same time he should also conform to the standards, one of the standards is:
> 
> During a contempt proceeding, the judge must *first* look at the differences between the accused devices (the current DVRs with the new software) and the adjudicated devices (the DVRs with the same names and models and with the old software), and determine based on the differences (the differences between the old software and the new software), whether the differences are more than colorable or not.
> 
> Yes the above should be the *first* thing a judge to do in a contempt proceeding. Tivo has tried to avoid to have the judge look at it, but according to the standard, the judge should look at it. We don't know whether the judge will look at it or not yet, we don't have that fact yet, it has yet to happen.
> 
> As far as how easy it is to rule the difference is more than colorable, according to DISH's most recent case law, if two things are not essentially the same, they are more than colorably different. If you simply read what DISH described of their new software, and compared it to the old software, it is reasonable to say the two are quite different, as far as how they go about performing the DVR functions.
> 
> If the assertion is since they are all *DVR functions* therefore they are essentially the same, then the entire DVR community is in serious trouble, in fact the entire computer industry as well, as long as a computer can to storage and playback of TV signals from its hardrive. If this is what you like to think, I guess you can do that. I am not going to give it much credibility though.


You can ignore it if you wish, but this is the most frightening thing for DISH. TiVo did not bring this up because if the named DVR's are turned off, that alone will force DISH to settle. The don't need to go after the newer models, yet.


----------



## Curtis0620

jacmyoung said:


> They were certainly repeatedly used in Tivo's depositions and testimonies to prove infringement, those key elements, while not explicitly mentioned in the claims, were fundamental instruments in finding infringement, so if those instruments are removed, the finding of infringement naturally goes away too.
> 
> Remember all DISH needs now is to establish the *doubt* whether the new software still infringe or not, they don't have to prove it is not infringing.


Any if they can't, this will implicate all their newer DVR's also.


----------



## nobody99

jacmyoung said:


> Why do you keep ignoring the fact the end goal of any injunction on infringement is to prohibit further infringement?


This is the whole reason all of us disagree. As much as you'd like it to be, as much as you think it is, your opinion is *not* fact.

There were three orders in the injuction:

1) Monetary damanges
2) Prevent future infringement on new sales (P.65(d)) of Infringing Products (the eight named models) and all other products that are only colorably different
3) Disable DVR functionality of 3 or so million DVRs.

The hearing on September 4 only deals with #3.

I am frankly surprised that more people haven't picked on the fact that #3 says nothing about infringement. It says nothing about P. 65(d). It says nothing about "colorably different." There are three million DVRs that were adjudicated, and it doesn't matter _what_ DISH puts on them, they are to be disabled. This isn't about preventing infringement, it's about taking away ill-gotten gains. The second order (the one reference P. 65(d) and "colorably different") already includes those models. But it lets DISH turn them back on with new software. Order #3 does not.

Regardless of whatever side you're on, one simple fact remains: there has never been a case, ever, that reached the point that this one has where products that are aleady in consumers' hands have been ordered to be changed.. It boils down to a simple question:

Did the judge intend to permanently shut down DVR functionality on the eight named DVRS: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 as something _other than_ a means to prevent inringement or not?

jacmyoung and others have presented case after case after case where the courts (and appeals courts) have allowed people to design around a patent. I don't believe anyone here has a problem with that for new products. *All* examples (and I mean every single case presented) have dealt with the release of new product for sale. It did not deal with an existing, installed base of product.

The fact that the judge seperated the two orders - and order #3 to disable DVR functions on the eight named models is completely seperate - leads me to the conclusion that this was a seperate punishment and has nothing to do with ongoing infrigment.


----------



## nobody99

jacmyoung said:


> all I am saying is that it is wrong to concluded the judge need not to look at the colorable issue before rendering a contempt charge.


You're wrong (in my opinion). Colorable differences have nothing to do with the third order of the injunction.



jacmyoung said:


> During a contempt proceeding, the judge must first look at the differences between the accused devices (the current DVRs with the new software) and the adjudicated devices (the DVRs with the same names and models and with the old software), and determine based on the differences (the differences between the old software and the new software), whether the differences are more than colorable or not.


You're wrong again (in my opinion). The contempt hearing on Sep 4 does not deal with new product. It deals with the third order of the injunction, which is to disable the DVR functionality of eight named models. It makes no mention of infringement, no mention of Rule 65(d) and no mention of colorable difference. September 4 is a simple hearing: have the DVR functions been turned off on the eight named models?



jacmyoung said:


> As far as how easy it is to rule the difference is more than colorable


Irrelevent. Doesn't matter for September 4. If Dish releases a new receiver that's not already with a customer, then it would matter.



jacmyoung said:


> the entire DVR community is in serious trouble, in fact the entire computer industry as well, as long as a computer can to storage and playback of TV signals from its hardrive.


I must have misread the injunction. I thought it was only against DISH. I dind't realize it was against the "entire computer industry"


----------



## Curtis52

nobody99 said:


> \The fact that the judge seperated the two orders - and order #3 to disable DVR functions on the eight named models is completely seperate - leads me to the conclusion that this was a seperate punishment and has nothing to do with ongoing infrigment.


Injunctions are not punishment (when they are read correctly).


----------



## jacmyoung

Curtis52 said:


> Injunctions are not punishment (when they are read correctly).


This is the root of the disagreement with some people, both Curtis and I had used many prior cases and opinions from the courts to demonstrate that an injunction on infringement serves one purpose, to stop further infringement.

On the other side there is this belief there can be other purpose such as a punishment, but no one has yet to be able to find a single prior case or opinion that proved such thing at all, so the only thing they have is their own belief.

But guess what, even if such belief might be true, I think DISH has forcefully destroyed it in its 6/30 reponse. Becasue according to the court a contempt is a severe charge that must not be used lightly, it should be used to punish flagrant violation of the court and the law.

I think, and others do not have to agree, that DISH's effort described in the 6/30 response was reasonably in good faith to correct its past wrong, and to comply with the order, it may not be what you like to see, but you can certainly not declare that it was a *flagrant* disregard of the order and the law. And therefore the severe contempt punishment does not fit the crime.


----------



## jacmyoung

nobody99 said:


> ...I must have misread the injunction. I thought it was only against DISH. I dind't realize it was against the "entire computer industry"


If you did not understand what I was trying to say of course.


----------



## Curtis52

United States Code

"35 U.S.C. 283 Injunction. - Patent Laws

35 U.S.C. 283 Injunction.

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent* the violation of any right secured by patent, on such terms as the court deems reasonable."


----------



## scooper

Curtis0620 said:


> Yes there can. After the patent expires.


Name the other company that also holds a DVR-applicable patent whom Tivo cross-licensed.

Right THERE is your proof that other methods can be used to accomplish a DVR.


----------



## Curtis52

"TiVo never asserted that it invented the DVR - it actually rejected that notion - nor did TiVo dispute the existence of many known, non-infringing DVR systems.

in response to the question whether "Jim Barton and TiVo invented the digital recording of TV," TiVo's expert, Dr. James Storer, testified: "No, of course not. . . . [T]here was lots of technology out there."


----------



## scooper

Curtis52 said:


> "TiVo never asserted that it invented the DVR - it actually rejected that notion - nor did TiVo dispute the existence of many known, non-infringing DVR systems.
> 
> in response to the question whether "Jim Barton and TiVo invented the digital recording of TV," TiVo's expert, Dr. James Storer, testified: "No, of course not. . . . [T]here was lots of technology out there."


Then that means the '389 patent is NOT the only way to accomplish a DVR, then , RIGHT ?


----------



## kmill14

jacmyoung said:


> This is the root of the disagreement with some people, both Curtis and I had used many prior cases and opinions from the courts to demonstrate that an injunction on infringement serves one purpose, to stop further infringement.


Thats not true. You only want it to be true, and you found a piece of one case that you feel supports your cause, but that still does not make it true.

You may choose to ignore it, but there are both prohibitive and mandatory injunctive orders, even with regards to patent infringement.



> Plaintiffs acknowledge that the injunction they seek has both mandatory and prohibitory aspects, in that they ask this Court both to order a recall of copies of the movie that have already been distributed (mandatory) and to prohibit further distribution of "Expelled" (prohibitory). [/quote/
> 
> http://www.groklaw.net/articlebasic.php?story=20080625231410224
> 
> 
> 
> jacmyoung said:
> 
> 
> 
> I think, and others do not have to agree, that DISH's effort described in the 6/30 response was reasonably in *good faith* to correct its past wrong, and to comply with the order, it may not be what you like to see, but you can certainly not declare that it was a *flagrant* disregard of the order and the law. And therefore the severe contempt punishment does not fit the crime.
> 
> 
> 
> Good faith is not an argument for avoiding contempt.
> 
> 
> 
> 
> The general rule in civil contempt is that a party need not intend to violate an injunction to be found in contempt. See McComb v. Jacksonville Paper Co., 336 U.S. 187, 191-93 (1949).
> 
> Click to expand...
> 
> 
> 
> 
> 
> good faith is irrelevant as a defense to a civil contempt order
> 
> Click to expand...
> 
> http://www.ll.georgetown.edu/federal/judicial/fed/opinions/98opinions/98-1035.html
Click to expand...


----------



## jwhayn

please raise your hands. Never mind, it is becoming increasingly obvious.


----------



## dgordo

I doubt if anyone here is a lawyer for dish or tivo. Why risk getting disbarred to argue with a bunch of people on a website. No one here can change the judges opinion.


----------



## Curtis52

kmill14 said:


> Thats not true. You only want it to be true, and you found a piece of one case that you feel supports your cause, but that still does not make it true.
> 
> You may choose to ignore it, but there are both prohibitive and mandatory injunctive orders, even with regards to patent infringement.
> 
> 
> 
> 
> Plaintiffs acknowledge that the injunction they seek has both mandatory and prohibitory aspects, in that they ask this Court both to order a recall of copies of the movie that have already been distributed (mandatory) and to prohibit further distribution of "Expelled" (prohibitory).
Click to expand...

1. A preliminary injunction was requested, not a permanent injunction.
2. The request for an injunction was denied.
3. No one has patented a movie.


----------



## nobody99

jacmyoung said:


> This is the root of the disagreement with some people, both Curtis and I had used many prior cases and opinions from the courts to demonstrate that an injunction on infringement serves one purpose, to stop further infringement.
> 
> On the other side there is this belief there can be other purpose such as a punishment, but no one has yet to be able to find a single prior case or opinion that proved such thing at all, so the only thing they have is their own belief.


"An injunction on infringement serves one purpose: to stop further infringement. " This is the application of Rule 65(d).

There are three orders in the "Amended Final Judgement and Permanent Injunction."

The first order is to pay penalties. That's not rule 65(d).

The second order actual says "pursuant to P.65(d)" - so yep, you are right. That particular order, the second order in the "Amended Final Judgement and Permanent Injunction" must follow Rule 65(d). I completely agree with you.

The third order says, disable DVR functionality. It doesn't say "stop infringing." It doesn't say "this order is to prevent further infringement." In effect, it is saying, sorry, you don't get to keep your ill-gotten gains."

jacmyoung, I just don't understand why you are so stuck on the idea that Rule 65(d) applies to the third order. It doesn't. So none of your examples are even relevant.


----------



## Curtis52

Rule 65(d) applies to all injunctions. It's just a format requirement.


----------



## kmill14

It doesn't matter if it was a preliminary injunction or permanent injunction. The point is there is not JUST one type of injunctive order for patent infringement cases (prohibitive orders). nobody99 has said it much more clearly. There was the damages award, and then the injunction itself had 2 orders: one prohibitive (prohibiting an action) in nature and one mandatory (requiring an action) in nature.


----------



## jacmyoung

kmill14 said:


> It doesn't matter if it was a preliminary injunction or permanent injunction. The point is there is not JUST one type of injunctive order for patent infringement cases (prohibitive orders). nobody99 has said it much more clearly. There was the damages award, and then the injunction itself had 2 orders: one prohibitive (prohibiting an action) in nature and one mandatory (requiring an action) in nature.


No there is no such thing as a "mandatory injunction" in a permanent injunction on infringement, do not creat the law, find it.

The code Curtis quoted clearly said "prevent", which means to prohibit, and that is the only thing in it.

In a termporary injunction or relief, or preliminary injunction, there is such thing called "mandatory action", and the court clearly has said it is to be used in very exceptional circumstances to maintain status quo. Get that? To *maintain status quo*, while the trial is on-going, not at the end of the trial but while the trial is on-going.

What status quo are you trying to maintain when you order the disabling of an act? It is the opposite of maintaining a status quo, it is in fact to change the status quo. I sorry, a totally wrong idea.

One of the cases you cited where during the trial, the temporary injunction included a madatory action section, and it was overturned because that mandatory action was to change a status quo. The purpose of a mandatory order is one and one only, to maintain status quo.

To disable the DVR functions cannot be a mandatory order, because it in effect changes the status quo. Therefore it is a prohibitive injunction, by disabling *the* DVR functions that infringed, it in effect prohibited the infringement of the patent.


----------



## dsilinski

This is for Curtis52. When I first started following this thread you appeared to be saying that dish was in a lot of trouble. I seem to recall you state that at the very least they were going to be paying quite a bit of money to Tivo. I am inferring from your recent posts that Dish is going to come out of this okay because the law allows for a workaround as TexasAg argued. Am I correct and if so what caused you to change you point of view.


----------



## kmill14

jacmyoung said:


> No there is no such thing as a "mandatory injunction" in a permanent injunction on infringement, do not creat the law, find it.
> 
> The code Curtis quoted clearly said "prevent", which means to prohibit, and that is the only thing in it.
> 
> In a termporary injunction or relief, or preliminary injunction, there is such thing called "mandatory action", and the court clearly has said it is to be used in very exceptional circumstances to maintain status quo. Get that? To *maintain status quo*, while the trial is on-going, not at the end of the trial but while the trial is on-going.
> 
> What status quo are you trying to maintain when you order the disabling of an act? It is the opposite of maintaining a status quo, it is in fact to change the status quo. I sorry, a totally wrong idea.
> 
> One of the cases you cited where during the trial, the temporary injunction included a madatory action section, and it was overturned because that mandatory action was to change a status quo. The purpose of a mandatory order is one and one only, to maintain status quo.
> 
> To disable the DVR functions cannot be a mandatory order, because it in effect changes the status quo. Therefore it is a prohibitive injunction, by disabling *the* DVR functions that infringed, it in effect prohibited the infringement of the patent.


There is no such law written that says a mandatory action (ordering somebody to do something, verses prohibit them from doing something) is only allowable in a preliminary injunction. As a matter of fact, I have already posted a case on the old thread that had an injunction which required the defendant to retrieve infringing products already in retail stores. That order (requiring the defendant to do something) was on top of another order that specifically prohibited certain actions.

If as you say the goal is the maintain status quo, define status quo for me. Is status quo the state of the DVR market BEFORE or AFTER E* gained 4 million subscribers with infringing technology? One could easily argue that the status quo for Tivo (the hurt company) would be the DVR market BEFORE E* gained those 4 million subscribers with infringing technology.


----------



## kmill14

jacmyoung,

to follow on your line, why would the Judge need two orders, when the first one clearly prohibits actions already. Why the two orders?


----------



## Curtis52

kmill14 said:


> The point is there is not JUST one type of injunctive order for patent infringement cases (prohibitive orders).


Nobody said there was. All patent injunctions seek to prevent infringement.


----------



## Curtis52

kmill14 said:


> jacmyoung,
> 
> to follow on your line, why would the Judge need two orders, when the first one clearly prohibits actions already. Why the two orders?


Because it's a new paragraph.


----------



## jacmyoung

kmill14 said:


> ...If as you say the goal is the maintain status quo, define status quo for me. Is status quo the state of the DVR market BEFORE or AFTER E* gained 4 million subscribers with infringing technology? One could easily argue that the status quo for Tivo (the hurt company) would be the DVR market BEFORE E* gained those 4 million subscribers with infringing technology.


Since when do people need to explain the term "status quo"? Our politicians say it so often I thought we should all know it by heart

Anyway to keep status quo means to maintain the same condition as asked by the plaintiff. So if there is such thing that the second order is a mandatory injunction it would have ordered to keep the DVR functions going, not to disable them.

You may ask then how can one think of a situation when such order is needed? I don't know if you heard of the VOOM v. DISH case? Oddly it has DISH involved too

Say DISH begins to remove some VOOM channels on its own due to contract dispute, VOOM disagrees and goes to court, if VOOM can convince the court there is a very good chance that VOOM can prevail in the lawsuit, the court can in theory issue a mandatory injunction that DISH does not remove any VOOM channels, while the trial is on-going. The order is to keep the status quo, which is to continue to let people watch the VOOM channels on DISH, until the dispute is resolved by the court.

Of course in reality, the court did not offer VOOM any relief, because if my guess is correct VOOM did not convince the court that such an exceptional order was necessary.

Of course I am no lawyer so my above may not be accurate, just to give you an idea.


----------



## jacmyoung

kmill14 said:


> jacmyoung,
> 
> to follow on your line, why would the Judge need two orders, when the first one clearly prohibits actions already. Why the two orders?


An injunction often contains multiple orders, one usually enjoins the infringer from infringing the patent in general terms. Then other sections may be added to prohibit some specific acts, almost always the specific acts discussed during the trial, just to cover all bases. Remember an injunction must be specific and can even be broad, so there is little room for the infringer to continue to infringe yet escape the contempt of the injunction.

Had the injunction not added the "disabling the DVR functions&#8230;" order, then it is possible for DISH to download a new software and claim the new software does not infringe, Tivo will have no means other than to file a new lawsuit, Tivo will not be able to use the summary contempt proceeding to seek relief at all, because the injunction never asked to disable the DVR functions.

Now since the second order is in place, Tivo does not have to file a new suit, it can motion for a contempt based on the second order in order to find DISH in contempt, but in doing so Tivo must convince the judge that the current DVR functions under the new software still infringe, how so, well if they can convince the judge the new software which runs the current DVR functions is essentially the same as the old software, Tivo does not need to go through another trial, this summary contempt proceeding will do.

But if DISH can convince the judge their new software is not essentially the same as the old software, in fact quite different, therefore establishes a doubt whether the current DVR functions still infringe or not, then Tivo will be relegated to a new trial to seek new software infringement.

That is why an injunction almost always contains more than one order, and no one ever misconstrues the second or third order as "mandatory order". They are all prohibitive orders.


----------



## jacmyoung

When I said above the specific acts that may be proscribed in the injunction, are *almost always* referring to the specific acts that has been tried by the court, that is to first say because the court had made it very clear, an injunction can not adjudicate any acts that have not been tried by the court in the said case, only those that have been tried and found to infringe. So when "the DVR functions" are adjudicated in this injunction, they must be referring to *the* DVR functions discussed during the trial and found to infringing, not something never tried in the case, such as the DVR functions operated by the new software.

There is however one other thing used to include all acts that have not been already tried in the case, by the use of the "only colorably different" clause, with such clause the injunction can include many other acts that may occur in the future, such as the 622 and 722 DVR functions, and the DVR functions under the new software, everything possible under the sky is covered by this clause.

That is why I have always said the DVR functions under the new software must be judged by the "colorable difference" procedure.


----------



## jacmyoung

BTW, I know this is too much talking but while answering kmill14's question, I actually also believe I had solved another issue that I think I can reasonably put the whole thing to rest.

"'contempt proceedings . . . are available only with respect to devices *previously admitted or adjudged to infringe*, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent.' KSM, 776 F.2d at 1526. Therefore, the only acts the injunction may prohibit are infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should explicitly proscribe only those specific acts."

Meaning in an injunction on infringement, you usually always see two types of devices/acts/functions that are enjoined:

Part 1 is for the adjudicated devices/acts/functions, which automatically refer to the things being tried in the lawsuit already and found to infringe.
Part 2 is for any other devices/acts/functions that are only colorably different than those in Part 1.

This injunction not surprisingly also contains the above two items. Specifically there are two things proscribed in Part 1, first are the DP501s...defined as Infringing Products, to be enjoined from being sold, so those are adjudicated devices, secondly the DVR functions in those adjudicated DVRs, as adjudicated functions, which are to be disabled. Part 2 is for the usual devices/acts that are only colorably different than those in Part 1.

Notice "the DVR functions" described in Part 1 are adjudicated functions, therefore they must refer to the DVR functions already being tried during the trial and found to infringe. In another word, "The DVR functions" described in the injunction can not be the DVR functions not tried during the trial. Anything not already tried during the trial, such as the DVR functions under the new software, they had to be part of the devices/acts/functions covered under the "colorably different" part, that is Part 2.

That leads to that Footprint 2.0 case, if any of you remembers that one, in that case the infringer was ordered to cease the Footprint 2.0 service entirely, but the injunction also specifically referred the Footprint 2.0 to be ceased as the one discussed during the trial.

That was when some of you argued that the Footprint 2.0 case was "irrelevant" to this one, because in this case the injunction does not specifically say "the DVR functions" as described during the trial.

But based on the above analysis, "the DVR functions" here have to be the ones tried during the trial and found to infringe, because they are part of the Part 1 *adjudicated functions*, not in Part 2. And devices/acts/functions that are not discussed during the trial must be included in Part 2, not Part 1.

Now the two cases are suddenly relevant, in Footprint 2.0, the injunction prohibited the entire Footprint 2.0 serivce as discussed during the trial, in this case, the injunction prohibits the DVR functions also discussed during the trial, not anything not tried yet, such as the DVR functions operated under the new software.

Remember what the infringer did to avoid a contempt in the Footprint 2.0 case? They sent a new software patch to the footprint 2.0 serivce in the field, replaced the infringing software, with a non infringing new software, while the whole service never stopped working for the end users.

That was it, the infringer was cleared, no longer in contempt, no longer infringed. And now since the two cases are in fact *"relevant"*, that case should be a good prior case to make a case for this one.


----------



## nobody99

jacmyoung, I am confused. You've suggested in the past that the language of the injunction doesn't matter, then you said it depends on the word "the" and then it was Infringing Products, then Coloraby Different.

Can you just clear it up - what is your _current_ position on why DISH won't be held in contempt?


----------



## scooper

I think he is saying that Dish will NOT be found in contempt and all of the customer DVRs (with the new software) are safe. 

The Footprint 2 service (this is SOFTWARE) had a piece of infringing code. The company replaced the offending code with non-infringing code that was sent out as a patch to customers (how familar that sounds ?). If Tivo has a problem with the new software - new trial time.

Drilling deeper - the injunction was written using "boilerplate" for format, and where things were said (part 1 or part 2) depends on whether the item was adjuciated in the trial (for part 1) or not (part 2).


----------



## jacmyoung

nobody99 said:


> jacmyoung, I am confused. You've suggested in the past that the language of the injunction doesn't matter, then you said it depends on the word "the" and then it was Infringing Products, then Coloraby Different.
> 
> Can you just clear it up - what is your _current_ position on why DISH won't be held in contempt?


It is called "Arguing in the Alternative", a stretagy often used in court, usually starts with the phrase "even if..." That is when I made my argument based on my own premise, I then go further to accept your premise which I do not agree, but still am able to prove you wrong.

Such strategy is not often used in front of a jury, because as you said yourself, it can be confusing, the jury might think I changed my position when in fact I did not.

But the strategy is widely used in motions and responses to the judges, and used in making a ruling by a judge, because the judges are not your average jury, nor are the lawyers arguing in front of the judges, they know exactly each party's positions.

If you have read carefully all the cases being cited here, and the motions and responses by Tivo and DISH, you will notice many times the parties and the judges themselves, use this stretagy to prove their arguments are correct, all you need to do is look for that "even if...".


----------



## kmill14

scooper said:


> I think he is saying that Dish will NOT be found in contempt and all of the customer DVRs (with the new software) are safe.
> 
> The Footprint 2 service (this is SOFTWARE) had a piece of infringing code. The company replaced the offending code with non-infringing code that was sent out as a patch to customers (how familar that sounds ?). If Tivo has a problem with the new software - new trial time.
> 
> Drilling deeper - the injunction was written using "boilerplate" for format, and where things were said (part 1 or part 2) depends on whether the item was adjuciated in the trial (for part 1) or not (part 2).


The Footprint injunction, if I remember correctly, spelled out in the injunction that the service as written at the time of the trial had to be disabled. There is no such spelling in the E* injunction. Also, the infringing Footprint service was replaced with an entirely new version of the service without the infringing code. That was all possible to do in that scenario.

However, in this case, there is no such thing as infringing software. There are infringing devices. If E* wants to replace the infringing device with a new device, that is acceptable. But that is not what they have done.


----------



## kmill14

jacmyoung, there is no such thing as "adjudicated functions". There are adjudicated devices that performed functions that infringed on TiVo's patent.


----------



## jacmyoung

kmill14 said:


> The Footprint injunction, if I remember correctly, spelled out in the injunction that the service as written at the time of the trial had to be disabled. There is no such spelling in the E* injunction. Also, the infringing Footprint service was replaced with an entirely new version of the service without the infringing code. That was all possible to do in that scenario.
> 
> However, in this case, there is no such thing as infringing software. There are infringing devices. If E* wants to replace the infringing device with a new device, that is acceptable. But that is not what they have done.


Did you read my posts above? "The DVR functions" proscribed in this injunction are *adjudicated functions*, threfore *by definition* refer to the things tried during the trial and ruled to infringe. Not different at all from that Footprint 2.0 service that was enjoined in that injunction as the adjudicated service, because that entire service infringed, that was the only way that serivce could be enjoined in its entirety by that injunction.

Secondly, did you read that case to find out what the Foorprint 2.0 service was? It was a type of service provided to website hosts like DBStalk, to regulate online traffic among different servers to ensure the information exchanged by the many many Internet users, such as you and me with endless posts back and forth, do not slow down the Internet or cause traffic jam. The serivce was a very comlex one, involved complex software and hardware to do the work for the end users like DBStalk, who paid handsome fees to receive such Footprint 2.0 service.

The only thing the infringer did in that case was to send out a small software patch to replace just that small piece of software used in the servers, that was it, the entire service never stopped, because a "software patch" usually does not stop the servers, maybe a few functions, but servers can multitask like a computer. Unlike in this case DISH's DVRs actually had to be stopped ("disabled") during the new software download.

That infringer was not in contempt when the patentee brought them to the judge for a contempt hearing. That infringer was free and clear after the judge said no, the Footprint 2.0, the exact same serivce as before, with even the same name, no longer infringed. End of the story.

Are you kidding me when you said in this case there was no infringing software?

The only two jury verdicts standing now are the two software infringement claims. Everything else is based on that verdict and that verdict alone.


----------



## jacmyoung

kmill14 said:


> jacmyoung, there is no such thing as "adjudicated functions". There are adjudicated devices that performed functions that infringed on TiVo's patent.


Yes, anything that is particularly specified in the injunction is an adjudicated item, all others must be covered under the "colorable different" clause.

An adjudicated item, regardless if you call it a device, a product, a service or a function..., by definition of being adjudicated, means it refers to the exact same item tried during the trial, and found to infringe.


----------



## nobody99

jacmyoung said:


> It is called "Arguing in the Alternative", a stretagy often used in court, usually starts with the phrase "even if..." That is when I made my argument based on my own premise, I then go further to accept your premise which I do not agree, but still am able to prove you wrong.
> 
> Such strategy is not often used in front of a jury, because as you said yourself, it can be confusing, the jury might think I changed my position when in fact I did not.
> 
> But the strategy is widely used in motions and responses to the judges, and used in making a ruling by a judge, because the judges are not your average jury, nor are the lawyers arguing in front of the judges, they know exactly each party's positions.
> 
> If you have read carefully all the cases being cited here, and the motions and responses by Tivo and DISH, you will notice many times the parties and the judges themselves, use this stretagy to prove their arguments are correct, all you need to do is look for that "even if...".


Thanks, that clears it up. Now I know exactly wher eyou stand


----------



## kmill14

jacmyoung, you continue to add meaning to parts of cases that make absolutely no sense. There is no such thing as an adjudicated act or function, and it does not say it anywhere in your little quote. It only says adjudicated devices...not adjudicated devices/acts/functions. Stop making stuff up.


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## Curtis0620

"even if..." I did steal their software, it's not fair to make me pay.


----------



## scooper

Not exactly -


----------



## jacmyoung

scooper said:


> Not exactly -


Not just not exactly, either he was sarcastic, or trying to be ridiculous, even nobody99 would not be confused when I say that


----------



## jacmyoung

kmill14 said:


> jacmyoung, you continue to add meaning to parts of cases that make absolutely no sense. There is no such thing as an adjudicated act or function, and it does not say it anywhere in your little quote. It only says adjudicated devices...not adjudicated devices/acts/functions. Stop making stuff up.


The word "adjudicated" means being already tried and settled by the court. Anything, be it a service, a device, a product, a function, a behavior, an act...can be adjudged, and once done that item is an adjudicated item.

An injunction on infringement can enjoin only two groups of items, one of the groups contains the adjudicated items, or at least admitted items during the trial, the other group contains any other items that are not yet adjudicated or admitted, but nevertheless only colorably different than the items in the first group.

When an injunction specifically proscribe an item, that item must be one of the adjudicated or at least admitted items. Therefore when the injunction specifically proscribed "the DVR functions in the Infirnging Products" to be enjoined, the DVR functions must be referring to the DVR functions that were adjudged, admitted or discussed in the trial. Otherwise it automatically falls into the second group which is governed by the "colorable difference" rule. It is either this group or the other, no third choice.

What you are advocating is "the DVR functions" proscribed in the injunction do not fall into either one of the above groups, it is not in the adjudicated or admitted group, nor the "colorable different" group. Unfortunately it is impossible, because the higher courts said so.

Or to put it this way, if you refuse to agree "the DVR functions" are adjudicated or at least admitted items, which means they are those already discussed in the trial, then "the DVR functions" must be in the "colorable different" group, judged by the colorable difference rule, and of course that is not what you want.


----------



## kmill14

jacmyoung said:


> Therefore when the injunction specifically proscribed "the DVR functions in the Infirnging Products" to be enjoined, the DVR functions must be referring to the DVR functions that were adjudged, admitted or discussed in the trial.




The injunction did not specifically proscribe "the DVR functions in the Infringing Products" to be enjoined. It did not say that at all. This is your problem. You make things up. Kindly point to the exact wording in the injunction that states "the DVR functions in the Infringing Products", and then point to the part where the injunction enjoined those functions.


----------



## jacmyoung

kmill14 said:


> The injunction did not specifically proscribe "the DVR functions in the Infringing Products" to be enjoined. It did not say that at all. This is your problem. You make things up. Kindly point to the exact wording in the injunction that states "the DVR functions in the Infringing Products", and then point to the part where the injunction enjoined those functions.


"Defendant are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, *disable* (enjoin, prohibit the use of) *the DVR functionality*&#8230;of the *Infringing Products* that have been placed with an end user or subscriber&#8230;"

Why didn't you read it first before posting this question?


----------



## nobody99

jacmyoung said:


> "Defendant are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, *disable* (enjoin, prohibit the use of) *the DVR functionality*&#8230;of the *Infringing Products* that have been placed with an end user or subscriber&#8230;"
> 
> Why didn't you read it first before posting this question?


jacmyoung, I realize that English may not be your first language, so you can be excused for this. But when you quote something, you don't just add new words to fit your purpose. The actual language of the injunction is

"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) ... of the Infringing Products that have been placed with an end user or subscriber. "

See, you can't just add "(enjoin, prohibit the use of)" inside the quote to fit some bizzaro world conclusion that you've reached through mental gymnastics. It doesn't work that way.


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## scooper

Ever hear of providing additional information to illustrate what the term means ? Oh excuse me - that "additional information to illustrate what the term means" should have been placed outside of the quotes to suit YOUR little world.


----------



## kmill14

disable does *not* = "enjoin or prohibit the use of"

disable does = "To deprive of capability or effectiveness, especially to impair the physical abilities of."

Just to be clear, nowhere does the injunction state (as jacmyoung said it did)

"the DVR functions in the Infringing Products" to be enjoined"

Also, the Judge specifically defined "DVR Functionality" to mean "all storage to and playback from a hard disk drive of television data".

And even though he told E* to disable that defined functionality in the injunction, that functionality itself is not enjoined or adjudicated. The only use of the word "enjoined" in the injunction is in reference to the DEFENDANT.



> *Each Defendant*, its officers, agents, servants, employees and attorneys, *and those persons in active concert or participation with them *who receive actual notice hereof, *are hereby restrained and enjoined*


And the only things specifically identified to have infringed were the 8 listed products...not software, not hardware, and not functions. PRODUCTS.


----------



## Curtis52

scooper said:


> Ever hear of providing additional information to illustrate what the term means ? Oh excuse me - that "additional information to illustrate what the term means" should have been placed outside of the quotes to suit YOUR little world.


TiVo uses brackets:



> "EchoStar ha[d] disregarded the limitations of its statutory
> license and sought to avoid its obligations under the Act at every turn."





> After reaching "the unavoidable conclusion that EchoStar engaged in a 'pattern or practice' of [statutory] violations," and that EchoStar had violated the Act "in every way imaginable," the Eleventh Circuit remanded to the district court for entry of "a nationwide permanent injunction."





> "In dealing with a civil contempt proceeding the district court was not bound by the provisions of [the Patent Act]. Rather it was free to exercise the inherent discretion possessed by a court to correct willful violations of solemnly passed orders."


It's a niggling criticism.


----------



## nobody99

scooper said:


> Ever hear of providing additional information to illustrate what the term means ? Oh excuse me - that "additional information to illustrate what the term means" should have been placed outside of the quotes to suit YOUR little world.


Geeze, scooper, relax. But seriously, when jacmyoung is asked to provide a quote where it specifically says they are enjoined, you have to admit it's a little ridiculous to just add the word "enjoined."


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## Curtis52

"enjoin |enˈjoin|
verb [ trans. ]
instruct or urge (someone) to do something"


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## peak_reception

Curtis52 said:


> "enjoin |enˈjoin|
> verb [ trans. ]
> instruct or urge (someone) to do something"


 It also means to prohibit or forbid. In the injunction it means to prohibit or forbid.


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## Curtis52

peak_reception said:


> It also means to prohibit or forbid. In the injunction it means to prohibit or forbid.


Yes but Dish was enjoined to disable all storage to and playback from a hard disk drive of television data.


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## jacmyoung

I thought the word "enjoin" was often used in the patent cases to mean prohibit, so fine I used a word that might not fit your world of English language, I am still not sure why you asked that question to begin with Kmill14, were you trying to dispute something I said about "the DVR functions" referring to what were tried during the trial?


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## jacmyoung

Curtis52 said:


> TiVo uses brackets:...


Your right, will use brackets next time


----------



## Greg Bimson

Curtis52 said:


> Yes but Dish was enjoined to disable all storage to and playback from a hard disk drive of television data.


No, DISH/SATS was not enjoined on the "disable" order:


> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby *restrained and enjoined*, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.
> 
> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, 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.


Gotta love simply arguing English.


----------



## Curtis52

Greg Bimson said:


> No, DISH/SATS was not enjoined on the "disable" order:Gotta love simply arguing English.


Dish was instructed or urged to do something. That is the definition of "enjoined".


----------



## James Long

jacmyoung said:


> it of course was DISH's job to prove the networks were wrong by filing the lawsuit, and of course since DISH could not dispute the charges, because they could not prove they did not violate the law,


Exactly ... the law in that situation is that the burden of proof is on the satellite carrier (the defendant). They must prove they did not break the law. DISH couldn't (primarily because DISH had been breaking the law and continued to do so even after an injunction was issued that basically said "follow the law").


jacmyoung said:


> The mother of one boy said to him, you must finish *the* salad in your plate before going into the pool, i.e. all of them, no picking and choose only the tomatos, not the olives but all of them.
> 
> According to you, because of the *all* used in the i.e. clarification, that boy must eat all the salad, not only in his plate, but in the plates of the two other boys'.


Irrelevance continues ... but note the mother's instructions were specific to "in (sic) your plate". The child could point to that language and not have to worry about what was _on_ the other children's plates.

The kid would probably be held in contempt by the mother for talking back - especially if they argued there was no salad _in_ their plate and that the salad in question was only resting _on_ their plate. That is basically where DISH sits now ... in the "you know what I mean!" zone. The mother would reject the "in" vs "on" argument ... the judge may reject an "the" vs "not any and all" DVR functionality argument.

What DISH did is more like a child being told to remove the trash from their room within an hour ... the parent comes back an hour later and finds trash in the room. The child protests saying that they DID remove *the* trash and that this trash is new trash completely different from the trash that was in the room before. Yeah, right. 


jacmyoung said:


> kmill14 said:
> 
> 
> 
> jacmyoung, there is no such thing as "adjudicated functions". There are adjudicated devices that performed functions that infringed on TiVo's patent.
> 
> 
> 
> Yes, anything that is particularly specified in the injunction is an adjudicated item, all others must be covered under the "colorable different" clause.
Click to expand...

In this case (the one that matters) ... the products are adjudicated ... namely the DP-501 and seven other models.

The court didn't adjudicate the "functions", they adjudicated the product. The product was specified in the injunction. While existing placements are allowed to remain with DVR functionally removed (plus a limited number of lost profits products that could retain their DVR functionality) it is the PRODUCT that was adjudicated.


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## Greg Bimson

Curtis52 said:


> Dish was instructed or urged to do something. That is the definition of "enjoined".


I'll somewhat agree with that. The problem is:


jacmyoung said:


> Therefore when the injunction specifically proscribed "the DVR functions in the Infirnging Products" to be enjoined, the DVR functions must be referring to the DVR functions that were adjudged, admitted or discussed in the trial.


To be enjoined from what?

The problem is that the injunction does not specify that the "functions that were adjudged, admitted or discussed in the trial", because the functionality and the judgment were on the PRODUCTS. The DP-522 was found to infringe, along with seven other models.

DISH/SATS was not only to disable the DVR functionality, but to do so for the length of the Time Warp patent. That piece of information is lost in DISH/SATS "interpretation", as their "interpretation" does violence to the natural meaning of the phrase "disable the DVR functionality" "until expiration of the Time Warp patent" to argue as DISH/SATS does.

Especially considering they are arguing that they've followed the injunction before it ever took effect, by their interpretation of "disable the DVR functionality".

Besides, if the injunction was to mention "the functionality as it existed", like the Footprint 2.0 injunction, DISH/SATS may have a point. But it isn't anywhere in the injunction, and cannot be implied, as an injunction must stand by itself, not referring to any other documentation. And there isn't any clause in the injunction that allows the adjudicated DVR's to continue.


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## scooper

All "adjudicated" means is that they were explicitly covered by this trial - nothing more, nothing less. Some of you are getting so wrapped up over that term...


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## scooper

Greg Bimson said:


> Especially considering they are arguing that they've followed the injunction before it ever took effect, by their interpretation of "disable the DVR functionality".


Oh no - it makes perfect sense - the products are NOT using the old infringing code ever again until the expiration of the '389 patent.


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## peak_reception

Curtis52 said:


> Yes but Dish was enjoined to disable all storage to and playback from a hard disk drive of television data.


 Oops, sorry. You're right. I posted too quickly.


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## kmill14

scooper said:


> Oh no - it makes perfect sense - the products are NOT using the old *infringing code* ever again until the expiration of the '389 patent.


There is no such thing as infringing code in this case.


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## peak_reception

Speaking of words and how they're used... I just can't get past how the Echo lawyer(s) describe the workaround as a "Herculean" effort. Really? Strong. Mythical. Epic. Well, probably the middle one at least  Didn't Hercules hold up the world for awhile, spelling Atlas while he went apple-picking? 
Echo is holding up the court system so maybe it is an apt comparison


----------



## jacmyoung

Now for all you still trying to remind me my failed attempt to use the word "enjoin" or some other different lawsuits, let me bring you folks to the reality of the latest development:

"The DVR functionality" as proscribed in the injunction indeed refers to those adjudicated in the trial or admitted in the trial, not anything beyond what was discussed during the trial. If you disagree you are welcome to tell why, but read some of the posts I had earlier on this issue first. I have been guilty for talking too much many times so spare me of any repeats on that explanation again.

Since "The DVR functionality" indeed refers to what was discussed in the trial only, that Footprint 2.0 Service case now can finally be "relevant", remember that case I cited, when the entire Footprint 2.0 sevice was ordered to cease, the infringer only updated a small piece of software, while the whole serivce continued on at the end users', and the infringer was not in contempt, rather was totally cleared?

Back then the case was dismissed as irrelevant because the injunction in that case did refer the service as discussed during the trial, but this current injunction does not specifically refer "The DVR functionality" as discussed in the trial, remember Greg that one excuse? Now such excuse is gone.


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## kmill14

jacmyoung said:


> "The DVR functionality" as proscribed in the injunction indeed refers to those adjudicated in the trial or admitted in the trial, not anything beyond what was discussed during the trial.


The DVR functionality described in the injunction is simply:

"all storage to and playback from a hard disk drive of television data"."

Nothing more....nothing less.

The order in the footprint injunction was to disable the service as it was at the time of the trial. That stipulation was not in the E* injunction.


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## Curtis52

There's a long article from Citi's analyst Tony Wible about Dish. Here's some of it:

"S u m m a r y

After years of legal battles, the final hour of the long-running TIVO vs.
DISH patent dispute is upon us as both sides will have 30 minutes to address
the court on September 4. DISH will attempt to convince the court that
roughly 4.5 million of its DVR boxes have received new software that will
protect it from the injunction that was granted by the District Court and
upheld by the appeals court (see our previous notes for more detail). TIVO
will likely present the same argument that DISH is conceptually violating no
matter what changes have been made, and more importantly will ask the court
to only enforce the injunction and not rule on the validity of DISH's new
software. If TIVO is successful in this last hearing, DISH will be forced to
turn off about 4.5 million of its DVR's or face escalating fines and other
penalties imposed by the court (including possible arrest). We believe the
risk/reward is favorable for TIVO and believe a victory could produce between
$85-$236 million of cash flow per year, which could be worth between $866
million and $2.264 billion of perpetuity value.

Based on numerous conversations and analysis of the legal documents, we
believe TIVO has a 75% chance of victory on September 4. Given the
downside potential to DISH, our Cable analyst Jason Bazinet (who also has a
note out today on the trial) believes DISH may attempt to purchase TIVO at up
to a 225% premium. We note that TIVO has anti-takeover provisions and
would not likely sell for anything less than a massive premium.

Overall, the market is grossly underestimating the potential value from this
case, which we calculated could be worth up to an incremental $13 per share
on our target. We would remind investors that TIVO has about $6 of intrinsic
value from its existing base of business, which means the Street is not
valuing TIVO's current MSO business, DVR advertising opportunity, and the
potential from the September DISH trial. While the DISH cash can be a
watershed event for TIVO, we reiterate that TIVO's ability to win business is
not predicated on its ability to protect its intellectual property but in its
ability to simply make a better DVR box that helps MSO's improve ARPU,
market share, SAC and churn. "


----------



## jacmyoung

kmill14 said:


> The DVR functionality described in the injunction is simply:
> 
> "all storage to and playback from a hard disk drive of television data"."
> 
> Nothing more....nothing less.
> 
> The order in the footprint injunction was to disable the service as it was at the time of the trial. That stipulation was not in the E* injunction.


Yes, this "all storage to and playback..." no matter how you define it, it has to be in one of the two categories:

Either they refer to the ones specifically tried during the trial, if so it is the same as the Footprint 2.0 injunction;

Or they refer to the ones not tried during the trial, as you insist, then they must be covered under the second category, to be examined by the "colorable difference" test.

Or both, which don't make much difference as the above two still apply, for those tried already, the Footprint 2.0 gives a relevant example of a possible outcome, for those not tried yet, to be determined by the colorable difference test.


----------



## jacmyoung

Curtis52 said:


> There's a long article from Citi's analyst Tony Wible about Dish. Here's some of it:
> 
> "S u m m a r y
> 
> After years of legal battles, the final hour of the long-running TIVO vs.
> DISH patent dispute is upon us as both sides will have 30 minutes to address
> the court on September 4. DISH will attempt to convince the court that
> roughly 4.5 million of its DVR boxes have received new software that will
> protect it from the injunction that was granted by the District Court and
> upheld by the appeals court (see our previous notes for more detail). TIVO
> will likely present the same argument that DISH is conceptually violating no
> matter what changes have been made, and more importantly will ask the court
> to only enforce the injunction and not rule on the validity of DISH's new
> software. If TIVO is successful in this last hearing, DISH will be forced to
> turn off about 4.5 million of its DVR's or face escalating fines and other
> penalties imposed by the court (including possible arrest). We believe the
> risk/reward is favorable for TIVO and believe a victory could produce between
> $85-$236 million of cash flow per year, which could be worth between $866
> million and $2.264 billion of perpetuity value.
> 
> Based on numerous conversations and analysis of the legal documents, we
> believe TIVO has a 75% chance of victory on September 4. Given the
> downside potential to DISH, our Cable analyst Jason Bazinet (who also has a
> note out today on the trial) believes DISH may attempt to purchase TIVO at up
> to a 225% premium. We note that TIVO has anti-takeover provisions and
> would not likely sell for anything less than a massive premium.
> 
> Overall, the market is grossly underestimating the potential value from this
> case, which we calculated could be worth up to an incremental $13 per share
> on our target. We would remind investors that TIVO has about $6 of intrinsic
> value from its existing base of business, which means the Street is not
> valuing TIVO's current MSO business, DVR advertising opportunity, and the
> potential from the September DISH trial. While the DISH cash can be a
> watershed event for TIVO, we reiterate that TIVO's ability to win business is
> not predicated on its ability to protect its intellectual property but in its
> ability to simply make a better DVR box that helps MSO's improve ARPU,
> market share, SAC and churn. "


I guess Charlie is betting on that 25% odds, oh wait I heard the odds were zero.

BTW the notion that Charlie will likely pay a premium to buy Tivo is so out of his character it goes to show you just how much homework this analyst cared to do at all.

And one more thing, this analyst totally failed to consider the possibility to replace all the adjudicated DVRs, which was estimated at over 4 million in 2006, certainly less so now, because just the 722s, 9xxs added together are far below 179,000 based on DISH's figure, so say 2 million all together today, to replace them all would be about $400 million max. You think Charlie would rather pay as much as $2.8 billion (according to the analyst's own math) to buy Tivo when there is a $400 million alternative? The final replacement figure will likely be even less, because not everyone will need to be replaced, many are to be upgraded anyway due to the MPEG2 to MPEG4 transition, or SD to HD transition.


----------



## nobody99

Here's my prediction.

On September 4th, Judge Folsom will give DISH 7 days to turn off DVR functions.

jacmyoung will say it's a victory for DISH.

You heard it here first.


----------



## jacmyoung

nobody99 said:


> Here's my prediction.
> 
> On September 4th, Judge Folsom will give DISH 7 days to turn off DVR functions.
> 
> jacmyoung will say it's a victory for DISH.
> 
> You heard it here first.


Your prediction is already out of the window because as soon as DISH is found in contempt, if as you say, everything will be on hold while DISH appeals, which will certainly take more than 7 days, more like 6 months.

I still remember your first prediction BTW, you predicted you would come on here to gloat on 5/30/08.


----------



## Curtis52

jacmyoung said:


> to replace them all would be about $400 million max.


The customers will sign long term contracts with other providers in a few days. It would take a year to build that many boxes anyway. Besides, he doesn't have any non-infringing boxes to replace them with.


----------



## Curtis52

There are two reports totaling 42 pages at smithbarney.com. Registration is free. Put "tivo" or "dish" in the box to request a quote and the reports are listed on the right side of the page.


----------



## nobody99

jacmyoung said:


> I still remember your first prediction BTW, you predicted you would come on here to gloat on 5/30/08.


You must have me confused with someone else. Is it possible that you can *gasp* admit you were wrong? :lol:


----------



## jacmyoung

Curtis52 said:


> The customers will sign long term contracts with other providers in a few days. It would take a year to build that many boxes anyway. Besides, he doesn't have any non-infringing boxes to replace them with.


I am not trying to make light of a contempt charge, only that this so called analyst clearly has no legal concept nor interested in knowing who Charlie is, by predicting right after 9/4 he would try to buy Tivo.

Of course when DISH had to turn off the distant signals there were those similar predictions, according to the court paper there were nearly one million DISH distant subs, I failed to notice DISH's sub numbers deviated from the norm the few months following the shut off.

Not to mention the infamous Blackberry case when RIM (a company with much less magnitude then) was ordered to pay $600 million, last I checked Blackberry was still alive and well.

Remember the judge's justification for the permanent injunction? The DVR business was only a small portion of the DISH business, I guess that analyst did not care to study the frame of mind of the judge (even though all legal papers were allegedly analyzed) which clearly demonstrated Judge Folsom is someone serious about the question of equity, when it comes to making his judgement.

There is no question even from the other side that this injunction, according to their own interpretation, is broad. To think that the judge will disregard such factor when it comes to ruling on contempt, which is in contrary to the standards, to me it shows lack of respect for the judge.


----------



## jacmyoung

nobody99 said:


> You must have me confused with someone else. Is it possible that you can *gasp* admit you were wrong? :lol:


I admited wrong more than once before, you have no capability to make any judgement about me at all. Judging from your posts it is not too much to say you never cared to read those cases cited, or even if you tried, never quite understood them.

I have been very patient to answer many of your questions, others would not even have bothered based on the quality of those questions.


----------



## peak_reception

jacmyoung said:


> BTW the notion that Charlie will likely pay a premium to buy Tivo is so out of his character it goes to show you just how much homework this analyst cared to do at all.


 That's true, but If Charlie did buy TiVo, and with it the IP which is at the heart of all this litigation, we would then be treated to the delicious irony of him suing the socks off of anyone and everyone with competing DVRs which give the merest whiff of resemblance to the patented processes TiVo boxes utilize today. What fun that would be, huh?


----------



## jacmyoung

peak_reception said:


> That's true, but If Charlie did buy TiVo, and with it the IP which is at the heart of all this litigation, we would then be treated to the delicious irony of him suing the socks off of anyone and everyone with competing DVRs which give the merest whiff of resemblance to the patented processes TiVo boxes utilize today. What fun that would be, huh?


You bet, boy do I like to see the fun of that, but I am not so wishful thinking

BTW I just want to quote this one which has been quoted by DISH and so many times by the others:

"*In sum*, contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders. Contempt, however, is not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace."

So those who argue for a contempt must answer this question, did DISH make a good faith effort to modify the adjudicated DVRs to remain in the market place? The answer to this question has nothing to do with the letter of the injunction, or what is said in the injunction, because the above only concerns the issue of contempt. If the answer is yes, contempt can not be, of no, then contempt it is.

The appeals court established the above standard, never said anything about what is said in the injunction or whether the letter of an injunction is relevent in answering the above question.


----------



## nobody99

jacmyoung said:


> I admited wrong more than once before, you have no capability to make any judgement about me at all. Judging from your posts it is not too much to say you never cared to read those cases cited, or even if you tried, never quite understood them.
> 
> I have been very patient to answer many of your questions, others would not even have bothered based on the quality of those questions.


Ooooh, you've been 'patient' with me. Oooh, I am in the presence of greatness.

I could care less about the cases you've brought up. They mean very little to this case, but you've chosen to ignore that for whatever reason. I know for a fact that this case is unlike any other that's gone this far (an actual injunction) -- where a device in the hands of a customer has been ordered changed. You can cite every patent infringement case in the history of mankind, and not one of them applies. Sorry, that's the way it is. If it is insulting to you that people disagree with you, then perhaps you might considering laying off the holier-than-thou attitude and the absolute inability to listen to anyone else's viewpoint.

And as far as the gloating comment - give me a break. If you are going to say that I was going to come here and gloat on May 30, back it up. I didn't say it, and I wouldn't say it. Once you realize you are wrong, I will gladly accept your apology :hurah:


----------



## jacmyoung

nobody99 said:


> ... I know for a fact that this case is unlike any other that's gone this far (an actual injunction) -- ...


Every case I cited before, there are many, most all had gone further than this one, well after the contempt was ruled or cleared, so stop using the word "fact" when it is not.

http://www.dbstalk.com/showthread.php?p=1618603#post1618603

"We'll just agree to disagree, and on June 1, I'll just come back and gloat."

Sorry I was off by one day, I apologize.

Oh wait, I never admit wrong, I take that back then.


----------



## peak_reception

Echo lawyers do deserve high marks for creativity and imagination. I don't say this sarcastically. I think they make the best possible case for wiggling free of Judge Folsom's injunction and potentially winning on appeal if they lose on or about September 4.

Their weakest link, imo, is the claim that they've obeyed the spirit *and letter* of the injunction by shutting down DVR functionality briefly, and then turning it back on with non-infringing software.

That's obviously *not* what Judge Folsom had in mind by ordering them to disable DVR functionality. It's plausibly in the _spirit_ of the injunction (to avoid further infringement) but certainly not the letter.

They should've stuck to the "spirit" argument and tried to ride it out that way. Making the far-fetched argument that they've obeyed the plain language of the injunction, as well as the spirit of it, is nervy but implausible imo. It also brings with it additional, unnecessary risk of angering the judge. He knows what he meant, and he knows that Echo knows what he meant, by disabling DVR functionality. I can't imagine him looking kindly on such clever tactics and wordplay.

Failing all else, they (Echo lawyers) say that their client shouldn't be punished for _misinterpreting_ the injunction, if the judge rejects the preceding arguments. After all, they argue, it was a good faith, "Herculean," effort, to avoid further infringement. But, again, as with the 'letter of the injunction' compliance argument, there was obviously no misinterpretation of the injunction here. The Herculean effort was working around the injunction as much as working around infringement. A creative and valiant attempt, I must admit, but not enough to win over Judge Folsom. Probably not enough to win over a CAFC panel either, but a better chance there.

And that's where Echo is placing all hope, on appeal to CAFC. That's also why they go into such detail about how their workaround wasn't a secret at all, despite what TiVo says. That accusation of a design-around shrouded in secrecy seemed to strike a sore spot. Echo replied that they made note of it (the design-around) "publicly" in a SEC filing (etc), but the fact remains that they did not communicate with the Court about their course of action. Though not a legal stipulation, Echo is sensitive to this criticism and spends a good bit of time on it in their reply to tIVo's contempt motion. Why? They don't want the CAFC to view their design-around behavior as irresponsible and/or misleading. After all, Echo was arguing to the CAFC back at the stay of injunction phase that shutting down DVRs would constitute severe hardship and harm (something similar; I don't have the doc in front of me) and therefore a stay was urgently needed. CAFC agreed, based on the dire situation presented to them of financial hardship, DVRs shut down, customers fleeing in droves, etc.

*IF* CAFC concludes that they were misled the first time around, now suspecting that DISH had no intention of shutting down DVR functionality despite the frightening picture they painted when last before them (CAFC), it can only hurt Echo on the new appeal. I think that's why they (Echo) take such pains to rebut TiVo's charges of bad faith and secrecy in how the workaround was conducted. Everything Echo does is now is focused on CAFC even though Folsom is the next step. The last thing in the world they want is for CAFC to view their behavior as being in "bad faith." It may not be a legal issue but it's mighty important as they make their last stand.


----------



## peak_reception

jacmyoung said:


> You bet, boy do I like to see the fun of that, but I am not so wishful thinking
> 
> BTW I just want to quote this one which has been quoted by DISH and so many times by the others:
> 
> "*In sum*, contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders. _Contempt, however, is not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace."_
> 
> So those who argue for a contempt must answer this question, did DISH make a good faith effort to modify the adjudicated DVRs to remain in the market place? The answer to this question has nothing to do with the letter of the injunction, or what is said in the injunction, because the above only concerns the issue of contempt. If the answer is yes, contempt can not be, of no, then contempt it is.
> 
> The appeals court established the above standard, never said anything about what is said in the injunction or whether the letter of an injunction is relevent in answering the above question.


 Interesting that you posted this before I had written my post about the importance of whether DISH's design-around was conducted in good faith or not. I think it does matter and so does DISH, apparently. I actually agree with you that the passage you cite above (which I've italicized) is important in the coming contempt hearing on September 4th. If contempt "...is not a sword for wounding..." then Judge Folsom may be on thin ice is 'bringing down the hammer' as many would like to see, including me.

Like it or not, the question remains: Is DISH a "former infringer" or is DISH still infringing? Much as I dislike the prospect, I'm coming around to the position that this question will need to be decided before this case is settled (unless of course the case is settled out-of-court).

Judge Folsom can hold Echo in Contempt on September if he sees fit but that won't end it. DISH then appeals. I can't imagine CAFC allowing the injunction to force DVR shutdown before DISH can plead their final case. Such non-intervention would constitute a de-facto, 'pre-facto' (I've coined some new Latin legalese  ) ruling against Echo/Dish because DVR shutdown means the end of litigation; Dish simply cannot allow/afford it to happen.

So I do think DISH will live to fight another day no matter what Judge Folsom rules on or about September 4th.

That's why I say, 2009 here we come. :new_popco


----------



## James Long

jacmyoung said:


> Now for all you still trying to remind me my failed attempt to use the word "enjoin" or some other different lawsuits, let me bring you folks to the reality of the latest development:
> 
> "The DVR functionality" as proscribed in the injunction indeed refers to those adjudicated in the trial or admitted in the trial, not anything beyond what was discussed during the trial.


So says you ... and you also say that the current DVR functionality is not _the_ DVR functionality ... an important point.


> Since "The DVR functionality" indeed refers to what was discussed in the trial only, that Footprint 2.0 Service case now can finally be "relevant",


You're as bad as DISH! ... the other case is now relevant because you declare it relevant? Dish DVRs are no longer subject to the injunction because DISH declares them not subject to the injunction?

BTW: By stating that it can finally be relevant you are admitting that it wasn't relevant before. That might be a breakthrough ...


> Back then the case was dismissed as irrelevant because the injunction in that case did refer the service as discussed during the trial, but this current injunction does not specifically refer "The DVR functionality" as discussed in the trial, remember Greg that one excuse? Now such excuse is gone.


Have you rewritten the injunction? The "excuse" isn't gone ... you're just ignoring the debate.


----------



## jacmyoung

peak_reception said:


> ...So I do think DISH will live to fight another day no matter what Judge Folsom rules on or about September 4th. ...


Even though I appreciate your effort, but unfortunately it totally missed the point, *even if* (here we go again) DISH indeed violated both the spirit and the letter of the injunction, and their disregard of the court order is *flagrant*, they still can live to fight another day well into 2009, by appealing the contempt ruling, it is the law that gives them that right.

So another question from the above *summation* of the higher court can be:

When DISH interpreted the "Infringing Products" as the products that do infringe on the patent, therefore when they made the good faith effort to modify them into products that no longer infringe on the patent, therefore no longer the "Infringing Products" as defined in the letter of the injunction, therefore they had reasonably excluded "the DVR functionality (i.e. disable all...)" from the scope of the injunction because they are *limited only to the "Infringing Products"*, as described by the letter of the injunction.

Can you honestly say the above interpretation and effort are a *flagrant disregard* of the court order?

No matter which way you look at the *summation* of the court decision whether to rule for contempt or not, the answer is no.


----------



## jacmyoung

James Long said:


> ...BTW: By stating that it can finally be relevant you are admitting that it wasn't relevant before. That might be a breakthrough ...


When I said I had "finally" find a reasonable explanation to destroy that "irrelevant" argument, it never implied, nor can it possibly be interpreted as to say before I found that answer, somehow the "irrelevant" argument was correct. Before we proved the Earth was round, was it flat?

The word "breakthrough" is a word of immense magnitude, which requires an effort in correctly understanding the meaning of the words such as "finally" and "irrelevant" to be an effort of the comparable scale, you did not even make much effort in trying to interpret them, much less making an effort of immense magnitude.


----------



## Curtis52

jacmyoung said:


> I am not trying to make light of a contempt charge, only that this so called analyst clearly has no legal concept nor interested in knowing who Charlie is, by predicting *right after 9/4* he would try to buy Tivo.


Are you making that up?


----------



## peak_reception

jacmyoung said:


> Even though I appreciate your effort, but unfortunately it totally missed the point, *even if* (here we go again) DISH indeed violated both the spirit and the letter of the injunction, and their disregard of the court order is *flagrant*, they still can live to fight another day well into 2009, by appealing the contempt ruling, it is the law that gives them that right.


 Did you even read my post? I did *not* say that it's clear that DISH violated the spirit of the injunction, just the letter of it. That's a pretty big concession from a DISH-hater like me . You and I agree that DISH can live to fight another day well into 2009 by appealing any contempt order (or other outcome too). So what exactly are you quibbling about? That I say DISH is not abiding by the letter of the injunction? You're defnitely in a minority viewpoint there my friend. That doesn't mean you're wrong but you might at least consider the possibility. I can't see what else you're taking issue with. The good faith / bad faith paradigm? You might not care about whether Echo is seen by CAFC to be acting in good faith and good behavior with their design-around, but DISH certainly is concerned. Just read their reply to TiVo about secrecy and good faith; they are very keen to address these issues. If it doesn't matter then why do they bother?

p.s. of course DISH has the legal right to appeal whatever Judge Folsom rules on or around September 4th; no one has argued otherwise that I've seen.


----------



## nobody99

jacmyoung said:


> Every case I cited before, there are many, most all had gone further than this one, well after the contempt was ruled or cleared, so stop using the word "fact" when it is not.
> 
> http://www.dbstalk.com/showthread.php?p=1618603#post1618603
> 
> "We'll just agree to disagree, and on June 1, I'll just come back and gloat."
> 
> Sorry I was off by one day, I apologize.
> 
> Oh wait, I never admit wrong, I take that back then.


You're absolutely right - I did say it. You truly do bring out the worst in people.


----------



## kmill14

jacmyoung said:


> When DISH interpreted the "Infringing Products" as the products that do infringe on the patent, therefore when they made the good faith effort to modify them into products that no longer infringe on the patent, therefore no longer the "Infringing Products" as defined in the letter of the injunction, therefore they had reasonably excluded "the DVR functionality (i.e. disable all...)" from the scope of the injunction because they are *limited only to the "Infringing Products"*, as described by the letter of the injunction.
> 
> Can you honestly say the above interpretation and effort are a *flagrant disregard* of the court order?
> 
> No matter which way you look at the *summation* of the court decision whether to rule for contempt or not, the answer is no.


Of course it is a flagrant disgregard for the order.

A) The definition of "Infringing Products" (note the capital letters) is simply the 8 products listed in the Injunction. To infer anything else (as you and Dish have done) is wrong, and for Dish it is the start of their downfall.

B) It is not their place to exclude anything from the scope of the injunction, particularly when it comes to the order to disable the ability to write data to the hard-drives of the products deemed to have infringed and that have been placed with subscribers. It is up to the Court to decide what is in and out of scope for the injunction. This exclusion leads to...

C) Dish decided they did not need to comply with the clear order to make those 8 products listed in the injunction unable to store TV data to the hard-drive. That is all the order says. There are no clauses....no ambiguity. Dish decided they did not need to follow the exact letter of the injunction, and that alone is reason enough to hold them in contempt.


----------



## kmill14

jacmyoung said:


> Yes, this "all storage to and playback..." no matter how you define it, it has to be in one of the two categories:
> 
> Either they refer to the ones specifically tried during the trial, if so it is the same as the Footprint 2.0 injunction;
> 
> Or they refer to the ones not tried during the trial, as you insist, then they must be covered under the second category, to be examined by the "colorable difference" test.
> 
> Or both, which don't make much difference as the above two still apply, for those tried already, the Footprint 2.0 gives a relevant example of a possible outcome, for those not tried yet, to be determined by the colorable difference test.


Your logic is straight out of a mental institution. There is no "defining"



> all storage to and playback from a hard disk drive of television data


.

It simply is as it is written. E* must ensure the 8 products listed in the injunction are not able to store or playback TV data from the hard-drive. Thats it.

You are trying to make "DVR Functionality" equal to the Footprint 2.0 service, and you can't. The Footprint 2.0 service was actually the adjudicated device in that case. In this case, the "DVR Functionality" is not what was adjudged to have infringed. The DP-501 is what was adjudged to have infringed.

The only reason the Judge wrote in the injunction "all storage to and playback from a hard disk drive of television data" was because he ordered E* to disable that ability on those 8 products.


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## kmill14

jacmyoung said:


> "*In sum*, contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders. Contempt, however, is not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace."


The quote you pulled is in regards to a company facing contempt charges for a new, modified product. Not something like Joe Blow's DP-501 that was ruled to infringe and ordered to have its TV-data storing abilities disabled.

Stop pulling irrelevant quotes.


----------



## Stuart Sweet

Please keep your conversation polite and on topic.


----------



## jacmyoung

Curtis52 said:


> Are you making that up?


I am sorry he was saying Charlie may buy Tivo before 9/4, hope your happy.


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## Curtis52

jacmyoung said:


> I am sorry he was saying Charlie may buy Tivo before 9/4, hope your happy.


Do you have a quote?


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## Curtis0620

jacmyoung said:


> I am sorry he was saying Charlie may buy Tivo before 9/4, hope your happy.


It didn't say anything about before 9/4.

And besides, DISH is still trying to figure out how to count to 100.


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## jacmyoung

kmill14 said:


> The quote you pulled is in regards to a company facing contempt charges for a new, modified product. Not something like Joe Blow's DP-501 that was ruled to infringe and ordered to have its TV-data storing abilities disabled.
> 
> Stop pulling irrelevant quotes.


Again I only need to draw the MTC case for comparison, in that injunction, it *clearly* said MTC had to provide *each project* of its schedule, costs and ridership gains, and MTC *clearly* did not follow that order.

Not only that, the higher court said, MTC in all practicality did not even have to do anything at all for the first 4 years, as long as they could manage to bring the total ridership gains to 15% at the end of 2006, they would be fine with the order, which specified they needed to provide gains for *each project* in each increment.

Now what part of the above is not clear to you? Oh I know, in that case there was a clearly spelled out goal, 15% gains in 5 years. And there is no clear goal spelled out in this injunction. Give me a break.

All injunction on infringement have the same goal, to *prevent* infringement, to stop further infringement. It is said black and white in the law as Curtis52 quoted.

To further emphasis it, the appeals court made it clear, the contempt threat must be used as a *shield*, not a *sword*, in maintaining the order. Meaning in such battle, there is no sword, only shield, I know it is a difficult concept for some, but just because you can not accept it does not mean it is not true, it is crystal clear from the language of the court summation of all their opinions.

What you are advocating is exactly the opposite, to use the contempt as a sword to injure DISH who made a good faith effort to modify the adjudicated DVRs to make them not infringing on the Tivo's patent, and to remain in the marketplace.

What you are advocating is not use the contempt power as a shield, to protect Tivo from DISH's continued infringement of the patent, because the Tivo's patent is protected once DISH no longer infringes on such patent.

Of course your last and the only defense is no higher courts' opinions should matter because they were all for different cases.

I have news for you. If you read the MTC case carefully, recall the court quoted from a prior case to use the "ambiguity must all goes to the defendant" argument as one of the reasons to find MTC not in contempt? Did you realize, had you actually read it, that the prior case quoted was a criminal case? Go back and read it please.

How relevant do you believe a criminal case is to the MTC case, which was of course a civil case. How do you explain that? Didn't that instantly throw your "irrelevant" argument out of the window?

The notion that this case is so unique that it deserves its own rules, and is totally insulated from all other cases, all of them indeed, because you have yet found one single case that came to your defense of such "face of injunction contempt" concept. Who do you think this judge is, a dictator who needs not consider anyone else's prior rulings, even those by his bosses. Even a dictator had to obey his bosses before he could hope to become a dictator.

Your total disrespect for Judge Folsom for who he is and how he will operate is beyond words.


----------



## Curtis52

You can read the redacted portions of Dish's response by cutting and pasting from Acrobat Reader.


----------



## dgordo

Curtis52 said:


> You can read the redacted portions of Dish's response by cutting and pasting from Acrobat Reader.


I noticed that to, whoops.


----------



## Greg Bimson

Curtis52 said:


> You can read the redacted portions of Dish's response by cutting and pasting from Acrobat Reader.





dgordo said:


> I noticed that to, whoops.


And there doesn't seem to be any bombshells there.


----------



## Greg Bimson

jacmyoung said:


> The notion that this case is so unique that it deserves its own rules, and is totally insulated from all other cases, all of them indeed, because you have yet found one single case that came to your defense of such "face of injunction contempt" concept. Who do you think this judge is, a dictator who needs not consider anyone else's prior rulings, even those by his bosses. Even a dictator had to obey his bosses before he could hope to become a dictator.


That's because for every case you claim is relevant, no case you have cited discussed an adjudicated device. You might try to define an "Infringing Product" or "disable all storage to and playback from a hard disk drive of television data" in an incorrect way (as DISH/SATS has done), but none of the case law you have cited remotely addresses infringing products already in the hands of end users.


----------



## jacmyoung

Greg Bimson said:


> That's because for every case you claim is relevant, no case you have cited discussed an adjudicated device. You might try to define an "Infringing Product" or "disable all storage to and playback from a hard disk drive of television data" in an incorrect way (as DISH/SATS has done), but none of the case law you have cited remotely addresses infringing products already in the hands of end users.


You apparent forgot about the Footprint 2.0 service, an adjudicated service all together, remained in the marketplace, with only one small software change made, never stopped functioning at the end users.

DISH also cited one case in which the infringer continued with 6 adjudicated products in the field without replacing them, only changed the internal formulations, no name change, no model change, all continued to do their work, even though the injunction specifially enjoined their uses.

Not to mention if you actually had read what the higher court said in the above summation opinion, it clearly described the infringer's good faith effort to *modify the adjudicated devices* (not any new devices, but the adjudicated devices) to remain in the marketplace. Which part of that did you not understand?


----------



## Greg Bimson

jacmyoung said:


> You apparent forgot about the Footprint 2.0 service, an adjudicated service all together, remained in the marketplace, with only one small software change made, never stopped functioning at the end users.


And you apparently forgot that in the Footprint case the language in the injunction only prohibited the service as adjudicated. That is not so in the TiVo v. DISH/SATS case.


jacmyoung said:


> DISH also cited one case in which the infringer continued with 6 adjudicated products in the field without replacing them, only changed the internal formulations, no name change, no model change, all continued to do their work, even though the injunction specifially enjoined their uses.


But I can assume in that case, the lost profits due to infringement were paid for the entire product line which was infringing. In this case, the lost profits only pertained to the 193K devices. If DISH/SATS wants to pay for lost profits on the entire slightly over 4 million DVR's, that would be a different story. And that would put the total somewhere around half a billion dollars.


jacmyoung said:


> Not to mention if you actually had read what the higher court said in the above summation opinion, it clearly described the infringer's good faith effort to modify the adjudicated devices (not any new devices, but the adjudicated devices) to remain in the marketplace. Which part of that did you not understand?


That is a modification of an adjudicated device, a new product per se, sold under the same name. However, they were only similar in name only. The infringer paid the lost profits on all of the adjudicated, infringing devices, modified their product line so that it no longer infringed, and sold the modification.

There is no mention of the adjudicated devices in customer's homes in that opinion. The order was to stop sales of certain model numbers, and the infringer modified the products, kept them the same name, and continued selling. This contempt hearing has nothing to do with continuing sales of Infringing Products; just to disable Infringing Products.


----------



## jacmyoung

Greg Bimson said:


> And you apparently forgot that in the Footprint case the language in the injunction only prohibited the service as adjudicated. That is not so in the TiVo v. DISH/SATS case.


So you are saying in this case the injunction prohibits not only the adjudicated, but also those not adjudicated, which I agree. But did you read my explanation that, if non-adjudicated is prohibited in an injunction, they must be covered by the "colorable difference" clause?

There are two categories of prohibited items, the ones that are already adjudicated can be prohibited directly, the ones that are not yet adjudicated can be prohibited, only after the "colorable difference" test is applied.

Can you first accept that? If not then you must be thinking a third group of items, so tell me what are they?



> But I can assume in that case, the lost profits due to infringement were paid for the entire product line which was infringing. In this case, the lost profits only pertained to the 193K devices.


Except you can not assume. Please offer your facts.



> This contempt hearing has nothing to do with continuing sales of Infringing Products; just to disable Infringing Products.


Have I ever talked about the continued sale of the Infringing Products? Did you not hear that DISH had already disabled the Infringing Products? They offered the evidence and proof that they did. By making the Infringing Products no longer infringing, the Infringing Products are gone, replaced with non-infringing products.

But according to you once an Infringing Product, always an infringing product, I guess this is your only reason?

Well the Footprint 2.0 service was an adjudicated infringing service wasn't it? Was it always deemed infringing service afterwards? Keep in mind this question has nothing to do with what is said in that injunction, this question merely asks you when the Footprint 2.0 was declared an infringing service, did it remain an infringing service forever? Not being able to be modified into a non-infringing service, right in the field, by a software download?

I want to repeat, again the above question has nothing to do with whether that injunction specifially pointed to the trial or not, it merely asks you that once that Footprint 2.0 service was declared an infringing service, did it remain an infringing service forever?

According to you, once an adjudicated device/service is declared an infringing device/service, it can not be changed to something not an infringing device/service, through a software download in the field while being used by the end users, no, nothing can get it out of the infringing status. I hope I had yours right. Correct me if I am wrong.


----------



## phrelin

It's interesting that this thread gets 40+ posts a day and so far it's subject hasn't affected anyone's TV service or recording. But then it appears there have been about 4000 posts about the TiVo vs Echostar matter, so I shouldn't be surprised.


----------



## jacmyoung

phrelin said:


> It's interesting that this thread gets 40+ posts a day and so far it's subject hasn't affected anyone's TV service or recording. But then it appears there have been about 4000 posts about the TiVo vs Echostar matter, so I shouldn't be surprised.


Thank you for changing the focus a bit, yes the DVRs are still on, but because I have been here too much I have not used my DVRs much at all lately, so even if DISH is in contempt they will not be allowed to disable my DVRs, they in reality are already disabled, as not watched these days. Let's just call it my double jeopardy defense


----------



## Greg Bimson

jacmyoung said:


> So you are saying in this case the injunction prohibits not only the adjudicated, but also those not adjudicated, which I agree. But did you read my explanation that, if non-adjudicated is prohibited in an injunction, they must be covered by the "colorable difference" clause?


Once again, a transitory argument lost in translation.

The injunction was against the Footprint 2.0 service. No one knows what happened, as the parties settled.


jacmyoung said:


> I want to repeat, again the above question has nothing to do with whether that injunction specifially pointed to the trial or not, it merely asks you that once that Footprint 2.0 service was declared an infringing service, did it remain an infringing service forever?


Unless the Footprint 2.0 service was changed, yet in this case and this case only many DISH customers *still* have the models found infringing by the court. The only thing that happened to those devices is that the software was changed; the breadth of changes is debatable. Yet the fact they are to be disabled is not debatable, no matter how much DISH/SATS wants that debate.

The Infringing Products were found to infringe the software claims. The software was not found to infringe the software claims, but the eight models of DVR's (the "Infringing Products") were found to infringe.

No matter how much you (or DISH/SATS) want to make this about unadjudicated software, this is about adjudicated devices and the clear order to disable them.


----------



## jacmyoung

Greg Bimson said:


> ...The injunction was against the Footprint 2.0 service. No one knows what happened, as the parties settled.


What are you talking about? That case had no such thing as a settlement, as far as that contempt proceeding was concerned, once the infringer was found not in contempt, it was the end of it. Don't make things up.



> The software was not found to infringe the software claims.


I hope you were not serious when you said that. No the hardware was found not to infringe, only the software infringed.


----------



## James Long

The reply comments were due today ... but instead Tivo and DISH filed a joint motion to extend the time until next Friday (July 18th).

Note that this applies to the two issues on the docket ... Tivo's motion for contempt and DISH's motion for clarification. The items on the "alternate" docket (the interogatories Tivo wanted of DISH) were not filed and were not mentioned.

I believe we have our answer as to which Docket Control the parties and court is following.


----------



## Greg Bimson

jacmyoung said:


> What are you talking about? That case had no such thing as a settlement, as far as that contempt proceeding was concerned, once the infringer was found not in contempt, it was the end of it. Don't make things up.


It's called context. Akamai and Cable and Wireless sued each other back and forth and finally agreed after a long-standing dispute. There was a judgment, but that was a smaller decision in the grand scheme of things.

The motion for contempt was denied, but that didn't stop the process. The settlement did, where both parties agreed to wipe away and dismiss all litigation. So you might want to check your facts.


jacmyoung said:


> I hope you were not serious when you said that. No the hardware was found not to infringe, only the software infringed.


I forgot, from the king of the interpretation...

The SOFTWARE was not found to infringe. The DP-501 and seven other models were found to infringe the software claims. That is a much larger difference than stating the software infringed, espeically because some of the firmware in the infringing models may have infringed the software functionality.

But I'm sure you can interpret that any way you'd like. 


James Long said:


> I believe we have our answer as to which Docket Control the parties and court is following.


I cannot figure it out. Are you saying because DISH/SATS did not file the answers to the interrogatories that there is a different docket being used?


----------



## nobody99

Greg Bimson said:


> The SOFTWARE was not found to infringe. The DP-501 and seven other models were found to infringe the software claims. That is a much larger difference than stating the software infringed, espeically because some of the firmware in the infringing models may have infringed the software functionality.


Greg, it goes even further than that. The injunction doesn't even mention software.



> the Court thereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 ("'389 patent"), claims 1, 5, 21, 23, 32, 36, 52, 31 and 61...by Defendants' following DVR receivers ...: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


I don't see any mention of software. I just see that certain receivers infringed on the '389 patent.


----------



## Curtis52

Greg Bimson said:


> But I can assume in that case, the lost profits due to infringement were paid for the entire product line which was infringing. In this case, the lost profits only pertained to the 193K devices. If DISH/SATS wants to pay for lost profits on the entire slightly over 4 million DVR's, that would be a different story. And that would put the total somewhere around half a billion dollars.


Huh? The 193K is the total sales that TiVo lost due to infringement (as of 2006).



> "Retained by Irell & Manella and McKool Smith, counsel for TiVo, Dr. Ugone assessed the economic impact of EchoStar's patent infringement. He developed a lost profits model that used a market penetration rate analysis to determine the portion of EchoStar's DVR sales that would have gone to TiVo had EchoStar not infringed the patent.
> 
> The jury accepted Dr. Ugone's damages estimate, awarding TiVo $73.99 million in damages: $32.66 million in lost profits from lost sales of its set-top boxes and an additional $41.33 million that EchoStar should have paid in royalties relating to the sale of more than four million of their DVR devices."


----------



## Mainer_ayah

James Long said:


> The reply comments were due today ... but instead Tivo and DISH filed a joint motion to extend the time until next Friday (July 18th).
> 
> Note that this applies to the two issues on the docket ... Tivo's motion for contempt and DISH's motion for clarification. The items on the "alternate" docket (the interogatories Tivo wanted of DISH) were not filed and were not mentioned.
> 
> I believe we have our answer as to which Docket Control the parties and court is following.


Well James, Echostar has until midnight central time to file electronically, and if past performance is any indicator, they won't be filing until 11:59 pm. Or perhaps they will go the route of the injunction, and ignore the order entirely.

I was wondering how long it would take you to find that document. Had you stopped by my web site now and then, you would have seen it 30 hrs ago.

By the way, have you planned at all what you will be doing for a DVR around the middle of September?


----------



## jacmyoung

Greg Bimson said:


> It's called context. Akamai and Cable and Wireless sued each other back and forth and finally agreed after a long-standing dispute. There was a judgment, but that was a smaller decision in the grand scheme of things.
> 
> The motion for contempt was denied,


No it was not, the motion was granted and during the contempt hearing the judge looked at that small piece of new software patch and decided due to such change the Footprint 2.0 was no longer infringing, and cleared the infringer of contempt.

That had nothing really to do with if the parties later settled or not, if DISH is found not in contempt, they can still settle, or even merge, anything is possible, but that has no bearing on the legality of the contempt charge, which is what we are talking about.

Now if you say the adjudicated DVRs infringed on the software, not that the software infringed, that is also not correct, you may say the adjudicated DVRs infringed on the Tivo's software patent claims, but not the Tivo's hardware patent claims. Now that would be your so called "king of interpretation."

If DISH can prove their new software makes the adjudicated DVRs not only do not infringe on the Tivo's hardware patent claims, but also do not infringe on Tivo's software patent claims, then those DVRs will no longer fit the definition of the Infringing Products, same as that Footprint 2.0 service, which was an adjudicated infringing service, but modified to become a non-infringing service.

Interesting that people continue to quote the letter of the injunction:

"the Court thereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 ("'389 patent"), claims 1, 5, 21, 23, 32, 36, 52, 31 and 61...by Defendants' following DVR receivers ...: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942. "

But failed to realize only two of the above claims (31 and 61) were infringing, because all others were reversed. Did the appeals court modify the judgement? No the judgement was affirmed by the appeals court still, without modification. Goes to show you simply affirming a judgement, or an injunction, is not the indication that if the infringer later appeals a final decision based on the affirmed judgement, or the injunction, the appeals court will automatically deny the infringer because they affirmed something earlier.

If a new judgement on enhanced damages for example is based on claims 1, 5, 21, 23, 32, 52 of the Tivo patent, the judgement will certainly be overturned on appeal, because the appeals court overturned the verdicts on those claims, even though the letter of the original judgement was affirmed as is.


----------



## Mainer_ayah

jacmyoung said:


> If DISH can prove their new software makes the adjudicated DVRs not only do not infringe on the Tivo's hardware patent claims, but also do not infringe on Tivo's software patent claims, then those DVRs will no longer fit the definition of the Infringing Products, same as that Footprint 2.0 service, which was an adjudicated infringing service, but modified to become a non-infringing service.


You mean their alleged new software, don't you. I don't recall them even proving that they downloaded software to the DVR's, never mind rendering them non-infringing. As a matter of fact they balked when TiVo wanted to pursue discovery to find out just those sorts of things. If Echostars past performance is any indicator, in my opinion they are not to be trusted on any point. They have to prove themselves every step of the way. And on the new software issue, they aren't even past the first step.


----------



## Curtis52

Tony Wible (Citi):


----------



## jacmyoung

Mainer_ayah said:


> You mean their alleged new software, don't you. I don't recall them even proving that they downloaded software to the DVR's, never mind rendering them non-infringing. As a matter of fact they balked when TiVo wanted to pursue discovery to find out just those sorts of things. If Echostars past performance is any indicator, in my opinion they are not to be trusted on any point. They have to prove themselves every step of the way. And on the new software issue, they aren't even past the first step.


Of course DISH will have to offer the new software evidence to Tivo and the judge for examination, once the "face of injunction contempt" is thrown out by the judge. This is how a contempt hearing will progress. Looking at new evidence, if any at all. You did not mean to say DISH will not provide such necessary evidence did you? Only that you do not believe they even have such evidence.

But guess what I actually agree with you on that. I share a similar suspicion as you do, only that I do not automatically assume DISH will not be able to submit such evidence, they can of course submit a software evidence, they did so during the trial remember? The only thing is whether the new software is as solid as they claim to no longer infringe, not whetehr they are capable of submitting the new software evidence.

Here is where you may be shocked for what I am going to say. Before I say it first to be sure it is in no way to change my opinions and facts stated before, those are based on the case law cited, those court opinons and facts do not change, therefore my opinions, which are based on those facts do not change, until the other side provide their case law and acutal "relevant" court opinions that can prove me wrong.

With that said, let me also say this:

It is *possible* that DISH is just bluffing, and that their new software is not nearly as what they described, or at least DISH themselves are not nearly as confident as they sounded.

The reason being, even though many of you had insisted that it was Tivo who had not wanted to discuss the new software on 9/4, it is not so, it was in fact DISH who did not want the new software discussed.

Even before the 5/30 meeting, Tivo contacted DISH for the new software info, and DISH gave Tivo some very limited codes that I assume could not be used to offer any meaningful interpretation by Tivo. Which was why Tivo asked the judge for a discovery on the new software, but the problem was, Tivo could not ask for such discovery for the purpose of colorable difference test, because that would automatically interfere with Tivo's "face of injunction" argument. Tivo had to do so in the context of the new software infringement, and for that reason DISH rightfully asked the judge to deny such request, because the new software infirngement issue can not be discussed in a contempt proceeding.

But that is not to say DISH can not offer Tivo more new software evidence in a show of good faith effort to clear things up. DISH could most certainly offer to give Tivo the complete new software codes, in fact DISH should have offered the adjudicated DVRs, and provided Tivo the opportunity to compile the codes and install onto those DVRs to show they work. Of course such process can be conducted in a controlled environment, even remain confidential if needed, with a 3rd party as witness, and all the processes can be documented for the judge as evidence.

That is really what I call a good faith effort by DISH, to initiate such interrogation to demonstrate the new software's validity. But they did not do that, instead they refused to talk about the new software themselves. Legally they can refuse of course.

That give rise to my suspicion that DISH might not have a robust new software they say they have that no longer infringes. In that case, they of course will use all available means to delay the process. And believe it or not the current arrangment is the best way to drag things out, especially if the judge indeed find DISH in contempt on the face of the injunction as urged by Tivo, because it will take a few months to appeal this decision, and based on my interpretation such face of injunction contempt will be overturned by the appeals court, on remand, the district court will be asked to examine the new software, so the delay will be substantial, because we will be right back at where we were on 5/30, discussing when will be the next hearing be and all the rest of the items.

That will be a delay of about a whole year right there.


----------



## James Long

Mainer_ayah said:


> Well James, Echostar has until midnight central time to file electronically, and if past performance is any indicator, they won't be filing until 11:59 pm. Or perhaps they will go the route of the injunction, and ignore the order entirely.


Odd that everything else in the case would be delayed and not DISH's response.

BTW: To further the confusion ... the first docket control was signed ... the second was SO ORDERED. 


> I was wondering how long it would take you to find that document. Had you stopped by my web site now and then, you would have seen it 30 hrs ago.


Some people are here to share information, not to hold out hoping someone will visit their website. It has been a long week at work - including being at work 37 of the last 60 hours.


> By the way, have you planned at all what you will be doing for a DVR around the middle of September?


Yep. I have two DISH Network DVRs that will be working fine. Thanks for your concern.


----------



## kmill14

jacmyoung said:


> I hope you were not serious when you said that. No the hardware was found not to infringe, only the software infringed.


You couldn't be more mistaken. Go back and read the Appeals verdict.


----------



## Mainer_ayah

James Long said:


> Some people are here to share information, not to hold out hoping someone will visit their website. It has been a long week at work - including being at work 37 of the last 60 hours.
> Yep. I have two DISH Network DVRs that will be working fine. Thanks for your concern.


I already shared the information in the form of a link to all the documents.

As far as your DVR's go, yes quite possibly they may still be running, but Charlie will probably be sending you a $2-$3/mo larger bill per DVR. He has to recoup somehow, and with the financial shape his company is in he sure won't be able to absorb the added costs.


----------



## Greg Bimson

jacmyoung said:


> No it was not, the motion was granted and during the contempt hearing the judge looked at that small piece of new software patch and decided due to such change the Footprint 2.0 was no longer infringing, and cleared the infringer of contempt.


You do know what denying a motion is, correct?


----------



## jacmyoung

Greg Bimson said:


> You do know what denying a motion is, correct?


Of course I know.


----------



## jacmyoung

Mainer_ayah said:


> I already shared the information in the form of a link to all the documents.
> 
> As far as your DVR's go, yes quite possibly they may still be running, but Charlie will probably be sending you a $2-$3/mo larger bill per DVR. He has to recoup somehow, and with the financial shape his company is in he sure won't be able to absorb the added costs.


The notion that the customer will get $2-$3/mo. more a months should not be a concern, Tivo already said they will license to anyone, and they have to do so fairly by law, Tivo can not charge much more than what it charges others. We know how little they charge DirecTV, so that will be what DISH or any others will expect to pay, maybe some minor increase.

The issue is Charlie will likely willing to pay $200 million damages before he will talk to Tivo, and he knows how to drag things out. But of course I will not be surprised if tomorrow the two make a joint statement of some sort, anything is possible.

I have always said everything I argued for is dependent on a solid DISH new software, if DISH's new software is indeed a solid one as claimed, DISH has little to fear. The law is on their side, even if the face of the injunction might be on Tivo's side. But if the new software is no good, all the good standards and court prior opinions are of no help to DISH.


----------



## phrelin

jacmyoung said:


> Thank you for changing the focus a bit, yes the DVRs are still on, but because I have been here too much I have not used my DVRs much at all lately, so even if DISH is in contempt they will not be allowed to disable my DVRs, they in reality are already disabled, as not watched these days. Let's just call it my double jeopardy defense


:lol:


----------



## jacmyoung

kmill14 said:


> You couldn't be more mistaken. Go back and read the Appeals verdict.


I have done so once before at your urge, and proved it was you that did not read or understood, not going to do it again. Remember when you said the injunction never limited the "disabling of the DVR fucntions..." to the Infringing Products? To prove me wrong this time, quote the appeals court yourself here.


----------



## Curtis52

jacmyoung said:


> The notion that the customer will get $2-$3/mo. more a months should not be a concern, Tivo already said they will license to anyone, and they have to do so fairly by law, Tivo can not charge much more than what it charges others. We know how little they charge DirecTV, so that will be what DISH or any others will expect to pay, maybe some minor increase.


TiVo can charge any royalty they want to or refuse to license.

A royalty increases as the value of the patent increases. Thanks to Dish, TiVo's patent is much more valuable after the USPTO reexamination and the trial.



> "Royalty rates may also be affected by *whether a patent is strong* (i.e. broadly written, seemingly valid) or weak; whether it is a fundamental patent or merely a slight improvement on a known technology; whether substitute technologies are available or an ability to work around the patent; the extent of the contribution of the patented technology to the value of the final product" wikipedia


TiVo may decide that negotiating a license exclusively with cable will be more profitable.



> "35 United States Code 271
> 
> "(d) No patent owner otherwise entitled to relief for infringement or
> contributory infringement of a patent shall be denied relief or deemed
> guilty of misuse or illegal extension of the patent right by reason of
> his having done one or more of the following: (1) derived revenue from
> acts which if performed by another without his consent would constitute
> contributory infringement of the patent; (2) licensed or authorized
> another to perform acts which if performed without his consent would
> constitute contributory infringement of the patent; (3) sought to
> enforce his patent rights against infringement or contributory
> infringement; (4) *refused to license or use any rights to the patent*;"


----------



## jacmyoung

Curtis52 said:


> TiVo can charge any royalty they want to or refuse to license.
> 
> A royalty increases as the value of the patent increases. Thanks to Dish, TiVo's patent is much more valuable after the USPTO reexamination and the trial.
> 
> TiVo may decide that negotiating a license exclusively with cable will be more profitable.


But they will not according to Tivo, in public statements, repeated several time. They say they will license to anyone, on reasonable terms.

If you are talking about higher value, then it applies to all licensees, so if you say price of this piece of Tivo's patent increases by 200%, if true, it affects all parties, whether DISH, DirecTV and cable, you really think it is in Tivo's interest to declare that? Tivo will be public enemy #1 if they do that. Tivo already suffers a public image issue, in that people only use Tivo as a verb, not actually using its products, that is evident from their sub reports.


----------



## jacmyoung

Let me also point out several other items that land to my support.

I just pointed to the fact the judgement by this judge included DISH's infringement on a total of 9 claims, even though in reality only two claims are standing, the rest of them were reversed, no longer true, but they remained in the judgement, the appeals court did not order to change that. But obviously if some followup ruling against DISH is based on such letter of the judgement, it must be overturned.

Additionally, the judgement still declares DISH of willful infringement, as ruled by the jury. Such letter is still in there, not changed, but did the judge have to order DISH to pay treble damages and Tivo's attorney fees? No he did not, in fact in his later denial of such payment, he said DISH was not willfully infringing. He did not have to literally follow his own judgement. A judge has wide power to make rulings on his term, as long as it is legal to do so.

The same is true for his injunction.

Also, what the Tivo's fans repeated assertion below points out their interpretation of the law is questionable.

They repeatedly accused DISH of lying, DISH lied not once, but repeatedly, according to them, why? Because DISH said they did not infringe, but were proven wrong, so they lied, angain repeatedly.

But in reality it is of course not true, their interpretation is apparently colored by their own bias, very strong bias, therefore it underminds their credibility.

DISH could not have lied repeatedly, if they did, it would be obstruction of justice on a disproportional scale, Charlie, and his emplyees, and his attorneys, would be sitting in a cell somewhere by now. Some of you actually fantasized such image I know, but they are wrong. It is called rigorous defense, it is legal, it is not lying.

My ponits are, the judge has wide latitude to do what is right, not what is said in the letter of his judgement, injunction, or his anything, there are no literal items here, only those upon his interpretation and according to the information at hand, both from the past and new. My second point is Tivo's fans have proven their interpretation of the law is severely colored by their bias.

You of course can also claim I am severaly biased too, but I challenge anyone to find evidence such as I listed above to prove it.


----------



## Curtis52

jacmyoung said:


> But they will not according to Tivo, in public statements, repeated several time. They say they will license to anyone, on reasonable terms.


I wonder how they would explain that to stockholders:

"Sure we could have just changed our minds and licensed exclusively to cable MSOs and made $500 million more but well... we just didn't want to change our minds."


----------



## jacmyoung

Curtis52 said:


> I wonder how they would explain that to stockholders:
> 
> "Sure we could have just changed our minds and licensed exclusively to cable MSOs and made $500 million more but well... we just didn't want to change our minds."


We can not do that because our goal, and it is in the interest of the investors, to spread the use of our innovation, not to limit it. If we insist a 200% price hike, less and less people will want to use our innovation, keep in mind there are other DVR technologies there, not just our own, we said so ourselves.

Tivo's goal is of course to get in the market at this moment, before even thinking about making a killing.

Another scenario can be, and I think even the Tivo's fans will agree it is possible. If DISH gets its patent approved, they can license it to anyone for free, effectively eliminating Tivo entirely. Tivo's most pressing job is, once a contempt is secured and affirmed on appeal, if even possible, immediately go to everyone and offer them their patent in very acceptable terms, to lock things in place, before DISH does the damage.

But of course the opposite can be true too, DISH's strategy to delay and delay can make it possible to give them time to secure their own patent, and use that against Tivo.


----------



## Curtis52

jacmyoung said:


> We can not do that because our goal, and it is in the interest of the investors, to spread the use of our innovation, not to limit it. If we insist a 200% price hike, less and less people will want to use our innovation,


Volume, volume, volume. What price hike? There are a lot more cable DVRs than Dish DVRs. Analysts have estimated TiVo would get $500 million more from an exclusive cable deal.


----------



## jacmyoung

Curtis52 said:


> Volume, volume, volume. What price hike? There are a lot more cable DVRs than Dish DVRs. Analysts have estimated TiVo would get $500 million more from an exclusive cable deal.


An "exclusive" deal is only good if it is in fact exclusive, like the NFL ST deal, if there are other DVR technologies out there, such as DirecTV's ReplayTV DVRs, and eventually DISH's own DVR technology, how is it even be an "exclusive deal" in a literal sense? Besides, how much confidence do you really have on cable, Comcast has been testing Tivo's boxes for quite some time now, how are they doing?

Not to mention if DISH secures its own patent, they can in theory make it a public domain for anyone to use for free, even claim to provide technical assistance if needed. Don't tell me Charlie can not go to such extreme if he is faced with shutting off his millions of DVRs.

It is all about assessing risks, possibilities, each party must consider all factors, in deciding what is the best step to take next.


----------



## Curtis52

jacmyoung said:


> An "exclusive" deal is only good if it is in fact exclusive, like the NFL ST deal, if there are other DVR technologies out there, such as DirecTV's ReplayTV DVRs, and eventually DISH's own DVR technology, how is it even be an "exclusive deal" in a literal sense?


How? It's quite simple. TiVo would license only to cable. That's what would make it an exclusive deal.


----------



## jacmyoung

Curtis52 said:


> How? It's quite simple. TiVo would license only to cable. That's what would make it an exclusive deal.


Of course you call it an exclusive deal, what I am saying is it has no advantage of a true exclusive deal like the NFL ST deal, because there are many other valid DVR technologies out there in competition, so call it an exclusive deal all you want, there is no added value if the same client can get another deal for free and do the exact same thing.


----------



## Curtis52

jacmyoung said:


> there is no added value if the same client can get another deal for free and do the exact same thing.


That's why TiVo wouldn't sign an exclusive deal unless the terms were acceptable. Nobody would.


----------



## Greg Bimson

jacmyoung said:


> Of course you call it an exclusive deal, what I am saying is it has no advantage of a true exclusive deal like the NFL ST deal, because there are many other valid DVR technologies out there in competition, so call it an exclusive deal all you want, there is no added value if the same client can get another deal for free and do the exact same thing.


I think you need to explain, by answering this question:

If TiVo is able to convince Judge Folsom to grant the contempt motion, what "other valid DVR technologies out there in competition" could the cable companies obtain?

It appears to me that DISH/SATS was a test run for TiVo. If TiVo wins, they may be emboldened by their courtroom win, and start going after any of these "other valid DVR technologies out there in competition".


----------



## James Long

jacmyoung said:


> But they will not according to Tivo, in public statements, repeated several time. They say they will license to anyone, on reasonable terms.


Define reasonable. Tivo may believe it is reasonable to charge DISH $10 per customer per month. DISH may believe 10¢ is reasonable. Between the two there is a number that they could agree on that neither would consider reasonable ... but perhaps they would consider it acceptable.

Finding that number is called negotiation. There have been many times when others have made what they believe were "reasonable" offers, DISH has countered with "reasonable" offers and a stalemate has ensued.


----------



## jacmyoung

Curtis52 said:


> That's why TiVo wouldn't sign an exclusive deal unless the terms were acceptable. Nobody would.


That is why no one else would accept a deal if there are cheaper deals out there.


----------



## jacmyoung

Greg Bimson said:


> I think you need to explain, by answering this question:
> 
> If TiVo is able to convince Judge Folsom to grant the contempt motion, what "other valid DVR technologies out there in competition" could the cable companies obtain?
> 
> It appears to me that DISH/SATS was a test run for TiVo. If TiVo wins, they may be emboldened by their courtroom win, and start going after any of these "other valid DVR technologies out there in competition".


That is why I never just read what DISH said, or what Tivo said, or what some analyst said without my own assessment.

Even if (here we go again) DISH is in contempt, it has nothing to do with DISH's new software patent, if the new software is solid as DISH claims, securing a patent on it is irrelevant to any of the current court proceeding.

If DISH is successful in securing its new patent, they have a valid alternative to compete with Tivo's patent, and also DirecTV's patent from ReplayTV. The only ones Tivo can go after are the cablecos, so why should DISH care? Why should DirecTV care?

Both DISH and DirecTV shoud be more than happy to see Tivo milk the crap out of the cablecos, if indeed that is what you are envision, and when cable in term milk more of their subs, DBS only stands to benefit.

Comcast currently charges $10/mo. for the first HDDVR, and $17/mo. for the second, Charlie can only hope Tivo charge a premium, if Comcast is stupid to pay, that may push the costs to $15/mo. and $20/mo. respectively, and wait and see people drop like flies.

Of course as I said everything hinges on a solid new software that can stand up to the non-infringement test. In that I am not even saying it is difficult to secure a patent. A patent can be secured as long as the innovation fits the requirements, there is no requirement an actual product even exists. Once a patent is secured, DISH will have a potent leverage, as I said Charlie can even make it free to anyone, effectively put an end to Tivo.


----------



## Curtis52

jacmyoung said:


> That is why no one else would accept a deal if there are cheaper deals out there.


Lawsuits are expensive. Ask Dish.


----------



## jacmyoung

James Long said:


> Define reasonable. Tivo may believe it is reasonable to charge DISH $10 per customer per month. DISH may believe 10¢ is reasonable. Between the two there is a number that they could agree on that neither would consider reasonable ... but perhaps they would consider it acceptable.
> 
> Finding that number is called negotiation. There have been many times when others have made what they believe were "reasonable" offers, DISH has countered with "reasonable" offers and a stalemate has ensued.


I'd say around $1 since that is what DirecTV and Comcast are paying.


----------



## jacmyoung

Curtis52 said:


> Lawsuits are expensive. Ask Dish.


Licensing a free patent deal from DISH requires no lawsuit.

The only way I am willing to accept the rosier estimates from the analyst is if he has some insider's information about DISH's new software, such as after some expert evaluation they had concluded it was not likely to be non-infringing. Of course in such case the analyst can not come out and say DISH's new software still infringes, there is liability for saying it.

But short of that, the analyst's estimates based solely on the probability of a contempt ruling is not very convincing to me, but that is just me. And if you look at it in a different angle, the analyst did give DISH a 25% winning chance, if none of those rosy estimates pans out, he is also covered, no one can blame him.

Another problem with his table is he predicted if DISH is not in contempt Tivo's value goes to $0, that is also not reasonable. If DISH is not in contempt, Tivo can seek new software infringement discovery in a new trial, while it will take time, it will not be that long, if Judge Folsom will be presiding over it. If the DISH new software is proven still infringing, then Tivo will have the real advantage. No contempt is not the end of Tivo, as the analyst seemed to suggest.


----------



## Greg Bimson

jacmyoung said:


> Even *if* (here we go again) DISH is in contempt, it has nothing to do with DISH's new software patent, *if* the new software is solid as DISH claims, securing a patent on it is irrelevant to any of the current court proceeding.
> 
> *If* DISH is successful in securing its new patent, they have a valid alternative to compete with Tivo's patent, and also DirecTV's patent from ReplayTV.


That's an awful lot of "if"s.

And I don't disagree, per se. It is possible DirecTV does not have a valid Time Warp patent within the porfolio of IP they purchased from K&M. After all, at one point ReplayTV and TiVo were suing each other, with TiVo suing ReplayTV over the Time Warp patent.

It is even possible that SATS' pending patent requires TiVo's Time Warp patent in order to work. Then what?


James Long said:


> Finding that number is called negotiation. There have been many times when others have made what they believe were "reasonable" offers, DISH has countered with "reasonable" offers and a stalemate has ensued.





jacmyoung said:


> I'd say around $1 since that is what DirecTV and Comcast are paying.


That dollar a month is what the fee would have been if a negotiation had been successful, as DirecTV and Comcast have not been sued by TiVo in order to come to that dollar figure. The belief is that DISH/SATS told TiVo to sue, because DISH/SATS was unwilling to pay. So that suit was started over four and a half years ago.

Now that there has been a positive verdict in favor of TiVo for infringement and now a likely affirmation of contempt, without a single dollar of damages ever being paid, the licensing agreement with DISH/SATS has gone way north of a dollar a month in TiVo's mind.

And DISH is probably again saying they aren't going to have a licensing agreement with TiVo.


----------



## Curtis52

jacmyoung said:


> Licensing a free patent deal from DISH requires no lawsuit.


Yes, Dish wants to help its competitors.


----------



## kmill14

jacmyoung said:


> I'd say around $1 since that is what DirecTV and Comcast are paying.


Part of the reason TiVo got only $1 per from DTV and Comcast was because TiVo had no leverage, and part of that leverage is successfully defended its patent portfolio.


----------



## jacmyoung

Curtis52 said:


> Yes, Dish wants to help its competitors.


If that can save themselve by destroying a threat all together why not?

Have you heard of my enemy's enemy is my friend?


----------



## jacmyoung

Greg Bimson said:


> That's an awful lot of "if"s.
> 
> And I don't disagree, per se. It is possible DirecTV does not have a valid Time Warp patent within the porfolio of IP they purchased from K&M. After all, at one point ReplayTV and TiVo were suing each other, with TiVo suing ReplayTV over the Time Warp patent.
> 
> It is even possible that SATS' pending patent requires TiVo's Time Warp patent in order to work. Then what?That dollar a month is what the fee would have been if a negotiation had been successful, as DirecTV and Comcast have not been sued by TiVo in order to come to that dollar figure. The belief is that DISH/SATS told TiVo to sue, because DISH/SATS was unwilling to pay. So that suit was started over four and a half years ago.
> 
> Now that there has been a positive verdict in favor of TiVo for infringement and now a likely affirmation of contempt, without a single dollar of damages ever being paid, the licensing agreement with DISH/SATS has gone way north of a dollar a month in TiVo's mind.
> 
> And DISH is probably again saying they aren't going to have a licensing agreement with TiVo.


Yes there are a lot of "ifs", your theories also rely on a lot of "ifs". Regardless, you can not deny that all the "ifs" are not dependent on the contempt charge, rather their own merits, therefore to make the contempt charge a pivotal point is unreasonable. It is the infringement issue itself that was a pivotal point, when DISH was found to infringe and ordered to cease by a permanent injunction, that was a crucial moment, and when the DISH's new software is found to infringe some time in the future, that will be another crucial moment.

But I don't disagree at all the contempt battle is a very visible issue that strikes the nerve of the market, and since the market always follow people's nerve, it can have a huge impact, but ultimately it will not make much difference, what will make a difference is whether DISH can prove their new software is as good as they claim it is. That is the bottomline.

Let me put it this way, the analyst gives you 30% of chance to triple your money on 9/4, 30% of chance to double your money, 15% of chance to make no money, and 25% of chance to lose it all.

If you just look at that, it is not that good of an attractive deal.


----------



## Greg Bimson

jacmyoung said:


> Let me put it this way, the analyst gives you 30% of chance to triple your money on 9/4, 30% of chance to double your money, 15% of chance to make no money, and 25% of chance to lose it all.


I don't own TiVo stock, and I am not an analyst. I don't know where you can assume you know me.


----------



## Curtis52

Greg Bimson said:


> It is possible DirecTV does not have a valid Time Warp patent within the porfolio of IP they purchased from K&M. After all, at one point ReplayTV and TiVo were suing each other, with TiVo suing ReplayTV over the Time Warp patent.


Replay TV's patent is about DVR usage of an electronic program guide.


----------



## nobody99

jacmyoung said:


> Let me put it this way, the analyst gives you 30% of chance to triple your money on 9/4, 30% of chance to double your money, 15% of chance to make no money, and 25% of chance to lose it all.


So if TiVo loses the contempt hearing, the stock goes to zero? That's a pretty amazingly stupid comment.

And how are the people around DISH feeling about it? Anyone worried about losing their jobs? Are you?


----------



## Curtis52

jacmyoung said:


> If that can save themselve by destroying a threat all together why not?
> 
> Have you heard of my enemy's enemy is my friend?


Licensing a patent for free (if they ever get one) would not benefit Dish in any way. It would only help their competitors. Besides, if they get a patent, they probably don't infringe. That wasn't the scenario being discussed.


----------



## James Long

Perhaps not for free, but for something less than Tivo?


----------



## Jim5506

Outcome of the contempt hearing is not that important - the appeal results (from whichever side loses) will be more important.


----------



## Curtis52

Jim5506 said:


> Outcome of the contempt hearing is not that important - the appeal results (from whichever side loses) will be more important.


If dish gets ruled in contempt, the question of a stay pending appeal is somewhat important.


----------



## Jim5506

Curtis52 said:


> If dish gets ruled in contempt, the question of a stay pending appeal is somewhat important.


And will probably be granted by the appellate court, since not granting the stay would be so draconian.


----------



## jacmyoung

James Long said:


> Perhaps not for free, but for something less than Tivo?


Not to mention Echostar as a manufacturing co has already said they will make hardware for anyone.

Look I am only speaking in terms of DISH having to face the possibility of loss of $2.3 billion as estimated by the analyst, in such scenario, of course DISH will do anything to combate it, including making its DVR patent more attractive to the clients than Tivo's offer, as a way to put Tivo out of business, in effect eliminating the risk of losing that potential $2.3 billion in the long term.


----------



## jacmyoung

Curtis52 said:


> If dish gets ruled in contempt, the question of a stay pending appeal is somewhat important.


I have never seen a contempt ruling in effect without allowing the appeal to complete. In fact often times even after a contempt ruling was upheld on appeal, there was still much question as how the punishment could be carried out and to what extent. Very often the courts were relunctent in that aspect, that is why you read the story of an infringer found in contempt 4 times before the court actually imposed some form of "pre-approval" process to keep things under control. Therefore even if you are convinced DISH is like that infringer that will continue to make bad faith attempt to workaround the Tivo patent, how long do you think it would take for the court to reach 4 contempt citations?


----------



## James Long

Being found in contempt and receiving a penalty are separate things.

DISH could be found in contempt and have the judge impose no immediate penalty for violating the injunction. Finding DISH in contempt is only letting DISH know that the court does not accept their actions. The court could also rule that DISH is not in contempt but still instruct DISH further on how to better obey the injunction.

If the judge does order an immediate penalty or action DISH can easily ignore it. What is the court going to do? Find them in contempt again and again? The risk is that if higher and higher courts refuse to stay any penalty the penalty will increase. But I'm sure DISH will take that into account when they decide how to react to a negative ruling.

Of course, they could still be found not in contempt.


----------



## Curtis52

jacmyoung said:


> Look I am only speaking in terms of DISH having to face the possibility of loss of $2.3 billion as estimated by the analyst, in such scenario, of course DISH will do anything to combate it, including making its DVR patent more attractive to the clients than Tivo's offer, as a way to put Tivo out of business, in effect eliminating the risk of losing that potential $2.3 billion in the long term.


Again, if Dish had a patent, they probably wouldn't infringe. If that's the case they wouldn't be stuck without a DVR even if TiVo refuses to license to them. That's not the loss scenario the analyst discussed. The analyst didn't predict a $2.3 billion loss for Dish anyway. He predicted a $2.3 billion gain for TiVo. Messy logic.


----------



## kmill14

Curtis52 said:


> Again, if Dish had a patent, they probably wouldn't infringe. If that's the case they wouldn't be stuck without a DVR even if TiVo refuses to license to them. That's not the loss scenario the analyst discussed. The analyst didn't predict a $2.3 billion loss for Dish anyway. He predicted a $2.3 billion gain for TiVo. Messy logic.


Having your own patent does not mean you can't be ruled to still infringe in a court of law.


----------



## jacmyoung

Curtis52 said:


> Again, if Dish had a patent, they probably wouldn't infringe. If that's the case they wouldn't be stuck without a DVR even if TiVo refuses to license to them. That's not the loss scenario the analyst discussed. The analyst didn't predict a $2.3 billion loss for Dish anyway. He predicted a $2.3 billion gain for TiVo. Messy logic.


He at least predicted $800 million DISH loss, and even with that amount DISH may still use its new patent to prevent such high loss, by making its patented DVR technology available to anyone who which to use it, backed up by its full manufacturing support. For example, they can get back to work with ATT to make an example of the new DVR patent at much lower cost than any Tivo patent based DVRs. Not to mention using its own DVRs to fight back at Tivo, by not only saying "better than Tivo" but "at 1/10 of the monthly cost".

It is all about using one's own leverage to minimize threat from the rival. Don't tell me if Tivo keeps going down the path of forcing DISH to turn off millions of DVRs, and when and if DISH's new patent is approved DISH will not use it as a counter measure. They may not depending on the conditions at the time, but they can certainly use it.


----------



## jacmyoung

kmill14 said:


> Having your own patent does not mean you can't be ruled to still infringe in a court of law.


Correct, but the chance of a successful one is very much diminished, not to mention DISH can counter-sue. Will it be worth another fight?


----------



## Curtis52

jacmyoung said:


> Not to mention using its own DVRs to fight back at Tivo, by not only saying "better than Tivo" but "at 1/10 of the monthly cost".


So Dish will get some kind of "revenge" by not only giving away licenses to their competitors, but also dropping their own DVR fee. Talk about shooting yourself in the foot. They would not gain anything and their stockholders would lynch them.


----------



## jacmyoung

Curtis52 said:



> So Dish will get some kind of "revenge" by not only giving away licenses to their competitors, but also dropping their own DVR fee. Talk about shooting yourself in the foot. They would not gain anything and their stockholders would lynch them.


I of course was not saying in termd of revenge rather courter measures, as in real time, while Tivo is pressing for the shut off of millions of DISH's DVRs, not after the fact, I thought I did not have to spell out each of my underlying premises.

Even if DISH is in contempt, we can expect at least a 6 month fight moving forward, including the appeal. Six months is a long time, many things can happen, DISH can be granted a patent. Faced with the threat of having to shut off millions of its DVRs, please don't tell me Charlie will not use anything in his arsonal to prevent such from happening.

He already established Echostar manufacturing company to directly compete in the open DVR market, not just in DBS business. The OTA-only DVR box will be the first of such items waiting in the pipe line, DISH has been saying "better than Tivo" for a long time and continue to say so. Why? To undermine Tivo's credibility in a direct effort to show Tivo DISH's strategy is that of not just dragging it out on the lawsuit, but to actively and directly compete with Tivo in one of Tivo's core markets. And to further expand its effort if necessary into cable market is of course not impossible.

One way to win is to win the next battle in the court room, but there are other ways too. DISH has already shown its intention clear, so do not rule out anything.


----------



## jacmyoung

Now I will try to speculate what Tivo will say in its 10-page response due next week.

Since Tivo's face of injunction argument relies little on evidence rather is a matter of interpretation of the injunction and the law, and as evident from both Tvio's motion and Tivo's supporters, there is not much of case law for support either, therefore not surprisingly Tivo devoted a lot of time to try to attack DISH's credibility, an ad hominem actic as pointed out by DISH.

But Tivo will likely to continue on such pass, because there in fact are many inconsistencies in DISH's statements. Tivo should try to establish the notion that DISH may not have as good a new software as DISH had claimed. Even though Tivo refused to discuss the new software on 9/4, it will be discussed, regardless Tivo is successful or not on 9/4. The majority of the DISH DVRs are actually non adjudicated DVRs, Tivo wants to shut them off too, and to do so Tivo can attack the new software or at least begin to lay some ground work.

Besides the fact DISH failed to provide Tivo its new software information in a way that was meaningful, DISH's own account of the event appeared inconsistent.

DISH in 5/30 meeting brief stated they downloaded the non-infringing software right before the injunction was to be in full force in 4/08, but in the latest response the timeline changed to mid-2006 to mid-2007. While DISH claimed they have an written opinion of a patent law firm on their new software, it was an opinion based on concept only, before DISH even had the new software product. A concept is only good for filing a patent application, not to clear DISH in court of continued infringement.

We had some report of some DP522s experiencing DVR issues after some new software update, the time table fitted DISH's claimed new softawre download effort in 06 and 07, but the problems seemed magically disappeared soon. One can say DISH figured out ways to improve the new software, all it is possible the new software did not work, and they returned them to the old software, there is no evidence yet, because DISH did not offer any yet.

Another thing is, DISH only applied the patent in 08, why did they wait so long? They had the patent firm's opinion back in 06, they could have applied for a patent then, right after they downloaded the new software. This also may explain DISH might not have as a smooth time to develop such new software, or it is even possible they still don't have it.

Another possibility is, that the new software could not be used on the adjudicated DVRs, since those DVRs were designed based on using the Tivo method. The new software has a much higher demand on the CPU power. But the newer DVRs, such as the 622s and 722s, were designed after the jury verdict, and probably can handle the new software, which was why DISH only applied the patent in 08.

All the above of course have no bearing on the face of injunction contempt argument, so it is only an attempt to speculate what the weakness in DISH's statements Tivo might want to explore.


----------



## phrelin

jacmyoung said:


> I of course was not saying in termd of revenge rather courter measures, as in real time, while Tivo is pressing for the shut off of millions of DISH's DVRs, not after the fact, I thought I did not have to spell out each of my underlying premises.
> 
> Even if DISH is in contempt, we can expect at least a 6 month fight moving forward, including the appeal. Six months is a long time, many things can happen, DISH can be granted a patent. Faced with the threat of having to shut off millions of its DVRs, please don't tell me Charlie will not use anything in his arsonal to prevent such from happening.
> 
> He already established Echostar manufacturing company to directly compete in the open DVR market, not just in DBS business. The OTA-only DVR box will be the first of such items waiting in the pipe line, DISH has been saying "better than Tivo" for a long time and continue to say so. Why? To undermine Tivo's credibility in a direct effort to show Tivo DISH's strategy is that of not just dragging it out on the lawsuit, but to actively and directly compete with Tivo in one of Tivo's core markets. And to further expand its effort if necessary into cable market is of course not impossible.
> 
> One way to win is to win the next battle in the court room, but there are other ways too. DISH has already shown its intention clear, so do not rule out anything.


I think I 've mentioned this in the old thread, but Charlie is #27 on the Forbes list of the 400 richest Americans. They say he's worth $10.2 billion. By contrast, they list Rupert Murdoch and George Soros tied for #33.

I have the greatest respect for Geoffrey Yang, the largest individual TiVO shareholder, but he doesn't even appear on Forbes list of of The Worlds 1,125 Billionaires while Charlie is #87. Tom Rogers, TiVo's CEO, isn't even a real player at this altitude.

Charlie Ergen is Echostar.

When you decide to sue someone among the top 100 billionaires in the world, your business better be bulletproof or you better be among the top 100 billionaires. Echostar could sue a subsidiary of News Corp. and win (sort of) and not be too worried about Rupert Murdoch. TiVo shouldn't sue anyone whose net worth is more than double its, much less Charlie Ergen. It's just dumb.:nono2:


----------



## Curtis52

jacmyoung said:


> Even if DISH is in contempt, we can expect at least a 6 month fight moving forward, including the appeal. Six months is a long time, many things can happen, DISH can be granted a patent. Faced with the threat of having to shut off millions of its DVRs, please don't tell me Charlie will not use anything in his arsonal to prevent such from happening.


How would giving away free licenses help Dish? I just don't get it. By the way, Dish's patent is in Dept. 2600 "Communications" at USPTO. Applications in that dept. are takng four years as of 2007. Dish might get a decision on their patent in late 2010.


----------



## Curtis52

jacmyoung said:


> Another thing is, DISH only applied the patent in 08


Please check your facts before posting.


----------



## jacmyoung

phrelin said:


> ... It's just dumb.:nono2:


Smaller companies had sued bigger ones such as Microsoft and won big.

Tivo at a minimum will get over $100 million plus any enhenced damages, not a small chunck of change even by today's standard.

I agree with you in a sense that Charlie is a whole different animal on this planet to deal with, he has proven to be unconventional, which makes it difficult to speculate what may happen next.

The Tivo fans had cheered the end of the battle several times, when the jury verdict was in, they thought it was over, DISH would settle, it did not happen, before the judgement they thought Tivo would have taken DISH to the cleaner with treble damages and legal fees, they did not get them, they thought DISH would have to shut off the DVRs then, yet it dragged out over a year, they thought by 5/30/08 DISH would have caved in, all should be over, it did not.

Now they are convinced, as well as some analysts, that by 9/4/08, it will finally be the judgement day. But their past performance in predicting the future of this trial has been miserable, because my 625 is still dancing along just fine, in fact so fine and stable lately I kinda miss the old days when some of our DISH hardware had to be reset from time to time.


----------



## nobody99

phrelin said:


> TiVo shouldn't sue anyone whose net worth is more than double its, much less Charlie Ergen. It's just dumb.:nono2:


Let's revisit that thought a year or two from now. I think you'll find it was not dumb at all.:lol:


----------



## Nomo

DISH's patent means nothing because ultimately Folsom will be the one to rule on the workaround. The judge always trumps the USPTO. The USPTO doesn't go through the degree of scrutiny that a judge and appeals courts will. Just look at RIMM for one example where the USPTO and the courts disagreed.

Bottom line, TiVo is focused on the boxes under the original court case. Once the injunction/contempt are ruled upon, they will then brief and then schedule a hearing on equivalents and more boxes will be at risk of falling under the injunction. 

Your guesses are as good as mine, but I'm guessing that stubborn Charlie Ergen will lose on all counts (consistent with the rest of the trial). Morgan Chu's intelligence will trump Ergen's bank account any day of the week and twice on Sunday.


----------



## jacmyoung

I think we can admit, even the Tivo fans can, that if the Tivo fans' interpretation of the letter of the injunction is correct, this injunction would be too broad, more so than many others, for example compared to the Footprint 2.0, where it specifically referred to the service tried during the trial.

Yet they say since DISH did not contest the letter of the injunction on appeal, and since the appeals court affirmed the letter of the injunction, it is too late. DISH must follow it, accroding to Tivo fans' interpretation.

Not so. Because in every case where the infringer contested the letter of the injunction, the appeals court made it clear, that an injunction can not specifically include anything that is not already covered, adjudicated, or admitted during the trial. Whenever such was true, the appeals court had always instructed the district court to modify the letter of the injunction to comply with the rules.

Therefore the only reason the appeals court reaffirmed this injunction as is, was because they interpreted the letter of the injunction the way I did, that is the DVR functions (i.e. all...) must have been interpreted by the appeals court as to refer to those discussed, adjudicated or admitted during the trial, if not the appeals court would have asked the judge to modify it, becasue if not, the appeals court would have contradicted its own standard. Or even if it is true the appeals court had overlooked such item, and affirmed it, if as a result DISH is found in contempt, on appeal, the same appeals court will have to overturn it to keep its own rule intact.

No the prior cases I alluded to above were not about "new devices", or "modified devices not used before", but were specifically related to answering the question, and the question alone, whether anything that had *not* been already admitted, discussed, or adjudicated during the trial, might be included in the letter of the injunction, the answer is no.

Therefore the only logical explanation is, "*the* DVR functionality (i.e. all storage and playback...from the hardrive...)" must refer to those already discussed and settled during the trial, not any DVR fucntions not talked about during the trial, such as the DVR functions under the new software, or the DVR functions under the DirectV software for example, anything not tried during the trial, can not be included in this injunction.


----------



## kmill14

jacmyoung said:


> [...]the appeals court made it clear, that an injunction can not specifically include anything that is not already covered, adjudicated, or admitted during the trial. Whenever such was true, the appeals court had always instructed the district court to modify the letter of the injunction to comply with the rules.
> 
> Therefore the only reason the appeals court reaffirmed this injunction as is, was because they interpreted the letter of the injunction the way I did, that is the DVR functions (i.e. all...) must have been interpreted by the appeals court as to *refer to those* discussed, adjudicated or admitted during the trial [...]


*To those what?* If you are talking about items "adjudicated" during the trial, you need to stick to the 8 products, since it was those 8 products that were ruled to infringe.



jacmyoung said:


> Therefore the only logical explanation is, "*the* DVR functionality (i.e. all storage and playback...from the hardrive...)" must refer to those already discussed and settled during the trial, not any DVR fucntions not talked about during the trial, such as the DVR functions under the new software, or the DVR functions under the DirectV software for example, anything not tried during the trial, can not be included in this injunction.


Madness. Just to play along, if you are admitting that the specific functionality that equals "storage to and playback of TV data from the hard-drive" has already been ruled on to infringe, how can you implement other DVR functions that don't require "storage to and playback of TV data to the hard-drive"??


----------



## Greg Bimson

jacmyoung said:


> Therefore the only logical explanation is, "the DVR functionality (i.e. all storage and playback...from the hardrive...)" must refer to those already discussed and settled during the trial, not any DVR fucntions not talked about during the trial, such as the DVR functions under the new software, or the DVR functions under the DirectV software for example, anything not tried during the trial, can not be included in this injunction.


The only logical explanation is "the DVR functionality" refers to those models already adjudicated and found infringing.

The reality is that DISH/SATS is trying to find a way to take the four million models found infringing and take them out of scope of the injunction, somehow.

Realize that by removing "the DVR functionality" of the eight adjudicated products, that those products would no longer infringe, yet still be under oversight of the injunction.


jacmyoung said:


> No the prior cases I alluded to above were not about "new devices", or "modified devices not used before", but were specifically related to answering the question, and the question alone, whether anything that had not been already admitted, discussed, or adjudicated during the trial, might be included in the letter of the injunction, the answer is no.


A device in the hands of a subscriber that already was found infringing has already been admitted, discussed, and then adjudicated. Just because something _might_ have been changed on that model does not mean the possible changes negate the injunction.


----------



## Herdfan

Nomo said:


> Bottom line, TiVo is focused on the boxes under the original court case. Once the injunction/contempt are ruled upon, they will then brief and then schedule a hearing on equivalents and *more boxes will be at risk of falling under the injunction*.


Which is why somebody in upper management needs to tie CE up and keep him tied up until he agrees to settle. It is getting to the point where E* has far more to lose that TiVo.

People keep mentioning how rich CE is, so why does he not just pay the little dog yipping at his ankles to go away. He won't miss a meal or a ride in his jet.

OTOH, what WOULD happen to E* IF a couple of years down the road E* does really have to shut off ALL of its DVR's. CE might not be on that list anymore.


----------



## Nomo

Herdfan said:


> Which is why somebody in upper management needs to tie CE up and keep him tied up until he agrees to settle. It is getting to the point where E* has far more to lose that TiVo.


If this goes on long enough, maybe TiVo will end up owning E*??? :grin:


----------



## jacmyoung

Greg Bimson said:


> ... that those products would no longer infringe, yet still be under oversight of the injunction....


Do you even realize the above statement contradicts the court's opinion head on? That without infringement, contempt of an injucntion on infringement simply can not be?


----------



## phrelin

nobody99 said:


> Let's revisit that thought a year or two from now. I think you'll find it was not dumb at all.:lol:


In one sense, I hope you're right as TiVo offers competition. But if you're wrong, TiVo is dead. Not one signal provider will need them and most will fear the attitude that resulted in the suit rather than a negotiated arrangement. And, as noted by someone in a post above, Charlie is ready to make big inroads into TiVo's OTA market.


----------



## Curtis52

phrelin said:


> In one sense, I hope you're right as TiVo offers competition. But if you're wrong, TiVo is dead. Not one signal provider will need them and most will fear the attitude that resulted in the suit rather than a negotiated arrangement. And, as noted by someone in a post above, Charlie is ready to make big inroads into TiVo's OTA market.


Tony Wible (Citi):



> "While we believe TIVO has a good chance of prevailing in this last hearing, a
> loss to DISH would initially hurt the stock as investors would question
> TIVO's ability to win business without intellectual property ('the stick'
> approach). We would use any dip as an opportunity to buy as we disagree with
> this assessment. TIVO should continue to garner more business because it
> makes a better DVR and has a major opportunity to grow through existing deals
> (i.e. no new deals are required to fuel growth and are not in our current
> price target or model). TIVO's product helps MSO's improve ARPU, SAC,
> Churn, and market share ('the carrot' approach). We see TIVO continuing to
> benefit from its Cox, Comcast, and Seven deals and as having an opportunity
> to grow through new international deals and DVR advertising, which we
> believe can be as big as or bigger than the core DVR business longer term.
> In essence, we like the risk/reward on the trial as: 1) a negative outcome
> would not change our target or estimates, and 2) a positive outcome could
> greatly ramp the business model."


----------



## James Long

jacmyoung said:


> Greg Bimson said:
> 
> 
> 
> ... that those products would no longer infringe, yet still be under oversight of the injunction....
> 
> 
> 
> Do you even realize the above statement contradicts the court's opinion head on? That without infringement, contempt of an injucntion on infringement simply can not be?
Click to expand...

This court's opinion?

You're not reading Greg's statement correctly anyways. Here is a scenario:
1) Imagine an injunction written the way you want it ... with "as configured" specified.
2) Imagine a product that infringes, is ruled infringing and is named by that injunction "as configured".
3) Imagine a violator that modifies the product ... no longer operating it "as configured" ... and is ruled by the court as not in contempt.
4) Imagine if a month later the violator decides the original product works better ... and returns the product to the same setup "as configured" at the time they were found to be infringing.

If this happens, the plaintiff CAN return to the court and use the existing injunction to seek relief. They are NOT required to start a new case over previously adjudicated products. The court MAINTAINS oversight over those products.

Understand?


----------



## nobody99

phrelin said:


> Charlie is ready to make big inroads into TiVo's OTA market.


Ok, a vaporware product that was supposed to be out already, that doesn't work with anything but OTA? Seriously, that's the "big inroad?" More like a country dirt road.


----------



## kmill14

E* has a long way to go to compete with TiVo in the stand-alone market.


----------



## phrelin

There you all go underestimating the billionaire.


----------



## jacmyoung

James Long said:


> This court's opinion?


No, the court that can over rule this court.



> Understand?


No, unless you can find one single prior case that used the same logic to argue that "*the* DVR fucntionality" can refer to those other than the one tried during the trial.


----------



## jacmyoung

Curtis52 said:


> Tony Wible (Citi):


Well then you need to suggest they correct the table because it says if DISH is not in contempt, Tivo is down to $0, as dead.


----------



## Greg Bimson

Greg Bimson said:


> ... that those products would no longer infringe, yet still be under oversight of the injunction....





jacmyoung said:


> Do you even realize the above statement contradicts the court's opinion head on? That without infringement, contempt of an injucntion on infringement simply can not be?


Nice hatchet job on my quote...


Greg Bimson said:


> *Realize that by removing "the DVR functionality" of the eight adjudicated products*, that those products would no longer infringe, yet still be under oversight of the injunction.


Because those models, i.e., the "Infringing Products", have already been adjudicated.

Instead, we get "the current DVR's must infringe, or there can be no contempt." Hello? The eight models listed were found to infringe. So DISH/SATS plan was to change something on them. Those *possible* changes aren't being addressed in this contempt hearing.

The courts don't take too kindly to someone trying to game their system. Just because an appeal was filed to stay the injunction doesn't mean DISH/SATS gets to do whatever they want. If DISH/SATS wants the eight Infringing Products to be out of the scope of the injunction, then DISH/SATS has to address the court as to why those products should be removed from the injunction. That hasn't happened, yet.


----------



## kmill14

"the DVR functionality" in question is the ability to write TV data to the hard-drive. If the products already adjudged can still write TV data to the hard-drive, then they are in contempt of the order.

How hard is that to understand?


----------



## nobody99

jacmyoung said:


> Well then you need to suggest they correct the table because it says if DISH is not in contempt, Tivo is down to $0, as dead.


Yeah, ok, that's what the report says. You might consider a remedial reading course


----------



## jacmyoung

Greg Bimson said:


> ...Instead, we get "the current DVR's must infringe, or there can be no contempt." Hello? ...


Absolutely, that is exactly what the sentence below means:

Infringement is the sine quo non of violation of an injunction on infringement.


----------



## jacmyoung

nobody99 said:


> Yeah, ok, that's what the report says. You might consider a remedial reading course


As usual you care not to understand what I said, I said that was what the anaylst's table says, so if his report says otherwise, please correct that table.

That big smiley did not hide the fact you did not understand what I said.


----------



## jacmyoung

kmill14 said:


> "the DVR functionality" in question is the ability to write TV data to the hard-drive. If the products already adjudged can still write TV data to the hard-drive, then they are in contempt of the order.
> 
> How hard is that to understand?


"The DVR fucntionality" in qestion is the ability to write TV data to the harddrive, *by the software that infringed*.

If the products already adjudicated can still write TV data to the harddrive in a way that does not infringe, then they are not in contempt.

"Infringement is the sine quo non of violation [contempt] of an injunction on infringement." Brackets added this time, not parentheses.


----------



## kmill14

jacmyoung said:


> "The DVR fucntionality" in qestion is the ability to write TV data to the harddrive, *by the software that infringed*.


"By the software that infringed? Do you realize what you just said? There was no trial that had anything to do with software, and there certainly was no verdict that mentioned infringing software. 
There is no software version mentioned in the trial, the appeal, OR the verdict. 
One again, you have completely put your foot in your mouth with that statement.


----------



## nobody99

jacmyoung said:


> Well then you need to suggest they correct the table because it says if DISH is not in contempt, Tivo is down to $0, as dead.





jacmyoung said:


> As usual you care not to understand what I said, I said that was what the anaylst's table says, so if his report says otherwise, please correct that table.





Citigroup Report said:


> If TiVo Loses
> 
> While we believe TIVO has a good chance of prevailing in this last hearing, a loss to DISH would initially hurt the stock as investors would question TIVO's ability to win business without intellectual property ('the stick' approach). We would use any dip as an opportunity to buy as we disagree with this assessment. TIVO should continue to garner more business because it makes a better DVR and has a major opportunity to grow through existing deals (i.e. no new deals are required to fuel growth and are not in our current price target or model). TIVO's product helps MSO's improve ARPU, SAC, Churn, and market share ('the carrot' approach). We see TIVO continuing to benefit from its Cox, Comcast, and Seven deals and as having an opportunity to grow through new international deals and DVR advertising, which we believe can be as big as or bigger than the core DVR business longer term. In essence, we like the risk/reward on the trial as: 1) *a negative outcome would not change our target or estimates*, and 2) a positive outcome could greatly ramp the business model.


jacmyoung, serious, maybe you should read the chart a little more carefully. The "value per share" is the discounted value of future cash flows. It is *in addition to* Citi's current target price of $11.50 a share.

Are you willing to admit your complete misunderstanding of the report? :lol:


----------



## Nomo

kmill14 said:


> "the DVR functionality" in question is the ability to write TV data to the hard-drive. If the products already adjudged can still write TV data to the hard-drive, then they are in contempt of the order.
> 
> How hard is that to understand?


Umm... Man, KMill, could you make it any clearer? :nono:

Fact is that Folsom didn't mention software functions in his explicit example of "DVR Functionality". He said disable writing to the harddrive. That product was not allowed to run. Another example in simpler terms would be to say a judge put an injunction on a model of a PC. Let's say my Dell Inspirion. And say the injunction says to not write to the harddrive. It doesn't matter if Dell goes and takes off my screwed up Microsoft Vista and replaces it with something different (and maybe better). The software was not allowed to run. The injunction does not mention the software. The "workaround" is only software. Therefore E* is in contempt.

E* had the opportunity to request the court to amend the injunction for their solution. This would have been acting in good faith. But the court wasn't notified. What Folsom intended was to have these DVR's removed. E* had the opportunity to disable the DVR capability turning DVR's into simple receivers and then eventually they could replace them over some period of time with a nonInfringing box. But E* made up some radically different interpretation of the injunction to suit their desires. Completely disabling the DVR's permanently was a remedy in Folsom's discretion and that is what the injunction says. DISH doesn't argue that Folsom abused his discretion by permanently disabling the DVR's. They just try to say that all he meant was to disable them for a minute or two so that they could upload some different software.

Sorry, but E* has no chance with Folsom on this upcoming hearing. Their only hope is that they can keep the workaround alive on new boxes and possibly survive another trial. The workaround seems very weak to me and I think if they try to fight it will just eventually be found to infringe as well.


----------



## Nomo

jacmyoung said:


> As usual you care not to understand what I said, I said that was what the anaylst's table says, so if his report says otherwise, please correct that table.
> 
> That big smiley did not hide the fact you did not understand what I said.


What part is unclear from the title of the chart?

"Figure 4. Probability Weighted Opportunity from Legal Proceedings Earnings Perpetuity Value "

This is perpetuity value that we are talking about. The already part Tivo already won (barring Supreme Court intervention) will be a lump sum. That is why you see $0 in the table for the Dish Wins part.


----------



## Greg Bimson

jacmyoung said:


> Infringement is the sine quo non of violation of an injunction on infringement.


And that only relates to a modified, unadjudicated device.


----------



## James Long

jacmyoung said:


> Understand?
> 
> 
> 
> No, unless you can find one single prior case that used the same logic to argue that "*the* DVR fucntionality" can refer to those other than the one tried during the trial.
Click to expand...

Non responsive. My post was about how products remain under the control of the court regardless of if they cease infringing. It is obvious that you didn't bother to read my post as "the" DVR functionality was not discussed at all. So in effect you are posting that you don't understand my post because you didn't bother to read it.

Reading is fundamental!


jacmyoung said:


> "The DVR fucntionality" in qestion is the ability to write TV data to the harddrive, *by the software that infringed*.


Nope. The DVR functionality in question is writing TV data to a hard drive by the eight named PRODUCTS. The injunction isn't against the software, it is against the PRODUCTS.


> "Infringement is the sine quo non of violation [contempt] of an injunction on infringement." Brackets added this time, not parentheses.


Was that today's entry on your legal "quote of the day" calendar?


----------



## Curtis52

Greg Bimson said:


> And that only relates to a modified, unadjudicated device.


... as long as they change the model number. LOL

If it's in front of an appeals court how is it unadjudicated?


----------



## Jim5506

Somebody keeps talking about "adjudicated boxes" but the hardware verdict was remanded and only the software infringement was upheld, so literally there are NO "adjuducated boxes", only "adjuducated software".

I suppose you could call the software a "box" in the loosest of terms, but according to Dish those "boxes" have been turned off. 

Currently the hardware, the boxes are not adjuducated to be infringing , only the software they run.

SO... when Dish turned off the infringing software, reloaded the unknown software and rebooted the hardware, the adjuducated software remained off, the new, unknown software was turned on.

Quite a neat shell game by Charlie, et al.


----------



## nobody99

Jim5506 said:


> Somebody keeps talking about "adjudicated boxes" but the hardware verdict was remanded and only the software infringement was upheld, so literally there are NO "adjuducated boxes", only "adjuducated software".


Please read the injunction. Please quote the part that says either "hardware" or "software."


----------



## jclewter79

I think after this is settled and finished for good, you will possibly see a drop in the price of E* DVR fee. I also think you will see more agressive advertising against tivo, more than "just better than tivo". Tivo might get paid a one time settlement but never a ongoing fee paid. If the new software infringes Charlie will find a way to make sure it does not. Tivo does not own the right to record video and audio onto a hard drive.


----------



## Curtis52

Jim5506 said:


> Somebody keeps talking about "adjudicated boxes" but the hardware verdict was remanded and only the software infringement was upheld, so literally there are NO "adjuducated boxes", only "adjuducated software".
> 
> I suppose you could call the software a "box" in the loosest of terms, but according to Dish those "boxes" have been turned off.
> 
> Currently the hardware, the boxes are not adjuducated to be infringing , only the software they run.
> 
> SO... when Dish turned off the infringing software, reloaded the unknown software and rebooted the hardware, the adjuducated software remained off, the new, unknown software was turned on.
> 
> Quite a neat shell game by Charlie, et al.


You are correct. The judge only required that the software be changed:



> "Defendants do not dispute that, with software updates transmitted directly to the infringing products, the DVR capabilities of the infringing products can be disabled."


----------



## James Long

Curtis52 said:


> You are correct. The judge only required that the software be changed:
> 
> 
> 
> "Defendants do not dispute that, with software updates transmitted directly to the infringing products, the DVR capabilities of the infringing products can be disabled."
Click to expand...

No ... the judge required that the DVR functionality be disabled. DISH acknowledges that the DVR functionality can be disabled via software (as opposed to recall or techs visiting customer's home with sledgehammers) and apparently the judge accepts a software change as a method of disabling said DVR functionality - but the judge's requirements go beyond "a" software change. They specify a specific outcome - _*DVR functionality disabled*_.


----------



## Greg Bimson

Jim5506 said:


> Somebody keeps talking about "adjudicated boxes" but the hardware verdict was remanded and only the software infringement was upheld, so literally there are NO "adjuducated boxes", only "adjuducated software".


Hmm. There are hardware claims and software claims. Now, only the software claims are considered infringing.

Infringing software claims <> software is infringing

Nice try, though. How about this one?

DP-501 <> software
Injunction = DP-501 (+7 more)

Therefore, Injunction (+7 more) <> software.

The injunction is not on the software.

Keep up with those leaps of faith.


----------



## Greg Bimson

jclewter79 said:


> If the new software infringes Charlie will find a way to make sure it does not. Tivo does not own the right to record video and audio onto a hard drive.


TiVo never said they did "own the right to record video and audio onto a hard drive." That is not TiVo's patent.


----------



## Nomo

Jim5506 said:


> Somebody keeps talking about "adjudicated boxes" but the hardware verdict was remanded and only the software infringement was upheld, so literally there are NO "adjuducated boxes", only "adjuducated software".


There a number of claims in the patent divided into "hardware" and "software". It is clear that in some of these claims both are intertwined. If E* only violates some of the claims, the verdict is the same. It takes only one claim to infringe on a patent. Read the appeals court opinion for more info. If you aren't informed everything can APPEAR to be a shell game... really Ergen is just one desparate fool used to getting everything his way. Too bad intelligence trumps money every day of the week.


----------



## Nomo

James Long said:


> No ... the judge required that the DVR functionality be disabled. DISH acknowledges that the DVR functionality can be disabled via software (as opposed to recall or techs visiting customer's home with sledgehammers) and apparently the judge accepts a software change as a method of disabling said DVR functionality - but the judge's requirements go beyond "a" software change. They specify a specific outcome - _*DVR functionality disabled*_.


Curtis52, correct me if I am wrong but James I believe Curtis is agreeing with you... as in the software should be changed to disable the DVR. E* had it easy, the change was given to them directly by the judge...

But oops... Folsom didn't say Simon Says! That will likely be E*'s next argument.:lol:


----------



## jacmyoung

nobody99 said:


> jacmyoung, serious, maybe you should read the chart a little more carefully. The "value per share" is the discounted value of future cash flows. It is *in addition to* Citi's current target price of $11.50 a share.
> 
> Are you willing to admit your complete misunderstanding of the report? :lol:


If that is your interpretation, that is fine, but then are you ready to declare Tivo's value will not decline if DISH is not in contempt?


----------



## jacmyoung

Greg Bimson said:


> And that only relates to a modified, unadjudicated device.


Not true at all, the same court also said:

A contempt can not be a sword against an infringer for making a good faith effort to *modify the adjudicated devices* in order to stay in the market place.


----------



## jacmyoung

Curtis52 said:


> ... as long as they change the model number. LOL
> 
> If it's in front of an appeals court how is it unadjudicated?


Well it depends, that is exactly why the court has always repeatedly said about both the adjudicated and the ones only colorably different than the adjudicated in one sentence, to cover all bases.

The infringer is allowed to modify the adjudicated devices, as long as the workaround is legitimate.

But just because a device is in front of the judge it does mean it is automatically an adjudicated device, if such device has never been adjudicated in the past, than it is not an adjudicated device, in that case the colorable difference test will be used.

But an adjudicated device itself can most certainly be modified to be taken out of the scope of the injunction, and being rendered non-infringing after the modification, and the court said in that case there shall not be a contempt.


----------



## Curtis52

jacmyoung said:


> But just because a device is in front of the judge it does mean it is automatically an adjudicated device, if such device has never been adjudicated in the past, than it is not an adjudicated device, in that case the colorable difference test will be used.


How does a device go before an appeals court judge if it has not been adjudicated in a district court?


----------



## nobody99

jacmyoung said:


> If that is your interpretation, that is fine, but then are you ready to declare Tivo's value will not decline if DISH is not in contempt?


You are just incapable of being wrong, aren't you?



jacmyoung said:


> Well then you need to suggest they correct the table because it says if DISH is not in contempt, Tivo is down to $0, as dead.


----------



## jacmyoung

Curtis52 said:


> How does a device go before an appeals court judge if it has not been adjudicated in a district court?


You don't think the 622s and 722s may be before this court and the appeals court if necessary?

Keep in mind we are talking about a summary contempt proceeding, not a formal trial here.


----------



## jacmyoung

nobody99 said:


> You are just incapable of being wrong, aren't you?


Well all I can say is you always manage to bring the worst out of people.

How about answering my question, are you ready to declare if DISH is not in contempt, Tivo's value will stay the same?


----------



## Curtis52

jacmyoung said:


> You don't think the 622s and 722s may be before this court and the appeals court if necessary?


If they go before an appeals court judge they will have first been adjudicated in a district court. You said "Well it depends". It doesn't depend.


----------



## jacmyoung

Curtis52 said:


> If they go before an appeals court judge they will have first been adjudicated in a district court. You said "Well it depends". It doesn't depend.


Well thank you for trick me into it then. What was your point in the first place?

Greg was obviously referring to an unadjudicated device at the district level, as first introduced in a contempt proceeding, had nothing to do with whether an appeal follows then it can become an adjudicated device. Two different types of adjudicated devices in concept, as far as what Greg was trying to say.


----------



## Curtis52

> Originally Posted by *jacmyoung*
> _Infringement is the sine quo non of violation of an injunction on infringement._





Greg Bimson said:


> And that only relates to a modified, unadjudicated device.


In all these appeals cases the modified devices had been adjudicated in a district court. That was the whole reason for the appeal.


----------



## jacmyoung

Curtis52 said:


> In all these appeals cases the modified devices had been adjudicated in a district court. That was the whole reason for the appeal.


Yes again Greg was referring to those previously not adjudicated during the trial, not those later adjudicated during a contempt proceeding.


----------



## James Long

Nomo said:


> Curtis52, correct me if I am wrong but James I believe Curtis is agreeing with you... as in the software should be changed to disable the DVR. E* had it easy, the change was given to them directly by the judge...


I was trying to clarify that the judge ordered a specific outcome (DVR functionality disabled) not just "a software change". Since the injunction didn't order "a software change" it seems obvious to some of us that the discussion Curtis quoted was one method to reach the goal - not the goal itself.

Without clarification certain reading impaired people may say "see, even Curtis says only software needs to be changed".  _A_ software change wasn't the order, disabling DVR functionality was the order - regardless of the method used to reach that goal.


----------



## Curtis52

jacmyoung said:



> Yes again Greg was referring to those previously not adjudicated during the trial, not those later adjudicated during a contempt proceeding.


Clearly, the appeals court ruling applied to any adjudicated device and sets precedent for a judge in making a decision for any device for which he is in the process of deciding contempt (the new device).

*The appeals court considers modified devices new devices*:



> "Where the *alteration* in the device is "merely colorable" and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the *new device* in proceedings for contempt for violation of the injunction [Citations omitted.] But where infringement by the *new device* is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction."
> 
> KSM


----------



## kmill14

Curtis52 said:


> Clearly, the appeals court ruling applied to any adjudicated device and sets precedent for a judge in making a decision for any device for which he is in the process of deciding contempt (the new device).
> 
> *The appeals court considers modified devices new devices*:


That is correct, if you mean also that adjudicated devices cannot equal new devices.


----------



## jacmyoung

kmill14 said:


> That is correct, if you mean also that adjudicated devices cannot equal new devices.


This may be a shocker for you but I think what Curtis was saying was that the appeals court considered a modified *adjudicated device* a *new* device, because "where the alteration in the *device*..." in the above quote actually referred to an adjudicated device, as discussed in KSM.

The point being, the use of terms "modified", "new", "changed" in the appeals court's opinions are not to help us to literally argue if our current device is modified, changed or new. They merely were trying to say that there is difference between the two devices, prior to and after the act of modification.

It is in fact the difference between the two that is the focal point.


----------



## Nomo

Greg Bimson said:


> DP-501 <> software
> Injunction = DP-501 (+7 more)
> 
> Therefore, Injunction (+7 more) <> software.


Excellent use of the logic, specifically the commutative property. That was until the next sentence:



> The injunction is not on the software.


Actually the Injunction = DP-501 (+7 more) > software because software is a subset of the DP-501 (+7 more).


----------



## kmill14

jacmyoung said:


> This may be a shocker for you but I think what Curtis was saying was that the appeals court considered a modified *adjudicated device* a *new* device, because "where the alteration in the *device*..." in the above quote actually referred to an adjudicated device, as discussed in KSM.
> 
> The point being, the use of terms "modified", "new", "changed" in the appeals court's opinions are not to help us to literally argue if our current device is modified, changed or new. They merely were trying to say that there is difference between the two devices, prior to and after the act of modification.
> 
> It is in fact the difference between the two that is the focal point.


You did it too. You said "difference between the two devices". KSM clearly separates modified devices and ones already adjudicated on, and so did you.


----------



## jacmyoung

Curtis52 said:


> Clearly, the appeals court ruling applied to any adjudicated device and sets precedent for a judge in making a decision for any device for which he is in the process of deciding contempt (the new device).
> 
> *The appeals court considers modified devices new devices*:


In a sense you can say that, but remember there are those who disagree, they say an adjudicated device remains an adjudicated device even if modified. In that case the appeals court had a different sets of opinions to cover them too.

For example, first the appeals court said clearly the infringer may modify an adjudicated device, to remain in the marketplace, as long as the modification is in good faith. Here the court did not define whether an adjudicated device has become a "new" device nor not after the modificaition.

But how to determine if the infringer's effort is in good faith or not? Well the court said if the patentee can not prove with clear and convincing evidence the modified device is still infringing on its patent, then the infringer can not be in contempt. Meaning that if the patentee refuses to accept that the modified adjudicated deivce is "new", then please prove that it is still infringing on your patent.


----------



## jacmyoung

kmill14 said:


> You did it too. You said "difference between the two devices". KSM clearly separates modified devices and ones already adjudicated on, and so did you.


That is right, the difference between the DP501s with the old software, and the current DP501s with the new software, are you saying there is no difference between the two? That is exactly what KSM was talking about.


----------



## kmill14

jacmyoung said:


> That is right, the difference between the DP501s with the old software, and the current DP501s with the new software, are you saying there is no difference between the two? That is exactly what KSM was talking about.


No its not. The DP501 in Joe Blow's house will always be a DP-501.

So you think any modification to the DP-501 no longer makes it a DP-501? So I could change 1 line of code, and suddenly it is not longer the adjudicated device?


----------



## Nomo

jacmyoung said:


> Not true at all, the same court also said:
> 
> A contempt can not be a sword against an infringer for making a good faith effort to *modify the adjudicated devices* in order to stay in the market place.


Just look at AdCon vs Flowdata. This is a case where contempt proceedings were held in much the same way as this case. In the end they were found in contempt despite what they felt was a design-around of the injunction. They modified the product in a couple ways but made no reasonable effort to design around all of the key claims as constructed in the trial.

E* is walking on very thin ice here. They lacked transparency with the court that issued a clear demand to disable the DVR's. Simply having a workaround does bypass contempt as shown in the case I provided. Also, apparantly making up a new interpretation to an injunction, that wasn't even argued in court is going to hurt E* in the area of "good faith".


----------



## Nomo

jacmyoung said:


> That is right, the difference between the DP501s with the old software, and the current DP501s with the new software, are you saying there is no difference between the two? That is exactly what KSM was talking about.


I'll concede the box is different. But it was not allowed by the injunction.

The injunctions said that those boxes had to be disabled. E* is allowed to substitute those boxes, but those boxes are meant to be out of the picture.

Here is what disable means straight from the dictionary and must be construed as by E*: "to make unable or unfit; weaken or destroy the capability of; cripple; incapacitate"

Notice the words destroy, cripple, incapacitate... all of those are actions that can't be reversed. Therefore the hard drive must be destroyed, crippled, incapacitated. You can't uncripple the box and put new software on it and resume use. E* will get GRILLED for trying to change the meaning of disable. Just wait and see.

Turning those boxes back on was pure disobedience. The injunction did not say "turn off".


----------



## James Long

. . . 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. 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.​
It would have been nice if the injunction had no typos to deal with (Untied States is the worst in another paragraph) but it is clear that the injunction isn't about merely replacing software or temporarily turning off the DVR functionality for a couple of minutes for a software download/reboot.


----------



## nobody99

jacmyoung said:


> Well all I can say is you always manage to bring the worst out of people.


Oooh, _that's_ original 



jacmyoung said:


> How about answering my question, are you ready to declare if DISH is not in contempt, Tivo's value will stay the same?


TiVo's value will probably go down if DISH is not in contempt. But it will not go to zero.

But when did I say anything different? You still claim it's going to zero. :lol:


----------



## Curtis52

Nomo said:


> Turning those boxes back on was pure disobedience.


The injunction wasn't even in effect when those boxes were "turned back on".

The adjudicated boxes ceased to exist when they were modified. The modified boxes became new boxes. The appeals court considers modified devices new devices.

Correcting infringement by modification is a good thing. It isn't a bad thing. The courts have ruled that it's legal.



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


----------



## kmill14

Curtis52 said:


> T
> 
> *The adjudicated boxes ceased to exist when they were modified. *


I love when you say this. You don't even realize how ridiculous it is.

So Joe Blow's DP-501 ceased to exist because E* uploaded some software? I'll ask you the same question: What qualifies as "modification"? Changing one line of code in some software?


----------



## Nomo

Curtis52 said:


> The injunction wasn't even in effect when those boxes were "turned back on".
> 
> The adjudicated boxes ceased to exist when they were modified. The modified boxes became new boxes. The appeals court considers modified devices new devices.
> 
> Correcting infringement by modification is a good thing. It isn't a bad thing. The courts have ruled that it's legal.


In that case you ignore that nobody ignored the plain demand of the injunction.

They can implement a workaround, they just have no provision to modify the Infringing Product as Folsom chose the word "Disable" not "Turn off".

Also look at the Flowdata case I cited. It is clear there that changing the infringing product isn't the only requirement to avoid contempt. But again, that is different because the Infringing Products were not to be used as a DVR ever again. E* disobeyed.


----------



## James Long

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


That is the risk that E* is taking.


----------



## Nomo

kmill14 said:


> I love when you say this. You don't even realize how ridiculous it is.
> 
> So Joe Blow's DP-501 ceased to exist because E* uploaded some software? I'll ask you the same question: What qualifies as "modification"? Changing one line of code in some software?


They weren't allowed to modify these boxes. See the meaning of "disable" and it becomes clear. Those hard drives are not to be written to ever again. They are CRIPPLED. Or should be. Disobeying equals contempt.


----------



## Curtis52

kmill14 said:


> I love when you say this. You don't even realize how ridiculous it is.
> 
> So Joe Blow's DP-501 ceased to exist because E* uploaded some software? I'll ask you the same question: What qualifies as "modification"? Changing one line of code in some software?





> "Where the alteration in the device is "merely colorable" and obviously was made for the purpose of evading the decree *without essential change* in the nature of the device, the courts will try the question of infringement by the new device in proceedings for contempt for violation of the injunction [Citations omitted.] But where infringement by the new device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction."
> 
> KSM


..


----------



## Nomo

James Long said:


> That is the risk that E* is taking.


Nope. The real risk they are taking is writing to a hard drive that was ordered to be and should be disabled.


----------



## Curtis52

Nomo said:


> the Infringing Products were not to be used as a DVR ever again. E* disobeyed.


By law, infringement injunctions can only *prevent* infringement. Injunctions are not punishment. Where there is no longer any infringement there is no contempt.



> 35 U.S.C. 283 Injunction. - Patent Laws
> 
> 35 U.S.C. 283 Injunction.
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent* the violation of any right secured by patent, on such terms as the court deems reasonable.


----------



## jacmyoung

kmill14 said:


> No its not. The DP501 in Joe Blow's house will always be a DP-501.
> 
> So you think any modification to the DP-501 no longer makes it a DP-501? So I could change 1 line of code, and suddenly it is not longer the adjudicated device?


Please do not put words in my mouth, I never said a DP501 will no longer be a DP501, what I asked was, is there difference between the DP501 with the old software, and the current DP501 with the new software? Of course the answer is yes. And that difference is tested under the colorable difference test.

But what I said also was, unlike what Curtis was saying all modified adjudicated devices can be called "new", even though the court used the word "new", but apparently people argued they could not be new, as you guys insist now.

So the court had provided opinions for such occasion too:

For products that the patentee insists that are not colorably different than the adjudicated devices, during a contempt proceeding:

"whether the accused product infringes the claims of the asserted patent. To show infringement the *patentee* must prove by clear and convincing evidence that the modified device falls within the admitted or adjudicated scope of the claims." (Abbott Labs. v. ThorPharm, Inc.)

Since Tivo insists that the modified DP501s are not colorably different, because they are the same name and model, then Tivo must prove by clear and convincing evidence that the modified DVRs infringes on the Tivo's patent.


----------



## nobody99

Curtis52 said:


> By law, infringement injunctions can only *prevent* infringement. Injunctions are not punishment. Where there is no longer any infringement there is no contempt.


How do you make the leap from "may grant injunctions" to "can only prevent infringement?" You must be Superman. That's quite a leap.


----------



## jacmyoung

Nomo said:


> They weren't allowed to modify these boxes. See the meaning of "disable" and it becomes clear. Those hard drives are not to be written to ever again. They are CRIPPLED. Or should be. Disobeying equals contempt.


Of course they were allowed to be modifed, the injunction asked DISH to modify them by disabling the DVR functions, that is a form of modification, after that way of modification, DISH can continue to use them as non-DVRs, as standard receivers. So yes those adjudicated DVRs can be modified.

Have you not read the above quote I made? Contempt shall not be used as a sword to wound an infringer who made a good faith attempt to *modify the adjudicated devices* in order to remain in the marketplace.

The question is whether DISH *must* modify them in the only way the injunction says, or can they modify in other ways, as long as the goal is reached, that is they no longer infringe. The answer is also clear, DISH can use other ways to modify, because the court said, if not, then an injunction must clearly spell out what the infringer can not do, in very specific terms, if the injunction does not prohibit a particular action, such as modify the DVRs in DISH's way, then such way of modification cannot be in violation.

The MTC case I cited earlier had answered that question already. And please do not argue that the MTC case was not relevant, because as I said, in the MTC case the appeals court quoted from a criminal case to help support that MTC was not in contempt.

If a criminal case can be used to prove a civil case, then please do not continue to argue based on this "irrelevant" notion.


----------



## jacmyoung

nobody99 said:


> How do you make the leap from "may grant injunctions" to "can only prevent infringement?" You must be Superman. That's quite a leap.


Because had the law allowed anything other than to "prevent", it would have said what those other things were, this is how a law is interpreted. If a law does not say something, then it is saying this something is not in the scope of this law.


----------



## Nomo

Curtis52 said:


> By law, infringement injunctions can only *prevent* infringement. Injunctions are not punishment. Where there is no longer any infringement there is no contempt.


Folsom has his discretion on how to prevent infringment. Injunctions are orders that must be obeyed to the letter and they have been argued. E* did not dispute the injunction's wording as overly broad. If you think for a second, these are end user products. How does a judge know his orders are carried out? Is it unreasonable for Folsom to say that all of the DVR's that are Infringing Products cannot be used and new Infringing Products and those that are not colorably different cannot be sold? There is absolutely no precedent that says that Folsom can't do this. Otherwise E* would have appealed it before.


----------



## Nomo

jacmyoung said:


> Because had the law allowed anything other than to "prevent", it would have said what those other things were, this is how a law is interpreted. If a law does not say something, then it is saying this something is not in the scope of this law.


Folsom didn't want these Infringing Products in the possession of an end of an end user. There is no way of verifying all products are working. *E* even admits that it had problems along the way with customer complaints.* This was a Herculean effort for them to implement. Should Folsom assume the injunction was carried out? Disabling the software was already shown to be a simple and reliable fix.

Considering E* placed those DVR's with Customers despite the patent in the first place, it isn't a punishment for them to take those DVR's with stolen technology back.

These reasons are exactly why Folsom wrote the injunction as DISABLE. And the law says that as long as Folsom is reasonable he can't be overruled.


----------



## scooper

Nomo - when you have something new to add to the discussion - wake us up....
EVERYTHING you have mentioned in your posts to date is old ground....


----------



## James Long

scooper said:


> Nomo - when you have something new to add to the discussion - wake us up....
> EVERYTHING you have mentioned in your posts to date is old ground....


That describes most of the 2k (3k?) posts on the matter. 

The facts in the case are pretty compelling. It is a shame that some have chosen rabbit holes to discuss instead of the actual case before Judge Folsom.


----------



## peak_reception

Jacmyoung says:


> But how to determine if the infringer's effort is in good faith or not? Well the court said if the patentee can not prove with clear and convincing evidence the modified device is still infringing on its patent, then the infringer can not be in contempt. Meaning that if the patentee refuses to accept that the modified adjudicated deivce is "new", then please prove that it is still infringing on your patent.


 What on earth does any of that have to do with "good faith" or not?? Absolutely nothing. Besides, you already said in the past that good faith or bad faith had no bearing on how the case should be or would be decided.


> Of course they were allowed to be modifed, *the injunction asked DISH to modify them by disabling the DVR functions*, that is a form of modification, after that way of modification, DISH can continue to use them as non-DVRs, as standard receivers. So yes those adjudicated DVRs can be modified.


 All you're doing is modifying clear language into muddy, self-serving language. "Modify" and "Disable" have two separate meanings; that's why they're two separate words  . I wouldn't go so far as Nomo to say that disable means to obliterate, destroy, and drop atomic bombs on said devices in this case. No, but Judge Folsom defined the word disable just fine himself when he stipulated that disabling the DVR functionality meant "disable all storage to and playback from a hard disk drive of television data...." It means stop, cease, shut down. It doesn't mean stop, cease, shut down, download, start back up again, resume, _and pretend you misunderstood when the contempt hearing looms_.

If Judge Folsom had meant for EchoStar to *modify* their DVRs by shutting them down briefly and then turning them back a short time later, resuming full functionality, he would have written that possibility in. *There is no such provision or allowance in the injunction even though EchoStar asked for it to be included.* They were denied. One could then argue that Judge Folsom went against controlling case law by denying EchoStar this potential redemptive path, this way back to compliance and non-infringement. But his "Boss," the CAFC did not find anything wrong with the injunction and in fact left it untouched and in force as they ruled and returned the suit to District Court.

EchoStar did not argue before the CAFC that the injunction was overbroad, unlawfully restrictive, or unjustly punitive. No, they seemed to be just fine with it. Were they already planning this smokescreen of language manipulation and feigned misunderstanding of what the injunction required of them?

That wouldn't be in good faith though so they stress their "Herculean" project to no longer infringe and proclaim it a grand success, banking that even if it wasn't Herculean, and still infringes, it will still take a lot longer to find out, time enough to wiggle out of immediate jeopardy and fight another day.

And then, when it comes time to go before CAFC again (as it surely will unless by some miracle the two parties settle first) that's when they can argue that the injunction was overbroad and/or unlawfully restrictive, and/or unlawfully punitive. "Hey, we didn't argue this the first time because we _misunderstood_ what the judge meant!" A 'good faith' misunderstanding of course. This is why TiVo put all that information about EchoStar court shenanigans in their contempt motion, i.e. so that the CAFC will have their eyes wide open when EchoStar comes a-callin' the 2nd time around. At that point it's deja vu all over again  and we'll find out, imo, what the patent court system is worth.


----------



## Curtis52

peak_reception said:


> If Judge Folsom had meant for EchoStar to *modify* their DVRs by shutting them down briefly and then turning them back a short time later, resuming full functionality, he would have written that possibility in. *There is no such provision or allowance in the injunction even though EchoStar asked for it to be included.*


Do you have a link? TiVo implies Dish asked for it but the quote they provide doesn't support that contention.

No words were needed in the injunction that specifically allow making the DVRs non-infringing. It's already allowed by case law. Judge Folsom knew that, Dish knew that, the CAFC knew that, everyone concerned knew it but TiVo.


----------



## Curtis52

Nomo said:


> Considering E* placed those DVR's with Customers despite the patent in the first place, it isn't a punishment for them to take those DVR's with stolen technology back.


It is up to TiVo to prove that the DVRs contain stolen technology.

Meanwhile, TiVo will be compensated for lost sales and damages.


----------



## jacmyoung

peak_reception said:


> ...All you're doing is modifying clear language into muddy, self-serving language. ...


I have news for you, this is one way for the defendant to get out of a contempt, because if one can interpret the letter of the injunction in a different way, that creats ambiguity, then the court has said also when there is ambiguity, *all* the considerations *must* go to the defendant.

Because an injunction must be specific in what to prohibit, if it does not say DISH can not use a new software to modify the DVRs, then it means you can not found DISH in violation for doing so, if the injunction does not say after disabling the DVR functions, don't bring back another kind of DVR functions, the ones that are *not adjudicated* in the trial, then you cannot find DISH in violation for doing so.

So how do you find DISH in violation? Prove DISH is *still at current time* infringing on Tivo's patent.

An injunction can not survive on "implication" of an order, you can not say just because it says to disable the DVR functions (i.e. all storage and playback...), it implies after that, DISH can not bring back another set of DVR functions (i.e. all its storage and playback...) into the same DVRs. If so the injunction must clearly spell out such intention, to say, after which, no DVR functions may be reinstalled.

Yes, with clear language, without implication, but clear language to prohibit, because that is precisely what the law demands.


----------



## jacmyoung

nobody99 said:


> Oooh, _that's_ original
> 
> TiVo's value will probably go down if DISH is not in contempt. But it will not go to zero.
> 
> But when did I say anything different? You still claim it's going to zero. :lol:


But you just said it will not go down according to your interpretation of the chart. So before you roll your eyes, please make sure which answer it is, ok?


----------



## jacmyoung

Nomo said:


> Folsom has his discretion on how to prevent infringment. Injunctions are orders that must be obeyed to the letter and they have been argued. E* did not dispute the injunction's wording as overly broad. If you think for a second, these are end user products. How does a judge know his orders are carried out? Is it unreasonable for Folsom to say that all of the DVR's that are Infringing Products cannot be used and new Infringing Products and those that are not colorably different cannot be sold? There is absolutely no precedent that says that Folsom can't do this. Otherwise E* would have appealed it before.


There are countless prior cases and the court clear opinions that if the infringer is not currently infringing on the patent, the judge can not find the infringer in contempt. Judge Folsom of course can still find DISH in contempt regardless, he has this power, but it will be overturned on appeal.

Because most of the above prior cases, and opinions of the Court cited by me and Curtis, are from the appeals court, when they overturned many many contempt rulings by the district court judges.


----------



## Nomo

jacmyoung said:


> There are countless prior cases and the court clear opinions that if the infringer is not currently infringing on the patent, the judge can not find the infringer in contempt. Judge Folsom of course can still find DISH in contempt regardless, he has this power, but it will be overturned on appeal.
> 
> Because most of the above prior cases, and opinions of the Court cited by me and Curtis, are from the appeals court, when they overturned many many contempt rulings by the district court judges.


Cases involving a product where the infringing product is in possession of the end user and modified at the same time? No there is no case and you know it.


----------



## Nomo

jacmyoung said:


> But you just said it will not go down according to your interpretation of the chart. So before you roll your eyes, please make sure which answer it is, ok?


Short term and long term stock movement are different things. Must you argue everything?


----------



## jacmyoung

Nomo said:


> Cases involving a product where the infringing product is in possession of the end user and modified at the same time? No there is no case and you know it.


Did you even read DISH's response, in which they cited Starbrite case as such? Did you read my Foortprint 2.0 case I cited before, in which the infringer uploaded a little piece of software to the adjudicated service while the service continued to serve the end users in the field non-stop?

Oh wait you just joined here, so that explained your sometimes asking questions already answered many times before.

For those who still wish to point out that Footprint 2.0 case was "irrelevant", please dont, because the question here is are there any prior cases which described a modification done to the adjudicated devices in the end users' hands, yes there are, and after the modifications, the infringers were not in contempt.

As far as the question of relevance, I also answered it. Because the appeals court said an injunction can only prohibit things that specific to those already adjudicated or admitted during the trial, not something else, so "the DVR functions" had to be the ones discussed during the trial, therefore it is totally relevant to the Footprint 2.0 case.


----------



## jacmyoung

Nomo said:


> Short term and long term stock movement are different things. Must you argue everything?


So you somehow have this belief that without a victory, Tivo's longer term prospect can be the same as today, despite that fact they continue to lose net sub count, despite the fact DirecTV is dropping 520k of their accounts just last year and is continuing to do so, and despite the fact Comcast's Tivo boxes have gone nowhere so far.

Are you really to believe without a victory here, Tivo's long term prospect will remain the same?


----------



## Curtis52

Nomo said:


> Cases involving a product where the infringing product is in possession of the end user and modified at the same time? No there is no case and you know it.


The physical location is irrelevant.


----------



## nobody99

jacmyoung said:


> But you just said it will not go down according to your interpretation of the chart. So before you roll your eyes, please make sure which answer it is, ok?


jacmyoung, one day I will get you to admit that you were once wrong. We'll have a good laugh - you'll say "Remember that day back in 2008, when I was actually wrong once? The only time in my life I've ever been wrong.":hurah: :lol: :hurah:



jacmyoung said:


> Well then you need to suggest they correct the table because it says if DISH is not in contempt, Tivo is down to $0, as dead.


----------



## jacmyoung

nobody99 said:


> jacmyoung, one day I will get you to admit that you were once wrong. We'll have a good laugh - you'll say "Remember that day back in 2008, when I was actually wrong once? The only time in my life I've ever been wrong.":hurah: :lol: :hurah:


Boy another one of your predictions. What is your bad record so far? Two for two?

How about this, three for three! Why? I have more than once admited I was wrong before, so you have no ability to judge me at all.


----------



## jacmyoung

Curtis52 said:


> The physical location is irrelevant.


And even if they insist it is relevant, we do have prior cases to prove them wrong.

The problem is they still have yet find one single case to their support. How telling is that.

Oh wait, they said they need no other stinking cases and opinions, not even what is said in the law to prove anything, just the letter of the injunction, in the only way they interpreted to be true, who cares if there maybe another interpretation. Well good luck with that.


----------



## nobody99

jacmyoung said:


> But you just said it will not go down according to your interpretation of the chart. So before you roll your eyes, please make sure which answer it is, ok?


Ok, in all seriousness, let me explain the chart to you.

There are two pieces:

1) Value TiVo's current business
2) Value based on Outcome of Trial

So the current stock price represents TiVo's current business. The last column of the chart represents the value based on the outcome of the trial.

So let's say that the current stock price is $6. If DISH gets off without contempt, sure the price probably goes down a bit until people realize that they're still going to get $120-$200 million anyway. In any case, let's say the stock might go between $4-$12 regardless of the outcome of the trial based on intrinsic value.

Suppose, though, that DISH is held in contempt. Citi's analyst puts an _additional_ value to TiVo's shares at, say $13 per share.

So that means that TiVo's share price, in the next year, would be:

$4 - $12 if no contempt
$4 - $25 if contempt is found

I hope this makes it easier for you to understand that the Citigroup analyst didn't say the stock was going to "down to $0, as dead?"


----------



## Curtis0620

So when did they rule that DISH's new software doesn't infringe?


----------



## Curtis52

Curtis0620 said:


> So when did they rule that DISH's new software doesn't infringe?


When did they rule that it does?


----------



## Curtis0620

Curtis52 said:


> When did they rule that it does?


The 8 DVR's were found to infringe. They do until proven otherwise. So proving that the software doesn't infringe is key to DISH's position.


----------



## spear61

James Long said:


> The reply comments were due today ... but instead Tivo and DISH filed a joint motion to extend the time until next Friday (July 18th).
> 
> Note that this applies to the two issues on the docket ... Tivo's motion for contempt and DISH's motion for clarification. The items on the "alternate" docket (the interogatories Tivo wanted of DISH) were not filed and were not mentioned.
> 
> I believe we have our answer as to which Docket Control the parties and court is following.


I smell settlement negotiations.


----------



## Curtis52

Curtis0620 said:


> The 8 DVR's were found to infringe. They do until proven otherwise. So proving that the software doesn't infringe is key to DISH's position.


No. There needs to be a finding that the new software infringes first. TiVo has to prove that.



> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.
> 
> http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


----------



## kmill14

Curtis52 said:


> No. There needs to be a finding that the new software infringes first. TiVo has to prove that.


Uhhh....since when was software a part of the injunction or ruled to infringe in the first place?


----------



## Curtis52

kmill14 said:


> Uhhh....since when was software a part of the injunction or ruled to infringe in the first place?


If TiVo can prove any infringement whatsoever Dish can be held accountable.


----------



## kmill14

Curtis52 said:


> If TiVo can prove any infringement whatsoever Dish can be found in contempt.


They did that. This hearing on 9/4 has nothing to do with modifications of devices E* is selling today. It has everything to do with the devices already sold and ruled to infringe (twice) and ordered to be disabled of certain key functionality.

Unless you can run a DP-501 DVR that does not need to write TV data to the hard-drive, I don't know how E* will come out of this on top.


----------



## Curtis52

kmill14 said:


> Unless you can run a DP-501 DVR that does not need to write TV data to the hard-drive, I don't know how E* will come out of this on top.


Unless Judge Folsom and the appeals court ignore consistent case law I don't know how TiVo can come out on top in the 9/4 hearing. Dish probably infringes. TiVo needs to stop wasting time.


----------



## kmill14

Curtis52 said:


> Unless Judge Folsom and the appeals court ignore consistent case law I don't know how TiVo can come out on top in the 9/4 hearing. Dish probably infringes. TiVo needs to stop wasting time.


You mean the case law that discusses being in contempt for disobeying a clear court order?


----------



## Curtis52

kmill14 said:


> You mean the case law that discusses being in contempt for disobeying a clear court order?





> EchoStar believes that the language of the Injunction is clear and unambiguous,
> especially when read in context of the proceedings that led to the Injunction, and the applicable case law limiting injunctions to infringing products. However, to the extent that the language of the Injunction is not crystal-clear regarding whether it covers products that do not infringe - *which it cannot as a matter of law* - the language must be construed in EchoStar's favor as the alleged contemnor. See Abbott, 503 F.3d at 1382-83. "[C]ontempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace." Arbek Mfg., 55 F.3d at 1570.


..


----------



## kmill14

Curtis52 said:


> ..
> 
> "However, to the extent that the language of the Injunction is not crystal-clear regarding whether it covers products that do not infringe "


Did E* proclaim that there is language in the injunction that is NOT crystal-clear? How interesting. They on one hand stated *"that the language of the Injunction is clear and unambiguous"*, but then put in that little clause...just in case?

Can you point out which part they think is not crystal-clear? After all, they said they complied with the "letter" of the injunction by initially "disabling" the adjudged devices.

Interesting. Given that they admittedly knew what the "letter" of the injunction meant by "disabling" that functionality for those devices already in the hands of customers, they *willfully* chose not to follow it as described in the injunction.


----------



## Curtis52

There is no requirement in the injunction to disable non-infringing products. The law doesn't allow that. An interpretation that the injunction requires it is a wrong interpretation.


----------



## Curtis0620

Curtis52 said:


> No. There needs to be a finding that the new software infringes first. TiVo has to prove that.


So they find that the new software infringes. What then?

DISH downloads new software again and we start over?


----------



## Curtis52

Curtis0620 said:


> So they find that the new software infringes. What then?
> 
> DISH downloads new software again and we start over?


If I was the judge, I would put a requirement in the injunction for pre-approval like the appeals court has approved for a few agregious cases.


----------



## Nomo

Curtis52 said:


> If I was the judge, I would put a requirement in the injunction for pre-approval like the appeals court has approved for a few agregious cases.


The judge doesn't need to require pre-approval - this was implicit in the order to DISABLE. E* actually needed approval to use the Infringing Products in a different way than disabling them. They have not disabled them. They just turned them off and on.

Look at another type of court order that has much more precedent. A restraining order to say keep 30 feet away from a person at all times and not speak to or address them because of past conduct. The person restrained can't take anger management classes on their own and say that they are a better person and then ignore the court's order. They will be held in contempt.

Disabling is a clear order. There is noone here that is arguing that disable does not mean its dictionary definition of "destroying or crippling the ability of".

So forget trying to argue that some other quote applies from a different ruling that did not argue to disable a product. E* is welcome to try and sell new boxes or to refurbish boxes, but the boxes in customer's homes must not have DVR functionality!


----------



## nobody99

Curtis52 said:


> No. There needs to be a finding that the new software infringes first. TiVo has to prove that.





> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.


Curtis, you are getting jacmyoungitis - finding cases that have nothing to do with the contempt at hand. Here's a little more text directly from the case you cited:



> In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer *by reason of a manufacture which was not the subject of the original litigation*, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings.
> 
> ...
> 
> Allowing the patentee to proceed by a summary contempt proceeding in all cases would unnecessarily deter parties from *marketing new devices* that are legitimately outside the scope of the patent in question


----------



## Curtis52

> "In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer *by reason of a manufacture which was not the subject of the original litigation*, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings."


In other words, a modification. The whole case was about modification.


----------



## Curtis0620

Curtis52 said:


> In other words, a modification. The whole case was about modification.


Those product were part of the original litigation, so this does not apply.


----------



## Curtis52

Curtis0620 said:


> Those product were part of the original litigation, so this does not apply.


No. The products that were in the original litigation were modified just like in this case.



> Jones subsequently put out a modified refractory anchor (ULTRA-LOK I) and on September 22, 1981, KSM moved the court to punish Jones for contempt for violation of the injunction.


----------



## jacmyoung

Curtis0620 said:


> Those product were part of the original litigation, so this does not apply.


Are you not capable of reading:

A contempt shall not be a sword to wound the infringer when good faith effort is made to *modify the adjudicated devices* in order to remain in the marketplace.

Which part of the above is not clear to you that yes, an infringer can modify the adjudicated devices, as long as the effort is in good faith?


----------



## nobody99

Curtis0620 said:


> Those product were part of the original litigation, so this does not apply.


And that is exactly the problem. We have two issues that are mutually exclusive with respect to prior cases (the "Field Programmable Device"). Never once has a device that was already in the hands of consumers been "recalled" in this way.


----------



## jacmyoung

Curtis0620 said:


> The 8 DVR's were found to infringe. They do until proven otherwise. So proving that the software doesn't infringe is key to DISH's position.


DISH only needs to establish the doubt whether the new software is infringing or not, in a contempt proceeding.


----------



## nobody99

jacmyoung said:


> Are you not capable of reading:


Hahhahaha...oh, that's good. *You* are suggesting that someone can't read? Hahahaha. Hahahahaha. Eeheheh. haha. :grin:

You got me good.


----------



## nobody99

Curtis52 said:


> No. The products that were in the original litigation were modified just like in this case.


Oh, I misunderstood. So they went to the installed base and installed the new refractory anchor for all customers that had purchased it previously? Wow, that's some customer service.

Or you're in lala-land.


----------



## Curtis0620

jacmyoung said:


> Are you not capable of reading:
> 
> A contempt shall not be a sword to wound the infringer when good faith effort is made to *modify the adjudicated devices* in order to remain in the marketplace.
> 
> Which part of the above is not clear to you that yes, an infringer can modify the adjudicated devices, as long as the effort is in good faith?


The fact is the new software has not been proven to not infringe.

As for can I not read, have I been insulting to you?


----------



## jacmyoung

kmill14 said:


> Uhhh....since when was software a part of the injunction or ruled to infringe in the first place?


The software was a crucial part adjudicated to infringe during the trial, therefore the injunction had to specifically prohibit acts by such adjudicated items, even if the injunction does not specify the old software, becasue it is the appeals court standard, that the only things an injunction can prohibit are the ones already adjudicated during the trial, anything else not adjudicated in the trial, it has to be decided by applying the colorable difference test.


----------



## jacmyoung

Curtis0620 said:


> The fact is the new software has not been proven to not infringe.
> 
> As for can I not read, have I been insulting to you?


Did you try to insult the court's opinion when you said an adjudicated device could not be modified?

The fact the new software has not been proven, is precisely the point. To prove the new software still infringes, Tivo needs to start a new trial, that is what the courts said all along.


----------



## kmill14

Curtis52 said:


> There is no requirement in the injunction to disable non-infringing products. The law doesn't allow that. An interpretation that the injunction requires it is a wrong interpretation.


You are correct. And TiVo's motion is regarding products already ruled to infringe. So whats your point?


----------



## Nomo

jacmyoung said:


> DISH only needs to establish the doubt whether the new software is infringing or not, in a contempt proceeding.


:lol: :nono: :nono2:

This isn't a criminal case where it takes only a small doubt. The doubt must be substantial in order to be good faith. And there is no doubt that the Infringing product wasn't disabled.


----------



## Curtis0620

jacmyoung said:


> Did you try to insult the court's opinion when you said an adjudicated device could not be modified?
> 
> The fact the new software has not been proven, is precisely the point. To prove the new software still infringes, Tivo needs to start a new trial, that is what the courts said all along.


I insulted the courts opinion?

You insult anyone who doesn't agree with your opinion.


----------



## kmill14

jacmyoung said:


> Did you try to insult the court's opinion when you said an adjudicated device could not be modified?
> 
> The fact the new software has not been proven, is precisely the point. To prove the new software still infringes, Tivo needs to start a new trial, that is what the courts said all along.


You do realize don't you that TiVo never proved that the old software infringed?

Why would they want to start a new trial about new software when they never specifically addressed the old software in the first place?


----------



## Curtis0620

Before entering a finding of contempt of an injunction in a patent infringement case, a district court must
address two separate questions. The first is whether a contempt hearing is an appropriate forum in which to
determine whether a redesigned device infringes, or whether the issue of infringement should be resolved in a
separate infringement action. See KSM, 776 F.2d at 1530-32, 227 USPQ at 682-84. That decision turns
on a comparison between the original infringing product and the redesigned device. If the differences are such
that “substantial open issues” of infringement are raised by the new device, then contempt proceedings are
inappropriate. Id. at 1532, 227 USPQ at 683- 84. If contempt proceedings are appropriate, the second
question the district court must resolve is whether the new accused device infringes the claims of the patent.
See id. at 1528-30, 227 USPQ at 680-82. Within those general constraints, the district court has broad
discretion to determine how best to enforce its injunctive decrees. Id. at 1532, 227 USPQ at 684.

This case states "Substantial" issues must be raised. DISH must prove substantial differences to avoid contempt.


----------



## Curtis52

kmill14 said:


> Why would they want to start a new trial about new software when they never specifically addressed the old software in the first place?


I'm no expert but it just seems to me (and I'm just shooting from the hip here) that if whether there is more than a colorable difference is important then maybe (I know this sounds crazy) they should look at what is different.


----------



## Curtis52

Curtis0620 said:


> This case states "Substantial" issues must be raised. DISH must prove substantial differences to avoid contempt.


No, TiVo must prove insubstantial differences. ie. Not more than colorably different.


----------



## kmill14

Curtis0620, that case is not relevant to the hearing on 9/4, because it talks about new devices. TiVo is not asking the Court to address new devices (yet). 

The only thing the Judge needs to decide at this point is 

A) if E* is in contempt simply because they decided to allow those adjudicated DP-501's at Joe Blow's house to write TV data to their hard-drive

or 

B) If E* is not in contempt because they allegedly changed some software in those specific, adjudicated DP-501s, which allegedly changes the operation such that it no longer infringes. 


Of course the Court did not stipulate anything about infringement on that DP-501 in Joe Blow's house, because it was already ruled to infringe. The only stipulation in that order was that the DP-501 in Joe Blow's posession could no longer write TV data to the hard-drive.


----------



## Curtis0620

Curtis52 said:


> No, TiVo must prove insubstantial differences. ie. Not more than colorably different.


So this case was wrong then?


----------



## kmill14

Curtis52 said:


> I'm no expert but it just seems to me (and I'm just shooting from the hip here) that if whether there is more than a colorable difference is important then maybe (I know this sounds crazy) they should look at what is different.


The colorable difference standard only applies to new devices. This motion is regarding devices already sold to customers, already analyzed, already ruled on, and already ordered to be disabled.


----------



## Curtis52

Curtis0620 said:


> So this case was wrong then?


I don't know what you mean by "this case". Define "wrong". I don't know how a case can be wrong. Decisions can be wrong. The appeals court usually sets them right.


----------



## Curtis0620

Curtis52 said:


> No, TiVo must prove insubstantial differences. ie. Not more than colorably different.


That is after DISH is found in contempt.


----------



## Curtis52

kmill14 said:


> The colorable difference standard only applies to new devices.


No. It applies to modified devices (AKA new).



> "Where the *alteration* in the device is "merely *colorable*" and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the *new* device in proceedings for contempt for violation of the injunction [Citations omitted.] But where infringement by the new device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction."
> 
> KSM


----------



## Curtis0620

Curtis52 said:


> No. It applies to modified devices (AKA new).


There's that "substantial" word.


----------



## jacmyoung

Curtis0620 said:


> So this case was wrong then?


What did you mean? This case has not made a ruling on contempt yet.


----------



## Curtis52

Curtis0620 said:


> There's that "substantial" word.


 I thought I already explained that. "substantial issues" = "more than a colorable difference". That's when the case can't be determined in a contempt hearing.


----------



## jacmyoung

kmill14 said:


> You are correct. And TiVo's motion is regarding products already ruled to infringe. So whats your point?


The point is Tivo can not insist that the current DVRs under the new software still infringe unless Tivo proves it so, with convincing evidence, yes, the patentee has to prove it, I have a quote from the appeals court earlier, if you can not find it I will quote you again.


----------



## jacmyoung

Curtis0620 said:


> That is after DISH is found in contempt.


No a contempt proceeding is to address it, before making a ruling.


----------



## kmill14

Curtis52 said:


> No. It applies to modified devices (AKA new).


So modified devices = new devices only. I agree.

And the DP-501 that Joe Blow owns is not a new device. It did not disappear and suddenly be replaced with a new DP-501, because the DP-501 is not defined based on just the software inside of it.


----------



## kmill14

jacmyoung said:


> The point is Tivo can not insist that the current DVRs under the new software still infringe unless Tivo proves it so, with convincing evidence, yes, the patentee has to prove it, I have a quote from the appeals court earlier, if you can not find it I will quote you again.


Tivo's motion has nothing to do with infringement issues. It has to do with Joe Blow's DP-501 still being able to write TV data to its hard-drive. Or did you forget the Court's order again?


----------



## jacmyoung

Curtis52 said:


> I thought I already explained that. "substantial issues" = "more than a colorable difference". That's when the case can't be determined in a contempt hearing.


Substantial [open] issues = more than colorably different.

What the other side is insisting is the colorable difference test can not be used on the adjudicated devices, and I agree with you from the court's own opinions they are wrong.

But even if we give them that, they are still wrong, because the court in fact had an opinion reserved just for those people, I have quoted it earlier.


----------



## Curtis52

kmill14 said:


> So modified devices = new devices only. I agree.


New or used. The court has no reason to care which. A modified device is a new device though as far as infringement questions are concerned. Reborn and innocent.


----------



## jacmyoung

Nomo said:


> Just look at AdCon vs Flowdata. This is a case where contempt proceedings were held in much the same way as this case. *In the end* they were found in contempt despite what they felt was a design-around of the injunction. They modified the product in a couple ways but made no reasonable effort to design around all of the key claims as constructed in the trial...


You are right in that DISH can be found in contempt, just like the above case, if their design around is found to be not a legitimate effort, see the point here? The design around must be reviewed to make such determmination.

What you are all saying is no the design around shall not be looked at at all. You simply cannot find a single case in the past that can support your assertion. What your are saying is not *in the end* but before it even begins, to find DISH in contempt.


----------



## kmill14

Curtis52 said:


> New or used. The court has no reason to care which.


They have every reason to care, since the "colorable difference" standard clearly applies to new devices, and it says as much in the E* injunction. I can't help it if you can't see the separation.

The Court's order only said to make sure Joe Blow's DP-501 has no ability to store TV data to its hard-drive. Regardless of what new software you put in his box, if that specific device still stores TV data to the hard-drive, then it is in contempt of the Court's order.


----------



## jacmyoung

Curtis52 said:


> New or used. The court has no reason to care which. A modified device is a new device though as far as infringement questions are concerned. Reborn and innocent.


What he is saying is that an adjudicated device, even if modified, can not be called a modified device, therefore can not be call a new device. Of course it does not make much sense, but that is what he has been insisting all along.

A modified device is a modified device, regardless if it has been adjudicated or not. When a device is modified, it is by definition a modified device. Otherwise the court must make a distinction, to clarify what they meant, for example to say "modifed adjudicated device", not just "modified device". Without doing so, your interpretation and mine give rise to ambiguity, and then such ambiguity will go in favor of the defendant.

In another word, if the "modifed device" can include a modified adjudicated device according to me, or cannot according to you, since I am the defendant, my intepretation shall prevail.

Not to mention by mere definition, a modified adjudicated device can be included in the "modified device" category. It is plain English.


----------



## Curtis52

kmill14 said:


> *Regardless of what new software you put in his box*, if that specific device still stores TV data to the hard-drive, then it is in contempt of the Court's order.


No. Patent injunctions by law can only prevent infringement. An injunction interpretation that requires non-infringing DVRs to be disabled is an incorrect interpretation.


----------



## nobody99

kmill14 said:


> So modified devices = new devices only. I agree.
> 
> And the DP-501 that Joe Blow owns is not a new device. It did not disappear and suddenly be replaced with a new DP-501, because the DP-501 is not defined based on just the software inside of it.


Let's take this one step further. Could they sell these at retail as new products once the new software is downloaded?

Let's say Joe Blow sends his Dish player back to DISH. They install a fresh version of software (version 8.02.0000000000000001). Now DISH sends it to an installer, who sells it as a brand new device.

Eh, I don't think so. I think they'd be running afoul of several consumer laws.


----------



## Curtis0620

Dish must prove substantial issues to avoid contempt.


----------



## nobody99

Curtis52 said:


> No. Patent injunctions by law can only prevent infringement. An injunction interpretation that requires non-infringing DVRs to be disabled is an incorrect interpretation.


So there could never be a case, say, of an injunction (later upheld on appeal) that forbids a from company selling unpatented pump parts, right? Because since "injunctions by law can only prevent infringement", and an unpatented part can't infringe, that can't be possible, right?


----------



## Curtis52

There isn't one set of patent laws for used devices and another set for new devices. It just doesn't matter.


----------



## kmill14

Curtis52 said:


> No. Patent injunctions by law can only prevent infringement. An injunction interpretation that requires non-infringing DVRs to be disabled is an incorrect interpretation.


The injunction does not address non-infringing DVRs, and neither does TiVo's motion. The only Court ruling I am aware of regarding Joe Blow's DP-501 is that they infringed on TiVo's patent and were ordered to be disabled of certain abilities.


----------



## jacmyoung

kmill14 said:


> ...The Court's order only said to make sure Joe Blow's DP-501 has no ability to store TV data to its hard-drive. Regardless of what new software you put in his box, if that specific device still stores TV data to the hard-drive, then it is in contempt of the Court's order.


That is a very broad interpretation, even you guys admitted it. And the courts had said a broad interpretation can not be used to determine a contempt. There are many rulings overturned on such ground.


----------



## Curtis52

> "Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent."


http://www.chillingeffects.org/patent/notice.cgi?NoticeID=446


----------



## jacmyoung

nobody99 said:


> Let's take this one step further. Could they sell these at retail as new products once the new software is downloaded?
> 
> Let's say Joe Blow sends his Dish player back to DISH. They install a fresh version of software (version 8.02.0000000000000001). Now DISH sends it to an installer, who sells it as a brand new device.
> 
> Eh, I don't think so. I think they'd be running afoul of several consumer laws.


Wrong, many past cases in which the infringers recalled the infringing products and modified them then sent them back out, they could certainly do that, as long as the modification made the modified product non-infringing.


----------



## kmill14

jacmyoung said:


> That is a very broad interpretation, even you guys admitted it. And the courts had said a broad interpretation can not be used to determine a contempt. There are many rulings overturned on such ground.


It is NOT a broad interpretation...it is a very literal interpretation.


----------



## jacmyoung

Curtis0620 said:


> Dish must prove substantial issues to avoid contempt.


That is what DISH is doing now. But what some of you and Tivo are trying to do is to prevent DISH from proving so all together.


----------



## Curtis0620

jacmyoung said:


> That is what DISH is doing now. But what some of you and Tivo are trying to do is to prevent DISH from proving so all together.


We doubt that their software change is substantial.


----------



## jacmyoung

kmill14 said:


> It is NOT a broad interpretation...it is a very literal interpretation.


A broad interpretation becasue I had use an example to prove it is broad, you disagree, but that is fine, when we disagree, I as the defendant gets the benefit of such disagreement.


----------



## jacmyoung

Curtis0620 said:


> We doubt that their software change is substantial.


That is fine, what you can not do is to not allow DISH to prove it is substantial. A summary contempt proceeding is designed precisely for such purpose, to allow the infringer the opportunity to demonstrate their changes are substantial.

You can not deny an infringer such opportunity.


----------



## kmill14

jacmyoung said:


> A broad interpretation becasue I had use an example to prove it is broad, you disagree, but that is fine, when we disagree, I as the defendant gets the benefit of such disagreement.


You can feel that way if you like, but the US Supreme Court is very clear on its desire to protect a district court's ability to enforce its orders.

Since E* has already said itself that the order has no ambiguity, then they are obviously willfully ignoring it.

So when Folsom rules them in contempt, how can they argue ambiguity when they have already said there is none?


----------



## kmill14

jacmyoung said:


> That is fine, what you can not do is to not allow DISH to prove it is substantial. A summary contempt proceeding is designed precisely for such purpose, to allow the infringer the opportunity to demonstrate their changes are substantial.
> 
> You can not deny an infringer such opportunity.


They will get that opportunity when TiVo brings forth a contempt motion regarding new devices and new versions of old devices that have not yet been sold or marketed.


----------



## jacmyoung

kmill14 said:


> You can feel that way if you like, but the US Supreme Court is very clear on its desire to protect a district court's ability to enforce its orders.


The same Court also was very clear how a contempt may not be used to punish.



> Since E* has already said itself that the order has no ambiguity, then they are obviously willfully ignoring it.


No DISH said there is no ambiguity according to their interpretation, the DVR functions in their mind undoubtely refer to the ones operated by the old software, not by the new software.

The ambiguity I am talking about is when both sides insist their own interpretation is correct without any doubt, then the ambiguity exists as to the disagreement. When that happens, the benefit goes to DISH as the defendant, meaning DISH's interpretation supercedes Tivo's.



> So when Folsom rules them in contempt, how can they argue ambiguity when they have already said there is none?


When Judge Folsom rules them not in contempt, he will have tones of prior cases and higher court opinions to back him up.


----------



## jacmyoung

kmill14 said:


> They will get that opportunity when TiVo brings forth a contempt motion regarding new devices and new versions of old devices that have not yet been sold or marketed.


They will get that opportunity when the judge tells Tivo there is no such thing as a "face of injunction contempt" because he could not find a single example, from the past cases, or from his own cases, so what do you wish to do next Tivo?


----------



## nobody99

jacmyoung said:


> The ambiguity I am talking about is when both sides insist their own interpretation is correct without any doubt, then the ambiguity exists as to the disagreement. When that happens, the benefit goes to DISH as the defendant, meaning DISH's interpretation supercedes Tivo's.


This is supremely idiotic, even by your standards.

By your logic, all you have to do is disagree with the other side, and *poof* the injunction goes away?

Let's say I have an injunction that says "jacmyoung must stay 500 feet away from nobody99." I take that to mean that you must stay 500 feet away from me. You take it to mean that you must "stay 500 feet away from my house, but you are allowed to take any money in my wallet."

According to your logic "the benefit" goes to you "as the defendant" meaning your interpretation supercedes mine.

Wow. Your mental gymnastics have outdone themselves. :eek2: :eek2:


----------



## kmill14

jacmyoung said:


> the benefit goes to DISH as the defendant, meaning DISH's interpretation supercedes Tivo's.


Thats funny. I didn't know the Courts rulings were based on whether one side or the other had "superceding authority of interpretations". If your statement above was true, all any defendant would have to do is say that their interpretation was different than the plaintiff's, and since they are the defendant, they get the benefit of the doubt.

Thats almost as funny as Curtis52's statement that the adjudicated devices cease to exist when new software is downloaded to them.


----------



## jacmyoung

kmill14 said:


> Thats funny. I didn't know the Courts rulings were based on whether one side or the other had "superceding authority of interpretations". If your statement above was true, all any defendant would have to do is say that their interpretation was different than the plaintiff's, and since they are the defendant, they get the benefit of the doubt.
> 
> Thats almost as funny as Curtis52's statement that the adjudicated devices cease to exist when new software is downloaded to them.


That is funny only because you refuse to see the merit of the other side interpretation.

I can not simly disagree and be done with it, my disagreement must have merit to prove it is a reasonable interpretation, whether it is reasonable or not is not for you to say, but for the judge to say. If he sees merits on both sides, he must give the benefit to the defendant.

For example, you can not say I have no merit when I say the term "modified device" can also include "modified adjudicated device", or "the DVR functions" is not the same as "all DVR fucntions in the world", or "disable..." does not automatically imply I can not re-enable after I disable.

My above arguments in my view has merit, it is not up to you to decide if there are merits or not, it is up to the judge to decide.


----------



## kmill14

jacmyoung said:


> That is funny only because you refuse to see the merit of the other side interpretation.


Its funny because you seem to think a ruling is made based on one side or the other's "interpretation". The only interpretation that matters is the Court's. Personally, I think the Judge in this case will not want to castrate himself and his ability to give out orders in future patent cases.


----------



## nobody99

Remember the game with Chinese fortune cookies? You could just tack on the phrase "in bed" to your fortunate and hilarity would ensue. For example the fortune:

"You will get a big raise" 

becomes 

"You will get a big raise, in bed"

Hahaha, funny, yeah, I know, pedestrian and childish. But funny.

I have a new game. After everything that Curtis52 or jacmyoung says, add the phrase "for unadjudicated devices." Suddenly everything they say makes sense!

For example:

jacmyoung: "The same Court also was very clear how a contempt may not be used to punish"

becomes "The same Court also was very clear how a contempt may not be used to punish for unadjudicated devices"

Wow! It makes sense!

Or Curtis52: "In other words, a modification. The whole case was about modification."

becomes "In other words, a modification. The whole case was about modification for unadjudicated devices"

Fun times will be had by all!! :lol:


----------



## kmill14

jacmyoung, ignorance is no excuse against a contempt hearing, just so you know. 

Feel free to argue that the sky is red and the moon is made if cheese all you want, but in this case, if Joe Blow's DP-501 can still write TV data to its hard-drive, then it is in contempt of the Court's clear and unambiguous order.


----------



## jacmyoung

kmill14 said:


> Its funny because you seem to think a ruling is made based on one side or the other's "interpretation". The only interpretation that matters is the Court's. Personally, I think the Judge in this case will not want to castrate himself and his ability to give out orders in future patent cases.


That is exactly what you are saying too, that the judge must rule on your side of interpretation, isn't it? Please don't lecture me, you have not even spent much time to research the prior cases, or even the law, and the only few cases you cited all ended up proving my argument remember? So please stop lecturing me.

Personally, I think the judge will not want to go against all the precedences and his bosses opinons just so he can prove Tivo's point, because by doing so he will have to change the way he does business, and also the way all judges do their business in such cases, that somehow from now on, even if an infringer is not infringing on the patent, he can still be in contempt.


----------



## Curtis0620

jacmyoung said:


> That is exactly what you are saying too, that the judge must rule on your side of interpretation, isn't it?
> 
> Personally, I think the judge will not want to go against all the precedences and his bosses opinons just so he can prove Tivo's point, because by doing so he will have to change the way he does business, and also the way all judges do their business in such cases, that somehow from now on, even if an infringer is not infringing on the patent, he can still be in contempt.


Again, who says they are no longer infringing?


----------



## kmill14

You must have a pretty low opinion of this Judge if you think a defense of his own order would only be to prove TiVo's point. 

Let me ask you this: if a software download to disable the DVR functionality of Joe Blow's DP-501 had not been possible, what would the Court have done?


----------



## Curtis52

Curtis0620 said:


> Again, who says they are no longer infringing?


Dish.


----------



## jacmyoung

Curtis0620 said:


> Again, who says they are no longer infringing?


Who said they still are? Even Tivo are not saying it, remember what Tivo said? After Tivo looked at the new software codes, they stated the new software was not more than colorable different, but "to be sure"...

What did you think the "to be sure" mean? Even Tivo was not sure if DISH still infringe or not. No one knows unless the evidence is looked at, and that is what the judge will do.


----------



## Curtis52

kmill14 said:


> Let me ask you this: if a software download to disable the DVR functionality of Joe Blow's DP-501 had not been possible, what would the Court have done?


Individual boxes can be turned off without downloading software. Receivers can be turned off and they don't even have a hard drive.


----------



## jacmyoung

Curtis52 said:


> Dish.


Yes, DISH says we no longer infringe, TiVo said they wanted to be sure.


----------



## Curtis0620

jacmyoung said:


> Who said they still are? Even Tivo are not saying it, remember what Tivo said? After Tivo looked at the new software codes, they stated the new software was not more than colorable different, but "to be sure"...
> 
> What did you think the "to be sure" mean? Even Tivo was not sure if DISH still infringe or not. No one knows unless the evidence is looked at, and that is what the judge will do.


Then we agree. DISH may still infringe.


----------



## kmill14

Unless this new software ensures Joe Blow's DP-501 can no longer write TV data to the hard-drive, they won't be looking at it for this hearing.


----------



## Curtis0620

Curtis52 said:


> Individual boxes can be turned off without downloading software. Receivers can be turned off and they don't even have a hard drive.


And I believe the end user can block software updates. I wonder if this could be a problem?


----------



## kmill14

Curtis52 said:


> Individual boxes can be turned off without downloading software. Receivers can be turned off and they don't even have a hard drive.


So the Court would have done what exactly?


----------



## Curtis52

kmill14 said:


> Unless this new software ensures Joe Blow's DP-501 can no longer write TV data to the hard-drive, they won't be looking at it for this hearing.


That's why this hearing is a waste of time.


----------



## jacmyoung

kmill14 said:


> You must have a pretty low opinion of this Judge if you think a defense of his own order would only be to prove TiVo's point.


You must have a very low opinion of the judge to believe he will find DISH in contempt only for the sake of agreeing with Tivo's literal interpretation of his injunction, before you even let the judge tell us what his injunction actually should be interpreted.



> Let me ask you this: if a software download to disable the DVR functionality of Joe Blow's DP-501 had not been possible, what would the Court have done?


Historically that was exactly true for the infirnging products in the field, most of the time there were no easy ways to modify them, and in most cases they were allowed to be used in the field untill they die.

In this case it is precisely due to this convevient modification mathod, the court went further than the conventional case. And for the same reason, the court must allow such convenient method be used to avoid a contempt. Talking about equity here, if you take the advantage of a new method to prohibt an act of infringement, you must also allow the same method be used to stop an act of infringement. It's only fair.


----------



## kmill14

Yep. And so will all of Folsom's future injunctive orders.


----------



## jacmyoung

Curtis52 said:


> That's why this hearing is a waste of time.


It will not be if after telling Tivo no there is no such thing as a "face of injunction contempt", all the avaiable evidece will then be heard to determine if the changes are indeed substantial or not, depending on if the judge has more time. The judge did say more time will be allowed if necessary.

Because there can be hours of briefings, depostions, exhibits, all kinds of materials on record ready by then.


----------



## jacmyoung

kmill14 said:


> Yep. And so will all of Folsom's future injunctive orders.


Certainly, all judge's orders should be fair.


----------



## Curtis52

jacmyoung said:


> The judge did say more time will be allowed if necessary.


Where? When?


----------



## kmill14

jacmyoung said:


> Historically that was exactly true for the infirnging products in the field, most of the time there were no easy ways to modify them, and in most cases they were allowed to be used in the field untill they die.


Historically, the Court would have issued a product recall. In this case, the product recall is a remote disabling of certain functionality.


----------



## kmill14

jacmyoung said:


> Certainly, all judge's orders should be fair.


Are you saying this order to disable the ability to write TV data to the hard-drive of Joe Blow's DP-501 is unfair?


----------



## Curtis52

kmill14 said:


> Historically, the Court would have issued a product recall. In this case, the product recall is a remote disabling of certain functionality.


After modifying a recalled device to be non-infringing, it could be returned or resold.


----------



## Curtis0620

Curtis52 said:


> After modifying a recalled device to be non-infringing, it could be resold.


Didn't know they were found to be non-infringing.


----------



## Curtis52

Curtis0620 said:


> Didn't know they were found to be non-infringing.


Items are presumed to be non-infringing until found otherwise.


----------



## Curtis0620

Curtis52 said:


> Items are presumed to be non-infringing until found otherwise.


According to the trial, these were found to infringe.


----------



## kmill14

Curtis52 said:


> After modifying a recalled device to be non-infringing, it could be resold.


That's right. E* can take Joe Blow's DP-501 back to the shop, modify it, and resell it. But the one currently sitting in his living room has to be disabled, plain and simple. As the Judge stated: *"The hardship of disabling DVR capabilities to Defendants' DVR customers is a consequence of Defendants' infringement"*


----------



## Curtis52

kmill14 said:


> That's right. E* can take Joe Blow's DP-501 back to the shop, modify it, and resell it.


The location where the modification takes place is irrelevant.


----------



## kmill14

Curtis52 said:


> The location where the modification takes place is irrelevant.


Actually, it is, since the one in Joe Blow's posession was ordered to be completely disabled of its ability to write TV data to the hard-drive. E* is within their rights to recall that device and issue a new one to Mr. Blow, but the one currently in his posession has to be disabled.


----------



## Curtis52

kmill14 said:


> the one currently in his posession has to be disabled.


No, the one currently in his possession has already been modified. Injunctions can only be used to prevent infringement.


----------



## Curtis0620

Curtis52 said:


> No, the one currently in his possession has already been modified. Injunctions can only be used to prevent infringement.


Modified with software that has not been proven to not infringe. So currently means nothing. If it was pre-approved then OK.


----------



## kmill14

Curtis52 said:


> No, the one currently in his possession has already been modified.


So what? If the modification of Joe Blow's DP-501 does not include disabling the ability to write data to the hard-drive, then E* is in contempt. Clear order and all.

Feel free to quote KSM all you want, it only applies to new devices. The one in Joe Blow's posession is not new. Until you can show proof that it *the entire device* ceased to exist and was replaced by something else, its not new.


----------



## Curtis52

Curtis0620 said:


> Modified with software that has not been proven to not infringe. So currently means nothing. If it was pre-approved then OK.


It has not been proven to infringe so it's OK.



> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.
> 
> http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


----------



## James Long

jacmyoung said:


> Curtis0620 said:
> 
> 
> 
> As for can I not read, have I been insulting to you?
> 
> 
> 
> Did you try to insult the court's opinion when you said an adjudicated device could not be modified?
Click to expand...

Are you Judge Folsom? Do you take insults to his court (or other courts) as personal insults?


----------



## kmill14

Software was never proven to infringe to begin with, so what does that matter?


----------



## Curtis0620

Curtis52 said:


> It has not been proven to infringe so it's OK.


The current verdict is infringe, so it must be proven otherwise.


----------



## Curtis52

kmill14 said:


> Feel free to quote KSM all you want, it only applies to new devices.


There isn't one set of patent laws for new devices and another set for used devices. KSM is about modified devices. This case is about modified devices.


----------



## Curtis52

Curtis0620 said:


> The current verdict is infringe, so it must be proven otherwise.


There is no verdict on the modified devices. There is no "current verdict".


----------



## kmill14

Curtis52 said:


> There isn't one set of patent laws for new devices and another set for used devices. KSM is about modified devices. This case is about modified devices.


Actually, this motion is about adjudicated devices. KSM is about non-adjudicated devices. There is a difference.


----------



## Curtis52

kmill14 said:


> Actually, this motion is about adjudicated devices. KSM is about non-adjudicated devices. There is a difference.


No non-adjudicated device has ever gone before an appeals court judge.


----------



## nobody99

Ignoring the first two orders (money and the prevention of future infringement) and concentrating on the last order of the injunction (to disable the DVR functionality)

Simple facts:


The order calls for 3+ million devices to have DVR functionality turned off. The number of these devices will never change. The injunction order gave them them a scarlet letter so to speak. For the sake of argument, let's say there were _exactly_ three million of these devices.

These three million devices have another name that they are referred to collectively. That name is "Infringing Products." Had the injunction chosen the term "Funny Monkey Ballons" instead, it wouldn't change a thing - the term "Infringing Poducts" refers to exactly one thing: the three million DVRS that got the scarlet letter.

These three million devices are now _adjudicated to infringe_.

Every single case that's been cited as an example why DISH is not in contempt deals with products, items, etc., that are _not adjudicated._ Every single case where the term "colorably different" is used is also accompanied by "adjudicated devices and those not more than colorably different."

Both sides in this debate have valid points: perhaps the new software doesn't infringe. Perhaps it's not more than only colorably different. But that doesn't change one simple fact: the devices have been adjudicated, ordered to have something done to them, and that order was ignored.

The meaning of the phrase "adjudicated devices and those not more than colorably different" really spells it out. "Adjudicated devices" are _presumed to infringe_ where those "more than colorably different" are not. Until the court says that an adjudicated device no longer infringes, the assumption must be that it does.


----------



## kmill14

Curtis52 said:


> No non-adjudicated device has ever gone before an appeals court judge.


And that's relevant to what conversation?


----------



## Curtis52

kmill14 said:


> And that's relevant to what conversation?


KSM was an appeals court case.


----------



## Curtis0620

Curtis52 said:


> KSM was an appeals court case.


So that makes that case irrelevant to this one.


----------



## Curtis52

Curtis0620 said:


> So that makes that case irrelevant to this one.


Appeals court cases are precedential.


----------



## kmill14

Curtis52 said:


> No non-adjudicated device has ever gone before an appeals court judge.





> KSM was an appeals court case


Actually, The Appeals Court in KSM addressed two completely different devices:

THERMAL-LOCK devices, which were adjudged to infringe

and

ULTRA-LOK devices, which were NEVER adjudged to infringe.


----------



## Curtis52

kmill14 said:


> Actually, The Appeals Court in KSM addressed two completely different devices:
> 
> THERMAL-LOCK devices, which were adjudged to infringe
> 
> and
> 
> ULTRA-LOK devices, which were NEVER adjudged to infringe.


The ULTRA-LOK device was adjudicated in district court and found to infringe. They found no more than colorable differences.



> "The district court found that the Ultra-Lok device was "merely colorably different" from the Thermal-Lock device. The court observed:
> The court does not believe that Jones has taken a "new route" to invent around the KSM patent it infringed. Any differences to which Jones draws the court's attention are either irrelevant to the determination which the court must make or, if relevant, are either not supported by the evidence or insignificant."


----------



## Curtis0620

Curtis52 said:


> The ULTRA-LOK device was adjudicated in district court.


Wow, looks bad for dish then.


----------



## kmill14

Curtis52 said:


> The ULTRA-LOK device was adjudicated in district court.


It wasn't adjudged to infringe, which is what I said. Who cares if it was adjudged to only be colorably different? It is a separate device from the original infringing product, and is not relevant to this motion in front of us.

The DP-501 = THERMAL-LOCK

The ViP722 = ULTRA-LOK

Of course TiVo is not pressing for a ruling on the ViP722 at this time, unlike the KSM case (which again clearly talks about 2 different devices).


----------



## peak_reception

Curtis52 and jacmyoung like to cite this opinion:


> [Contempt is] *...not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device* to remain in the marketplace.


 with emphasis added. Arbek Mfg., 55 F.3d at 1570.

And it does give some comfort to EchoStar's position even though there's no evidence yet of "former infringement." But look at the sentence directly before that:


> *Contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders.*


 This offers just as much or more comfort to TiVo's position.

EchoStar has shown a flagrant disregard for Judge Folsom's order to disable DVR functionality in the infringing products. Even if one plays along with the word games saying that EchoStar did indeed turn off the DVRs for a few minutes while downloading new software, thus complying with the injunction , *they still turned them back on* with no clearance from the judge to do so. One can argue that they didn't need such clearance but I think in this case they did because the order was so explicit, and so explicitly disregarded by EchoStar. It's contemptuous behavior to flout a judge's order even if you think the law is on your side and the judge's order is unreasonable or unlawful itself. That's what the appeals process is for. EchoStar took the law into their own hands by torturing the injunction to allow what they wanted to do. It was sheer, self-serving defiance and they will pay for it dearly eventually.

If this behavior doesn't constitute Contempt of Court *then there is no shield* to protect a patentee from a convicted infringer's flagrant disregard of lawful orders meant to constrain their unlawful conduct and continuing infringement.

*September 4th will in no way be a waste of time*. If it is, then the patent courts are a joke and no patentee can expect protection from flagrant violations therein. I don't expect that. I expect that EchoStar will be found in Contempt of Court for flagrant disregard of the District Court's order (the Final and Permanent Injunction), either on or shortly after the 4th. Yes EchoStar will appeal to the CAFC, and it will entail more b.s. maneuvering and many more months of delay, but it only puts off the inevitable. I think the CAFC will uphold Contempt and put an end to this matter once and for all. I doubt every much the SCOTUS would go anywhere near it. 
That's my opinion anyway. Everyone has one. We'll see... eventually... maybe... :new_popco


----------



## Curtis52

kmill14 said:


> It wasn't adjudged to infringe, which is what I said.


Here is what you said:



> "KSM is about non-adjudicated devices."


Which is incorrect.


----------



## jacmyoung

peak_reception said:


> ... This offers just as much or more comfort to TiVo's position.


Yes the shield part provides comfort to Tivo in so far as to *prevent and stop* infringement, which is what a shield does, to prevent and stop, once the infringement is prevented or stopped, the shield will have done its job. What the sword usually does is to go further, after the shield has done its job, the sword will attack, and punish, to further injure the opponent.

What the court said was, in this battle, there is only shield, no sword. There is no sword given to the court to further attack, punish or injure the infringer, once the shield has done its job to prevent and stop.


----------



## jacmyoung

kmill14 said:


> It wasn't adjudged to infringe, which is what I said. Who cares if it was adjudged to only be colorably different? It is a separate device from the original infringing product, and is not relevant to this motion in front of us.
> 
> The DP-501 = THERMAL-LOCK
> 
> The ViP722 = ULTRA-LOK
> 
> Of course TiVo is not pressing for a ruling on the ViP722 at this time, unlike the KSM case (which again clearly talks about 2 different devices).


But you continue to ignore the below:

"...not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace. "

What does the "modify a previously adjudicated or admitted infringing device" mean? A new device? A modified device? The same device?

Can DISH modify the previously adjudicated infringing devices (such as DP501s) or not?


----------



## kmill14

jacmyoung said:


> But you continue to ignore the below:
> 
> "...not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace. "
> 
> What does the "modify a previously adjudicated or admitted infringing device" mean? A new device? A modified device? The same device?
> 
> Can DISH modify the previously adjudicated infringing devices (such as DP501s) or not?


I am not ignoring that. They can certainly modify the design of the DP-501,etc and try to market and sell it to customers (but still have the potential to face future contempt proceedings).

However, the DP-501 that was already sold to customers must be removed from service (as a device that can write TV data to the hard-drive....as defined in the Injunction).


----------



## nobody99

Curtis52, jacmyoung, let's take another look at the intro to the KSM case you love so much:



> Having enjoined the infringer, a patent owner who is confronted with another possible infringement by that party in the form of a modified device will very likely seek to invoke the power of the court to punish the adjudged infringer for contempt in violating the court's injunctive order. While a patent owner, in such circumstances, *could institute a separate suit to enjoin the modified device*, the advantages of proceeding on a motion to hold his adversary in contempt are substantial.


Forget everything else for a moment. A very simple question for you:

Does the change that DISH made (downloading new software) cause the device to no longer be considered "enjoined?"


----------



## nobody99

jacmyoung said:


> What does the "modify a previously adjudicated or admitted infringing device" mean? A new device? A modified device? The same device?


Let's say I make kitchen refrigerators. I modify it to work around a GE patent. That new refrigerator is modified. The refrigerators already installed in a customer's house are not modified.

You are reading too much into the word "modified" in earlier cases. Since the courts have never seen a case of a field-modifiable device until now, these injunctions were clearly written to mean that the "modified device" means a new device.

I can't understand why you fail to see that.


----------



## nobody99

Let's throw one more quote out there for show from the KSM case:



> Obviously there must be a dividing point between those cases which should be handled by a summary contempt proceeding and those cases which should be more fully viewed in an infringement proceeding. Courts have uniformly held that the standard to be applied in determining the dividing point is *whether the alleged offending device is "merely 'colorably' different from the enjoined device* or from the patent."


How is it possible for something to be both the "alleged offending device" and "the enjoined device?"


----------



## Greg Bimson

> Contempt shall not be used as a sword to wound an infringer who made a good faith attempt to modify the adjudicated devices *in order to remain in the marketplace.*


Better yet, how are around four million DVR's that are in end users hands considered "in the marketplace"? They've already been sold; they've already been adjudicated as infringing. They certainly aren't in the marketplace any longer.


----------



## Curtis52

Greg Bimson said:


> Better yet, how are around four million DVR's that are in end users hands considered "in the marketplace"? They've already been sold; they've already been adjudicated as infringing. They certainly aren't in the marketplace any longer.


Money changes hands every month.


----------



## James Long

The problem with DISH's current software on named "Infringing Products" is that it isn't a typical "new product" or "modified product". If DISH had physically exchanged receivers for entirely different receivers DISH would have an easier time claiming the receivers were a new product. If DISH had run an exchange program swapping a "501" for a "501u" there would be a more obvious change. But DISH didn't make a physical change to the product. They claim to have made a "mental" change.

Somewhere in the logic of how the receiver works DISH claims to have secretly (without advance notification to court, plaintiff or customers) made a change. This was not the change specified in the injunction (disable the DVR functionality), this was something else.

There are no caveats in the injunction for "as configured" or "change the software" ... the injunction _clearly_ states that the DVR functionality _must_ be disabled.

DISH now has to argue that what they have done is enough ... and it is a challenge. What proof do they have that anything was ever changed or that the new software does not infringe? Should we just take DISH's word and make Tivo start a new case if they want to challenge the alleged new software?

This is the challenge for the judge ... how to balance the interest of Tivo wishing to prevent infringement and DISH wishing to get back to providing DVR service.


----------



## jacmyoung

nobody99 said:


> Let's say I make kitchen refrigerators. I modify it to work around a GE patent. That new refrigerator is modified. The refrigerators already installed in a customer's house are not modified...


But I bet your infringing refrigerators already installed in the customers' homes would not be disabled. Want a bet?

By using that analogy, were you trying to suggest the DVRs in the end users hands should not be disabled?


----------



## jacmyoung

Greg Bimson said:


> Better yet, how are around four million DVR's that are in end users hands considered "in the marketplace"? They've already been sold; they've already been adjudicated as infringing. They certainly aren't in the marketplace any longer.


No the court said to "remain in the marketplace", not to enter the marketplace.

In the marketplace means they are still useful as they were intended.


----------



## phrelin

James Long said:


> The problem with DISH's current software on named "Infringing Products" is that it isn't a typical "new product" or "modified product". If DISH had physically exchanged receivers for entirely different receivers DISH would have an easier time claiming the receivers were a new product. If DISH had run an exchange program swapping a "501" for a "501u" there would be a more obvious change. But DISH didn't make a physical change to the product. They claim to have made a "mental" change.
> 
> Somewhere in the logic of how the receiver works DISH claims to have secretly (without advance notification to court, plaintiff or customers) made a change. This was not the change specified in the injunction (disable the DVR functionality), this was something else.
> 
> There are no caveats in the injunction for "as configured" or "change the software" ... the injunction _clearly_ states that the DVR functionality _must_ be disabled.
> 
> DISH now has to argue that what they have done is enough ... and it is a challenge. What proof do they have that anything was ever changed or that the new software does not infringe? Should we just take DISH's word and make Tivo start a new case if they want to challenge the alleged new software?
> 
> This is the challenge for the judge ... how to balance the interest of Tivo wishing to prevent infringement and DISH wishing to get back to providing DVR service.


I have the perfect solution. He should order Dish to replace my two 508's with a 722.


----------



## jclewter79

phrelin said:


> I have the perfect solution. He should order Dish to replace my two 508's with a 722.


I agree they can have my 625 for a 722. I'll be happy. Charlie will not let the DVR's be shut off, just won't happen.


----------



## CuriousMark

James Long said:


> The problem with DISH's current software on named "Infringing Products" is that it isn't a typical "new product" or "modified product". If DISH had physically exchanged receivers for entirely different receivers DISH would have an easier time claiming the receivers were a new product. If DISH had run an exchange program swapping a "501" for a "501u" there would be a more obvious change. But DISH didn't make a physical change to the product. They claim to have made a "mental" change.
> 
> Somewhere in the logic of how the receiver works DISH claims to have secretly (without advance notification to court, plaintiff or customers) made a change. This was not the change specified in the injunction (disable the DVR functionality), this was something else.
> 
> There are no caveats in the injunction for "as configured" or "change the software" ... the injunction _clearly_ states that the DVR functionality _must_ be disabled.
> 
> DISH now has to argue that what they have done is enough ... and it is a challenge. What proof do they have that anything was ever changed or that the new software does not infringe? Should we just take DISH's word and make Tivo start a new case if they want to challenge the alleged new software?
> 
> This is the challenge for the judge ... how to balance the interest of Tivo wishing to prevent infringement and DISH wishing to get back to providing DVR service.


That is as good and balanced a description of where we are that I have yet seen.

The judge has a lot of options, many with very different consequences and outcomes. He also has the chance to render a judgement that could eventually become new case law after it is challenged in higher court(s). I am looking forward to discussion and speculation on what those might be, and reasons why they would make sense.

If nothing else, this is a very interesting spectator sport.


----------



## peak_reception

jacmyoung said:


> Yes the shield part provides comfort to Tivo in so far as to *prevent and stop* infringement, which is what a shield does, to prevent and stop...


. In the opinion cited, the Contempt shield's purpose is for


> *...protecting the patentee against an infringer's flagrant disregard for court orders.*


 It comes in after infringement has been adjudicated, to make sure that the infringer is complying with court orders. Such is the situation in this case where EchoStar has flagrantly violated a Final and Permanent Injunction which has already been upheld by the higher court as well.



> ...once the infringement is prevented or stopped, the shield will have done its job.


1) there's no evidence so far that infringement has been prevented or stopped.

2) the shield is not doing its job if the contemnor flagrantly disregards court orders, in this case EchoStar's failure to disable DVR functionality in all enjoined devices.


----------



## Greg Bimson

Greg Bimson said:


> Better yet, how are around four million DVR's that are in end users hands considered "in the marketplace"? They've already been sold; they've already been adjudicated as infringing. They certainly aren't in the marketplace any longer.





jacmyoung said:


> No the court said to "remain in the marketplace", not to enter the marketplace.
> 
> In the marketplace means they are still useful as they were intended.





Curtis52 said:


> Money changes hands every month.


I think the sentence I quoted needs to be analyzed a bit...


> Contempt shall not be used as a sword to wound an infringer who made a good faith attempt to modify the adjudicated devices in order to remain in the marketplace.


This is for the prohibition of sales of "not more than colorably different" products, from Arbek Mfg. v. Moazzam:


> In 1990, Moazzam sold piers that Arbek claimed infringed the '323 patent. On April 4, 1991, the parties filed a stipulated Consent Judgment and Order, in which Moazzam admitted to infringing the '323 patent. Arbek Mfg., Inc. v. Moazzam, No. 90-1814 (S.D.Cal. Apr. 8, 1991) (Order). The Order enjoined Moazzam from any future infringement.
> 
> In March 1994, Arbek learned that Moazzam was marketing *a second pier* that Arbek believed infringed the '323 patent. Moazzam's second pier is a modification of the first. The top of the second pier is not entirely slanted. Instead, Moazzam's new pier features a horizontal portion which extends across approximately half of the top. Neither the first Moazzam pier nor the claimed design has a horizontal top portion. The Arbek design has two rounded angles separating the top and sides of the pier; the new Moazzam pier has three sharp angles separating the sides, the horizontal top portion, and the slanted top portion.
> 
> Arbek filed a contempt motion to enforce the Order. The motion accused Moazzam of again infringing the '323 patent. The trial court denied the motion. The trial court found: "defendant's design DOES NOT infringe on plaintiff's patented pier design." Arbek, slip op. at 2. Arbek appeals.





> In KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 227 USPQ 676 (Fed.Cir.1985), this court sets forth a standard for deciding whether an accused infringer is in contempt of an injunction prohibiting infringement. To show contempt, the patent owner must prove by clear and convincing evidence that "the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." Id. at 1530.


But this does not apply to an adjudicated device which has been enjoined, either from sales or functionality. And in this case, it appears that there was no modification of the adjudicated products in the end users hands.


> In sum, contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders. Contempt, however, is not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace. See id. at 1525-26. Rather, the modifying party generally deserves the opportunity to litigate the infringement question at a new trial, "particularly if expert and other testimony subject to cross-examination would be helpful or necessary." Id. at 1531.


Flagrant disregard for court orders.

Only if DISH/SATS can convince the court that four million devices covering eight models of DVR, the same court which found those devices infringe, that there are no longer any adjudicated devices, can DISH/SATS not be found in contempt.

Every single time someone finds what they believe is a "relevant" case, does one find out that case has two separate devices or models: an adjudicated device and a modified device. None of these "relevant" cases discuss anything about an adjudicated device being the modified device.


----------



## peak_reception

Interesting post Greg. Good work.


----------



## Curtis52

Greg Bimson said:


> In KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 227 USPQ 676 (Fed.Cir.1985), this court sets forth a standard for deciding whether an accused infringer is in contempt of an injunction prohibiting infringement. To show contempt, the patent owner must prove by clear and convincing evidence that "the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." Id. at 1530.
> 
> 
> 
> But this does not apply to an adjudicated device which has been enjoined, either from sales or functionality.
Click to expand...

KSM applied specifically to an adjudicated device that had been modified. An unadjudicated device has never gone before an appeals court judge.


----------



## Curtis52

Greg Bimson said:


> Every single time someone finds what they believe is a "relevant" case, does one find out that case has two separate devices or models: an adjudicated device and a modified device. None of these "relevant" cases discuss anything about an adjudicated device being the modified device.


KSM deals with an adjudicated modified device. If it hadn't been adjudicated it wouldn't have been appealed. All of these appeals court cases that make up the case law involve adjudicated modified devices.


----------



## Curtis52

Greg Bimson said:


> Only if DISH/SATS can convince the court that four million devices covering eight models of DVR, the same court which found those devices infringe, that there are no longer any adjudicated devices, can DISH/SATS not be found in contempt.


No, the 9-4 hearing is about whether the DVR modification could ever make any difference or whether contrary to law, it's OK to require DVR removal from the marketplace regardless of whether they infringe.


----------



## peak_reception

No, the 9-4 hearing is about contemptuous conduct and the flagrant disregard of a court order.


----------



## Greg Bimson

Greg Bimson said:


> But this does not apply to an adjudicated device which has been enjoined, either from sales or functionality.





Curtis52 said:


> KSM applied specifically to an adjudicated device that had been modified. An unadjudicated device has never gone before an appeals court judge.


So what if the device is modified? In this case, it is eight models of DVR's that have been enjoined from sales, and also ordered to have their DVR functionality disabled.

If DISH/SATS no longer has any enjoined, adjudicated infringing devices, where'd they go? David Copperfield, Criss Angel and David Blaine have them?

One can take DISH/SATS word those devices were modified. However, we still haven't seen any documents filed with the court that make one iota of difference. Specifically, if it is important that colorable difference and infringement must be adjudged, TiVo must have discovery on the new software. Full discovery.

DISH/SATS was given one specific order, which has not been followed, no matter how DISH/SATS tries to spin it. There is one modification the court ordered: disable the DVR functionality in the eight models of DVR the court and the jury found infringing the Time Warp patent.


----------



## Curtis52

Greg Bimson said:


> DISH/SATS was given one specific order, which has not been followed, no matter how DISH/SATS tries to spin it. There is one modification the court ordered: disable the DVR functionality in the eight models of DVR the court and the jury found infringing the Time Warp patent.


Those DVRs no longer exist. They became new DVRs when they were modified. The appeals court recognizes that modified devices are new devices.



> "Where the *alteration* in the device is "merely colorable" and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the *new* device in proceedings for contempt for violation of the injunction [Citations omitted.] But where infringement by the *new* device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the *new* device, or institute a wholly new suit for such an injunction."


----------



## Curtis52

Greg Bimson said:


> One can take DISH/SATS word those devices were modified. However, we still haven't seen any documents filed with the court that make one iota of difference. Specifically, if it is important that colorable difference and infringement must be adjudged, TiVo must have discovery on the new software. Full discovery.


Fine. TiVo needs to file a motion and get on with it. The 9-4 hearing is a waste of time.


----------



## Greg Bimson

Curtis52 said:


> Fine. TiVo needs to file a motion and get on with it. The 9-4 hearing is a waste of time.


Funny. There is a court order mandating DISH/SATS disable eight models of DVR's. Was that a waste of time, too?


> "Where the alteration in the device is "merely colorable" and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the *new* device in proceedings for contempt for violation of the injunction [Citations omitted.] But where infringement by the *new* device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the *new* device, or institute a wholly new suit for such an injunction."


This is regarding sales of a modified device, which may infringe and may not be much different than the original, adjudicated product.

Meanwhile, there is this order the court decreed that states to disable eight models of DVR.


----------



## jacmyoung

peak_reception said:


> ...2) the shield is not doing its job if the contemnor flagrantly disregards court orders, in this case EchoStar's failure to disable DVR functionality in all enjoined devices.


But of course if you believe what DISH has done is a *flagrant* disregard of the order, there is no argument with you, I simply disagree. The most you can charge is DISH misinterpreted the order, in a way DISH actually had many many prior cases to suporrt their interpretation as correct. You can not honestly call that a *flagrant* disregard of the order. Even Tivo did not dare to make such assertion.


----------



## jacmyoung

Greg Bimson said:


> ...Every single time someone finds what they believe is a "relevant" case, does one find out that case has two separate devices or models: an adjudicated device and a modified device. None of these "relevant" cases discuss anything about an adjudicated device being the modified device.


But of course you simply ignore that Footprint 2.0 case, where the Footprint 2.0 service never changed name nor stopped working in the field. What do you all that, a new service after the modification? A modified service? The same one? The Footprint 2.0 serivce was clearly an adjudicated service I hope you at least can admit that?

Now you like to say but in that case the court allowed it, not in here, but keep in mind I am not aruging on that (it was for another of my posts if you cared to read it), only that to dispute your notion that a modified adjudicated device can not be one that is already in the field. It certainly can.

Because if the court has always meant it to be the modified adjudicated devices not sold yet, some where you would find a clarification about it, but you can not find a single case where the court made such distinction, and therefore the only conclusion you can make is the court did not mean to draw any distinction.

Remember, if it is not clear, all the benefits of ambiguity goes to the defendant as always.


----------



## Curtis52

Greg Bimson said:


> Funny. There is a court order mandating DISH/SATS disable eight models of DVR's. Was that a waste of time, too?


Apparently not. Dish might never have modified the DVRs if not for the injunction.


----------



## James Long

jacmyoung said:


> But of course you simply ignore that Footprint 2.0 case, where the Footprint 2.0 service never changed name nor stopped working in the field.


You keep ignoring that the injunction in the Footprint 2.0 case was specifically against the service configured as described. There is no such caveat in this injunction. The eight named products MUST be disabled and DVR functionality must NOT be enabled in any new placements.


----------



## Jim5506

It seems that the judges order to disable the infringing devices (the hardware portion of which was remanded) is the death penalty for trespassing, and might constitute cruel and unusual punishment.

If a computer manufacturer introduces an operating system for it's computers that copies Microsoft's system in some way , the court shouldn't order the computers disabled, they should order the software removed and/or replaced.

This is not a vacuum cleaner or other physical device that was copied, it was a software solution. A different software solution is a different device in the digital electronics world, the physical box is irrelevant.

Another case of the courts being so far behind the technology that they fail to even percieve the situation, much less adjudicate it.

The same might be said of the US Patent Office.

I would not be surprised if the judge did find Dish in contempt, but I believe it will be reversed on appeal because of the errors in the order in the first place.


----------



## kmill14

Curtis52 said:


> *Those DVRs no longer exist.* They became new DVRs when they were modified. The appeals court recognizes that modified devices are new devices.


That continues to be the dumbest statement in all 5000+ posts on this case.


----------



## kmill14

Curtis52 said:


> KSM deals with an adjudicated modified device. If it hadn't been adjudicated it wouldn't have been appealed. All of these appeals court cases that make up the case law involve adjudicated modified devices.


Maybe you should read up on the KSM case, since you have no idea what it dealt with. There were two different types of devices named in that case.

One already adjudged to infringe, the other NOT adjudged to infringe.

The hearing on 9/4 only deals with devices already adjudged to infringe.

Dumb.


----------



## nobody99

jacmyoung said:


> The most you can charge is DISH misinterpreted the order, in a way DISH actually had many many prior cases to suporrt their interpretation as correct. You can not honestly call that a *flagrant* disregard of the order. Even Tivo did not dare to make such assertion.


Here's what dish themselves said in arguing for a stay of the injunction:



> "would immediately remove DVRs from three million families who are innocent of any wrongdoing&#8230; [depriving] those families of DVRs and force[ing] them to incur significant disruption and expense in order to replace them.
> ...
> Defendants do not dispute that, with software updates transmitted directly to the infringing products, the DVR capabilities of the infringing products can be disabled.


There's little doubt that DISH knew what the injunction meant. They just chose to ignore it.


----------



## nobody99

Jim5506 said:


> If a computer manufacturer introduces an operating system for it's computers that copies Microsoft's system in some way , the court shouldn't order the computers disabled, they should order the software removed and/or replaced.


The problem is that DISH had a chance at the appeals court level to have the injunction's wording changed - maybe to exactly what you are describing. They screwed up - they didn't ask to have the language changed. Like it or not, fair or not (and I agree with you that something's f'ed up about the whole system) it's what we have.


----------



## peak_reception

kmill14 said:


> Maybe you should read up on the KSM case, since you have no idea what it dealt with. There were two different types of devices named in that case.
> 
> One already adjudged to infringe, the other NOT adjudged to infringe.
> 
> The hearing on 9/4 only deals with devices already adjudged to infringe.
> 
> Dumb.


 Curtis52 is saying that there are two different devices in this case too; One already adjudged to infringe, and the other (with software update) NOT adjudged to infringe. It's a creative argument but tortures language and logic. It also stands in direct opposition to Judge Folsom's explicit order to disable DVR functionality in all enjoined devices. EchoStar doesn't get to determine if the devices no longer infringe or not. They *must* follow the court order until their modification is adjudicated. Unfortunately for them, the Contempt hearing comes first, as it should.


----------



## peak_reception

Curtis52 said:


> Those DVRs no longer exist. They became new DVRs when they were modified.


 No they didn't. They're still infringing devices that have been modified by a software update of unknown effect on the case. EchoStar will get their day in court with the modified infringing devices. Unfortunately for them the Contempt hearing comes first. And issue #1 will not be infringement, but rather the flagrant disregard for a court order. The stubborn fact remains that they didn't do what the judge ordered them to do.

Until the modified infringing devices are adjudicated EchoStar must follow court orders, not become a law unto themselves by unilaterally declaring that they no longer infringe and acting as though it were established fact. That behavior is what will land them in Contempt of Court on or shortly after September 4.

Arguing that EchoStar *did* follow both the spirit *and letter* of the injunction requires a tortured reading in opposition to Judge Folsom's clear intent and order to disable DVR functionality in all enjoined devices.


----------



## peak_reception

jacmyoung said:


> But of course if you believe what DISH has done is a *flagrant* disregard of the order, there is no argument with you, I simply disagree.


 Yes, we disagree. No crime in that. It will be fascinating to see what happens on September 4 and beyond.



> The most you can charge is DISH misinterpreted the order


 Well, that is what they are saying as a last line of defense in case the judge rejects their interpretation. However, the judge can certainly rule that they have flagrantly disregarded his direct order. And probably will.



> You can not honestly call that a *flagrant* disregard of the order. Even Tivo did not dare to make such assertion.


 Sure I can, and yes they did. They might not have used the word "flagrant" but that's what they are saying in so many words. It's both honest *and* accurate, in my opinion. A flagrant disregard of the Court's Final and Permanent Injunction; Absolutely!


----------



## peak_reception

I hope that TexasAggie (or whatever the exact moniker) reappears at some point. His formidable 
background was a major asset to the discussion. And what happened to the guy with the sword? Was he banned?


----------



## James Long

Mainer_ayah? No ban ... he's just not visiting or participating at this time.


----------



## Curtis52

kmill14 said:


> Maybe you should read up on the KSM case, since you have no idea what it dealt with. There were two different types of devices named in that case.
> 
> One already adjudged to infringe, *the other NOT adjudged to infringe*.


No.



> "*The district court found that the Ultra-Lok device was "merely colorably different"* from the Thermal-Lock device. The court observed: The court does not believe that Jones has taken a "new route" to invent around the KSM patent it infringed. Any differences to which Jones draws the court's attention are either irrelevant to the determination which the court must make or, if relevant, are either not supported by the evidence or insignificant.
> 
> In reaching this conclusion the court relied on its finding that the devices were "equivalent".
> 
> KSM





> "The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule, to be addressed infra, that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are *no more than colorably different therefrom and which clearly are infringements of the patent*. "
> 
> KSM


----------



## Curtis52

> "Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." KSM


I fully expect someone to say that KSM doesn't apply because it was about fasteners and this case is about DVRs. Case law doesn't work that way. The judges explain their logic so that it can be used in future cases. If the explained logic needs caveats they include caveats. The paragraph above isn't limited to fasteners. It doesn't say anything about fasteners. It also doesn't say anything about "new" or "used". It doesn't say anything about "adjudicated devices" or "nonadjudicated devices". It doesn't say anything about where the modification takes place. Those caveats are not there.


----------



## kmill14

Quote:
Originally Posted by kmill14 
Maybe you should read up on the KSM case, since you have no idea what it dealt with. There were two different types of devices named in that case.

One already adjudged to infringe, the other NOT adjudged to infringe.



> No.


Actually, the correct response from you should have been YES.

You continue to (purposely or otherwise) ignore or fail to represent the truth. The Appeals Court said right at the very beginning:



> Under the standard we conclude is appropriate, the judgment must be set aside as a matter of law bec*ause of the refusal of the district court to consider whether the Jones ULTRA-LOK devices infringed the claims of the '217 patent.*


So there you go. ULTRA-LOK devices were never adjudged to infringe, unlike THERMAL-LOCK devices.

The only thing KSM is good for is to clearly show seperation between devices already adjudged to infringe (THERMAL-LOCK and DP-501) and devices not yet adjudged to infringe (ULTRA-LOK and ViP722...but NOT DP-501s)


----------



## Greg Bimson

Curtis52 said:


> I fully expect someone to say that KSM doesn't apply because it was about fasteners and this case is about DVRs. Case law doesn't work that way. The judges explain their logic so that it can be used in future cases. If the explained logic needs caveats they include caveats. The paragraph above isn't limited to fasteners. It doesn't say anything about fasteners. It also doesn't say anything about "new" or "used". It doesn't say anything about "adjudicated devices" or "nonadjudicated devices". It doesn't say anything about where the modification takes place. Those caveats are not there.


No, but that isn't the violation of the injunction order in which TiVo seeks a remedy. From KSM v. Jones:


> Having enjoined the infringer, *a patent owner who is confronted with another possible infringement by that party in the form of a modified device* will very likely seek to invoke the power of the court to punish the adjudged infringer for contempt in violating the court's injunctive order.


However, TiVo isn't asking for a contempt violation for possible infringement of a modified device. TiVo is asking for a contempt violation for simply ignoring the court's order, as DISH/SATS has not disabled eight models of DVR's which were adjudicated as infringing and ordered to have their DVR functionality disabled.


----------



## Curtis52

kmill14 said:


> Actually, the correct response from you should have been YES.
> 
> You continue to (purposely or otherwise) ignore or fail to represent the truth. The Appeals Court said right at the very beginning:
> 
> 
> 
> Under the standard we conclude is appropriate, the judgment must be set aside as a matter of law bec*ause of the refusal of the district court to consider whether the Jones ULTRA-LOK devices infringed the claims of the '217 patent.*
> 
> 
> 
> So there you go. ULTRA-LOK devices were never adjudged to infringe, unlike THERMAL-LOCK devices.
> 
> The only thing KSM is good for is to clearly show seperation between devices already adjudged to infringe (THERMAL-LOCK and DP-501) and devices not yet adjudged to infringe (ULTRA-LOK and ViP722...but NOT DP-501s)
Click to expand...

No. The district court found that the modified devices were not more than colorably different:


> "*The district court found that the Ultra-Lok device was "merely colorably different"* from the Thermal-Lock device. The court observed: The court does not believe that Jones has taken a "new route" to invent around the KSM patent it infringed. Any differences to which Jones draws the court's attention are either irrelevant to the determination which the court must make or, if relevant, are either not supported by the evidence or insignificant.
> 
> In reaching this conclusion the court relied on its finding that the devices were "*equivalent*". KSM


Merely colorably different means infringing:



> ""The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule, to be addressed infra, that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are *no more than colorably different therefrom and which clearly are infringements of the patent*. " KSM


The appeals court just wasn't happy with the way the district court went about it so they remanded it. That's what KSM was about: The correct way to find whether devices are only colorably different.

Ask yourself this: Why would H.A. Jones appeal if their modified parts were adjudicated as noninfringing?


----------



## nobody99

Curtis52 said:


> No. The district court found that the modified devices were not more than colorably different:


No.


----------



## nobody99

Curtis52 said:


> The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule, to be addressed infra, that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent. " KSM


Why do you continue to ignore this part of your quote:



> contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe


Does DISH get to unilaterally decide that the DVRs are no longer adjudged to infringe?


----------



## kmill14

Curtis52 said:


> Merely colorably different means infringing:


Indeed. So why would the Appeals Court in the KSM lead with this (which you refuse to read yet again):



> Under the standard we conclude is appropriate, *the judgment must be set aside as a matter of law because of the refusal of the district court to consider whether the Jones ULTRA-LOK devices infringed the claims of the '217 patent. *


----------



## Curtis52

"Ask yourself this: Why would H.A. Jones appeal if their modified parts were adjudicated as noninfringing?"

Hello? Is anyone there?


----------



## kmill14

Curtis52 said:


> "Ask yourself this: Why would H.A. Jones appeal if their modified parts were adjudicated as noninfringing?"
> 
> Hello? Is anyone there?


I should ask you the same thing. Obviously the new devices were never adjudged to be non-infringing prior to this appeal, but they were never adjudged to be infringing either, which has been my point all along. If they HAD been ruled to infringe, the Appeals Court would not have said what they said and asked the District Court to do it over.

Regardless of all that, the KSM case and all its quotes are irrelevant to THIS case, because the argument in KSM was clearly about two completely different devices: THERMAL LOCK devices and ULTRA-LOK devices. Every single time you quote something about modified devices in KSM, you might as well subsitute the name ULTRA-LOK for it.

In the E* case and the 9/4 motion, the question at hand is the DP-501, etc (i.e. the THERMAL LOCK device)....not the ViP 722 (i.e. the ULTRA-LOK device)


----------



## Curtis52

kmill14 said:


> Indeed. So why would the Appeals Court in the KSM lead with this (which you refuse to read yet again):


Like I said before, the district court wasn't happy with the may the district court determined infringement of the modified device. Instead of comparing the modified device to the claims the district court just compared the two devices.



> "It may not properly be assumed, as does the Interdynamics standard, that, because the ULTRA-LOK devices, in a sense, are "equivalents" to the enjoined THERMAL-LOCK device, they are also equivalents of the patent claims. As the Supreme Court observed, "_n determining equivalents, things equal to the same thing may not be equal to each other." Graver Tank, 339 U.S. at 609, 70 S.Ct. at 857, 85 USPQ at 33. So too, things equal to each other may not be equal to the same thing. In any event, if a determination of infringement by the accused ULTRA-LOK devices depends on a finding of equivalency, such finding must be made in accordance with the range of equivalents permitted by Graver Tank. The Interdynamics standard adopts familiar words from Graver Tank, but not its substance. Thus, no correlation between infringement by the accused device and by the adjudged device necessarily exists as a result of their equivalence to each other under the modified standard of Interdynamics."_


----------



## Curtis52

kmill14 said:


> I should ask you the same thing. Obviously the new devices were never adjudged to be non-infringing prior to this appeal, but they were never adjudged to be infringing either, which has been my point all along. If they HAD been ruled to infringe, the Appeals Court would not have said what they said and asked the District Court to do it over.


LOL


----------



## kmill14

Curtis52 said:


> Like I said before, the district court wasn't happy with the may the district court determined infringement of the modified device. Instead of comparing the modified device to the claims the district court just compared the two devices.


So the ULTRA-LOK was never ruled to infringe on any patent claims?


----------



## Curtis52

kmill14 said:


> So the ULTRA-LOK was never ruled to infringe on any patent claims?


Yes they were. By the commutative principal, which the appeals court objected to. If Jones had not been found to infringe they wouldn't have appealed.


----------



## jacmyoung

Curtis52, the continued debate is futile when the other side had already declared, whether explicitly or implicitly, that this 9/4 face of injunction ruling will be a precedent setting ruling.

In that spirit and by definition, any reference of case law, prior court opinions of course can not and shall not apply. For the same reason, it is uncecessary for them to consider any prior cases or opinions of the court either, becasue after all a precedent setting case cannot have any precedent.

Do you understand what I mean? It is a waste of time to continue.

All I have to say is, by setting this precedent, from now on, an infringer will be able to be found in contempt, even if what the infringer is doing now is legal and non-infringing. It of course will be unprecedented.

The Tivo fans are 100% confident that such precedent, even if possible, will be able to stand any challenge in the future, because they are 100% confident, what the letter of the injunction is exactly what they had interpreted, there can not be any other interpretation, the judge must follow their interpretation, he has no other alternative.

In another word, Judge Folsom will be forced to set a precedent, there is no turning back as soon as he put those "the DVR functions (i.e all...)" in his injunction. Never mind what the higher court had always said, an injunction can be broad, but during contempt consideration, any broad interpretation of the injunction must be narrowed down or eliminated, and it is precisely because the higher court had insisted that all broad interpretations must be narrowed down or eliminated, they said therefore an injunciton is allowed to be broad, just so it can cover all bases.

Of course the appeals court, by unholding such precedent, will never ever be able to use the following opinions to render a decision:

Infringement of the patent is the sine qua non of a violation of injunction on infringement;

Therefore, the only acts an injuncion may prohibit are the infringement of the patent by adjudicated devices and infringement by devices no more than colorably different than the adjudicated device;

In a contempt proceeding, the court must first look at the differences between the accused devices and the adjudicated devices, and determine if the differences are more than colorable;

Contempt may not be used as a sword to wound an infringer after he makes a good faith effort to modify the previously adjudicated infringing devices in an attempt to remain in the marketplace.

I can go on, but I think just the few items above will be more than enough work for the higher court to come up with replacements for the above opinions in order to accommodate this newly set precedent.

We shall therefore anticipate that after this case is over, none of the above court opinions can ever appear in their rulings anymore, we can expact other new opinions and new statements in their places, from that point on.


----------



## nobody99

jacmyoung said:


> It is a waste of time to continue.


Does that mean you are going to stop????


----------



## Greg Bimson

jacmyoung said:


> All I have to say is, by setting this precedent, from now on, an infringer will be able to be found in contempt, even if what the infringer is doing now is legal and non-infringing.


That was the risk in not obeying the disable order, an action which is *not* legal. Stating that by some wave of the wand that some 4 million DVR's adjudicated as infringing no longer exist is simply a Jedi mind trick. Believing that eight models of products adjudicated as infringing received some modification to make them no longer infringing is a bit foolhardy, as disabling DVR functionality in those same infringing models would also make them no longer infringing. In either case, they'd still be under the scope of the injunction, which states those eight models should be disabled until the Time Warp patent expires.

I personally think the biggest mistake DISH/SATS made in their response was stating they disabled the DVR functionality and followed the court's order. After all, the court's order was to disable within 30 days of issuance, and the injunction did not go into full force and effect until April, 2008, well after DISH/SATS says they complied with an injunction order that was not active, in full force and effect.


----------



## nobody99

jacmyoung said:


> In that spirit and by definition, any reference of case law, prior court opinions of course can not and shall not apply. For the same reason, it is uncecessary for them to consider any prior cases or opinions of the court either, becasue after all a precedent setting case cannot have any precedent.


Oh, I forgot the "If jacmyoung says it, it's gospel" rule. I forgot that we aren't allowed to have an opinion, unless its yours.

And I keep forgetting that you choose to ignore blatantly obvious facts - you have yet to find a case where an injunction involves an already-installed device.



> All I have to say is, by setting this precedent, from now on, an infringer will be able to be found in contempt, even if what the infringer is doing now is legal and non-infringing. It of course will be unprecedented.


Why? Why do you keep ignoring the blatantly obvious fact that the eight named DVRS are enjoined, and you have yet to find a single case where an enjoined device can escape the clutches of the injunction without a court order?

Let me try another way of explaining.

There are 3 million enjoined DVRS. These are the DVRS that are named in the injunction that are to have their DVR functions disabled.

Suppose DISH changes the printing on the labeling machine and starts pushing out Dishplayer 522b players with their new software.

If TiVo asks for a contempt action against the 522b player, the first question is "was this device enjoined?" The answer to that question is "no." It is a modified device.

The next question is "Is it merely colorable from the enjoined devices?"

The answer to that question - decided by the judge, will determine if a new trial is required, or if the new 522b player is also subject to the injunction.

However, that's not what September 4th is about. September 4th, TiVo will ask the judge to enforce the injunction against the 3 million enjoined DVRS. September 4th, the first question will be "was the device enjoined?" The answer to that question is "yes." It's been convicted, and it didn't show up at the county jail. On September 4th, Bounty Hunter Folsom needs to bring it to jail.

Every single case law you bring up requires you to make the mystical, magical leap that the supposed act of downloading supposedly new software suddenly makes the eight named DVRs unenjoined, and no longer subject to the injunction. It doesn't work that way.


----------



## kmill14

Curtis52 said:


> Yes they were. By the commutative principal, which the appeals court objected to. If Jones had not been found to infringe they wouldn't have appealed.


Whatever makes you happy dude. Forget that the Appeals Court said the ULTRA-LOC devices were never found to infringe on any patents. If it helps you sleep better, you go with that theory.

And once again...

Regardless of all that, the KSM case and all its quotes are irrelevant to THIS case, because the argument in KSM was clearly about two completely different devices: THERMAL LOCK devices and ULTRA-LOK devices. Every single time you quote something about modified devices in KSM, you might as well subsitute the name ULTRA-LOK for it.

In the E* case and the 9/4 motion, the question at hand is the DP-501, etc (i.e. the THERMAL LOCK device)....not the ViP 722 (i.e. the ULTRA-LOK device)


----------



## nobody99

jacmyoung said:


> Therefore, the only acts an injuncion may prohibit are the infringement of the patent by adjudicated devices and infringement by devices no more than colorably different than the adjudicated device


I think I see where you are really missing the logic. You are quoting text from the appeals court where the *intended audience is judges who are writing injunctions, not judges who are faced with enforcing them.*

Read a few lines down from your quote:



> The question before us is not how to deal with enforcement of an overly broad injunction that has previously issued, *but how to insure that overly broad injunctions do not issue in the first instance.*


So read your quote again this way: "When writing an injunction, the only acts it may prohibit are infringement of the patent by adjudicated devices..."

The injunction is already written. The devices are already enjoined.

Again, please try to better understand what you are quoting. You are quoting an appeals court's direct on how the courts should write injunctions in the first place.


----------



## Curtis52

kmill14 said:


> Regardless of all that, the KSM case and all its quotes are irrelevant to THIS case, because the argument in KSM was clearly about two completely different devices


The appeals court called it a modified device. The word "modified" appears 38 times in the appeals court ruling. The word "modification" appears five times. The ruling established case law about modified infringing devices.


----------



## nobody99

Curtis52 said:


> The appeals court called it a modified device. The word "modified" appears 38 times in the appeals court ruling. The word "modification" appears five times. The ruling established case law about modified infringing devices.





> a predecessor of KSM Fastening Systems, Inc., brought suit against Jones alleging infringement of U.S. Patent No. 3,738,217, which claims a particular hanger assembly or anchor for securing refractory linings to furnace walls (KSM's INSULTWIST), by reason of Jones' manufacture and sale of a device of that type (Jones' THERMAL-LOCK device). Pursuant to a settlement agreement between the parties, which was entered as a consent decree on March 6, 1980, Jones acknowledged the validity of the KSM patent, admitted infringement thereof by its THERMAL-LOCK device, and was enjoined from further infringement.
> 
> Jones subsequently put out a modified refractory anchor (ULTRA-LOK I) and on September 22, 1981, KSM moved the court to punish Jones for contempt for violation of the injunction. On July 17, 1984, the court found Jones in contempt by reason of Jones' manufacture and sale of the ULTRA-LOK I device and another model, ULTRA-LOK II, which Jones began marketing in late 1983 or early 1984


Ultra-Lok I and Ultra-Lok II are new DVRs. Thermal-Lock are the eight named DVRs.

Ultra-Lok I and Ultra-Lok II were not enjoined. Thermal-Lock was.

So on September 4, the court will hear why DISH hasn't disabled the DVR functionality on the 3 million or so DVRs that were enjoined in the injunction.

DISH will claim, as you are, that these are Ultra-Loks. TiVo will claim, as we are, that these are Thermal-Loks.

The point your missing is that the three million DVRs that were enjoined are ejoined until a court says otherwise. DISH ignores this at extreme peril.


----------



## kmill14

Curtis52 said:


> The appeals court called *it* a modified device. The word "modified" appears 38 times in the appeals court ruling. The word "modification" appears five times. The ruling established case law about modified infringing devices.


"It" ='s the ULTRA-LOC devices...NOT the THERMAL-LOCK devices.

As nobody99 just said (and I did previously)

THERMAL-LOCK devices = the DP-501 etc

ULTRA-LOC devices = ViP622 & ViP722


----------



## Curtis52

kmill14 said:


> "It" ='s the ULTRA-LOC devices...NOT the THERMAL-LOCK devices.


Ultra-Loc is a modified Thermal-Lok.


----------



## kmill14

Curtis52 said:


> Ultra-Loc is a modified Thermal-Lok.


Even if it is, so what? One does not equal the other. One was ruled to infringe on the patent claims (and upheld) and the other wasn't.

The hearing on 9/4 only addresses DP-501s etc (i.e. Thermal-LOCK devices) and has not brought forth any new devices.


----------



## Curtis52

If KSM isn't about modified infringing devices then why does it say this?


> "Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement. Since the judgment holding Jones in contempt of court does not satisfy this standard, it must be vacated."


----------



## Curtis52

kmill14 said:


> Even if it is, so what? One does not equal the other. One was ruled to infringe on the patent claims (and upheld) and the other wasn't.


No. They both were ruled as infringing. That's why there was an appeal.


----------



## kmill14

Curtis52 said:


> If KSM isn't about modified infringing devices then why does it say this?


Well, what I read there clearly says that the ULTRA-LOC was never ruled to infringe, and I appreciate you finding another citation stating as such.

So hopefully we can put this KSM business to bed, since there is no motion in front of the Court to discuss new devices like the ULTRA-LOC.

The only thing in front of the Court right now is the devices already adjudged to infringe, like the THERMAL-LOCK.


----------



## kmill14

Curtis52 said:


> No. They both were ruled as infringing. That's why there was an appeal.


Whatever. You just put out a quote from the Court stating that such a finding of infringement on the ULTRA-LOC was never established.


----------



## Curtis52

kmill14 said:


> Well, what I read there clearly says that the ULTRA-LOC was never ruled to infringe, and I appreciate you finding another citation stating as such.


The appeals court remanded and vacated the district court's finding of infringement. That doesn't mean there was never a finding of infringement. If there was never a finding of infringement there would never have been an appeal.


----------



## scooper

nobody99 said:


> DISH ignores this at extreme peril.


Define this please ?

If it's a "very big fine" and Dish refuses to pay, what then ?

What's preventing the officers of Dish from skeddaling out of the country and running it from there ?


----------



## kmill14

Curtis52 said:


> The *appeals court remanded and vacated the district court's finding of infringement*. That doesn't mean there was never a finding of infringement. If there was never a finding of infringement there would never have been an appeal.


Wow man. You just can't admit to ever being wrong.

This is the Appeals Court's exact quote, as you just put it out there:



> [...]may not be upheld *without a finding *that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement. Since the judgment holding Jones in contempt of court does not satisfy this standard


"Without a finding"...the Appeals Court is telling you there was no finding of infringement on the admitted/adjudicated scope of the claims. If there HAD been a finding of infringement (as you say) at the district court level, the Appeals Court would NOT have said there was *no finding*.

Hmm...what do we have here?



> Since the district court believed that Interdynamics I and II precluded its consideration of the claim language and the evidence proffered by Jones with respect to prior art and the prosecution history, *the court excluded such evidence and made no finding of infringement.*


 (KSM)


----------



## Curtis52

scooper said:


> Define this please ?
> 
> If it's a "very big fine" and Dish refuses to pay, what then ?
> 
> What's preventing the officers of Dish from skeddaling out of the country and running it from there ?


Burly federal marshals would start seizing assets.


----------



## nobody99

scooper said:


> Define this please ?
> 
> If it's a "very big fine" and Dish refuses to pay, what then ?
> 
> What's preventing the officers of Dish from skeddaling out of the country and running it from there ?


Really, seriously? Yes, a "very big fine" is what they would be up against.

But you can't seriously think they'd run the company from outside the US? That's hilarious, but not going happen.


----------



## kmill14

Hmm...another quote from KSM that there was NO FINDING of infringement on the ULTRA-LOC devices:



> The second question, whether an injunction against infringement has been violated, requires, at a minimum, a finding that the accused device is an infringement


----------



## Curtis52

kmill14 said:


> Wow man. You just can't admit to ever being wrong.
> 
> This is the Appeals Court's exact quote, as you just put it out there:
> 
> "Without a finding"...the Appeals Court is telling you there was no finding of infringement on the admitted/adjudicated scope of the claims. If there HAD been a finding of infringement (as you say) at the district court level, the Appeals Court would NOT have said there was *no finding*.
> 
> Hmm...what do we have here?
> 
> (KSM)


This has all been covered before. The appeals court didn't agree with the way the district court ruled the modified device equivalent and not more than colorably different from the unmodified infringing device. Again, if there was no ruling of infringement there never would have been an appeal. There would have been no need.

This is getting old.


----------



## nobody99

Curtis52 said:


> This has all been covered before. The appeals court didn't agree with the way the district court ruled the modified device equivalent and not more than colorably different from the unmodified infringing device. Again, if there was no ruling of infringement there never would have been an appeal. There would have been no need.


Answer this simple question: can an an enjoined, adjudicated device become unejoined and unadjudicated without any say from the court?



Curtis52 said:


> This is getting old.


I can agree with that. It might be time to shut down the thread again.


----------



## jacmyoung

Greg Bimson said:


> That was the risk in not obeying the disable order,


No that was not the risk I was talking about, the risk is all the prior appeals courts' opinions, including the ones I listed, and others Curtis listed, those that are repeatedly used over and over in nearly *all* contempt cases, you will not be able to find a single case that did not contain one or two or more of such above opinions quoted in there, regardless the nature of the case, or the relevance among them. And those opinions took decades to establish or mature.

And due to this case and this case alone, they no longer will be able to be quoted, because any time any one of them is quoted, the Tivo v. Echostar will be used to rebuff it. The appeals court must be very very busy to come up with some new ones to use, and since it took them decades to ever establish those ones, I suggest they get busy quick, real quick, or them will not be able to rule on appeals for decades to come.



> ...well after DISH/SATS says they complied with an injunction order that was not active, in full force and effect.


Again another accusation in keeping with your logic, that somehow one can not stop an illegal act, one must wait till the order is in full force before one can do it, if one does it before it is too early and too bad.

Just another one of your legal precedents, one says no it is too late to do the right thing, the other says no it is too early to do the right thing. Good luck with your logic.


----------



## peak_reception

nobody99 said:


> I can agree with that. It might be time to shut down the thread again.


 This reminds me of those old VOOM threads where people wanted the channels they didn't watch shut down. Go Away if you're tired of it. No one is forcing you to read or post.


----------



## nobody99

jacmyoung said:


> No that was not the risk I was talking about, the risk is all the prior appeals courts' opinions, including the ones I listed, and others Curtis listed, those that are repeatedly used over and over in nearly *all* contempt cases, you will not be able to find a single case that did not contain one or two or more of such above opinions quoted in there, regardless the nature of the case, or the relevance among them. And those opinions took decades to establish or mature


And in not one single one of your cases was the modified device also the adjudicated device (and I fully expect you to continue to ignore this fact). And the reason for that is that no one, up until now, has been stupid enough to let it get this far.

There is no precedent-setting decision on September 4. An adjudicated device will have to be turned off.


----------



## nobody99

peak_reception said:


> This reminds me of those old VOOM threads where people wanted the channels they didn't watch shut down. Go Away if you're tired of it. No one is forcing you to read or post.


Nah.


----------



## jwhayn

There were lots of good points in the first million posts but this has turned into a "I want (do not want) Dish destroyed" fanboy thread. When there is a ruling, I hope there is a new thread started.


----------



## jacmyoung

You guys please hang on there, I just found a prior case that I believe answers the issue of contempt on the letter of the injunction, will be right back with details.

"Contempt proceedings are available for patent infringement only where there are no substantial issues to be litigated. KSM, at 1532. In particular, where there are issues of fact to be determined which require expert or other testimony, contempt proceedings are not appropriate. KSM, at 1531. Where, however, such disputed issues are not present, contempt proceedings may be appropriate. In such cases, *it is the movant's burden* to show by clear and convincing evidence 1) that the defendant has violated the lawful injunction of the Court, *and* 2) that the defendant has infringed on the adjudicated claims of the patent. *It is insufficient simply to show that the defendant has violated the injunction. Infringement must also be found.* KSM, at 1532. Hence in the case at bar, Plaintiffs must show that there are no substantial disputed issues, and prove by clear and convincing evidence that the new process does infringe."

Quoted from:

MICHAEL FOODS, INC., and North Carolina State University, Plaintiffs,v.BARTOW FOODS, INC., Defendant. No. 90-269-CIV-T-17(A). United States District Court, M.D. Florida, Tampa Division.
November 5, 1993.

And while I have highlighted several key sentences and word, the most telling is that of the word *"and"*, it means it is not simply enough for the patentee, during a contempt proceeding, to just prove that the infringer has violated the injunction, but also, the patentee must prove, with clear and convincing evidence that the infringer still infringes on the patent.

It is loud and clear now.

Unfortunately I can not post a link to this ruling because it is a paid link, but if people insist, and if James believe it is appropriate, I can copy and paste the entire document here, which will be very long, but it is not a coyprighted material.


----------



## Curtis0620

jacmyoung said:


> You guys please hang on there, I just found a prior case that I believe answers the issue of contempt on the letter of the injunction, will be right back with details.


I'm sure it favors DISH.


----------



## kmill14

jacmyoung said:


> *it is the movant's burden* to show by clear and convincing evidence 1) that the defendant has violated the lawful injunction of the Court, *and* 2) that the defendant _has infringed _on the adjudicated claims of the patent.
> 
> And while I have highlighted several key sentences and word, the most telling is that of the word *"and"*, it means it is not simply enough for the patentee, during a contempt proceeding, to just prove that the infringer has violated the injunction, but also, the patentee must prove, with clear and convincing evidence that the infringer _still infringes _on the patent.
> 
> It is loud and clear now.


Apparently it was not so loud and clear for you. If you notice, I underlined the key words YOU seemed to miss (and alter).

The case said:
"2) that the defendant HAS INFRINGED...."

Notice the past tense. As we all know, TiVo has already proven that the DP-501 HAS INFRINGED.

You said:
"that the infringer "STILL INFRINGES"

Strangely, you put in this present tense. Hrmmmm.


----------



## James Long

kmill14 said:


> Indeed. So why would the Appeals Court in the KSM lead with this (which you refuse to read yet again):
> 
> 
> 
> Under the standard we conclude is appropriate, *the judgment must be set aside as a matter of law because of the refusal of the district court to consider whether the Jones ULTRA-LOK devices infringed the claims of the '217 patent. *
Click to expand...

The error of the district court was not considering that the "new product" infringed. That error could have been easily fixed by making that consideration ... a process that is easier in this case since the originally adjudicated products and the allegedly modified products are indistinguishable except for what DISH claims they have done.

If DISH has failed to demonstrate that their modified product is more than colorably different than the product as adjudicated all this court could easily state that they have considered the issue of whether the product now infringes and be past the hurdle set up in the quoted case.


----------



## jacmyoung

kmill14 said:


> Apparently it was not so loud and clear for you. If you notice, I underlined the key words YOU seemed to miss (and alter).
> 
> The case said:
> "2) that the defendant HAS INFRINGED...."
> 
> Notice the past tense. As we all know, TiVo has already proven that the DP-501 HAS INFRINGED.
> 
> You said:
> "that the infringer "STILL INFRINGES"
> 
> Strangely, you put in this present tense. Hrmmmm.


I suggest you re-read it, if once, twice are not enough, keep reading it. At the time of the contempt ruling, of course all things were past to present, therefore the use of "has infringed", but did you notice the other part? Proving the defendant in violation of the injunction is not enough, the patentee must also, during the contempt proceeding prove infringement, of course it was at the time of the contempt proceeding.

Why you thought the court was referring to at the time of the trial? Be serious. Here it is, to find contempt, *infringement must also be found*.

What do you think this meant: "It is insufficient simply to show that the defendant has violated the injunction."--There is no such thing as a "face of injunction contempt", as I have always said, now I have proof.

So if you want to insist that the court meant past infringement, not infringement at the time of the contempt proceeding, then all contempt procedings must render a contempt ruling, because that is how we get there in the first place, the defendants infringed prior to the contempt proceedings.

Good luck with that.


----------



## Curtis0620

1) did they stop writing to and playback from the Hard drive?

2) Were these devices not found to infringe already?

Contempt = YES.


----------



## James Long

nobody99 said:


> It might be time to shut down the thread again.


I thought it was jacmyoung that was trying to stifle the conversation? 

It is too close to Friday (extension for filing replys on the two issues Tivo and DISH are actually pursuing in this case) to shut down the thread ... if you would have asked on Monday the answer may have been different.


----------



## kmill14

jacmyoung said:


> I suggest you re-read it, if once, twice are not enough, keep reading it.


Re-read what? You didn't notice the "not so subtle" change in tenses from the citation you used and your own "interpretation"?

Or perhaps you didn't realize that KSM was again cited, and that case specifically deals with two distinct devices (THERMAL-LOCK devices and ULTRA-LOC devices).

Since TiVo's motion only deals with one set of devices, KSM really doesn't come into play. Now if TiVo files a motion regarding the ViP622 and 722, THEN KSM becomes relevant.


----------



## nobody99

jacmyoung said:


> So if you want to insist that the court meant past infringement, not infringement at the time of the contempt proceeding, then all contempt procedings must render a contempt ruling, because that is how we get there in the first place, the defendants infringed prior to the contempt proceedings.
> 
> Good luck with that.


Without even having access to the case, let me guess: it's a new product, not the original enjoined device. Would I be right?

So once again, the contempt motion is not against an already-enjoined, adjudicated device, right?


----------



## kmill14

jacmyoung said:


> I suggest you re-read it, if once, twice are not enough, keep reading it. At the time of the ruling, of course all things were past to present, therefore the use of "has infringed", but did you notice the other part? Proving the defendant in violation of the injunction is not enough, the patentee must also, during the contempt proceeding prove infringement, of course it was at the time of the contempt proceeding.


Well, as I have said before, the Court in that case referenced KSM, which talked about newly introduced (and as yet not determined to infringe products called ULTRA-LOC). The point the Court was making was that contempt charges were brought against the defendant on the newly introduced device without reviewing it for infringement. That obviously is not what is at stake in this case.



> Why you thought the court was referring to at the time of the trial? Be serious. Here it is, to find contempt, *infringement must also be found*.


Infringement has already been found, or did you forget?



> So if you want to insist that the court meant past infringement, not infringement at the time of the contempt proceeding, then all contempt procedings must render a contempt ruling, because that is how we get there in the first place, the defendants infringed prior to the contempt proceedings.


Huh? Did you forget the part about DISREGARDING A COURT ORDER? Apparently.


----------



## Greg Bimson

jacmyoung said:


> "Contempt proceedings are available for patent infringement ...


Is this a contempt proceeding for patent infringement?


----------



## kmill14

Greg Bimson said:


> Is this a contempt proceeding for patent infringement?





> In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs


(Folsom's 6/5 Order)


----------



## jacmyoung

Curtis0620 said:


> 1) did they stop writing to and playback from the Hard drive?
> 
> 2) Were these devices not found to infringe already?
> 
> Contempt = YES.


Here you *only* "proved" DISH violated the injunction, but the court said this is *insufficient*.

The reason I used " " was because of course it was based on your own interpretation of the letter of the injunction, but,

Even if (another alternative argument for the kicks) you are right, it is simply not enough, the court said so, not me.


----------



## jacmyoung

Greg Bimson said:


> Is this a contempt proceeding for patent infringement?


Yes, and in the district court. Again I can not post a link, only the entire document if DBStalk is ok with it.


----------



## jacmyoung

kmill14 said:


> (Folsom's 6/5 Order)


Yes, and if Judge Folsom is familiar with KSM and that case, his first decision will be no DISH is not in contempt for merely not disabling the DVR functions (again according to your view BTW), we have to find out if DISH currently is indeed infringing or not. And Tivo will have to prove it with clear and convincing evidence.


----------



## kmill14

jacmyoung,

I found a something for you to read, because it is quite obvious you have not read it yet based on the "belief" that you think infringement has not been found.

http://southernme.com/DAVY_v_GOLIAT...ded final judgement and injunction 9-8-06.pdf



> Court thereby *enters judgment *for Plaintiff against Defendants *for willful infringement *of U.S. Patent No. 6,233,389 ("'389 patent"), claims 1, 5, 21, 23, 32, 36, 52, 31 and 61 ("the Infringed Claims") by Defendants' following DVR receivers (collectively the "Infringing Products"): *DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.*


Unless of course you think this hearing on 9/4 is about products not highlighted above. If you do, can you please post the model numbers?


----------



## kmill14

jacmyoung said:


> Yes, and if Judge Folsom is familiar with KSM and that case, his first decision will be no DISH is not in contempt for merely not disabling the DVR functions (again according to your view BTW), we have to find out if DISH currently is indeed infringing or not. And Tivo will have to prove it with clear and convincing evidence.


jacmyoung, no case presented to date (including KSM) has said that devices already adjudged to infringe need to be adjudged to infringe again.


----------



## jacmyoung

kmill14 said:


> jacmyoung, no case presented to date (including KSM) has said that devices already adjudged to infringe need to be adjudged to infringe again.


If it is modified with legitmate design around, yes, the courts said so, go read them again.


----------



## James Long

It seems totally unfair to Tivo if Judge Folsom is limiting them to an "on the face of the injunction" contempt complaint (yes, it was Judge Folsom who required Tivo to take this one step at a time) without allowing Tivo to prove continued infringement if there were not path to finding contempt "on the face of the injunction".

IF the judge gets to September 4th, continues to not allow Tivo to introduce proof of continued infringement and rules against Tivo because they have not proven continued infringement he should be disbarred for incompetence.

Setting one party up for failure (either Tivo or DISH) is irresponsible. So either Judge Folsom has erred in his running of this case or he believes he can make a decision (either way - for or against contempt) based on the criteria he has set up.


----------



## nobody99

jacmyoung said:


> If it is modified with legitmate design around, yes, the courts said so, go read them again.


You must have me on ignore.

Show me where a modified device is also already an adjudicated, enjoined device.


----------



## kmill14

jacmyoung said:


> If it is modified with legitmate design around, yes, the courts said so, go read them again.


The Court clearly was referring to new devices (ULTRA-LOC device verses THERMAL-LOCK device). Maybe you should read them again.


----------



## scooper

James Long said:


> I thought it was jacmyoung that was trying to stifle the conversation?
> 
> It is too close to Friday (extension for filing replys on the two issues Tivo and DISH are actually pursuing in this case) to shut down the thread ... if you would have asked on Monday the answer may have been different.


Like when I asked 2 weeks ago ?


----------



## James Long

Gotta give new information a couple of days to be discussed (although we have seen a lot of not so new discussion). Perhaps we should just close the thread one week after each court filing? (Although that would just lead to a competition over who could get "the last word".)

The thread is open, and despite not being as civil as it should be it hasn't reached the closing point. If anything real happens (in the case) we'll start another thread for those who don't want to wade through the posts here looking for something of real importance.

:backtotop


----------



## HobbyTalk

Curtis0620 said:


> I'm sure it favors DISH.


Prolly about as well as your accusations of Dish violating the Do-Not-Call laws :lol:


----------



## jacmyoung

James Long said:


> Gotta give new information a couple of days to be discussed (although we have seen a lot of not so new discussion). Perhaps we should just close the thread one week after each court filing? (Although that would just lead to a competition over who could get "the last word".)
> 
> The thread is open, and despite not being as civil as it should be it hasn't reached the closing point. If anything real happens (in the case) we'll start another thread for those who don't want to wade through the posts here looking for something of real importance.
> 
> :backtotop


Thank you for your PM and keeping it open for now, I will try to hunt down a free link first, if not will give you the case #, and if that still does not work, I will try to do the PDF gig, but I am old school on the PDF thing.


----------



## jacmyoung

James Long said:


> It seems totally unfair to Tivo if Judge Folsom is limiting them to an "on the face of the injunction" contempt complaint (yes, it was Judge Folsom who required Tivo to take this one step at a time) without allowing Tivo to prove continued infringement if there were not path to finding contempt "on the face of the injunction".
> 
> IF the judge gets to September 4th, continues to not allow Tivo to introduce proof of continued infringement and rules against Tivo because they have not proven continued infringement he should be disbarred for incompetence.
> 
> Setting one party up for failure (either Tivo or DISH) is irresponsible. So either Judge Folsom has erred in his running of this case or he believes he can make a decision (either way - for or against contempt) based on the criteria he has set up.


The judge did not really do anyting improper, becasue it was Tivo that tried to avoid a discovery of the new software in the "colorable difference" context. If you recall Tivo's briefing to the 5/30 meeting mentioned three items related to the contempt issue, the first was face of injunction, the second was advanced exchange I think, and the 3rd was the new software. Tivo said they looked at the new software code DISH gave them and believed it was not more than colorably different compared to the old software, but Tivo did not ask for further discovery on the colorable difference issue, rather on the new software infringement issue.

The reason as I pointed out several times, was had they asked for discovery of the new software in the context of a colorable difference test, the face of the injunction argument would have been destroyed. So Tivo was forced to go the infringement route.

But the problem is a contempt proceeding is not designed to determine if the new software is still infringing. So DISH effectively put the end to such discovery request.

As a result Tivo was left with only the face of injunction motion, which was granted by the judge. The judge was adamant he did not suggest to the parties how they may motion to the court, only grant or deny whatever the parties wished to motion for.

I have seen cases which the judges actively involved themselves in how to properly prepare motions by the parties, but I think Judge Folsom been a veteran, has seen it all, and is not as much an activist as some other judges. There is nothing unfair about telling Tivo on 9/4 no there is no such thing as a face of injunction contempt. Tivo is free to motion for additional contempt proceedings, or seek discovery of the new software in the colorable difference context.

Now DISH did provide a lot of info on the new software, trying to establish the doubt as whether the accused DVRs still infringe or not. And it is possible on 9/4, the judge can say both, there is no face of injnnction contempt, and also based on what DISH has described, there are substantial open issues on the infringement of the patent by the modified DVRs, so he can go further to say DISH is not in contempt of his injunction period. Tivo will have to file a new suit to address the new software infringement issue.

That will be somewhat unfair to Tivo I agree, because that is to say Tivo does not get a chance to even look at the new software evidence, but I have seen it done before, in fact that Footprint 2.0 case I cited was done that way, the judge simply ruled the new software patch non-infringing and effectively put an end to that particular trial.


----------



## James Long

The trouble is your long standing belief that DISH can't be guilty of contempt unless they are guilty of infringement FALLS FLAT if there can be no proof of infringement (or not) introduced at the contempt hearing. Judge Folsom MUST be able to find DISH guilty of contempt without such proof or he would not have barred it from the case.

Either that or the judge is a total bozo who erred. Your choice. 

Personally I believe your apparent assumptions (and DISH's) that there is no way that DISH can be found in contempt is too optimistic for reality.


----------



## Greg Bimson

jacmyoung said:


> The judge did not really do anyting improper, becasue it was Tivo that tried to avoid a discovery of the new software in the "colorable difference" context. If you recall Tivo's briefing to the 5/30 meeting mentioned three items related to the contempt issue, the first was face of injunction, the second was advanced exchange I think, and the 3rd was the new software. Tivo said they looked at the new software code DISH gave them and believed it was not more than colorably different compared to the old software, but Tivo did not ask for further discovery on the colorable difference issue, rather on the new software infringement issue.


What is this, revisionist history week?

TiVo flat out stated they were not going to file a motion for contempt regarding ongoing infringement of modified devices. TiVo wanted to take discovery on the new software, and DISH/SATS rightfully stated that discovery cannot be granted if there would not be a motion filed regarding ongoing infringement.

The reason TiVo did not have a motion at the 30 May hearing is because they wanted to hear the stance of both DISH/SATS and Judge Folsom. DISH/SATS was fairly adamant that they did not want TiVo to simply nibble away by filing motion after motion; DISH/SATS wanted a ruling on the work-around at the same time as the "prima facie" violations. However, it is procedure that the injured party with the injunction can file a contempt motion in any order they deem fit, so TiVo only filed a motion for prima facie violations of an injunction.

When DISH/SATS realized TiVo was not going to file a motion for ongoing infringement, DISH/SATS promptly filed the lawsuit in Delaware to attempt to obtain a ruling on the new software. DISH/SATS obviously anticipated and prepared for this outcome, as the paperwork was ready and filed in Delaware within an hour of the status hearing in Judge Folsom's courtroom.


jacmyoung said:


> Now DISH did provide a lot of info on the new software, trying to establish the doubt as whether the accused DVRs still infringe or not. And it is possible on 9/4, the judge can say both, there is no face of injnnction contempt, and also based on what DISH has described, there are substantial open issues on the infringement of the patent by the modified DVRs, so he can go further to say DISH is not in contempt of his injunction period. Tivo will have to file a new suit to address the new software infringement issue.


That is a very slim possibility. The more likely possibility is that DISH/SATS is in violation of the injunction, simply for ignoring the clear, concise order to disable DVR functionality in all but about 193,000 receivers for eight different models.

After a more than likely positive outcome regarding "prima facie" violations of the injunction, TiVo will file a motion for ongoing infringement of a modified product regarding all of the DVR models sold since March, 2006, including the 622/722, 612, and any of the other newer DVR's.


jacmyoung said:


> That will be somewhat unfair to Tivo I agree, because that is to say Tivo does not get a chance to even look at the new software evidence, but I have seen it done before, in fact that Footprint 2.0 case I cited was done that way, the judge simply ruled the new software patch non-infringing and effectively put an end to that particular trial.


Except the injunction in the Footprint 2.0 case only specified the service as adjudicated during the trial. The only way a modification of that service could be enjoined is if infringement was ongoing in the new modification, and only if that infringement was more than colorably different. That would not be a "prima facie" violation of the injunction, as a modification was allowed in the injunction.


----------



## jacmyoung

James Long said:


> The trouble is your long standing belief that DISH can't be guilty of contempt unless they are guilty of infringement FALLS FLAT if there can be no proof of infringement (or not) introduced at the contempt hearing. Judge Folsom MUST be able to find DISH guilty of contempt without such proof or he would not have barred it from the case.
> 
> Either that or the judge is a total bozo who erred. Your choice.
> 
> Personally I believe your apparent assumptions (and DISH's) that there is no way that DISH can be found in contempt is too optimistic for reality.


Bar what from the case? The new software? I already explained the judge never barred anything, both Tivo and DISH did not want to discuss it the way the other party wanted to be discussed.

Tivo did not want to discover the new software for the purpose of colorable difference test, only for infringement determination, which was improper, as I said a contempt proceeding is not a proper venue to discover for the purpose of determining infringement.

DISH on the other hand also was at fault, as I brought up this issue two days earlier, DISH could have volunteered more new software code or even invited Tivo for a test run to demonstrate the capability of the new software to remove any doubt.

Since neither party wanted to touch on the new software the way the other party wanted to be addressed, the judge could not force them in one particular direction. The judge can try to help bridge the difference, but he chose not to, and he was not wrong. Nothing compells him to do that. After all he said himself he had tried for so long, and "you two just cannot agree on anything."

Had Tivo never elected the face of injunction argument, they could have easily motioned for a contempt and at the same time seek discovery on the new software for the purpose of colorable difference test, DISH would not have been able to argue against that.

As it stands, the judge must first on 9/4 tell Tivo no there is no face of injunction contempt, before Tivo is willing to go the correct route. For Tivo it will be three months of delay, that is of course a risk worth taking.

Because even if DISH is not in contempt on 9/4, Tivo can attack the details of DISH's briefing and response. For example DISH said in its briefing before the 5/30 meeting that they installed the new software right before 4/17/08 (?) when the injunction was to go into full force.

That statement of DISH was why Tivo accused DISH of secretly doing the new software project, and claiming only on the day before the injunction was to go in full force, was DISH able to replace the old software, while all this time made no clear indication a new software was coming.

Now DISH is saying they began such downloads as early as 10/06, more that one and one half years of discrepancy right there. Part of the new DISH statement as I speculated was to minimize any enhenced damages during the stay of the injunction.

But nevertheless Tivo will get the chance to point out the inconsistency by DISH and raise the question whether DISH even really has this new software as they described, and that may help to compell DISH to offer more complete evidence for Tivo's next discovery purpose.


----------



## jacmyoung

Greg Bimson said:


> ... The more likely possibility is that DISH/SATS is in violation of the injunction, simply for ignoring the clear, concise order to disable DVR functionality in all but about 193,000 receivers for eight different models.
> 
> After a more than likely positive outcome regarding "prima facie" violations of the injunction, TiVo will file a motion for ongoing infringement of a modified product regarding all of the DVR models sold since March, 2006, including the 622/722, 612, and any of the other newer DVR's....


There are two major problems with what you said above.

1) Obviously you did not read my above case law, or even if you did you refused to accept the standard reinstated by the district court, that there can be no prima facie ruling without also prove with clear and convincing evidence DISH is currently infringing on the patent. Prima facie contempt on itself is "insufficient."

2) You made it sound like once DISH is in contempt, Tivo can follow up with all kinds of things, no, DISH will be able to appeal, and the appeal will take quite some time. And judging by all the appeals court prior rulings, the contempt will be overturned. Tivo will save a lot of time and money to at least wait till the appeal is over.


----------



## Greg Bimson

jacmyoung said:


> There are two major problems with what you said above.


Okay.


jacmyoung said:


> 1) Obviously you did not read my above case law, or even if you did you refused to accept the standard reinstated by the district court, that there can be no prima facie ruling without also prove with clear and convincing evidence DISH is currently infringing on the patent. Prima facie contempt on itself is "insufficient."


Funny how these two points are combined. You talk about case law and standards, yet you have now the unenviable task of finding case law that "there can be no prima facie ruling without also prove [sic] with clear contempt on itself", as not a single one of your citations deals with a violation of an injunction on its face. Now the problem is the case law doesn't apply to what you just wrote. You now expect the court to travel down a road especially for DISH/SATS, to make new case law as they go along. You now expect a precedential finding.


jacmyoung said:


> 2) You made it sound like once DISH is in contempt, Tivo can follow up with all kinds of things, no, DISH will be able to appeal, and the appeal will take quite some time. And judging by all the appeals court prior rulings, the contempt will be overturned. Tivo will save a lot of time and money to at least wait till the appeal is over.


You're kidding, right? The moment TiVo has a finding of prima facie violation of the injunction, TiVo needs to file another contempt hearing. Just because the prima facie violation may be appealed doesn't mean everything is on hold until a decision on the appeal is rendered.


----------



## Curtis52

jacmyoung said:


> That statement of DISH was why Tivo accused DISH of secretly doing the new software project, and claiming only on the day before the injunction was to go in full force, was DISH able to replace the old software, while all this time made no clear indication a new software was coming.
> 
> Now DISH is saying they began such downloads as early as 10/06, more that one and one half years of discrepancy right there. Part of the new DISH statement as I speculated was to minimize any enhenced damages during the stay of the injunction.
> 
> But nevertheless Tivo will get the chance to point out the inconsistency by DISH and raise the question whether DISH even really has this new software as they described, and that may help to compell DISH to offer more complete evidence for Tivo's next discovery purpose.


In the pre 5-30 filing, Dish said that they replaced the software "while the appeal was pending". That's a long time span. I see no discrepancy.

I did notice though that in the same filing they said that they tested the new software before giving it to Fish and Richardson. It was far past the conceptual stage in 2006.

In any case all of that would seem to be irrelevant as to whether the modified devices are infringing or only colorably different.


----------



## Curtis52

Greg Bimson said:


> Okay.Funny how these two points are combined. You talk about case law and standards, yet you have now the unenviable task of finding case law that "there can be no prima facie ruling without also prove [sic] with clear contempt on itself", as not a single one of your citations deals with a violation of an injunction on its face.


If there is no infringement there is no contempt.



> "Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement"


----------



## Greg Bimson

Curtis52 said:


> If there is no infringement there is no contempt.
> 
> 
> 
> "Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement"
Click to expand...

Is TiVo asking for contempt because DISH/SATS is...

making a modified device?
using a modified device?
selling a modified device?

No.

TiVo is asking for contempt because DISH/SATS has not disabled adjudicated, infringing devices.


----------



## Curtis52

TiVo is asking for a finding of contempt of an injunction against infringement which "may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement"


----------



## nobody99

Curtis52 said:


> TiVo is asking for a finding of contempt of an injunction against infringement which "may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement"


And never once in the history of jurisprudence has a modified device also been an adjudicated device. You're completely missing the point of "modified."


----------



## peak_reception

Curtis52 said:


> If there is no infringement there is no contempt.


 You've got it backwards Curtis. First comes Contempt, on September 4, for flagrant disregard of The Court's order [the Injunction]. THEN, after that, infringement is again at issue and will be dealt with in further litigation. In the meantime, after Contempt is ruled, Judge Folsom will either force DVR functionality to be disabled under threat of massive fines, or, possibly he will stay enforcement of that provision until present infringement is decided one way or the other. When EchoStar appeals, The CAFC can exercise the same options or overturn Folsom's ruling. At least that's how I see this playing out. If Judge Folsom orders shutdown, and CAFC supports him, it's over.



> In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs


----------



## jacmyoung

Greg Bimson said:


> Is this a contempt proceeding for patent infringement?


I must give it to you, you are the master of elimination by very word you can find.

So this is a contempt proceeding for prima facie contempt, I get it.

Only one problem, you can not find a single case in the past that is even close to such assertion there is even such thing called contempt proceeding for prima facie contempt in a patent infringement case.

Find me one contempt proceeding in patent cases that is not a contempt proceeding for patent infringement. Because I am the defendant, you are the plaintiff, I have found mine, you have not, so the benefit goes to the defendant.

Do you really think after 9/4, the judge will in his ruling find DISH in contempt without citing any case law, any higher court opinions, anything at all, just three sentences, since my injunction says so, since DISH did not do so, therefore it is a contempt?

Are you even serious to envision such a ruling? Have you ever seen a ruling like that at all in the history of the Court regarding contempt of injunction on patent infringement?

Let's not degrade our courts to that level, at a minimum, go do some leg work and find at least one case that resemble your invention, because it is what all judges are required to do when they render a contempt ruling on patent infringement, to base the rulings on case law and precedents.


----------



## James Long

Do you really believe that Judge Folsom would set up Tivo back on May 30th with a path that could not lead to contempt?

It seems that you would like to degrade our courts ... to think that Judge Folsom would throw a three month delay in the process and allow DISH to continue to infringe (or not) knowing that DISH would win any "motion of contempt" that Tivo would offer?

There MUST be a path to contempt - otherwise Judge Folsom has erred.


----------



## James Long

jacmyoung said:


> Thank you for your PM and keeping it open for now, I will try to hunt down a free link first, if not will give you the case #, and if that still does not work, I will try to do the PDF gig, but I am old school on the PDF thing.


U.S. District Court - Middle District of Florida
*8:90-cv-00269-EAK* Michael Foods, Inc., et al v. Bartow Food Co.
Elizabeth A. Kovachevich, presiding
*Date filed:* 03/05/1990
*Date terminated:* 06/29/1992
*Date of last filing:* 03/12/2001

Unfortunately the court documents are not in PACER. There is a history there and the filing you refer to (Docket #138) is described as "*MODIFIED ORDER denying [127-1] motion for an order for defendant to show cause to the court as to why it should not be held in contempt of Court's 6/29/92 judgment.* ( Signed by Judge Elizabeth A. Kovachevich )".

This MODIFIED ORDER modified Docket #134 from a month earlier: "*ORDER denying [127-1] motion for an order for defendant to show cause to the court as to why it should not be held in contempt of Court's 6/29/92 judgment.* ( Signed by Judge Elizabeth A. Kovachevich )". (It was modified on a "*MOTION by North Carolina State, Michael Foods, Inc. to correct 10/06/93 order.*" - Docket #135.)

The contempt motion was filed nine months earlier (Docket #127): "*MOTION by Michael Foods, Inc., North Carolina State for an order for defendant to show cause to the court as to why it should not be held in contempt of Court's 6/29/92 judgment.* Proposed order attached. Memorandum in support and volumes 1 and 2 (Exhibits 1-26) filed under seal. Modified on 01/11/1993".

The judgment in that case (Docket #102) is described as follows:
*JUDGMENT for North Carolina State, Michael Foods, Inc. against Bartow Food Co. It is ORDERED that: 1) U.S. Patent No. 4,808,425 is valid and fully enforceable; 2) Bartow Food has infringed the patent owned by North Carolina State University and exclusively licensed to Michael Foods; 3) Bartow Food's infringement of the patent was willful and deliberate; 4) Plaintiff, Michael Foods shall recover an amount not less than 57,000.00 and North Carolina State University shall recover an amount not less than $10,000.00; 5) Pursuant to Defendant's willful and deliberate infringement of the patent, the damages awarded to the plaintiffs are trebled such that Michael Foods shall recover not less than $171,000.00 and North Carolina State University no less than $30,000.00; 6) Attorney's fees and expenses are awarded to the plaintiffs; 7) Costs shall be recovered by the Plaintiffs; 8) Plaintiffs shall recover defendant's post-judgment interest beginning on 03/13/92 on the damages awarded to Plaintiffs; 9) Plaintiffs shall recover from Defendant pre-judgment interest for infringement occuring before 03/13/92; 10) Plaintiffs shall have 30 days from the date of this Order to submit any petitions to fix the amount of prejudgment interest; and, 11) Defendant shall have 10 days from the date of service of any such petitions to respond.* ( Signed by Judge Elizabeth A. Kovachevich )​
The Patent: http://www.freepatentsonline.com/4808425.html
"*Methods of ultrapasteurizing liquid whole egg products in continuous flow, high temperature, short time pasteurization equipment are provided. The equivalent point method is preferably used to evaluate the total thermal treatment received by the product in this equipment. Also disclosed is a method of making liquid whole egg products having preselected, extended, refrigerated shelf lives.*"​
*Does this case apply to Tivo vs Echostar?*
The path in the Michael Foods vs Bartow Foods case diverges from the Tivo vs Echostar case. First, in the "Foods" case judgement was issued but no injunction was issued. The defendant's response to the judgment was several filings including "RENEWED MOTION by Bartow Food Co. for Judgment as a matter of law" and "MOTION by Bartow Food Co. for new Trial". The plaintiff's filed a "MOTION by Michael Foods, Inc., North Carolina State with memorandum in support to compel , for determination of sufficiency of answers , and for attorney fees and expenses associated with the preparation of this motion." in September 1992 ... to which the court responded with: "ORDER, Motion hearing set for 2:00 11/12/92 for [120-1] motion to compel, set for 2:00 11/12/92 for [120-2] motion for determination of sufficiency of answers, set for 2:00 11/12/92 for [120-3] motion for attorney fees and expenses associated with the preparation of this motion. The parties shall endeavor to resolve as many of the discovery disputes as possible prior to the hearing so as to narrow the issues to be considered at the hearing."

The outcome of the hearing was: "ORDER granting in part, denying in part [120-1] motion to compel and [120-2] motion for determination of sufficiency of answers. Defendant shall comply with rulings of court as set forth in extensive order with 20 days of the date of this order."

This is what led to Michael Food's motion for contempt.
The last word in the case seems to be a settlement ...

As noted there appears to have been no injunction in the case nor was the outcome appealed. All the action took place in district court (and magistrate court as assigned). What you quoted from the District Court level was never tested at a higher level. Can you point to where Bartow was ordered to cease infringing? Did Bartow claim to come up with a new product? There are gaps in the "Foods" case when trying to map it to Tivo vs Echostar.

This isn't a case that Judge Folsom can rely on as a precedent. Judge Kovachevich could have been dead wrong ... we won't know since her ruling was never tested.


----------



## nobody99

jacmyoung said:


> Only one problem, you can not find a single case in the past that is even close to such assertion there is even such thing called contempt proceeding for prima facie contempt in a patent infringement case.


You don't seem to understand that the _reason_ Greg can't find a case is because no company has ever been *stupid enough * to let it get this far! And it might not get this far yet - until September 4th, a settlement will prevent it from happening in this case too. But Charlie's pig-headedness may cost him.



jacmyoung said:


> Find me one contempt proceeding in patent cases that is not a contempt proceeding for patent infringement. Because I am the defendant, you are the plaintiff, I have found mine, you have not, so the benefit goes to the defendant.


You have *not* found your case. You have found cases with *modified, non-adjudicated* devices. You have not found a case where the contempt hearing decided if an *already-adjudicated, already-enjoined* device still infringed on the patents that it was already adjudicated to infringe on.



> Do you really think after 9/4, the judge will in his ruling find DISH in contempt without citing any case law, any higher court opinions, anything at all, just three sentences, since my injunction says so, since DISH did not do so, therefore it is a contempt?


There is a court order for adjudicated, enjoined devices to have something happen to them. There is no need for case law: this _is_ law.



> Let's not degrade our courts to that level, at a minimum, go do some leg work and find at least one case that resemble your invention, because it is what all judges are required to do when they render a contempt ruling on patent infringement, to base the rulings on case law and precedents.


Go find one single case where a modified device is also an adjudicated, enjoined device. You won't find one. Your examples are irrelevant to this csae.


----------



## jacmyoung

James Long said:


> Do you really believe that Judge Folsom would set up Tivo back on May 30th with a path that could not lead to contempt?
> 
> It seems that you would like to degrade our courts ... to think that Judge Folsom would throw a three month delay in the process and allow DISH to continue to infringe (or not) knowing that DISH would win any "motion of contempt" that Tivo would offer?
> 
> There MUST be a path to contempt - otherwise Judge Folsom has erred.


Honestly I have tried to find it myself, only that I cannot accept something that has absolutely no precedent, therefore an invention.

So I tried to at least find agreement among us (I know it is a shocker to you), and I think I have one, we to some degree can agree, based on our reading of prior cases, that this injunction as worded is more expensive and broad than most we have seen, according to one set of interpretation.

Should the patentee be given the opportunity to argue on such broad interpretation when it sought to do so? Why not? His injunction as framed based on Tivo's suggestion, if indeed appears broad compared to what we have seen in the past, Tivo certainly deserves the chance to explain why it should be that way.


----------



## Greg Bimson

jacmyoung said:


> Let's not degrade our courts to that level, at a minimum, go do some leg work and find at least one case that resemble your invention, because it is what all judges are required to do when they render a contempt ruling on patent infringement, to base the rulings on case law and precedents.


Sure. I'll do it when there is a motion filed regarding contempt for ongoing patent infringement. That is not what is before the court now.


----------



## jacmyoung

James Long said:


> U.S. District Court - Middle District of Florida
> *8:90-cv-00269-EAK* Michael Foods, Inc., et al v. Bartow Food Co.
> Elizabeth A. Kovachevich, presiding
> *Date filed:* 03/05/1990
> *Date terminated:* 06/29/1992
> *Date of last filing:* 03/12/2001
> 
> Unfortunately the court documents are not in PACER. There is a history there and the filing you refer to (Docket #138) is described as "*MODIFIED ORDER denying [127-1] motion for an order for defendant to show cause to the court as to why it should not be held in contempt of Court's 6/29/92 judgment.* ( Signed by Judge Elizabeth A. Kovachevich )".
> 
> This MODIFIED ORDER modified Docket #134 from a month earlier: "*ORDER denying [127-1] motion for an order for defendant to show cause to the court as to why it should not be held in contempt of Court's 6/29/92 judgment.* ( Signed by Judge Elizabeth A. Kovachevich )". (It was modified on a "*MOTION by North Carolina State, Michael Foods, Inc. to correct 10/06/93 order.*" - Docket #135.)
> 
> The contempt motion was filed nine months earlier (Docket #127): "*MOTION by Michael Foods, Inc., North Carolina State for an order for defendant to show cause to the court as to why it should not be held in contempt of Court's 6/29/92 judgment.* Proposed order attached. Memorandum in support and volumes 1 and 2 (Exhibits 1-26) filed under seal. Modified on 01/11/1993".
> 
> The judgment in that case (Docket #102) is described as follows:
> *JUDGMENT for North Carolina State, Michael Foods, Inc. against Bartow Food Co. It is ORDERED that: 1) U.S. Patent No. 4,808,425 is valid and fully enforceable; 2) Bartow Food has infringed the patent owned by North Carolina State University and exclusively licensed to Michael Foods; 3) Bartow Food's infringement of the patent was willful and deliberate; 4) Plaintiff, Michael Foods shall recover an amount not less than 57,000.00 and North Carolina State University shall recover an amount not less than $10,000.00; 5) Pursuant to Defendant's willful and deliberate infringement of the patent, the damages awarded to the plaintiffs are trebled such that Michael Foods shall recover not less than $171,000.00 and North Carolina State University no less than $30,000.00; 6) Attorney's fees and expenses are awarded to the plaintiffs; 7) Costs shall be recovered by the Plaintiffs; 8) Plaintiffs shall recover defendant's post-judgment interest beginning on 03/13/92 on the damages awarded to Plaintiffs; 9) Plaintiffs shall recover from Defendant pre-judgment interest for infringement occuring before 03/13/92; 10) Plaintiffs shall have 30 days from the date of this Order to submit any petitions to fix the amount of prejudgment interest; and, 11) Defendant shall have 10 days from the date of service of any such petitions to respond.* ( Signed by Judge Elizabeth A. Kovachevich )​
> The Patent: http://www.freepatentsonline.com/4808425.html
> "*Methods of ultrapasteurizing liquid whole egg products in continuous flow, high temperature, short time pasteurization equipment are provided. The equivalent point method is preferably used to evaluate the total thermal treatment received by the product in this equipment. Also disclosed is a method of making liquid whole egg products having preselected, extended, refrigerated shelf lives.*"​
> *Does this case apply to Tivo vs Echostar?*
> The path in the Michael Foods vs Bartow Foods case diverges from the Tivo vs Echostar case. First, in the "Foods" case judgement was issued but no injunction was issued. The defendant's response to the judgment was several filings including "RENEWED MOTION by Bartow Food Co. for Judgment as a matter of law" and "MOTION by Bartow Food Co. for new Trial". The plaintiff's filed a "MOTION by Michael Foods, Inc., North Carolina State with memorandum in support to compel , for determination of sufficiency of answers , and for attorney fees and expenses associated with the preparation of this motion." in September 1992 ... to which the court responded with: "ORDER, Motion hearing set for 2:00 11/12/92 for [120-1] motion to compel, set for 2:00 11/12/92 for [120-2] motion for determination of sufficiency of answers, set for 2:00 11/12/92 for [120-3] motion for attorney fees and expenses associated with the preparation of this motion. The parties shall endeavor to resolve as many of the discovery disputes as possible prior to the hearing so as to narrow the issues to be considered at the hearing."
> 
> The outcome of the hearing was: "ORDER granting in part, denying in part [120-1] motion to compel and [120-2] motion for determination of sufficiency of answers. Defendant shall comply with rulings of court as set forth in extensive order with 20 days of the date of this order."
> 
> This is what led to Michael Food's motion for contempt.
> The last word in the case seems to be a settlement ...
> 
> As noted there appears to have been no injunction in the case nor was the outcome appealed. All the action took place in district court (and magistrate court as assigned). What you quoted from the District Court level was never tested at a higher level. Can you point to where Bartow was ordered to cease infringing? Did Bartow claim to come up with a new product? There are gaps in the "Foods" case when trying to map it to Tivo vs Echostar.
> 
> This isn't a case that Judge Folsom can rely on as a precedent. Judge Kovachevich could have been dead wrong ... we won't know since her ruling was never tested.


No you had the wrong one, the one I have was an earlier trial, in which it contained an injunction as part of the judgement, there was no willfull infringement, no treble and attorney fees. I will try to do a PDF and uplink to you when I have a chance.


----------



## jacmyoung

Greg Bimson said:


> Sure. I'll do it when there is a motion filed regarding contempt for ongoing patent infringement. That is not what is before the court now.


You will not be able to find one case which the contempt was not for ongoing patent infringement.


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## nobody99

jacmyoung said:


> You will not be able to find one case which the contempt was not for ongoing patent infringement.


And you have not been able to find one where the motion for contempt was against an already-adjudicated, already-enjoined device.


----------



## James Long

jacmyoung said:


> No you had the wrong one, the one I have was an earlier trial, in which it contained an injunction as part of the judgement, there was no willfull infringement, no treble and attorney fees. I will try to do a PDF and uplink to you when I have a chance.


I have "the wrong one" which just happens to match the parties, case number and filing date you gave in your earlier post? :lol: :lol: :lol:

It is just amazing that two parties (Michael Foods and NC State University) would sue another party (Bartow Foods) in two different cases and have a ruling come down in both cases on the same day in the same court and yet be different! 


jacmyoung said:


> Quoted from:
> 
> MICHAEL FOODS, INC., and North Carolina State University, Plaintiffs,v.BARTOW FOODS, INC., Defendant. No. 90-269-CIV-T-17(A). United States District Court, M.D. Florida, Tampa Division.
> November 5, 1993.


As kmill14 noted yesterday afternoon:


kmill14 said:


> Wow man. You just can't admit to ever being wrong.


8:*90*-cv-*00269*-EAK Michael Foods, Inc., et al v. Bartow Food Co.
= No. 90-269-CIV-T-17(A). It is the _*same*_ one and only case.


----------



## jacmyoung

nobody99 said:


> And you have not been able to find one where the motion for contempt was against an already-adjudicated, already-enjoined device.


I thought I mentioned the Footprint 2.0 Service and the Star brite case cited by DISH didn't I?


----------



## James Long

jacmyoung said:


> I thought I mentioned the Footprint 2.0 Service and the Star brite case cited by DISH didn't I?


Footprint 2.0 had an injunction against the service _*as configured*_ ... the plaintiff complained about a new configuration of the service and eventually lost. You have not provided enough information on Star brite ... DISH mentioned it as an overlabling example but there is no description of the case and whether it involves field modification or simply continuing to use the same six product names on a new product physically released.

Can you honestly describe "Star brite" or does someone else have to do the homework? We wouldn't want to get the "wrong case". :sure:

Star Brite Distributing, Inc. v. Gavin (N.D. Miss. 1990).


----------



## jacmyoung

James Long said:


> I have "the wrong one" which just happens to match the parties, case number and filing date you gave in your earlier post? :lol: :lol: :lol:
> 
> It is just amazing that two parties (Michael Foods and NC State University) would sue another party (Bartow Foods) in two different cases and have a ruling come down in both cases on the same day in the same court and yet be different!  As kmill14 noted yesterday afternoon:
> 
> 8:*90*-cv-*00269*-EAK Michael Foods, Inc., et al v. Bartow Food Co.
> = No. 90-269-CIV-T-17(A). It is the _*same*_ one and only case.


Please James I was only trying to work with you to find the correct answer. Below is the first page:

"837 F.Supp. 403
MICHAEL FOODS, INC., and North Carolina State University, Plaintiffs,
v.
BARTOW FOODS, INC., Defendant.
No. 90-269-CIV-T-17(A).
United States District Court, M.D. Florida, Tampa Division.
November 5, 1993.
Page 404
James D. Myers, Bell, Seltzer, Park & Gibson, P.A., Raleigh, NC, Jonathan Charles Koch, Jonathan C. Koch, P.A., Tampa, FL, for plaintiffs.
V.J. Benincasa, Jr., Bartow Food Co., Bartow, FL, David Lee Partlow, John Blain Gibbons, Gibbons & Partlow, P.A., Tampa, FL, for defendant.
MODIFIED1 ORDER ON PLAINTIFFS' MOTION TO COMPEL DEFENDANT TO SHOW CAUSE WHY IT SHOULD NOT BE HELD IN CONTEMPT
KOVACHEVICH, District Judge.
INTRODUCTION/OVERVIEW
On January 8, 1993 Plaintiffs filed a MOTION TO COMPEL DEFENDANT TO
Page 405
SHOW CAUSE TO THE COURT AS TO WHY IT SHOULD NOT BE HELD IN CONTEMPT. In this motion Plaintiffs allege that Defendant is violating the Court's June 29, 1992 ruling. *This order enjoins Defendant from infringing on Plaintiffs' patent, number 4,808,425 ('425)*. In a series of motions Defendant alleged that it had added a vacuum process to the beginning of its prior process (which was formerly adjudicated as infringing). Defendant further alleged that this vacuum process caused the thermal treatment to result in coagulation, and soluble protein loss (SPL) greater than 5%. As a result the Defendant asserts the new process does not violate the wording of the adjudicated claims. Plaintiffs argue, on a totally theoretical basis, that the vacuum process made the new process merely colorably different, and hence still infringed. Furthermore, Plaintiffs present expert testimony that theorizes that the new process could not cause coagulation, or affect the SPL as described by Defendant. This theory, though interesting, does not establish by even a preponderance of the evidence that Defendant's allegations are incorrect. Defendant has offered evidence of tests run at the National Food Laboratory which show that the SPL of the product is around 36%. As Plaintiffs point out, however, it is the SPL, and coagulation, resulting from the thermal treatment2 which is significant. This is a direct result of the wording of the claims at issue. These claims are 3, and 15 through 20 of the '425 patent. Hence, a substantial question of fact still remains. It must be determined whether the thermal treatment in Defendant's new process, cause coagulation, or SPL greater than 5%. Therefore, Plaintiffs have failed to show by clear and convincing evidence that Defendant should be held in contempt of Court, and the motion is denied."

I can post the entire document if it is allowed. I don't know if I need to cite the source but this is not a copyrighted material, still taken from a source though.

The above case involved two food processing companies, after the defendant was found to infringe, it modified the processing method to avoid a contempt. Of course the food processing method was an adjudicated infringing method, and was later modified in one part and after the modification the infringer was found not in contempt, so the motion was denied.

I hope this also adds to the prior cases nobody99 was looking for.


----------



## jacmyoung

James Long said:


> Footprint 2.0 had an injunction against the service _*as configured*_ ... the plaintiff complained about a new configuration of the service and eventually lost. You have not provided enough information on Star brite ... DISH mentioned it as an overlabling example but there is no description of the case and whether it involves field modification or simply continuing to use the same product name on a new product physically released.
> 
> Can you honestly describe "Star brite" or does someone else have to do the homework? We wouldn't want to get the "wrong case". :sure:


Doesn't matter, the question was do we have cases where contempt was against an already adjudicated device/product/service/method.

As far as the Star Brite case I did find it earlier but did not save the doc. The basic background is the defendant sold three marine algae removal products that were found to infringe a patent by a competitor, and was ordered by an injunction to stop the infringement, and specifically also to stop the use and sell of the three products by names. The infringer modified the formulation of the three products by changing the composition of one chemical in them, and continued to use and sell them without any packaging changes at all, still the same names and all.

The patentee argued that the infringer was in contempt of use and sell of the same products because well they appeared still exactly the same with the same names and packaging, and the injunction prohibited the use and sell of those three products specifically by the same names.

The court said, even though the letter of the injunction specifically prohibited the products by names, it was in fact the *internal formulation* the injunction was actually trying to prohibit. And since the internal formulation had been modified to raise substantial open issues, there was no contempt, while the "same products" continued to be used and sold.

So apparently the court can interpret different ways as they see fit to conform to the rules of finding contempt, that is there has to be on going infringement. In the Star Brite case, one can say the patentee's interpretation of the injunction was more to the point, and the court's interpretation was more laugable as it insisted it did not mean the three products by names, but the chemical compositions in the acutal products. Guess who benefited from the more "idiotic" interpretation?


----------



## James Long

jacmyoung said:


> I can post the entire document if it is allowed. I don't know if I need to cite the source but this is not a copyrighted material, still taken from a source though.


I've given you the path for that ... but as long as it is the case that I described above (and it clearly is ... so an apology for you saying I had the wrong case is in order) my comments about the case stand.

Whatever was written never hit the appeals court and was never tested.


> The above case involved two food processing companies, after the defendant was found to infringe, it modified the processing method to avoid a contempt. Of course the food processing method was an adjudicated infringing method, and was later modified in one part and after the modification the infringer was found not in contempt, so the motion was denied.


Where is the injunction? The court ordered Bartow to do many things ... stop infringing was not listed in the summary. I'm much more interested in what Bartow allegedly was in contempt of than a later summary.


jacmyoung said:


> Doesn't matter, the qestion was do we have cases where contempt was against an already adjudicated device/product/service/method.


Of course it doesn't matter when you can't prove your point!


----------



## nobody99

jacmyoung said:


> I hope this also adds to the prior cases nobody99 was looking for.


I appreciate you posting that. But I don't think it will help - because there's no way of knowing the wording of the "motion Plaintiffs allege that Defendant is violating the Court's June 29, 1992 ruling"

That ruling may have said that they need to modify their process. Do you have the June 29, 1992 ruling? James posted what he could, but I also notice that some of it was sealed.

That order may have said "you must remove steps 1, 2, and 3" or something like that.


----------



## jacmyoung

James Long said:


> I've given you the path for that ... but as long as it is the case that I described above (and it clearly is ... so an apology for you saying I had the wrong case is in order) my comments about the case stand.


I am very sorry



> Whatever was written never hit the appeals court and was never tested.


My case was in district court.



> Where is the injunction?


I have highlighted that sentence that said the injunction existed. I could not find the prior order myself.

Does it really matter if the opinion/ruling is from the district court or the appeals court?


----------



## jacmyoung

nobody99 said:


> I appreciate you posting that. But I don't think it will help - because there's no way of knowing the wording of the "motion Plaintiffs allege that Defendant is violating the Court's June 29, 1992 ruling"
> 
> That ruling may have said that they need to modify their process. Do you have the June 29, 1992 ruling? James posted what he could, but I also notice that some of it was sealed.
> 
> That order may have said "you must remove steps 1, 2, and 3" or something like that.


It did not say that, according to the highlighted sentence.

But even if it did, so what, it was still a contempt motion related to an already adjudicated method, that was your question wasn't it?


----------



## Curtis0620

HobbyTalk said:


> Prolly about as well as your accusations of Dish violating the Do-Not-Call laws :lol:


Do you mean "probably"

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


----------



## Curtis52

Greg Bimson said:


> Sure. I'll do it when there is a motion filed regarding contempt for ongoing patent infringement. That is not what is before the court now.


TiVo is asking for a contempt of court finding due to alleged violation of *an injunction against patent infringement.*


> 35 U.S.C. 283 - Patent Laws - Injunction.
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.





> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of *an injunction against patent infringement* by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.


----------



## jacmyoung

Curtis52 said:


> TiVo is asking for a contempt of court finding due to alleged violation of *an injunction against patent infringement.*


But the argumnet now is there is another kind of injunction in patent cases, called prima facie injunction, the rule above does not apply. That was why I said earlier you cannot possibly argue with that, because prima facie injunction in patent cases does not exist, and therefore we will never find a prior case or opinion or language in the law to dispute it, how can we find anything that never existed?

Since we cannot cite anything in dispute, therefore their argument is undisputed.

I thought there is a name for such fallacy in debate but it skips me for now.

I remember you cited one case that ruled against a prima facie interpretation of the injunction, I had a few myself, but again since none of them are identical cases to this one, according to them they simply also did not apply.


----------



## nobody99

Curtis52 said:


> TiVo is asking for a contempt of court finding due to alleged violation of *an injunction against patent infringement.*


Let me ask you this question: if a modified device _were_ to be found in contempt, would it then be an enjoined, adjudicated device?


----------



## nobody99

jacmyoung said:


> But the argumnet now is there is another kind of injunction in patent cases, called prima facie injunction, the rule above does not apply.


Look, there's nothing mysterious about this. There's nothing precedent-setting about it.

A device has been adjudged to infringe, and it was enjoined. It doesn't automatically get "un-enjoined" because the guilty party says so.

If we are to take DISH on its word that it no longer infringes, why can't we also take TiVo on is word that it does still infringe?

If we were talking about a device that was not adjudicated, I'd agree with you. But the eight named DVRs were found guilty. The three million of them are _presumed to infringe_ until proven otherwise.

That makes the contempt hearing simple: are the DVR functions disabled in the eight named DVRs? No? Then they are in contempt. You want the court to determine if they still infringe, but for the contempt hearing, these devices are _already_ adjudicated to infringe.


----------



## peak_reception

> Under the standard we adopt, a *judgment of contempt* against an enjoined party *for violation of an injunction* against patent infringement *by the making, using or selling of a modified device* may not be upheld without a finding that the *modified device* falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.


 Again, the focus of September 4 is not about the making, using, or selling of EchoStar's modified (or "new" ) device. That comes later. September 4 is about EchoStar's violation of an Court Injunction with explicit requirements covering *an already adjudicated, infringing device.*


----------



## Greg Bimson

jacmyoung said:


> But the argumnet now is there is another kind of injunction in patent cases, called prima facie injunction, the rule above does not apply. That was why I said earlier you cannot possibly argue with that, because prima facie injunction in patent cases does not exist, and therefore we will never find a prior case or opinion or language in the law to dispute it, how can we find anything that never existed?
> 
> Since we cannot cite anything in dispute, therefore their argument is undisputed.
> 
> I thought there is a name for such fallacy in debate but it skips me for now.


The logic escapes me.

If DISH/SATS were selling a 721, 921 or 942, which have been proven to infringe, and which have not been modified, you mean to tell me:

TiVo would have to file a motion for contempt and then prove AGAIN that those devices no longer infringe?

Right.

Try this:


> If an injunction is issued and the defendant violates the injunction by, for example, continuing to sell the infringing product, the plaintiff can move the court to issue a contempt citation against the defendant. The contempt citation can provide for fines and other punitive measures. The possibility of the issuance of a contempt citation is a strong deterrent to a defendant contemplating violation of an injunction, as such conduct is a violation of a court order.


As to finding something, anything, I'll give Fisher Price v. Safety 1st:


> III. STANDARD OF REVIEW
> A. Contempt of Court
> To prove civil contempt, the moving party must show by clear and convincing evidence that "(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order." Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995); see Robin Woods Inc. v. Woods, 28 F.3d 396, 399 (3d Cir. 1994) (internal citations omitted); United States v. Pozgai, 999 F.2d 719, 735 (3d Cir. 1993).
> 
> [...]
> 
> IV. DISCUSSION
> A. Fisher-Price's Motion for a Finding of Contempt
> Fisher-Price argues that Safety 1st should be found in contempt of the Injunction of August 28, 2003. (D.I. 445.) To prove civil contempt, Fisher-Price must establish that (1) the Injunction was a valid court order, (2) Safety 1st had knowledge of the Injunction, and (3) Safety 1st disobeyed the Injunction. Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995). This showing must be established by clear and convincing evidence. Robin Woods Inc. v. Woods, 28 F.3d 396, 399 (3d Cir. 1994) (internal citations omitted); United States v. Pozgai, 999 F.2d 719, 735 (3d Cir. 1993). There is no dispute as to the Injunction's validity or to Safety 1st's knowledge of it. Thus, the sole issue is whether Safety 1st violated the Injunction.
> 
> Fisher-Price argues that Safety 1st violated the Injunction in two ways. First, Fisher-Price contends that Safety 1st violated the Injunction by continuing to sell infringing models of the 2-n-1 Bouncenette and the Magic Motion after August 28, 2003. With respect to Magic Motion sales, Safety 1st has admitted to selling at least 442 units of the Magic Motion after the Injunction was entered. *Safety 1st attempts to minimize its contemptuous conduct by portraying it as inadvertent or insignificant. The fact remains, however, that Safety 1st violated a valid court order. Thus, the court finds that Safety is in contempt of the Injunction with respect to Magic Motion sales.* With respect to Bouncenette sales, Fisher-Price asserts that Safety 1st has failed to show that its post-Injunction Bouncenette sales were not in violation of the Injunction. Safety 1st counters that, while it sold Bouncenettes after the Injunction's entry bearing the proscribed base model numbers, all of those Bouncenettes had a new, non-infringing harness design that Fisher-Price has not accused of infringement. Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction.2 Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales.
> 
> Second, Fisher-Price argues that Safety 1st violated the Injunction by failing to make all reasonable efforts to retrieve infringing products from Safety 1st's major retail customers. The court agrees. Safety 1st hired another company to retrieve infringing products from Toys 'R Us and Babies 'R Us. That was a reasonable effort. But Safety 1st admits that it did not make similar efforts with its other major retail customers, such as Target. The court's order was unambiguous: Safety 1st was required to "make every reasonable effort possible." Safety 1st did not. Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.


Here is a contempt proceeding regarding a patent infringement case. The mover was able to receive a positive outcome of contempt against the contemnor. Fisher Price did *NOT* have to prove infringement again.

It is the second point, where Safety 1st did not "make every reasonable effort possible" to do as the injunction ordered: to retrieve infringing products from Safety 1st's major retail customers.

It is similar to what DISH/SATS has not done: to disable the DVR functionality of eight adjudicated models in the hands of end users.

You wanted case law that applies, and this is the most similar there is.


----------



## Curtis52

peak_reception said:


> Again, the focus of September 4 is not about the making, using, or selling of EchoStar's modified (or "new" ) device. That comes later. September 4 is about EchoStar's violation of an Court Injunction with explicit requirements covering *an already adjudicated, infringing device.*





> "Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement *by* the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement."


It doesn't say "for".


----------



## jacmyoung

Greg Bimson said:


> The logic escapes me.
> 
> If DISH/SATS were selling a 721, 921 or 942, which have been proven to infringe, and which *have not been modified*, you mean to tell me:
> 
> TiVo would have to file a motion for contempt and then prove AGAIN that those devices no longer infringe?
> 
> Right.


Did you even realized what you were trying to say? Just look at the bold phrase for yourself and tell me how did it apply here. The whole idea is if the products are *modified*, if not of course DISH will be in contempt.



> Try this:As to finding something, anything, I'll give Fisher Price v. Safety 1st:Here is a contempt proceeding regarding a patent infringement case. The mover was able to receive a positive outcome of contempt against the contemnor. Fisher Price did *NOT* have to prove infringement again.
> 
> It is the second point, where Safety 1st did not "make every reasonable effort possible" to do as the injunction ordered: to retrieve infringing products from Safety 1st's major retail customers.
> 
> It is similar to what DISH/SATS has not done: to disable the DVR functionality of eight adjudicated models in the hands of end users.
> 
> You wanted case law that applies, and this is the most similar there is.


Again was there any *modification* in the above case? No. The infringer admitted they made a mistake by continued selling *without modifying* the products. In such case of course the patentee did not have to prove anything, nothing had changed as far as those infringing products were concerned.

Please be more careful before you cite a case.


----------



## nobody99

Curtis52 said:


> It doesn't say "for".


But it does say "modified," as in "not already adjudicated."


----------



## nobody99

jacmyoung said:


> Again was there any *modification* in the above case? No. The infringer admitted they made a mistake by continued selling *without modifying* the products. In such case of course the patentee did not have to prove anything, nothing had changed as far as those infringing products were concerned.
> 
> Please be more careful before you cite a case.


And was the new modified device already adjudicated to infringe? No.

Be more careful before you criticize that which you don't comprehend.


----------



## jacmyoung

nobody99 said:


> Look, there's nothing mysterious about this. There's nothing precedent-setting about it.
> 
> A device has been adjudged to infringe, and it was enjoined. It doesn't automatically get "un-enjoined" because the guilty party says so.
> 
> If we are to take DISH on its word that it no longer infringes, why can't we also take TiVo on is word that it does still infringe?
> 
> If we were talking about a device that was not adjudicated, I'd agree with you. But the eight named DVRs were found guilty. The three million of them are _presumed to infringe_ until proven otherwise.
> 
> That makes the contempt hearing simple: are the DVR functions disabled in the eight named DVRs? No? Then they are in contempt. You want the court to determine if they still infringe, but for the contempt hearing, these devices are _already_ adjudicated to infringe.


Please don't continue to argue with me, we have at least four cases which the infringers continued to use and sell the adjudicated products/service/method that were, yes, adjudicated infringing products/service/method, and in each of the four cases, the infringer was *not* in contempt, because they made a good faith effort to modify the *adjudicated* products/service/method.

Go argue with the courts which found the infringers not in contempt.


----------



## jacmyoung

nobody99 said:


> And was the new modified device already adjudicated to infringe? No.
> 
> Be more careful before you criticize that which you don't comprehend.


Don't try to defend Greg, I think he knows how to better defend himself.


----------



## Curtis0620

CHICAGO -- On May 11, 2005, Judge John W. Darrah of the U.S. District Court for the Northern District of Illinois ruled that Intex Recreation Corporation was in contempt of a post-trial injunction, which prohibited further infringement of Aero Products International's patent, due to Intex's sale of a similar product to that found to infringe. In September 2004, the Court entered a permanent injunction enjoining Intex from further infringement of Aero's '726 patent relating to the AeroBed® inflatable air mattress. Aero is represented by the intellectual property firm Brinks Hofer Gilson & Lione. 


Intex claimed that this second product was sufficiently different in design as to warrant a separate lawsuit, thus subjecting Aero to the expense of an additional lengthy trial. However, the Court disagreed and ruled that the second product also infringed Aero's patent rights and that Intex was in contempt of the permanent injunction. Damage calculations are pending. 

"We were surprised that Intex sold the product it did in the wake of a jury's finding of willful infringement and are pleased that Judge Darrah agreed with Aero and found Intex in contempt," said William H. Frankel, lead counsel for Aero and a litigator at Brinks. Other members of the legal team from Brinks include Michael Chu, Mark Remus and David Bluestone. 

The case, Aero Products International, Inc. v. Intex Recreation Corporation; Quality Trading, Inc; and Wal-Mart Stores, Inc., involved technology that allows a user to quickly inflate an air mattress and easily adjust its firmness using a unique comfort control feature that Aero, of Wauconda, Illinois, promotes with its ONE TOUCH® trademark. In February 2004, a jury found that Intex willfully infringed Aero's patent and trademark rights and awarded Aero damages of $2.95 million for patent infringement and $1 million for trademark infringement. In July 2004, the judge doubled the patent damages award to $5.9 million based on the jury's finding of willful infringement and also awarded Aero its attorneys' fees.


----------



## Curtis0620

WORCESTER, Mass. -- Late yesterday in Boston, United States District Court Judge Nathaniel M. Gorton found STX LLC of Baltimore, Maryland, in contempt of court for violation of a permanent injunction Judge Gorton issued last year in a suit successfully brought by Brine, Inc. of Milford, Massachusetts for infringement of a lacrosse stick patent. Judge Gorton ordered STX to pay Brine the gross profits from sales of an infringing lacrosse stick, as well as costs and attorneys fees relating to the contempt issue. Mirick O'Connell, a Massachusetts law firm, prosecuted the case. The legal team included Brian Dingman, Esq., Jenifer Haeckl, Esq., and John Mirick, Esq.

Related Results 
Court Rules On Contempt Motion in Diomed Patent Litigation 
Court Denies Diomed Motion Against AngioDynamics 

On January 21, 2004, Judge Gorton issued a final judgment of over $2 million in the patent infringement suit brought by Brine against STX. In November 2003, a federal jury in Worcester returned a verdict of willful patent infringement and damages for lost profits of $1.9 million in the same suit.

Brine, based in Milford, Massachusetts, manufactures and distributes lacrosse sticks, equipment, accessories, and apparel, as well as other sporting goods. In 1995, Brine introduced its line of Edge Offset(TM) Head lacrosse sticks with lowered sidewalls, which was an immediate commercial success. Two years later, STX introduced its first offset head to the marketplace. In 1999, Brine filed the patent infringement suit against STX in Federal Court which resulted in the 2003 jury award. On January 21, 2004 the judge denied STX's post-trial motion to stay the injunction and issued the permanent injunction that barred STX from making, offering to sell, or selling STX's Octane, Proton or X2 products anywhere in the U.S.. Together with pre-judgment interest, the award totaled over $2 million, among the ten largest awards in the state of Massachusetts in 2003.

"The permanent injunction issued by the judge against STX was very important for Brine," states John Mirick, a partner at Mirick O'Connell and the chief trial attorney on this case. "The Edge Offset(TM) Head has had a tremendous impact on the game of lacrosse. The final judgment recognized and protected Brine's unique design, and Judge Gorton noted in this latest decision that this 'marks the second time that this Court has ordered STX to cease infringing' on Brine's patent, and that 'a substantial sanction is appropriate.'"

Last October, Brine filed a complaint alleging that STX had violated this injunction by continuing to sell a product that was "substantially the same" as the X2, named the X2+. Last month, the judge held a hearing in the matter, which included expert testimony. In his opinion issued yesterday, Judge Gorton found that the X2+ lacrosse sticks are not different from the X2. "As such, Brine has proven infringement by clear and convincing evidence," his ruling stated.


----------



## Greg Bimson

jacmyoung said:


> If DISH/SATS were selling a 721, 921 or 942, which have been proven to infringe, and *which have not been modified*, you mean to tell me:
> 
> TiVo would have to file a motion for contempt and then prove AGAIN that those devices no longer infringe?
> 
> Right.





jacmyoung said:


> Did you even realized what you were trying to say? Just look at the bold phrase for yourself and tell me how did it apply here. The whole idea is if the products are modified, if not of course DISH will be in contempt.


What you are failing to see in my argument is that if DISH/SATS sold non-modified 721, 921 and 942 DVR's, *your* argument is that infringement must first be determined, because the first issue a contempt hearing should determine is infringment. However, if DISH/SATS sold non-modified 721, 921 and 942 DVR's, why would anyone need to check if they still infringe? That would be a prima facie violation of the injunction. That simply means prima facie violations of patent infringement injunctions exist, contrary to what some have been arguing.


jacmyoung said:


> Again was there any *modification* in the above case? No. The infringer admitted they made a mistake by continued selling *without modifying* the products. In such case of course the patentee did not have to prove anything, nothing had changed as far as those infringing products were concerned.
> 
> Please be more careful before you cite a case.


You might do better if you read the case...


> On August 28, 2003, on Fisher-Price's motion, the court entered a permanent injunction (the "Injunction") prohibiting Safety 1st from "making, using, offering for sale, selling, licensing, importing, or otherwise distributing in the United States the following products: (a) the '2-n-1' Bouncenette, including model numbers 43002, 43002A, 43006, 43006A, 25006, and 25105; and (b) the Magic Motion, model number 43003." (D.I. 354.) The Injunction also required Safety 1st to "make every reasonable effort possible to retrieve from their major retail customers infringing products including the above-listed specifically identified products that are still in the possession of those customers." Id.


There are two orders in the injunction: one to enjoin sales and distribution, the other to recall all infringing product. Safety 1st was found to violate both orders. It was a prima facie violation, in a patent case.

It is the second order that is the most troubling to DISH/SATS. The second order in Fisher-Price v. Safety 1st ordered Safety 1st to recall the infringing products, i.e., "make every reasonable effort possible to retrieve from their major retail customers infringing products including the above-listed specifically identified products that are still in the possession of those customers." Safety 1st was found in contempt because they only went to one retailer to recall product. They did not follow the injunction.

In the TiVo v. Echostar case, the second order in the injunction states to disable eight specific models of adjudicated infringing DVR's, and the injunction does not expire until the Time Warp patent expires. Therefore, the only modification that complies with the injunction is to disable the DVR functionality in those eight models. Any other modification is most likely a violation of the injunction. And it certainly does not require a finding of infringement.


----------



## nobody99

jacmyoung said:


> Please don't continue to argue with me, we have at least four cases which the infringers continued to use and sell the adjudicated products/service/method that were, yes, adjudicated infringing products/service/method, and in each of the four cases, the infringer was *not* in contempt, because they made a good faith effort to modify the *adjudicated* products/service/method.
> 
> Go argue with the courts which found the infringers not in contempt.


Bzz. wrong. In every case you cite, the modified products were not adjudicated to infringe.

And I will argue with you as long as you continue to ignore the facts :lol:


----------



## nobody99

jacmyoung said:


> Don't try to defend Greg, I think he knows how to better defend himself.


Uh, ok, Einstein :hurah:


----------



## Curtis0620

Here's an interesting article that applies here:

http://209.85.215.104/search?q=cach...injunction+contempt&hl=en&ct=clnk&cd=48&gl=us


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## Curtis52

Greg Bimson said:


> What you are failing to see in my argument is that if DISH/SATS sold non-modified 721, 921 and 942 DVR's, *your* argument is that infringement must first be determined, because the first issue a contempt hearing should determine is infringment.


Judge: "Have these units been modified to stop infringement"?
Defendant: "No your honor".

There ya go.


----------



## Greg Bimson

Curtis52 said:


> Judge: "Have these units been modified to stop infringement"?
> Defendant: "No your honor".
> 
> There ya go.


I didn't know that judges must always ask the defendants if the product found infringing must ask again if the infringment is continuing in a contempt hearing.


----------



## Curtis52

Greg Bimson said:


> I didn't know that judges must always ask the defendants if the product found infringing must ask again if the infringment is continuing in a contempt hearing.


It is assumed that most defendants would volunteer the information.


----------



## James Long

jacmyoung said:


> Does it really matter if the opinion/ruling is from the district court or the appeals court?


Yes. That judge's ruling and logic were not reviewed. Just because the parties accepted what she wrote and no one appealed (there was no appeal at all in the "Foods" case) doesn't make it the right action.


----------



## James Long

Curtis52 said:


> It is assumed that most defendants would volunteer the information.


Unless they are still infringing ... they would avoid announcing themselves as infringing.


----------



## Greg Bimson

Greg Bimson said:


> I didn't know that judges must always ask the defendants if the product found infringing must ask again if the infringment is continuing in a contempt hearing.





Curtis52 said:


> It is assumed that most defendants would volunteer the information.


Cool. Next time I am in some litigated mess, I'll state my position and make sure the opposition receives no chance to even question it, so I'll get off scott-free.

I'm innocent. Honest. You can't send me to jail for a DUI because I am not drinking now. But don't give me a breathalizer. Just take my word for it.

We're innocent. Honest. You cannot find us in contempt because we aren't infringing now. But don't give TiVo discovery. Just take our word for it.

That's how courts operate. I get it.


----------



## kmill14

Oh, and don't forget that the defendant's interpretation has more value than the plaintiff's...according to jacmyoung.


----------



## Curtis52

Greg Bimson said:


> Cool. Next time I am in some litigated mess, I'll state my position and make sure the opposition receives no chance to even question it, so I'll get off scott-free.


Most plaintiffs would want to question it. That's true enough.

Usually, defendants provide filings before the hearing stating their position. Dish did.


----------



## Curtis52

To the extent that there is any ambiguity or omission in the
injunction, the order must be interpreted "to the benefit of the person charged with
contempt." Id. (citing cases); see also Georgia Power Co. v. N.L.R.B., 484 F.3d
1288, 1291 (11th Cir. 2007) ("[W]e will construe any ambiguities or uncertainties
in such a court order in a light favorable to the person charged with contempt.").


----------



## kmill14

So Curtis,

Is the hearing on 9/4 about devices that have not been adjudged to infringe claims of a patent?


----------



## kmill14

Curtis52 said:


> To the extent that there is any ambiguity or omission in the
> injunction, the order must be interpreted "to the benefit of the person charged with
> contempt." Id. (citing cases); see also Georgia Power Co. v. N.L.R.B., 484 F.3d
> 1288, 1291 (11th Cir. 2007) ("[W]e will construe any ambiguities or uncertainties
> in such a court order in a light favorable to the person charged with contempt.").


And its up to the Court to decide if there is ambiguity or ommissions....not the defendant.


----------



## Greg Bimson

Either:

The court simply accepts DISH/SATS position, without giving TiVo discovery to defend DISH/SATS claims

or

There is such thing as a prima facie injunction where ongoing infringement is not a question. Kinda like the Fisher-Price v. Safety 1st prima facie contempt finding.

Safety 1st violated the court order because they did not recall their products. They didn't check for ongoing infringement. Just because DISH/SATS claims a modification doesn't mean that the injunction order to disable can be ignored. There are still over 3 million DVR's in the field that were adjudicated infringing, and subject to the order to have DVR functionality disabled.


----------



## Greg Bimson

Curtis52 said:


> To the extent that there is any ambiguity or omission in the
> injunction, the order must be interpreted "to the benefit of the person charged with
> contempt." Id. (citing cases); see also Georgia Power Co. v. N.L.R.B., 484 F.3d
> 1288, 1291 (11th Cir. 2007) ("[W]e will construe any ambiguities or uncertainties
> in such a court order in a light favorable to the person charged with contempt.")


And once again, just because DISH/SATS may claim that the grass is blue and the sky is green doesn't mean there is an ambiguity.


----------



## Curtis52

Greg Bimson said:


> Either:
> 
> The court simply accepts DISH/SATS position, without giving TiVo discovery to defend DISH/SATS claims
> 
> or
> 
> There is such thing as a prima facie injunction where ongoing infringement is not a question. Kinda like the Fisher-Price v. Safety 1st prima facie contempt finding.


The court can rule that TiVo has to prove that the modification infringes. The judge will then grant discovery and TiVo can stop wasting time.


----------



## kmill14

Curtis52 said:


> The court can rule that TiVo has to prove that the modification infringes. The judge will then grant discovery and TiVo can stop wasting time.


Or the Court can rule that E* didn't do what he asked them to do with regards to devices already adjudged to infringe and sold to customers. And then E* can stop wasting time.


----------



## Curtis0620

Or DISH will be found in contempt for refusing TiVo the right of discovery on the new software.


----------



## jacmyoung

James Long said:


> Yes. That judge's ruling and logic were not reviewed. Just because the parties accepted what she wrote and no one appealed (there was no appeal at all in the "Foods" case) doesn't make it the right action.


I thought the argument here was whether there are any precedents to indicate Judge Folsom will not buy the "prima facie injunction" argument, why do I have to also prove a hypothetical situation in which had the movant appealed what could have happened? You are asking for such a high burden of proof from me yet still has not offered any proof of your own at all. To me that is a double standard don't you think?


----------



## Greg Bimson

Curtis52 said:


> The court can rule that TiVo has to prove that the modification infringes. The judge will then grant discovery and TiVo can stop wasting time.


Why would the court rule that TiVo has to prove that the modification infringes, when the standard for prima facie violations of an injunction is so much easier?


> III. STANDARD OF REVIEW
> A. Contempt of Court
> To prove civil contempt, the moving party must show by clear and convincing evidence that "(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order." Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995); see Robin Woods Inc. v. Woods, 28 F.3d 396, 399 (3d Cir. 1994) (internal citations omitted); United States v. Pozgai, 999 F.2d 719, 735 (3d Cir. 1993).


This will be the standard used on 4 September, unless by some miracle DISH/SATS can convince Judge Folsom that this should not be the standard.


> IV. DISCUSSION
> A. Fisher-Price's Motion for a Finding of Contempt
> Fisher-Price argues that Safety 1st should be found in contempt of the Injunction of August 28, 2003. (D.I. 445.) To prove civil contempt, Fisher-Price must establish that (1) the Injunction was a valid court order, (2) Safety 1st had knowledge of the Injunction, and (3) Safety 1st disobeyed the Injunction. Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995). This showing must be established by clear and convincing evidence. Robin Woods Inc. v. Woods, 28 F.3d 396, 399 (3d Cir. 1994) (internal citations omitted); United States v. Pozgai, 999 F.2d 719, 735 (3d Cir. 1993). There is no dispute as to the Injunction's validity or to Safety 1st's knowledge of it. Thus, the sole issue is whether Safety 1st violated the Injunction.


We know this also to be true, as the sole issue in TiVo v. Echostar is whether DISH/SATS violated the injunction. And a simple reading of the injunction shows that the injunction is in effect and the eight models of DVR ordered disabled for the duration of the Time Warp patent are not disabled.


----------



## jacmyoung

kmill14 said:


> Oh, and don't forget that the defendant's interpretation has more value than the plaintiff's...according to jacmyoung.


Not according to me but according to the court.

In the Star Brite case, the infringer was prohibited from use and sell products A, B and C by names. The infringer modified the chemical composition of the products A, B and C, then continued to use and sell the products A, B and C by the same names.

The patentee argued the infringer was in contempt because they ignored the order, continued to use and sell products A, B and C by the same names, same packaging, no difference in appearance at all.

Logical? Of course any one reading the letter of the injunction would say so.

The infringer argued not so, becasue what the court order really meant was to stop the use of the old formulas used to make those products.

Logical? Not at all, an argument usually would get a laugh and told to pack it and leave.

Guess what, not only did the court embrace the totally "illogical" argument, the court said no, the patentee couldn't possibly interpret the court order as to prohibit just the products A, B,and C as written, it had to mean the internal formulation. No the infringer was not in contempt.

Care to explain?


----------



## jacmyoung

Greg Bimson said:


> Why would the court rule that TiVo has to prove that the modification infringes, when the standard for prima facie violations of an injunction is so much easier?


Because such standard does not exist? Since when have you ever begun to form the belief the decisions by the court should be easy?



> This will be the standard used on 4 September.We know this also to be true, as the sole issue in TiVo v. Echostar is whether DISH/SATS violated the injunction. And a simple reading of the injunction shows that the injunction is in effect and the eight models of DVR ordered disabled for the duration of the Time Warp patent are not disabled.


Yeah, a standard established by you.

The standard has been clearly explained above, prove two things, 1) Prima facie violation, *and* 2) prove with clear and convincing evidence that there is still infringement of the patent after the modification. Only 1) is "insufficient", "infringement must also be found."

Yes the sole issue on 9/4 appears of only 1), and because of that, the judge will likely say to Tivo, can you also give me 2)? If not then tell me what does it take for you to give me 2)? A discovery on the new software? Well let's do it, but only in the context of colorable difference examination, not in determining infringement like you insisted last time, ok?


----------



## Greg Bimson

jacmyoung said:


> Because such standard does not exist?


If you don't want to read the Fisher-Price v. Safety 1st ruling, I cannot make you. But I can assure you the standard exists, as it is there.


jacmyoung said:


> The standard has been clearly explained above, prove two things, 1) Prima facie violation, and 2) prove with clear and convincing evidence that there is still infringement of the patent.


There was no questioning in the Fisher-Price v. Safety 1st case regarding infringement. That wasn't even part of the standard. Why must it be, now? Remember...


> To prove civil contempt, the *moving party* must show by clear and convincing evidence that "(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order."


TiVo is the moving party, and to prove civil contempt, those three items must be found true. None of those three points involve infringement, past or present. Yet the Fisher-Price v. Safety 1st contempt motion originated from a patent infringement case, and the *moving party* won without having to prove infringement again.

Wow. Very similar.


----------



## jacmyoung

Greg Bimson said:


> If you don't want to read the Fisher-Price v. Safety 1st ruling, I cannot make you. But I can assure you the standard exists, as it is there.There was no questioning in the Fisher-Price v. Safety 1st case regarding infringement. That wasn't even part of the standard. Why must it be, now? Remember...TiVo is the moving party, and to prove civil contempt, those three items must be found true. None of those three points involve infringement, past or present. Yet the Fisher-Price v. Safety 1st contempt motion originated from a patent infringement case, and the *moving party* won without having to prove infringement again.
> 
> Wow. Very similar.


Did you even read my response to your case law above? The infringer in that case never modified anything, so of course the patentee proved both: 1) a prima facie violation and 2) the products still infringed, because no modification was done at all.

Had DISH never made any modification, you and I would not be here arguing in the first place. A big piece was missing in that case, the central piece, the piece that makes all the difference.


----------



## Curtis52

Greg Bimson said:


> Why would the court rule that TiVo has to prove that the modification infringes, when the standard for prima facie violations of an injunction is so much easier?


We know that the injunction only applies to preventing infringement because that is all the judge is empowered to enjoin. The injunction only requires that infringing products be disabled. If there is a doubt then TiVo has to prove infringement of the modified device. If there is ambiguity in the injunction, the 9-4 hearing has to be decided in Dish's favor.


> devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " '*fair ground for doubt*' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.





> To the extent that there is any ambiguity or omission in theinjunction, the order must be interpreted "to the benefit of the person charged with contempt." Id.


----------



## nobody99

> devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.


The devices *are already enjoined!!!* The modification does not change that fact!


----------



## Curtis0620

It must be sustantial evidence.


----------



## Greg Bimson

jacmyoung said:


> Did you even read my response to your case law above? The infringer in that case never modified anything, so of course the patentee proved both: 1) a prima facie violation and 2) the products still infringed, because no modification was done at all.


Show me where the patentee proved the products still infringe.


Curtis52 said:


> If there is a doubt then TiVo has to prove infringement of the modified device. If there is ambiguity in the injunction, the 9-4 hearing has to be decided in Dish's favor.


There is no doubt the adjudicated devices infringed. But TiVo (just like Fisher-Price) can determine that DISH/SATS did not follow the order of the court because the adjudicated infringing devices were not disabled.

There are millions of adjudicated devices in customers' homes. They were ruled infringing. They have been ordered by the court to be disabled. They have not been.


> devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.


Sure. But TiVo is not asking for a finding of violation of an injunction against infringement. TiVo is asking for a contempt ruling regarding "prima facie" violations of an injunction. This is not a contempt ruling regarding infringement, just like Fisher-Price v. Safety 1st.

You know, Safety 1st was ordered to recall and to stop sales of infringing products, and they did neither, and were found in contempt. DISH/SATS was ordered to disable eight models of DVR's in customer's homes, and DISH/SATS hasn't followed that order.


----------



## Curtis52

Greg Bimson said:


> Sure. But TiVo is not asking for a finding of violation of an injunction against infringement.


Sure they are. That's the only kind of patent injunction that the law allows. The injunction is an infringement injunction.


> 35 U.S.C. 283 Injunction. - Patent Laws
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent the violation* of any right secured by patent, on such terms as the court deems reasonable.


----------



## kmill14

Curtis52 said:


> Sure they are. That's the only kind of patent injunction that the law allows. The injunction is an infringement injunction.


So the Court didn't find the DP-501 in Joe Blow's home infringed on TiVo's patent?


----------



## HobbyTalk

Curtis0620 said:


> Do you mean "probably"
> 
> :lol: :lol: :lol: :lol:


No prolly, a lot more fun that way :hurah:


----------



## Greg Bimson

Curtis52 said:


> Sure they are. That's the only kind of patent injunction that the law allows. The injunction is an infringement injunction.


And the devices adjudicated as infringing must be disabled, because they infringed.

And there certainly is more than one way to violate an injunction. Just as Safety 1st.


----------



## Curtis52

Greg Bimson said:


> And the devices adjudicated as infringing must be disabled, because they infringed.


An injunstion is not punishment. By law an injunction can only prevent infringement. 


> 35 U.S.C. 283 Injunction. - Patent Laws
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent* the violation of any right secured by patent, on such terms as the court deems reasonable.


An enjoined party is entitled to modify the infringing devices. If there is no infringement there is no contempt.


> An enjoined party is entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device although he bears the risk that the enjoining court may find changes to be too insubstantial to avoid contempt.
> 
> http://www.altlaw.org/v1/cases/411612


----------



## Curtis0620

No where has it been proven that the new software doesn't infringe. The new software must be sustantially different.


----------



## Greg Bimson

Curtis52 said:


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


But that test is only if the patentee asks for a motion of contempt for ongoing infringement. TiVo is asking for the adjudicated infringing devices to be disabled, as ordered.

And although no one truly knows if the adjudicated devices currently infringe, there is an active order that states their functionality must be disabled because the adjudicated devices were found to infringe.

Curtis52, how many adjudicated infringing devices are at a customer location?


Greg Bimson said:


> And the devices adjudicated as infringing must be disabled, because they infringed.





Curtis52 said:


> An injunstion is not punishment. By law an injunction can only prevent infringement.


That's what disabling devices found infringing does.


----------



## kmill14

Curtis52 said:


> An injunstion is not punishment. By law an injunction can only prevent infringement.
> 
> An enjoined party is entitled to modify the infringing devices. If there is no infringement there is no contempt.


There you go quoting from a case that is specifically discussing Device A and Device B. This hearing is only to discuss Device A, which has already been adjudged to infringe and sold to customers.


----------



## nobody99

Curtis52 said:


> An injunstion is not punishment. By law an injunction can only prevent infringement.


And infringement was already found. It is up to DISH to prove that a device already enjoined should no longer be ejoined.



Curtis52 said:


> An enjoined party is entitled to modify the infringing devices. If there is no infringement there is no contempt.


Modified devices in that context are not the enjoined, adjudicated devices.

The hearing on 9/4 deals only with the already-ejoined, already-adjudicated devices.


----------



## Curtis52

Greg Bimson said:


> That's what disabling devices found infringing does.


If any are found to infringe Dish should be ruled in contempt. TiVo needs to start looking.


----------



## Greg Bimson

Curtis52 said:


> If any are found to infringe Dish should be ruled in contempt. TiVo needs to start looking.


They already have been found to infringe. No need to worry about that.


----------



## nobody99

http://www.google.com/url?sa=t&ct=r...kpmohNvt9We2JfLBA&sig2=4HktsUkxak-nyLdzAWolJw

This one's pretty good.



> The Federal Circuit has explained that a court granting an injunction may "not properly deny the one element of such relief" that would be "necessary to make it effective." Trans-World Mfg. Corp. v. Al. Nyman & Sons, Inc., 750 F.2d 1552, 1564 (Fed. Cir. 1984). In other words, *the injunction should provide the aggrieved party with "meaningful relief,"* id., where the scope of *injunctive relief is not limited to merely preventing "further acts of direct infringement."* Kaspar Wire Works, Inc. v. K-Jack Eng's Co., 1995 WL 662674, at *3 (Fed. Cir. 1995); see also Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 777 (Fed. Cir. 1993) (*stating injunctive relief not limited to acts of direct infringement)*.





Curtis52 said:


> That's the only kind of patent injunction that the law allows. The injunction is an infringement injunction.


Uh-oh Curtis52. Looks like you were wrong about the idea that an injunction could only be used to prevent infringement. Ooops.



> Upon a finding of patent infringement, an injunction may enjoin those "acts which constitute direct, induced, or contributory infringement during the term of the patent." Joy Techs., Inc., 6 F.3d at 777. *In addition, the trial court may determine whether "additional conditions are necessary," and accordingly "determine and . . . fashion an appropriate remedy."*


----------



## nobody99

http://bulk.resource.org/courts.gov/c/F3/62/62.F3d.1430.94-1326.html



> Once a patentee has been compensated for infringement by money damages, the infringer has the right to repair, but not reconstruct, the infringing device.


Isn't dowloading new software "reconstructing" the device?

Also, TiVo was not fully compensated by money damages, so the infringer might not even have the right to repair.


----------



## nobody99

http://www.google.com/url?sa=t&ct=r...Z_Gnb_PqcEy4R6VFg&sig2=VvG_6MnjNLE3gqbHjTDGuw

Here's just some law talk about permissible repair:



> An unrestricted first sale of a patented product from a patentee to a purchaser implies a license from the patentee to the purchaser to maintain the life of the product. The original purchaser is clearly a licensed user of the product, with whom repair part sellers may deal with freely. This rule highlights an important element of the rule of permissible repair: in order to invoke the protection of the rule of permissible repair, the seller of repair parts or the refurbisher must be dealing with a licensed user of the product. *In order to be a licensed user of the product the purchaser must have bought the patented product in the United States from the patentee or an authorized vendor*. Hence, the protection of the permissible repair doctrine does not apply to a patented product that a user obtained outside of authorized channels


Oops, looks like repair is out too.

That means that DISH was not allowed to download new code. Dang it


----------



## kmill14

nobody99, great finds today! You are on fire with

*"meaningful relief"* and

*"In addition, the trial court may determine whether "additional conditions are necessary," and accordingly "determine and . . . fashion an appropriate remedy.""*


----------



## nobody99

kmill14 said:


> nobody99, great finds today! You are on fire with
> 
> *"meaningful relief"* and
> 
> *"In addition, the trial court may determine whether "additional conditions are necessary," and accordingly "determine and . . . fashion an appropriate remedy.""*


I think I've managed to get on everyone's ignore


----------



## jacmyoung

nobody99 said:


> ...Uh-oh Curtis52. Looks like you were wrong about the idea that an injunction could only be used to prevent infringement. Ooops.


Yes a *direct infringement* is one committed by the infringer itself by use and sell the infringing products, an indirect infringement is done by infringer helping another company with technical assistance in the use and sell of the infringing products by the other company.

An injunction is not limited to only prevent direct infringement, but also indirect infringement.


----------



## nobody99

jacmyoung said:


> Yes a *direct infringement* is one committed by the infringer itself by use and sell the infringing products, an indirect infringement is done by infringer helping another company with technical assistance in the use and sell of the infringing products by the other company.
> 
> An injunction is not limited to only prevent direct infringement, but also indirect infringement.


Gee, you disagree with me. I'm merely colorably different from suprised.


----------



## jacmyoung

nobody99 said:


> http://bulk.resource.org/courts.gov/c/F3/62/62.F3d.1430.94-1326.html
> 
> Isn't dowloading new software "reconstructing" the device?
> 
> Also, TiVo was not fully compensated by money damages, so the infringer might not even have the right to repair.


The "repair" and "reconstruction" discussed in those cases strictly were limited to the repair of infringing devices in the field that were allowed to continue as infringing devices. The allowed repairs were limited to the actual purpose of repair, such as replacement of individual parts. But if the whole device were totally rebuilt not for the purpose of repair, that would not be ok. Basically, it relateed to all infringing products already in the field that traditionally were always left along, still allowed to be used in the field.

So those products were infringing products, never modified to be non-infringing in the first place. A completely different topic, and it is covered in the second motion in this 9/4 meeting, the "advanced exchange program" for the 190k DVRs allowed to continue to infringe.


----------



## nobody99

jacmyoung said:


> So those products were infringing products, never modified to be non-infringing in the first place. A completely different topic, and it is covered in the second motion in this 9/4 meeting, the "advanced exchange program" for the 190k DVRs allowed to continue to infringe.


No.



> the infringer has the right to repair, but not reconstruct, the infringing device.


----------



## James Long

Curtis0620 said:


> Or DISH will be found in contempt for refusing TiVo the right of discovery on the new software.


Have they? It seems that DISH has turned over a lot of information to Tivo through the courts on their new software.



jacmyoung said:


> James Long said:
> 
> 
> 
> Yes. That judge's ruling and logic were not reviewed. Just because the parties accepted what she wrote and no one appealed (there was no appeal at all in the "Foods" case) doesn't make it the right action.
> 
> 
> 
> I thought the argument here was whether there are any precedents to indicate Judge Folsom will not buy the "prima facie injunction" argument, why do I have to also prove a hypothetical situation in which had the movant appealed what could have happened? You are asking for such a high burden of proof from me yet still has not offered any proof of your own at all. To me that is a double standard don't you think?
Click to expand...

It is your argument. Why don't you tell US what it is you're trying to prove and we'll be sure to tell you you have not proved it. 

How does a 15 year old case in Florida that never left the District Court level tell a current court in Texas what to do? The steps taken in that case were so different that it is apples and oranges. But keep throwing the cases against the wall --- eventually something will stick --- and if not, at least we won't be bored waiting for some REAL court action.


----------



## nobody99

One more good one. Why the heck not (by the way, these would be TiVo's next line of attack in the off chance that the contempt motion on 9/4 fails).

http://court.osdir.com/F3/443/443.F3d.851.html



> But an infringer does not, by paying damages for making and using a machine in infringement of a patent, acquire any right himself to the future use of the machine. On the contrary, he may, in addition to the payment of damages for past infringement, be restrained by injunction from further use, and, when the whole machine is an infringement of the patent, be ordered to deliver it up to be destroyed.





> After disposing of arguments related to appellate jurisdiction and procedure, the Supreme Court addressed the merits of the dispute:
> 
> On the merits the contention is this: The interlocutory decree awards to Wilson, among other things, compensation by way of damages and profits, for employing the invention *in any machine sold prior to the service of the injunction. A patentee, in demanding and receiving full compensation for the wrongful use of his invention in devices made and sold by a manufacturer adopts the sales as though made by himself*


----------



## jacmyoung

nobody99 said:


> No.


Exactly, the cases you cited was discussing those infringing products that were not prohibited to be continued to be used, like the 190k DVRs.

Once an adjudicated product was modified, it is discussed in a different venue.


----------



## nobody99

jacmyoung said:


> Once an adjudicated product was modified, it is discussed in a different venue.


It one sentence, you have revealed your misunderstanding.

Modification does not change adjudication. It is still adjudicated.


----------



## jacmyoung

James Long said:


> ...It is your argument. Why don't you tell US what it is you're trying to prove and we'll be sure to tell you you have not proved it.
> 
> How does a 15 year old case in Florida that never left the District Court level tell a current court in Texas what to do? The steps taken in that case were so different that it is apples and oranges. But keep throwing the cases against the wall --- eventually something will stick --- and if not, at least we won't be bored waiting for some REAL court action.


Are you implying that you do not have an argument of your own?

So now we have another reason not to care about a prior case, because it happened 15 years ago? Of course a precedent made in another federal circuit court can be used by the one in Texas.


----------



## jacmyoung

nobody99 said:


> It one sentence, you have revealed your misunderstanding.
> 
> Modification does not change adjudication. It is still adjudicated.


Why do you keep going at it when I have already given you four cases which all had *adjudicated* things modified and avoided contempt? Who cares what is your definition of adudicarted or not, the bottomline is once they were modified, there were no contempt, in all of the four cases.


----------



## jacmyoung

nobody99 said:


> One more good one. Why the heck not (by the way, these would be TiVo's next line of attack in the off chance that the contempt motion on 9/4 fails).
> 
> http://court.osdir.com/F3/443/443.F3d.851.html


Again those products in question were never modified, so they were still infringing products.

One word to look for, as I asked Greg, is "modified" or "modification" of the adjudicated devices, if you do not see such word in there, go on to the next case, it will save you a lot of time by looking for keyword like this one.


----------



## nobody99

jacmyoung said:


> Why do you keep going at it when I have already given you four cases which all had *adjudicated* things modified and avoided contempt? Who cares what is your definition of adudicarted or not, the bottomline is once they were modified, there were no contempt, in all of the four cases.


Why do you keep disagreeing with me? I am not talking about new devices.

Let's say there were exactly three million DVRS when the injunction was written. Serial #'s are 0000001 - 3000000.

Those devices are forever adjudicated, until DISH finds a way to get the court to unadjudicate them.

Serial #3000001 rolls off the assembly line. It is adjudicated automatically if it has the infringing software in it.

DISH changes the software load routine to their new stuff and rolls off Serial #3000002. It is no longer adjudicated. It is a modified device.

Let's say that TiVo manages to prove that the new software is only colorably different. #3000002 is now adjudicated as well.

No matter what happens, no matter what change is made to #0000001 - #3000000, they are adjudicated until the court says otherwise.


----------



## peak_reception

> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement *by* the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.





Curtis52 said:


> It doesn't say "for".


It means the same thing.


----------



## jacmyoung

nobody99 said:


> Why do you keep disagreeing with me? I am not talking about new devices.
> 
> Let's say there were exactly three million DVRS when the injunction was written. Serial #'s are 0000001 - 3000000.
> 
> Those devices are forever adjudicated, until DISH finds a way to get the court to unadjudicate them.
> 
> Serial #3000001 rolls off the assembly line. It is adjudicated automatically if it has the infringing software in it.
> 
> DISH changes the software load routine to their new stuff and rolls off Serial #3000002. It is no longer adjudicated. It is a modified device.
> 
> Let's say that TiVo manages to prove that the new software is only colorably different. #3000002 is now adjudicated as well.
> 
> No matter what happens, no matter what change is made to #0000001 - #3000000, they are adjudicated until the court says otherwise.


Let's say the Footprint 2.0 service consisted 100 Internet servers in various clients' locations, they were all ordered to stop working, the infringer uploaded a software patch to all the servers, and guess what the same Footprint 2.0 service was allowed to continue without a contempt.


----------



## peak_reception

Curtis0620 said:


> WORCESTER, Mass. -- Late yesterday in Boston, United States District Court Judge Nathaniel M. Gorton found STX LLC of Baltimore, Maryland, in contempt of court for violation of a permanent injunction Judge Gorton issued last year in a suit successfully brought by Brine, Inc. of Milford, Massachusetts for infringement of a lacrosse stick patent.


 If only we were dealing with something so uncomplicated....


----------



## nobody99

jacmyoung said:


> Let's say the Footprint 2.0 service consisted 100 Internet servers in various clients' locations, they were all ordered to stop working, the infringer uploaded a software patch to all the servers, and guess what the same Footprint 2.0 service was allowed to continue without a contempt.


*
Device
DVR
Service
*

One of these things is not like the other, not like the other
One of these things just doesn't belong
Can you guess which thing is not like the other
Before I finish this song :hurah:


----------



## peak_reception

Curtis52 said:


> We know that the injunction only applies to preventing infringement because that is all the judge is empowered to enjoin. The injunction only requires that infringing products be disabled. If there is a doubt then TiVo has to prove infringement of the modified device. If there is ambiguity in the injunction, the 9-4 hearing has to be decided in Dish's favor.





> To the extent that there is any ambiguity or omission in theinjunction, the order must be interpreted "to the benefit of the person charged with contempt." Id.


 There was no ambiguity or omission in the injunction; EchoStar simply defied it by refusing to disable DVR functionality in the Infringing Products *as ordered*.


----------



## peak_reception

Curtis52 said:


> An injunstion is not punishment. By law an injunction can only prevent infringement.
> An enjoined party is entitled to modify the infringing devices. If there is no infringement there is no contempt.





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


Not if the enjoined party fragrantly violates a direct Court order in the process.


----------



## Curtis52

peak_reception said:


> There was no ambiguity or omission in the injunction; EchoStar simply defied it by refusing to disable DVR functionality in the Infringing Products *as ordered*.





> "However, to the extent that the language of the Injunction is not crystal-clear regarding whether it covers products that do not infringe - *which it cannot as a matter of law* - the language must be construed in EchoStar's favor as the alleged contemnor. See Abbott, 503 F.3d at 1382-83. "[C]ontempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace." Arbek Mfg., 55 F.3d at 1570."


..


----------



## peak_reception

The injunction covered Infringing Products *clearly listed*. EchoStar refused to disable DVR functionality in the Infringing Products. Whatever modifications they made have not and will not be newly adjudicated before the Contempt hearing on September 4. You conclude therefore that September 4 is a waste of time. I conclude therefore that September 4 is impending Contempt. We'll see....


----------



## Greg Bimson

> However, to the extent that the language of the Injunction is not crystal-clear regarding whether it covers products that do not infringe - *which it cannot as a matter of law* - the language must be construed in EchoStar's favor as the alleged contemnor.


What products don't infringe?


----------



## jacmyoung

Below is the text of the judgment and the injunction from the trial in the district court of the Star Brite v. Gavin case DISH referred to as doc 633:

"'composition for removal of algae, marine residue, marine vegetation, and stains on surfaces and resulting from the immersion of such surfaces in natural bodies of water, comprising from about 5 to 20 parts by weight of an acid selected from oxalic, citric, phosphoric, or mixtures thereof dissolved in a solution comprising from about 10 to 20 parts by weight of a C-1 to C-3 alkanol and 80 to 90 parts by weight of water...." On August 4, 1987, this court entered a judgment in favor of plaintiff against third-party defendant Star Brite Corporation n/k/a Ocean BioChem, Inc.,1 in the amount of $214,850 plus prejudgment interest for the willful infringement of plaintiff's patent. The court also enjoined "Star Brite Corporation, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this Judgment by personal service or otherwise, including, but not limited to, Excelda Manufacturing Company, Boat US, and E & B Marine", from further infringing plaintiff's patent "including, but without limitation, *by the manufacture, use or sale of Star Brite Instant Hull Cleaner, Star Brite Teak Brightener, Boat US Hull Cleaner, Boat US Teak Brightener, Bow and Stern Hull Cleaner, and Bow and Stern Teak Brightener.*'"

After a lengthy analysis, the district court concluded:

"the court is, however, of the opinion that the change made in defendant's formulations of the infringing products is more than colorable, and is thus sufficiently substantial so as to make decision on this matter in a summary contempt action improper. Accordingly, plaintiff's motion for the imposition of civil or criminal contempt sanctions on the defendant should be, in the opinion of this court, denied."

Now I had a very hard time locating the district court's doc 644 DISH cited in its 6/30 response, so below is the quote from DISH's response itself:

"Another district court in the Fifth Circuit has
already found that this label-over-substance argument "lacks merit." Star Brite Distributing, Inc.
v. Gavin, 746 F. Supp. 633, 644 n.3 (N.D. Miss. 1990). In Star Brite, the defendant had
"continue[d] to market the six products named in [the] court's injunction" but (as here) had
modified certain key internal features of the products. Id. at 641. As TiVo does here, the
patentee "argue[d] that the injunction should be read as requiring defendant to cease the
manufacture and sale of any product using the same brand names as were listed in the
injunction." Id. at 644 n.3. The court rejected this theory: "First, the court believes that its
intention to enjoin the production of only the infringing formulation was clear. Second,
injunctions as broad as plaintiff's proposed reading are disapproved. And third, such a reading
would not constitute a clear order of the court for purposes of a motion for contempt." Id.
(citation omitted). As in Star Brite, the Injunction issued by this Court was a "clear order" that
cannot accommodate TiVo's current, overbroad reading."

If one looks at the letter of the inunction, there should be no "ambiguity" that the infringer was prohibited from the use and sell of those 6 products specifically named by their names. Did the infringer follow the letter of the injunction? No, they altered the formulations of the products then continued to use and sell the 6 products by the same names.

In denying the patentee's motion for contempt, the courts said: "First, the court believes that its
intention to enjoin the production of *only the infringing formulation* was clear. Second,
injunctions as broad as plaintiff's proposed reading are disapproved. And third, such a reading
would not constitute a clear order of the court for purposes of a motion for contempt."

Really? Was it clear to anyone from the letter of the injunction that it intended to enjoin the production of *only the infringing formulation*? Where did it say in the injunction as such? I did not see it, can anyone point out to me where it even mentioned the word "formulation"?

The injunction enjoined the use, sell... of the 6 products by their names, how much more clearer could it be? Why was the infringer not in contempt of the injunction? There was no dispute they did not stop the use and sell of those specific products with the exactly the same names as prohibited by the letter of the injunction.


----------



## Curtis52

Greg Bimson said:


> What products don't infringe?


The modified devices that have not been found to fall within the admitted or adjudicated scope of the claims.


----------



## Curtis52

jacmyoung said:


> *by the manufacture, use or sale of Star Brite Instant Hull Cleaner, Star Brite Teak Brightener, Boat US Hull Cleaner, Boat US Teak Brightener, Bow and Stern Hull Cleaner, and Bow and Stern Teak Brightener.*'"


So there was an injunction that prohibited the manufacture, use, or sale of those six named products, the plaintiff filed for contempt because they didn't stop the sale or use of those named products but instead modified them and the judge didn't impose a contempt finding. Gee, didn't the judge throw a hissy fit because his clear order wasn't followed or could it be that he knew all along that:



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


----------



## Greg Bimson

> "Star Brite Corporation, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this Judgment by personal service or otherwise, including, but not limited to, Excelda Manufacturing Company, Boat US, and E & B Marine", from further infringing plaintiff's patent "including, but without limitation, by the manufacture, use or sale of Star Brite Instant Hull Cleaner, Star Brite Teak Brightener, Boat US Hull Cleaner, Boat US Teak Brightener, Bow and Stern Hull Cleaner, and Bow and Stern Teak Brightener.


Yet TiVo is not asking for a contempt finding regarding sales of products that may or may not infringe. So this supposed standard does not apply.


----------



## James Long

jacmyoung said:


> Are you implying that you do not have an argument of your own?


You see ... if you would spend more time reading and less time jabbing you would KNOW what my argument was. 



> So now we have another reason not to care about a prior case, because it happened 15 years ago? Of course a precedent made in another federal circuit court can be used by the one in Texas.


Can but not must. The judge CAN note anything he wants when he explains his logic. He could state wild comparisons to children who had not finished their salad "in" their plate before swimming. The Florida case does not bind him ... he does not HAVE to refer to it nor does he have to follow that judge's logic. The "Foods" case never reached a level above him.

You have been searching long and hard for an out ... an excuse for the judge to find DISH not in contempt. Judge Folsom doesn't need an excuse ... he is a qualified jurist. This case is in a realm where pieces of other cases are needed if one wants to build up an argument for precedence - since there is no exact comparison available. DISH didn't bother with the "Foods" case ... if it really is the key case precedent that will turn this whole thing around (the way that you presented it) DISH's highly paid full time legal staff would be referencing it.

As Friday approaches I hope we can get back to THIS CASE and what is happening in Tivo vs Echostar. Hopefully Tivo and DISH's reply comments will have plenty of fodder for real conversation. 



jacmyoung said:


> Let's say the Footprint 2.0 service consisted 100 Internet servers in various clients' locations, they were all ordered to stop working, the infringer uploaded a software patch to all the servers, and guess what the same Footprint 2.0 service was allowed to continue without a contempt.


It was not "the same Footprint 2.0 service" and you know it. It was a service that was SPECIFICALLY allowed under the injunction (as only the service "configured as described" fell under the injunction). Are you going to keep mis-quoting this case until people forget the facts of it and think you know what you're talking about?


----------



## Greg Bimson

Curtis52 said:


> The modified devices that have not been found to fall within the admitted or adjudicated scope of the claims.


So how many DVR's out there do fall within the admitted or adjudicated scope of the claims? Two years ago, the court said four million. When did the court reduce that number?


----------



## Curtis52

Greg Bimson said:


> Yet TiVo is not asking for a contempt finding regarding sales of products that may or may not infringe. So this supposed standard does not apply.


But there was a prima facie violation of the injunction. We don't know the exact wording of the contempt motion but I'll bet the plaintiff complained that the plain language of the injunction wasn't followed.


----------



## Curtis52

Greg Bimson said:


> So how many DVR's out there do fall within the admitted or adjudicated scope of the claims? Two years ago, the court said four million. When did the court reduce that number?


As far as I know, no one has counted them.


----------



## nobody99

jacmyoung said:


> The injunction enjoined the use, sell... of the 6 products by their names, how much more clearer could it be? Why was the infringer not in contempt of the injunction? There was no dispute they did not stop the use and sell of those specific products with the exactly the same names as prohibited by the letter of the injunction.


Where does the injunction say that they must go into customers' homes and change the formula of products that have already been sold? I don't see that part.

Again, find a case where a modified product is also already adjudicated and enjoined.


----------



## James Long

nobody99 said:


> Where does the injunction say that they must go into customers' homes and change the formula of products that have already been sold? I don't see that part.


Disabling the DVR functionality could be argued as a "change of formula" ... although it is the only "change of formula" ordered by the courts. The alleged modification was NOT what the court ordered.



> Again, find a case where a modified product is also already adjudicated and enjoined.


Declaring a product "modified" does not remove the adjudication from the product. In the cases where a "modified" product is much more than only colorably different ... different names and an obviously different construction ... it is easier to claim a product has been modified (or is a new product). Although a court still has to agree for the products not to be considered adjudicated.

In this case (Tivo vs Echostar) it is a bigger challenge. Eight products were named, those eight products remain in use and all we have is DISH's word that they have been modified. Those products REMAIN adjudicated (regardless of alleged modification) until a court declares them as modified products.

No such declaration has been made by the court in this case. The entire issue circles around adjudicated products ... both Tivo's motion for contempt and DISH's motion for clarification. DISH's excuse is that they have "modified" their products (and allegedly no longer infringe) but no court has ruled on that claim.


----------



## jacmyoung

nobody99 said:


> Where does the injunction say that they must go into customers' homes and change the formula of products that have already been sold? I don't see that part.
> 
> Again, find a case where a modified product is also already adjudicated and enjoined.


The reason no one is asking that question is no one even care if what you asked mattered.

My above case simply pointed to one thing, just because the letter of the injunction is unambiguous to you, does not mean the court cannot come up with a surprise explanation to rule you out, because the judge must follow the long held standard, and to do so he can explain his injunction the way you cannot even allow your two year old to make.

That judge never said anything about formulation in his injunction, but he explained the formulation was all he meant, what are you going to do about it?


----------



## jacmyoung

James Long said:


> You see ... if you would spend more time reading and less time jabbing you would KNOW what my argument was.
> 
> Can but not must. The judge CAN note anything he wants when he explains his logic. He could state wild comparisons to children who had not finished their salad "in" their plate before swimming. The Florida case does not bind him ... he does not HAVE to refer to it nor does he have to follow that judge's logic. The "Foods" case never reached a level above him.
> 
> You have been searching long and hard for an out ... an excuse for the judge to find DISH not in contempt. Judge Folsom doesn't need an excuse ... he is a qualified jurist. This case is in a realm where pieces of other cases are needed if one wants to build up an argument for precedence - since there is no exact comparison available. DISH didn't bother with the "Foods" case ... if it really is the key case precedent that will turn this whole thing around (the way that you presented it) DISH's highly paid full time legal staff would be referencing it.
> 
> As Friday approaches I hope we can get back to THIS CASE and what is happening in Tivo vs Echostar. Hopefully Tivo and DISH's reply comments will have plenty of fodder for real conversation.


For each supposed jabbing I did, how much do you want to bet I can find two of yours?

Who said no "can and but must"? I said many times the judge can do anything he wishes, that means he can rule against my wish too. So what? Should the possibility that I will be ruled agaisnt stop me from finding what the law is?

Did any possibility that the judge may rule agaisnt the other side stop them from arguing on their own behalf?



> It was not "the same Footprint 2.0 service" and you know it. It was a service that was SPECIFICALLY allowed under the injunction (as only the service "configured as described" fell under the injunction). Are you going to keep mis-quoting this case until people forget the facts of it and think you know what you're talking about?


In using that example I was not even arguing if that injunction was narrow than this one or not, only to respond to nobody99's question, gave him an example that an adjudicated serivce was modified and afterwards was deemed no longer infringing, that was a fact, with no relation to what the injunction said or did not say. That was the fact nobady99 was seeking, and I gave it to him.

Can you deny the fact that Footprint 2.0 service was an adjudicated service, and the infringer was able to modify such adjudicated servie in the field to take it out of the scope of the patent claims? That was exactly nobody99 challenged me to find for him.


----------



## nobody99

> Did any possibility that the judge may rule agaisnt the other side stop them from arguing on their own behalf?


Um, huh?


----------



## peak_reception

jacmyoung said:


> For each supposed jabbing I did, how much do you want to bet I can find two of yours?


"Jabbing" wasn't the right description. now, if he'd said _jabbering_...


----------



## James Long

jacmyoung said:


> For each supposed jabbing I did, how much do you want to bet I can find two of yours?


This isn't about you vs me ... this is about Tivo vs Echostar. While you may enjoy beating people in public please remember the TOPIC of the thread as you continue - for example, 10 minutes before:


jacmyoung said:


> The reason no one is asking that question is no one even care if what you asked mattered.


There are people who care about nobody99's opinions and they matter _just_ as much as yours.

If you have any more questions/tirades send me a PM ... this thread is about Tivo vs Echostar.
:backtotop



jacmyoung said:


> Should the possibility that I will be ruled agaisnt stop me from finding what the law is?


You're not finding the law ... you're finding precedence. In this example (the "Foods" case) non-binding untested precedence that was presented with an announcement. "You guys please hang on there, I just found a prior case that I believe answers the issue of contempt on the letter of the injunction, will be right back with details." That case (as you presented it) didn't.


> Can you deny the fact that Footprint 2.0 service was an adjudicated service, and the infringer was able to modify such adjudicated servie in the field to take it out of the scope of the patent claims? That was exactly nobody99 challenged me to find for him.


Are you going to continue to ignore the fact that the injunction in that case CLEARLY allowed for modification of the service by placing the injunction against the service "as configured".

The infringer was allowed to modify the service because the judge allowed it ... in advance. There is no such language or allowance in the case that one should be discussing in this thread ... Tivo vs Echostar.


----------



## kmill14

Is Joe Blow's DP-501 with new software still a DP-501? 

Did the Court order that the DP-501 have its ability to store TV data on the hard-drive disabled? 

Is Joe Blow's DP-501 able to store TV data to its hard-drive? 


jacmyoung or Curtis52, want to try to answer NO to any of the above questions for me with a meaningful explanation?


----------



## Curtis52

Here's the product an injunction said in 1990 could no longer be manufactured, sold, or used but was found not in contempt because the defendant modified it:

Link


----------



## scooper

kmill14 said:


> Is Joe Blow's DP-501 with new software still a DP-501?
> 
> Did the Court order that the DP-501 have its ability to store TV data on the hard-drive disabled?
> 
> Is Joe Blow's DP-501 able to store TV data to its hard-drive?
> 
> jacmyoung or Curtis52, want to try to answer NO to any of the above questions for me with a meaningful explanation?


Can you say that Dish could have changed the model designations on their "adjudicated, modified devices" and that would meet your criteria ? It would certainly be "prima facie proof" that the DVRs had been modified.


----------



## Greg Bimson

Curtis52 said:


> Here's the product an injunction said in 1990 could no longer be manufactured, sold, or used but was found not in contempt because the defendant modified it:


But this contempt hearing is not about a product being "manufactured, sold, or used". It isn't even about being modified, although that's what DISH/SATS wants to discuss. It is about the court ordering the functionality of adjudicated infringing product disabled, which has not been done. So this case does not apply.


----------



## kmill14

Curtis52 said:


> Here's the product an injunction said in 1990 could no longer be manufactured, sold, or used but was found not in contempt because the defendant modified it:
> 
> Link


Your link is bad. The injunction against E* has a similar order regarding "manufacturing, sales, and usage..etc", but that is not the order TiVo has brought forth to the Court.


----------



## Greg Bimson

scooper said:


> Can you say that Dish could have changed the model designations on their "adjudicated, modified devices" and that would meet your criteria ? It would certainly be "prima facie proof" that the DVRs had been modified.


Yet it wouldn't matter, because those devices have already been found infringing.


----------



## kmill14

Greg Bimson said:


> Yet it wouldn't matter, because those devices have already been found infringing.


They like to ignore that *fact.*


----------



## Curtis52

Greg Bimson said:


> But this contempt hearing is not about a product being "manufactured, sold, or used". It isn't even about being modified, although that's what DISH/SATS wants to discuss. It is about the court ordering the functionality of adjudicated infringing product disabled, which has not been done. So this case does not apply.


Prima facie is prima facie.


----------



## kmill14

Curtis52 said:


> Prima facie is prima facie.


Was the order in your case the same one discussed in this case?


----------



## nobody99

As a mind experiment, let's try a little game.

Suppose, for the sake of this game, that Judge Folsom allows DISH to introduce the fact that they've downloaded new software with regards to the "disable the DVR functionality" on already-placed DVRS.

Suppose, for the sake of this game, that Judge Folsom decides that the changes are merely colorable, and he finds that they infringe.

How would we describe said DVRS? Would they now be enjoined and adjudicated?

Uh, wait a second. They are already enjoined and adjudicated! So there's *no need for the court to determine if the changes infringe*. DISH must prove to the court that they don't.


----------



## Greg Bimson

Curtis52 said:


> Prima facie is prima facie.


Yet the court in that case was compelled to dig deeper; the infringer made modifications to the product and continued on as before. They weren't ordered to recall all infringing product from customers' homes. As you say, for a finding of contempt on an injunction against infringements, the product must infringe.

But for a finding of contempt for ignoring a court order, infringement is off the table, since those devices were already found infringing. The adjudicated infringing products didn't just "disappear".


----------



## Greg Bimson

nobody99 said:


> Uh, wait a second. They are already enjoined and adjudicated! So there's *no need for the court to determine if the changes infringe.* DISH must prove to the court that they don't.


And TiVo must have the opportunity to examine all relevant "new evidence", by having the court grant discovery.


----------



## Curtis52

Greg Bimson said:


> But for a finding of contempt for ignoring a court order, infringement is off the table, since those devices were already found infringing. The adjudicated infringing products didn't just "disappear".


A patent injunction is not punishment. A patent injunction can only prevent infringement. 


> "35 U.S.C. 283 Injunction. - Patent Laws
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent* the violation of any right secured by patent, on such terms as the court deems reasonable."


It sounds like you are thinking in terms of "violation vel non of the injunction" but you are forgetting the "nevertheless" part.


> "The issue in contempt proceedings is violation vel non of the injunction, not patent infringement. *Nevertheless*, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. "


Where there is no infringement there is no contempt. The Star Brite defendant didn't follow the clear orders on the injunction with his adjudicated, enjoined products. He modified them instead and the judge was fine with it.


----------



## kmill14

Curtis52 said:


> A patent injunction is not punishment. A patent injunction can only prevent infringement.


Oh?



> The Federal Circuit has explained that a court granting an injunction may "not properly deny the one element of such relief" that would be "necessary to make it effective." Trans-World Mfg. Corp. v. Al. Nyman & Sons, Inc., 750 F.2d 1552, 1564 (Fed. Cir. 1984). *In other words, the injunction should provide the aggrieved party with "meaningful relief," id., where the scope of injunctive relief is not limited to merely preventing "further acts of direct infringement." *Kaspar Wire Works, Inc. v. K-Jack Eng's Co., 1995 WL 662674, at *3 (Fed. Cir. 1995); see also Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 777 (Fed. Cir. 1993)





Curtis52 said:


> It sounds like you are thinking in terms of "violation vel non of the injunction" but you are forgetting the "nevertheless" part.
> 
> Where there is no infringement there is no contempt. The Star Brite defendant didn't follow the clear orders on the injunction with his adjudicated, enjoined products. He modified them instead and the judge was fine with it.


Star Brite DID follow the clear orders of the injunction. He did not sell the same product ruled to infringe.

Star Brite went back to the lab, created a modified version of the product already enjoined, and then sold it to customers.

That is not the same as this case, where *we are still addressing products that have already been sold to customers, and ruled to infringe*. There has been no motion to address E* going back to the lab, modifying their product, and then selling this new product to customers.

The motion we are dealing with regards to the DP-501 in Joe Blow's house that has been there since the trial and verdict was handed down. That particular device, ruled to infringe, was ordered to have certain functionality disabled until TiVo's patent ran out. So far, Joe Blow's DP-501 can still perform that certain functionality, and it is in contempt of the Court order. Nothing close to the same as the Star Brite case.


----------



## Greg Bimson

Curtis52 said:


> It sounds like you are thinking in terms of "violation vel non of the injunction" but you are forgetting the "nevertheless" part.
> 
> 
> 
> "The issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. "
> 
> 
> 
> Where there is no infringement there is no contempt.
Click to expand...

But you are forgetting infringement has already been proven.

Besides, the case you cite would be if TiVo sued for infringement on the 622/722 and lost because they don't infringe, then trying to get the 622/722 enjoined on the existing injunction. Once a device has been proven not to infringe, unless it is modified to infringe later, that device cannot be tried as an infringing product again.


----------



## nobody99

> Where there is no infringement there is no contempt. The Star Brite defendant didn't follow the clear orders on the injunction with his adjudicated, enjoined products. He modified them instead and the judge was fine with it.


Wow, you're interpreting the Star Brite case even more liberally than DISH did in its own defense!



> In Star Brite, the defendent had "continue[d] to market the six products named in [the] court's injunction" but (as here) had modified certain key internal features of the products. As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendent to cease the manufacture and sale of any product using the same brand names as were listed in the injunction."


The newly-manufactured modified products are not enjoined and not adjudicated. What is that so hard to understand about that? I think everyone here - even the most ardent TiVo fan - has no problem with this. If DISH put new software on *new boxes*, TiVo has to go through discovery and prove that the new software is merely colorably different in order to have the injunction apply to the *new* boxes.

But that's not the issue on September 4. The issue is simply whether or not the DVR functions have been shut down on *already-adjudicated, already-enjoined* devices.

And if, by some off-chance, TiVo should fail in its contempt motion for the 3+ million DVRS that are already in the hands of its customers, here's a taste of what the Supreme Court has said (as I mentioned yesterday).



> On the merits the contention is this: The interlocutory decree awards to Wilson, among other things, compensation by way of damages and profits, for employing the invention in any machine sold prior to the service of the injunction. *A patentee, in demanding and receiving full compensation for the wrongful use of his invention in devices made and sold by a manufacturer adopts the sales as though made by himself*


----------



## Curtis52

Greg Bimson said:


> But you are forgetting infringement has already been proven.


Infringement was already proven on Star Brite. The defendant didn't follow the clear order of the injunction. He modified the product. He was not held in contempt.

Even TiVo admits there was a modification.


> "EchoStar started downloading the modified software to its subscribers at the end of 2006 and continued the process throughout 2007, reaching millions of households. "


----------



## nobody99

Curtis52 said:


> Infringement was already proven on Star Brite. The defendant didn't follow the clear order of the injunction. He modified the product. He was not held in contempt.
> 
> Even TiVo admits there was a modification.


And it didn't change adjudication of infringement.


----------



## nobody99

Curtis52, how about this one.

http://bulk.resource.org/courts.gov/c/F3/72/72.F3d.872.94-1298.94-1342.95-1033.95-1032.95-1015.html



> On appeal, MMEI asserts that it cannot be found to be in contempt because the court's injunction should not have prevented MMEI from selling repair parts. We have held to the contrary in the previous section of this opinion. However, even if we were to accept MMEI's argument, *MMEI was not free to ignore the court's order as it did*. See GTE Sylvania, Inc. v. Consumers Union, 445 U.S. 375, 386, 100 S.Ct. 1194, 1201, 63 L.Ed.2d 467 (1980) ("*[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order.*").


----------



## Curtis0620

nobody99 said:


> Curtis52, how about this one.
> 
> http://bulk.resource.org/courts.gov/c/F3/72/72.F3d.872.94-1298.94-1342.95-1033.95-1032.95-1015.html


So I wonder how much of a fine per day DISH will have to pay?


----------



## Greg Bimson

Greg Bimson said:


> But you are forgetting infringement has already been proven.
> 
> 
> Curtis52 said:
> 
> 
> 
> Infringement was already proven on Star Brite. The defendant didn't follow the clear order of the injunction. He modified the product. He was not held in contempt.
> 
> Even TiVo admits there was a modification.
Click to expand...

The modification doesn't matter:

If DISH/SATS followed the injunction order by disabling the adjudicated infringing products, DISH/SATS would no longer be infringing. Those modified, disabled receivers would continue to be subject to the injunction. Just because the adjudicated devices may have been modified in a different manner than the court ordered does not mean they are no longer subject to the injunction.


----------



## nobody99

Curtis0620 said:


> So I wonder how much of a fine per day DISH will have to pay?


I would guess $3-$4 per month per DVR that was subject to the injunction. Just a guess.


----------



## scooper

Greg Bimson said:


> The modification doesn't matter:
> 
> If DISH/SATS followed the injunction order by disabling the adjudicated infringing products, DISH/SATS would no longer be infringing. Those modified, disabled receivers would continue to be subject to the injunction. Just because the adjudicated devices may have been modified in a different manner than the court ordered does not mean they are no longer subject to the injunction.


Well, well - Greg actually used the "INFRINGING" word the way it was meant. Modifying the DVRs to disable the function is exactly the same as modifying them to not use the infringing functions.

What needs to be done is a discovery to verify that Dish is indeed no longer infringing. And that will get ordered on 9/4 (Assuming we don't see something different later today).


----------



## kmill14

Curtis52 said:


> Infringement was already proven on Star Brite. The defendant didn't follow the clear order of the injunction. He modified the product. He was not held in contempt.


Did the injunction say he couldn't create a modified version of the product and then sell it?

TiVo isn't requesting a contempt hearing for the selling of modified products.


----------



## Curtis52

Greg Bimson said:


> Just because the adjudicated devices may have been modified in a different manner than the court ordered does not mean they are no longer subject to the injunction.


TiVo has to prove that the modified devices could be enjoined as infringements on a separate complaint. If TiVo doesn't prove it, they aren't enjoined.


> "devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings."


----------



## nobody99

Curtis52 said:


> TiVo has to prove that the modified devices could not be enjoined as infringements on a separate complaint. If TiVo doesn't prove it, they aren't enjoined.


You treading dangerously close to the mental gymnastics practiced by jacmyoung. Be careful, you are not trained in these ways.

The absolutely do not have to "prove" anything! The devices are *ALREADY FREAKIN' ENJOINED!*


----------



## kmill14

Curtis52 said:


> TiVo has to prove that the modified devices could not be enjoined as infringements on a separate complaint. If TiVo doesn't prove it, they aren't enjoined.


TiVo isn't holding a hearing on devices not enjoined as infringements, which of course you already know. You keep saying the same thing over and over and over and ove rand over without addressing the actual facts of the case. It really is quite amusing.


----------



## kmill14

scooper said:


> Well, well - Greg actually used the "INFRINGING" word the way it was meant. Modifying the DVRs to disable the function is exactly the same as modifying them to not use the infringing functions.
> 
> What needs to be done is a discovery to verify that Dish is indeed no longer infringing. And that will get ordered on 9/4 (Assuming we don't see something different later today).


There is no need for discovery to prove non-infringement, because there is no motion in front of the Court requesting it.

The motion we are dealing with regards to the DP-501 in Joe Blow's house that has been there since the trial and verdict was handed down. That particular device, *already ruled to infringe,* was ordered to have certain functionality disabled until TiVo's patent ran out. So far, Joe Blow's DP-501 can still perform that certain functionality, and it is in contempt of the Court order.


----------



## nobody99

> However, even if we were to accept MMEI's argument, MMEI was not free to ignore the court's order as it did. See GTE Sylvania, Inc. v. Consumers Union, 445 U.S. 375, 386, 100 S.Ct. 1194, 1201, 63 L.Ed.2d 467 (1980) ("[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order.").


DISH should have asked the court to rule if the new software would allow for a modification of the injunction. They might have said no, they might have held a hearing, who knows. But the simple fact is that DISH chose to completely ignore the injunction.

As the case above shows, _even if_ we accept Curtis52's leap of faith that TiVo must prove, again, infringement on an already-infringing device, until the injunction is modified, DISH simply cannot ignore it.


----------



## CuriousMark

nobody99 said:


> I would guess $3-$4 per month per DVR that was subject to the injunction. Just a guess.


I think that, plus every penny they collect from customers with those DVRs related to the customer's use of the DVR. (i.e if E* charges $5 a month for DVR service, that would also be part of the fine) The idea being to insure E* gets no revenue whatsoever from these units.


----------



## Greg Bimson

scooper said:


> Well, well - Greg actually used the "INFRINGING" word the way it was meant. Modifying the DVRs to disable the function is exactly the same as modifying them to not use the infringing functions.


Really? Where is that in the injunction?

And the big counter point to that: If they are truly the same, then that means of the adjudicated models, a disabled DVR is the same as a modified, possibly non-infringing DVR, and both are subject to the injunction. Yet there is only one course of action in the injunction that must be followed.


scooper said:


> What needs to be done is a discovery to verify that Dish is indeed no longer infringing. And that will get ordered on 9/4 (Assuming we don't see something different later today).


That is correct, if TiVo is going after contempt for violations of an injunction against infringement; TiVo would have to claim certain models infringe and are no more than colorably different that the 4 million or so units already adjudicated.


Curtis52 said:


> TiVo has to prove that the modified devices could be enjoined as infringements on a separate complaint. If TiVo doesn't prove it, they aren't enjoined.


TiVo will most likely file some kind of motion or suit later on the 622/722.

If you are talking about the 501, 508, 510, 522 and 625, since they are already enjoined from sales and subject to have functionality disabled, DISH/SATS must prove those devices no longer infringe. Of course, a DISH/SATS must also withstand a challenge by TiVo regarding DISH/SATS possible modification and continuing infringement. And if TiVo is not granted discovery, TiVo cannot mount that challenge, which makes discussing infringement at this point moot.

Meanwhile, there is this little 4 September hearing only regarding whether or not DISH complied with the disable order, and surprisingly enough, infringement is not an issue. If alleged modification or alleged ongoing infringement were going to be an issue for this contempt hearing, the court would have ordered discovery and retained a technical advisor.


----------



## nobody99

CuriousMark said:


> I think that, plus every penny they collect from customers with those DVRs related to the customer's use of the DVR. (i.e if E* charges $5 a month for DVR service, that would also be part of the fine) The idea being to insure E* gets no revenue whatsoever from these units.


Funny - I was just trying to calculate some totals. Let's assume exactly 3 million DVRs for the sake of argument.

The injunction was stayed for 563 days. Dish wouldn't have to pay punitive/treble damage for those days, but they would have to pay a reasonable license. I figure a per-DVR fee of $2 per month. That works out to $112,600,000 for all DVRS over the 563 days.

There were 25 days before the injunction was stayed, and there will have been 140 days until the hearing on 9/4. At $6 per month per DVR (treble damages), that works out to $99,000,000.

So if they are found in contempt, I think a very conservative number would be $211,600,000. This is in addition to the $110 million or so that was already awarded.

Incidentally, at $6 per month per DVR in contempt, that total goes up by $600,000 per day.

While these number seem big, from DISH's own words:



> even if EchoStar lost only half of its DVR customers, the losses would be $90 million per month to EchoStar


I can only assume that means a *profit loss* of $90 million per month, because that's all that really matters. So I can see why its worth it for them to just ignore the contempt order - they must really believe the numbers. Even at $12 million a month in treble-damaged contempt fees, they come out ahead by $78 million.

Anyway, those are the rough numbers I came up with.


----------



## Curtis52

Greg Bimson said:


> If you are talking about the 501, 508, 510, 522 and 625, since they are already enjoined from sales and subject to have functionality disabled, DISH/SATS must prove those devices no longer infringe. Of course, a DISH/SATS must also withstand a challenge by TiVo regarding DISH/SATS possible modification and continuing infringement. And if TiVo is not granted discovery, TiVo cannot mount that challenge.


Star Brite was already enjoined too. They didn't follow the clear order in the injuction and weren't found in contempt due to a modification of the product.


Greg Bimson said:


> Meanwhile, there is this little 4 September hearing only regarding whether or not DISH complied with the disable order, and surprisingly enough, infringement is not an issue. If modifications and ongoing infringement were going to be an issue for this contempt hearing, the court would have ordered discovery and retained a technical advisor.


That's why 9-4 is a waste of time.


----------



## nobody99

Curtis52 said:


> Star Brite was already enjoined too. They didn't follow the clear order in the injuction and weren't found in contempt due to a modification of the product.


In DISH's own words (you have me on ingore, don't you :lol



> In Star Brite, the defendent had "continue[d] to market the six products named in [the] court's injunction" but (as here) had modified certain key internal features of the products. As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendent to cease the manufacture and sale of any product using the same brand names as were listed in the injunction."


You see that part about "cease the manufacture and sale of any product." Each newly-minted DVR is _not_ enjoined unless it has the same software. But that's for another day. The 9/4 hearing doesn't even deal with this. The 9/4 hearing deals only with *already-manufactured* DVRs. Oh, and they are *already enjoined*.

Even DISH isn't trying to use this as an argument for 9/4.


----------



## Greg Bimson

Curtis52 said:


> Star Brite was already enjoined too. They didn't follow the clear order in the injuction and weren't found in contempt due to a modification of the product.


Again, this is for continuing sales of a product. TiVo doesn't care about the sales.

Anyone know if there was a recall of infringing products in the Star Brite case? If so, and that recall wasn't followed, that would be exactly like this case and the disablement order.

Or it would be exactly like Fisher-Price v. Safety 1st, where the recall order wasn't followed, and Safety 1st was found in contempt without adjudging again the infringment of the recalled product.


----------



## jacmyoung

Greg Bimson said:


> ...Meanwhile, there is this little 4 September hearing only regarding whether or not DISH complied with the disable order, and surprisingly enough, infringement is not an issue. If alleged modification or alleged ongoing infringement were going to be an issue for this contempt hearing, the court would have ordered discovery and retained a technical advisor.


That is an excellent point. Yes infringement or even colorable difference discussion is not on 9/4's agenda. But one must ask why, and what does it mean.

Tivo did ask for a discovery remember? For the new software infringement determination, but DISH opposed it, because DISH pointed it out rightfully such discovery was inappropriate, because the contempt proceeding would not be the correct venue to determine whether the new software is infringing or not.

So of course the motion for such discovery by Tivo was denied. But the reason for the denial was not because Tivo did not ask for it, only that Tivo was asking for a wrong discovery. Had Tivo asked for a discovery in the context to determine the colorable difference of the new software, not the infringement of the new software, the discovery would have been granted.

But what you are aruging now is, simply because there is no discovery planned on 9/4, the judge must rule in Tivo's favor. No he does not. He could tell Tivo on 9/4 I can not rule solely based on prima facie injunction, I need you Tivo to go through a discovery, not the one on the new software infringement as you asked but one on the colorable difference of the new software. Is this what you wish to do Tivo?

Now I am not saying this will be what the judge will say, just such saying is as likely as you say the judge will say DISH is in contempt of the letter of the injunction.

You simply can not assume just becasue a discovery is not on the menu, a discovery can not be asked again in order to add to the proceeding after 9/4 hearing to finalize the same proceeding. Becasue according to all other prior cases, when a *modification* came into play, the patentees were always required to prove two things: 1) violation of the letter of the injunction, 2) with clear and convicing evidence that the modifed devices still infringe on the patent. By that nature, yes a discovery has to be done.

I am not saying that is what the judge will order on 9/4, only that you can not say the judge will not order such second step on 9/4 in order to finish his job correctly.

I have to say, after reading many district judges' rulings on denial of contempt motions by patentees, such rulings were not nearly as a simple matter as other formal rulings. Those rulings of denial often take 10 or more pages to explain, with citing of many many prior cases and judges' own analyses.

By just reading those rulings myself I realized the kind of attetion to detail and thoughts the judges had to put into to render such rulings, yes even for a ruling to deny a motion. I can easily imagine a few days of work by the judge on that alone.

Did Judge Folsom appear to have any time to even do it? Tivo on 5/30 asked for a hearing in a few weeks, the earliest the judge could find was a date nearly three months later. At the time, Judge Folsom could only find time to do anything meaningful after the end of August. He simply could not stop what he was doing with his already shceduled cases between 5/30 and 8/30 to sit down and rule on a motion, any new motion. The only option he had at the time was to grant the motion, because after 8/30 he would have time to deal with the issue in detail, after he put such things on his schedule.

Again one can not simply assume that because the judge granted a motion, he will find in favor of the movant, or must give what the movant is seeking. The ruling from the 9/4 hearing, like all rulings, will not be a three-sentence "decree", rather a 10-page or more carefully written ruling that the judge will like it to be able to stand the test of appeals, regardless which side his ruling will favor.


----------



## Curtis52

Greg Bimson said:


> Again, this is for continuing sales of a product. TiVo doesn't care about the sales.


TiVo doesn't care about monthly royalties? Dish makes money every month.


Greg Bimson said:


> Anyone know if there was a recall of infringing products in the Star Brite case? If so, and that recall wasn't followed, that would be exactly like this case and the disablement order.


The location where the modification takes place is irrelevant. If there is no infringement there is no contempt.


Greg Bimson said:


> Or it would be exactly like Fisher-Price v. Safety 1st, where the recall order wasn't followed, and Safety 1st was found in contempt without adjudging again the infringment of the recalled product.


The recalled product was not modified.


----------



## nobody99

jacmyoung said:


> Tivo did ask for a discovery remember?


Are you now resorting to just making stuff up entirely? Please show where they asked for discovery.

From the June 30th status meeting:



> Chu/ responds; for purpose of injunction we don't need further discovery, right now


----------



## nobody99

Curtis52 said:


> TiVo doesn't care about monthly royalties? Dish makes money every month.


WOW! That's either COMPLETELY misunderstandig the issue, or COMPLETELY taking Greg out of context.

TIVO doesn't care about the sales of new boxes right now. Where did Greg say ANYTHING about "monthly royalties"


----------



## kmill14

Curtis52 said:


> The location where the modification takes place is irrelevant.


Sure it is. Since the Judge already told E* to disable the ones already in customers' hands, E* has no legal opportunity to do anything else to those devices other than what the Judge ordered.


----------



## kmill14

I refuse to read anymore of jacmyoung's responses that are over 250 words in length.

His most recent diatribe was 680 words long!!!


----------



## nobody99

kmill14 said:


> I refuse to read anymore of jacmyoung's responses that are over 250 words in length.
> 
> His most recent diatribe was 680 words long!!!


All of it based on the false premise that TiVo wanted, and was denied, discovery for the new software :lol:


----------



## jacmyoung

Curtis52 said:


> TiVo doesn't care about monthly royalties? Dish makes money every month.
> The location where the modification takes place is irrelevant. If there is no infringement there is no contempt.
> The recalled product was not modified.


Even if location is relevant (which it is not), the point still is, in that case the infringer had "clearly" violated the letter of the injunction, just like in the MTC case I cited earlier. But a clear violation of the letter of the injunction was not enough to find a contempt, regardless what kind of relevance you want to insist on those cases.

And in both cases, yes both movants asked for contempt on prima facie of the injunction, no more no less, like in this case.

The bottomline is, in the above cases, violation of the letter of the injunction was not good enough to render a contempt.

And a violation of prima facie injunction, no more, no less, is precisely what the other side and Tivo advocating right now.


----------



## jacmyoung

kmill14 said:


> I refuse to read anymore of jacmyoung's responses that are over 250 words in length.
> 
> His most recent diatribe was 680 words long!!!


I did not write it for you or nobody99 to read. I was speaking to Greg.

Nobody99 had in one time put me on ignore, and I don't mind both of you do it again, if you are bothered by me making a long post.


----------



## jacmyoung

nobody99 said:


> All of it based on the false premise that TiVo wanted, and was denied, discovery for the new software :lol:


Please go back to read the brief by Tivo before the 5/30 meeting and the transcript for the 5/30 meeting before you come back with the same :lol:


----------



## kmill14

jacmyoung said:


> Even if location is relevant (which it is not), the point still is, in that case the infringer had "clearly" violated the letter of the injunction, just like in the MTC case I cited earlier. But a clear violation of the letter of the injunction was not enough to find a contempt, regardless what kind of relevance you want to insist on those cases.
> 
> And in both cases, yes both movants asked for contempt on prima facie of the injunction, no more no less, like in this case.
> 
> The bottomline is, in the above cases, violation of the letter of the injunction was not good enough to render a contempt.


The MTC injunction specifically spelled out *the end result *of the order you reference, and the defendant achieved those result.

Has E* achieved the end result spelled out in this injunction?

Unless you can tell me Joe Blow's DP-501 no longer stores TV data to the hard-drive, the answer can only be NO.


----------



## nobody99

jacmyoung said:


> I did not write it for you or nobody99 to read anyway.


Wow. Just, wow.


----------



## nobody99

jacmyoung said:


> Please go back to read the brief by Tivo before the 5/30 meeting and the transcript for the 5/30 meeting before you come back with the same :lol:


You mean the part I already quoted for you?



> Chu/ responds; for purpose of injunction we don't need further discovery, right now


Morgan Chu is TiVo's lawyer, by the way.


----------



## kmill14

jacmyoung said:


> Please go back to read the brief by Tivo before the 5/30 meeting and the transcript for the 5/30 meeting before you come back with the same :lol:


Ok jacmyoung, I did.



> Mr. Chu: For the question of whether there is a violation on its face, we don't need any discovery because the only thing pertinent is the injunction itself, the terms of the injunction, and whether they in fact violated it or not. Did they disable the DVR functionality?


----------



## kmill14

No doubt jacmyoung will refuse to address being wrong again and disappear into his hole for another couple hours until he can find that next (and first) case that clearly spells out E*'s freedom to disregard a court order.


----------



## kmill14

Oh, isn't THIS interesting from the 5/30 hearing:



> Mr. Mcelhinny: The cases are quite clear that the correct procedure is that Tivo *files a new suit accusing the next product of infringement*. That's the way the questions about whether products that have not previously been before the court are resolved.


Does E* really think the Judge is this stupid? Obviously jacmyoung and Curtis52 think so, because they just don't know any better, but for an actual big money lawyer to go down this road is utterly amazing.

E*: Your Honor, we are not in contempt because TiVo has not filed a new trial on the products "that have not previously been before the Court".

The Court: What about the products I already ruled on?

E*: They no longer exist, Your Honor.

The Court: They disappeared?

E*: In a manner of speaking. We put new software in those products, and, well, now they are NEW products.

The Court: Indeed. So the DP-501 in Joe Blow's house was taken away and was replaced with a new product?

E*: No sir. It is still there, but its NEW.


----------



## jacmyoung

nobody99 said:


> You mean the part I already quoted for you?
> 
> Morgan Chu is TiVo's lawyer, by the way.


After being denied the discovery request on the new software infringement. Again go back and read it all, not just one sentence.

You have done so so many times, not reading the whole thing, and I have pointed out several times before why your case law was cited wrong by not reading them carefully, including your predictions in the past that turned out wrong before things could even be predicted.


----------



## jacmyoung

kmill14 said:


> Oh, isn't THIS interesting from the 5/30 hearing:
> 
> Does E* really think the Judge is this stupid? Obviously jacmyoung and Curtis52 think so, because they just don't know any better, but for an actual big money lawyer to go down this road is utterly amazing.
> 
> E*: Your Honor, we are not in contempt because TiVo has not filed a new trial on the products "that have not previously been before the Court".
> 
> The Court: What about the products I already ruled on?
> 
> E*: They no longer exist, Your Honor.
> 
> The Court: They disappeared?
> 
> E*: In a manner of speaking. We put new software in those products, and, well, now they are NEW products.
> 
> The Court: Indeed. So the DP-501 in Joe Blow's house was taken away and was replaced with a new product?
> 
> E*: No sir. It is still there, but its NEW.


He was absolutely correct that if Tivo wanted to argue on infringement on a non-adjudicated item they would have to file a new lawsuit, and the judge agreed, and denied Tivo's discovery on the new software infringement request.


----------



## Curtis52

"Specifically, TiVo requests a hearing at the earliest possible date to determine the following: (1) whether Defendant EchoStar Communications Corporation should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs; and *(2)* with respect to EchoStar's modified software, whether TiVo should be allowed permission to serve
limited *discovery* to obtain additional technical information before bringing a motion for an order to show cause why EchoStar is not in contempt *for the continuing use of the Infringing Products, changed only by downloading modified software.* 
The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The *second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time. *"


----------



## Greg Bimson

TiVo did ask for discovery on the new software while filing the motion for contempt for prima facie violations of the injunction. It was later that Morgan Chu agreed that there should be no discovery on the new software.


kmill14 said:


> I refuse to read anymore of jacmyoung's responses that are over 250 words in length.
> 
> His most recent diatribe was 680 words long!!!


Yes, but this one was pretty good:


jacmyoung said:


> He could tell Tivo on 9/4 I can not rule solely based on prima facie injunction, I need you Tivo to go through a discovery, not the one on the new software infringement as you asked but one on the colorable difference of the new software. Is this what you wish to do Tivo?
> 
> Now I am not saying this will be what the judge will say, just such saying is as likely as you say the judge will say DISH is in contempt of the letter of the injunction.


I wouldn't necessarily say that it is "as likely", since most observers give TiVo at least a 75 percent chance of winning the contempt hearing.

The big problem here for DISH/SATS is that they have to answer direct questions regarding the adjudicated devices. Judge Folsom will want to know where all of the adjudicated devices are, and although I've asked Curtis52 at least four times about the status of the adjudicated devices, I've yet to get an answer. However, unlike Curtis52 here, DISH/SATS must answer that question in court. It is likely DISH/SATS will state they've modified those adjudicated infringing devices so that they no longer infringe, so they've determined there are no longer any adjudicated devices. That is a slap-in-the-face to the court.


----------



## kmill14

jacmyoung said:


> After being denied the discovery request on the new software infringement. Again go back and read it all, not just one sentence.
> 
> You have done so so many times, not reading the whole thing, and I have pointed out several times before why your case law was cited wrong by not reading them carefully, including your predictions in the past that turned out wrong before things could even be predicted.


Obviously its YOU who hasn't read it. You really are quite rude.

http://southernme.com/DAVY_v_GOLIATH/Tivo v Echostar/TIVO v Echostar 5-30-08transcript.pdf

Page 4 leading into the top of page 5 is the first mention of discovery, and as quoted by both of us, Mr. Chu said he doesn't need it for the hearing we will have on 9/4.

I must say, you are completely classless and immature.


----------



## Curtis52

Greg Bimson said:


> It is likely DISH/SATS will state they've modified those adjudicated infringing devices so that they no longer infringe, so they've determined there are no longer any adjudicated devices. That is a slap-in-the-face to the court.


The judge in the Star Brite case didn't seem to be offended at all. He didn't find contempt.


----------



## kmill14

Greg Bimson said:


> TiVo did ask for discovery on the new software while filing the motion for contempt for prima facie violations of the injunction. It was later that Morgan Chu agreed that there should be no discovery on the new software.


Greg,

Mr. Chu did NOT ask for discovery regarding the prima facie violation. Read the transcript.

http://southernme.com/DAVY_v_GOLIATH/Tivo v Echostar/TIVO v Echostar 5-30-08transcript.pdf

Page 5, 1st paragraph:



> Mr. Chu: For the question of whether there is a violation on its face, we don't need any discovery because the only thing pertinent is the injunction itself, the terms of the injunction, and whether they in fact violated it or not. Did they disable the DVR functionality?


Page 5, 2nd paragraph:



> (Mr. Chu continued): The second part of the injunction question is this: *IF* the Court somehow decided that that was not a violation of the injunction, *then* we would need some limited discovery...


----------



## kmill14

Curtis52 said:


> The judge in the Star Brite case didn't seem to be offended at all. He didn't find contempt.


Star Brite case is irrelevant.

Star Brite DID follow the clear orders of the injunction. They did not sell the same product ruled to infringe.

Star Brite went back to the lab, created a modified version of the product already enjoined, and then sold it to customers.

That is not the same as this case, where we are still addressing products that have already been sold to customers, and ruled to infringe. There has been no motion to address E* going back to the lab, modifying their product, and then selling this new product to customers.

The motion we are dealing with regards to the DP-501 in Joe Blow's house that has been there since the trial and verdict was handed down. That particular device, ruled to infringe, was ordered to have certain functionality disabled until TiVo's patent ran out. So far, Joe Blow's DP-501 can still perform that certain functionality, and it is in contempt of the Court order. Nothing close to the same as the Star Brite case.


----------



## jacmyoung

Greg Bimson said:


> TiVo did ask for discovery on the new software while filing the motion for contempt for prima facie violations of the injunction. It was later that Morgan Chu agreed that there should be no discovery on the new software....


The reason Mr. Chu did so was because DISH objected to it, both in its written response and during the 5/30 meeting, as just quoted by Kmill14.


----------



## jacmyoung

Greg Bimson said:


> ...The big problem here for DISH/SATS is that they have to answer direct questions regarding the adjudicated devices. Judge Folsom will want to know where all of the adjudicated devices are, and although I've asked Curtis52 at least four times about the status of the adjudicated devices, I've yet to get an answer. However, unlike Curtis52 here, DISH/SATS must answer that question in court. It is likely DISH/SATS will state they've modified those adjudicated infringing devices so that they no longer infringe, so they've determined there are no longer any adjudicated devices. That is a slap-in-the-face to the court.


Why is there a problem? Is there anyone who has trouble knowing where they are right now? I have one myself doing the DVR dance just fine.

As long as my current 625 is not infringing on Tivo's patent anymore, DISH has nothing to fear, one needs no fear of acting in a legal manor. An injunction can not prohibit an act, any act, that is legal, no matter what it says in there.


----------



## Curtis52

Greg Bimson said:


> TiVo did ask for discovery on the new software while filing the motion for contempt for prima facie violations of the injunction. It was later that Morgan Chu agreed that there should be no discovery on the new software.Yes, but this one was pretty good:I wouldn't necessarily say that it is "as likely", since most observers give TiVo at least a 75 percent chance of winning the contempt hearing.


The Citi analyst that predicted a 75% chance of a TiVo win hung his hat on the judge only allowing 30 minutes as an indication of how angry the judge was and the way the judge would rule. He mentioned it several times and compared it to the 11 hours each side got in the trial. Apparently, he didn't know that 30 minutes is exactly what Dish asked for.



> 10:14 ct/ look at Paice order for roadmap and do scheduling order; within 14 days; what else needs attention; ct/ hearing on 9/4th how much time
> 10:14 McElhinny/ 30 mins;
> 10:15 ct/ 30 mins each side for hrg set 9/4th;


----------



## kmill14

jacmyoung said:


> The reason Mr. Chu did so was because DISH objected to it, both in its written response and during the 5/30 meeting, as just quoted by Kmill14.


Wrong again...par for the course with you. But I shouldn't be surprised. Its pointless to even have a conversation with you when you can't actually read and comprehend what is in front of you.


----------



## Curtis52

jacmyoung said:


> The reason Mr. Chu did so was because DISH objected to it, both in its written response and during the 5/30 meeting, as just quoted by Kmill14.


The judge denied TiVo's discovery request in his 6-05 order.



> "The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time. "


----------



## kmill14

Curtis52 said:


> The Citi analyst that predicted a 75% chance of a TiVo win hung his hat on the judge only allowing 30 minutes as an indication of how angry the judge was and the way the judge would rule. He mentioned it several times and compared it to the 11 hours each side got in the trial. *Apparently, he didn't know that 30 minutes is exactly what Dish asked for*.


Wrong again. TiVo suggested 30 minutes first, and then 2-3 pages later after E* was done complaining about something else, there was this transgression:



> Mr Chu: We actually think we will not need witnesses. We think that a total of thirty minutes would be sufficient.
> 
> The Court: Mr. Mcelhinny?
> 
> Mr. Mcelhinny: I am sorry, your honor, I have two issues now....
> 
> .....
> .....
> 
> The Court: What else needs attention now? I don't know if we ever got to your reply, response, Mr. Mcelhinny, on the initial injunction hearing the 4th of September that was suggested. Thirty minutes a side, is that enough? Do you want more time, less time?
> 
> Mr. Mcelhinny: We will take thirt minutes, and if we need it, we will ask for more, your honor.


----------



## kmill14

Curtis52 said:


> The judge denied TiVo's discovery request in his 6-05 order.


TiVo didn't request discovery for this hearing.


----------



## jacmyoung

kmill14 said:


> TiVo didn't request discovery for this hearing.


If so then why would the judge deny it? Was the judge imagining something?


----------



## kmill14

jacmyoung said:


> If so then why would the judge deny it? Was the judge imagining something?


Read the transcript before trying to act smart.


----------



## Curtis0620

Is it September yet?


----------



## jacmyoung

kmill14 said:


> Read the transcript before trying to act smart.


Why not read the 6/5 order of denial too? Did you also read Tivo's briefing prepared for the 5/30 meeting? Go read that one too, you will then understand why the 6/5 order denied it.


----------



## jacmyoung

Curtis52 said:


> The Citi analyst that predicted a 75% chance of a TiVo win hung his hat on the judge only allowing 30 minutes as an indication of how angry the judge was and the way the judge would rule. He mentioned it several times and compared it to the 11 hours each side got in the trial. Apparently, he didn't know that 30 minutes is exactly what Dish asked for.


Regardless who asked for only 30 minutes, the prima facie ruling of course will not take long, it will take just about the same amount of time to decide DISH is in contempt, prima facie, as to decide DISH is not in contempt, prima facie.


----------



## Curtis52

The Citi analyst also didn't know that the 9-4 hearing was just on the legal question:


> "We could certainly be wrong in our assessment of what Judge Folsom will do in
> September, 2008.* That is, he may agree with EchoStar that the new software
> work-around does represent more than a 'colorable difference' from the 389
> patent.* But we doubt it. After all, EchoStar will only have 30 minutes on
> September 4, 2008 to make its case. That sort of abbreviate timeframe
> suggests Judge Folsom isn't in the mood to analyze the legal nuances between
> parsing data and new fangled software algorithms. If we're right, the next
> question for investors is what might EchoStar do next-"


----------



## kmill14

jacmyoung said:


> Why not read the 6/5 order of denial too?


Because a word-for-word account of what was actually said seems to be more accurate, but I am sure you will find a way to disagree. Whatever. You're a waste of time.


----------



## Curtis52

Dish has withdrawn the interpretation motion. They are going to replace the DVRs with new DVRs. This is about repair of the 192K.


----------



## jacmyoung

kmill14 said:


> Because a word-for-word account of what was actually said seems to be more accurate, but I am sure you will find a way to disagree. Whatever. You're a waste of time.


Mr. Chu of course did not say much about the discovery during the 5/30 meeting, because after DISH's written response to Tivo's briefing for the 5/30 meeting, in it DISH pointed out the legal error Mr. Chu made in his briefing by seeking a discovery of the new software infringement issue during a contempt proceeding, Mr. Chu had nothing to say. Why you expect him to scream about a mistake he made earlier?


----------



## Greg Bimson

I think we're having a comedy of errors:


kmill14 said:


> Greg,
> 
> Mr. Chu did NOT ask for discovery regarding the prima facie violation. Read the transcript.





> Chu: There is an issue that's separate from what we were just discussing. They have stated that they've installed new boxes, or changed boxes, or swapped out boxes. So we are talking about something different from the installed base and the particular model numbers against which the injunction was specifically ordered. And there is the question of whether those additional boxes are colorably different and within the scope of the injunction.
> 
> *And our suggestion would be that we take discovery related to that on a parallel track in time, but I don't anticipate that that will be the subject of the injunction hearing we are discussing right now, that we could take that discovery while we are taking the damages' discovery.*
> 
> Judge Folsom: Well, and what do you think you need with this suggestion about deposing anyone that might sign a declaration or an expert report? Is that sufficient?
> 
> Chu: Well, it depends on what we learn. So we are talking about I will call them new boxes as this category that is different from the --
> 
> Judge Folsom: But you don't need any discovery in that connection for the hearing that we have set for the 4th of September?
> 
> Chu: Right. The one that's focused on whether they violate the injunction on its face.
> 
> Judge Folsom: Well, what would be wrong with them simply leaving in place no discovery until you know more about that subject and you request leave of court?
> 
> Chu: The reason is this, Your Honor. We do know, because they have stated it, that they are claiming that certain boxes, for example, that have been installed since the end of the trial are not infringing for one reason or another. And we have a disagreement on whether they are within the scope of the injunction or not, and therefore at some point in time we are going to need discovery on it. And rather than have that delayed in terms of beginning the discovery until some date in September, we think we ought to proceed with obtaining that limited discovery now.
> 
> Judge Folsom: My question is, in what for, how much?
> 
> Chu: I think it's the basic technical documentation. I think it would also be probably a very small two depositions, maybe three, for people to explain the basic documentation their grounds for claiming that it's outside the scope of the injunction.
> 
> Judge Folsom: Is this going to be addressed in your initial motion so we have more background in this regard?
> 
> Chu: No, Your Honor, because I am separating the installed base. We think we can address that in a very slim, pinpointed fashion, as opposed to their new arguments with these other boxes.
> 
> Judge Folsom: Mr. McElhinny, what's your response to this topic?
> 
> McElhinny: Your Honor, this is exactly what we don't want. This is we would like to file contempt motion one, and while we are doing that, we would like to do discovery, that there is absolutely no legal right for at all, to see if we have contempt motion number two. The facts are completely different. I mean, the accurate facts are set out in the letters. They are not set out in what was just told to the court.
> 
> We are dealing with redesigned software which, as Your Honor knows, was downloaded to the boxes, and TiVo before, in our lifetime, TiVo intends to challenge that software; and what they are trying to do is start that case now by taking discovery without ever filing a motion on it or doing anything. That's what the second motion is all about. And our position is that they shouldn't be able to do it at all.
> 
> Judge Folsom: Very well. I will look at the parties' correspondence and give some guidance on that issue. Now, so you are essentially needing no discovery on the initial motion?
> 
> Chu: Yes.
> 
> Judge Folsom: I am assuming you are in agreement? Mr. McElhinny, you don't need any discovery?
> 
> McElhinny: What we have agreed to, Your Honor, if we see their motion and there is something in there that we need discovery, we will come to Your Honor and ask for it.


So you are correct that Morgan Chu did not ask for discovery relating to the prima facie violation. However, I am also correct that Mr. Chu wanted discovery on the new software while they were taking discovery on the damages.


jacmyoung said:


> Why is there a problem? Is there anyone who has trouble knowing where they are right now? I have one myself doing the DVR dance just fine.
> 
> As long as my current 625 is not infringing on Tivo's patent anymore, DISH has nothing to fear, one needs no fear of acting in a legal manor. An injunction can not prohibit an act, any act, that is legal, no matter what it says in there.


But therein lies the problem. Your DP-625 DVR is considered an adjudicated infringing device, and it is the subject of a court order. Just because it may or may not infringe now does not change the fact that it infringed and will be subject to the injunction until a) the injunction expires, b) the injunction is modified, or c) the device is not subject to contempt for some reason (like the alleged modification).

Meanwhile, there is this order that states to disable the adjudicated infringing products...

And if there aren't any adjudicated infringing products according to DISH/SATS, they'd better have a darn good reason why there aren't any, and I simply don't believe those receivers have been modified is a defense.


----------



## jacmyoung

Curtis52 said:


> Dish has withdrawn the interpretation motion. They are going to replace the DVRs with new DVRs. This is about repair of the 192K.


Not suprising at all, I said earlier why even bother when DISH had been already replacing bad DVRs with all new models anyway? DISH can't win on this one and even if they can it is not worth the time and money.


----------



## Greg Bimson

Curtis52 said:


> Dish has withdrawn the interpretation motion. They are going to replace the DVRs with new DVRs. This is about repair of the 192K.


So then the only issues for the 4 September hearing are now the prima facie violations of the injunction, as well as the damages calculation?

Replace them with new DVR's, huh?


----------



## jacmyoung

Greg Bimson said:


> I think we're having a comedy of errors:So you are correct that Morgan Chu did not ask for discovery relating to the prima facie violation. However, I am also correct that Mr. Chu wanted discovery on the new software while they were taking discovery on the damages.But therein lies the problem. ...


Mr. Chu of course changed his version during the meeting. If you read his brief prepared for the 5/30 meeting, the discovery was covered in the contempt topic, not the damages topic. He knew after DISH objected in DISH's response, he had no standing to ask for such discovery, so he changed to the damages issue in the meeting, but of course it was still wrong, and properly denied.


----------



## kmill14

Isn't THIS interesting from E*'s own filing today:

"The narrow purpose of EchoStar's request to this Court is merely to resume, without fear of violating the Injunction, exchanging previously-repaired, but not new, same-modelnumber boxes *with Unenjoined Units *needing repair"


----------



## jacmyoung

Greg Bimson said:


> ...But therein lies the problem. Your DP-625 DVR is considered an adjudicated infringing device, and it is the subject of a court order. Just because it may or may not infringe now does not change the fact that it infringed and will be subject to the injunction until a) the injunction expires, b) the injunction is modified, or c) the device is not subject to contempt for some reason (like the alleged modification)....


Bingo, on c), the court has always said it has to be answered during the contempt proceeding before rendering a contempt ruling, regardless what kind of contempt proceeding you want to call it, there is only one kind of contempt proceeding, a contempt proceeding on violation of an *injunction on infringement*.


----------



## kmill14

jacmyoung said:


> Bingo, on c), the court has always said it has to be answered during the contempt proceeding before rendering a contempt ruling, regardless what kind of contempt proceeding you want to call it, there is only one kind of contempt proceeding, a contempt proceeding on violation of an *injunction on infringement*.


Infringement has already been established on your DP-625. Next.


----------



## Greg Bimson

jacmyoung said:


> Bingo, on c), the court has always said it has to be answered during the contempt proceeding before rendering a contempt ruling, regardless what kind of contempt proceeding you want to call it, there is only one kind of contempt proceeding, a contempt proceeding on violation of an injunction on infringement.


But I've already proven there is another kind of contempt proceeding, Fisher-Price v. Safety 1st, and the issue of "ongoing infringement" was never brought up.


----------



## kmill14

Greg Bimson said:


> But I've already proven there is another kind of contempt proceeding, Fisher-Price v. Safety 1st, and the issue of "ongoing infringement" was never brought up.


And of course there is this as pointed out by nobody99 (which jacmyoung and Curtis52 refuse to acknowledge)



> The Federal Circuit has explained that a court granting an injunction may "not properly deny the one element of such relief" that would be "necessary to make it effective." Trans-World Mfg. Corp. v. Al. Nyman & Sons, Inc., 750 F.2d 1552, 1564 (Fed. Cir. 1984). *In other words, the injunction should provide the aggrieved party with "meaningful relief," id., where the scope of injunctive relief is not limited to merely preventing "further acts of direct infringement."* Kaspar Wire Works, Inc. v. K-Jack Eng's Co., 1995 WL 662674, at *3 (Fed. Cir. 1995); see also Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 777 (Fed. Cir. 1993)


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## scooper

Does anybody have the filings due for today ?


----------



## jacmyoung

Greg Bimson said:


> But I've already proven there is another kind of contempt proceeding, Fisher-Price v. Safety 1st, and the issue of "ongoing infringement" was never brought up.


No you did not, the same kind of contempt proceeding, it was a contempt because *no modification* had occurred there, the infringer *admitted* no modification, and violation of the letter of the injunction, piece cake. Again no need to discuss on-going infringement, well actually on-going infringement was discussed and was a given after the infringer admitted they did not make any modification, and they also admitted they violated the letter of the injunction.


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## jacmyoung

kmill14 said:


> Infringement has already been established on your DP-625. Next.


Did you realize I was talking to Greg on c)?


----------



## jacmyoung

scooper said:


> Does anybody have the filings due for today ?


Seemed to me DISH's response is already available, but Tivo's could be delayed if they had to strike out confidential items like the 6/30 DISH response.


----------



## kmill14

jacmyoung said:


> Did you realize I was talking to Greg on c)?


You said there is only one type of contempt hearing (which is false), and it has to be based on "violation of injunction by infringement". Your words.

Well, infringement has already been established on your DP-625.

Also, any modification of your DP-625 is irrelevant if the DVR is still able to write TV-data to the hard-drive. That is the Court's clear order. You don't think the Judge will defend his own order, and that the Appeals Court will also?



> ...*even if we were to accept MMEI's argument, MMEI was not free to ignore the court's order as it did. *See GTE Sylvania, Inc. v. Consumers Union, 445 U.S. 375, 386, 100 S.Ct. 1194, 1201, 63 L.Ed.2d 467 (1980) *("[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order."). *


OOPS.


----------



## jacmyoung

kmill14 said:


> You said there is only one type of contempt hearing (which is false), and it has to be based on "violation of injunction by infringement". Your words.
> 
> Well, infringement has already been established on your DP-625.
> 
> Also, any modification of your DP-625 is irrelevant if the DVR is still able to write TV-data to the hard-drive. That is the Court's clear order. You don't think the Judge will defend his own order, and that the Appeals Court will also?
> 
> OOPS.


Greg said he had proof there were more than one kind of contempt proceeding in patent case, I pointed out his example was no different than all the others, so until you can find one that is different than the others, there is still only one kind of contempt proceeding on violation of injunction on infringement.

You can of course start to find an example of another kind of contempt proceeding. This case can not be used as an example though, the one and only cannot be *an example* of the same one and only.


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## nobody99

jacmyoung said:


> This case can not be used as an example though, the one and only cannot be an example of the same one and only.


You can't use this case! You can't use this case! Mommy! Mommy!

I'm taking my ball and going home!! Waaaaah.

:hurah: :hurah: :hurah: :hurah:


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## kmill14

You seem to be confused. Contempt proceedings are based on the defendant disobeying a Court's order to do or not do something.

Most injunctions regarding patent infringement are based on orders prohibiting the enjoined party from doing something...specifically, selling, marketing, using, etc an device ruled to infringe on the claims of a patent.

However, there are some injunctions that not only prohibit actions, but also require certain actions to be taken place. You yourself brought up a case requiring the defendant to ultimately be at a certain level of ______ (forget what), even though the did not perform the intermediate actions the Court asked them to do to get to that level of ______. The point being, they were ask to do a specific thing and they did it.

Greg introduced another case where the defendant was not only ordered to NOT do something, but also ordered to DO something (retrieve items in stores).

Thats two cases where a defendant was asked to DO something specific. 1 case it was completed, and no contempt. Another case they didn't complete it...contempt was issued.

E* has also been asked to DO something specific. Disable the ability of your DP-625 from writing TV data to its hard-drive. So far, that order has not been carried out. As pointed out above:



> ("[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order.").


So E* does not get to decide they don't need to disable your DP-625 from storing TV data on the hard-drive. That is up to the Court, and they did not ask the Court's permission. That is a contemptable action.


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## kmill14

Oh, another case requiring a specific action:

Footprint 2.0...the defendant was ordered to disable the service as described at the time of the trial. They did that....so no contempt.

However, E* was not given a clause about disabling the ability to write TV data to the hard-drive "as described at the time of the trial". Just plain and simply disable it for the 4million DVRS listed in the injunction. Don't do it, get held in contempt


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## phrelin

kmill14 said:


> Oh, another case requiring a specific action:
> 
> Footprint 2.0...the defendant was ordered to disable the service as described at the time of the trial. They did that....so no contempt.
> 
> However, E* was not given a clause about disabling the ability to write TV data to the hard-drive "as described at the time of the trial". Just plain and simply disable it for the 4million DVRS listed in the injunction. Don't do it, get held in contempt


It's not that simple in this case. The appellate court stayed the injunction during the appeal, then didn't like the hardware decision and sent it back. With only the software jury decision upheld, Dish "disabled" the old software by removing it while the injunction was stayed. Unless or until the hardware issue is reconsidered, IMHO the hardware functionality is irrelevant and Dish complied with the upheld spirit of the injunction.


----------



## scooper

phrelin said:


> It's not that simple in this case. The appellate court stayed the injunction during the appeal, then didn't like the hardware decision and sent it back. With only the software jury decision upheld, Dish "disabled" the old software by removing it while the injunction was stayed. Unless or until the hardware issue is reconsidered, IMHO the hardware functionality is irrelevant and Dish complied with the upheld spirit of the injunction.


Welcome to the dark side !  THat's what most of us Dish fans have been arguing until we're blue in the face...


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## nobody99

phrelin said:


> It's not that simple in this case. The appellate court stayed the injunction during the appeal, then didn't like the hardware decision and sent it back. With only the software jury decision upheld, Dish "disabled" the old software by removing it while the injunction was stayed. Unless or until the hardware issue is reconsidered, IMHO the hardware functionality is irrelevant and Dish complied with the upheld spirit of the injunction.


That is definitely a good point.

However, DISH should have made a motion to modify the injunction based on the appeals court decision. They didn't, and as I've pointed out, it doesn't matter - it's still contempt.


----------



## jacmyoung

scooper said:


> Welcome to the dark side !  THat's what most of us Dish fans have been arguing until we're blue in the face...


And guess what, even if the hardware verdicts were also upheld, there would not be different, because the new software as DISH described also no longer infringes on Tivo's hardware patent claims.


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## scooper

I'm willing to concede it will take additional discovery to verify that the S/W swap happened. I also think Dish/ SATS is NOT in contempt if this is proven.


----------



## jacmyoung

scooper said:


> Welcome to the dark side !  THat's what most of us Dish fans have been arguing until we're blue in the face...


And guess what, even if the hardware verdicts were also upheld, there would not be different, because the new software as DISH described also no longer infringes on Tivo's hardware patent claims.

If an injunction is too broad, the defendant can appeal and have it modified, but it is not necessary that the infringer must appeal to have it modified in order for the court to enforce an injunction properly and conform to the standards.

The appeals court has long held that the district courts have wide latitude to frame their injunctions, even if they may be too broad. The reasons they are allowed to do so are two-fold:

1) Sometimes broad injunctions are necessary to cover all bases.
2) The defendants always had the assurance that if a contempt charge should arise later, a broad injunction will be narrowed down to the proper scope before rendering a contempt.

If the higher court could not guarantee 2), then the higher court would not have given the lower courts wide latitude to frame injunctions.

What that means is while this injunction may be broadly framed to cover not only the infringing acts, but possibly also the non-infringing acts by the Infringing Products under the new software, during a contempt proceeding, the infringer has the guarantee from the higher court that as long as the infringer's acts do not infringe on the patent, they cannot be in contempt. Because a broad injunction must be narrowed down in contempt proceeding.

Case after case when appeals court overturned contempt rulings by the lower courts, almost all of them were saying to the public that they were fulfilling their conmmitment to that guarantee.


----------



## phrelin

nobody99 said:


> That is definitely a good point.
> 
> However, DISH should have made a motion to modify the injunction based on the appeals court decision. They didn't, and as I've pointed out, it doesn't matter - it's still contempt.


"Contempt" is usually applied where the judge feels some sense of willful disobedience or disrespect. He may feel this has occurred but I don't see it in light of the appeal results. One thing for certain, there is case law that could support any direction he might take.


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## jacmyoung

phrelin said:


> "Contempt" is usually applied where the judge feels some sense of willful disobedience or disrespect. He may feel this has occurred but I don't see it in light of the appeal results. One thing for certain, there is case law that could support any direction he might take.


Except there is not one case found to support the other side, not yet, the so called prima facie contempt of injunction on infringement, when modifications were involved.

We have proven each of the other side's argument wrong so far with specific case law:

1) If the letter of the injunction can be interpreted in different ways, the defendant gets the benefit, even in cases where the defendants' interpretations made less sense than the plaintiffs'.

2) An adjudicated device/product/service/method can be modified.

3) There is no requirement that a judgment/injunction must be modified in writting to reflect all the changes occurred after the issurance of such judgment/injunction, or else...

For example, the *final* judgment in this case contains two very imporant findings that have been already overturned, but the *final* judgment/injunction still stands as is.

The two things are 1) willful infringement, and 2) infringement on 7 other Tivo's claims.

The judge himself later overturned the willful infringement judgment after he issued the judgment, did he modify the judgment? No he did not.

The appeals court overturned 7 out of 9 infringement verdicts, and now only two of the Tivo's 9 patent claims are still infringed by the old DISH software.

Yet the *final* judgment still says DISH willfully infringed on a total of 9 claims. No judges, from district court nor the appeals court, bothered to correct them.

It is assumed all parties understand changes after the *final* judgment was issued, because they are all well documented. There is no need to always go back to have to modify the judgment, which the injunction is a very part of, in order to make sure the judge do the right thing according to the current status of the affairs.

Therefore if the current status of affairs is that DISH no longer infringe on this Tivo's patent, there is no requirement that the judge must go back to his injunction to insist DISH must follow precisely the order so the court can feel it is being respected.


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## nobody99

jacmyoung said:


> Except there is not one case found to support the other side, not yet, the so called prima facie contempt of injunction on infringement, when modifications were involved.


Umm, jacmyoung, he's on your side, and has the same position as you. Please don't argue with your allies :nono2:


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## Greg Bimson

jacmyoung said:


> Except there is not one case found to support the other side, not yet, the so called prima facie contempt of injunction on infringement, when modifications were involved.


Except now you must ask the question why a modification of the adjudged, infringing products even matters.

The court order is clear: disable the listed DVR's. If there are modifications to the listed DVR's and DISH/SATS wants to get adjudged infringing products out of the scope of the injunction, DISH/SATS must file a motion for modification of the injunction to remove those products from the injunction. Otherwise, DISH/SATS is expected to disable the adjudged, infringing products.

And because it appears that the modification is off the table for this contempt hearing, using it as an excuse may not have any bearing on this contempt proceeding.


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## Greg Bimson

phrelin said:


> It's not that simple in this case. The appellate court stayed the injunction during the appeal, then didn't like the hardware decision and sent it back. With only the software jury decision upheld, Dish "disabled" the old software by removing it while the injunction was stayed. Unless or until the hardware issue is reconsidered, IMHO the hardware functionality is irrelevant and Dish complied with the upheld spirit of the injunction.


Except...

It wasn't a "software jury decision". It was a finding that eight models infringed upon the software claims of the patent. There is no congruency that the software must infringe on the software claims. Some of the DVR's infringed the software claims using hardware.

It isn't as cut and dried, and it certainly isn't good faith, when DISH/SATS already argued to have the judge issue the injunction to allow a software download instead of a disabling of DVR functionality.


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## Curtis52

jacmyoung said:


> The judge himself later overturned the willful infringement judgment after he issued the judgment, did he modify the judgment? No he did not.


The judge did not overturn the willful infringement verdict.


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## James Long

Curtis52 said:


> Star Brite was already enjoined too. They didn't follow the clear order in the injuction and weren't found in contempt due to a modification of the product.


Did the clear order of the injunction prohibit Star Brite from reusing product names on new non-infringing products? Were they really enjoined from using their product brand names as you suggest?

As noted by others, DISH brought Star Brite into the case for the labeling issue ... to claim that a "DP-501" isn't automatically infringing just because it is labeled a "DP-501". Of course, DISH has another problem in that their "DP-501" are actually the exact same physical "DP-501"s that people owned when ruled infringing.

Their argument is piecing together many cases ... "Star Brite" was used for the labeling issue ... not for any contempt on the face of the injunction issue.


----------



## Curtis52

Greg Bimson said:


> Except now you must ask the question why a modification of the adjudged, infringing products even matters.
> 
> The court order is clear: disable the listed DVR's. If there are modifications to the listed DVR's and DISH/SATS wants to get adjudged infringing products out of the scope of the injunction, DISH/SATS must file a motion for modification of the injunction to remove those products from the injunction. Otherwise, DISH/SATS is expected to disable the adjudged, infringing products.


The Star Brite court order was clear: Stop manfacturing, using, or selling the listed products. Star Brite didn't ask permission to modify the products. There was no requirement to get permission just like there is no permission required in this injunction. The defendant filed suit for prima facie violation of the Star Brite injunction and the judge denied a contempt finding. 


Greg Bimson said:


> And because it appears that the modification is off the table for this contempt hearing, using it as an excuse may not have any bearing on this contempt proceeding.


TiVo already admitted there was a modification in their contempt motion. If they didn't want it on the table they shouldn't have brought it up.


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## dgordo

Finally something to discuss, tivo reply dated 7/18:

TIVO'S REPLY IN FURTHER SUPPORT OF ITS MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF THIS COURT'S PERMANENT INJUNCTION


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## Curtis52

> "Indeed, the cases upon which EchoStar relies affirm the ability of courts to enforce their orders. Abbott, 503 F.3d at 1383 ("_t is settled law that courts possess broad equitable powers to enforce their own decrees."); KSM, 776 F.2d at 1528 ("[T]he issue in contempt proceedings is violation vel non of the injunction, not patent infringement."). "_


_
Heheh. TiVo left off the "nevertheless"._


----------



## dgordo

Echostar motion dated 7/18

THE ECHOSTAR DEFENDANTS’ UNOPPOSED MOTION FOR WITHDRAWAL OF
THEIR MOTION FOR INTERPRETATION OF THE INJUNCTION


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## Curtis52

TiVo spends a lot of time arguing technical points about colorable difference. I guess it's on the table.


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## James Long

Tivo's Reply and Echostar's withdrawal of their interpretation request.

(Tivo's Reply contains all the exhibits that would fit in an attachment. There was no Exhibit J online ... Exhibit L was a 3.5 MB scan.)


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## dgordo

I think James has me on ignore.


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## Curtis52

Thanks dgordo.


----------



## scooper

dgordo said:


> I think James has me on ignore.


Probably more of he didn't look (too busy getting his own post ready )


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## James Long

No ingores here ... I've just been trying to get those documents to post for more than a hour.
My machine's been hanging up. I did include the exhibits!


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## dgordo

James Long said:


> No ingores here ...


I know, just messing with you. :lol:


----------



## Greg Bimson

All I can say is, "wow."

Like I said, if the injunction cannot be enforced on adjudicated infringing products, this would be precedential for DISH/SATS that an injunction will not be enforced on products already ruled to infringe.

Wow.


----------



## jacmyoung

Curtis52 said:


> Heheh. TiVo left off the "nevertheless".


Just I was about to say. How convenient it is for Tivo just to say the first half of the sentence when the true meaning of it was in the second half following "nevertheless..."!

And let me point out this also, since Tivo is also quoting those cases to support their argument, please don't tell me those cases are irrelevant, they are, because Tivo is quoting them too, only that Tivo totally reversed what the court was really trying to say by omitting the concluding part, how laughable is this?

Tivo holds the argument that because DISH did not cite a case where the modified adjudicated devices were those already in the hands of the users, Tivo insists that adjudicated devices refer only to those adjudicated and already sold and in use, therefore everything not sold are not adjudicated, including those DP501s still in the warehouse because if they are adjudicated still, then they must be treated the same as adjudicated deivces in the field already, all of them adjudicated devices, and once modified, they are all modified adjudicated devices by definition. Tivo did not read that part where the court said, contempt shall not be used as a sword to wound an infringer who made good faith effort to modifiy already adjdicated infringing devices in order to remain in the marketplace.

What did the court mean when they said "to modify already adjudicated infringing deivces"? If DP501s not already sold are no longer adjudicated devices according to Tivo, then what was the point of the court to make the above statement? Because that case related to the adjudicated devices not already sold.

Once a product is adjudicated as an infringing product, it is an adjudicated deivce, regardless if it is sold already or not, the court never ever tried to make any distinction between an already sold adjudicated device, and one still in the warehouse. Tivo in trying to make its argument put the words in the court statement, added the distinction between the two, in doing so Tivo inadvertently excluded adjudicated devices not sold already from the adjudicated device category all together. If the court adopts such new interpretation, they might as well start all over.

"EchoStar relies solely on cases addressing *unadjudicated products, i.e., modified units that were first distributed after judgment.*" Tivo totally forgot, that in each of those cases, the court considered those not already sold also as adjudicated devices, because the courts said over and over, "modified adjudicated devices." when referring to those products not already sold. The courts was very clear, an adjudicated device can be modified, as long as the modfication is legitimate. Tivo's position now is no, an adjudicated product can not be modified.


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## nobody99

jacmyoung said:


> Once a product is adjudicated as an infringing product, it is an adjudicated deivce, regardless if it is sold already or not, the court never ever tried to make any distinction between an already sold adjudicated device, and one still in the warehouse. Tivo in trying to make its argument put the words in the court statement, added the distinction between the two, in doing so Tivo inadvertently excluded adjudicated devices not sold already from the adjudicated device category all together.


Let's try this, because you really don't seem to be grasping the basics of the injunction. There are really four different categories of device:


The eight named models that are unmodified since the injunction went into effect sitting in boxes at a warehouse
The eight named models that built after the injunction went into effect with presumably new software
The eight named models that are in customers homes today
Other devices
September 4th deals only with #3. Only #1 and #3 are adjudicated. #2 is not currently adjudicated. Will skip #4 for now.

#1 and #3 are always and forever adjudicated. They were already built at the time the injunction was issued, and can never be held outside the injunction.

There are two seperate parts of the injunction where the DVRs are enjoined. #1 is enjoined by this part of the injunction, and #2 may be later enjoined if the DVR as a whole is merely colorably different.



Second Order in the injunction said:


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


The September 4th meeting has nothing to do with this part of the injunction. A future contempt hearing will deal with this portion of the injunction. But that's the part where the boxes are in the warehouse; i.e., they haven't been placed with an end user.

#3 is enjoined by this part of the injunction:



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


This is the part that will be politely discussed on September 4th. Notice how it says "that have been placed with an end user"

These devices, placed with end users at the time of the injunction, will forever be enjoined. The can never be removed from the injunction. The only way these devices can ever have DVR functions again is if DISH reaches a settlement with TiVo. There is also the outside possibility that the court can force a reasonable royalty on these boxes. Nevertheless, no change made by DISH to these boxes will "unenjoin" them.


----------



## Greg Bimson

jacmyoung said:


> Tivo's position now is no, an adjudicated product can not be modified.


No, TiVo's position is that an adjudicated infringing product is subject to the disable order, no matter what other modifications are done to it. Those models in customers homes found infringing are subject to a court order, and that order must be followed, no matter what other modification is done to them.


jacmyoung said:


> What did the court mean when they said "to modify already adjudicated infringing deivces"? If DP501s not already sold are no longer adjudicated devices according to Tivo, then what was the point of the court to make the above statement? Because that case related to the adjudicated devices not already sold.


Say when the injunction goes into full force and effect, that DISH/SATS had 100,000 DP501 receivers in a warehouse. That injunction prohibits the sales of those devices. DISH/SATS is then allowed to modify and sell the existing 100,000 DP501 receivers, and those would be under scrutiny of the injunction if those modified, adjudicated products infringe and are not more than colorably different than the enjoined products.

That exact scenario will be round two of contempt, sometime after 4 September.


----------



## jacmyoung

This is so comical, Tivo keeps accusing DISH of attacking the injunction, and saying the injunction is ambiguous, DISH never attacked the injunction in any of the docs, starting from the briefing before the 5/30 meeting. DISH also said the injunction was clear and unambiguous.

Tivo continued to use what DISH said in the distant past, such as when DISH argued if the DVRs were disabled it would cause harm... Of course it would, DISH did not have a workaround yet, of course it was DISH's right to argue for a stay of the injunction, how can this be used now to prove DISH has no legitimate workaround or cannot use such workaround.

And listen to this: "Furthermore, the Court left for a later date discovery and resolution of technical issues relating to EchoStar's alleged software changes. Id. Accordingly, the Court need not reach EchoStar's technical arguments now. But if it does, it should conclude that the purported changes result in no colorable differences and EchoStar continues to infringe."

Really? This is how things work? If it does now, it should conclude that the purported changes result in no colorable differences, even before looking at it? What is this? So Tivo is not 100% against looking at the new software technical issues now, just that they urge the court to rule the change is only colorable, without having even the evidence to look at such issues.


----------



## dgordo

"EchoStar's argument relies on the fiction that the Adjudicated Receivers morphed into "new" products as a result of an alleged software download– an argument this Court anticipated and rejected two years ago."

Did the court reject this argument 2 years ago?


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## jacmyoung

And last but not the least, as Curtis pointed out, Tivo made a fatal mistake by actually devoting a great deal of time arguing, in technical detail, that the DISH's new software must still infringe. So whether the new software still infringe or not will be a subject of discussion on 9/4, unlike the Tivo fans had thought.


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## jacmyoung

dgordo said:


> "EchoStar's argument relies on the fiction that the Adjudicated Receivers morphed into "new" products as a result of an alleged software download- an argument this Court anticipated and rejected two years ago."
> 
> Did the court reject this argument 2 years ago?


No the court did not, only Tivo did, and as such, the court could not accommodate DISH's suggestion. This is very usual when framing an injunction, the infringer may seek to exclude certain things from the letter of the injunction, but only if the winning patentee allows such. If the patentee objects, the court cannot help the infirnger. But that fact alone had never been used to argue for a contempt, or at least not successfully.


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## dgordo

jacmyoung said:


> No the court did not, only Tivo did, and as such, the court could not accommodate DISH's suggestion. This is very usual when framing an injunction, the infringer may seek to exclude certain things from the letter of the injunction, but only if the winning patentee allows such. If the patentee objects, the court cannot help the infirnger. But that fact alone had never been used to argue for a contempt, or at least not successfully.


I'm confused. Are you saying that Tivo asked for this to be in the injunction, the court put that in the injunction but its not part of the injunction?


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## jacmyoung

And this is I think the biggest mistake of all, when at the end of the technical arugment about why the new software still infringes, it said: "These units are not more than colorably different from the Adjudicated Receivers and they continue to infringe."

"These units" clearly referred to all the DVRs on the list, as Tivo was discussing the 50xs or the 6xxs that had no broadcom chips, in direct response to DISH's discussion of those DVRs on the list, yet Tivo apparent admitted these units with the new software were compared to the "Adjudicated Receivers" by Tivo themselves, only that the difference in their view is no more than colorable.

Again, if you firmly believe the new software is irrelevant on 9/4, dont discuss it, tell the judge all the discussions of the new software by DISH should be thrown out, we are only discussing prima facie contempt, no more no less.

And the worst part is after being drawn into such technical discussions, Tivo inadvertently contradicted themselves by comparing the DVRs on the list but with the new software, to the Adjudicated Receivers, when their entire arugment has been the Adjudicated Recievers cannot be changed to somethings different for comparison in the first place.


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## jacmyoung

dgordo said:


> I'm confused. Are you saying that Tivo asked for this to be in the injunction, the court put that in the injunction but its not part of the injunction?


No, DISH asked the DVRs with new software to be excluded from the letter of the injunction, Tivo objected and the court therefore did not allow DISH to add such language in the injunction. This is common, it is uncommon to accommodate infringers's suggestions to exclude. The only times this happened were when the winning patentees agreed to allow such, that is why we have only seen few cases did so, for the majority of the injuctions there are no added exclusions suggested by the infringers because naturally the winning patentees objected, rightfully so, why should they give the losing infringers an inch?

In fact in a few cases on appeal, the infringers argued such infringer-suggested exclusions should be added to avoid unwanted contempt proceedings, the appeals court denied such argument, and the reason by the appeals court has always been, such exclusions can be argued when the contempt proceedings are in front of the parties, which means those exclusions (such as use of modifications), while usually not allowed to be mentioned in framing the injunctions due to objections by the patentees, will have to be looked at during the contempt proceedings, there is no real reason that an infringer must insist it is added into the injunction for their own protection. Because the infringers have the assurance from the appeals court legit exclusions will be carefully considered once the parties reach the contempt phase. The protetion sought by the infringers will be there by default during the contempt proceedings, no need to emphsize such during the framing of the injunctions.

In another word, the court did not "agree" with Tivo that DISH may not use modification to avoid contempt, Tivo stretched the truth to make it sounded that way.


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## kmill14

I am glad to see TiVo present an argument with absolutely no ******. Of course it is the same argument many on here have presented, which jacmyoung and Curtis52 have ignored over and over and over and over.

Joe Blow's DP-501 has already been ruled on to infringe (and affirmed on appeal to infringe) and Joe Blow's DP-501 MUST have its ability to store and playback TV data from the hard-drive disabled. No ambiguity anywhere in that order.

I loved how they pointed out KSM deals specifically with two DIFFERENT devices, just as was done here (and never addressed by jacmyoung or Curtis52). 

Curtis52's only response is they didn't include the "Nevertheless" line in KSM, which of course is unnecessary since that line deals with devices never enjoined. This hearing is not about the ViP 622 or 722, so why would that section need to be addressed?


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## Curtis52

dgordo said:


> "EchoStar's argument relies on the fiction that the Adjudicated Receivers morphed into "new" products as a result of an alleged software download- an argument this Court anticipated and rejected two years ago."
> 
> Did the court reject this argument 2 years ago?


I haven't been able to find it and TiVo didn't see fit to include a reference.


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## Curtis52

jacmyoung said:


> No, DISH asked the DVRs with new software to be excluded from the letter of the injunction, Tivo objected and the court therefore did not allow DISH to add such language in the injunction.


This is the only similar reference I can find:



> "Defendants argue, the injunction should not extend to DVRs already distributed but *not placed* because they cannot infringe until the infringing software is downloaded."


It looks to me like Dish got what they asked for. Only the placed DVRs were enjoined. Maybe TiVo had some arguments about new software but I can't find any agreement by the judge anywhere.


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## jacmyoung

Curtis52 said:


> This is the only similar reference I can find:
> 
> It looks to me like Dish got what they asked for. Only the placed DVRs were enjoined. Maybe TiVo had some arguments about new software but I can't find any agreement by the judge anywhere.


Because there was no such agreement. Tivo has been claiming something all along which the court never did.

I was just done reading some cases Tivo cited for "contempt proceeding applied only to new units not before the court when it entered injunction; adjudicated product remained subject to injunction" last night but it was too late.

The one Tivo used to argue no need to relitigate the infingement, was a case in which a drug manufacture developed a new drug and was found to infringe on a competitor's drug patent, and was prohibited from continued development, manufacture, use, sell...that drug. The infirnger later used the information collected when they developed that infringing drug to apply for FDA approval. They argued the information itself was ok to use, because they were applying for a new drug they said no longer infringed, only some of the information they collected themself while developing that old infringing drug would help in obtaining the approval for the new drug. The argument was the new drug was not litigated, so the use of the information itself could not have induced further infringement.

The court disagreed, and said it was not necessary to litigate the new drug first and find it infringing, in order to prohibit the use of that information. Only in such context the court said no need to relitigate infringement. But as Tivo did all along, they just picked the words to use completely out of the context.

As I read some of the other cases where Tivo emphsized "contempt proceeding applied only to new units not before the court when it entered injunction; adjudicated product remained subject to injunction", again those cases had to do with which either no modifications were done, or when modifications were done, the courts did look at the modificaitons carefully, and found the modifications only colorable, before rendering a contempt.

Of course as I said earlier, Tivo by turning to examining the DISH new software technical details, automatically laid out the discussion for the new software on 9/4, and by using such statement in its conclusion: "These units are not more than colorably different from the Adjudicated Receivers and they continue to infringe", Tivo automatically overwrote everything it said in the earlier part, that the "Adjudicated Recievers" could not possibly be modified and then compared to the original ones, well Tivo itself was comparing them, only that Tivo believes the differences are mere colorable.


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## jacmyoung

So now let's turn to the specific arugments Tivo made in the new software technical examination section:

First argument is: "For example, EchoStar contends that recent technological advances in the power of central processing units (CPUs) and memory supposedly made its "new" design possible. Opp. at 2. But EchoStar's alleged design-around did not change the CPU and memory."

What Tivo is saying is, because DISH did not change the CPU and memory, it proved those CPU and memory were not powerful enough to handle the new software. Of course they are more powerful, because DISH was comparing them to the ones used in the older DVR models, such as the Dishplayers. What Tivo is essentially saying is, well I know you can swim because you swimmed, but I also know you cannot dive, because you never dived beofore and you have not changed a bit, therefore you possessed no capbility to dive. What is that?

The second argument Tivo used was, well DISH's new software still "analyzes the data" so it still infringe. But Tivo totally forgot, all DVRs analyze data. In fact when the judge reversed the willful infringement verdict by the jury, the judge himself said one of the factors he used to make such reversal was the fact DISH began to develop DVRs before Tivo even existed. So DISH obviously "analyzed data" and likely patented a few before Tivo even was a company. If Tivo's argument stands, it would be Tivo that infringed.

Of course "analyzing data" itself is not the issue, but using which method to analyze the data is the issue. DISH's old software used a method very similar to Tivo's patented method, so it infringed. Now DISH is saying the new software uses an entirely new method, but Tivo was not about to address that, because they could not dispute that.

I will stop for now and come back with more when I have time to read more.

The bottomline is:

1) Tivo does not dispute that DISH modified the DVRs;
2) Tivo does not even dispute the specific steps used to modify those DVRs as described by DISH;
3) Tivo discussed in details point by point with DISH's detailed discussion about the specific items in the new software, therefore automatically give credit to DISH's such discussion.

Tivo should have dismissed DISH's new software claim entirely, including all the specific technical details of the new software, but they instead embraced the entire discussion of the new software, which they said should not matter on 9/4.

Big mistake.


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## Greg Bimson

I think some people are completely missing the logic involved here:

Eight models of DVR were found to be infringing, and therefore, subject to the injunction.

Those eight models of DVR in the hands of the end user were ordered to be modified by having their DVR functionality removed.

Once the DVR functionality is removed, those eight models of DVR, which would now no longer infringe, would still be subject to the disable order in the injunction, and always in scope of the injunction until the injunction expires.

Instead, there was another modification done to those eight models of DVR. Somehow it is believed those eight models which have been found to infringe, by making a different modification, would no longer be subject to or in scope of the injunction.

Receivers adjudicated as infringing in the hands of end users are still subject to the disable order. There isn't a transitive argument that those receivers need to be found infringing AGAIN because they are modified receivers; they have been found infringing as adjudicated receivers. As I stated about the Delaware case, a device cannot be tried AGAIN. There is no need to review the receivers that were found to infringe and check them for infringement AGAIN.

And, of course, the reason TiVo brings up the adjudicated software is simple: DISH/SATS says they no longer infringe on the patent. Would anyone in a court of law leave what could be a lie to sit in front of the judge undisputed?


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## Greg Bimson

jacmyoung said:


> The second argument Tivo used was, well DISH's new software still "analyzes the data" so it still infringe. But Tivo totally forgot, all DVRs analyze data.


The patent claims how the analysis is done for a trick play.


jacmyoung said:


> In fact when the judge reversed the willful infringement verdict by the jury, the judge himself said one of the factors he used to make such reversal was the fact DISH began to develop DVRs before Tivo even existed.


That is a lie.


jacmyoung said:


> So DISH obviously "analyzed data" and likely patented a few before Tivo even was a company.


That is also a lie.


jacmyoung said:


> If Tivo's argument stands, it would be Tivo that infringed.


Based upon your faulty assumptions that is what TiVo's argument is about.

I don't mean to be critical, but could you please stop running through this thread lying about the facts? Any person new to this thread may end up believing any of the above paragraph, when it has no basis in fact.


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## Curtis52

jacmyoung said:


> The second argument Tivo used was, well DISH's new software still "analyzes the data" so it still infringe. But Tivo totally forgot, all DVRs analyze data. In fact when the judge reversed the willful infringement verdict by the jury, the judge himself said one of the factors he used to make such reversal was the fact DISH began to develop DVRs before Tivo even existed. So DISH obviously "analyzed data" and likely patented a few before Tivo even was a company. If Tivo's argument stands, it would be Tivo that infringed.


The judge did not reverse the willful infringement verdict. He just decided not to impose treble damages. That was his decision all along, not the jury's.

Analyzing signals by itself doesn't mean infringement. That's just one step. All of the steps of a claim are required to infringe. If Dish analyzed signals before TiVo it is meaningless. It's the combination of all steps that is patented.


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## jacmyoung

Greg Bimson said:


> The patent claims how the analysis is done for a trick play.That is a lie.That is also a lie.Based upon your faulty assumptions that is what TiVo's argument is about.
> 
> I don't mean to be critical, but could you please stop running through this thread lying about the facts? Any person new to this thread may end up believing any of the above paragraph, when it has no basis in fact.


The judge wrote in his denial of treble damages and attorney fees in part: "Defendants worked to develop their own DVR device for a number of years even before Plaintiff's company had been formed. Id. at 6." Here is the fact for you and your so called new subs.

Curtis you are correct the judge did not literally reverse the jury's willful infringement verdict, what he said was due to a piece of evidence not allowed to be introduced to the jury, due to the above factor, and due to a few other factors, DISH's conduct could not be viewed as willful to deserve the treble damages and attorney fees.


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## jacmyoung

Curtis52 said:


> ...Analyzing signals by itself doesn't mean infringement. That's just one step. All of the steps of a claim are required to infringe. If Dish analyzed signals before TiVo it is meaningless. It's the combination of all steps that is patented.


That was exactly what I meant, Tivo's argument is because DISH's new software still analyzes the signal, therefore it still infringes. Not because how the new software analyzes signals in similar way as Tivo's patent claims.

Again all DVRs analyze signals in one way or another, the judge had already acknowledged: "Defendants worked to develop their own DVR device for a
number of years even before Plaintiff's company had been formed. Id. at 6", therefore DISH had worked to "analyze signals" for a number years even before Plaintif's company had been formed.

Analyzing signals by DVRs was a "prior art" that Tivo can not possibly claim monopoly, if anything, DISH had the earlier start to claim it.


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## Curtis52

jacmyoung said:


> That was exactly what I meant, Tivo's argument is because DISH's new software still analyzes the signal, therefore it still infringes. Not because how the new software analyzes signals in similar way as Tivo's patent claims.


TiVo's infringed claims do not specify a "way" to do the analysis. Any analysis suffices as one of the steps.


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## kmill14

jacmyoung said:


> That was exactly what I meant, Tivo's argument is because DISH's new software still analyzes the signal, therefore it still infringes. Not because how the new software analyzes signals in similar way as Tivo's patent claims.
> 
> Again all DVRs analyze signals in one way or another, the judge had already acknowledged: "Defendants worked to develop their own DVR device for a
> number of years even before Plaintiff's company had been formed. Id. at 6", therefore DISH had worked to "analyze signals" for a number years even before Plaintif's company had been formed.
> 
> Analyzing signals by DVRs was a "prior art" that Tivo can not possibly claim monopoly, if anything, DISH had the earlier start to claim it.


Once again, jacmyoung, you fail to connect the dots. TiVo pointed out that the new software still analyzed, because E* specifically said their new workaround no longer "parses", which means analyzes in this case.

Regardless, this entire line of conversation is pointless since your DP-625 still stores TV data to the hard-drive, which puts E* in contempt of a clear Court order. Enjoy.


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## Greg Bimson

jacmyoung said:


> In fact when the judge reversed the willful infringement verdict by the jury, the judge himself said one of the factors he used to make such reversal was the fact DISH began to develop DVRs before Tivo even existed.





Greg Bimson said:


> That is a lie.





jacmyoung said:


> The judge wrote in his denial of treble damages and attorney fees in part: "Defendants worked to develop their own DVR device for a number of years even before Plaintiff's company had been formed. Id. at 6." Here is the fact for you and your so called new subs.


That is the truth.


jacmyoung said:


> Curtis you are correct the judge did not literally reverse the jury's willful infringement verdict, what he said was due to a piece of evidence not allowed to be introduced to the jury, due to the above factor, and due to a few other factors, DISH's conduct could not be viewed as willful to deserve the treble damages and attorney fees.


That is also the truth. And if you had managed to state in the first place that willful infringement was found (not reversed), then that also would be true.


jacmyoung said:


> Again all DVRs analyze signals in one way or another, the judge had already acknowledged: "Defendants worked to develop their own DVR device for a number of years even before Plaintiff's company had been formed. Id. at 6", therefore DISH had worked to "analyze signals" for a number years even before Plaintif's company had been formed.


That DVR device that DISH/SATS tried to make was thru a purchased subsidiary. I think that DVR the subsidiary made at that time cost about $3,000, of shich none were sold.

Then there is also the collaboration with WebTV, which resulted in the 7100 and 7200.

Either way, in order to process the requests to enable two streams at one time, there must be analysis of the data. The Time Warp patent spells it out; it is more than likely the new SATS software does some kind of analysis of the television data. It still isn't necessarily prior art, as analysis of the data is only one part of many claims.


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## jacmyoung

Curtis52 said:


> TiVo's infringed claims do not specify a "way" to do the analysis. Any analysis suffices as one of the steps.


I read the apeals court ruling from top to bottom, I also read where the "parse" i.e. "analyze" was discussed, and it was very specific, because DISH's old software analyzed the incoming signal data the same way described in the Tivo claims, namely to creat an index file, separate from the A/V streams stored, and done at the front end. That was how it infringed.

The word "parse" itself was never alone the reason for infringement on that specific construstion of the claims, which I think is the second construction out of a total may be 9 constructions.

The DISH's new software clearly parse the data in an entirely different way, not at the front end, rather at the time of tripplays. So taking the same logic used by the appeals court, the new way of "parsing" will not infringe.

But let's not even get too far ahead of ourselves, while Tivo must prove with clear and convincing evidence that infringement still exist, DISH does not have to, they only need to establish the doubt whether infringement still is present, and you know and I know, because you and I had read enough cases to understand, that it is really not hard to establish the doubt, because for two things to be only colorably different, they have to be "essentially the same". If you read DISH's new software discriptions, there are just too many differences to even think two are essentially the same.

The higher court had said many times, *even if* the new device still infringes, as long as a doubt can be established, the infringer is not in contempt, the patentee is religated to a new trial to determine if the new software is infringing or not.

At least now we have the benefit to know that on 9/4, the colorable difference of the adjudicated DVRs with the new software, as compared to the old DVRs, will be a subject of discussion, becaue Tivo spent a great deal of time discussing it.

My previous guess was, like the Tivo supporters said, the new software would not be discussed, only the letter of the injunction. Only if the prima facie violation did not work, Tivo would then seek discovery of the new software. At least by doing so, the heat would be put on DISH to compell them to provide much more concrete evidence of the new software, and Tivo could take time to analyze it further.

But I was suprised Tivo so eagerly engaged in the technical discussion of the new software, and not only that, admitted they did so for the purpose of colorable difference test of the DVRs with the new software, compared to the "Adjudicated Receivers". The real danger for Tivo is now, the judge can literrally say since both parties are going into the same detail to agrue on the colorable difference issue, all he needs to do is to agree to one or the other. There is not even the need for additional discovery.

So if DISH is found not in contempt, the judge can literally end the whole thing. Of course the additional damages will have to be settled, but as far as the injunction goes, it can literally be the end.


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## Greg Bimson

jacmyoung said:


> The higher court had said many times, even if the new device still infringes, as long as a doubt can be established, the infringer is not in contempt, the patentee is religated to a new trial to determine if the new software is infringing or not.


But not on devices already tried and adjudicated infringing. Modifying the software does not modify the guilt associated with the infringing devices. Besides, the same device cannot be tried AGAIN.


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## Curtis52

jacmyoung said:


> I read the apeals court ruling from top to bottom, I also read where the "parse" i.e. "analyze" was discussed, and it was very specific, because DISH's old software analyzed the incoming signal data the same way described in the Tivo claims, namely to creat an index file, separate from the A/V streams stored, and done at the front end. That was how it infringed.


The appeals court never said that was the only possible way to infringe. Since the patent claim does not specify the order of the steps, the parsing could occur first, last, or anywhere in between and still infringe if the other steps in the claim are followed too.


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## Curtis52

Greg Bimson said:


> But not on devices already tried and adjudicated infringing. Modifying the software does not modify the guilt associated with the infringing devices. Besides, the same device cannot be tried AGAIN.


A DVR with different software is physically a different device.


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## nobody99

Curtis52 said:


> A DVR with different software is physically a different device.


The jurisdiction of this case is the United States of America, not Curtis' Fantasy World.


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## nobody99

jacmyoung said:


> At least now we have the benefit to know that on 9/4, the colorable difference of the adjudicated DVRs with the new software, as compared to the old DVRs, will be a subject of discussion, becaue Tivo spent a great deal of time discussing it.


So, you are vacationing in Curtis' Fantasy World, huh? :lol:


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## Greg Bimson

Curtis52 said:


> A DVR with different software is physically a different device.


And we finally get to this...

Joe Blow has had the same DP-501 for the past five years. If it hasn't left his home, it cannot possibly be "physically a different device". It most definitely has been adjudicated and found infringing, no matter what DISH/SATS does to it. It has been ordered to have DVR functionality removed, irrespective of anything else that can be done.

Meanwhile, some on this topic want the court system turned on its head, and start a new precedent to have the same physical devices retried, even though they've already been found infringing. It has already been proven they've been sold as infringing, they've ran for a few years as infringing, and they may still be infringing, but let's just create a new precedent and have the courts spin their wheels on a topic they've already covered once before.


jacmyoung said:


> At least now we have the benefit to know that on 9/4, the colorable difference of the adjudicated DVRs with the new software, as compared to the old DVRs, will be a subject of discussion, becaue Tivo spent a great deal of time discussing it.


No, TiVo is setting up their perspective at the Court of Appeals and also planning their next motion, for violation of an injunction against infringements.


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## Curtis52

"Software is physical

The United States Court of Appeals for the Federal Circuit (CAFC) eliminated any doubt as to the patentability of software in a series of rulings. The first, In re Alappat, explained that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a *"new machine"*, which is patentable under traditional patent law. This was further bolstered in In re Lowry, which stated that a data structure representing information on a computer's hard drive or memory is similarly to be *treated as a physical device*." wikipedia


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## James Long

It is DISH's fantasy world too!


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## nobody99

Curtis52 said:


> "Software is physical
> 
> The United States Court of Appeals for the Federal Circuit (CAFC) eliminated any doubt as to the patentability of software in a series of rulings. The first, In re Alappat, explained that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a *"new machine"*, which is patentable under traditional patent law. This was further bolstered in In re Lowry, which stated that a data structure representing information on a computer's hard drive or memory is similarly to be *treated as a physical device*." wikipedia


I'm sorry, can you you show me in the injunction where the word "software" is mentioned? :hurah:


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## Greg Bimson

Curtis52 said:


> "Software is physical
> 
> The United States Court of Appeals for the Federal Circuit (CAFC) eliminated any doubt as to the patentability of software in a series of rulings. The first, In re Alappat, explained that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a "new machine", which is patentable under traditional patent law. This was further bolstered in In re Lowry, which stated that a data structure representing information on a computer's hard drive or memory is similarly to be treated as a physical device." wikipedia


You won't get too much of a fight from me here, other than to say that has no bearing on devices already adjudicated, since this only relates to patentability of software, not adjudication.

Yet devices already sold and found to infringe are adjudicated and subject to the injunction. If they are to be removed from the scope of the injunction, DISH/SATS needs to file for a modification of the injunction.


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## jacmyoung

Curtis52 said:


> "Software is physical
> 
> The United States Court of Appeals for the Federal Circuit (CAFC) eliminated any doubt as to the patentability of software in a series of rulings. The first, In re Alappat, explained that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a *"new machine"*, which is patentable under traditional patent law. This was further bolstered in In re Lowry, which stated that a data structure representing information on a computer's hard drive or memory is similarly to be *treated as a physical device*." wikipedia


Great info thanks. If a device loaded with a new software can be considered a new machine, that certainly lands credit to DISH's argument.

On how to determine infringement of a claim, I wouldn't argue on the details since I don't know enough, reading a ruling itself is enough of a torture.

Only thing is, if mere analyzing data is patentable on its own, all DVRs on the market will be infringing on Tivo's patent, including PC based DVRs. Of course Tivo supporters have being fantasizing such all the time.

Also I think the fact DVRs needing to analyze broadcast signals in order to do trickplays should be obvious to persons of ordinary skills. It has to be more than just the analyzing part to be an innovation.


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## Curtis52

jacmyoung said:


> Only thing is, if mere analyzing data is patentable on its own, all DVRs on the market will be infringing on Tivo's patent, including PC based DVRs. Of course Tivo supporters have being fanasizing such all the time.


Generic analysis is not patentable. TiVo hasn't patented analysis. Drilling a piece of steel is not patentable either but combine it with other steps and you may have a patentable process.


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## nobody99

Curtis, jacmyoung, I'll try again. The term "modified" in all the cases you cite does not mean a modification of an already-manufactured device. It means *modification of the design* in an effort to avoid infringement in new devices.

Here's a case where the Appeals Court's language displays this:

http://bulk.resource.org/courts.gov/c/F2/223/223.F2d.36.15261.html



> We concede that, in a proper case, an alleged infringer already under injunctive restraint, who is cited for contempt, should not be prohibited from making a real showing that its modified structure actually constitutes a substantial departure from, rather than a mere colorable variant of, *a previously manufactured device already held to infringe*


Please keep an open mind about this. In this case, they are actually saying "modified structure" - in effect, "modified design."


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## James Long

And that is the key difference ... the allegedly non-infringing models are not new manufacture. They may be modified infringing products (although neither Tivo or DISH has asked the court to decide that) but those products REMAIN infringing products - until a court (not the defendant, the court) rules they are not infringing.

The "we disabled the DVRs, loaded new software, and reenabled the DVRs" line DISH spewed is insulting. Disabling for the course of a normal upgrade process is not the same as "disable" until the expiration of the patent. Certainly not the word and spirit of the injunction.

At some point some one will ask a court to decide if the "modified" products are infringing or non-infringing. Until then ... the last word on the DP-501 and other models named is "Infringing Product".


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## phrelin

Curtis52 said:


> "Software is physical
> 
> The United States Court of Appeals for the Federal Circuit (CAFC) eliminated any doubt as to the patentability of software in a series of rulings. The first, In re Alappat, explained that a novel algorithm combined with a trivial physical step constitutes a novel physical device. Therefore, a computing device on which is loaded a mathematical algorithm is a *"new machine"*, which is patentable under traditional patent law. This was further bolstered in In re Lowry, which stated that a data structure representing information on a computer's hard drive or memory is similarly to be *treated as a physical device*." wikipedia


 Finally, a reference in these 3000 or 4000 posts that provides a basis for rationally talking about the concept of "disabling" a device such as a 501 that does not infringe as hardware,


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## James Long

If only it were not "wikipedia". 

Hang on a minute - I'll change the wiki.


----------



## nobody99

phrelin said:


> Finally, a reference in these 3000 or 4000 posts that provides a basis for rationally talking about the concept of "disabling" a device such as a 501 that does not infringe as hardware,


This is exactly the type of thing that will come into play if and when TiVo files a motion for contempt on newly-manufactured boxes.

But the issue at hand is the 9/4 contempt motion, which only deals with previously-manufactured boxes. In short, it doesn't matter if they no longer infringe. There are only two ways that those boxes can ever have DVR functions again: 1) they reach a settlement/license with TiVo, or 2) they are willing to pay whatever the daily contempt fine is until they replace them all.

Again, it doesn't matter if they no longer infringe, so it doesn't matter if there's new software or not, or whether it still infringes or not.


----------



## Nomo

The end of the whole argument is this - DISH willfully infringed to get 4 million DVR's into peoples households. If their argument is allowed to stand, that is essentially allowing DISH to use a trojan horse of sorts to steal customers from TiVo. They used the proven patented software KNOWINGLY to keep TiVo from having the opportunity to sell their DVR to that user. By trojan horse, I am saying that if DISH is allowed to get a box on false pretenses into a customers hands and then later on replace the software with something new that may or may not be infringing, that is not a fair remedy. The technology wasn't just stolen, the customer was too. A fair remedy is to not only revevrse the lost profits to TiVo from that customer but also to take that product completely off the market. That is clearly what was intended by the wording of the injunction. The minutes in Folsom's court clearly show that he was aware of this. That TiVo had lost sticky customers at a pivotable point in the DVR market. As others have said, an injunction may not punish but it surely can AND SHOULD reverse the damages. I wouldn't be surprised to see Folsom order that the injunction be modified to say that these boxes should be DESTROYED. Folsom was just being nice earlier with allowing the boxes to be used as a receiver only and not a DVR. This would allow DISH to issue other new DVR's (if they were truly noninfringing). DISH abused this gesture and should suffer the consequences. DISH is in contempt.


----------



## jacmyoung

James Long said:


> ...At some point some one will ask a court to decide if the "modified" products are infringing or non-infringing. Until then ... the last word on the DP-501 and other models named is "Infringing Product".


And that point is what a contempt proceeding is all about, just because the movant does not want to talk about it does not mean the judge can ignore it. And in a contempt proceeding the decision will not be if the modified products are infringing, rather if substantial open issues arised.

Not to mention now Tivo has involved itself in the colorable difference debate, so there is not even the elemant of "not wanting to talk about the new software" anymore, the new software will be talked about on 9/4, because both DISH and Tivo are talking about it in length now.


----------



## jacmyoung

Curtis52 said:


> Generic analysis is not patentable. TiVo hasn't patented analysis. Drilling a piece of steel is not patentable either but combine it with other steps and you may have a patentable process.


That I agree. My only question is what is the difference between literal infringement, and infringement on equivalents?

My understanding about literal infringement is each and everyone of the constructions in each patent claim must be infringed on precisely the way the patent claim described. Correct me if I am wrong.

But what about on equivalents? Does infringement have to be found on each construction in the claim too? Only that infringement through similarity is good enough, or is it that only some of the constructions in a claim needed to be proven to have been infringed, not necessarily all steps listed in a claim?


----------



## Nomo

jacmyoung said:


> Not to mention now Tivo has involved itself in the colorable difference debate, so there is not even the elemant of "not wanting to talk about the new software" anymore, the new software will be talked about on 9/4, because both DISH and Tivo are talking about it in length now.


Until Folsom rules that th colorable difference issue is on or off the table, TiVo has to respond to E* on that grounds just in case. That is Law 101.


----------



## Greg Bimson

Nomo said:


> Until Folsom rules that th colorable difference issue is on or off the table, TiVo has to respond to E* on that grounds just in case. That is Law 101.


TiVo briefs the court in their motion for contempt for prima facie violations of the injunction.

DISH/SATS responds in opposition by stating that they are allowed to modify the Infringing Products and that *their modified devices no longer infringe*, with loads of case law supporting their stance (but my opinion it does not live up to the standard).

TiVo gets one more chance to respond. Of course they need to counterpoint anything and everything in DISH/SATS response. So of course TiVo is going to say that the new software still infringes. *TiVo must counter any and all objection* by DISH/SATS. And the new software might not even be on the table during the 9/4 hearing.


----------



## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> ...At some point some one will ask a court to decide if the "modified" products are infringing or non-infringing. Until then ... the last word on the DP-501 and other models named is "Infringing Product".
> 
> 
> 
> And that point is what a contempt proceeding is all about, just because the movant does not want to talk about it does not mean the judge can ignore it. And in a contempt proceeding the decision will not be if the modified products are infringing, rather if substantial open issues arised.
> 
> Not to mention now Tivo has involved itself in the colorable difference debate, so there is not even the elemant of "not wanting to talk about the new software" anymore, the new software will be talked about on 9/4, because both DISH and Tivo are talking about it in length now.
Click to expand...

As mentioned a couple thousand posts ago ... the issue NOW for September 4th is a purely legal one - not a question of whether or not the alleged modification actually infringes just a question of whether DISH is violating the injunction by not "disabling the DVR functionality" as ordered.

Looking ahead to the next round in the case ... when actual infringement of the new code is addressed is "entertaining" but infringement is not what September 4th is all about. 

If September 4th was about infringement Tivo would not have said they did not need discovery for the ONE ISSUE the court is addressing on September 4th. (The discovery they requested, were denied, and continue to push for is for the next stage - not any September 4th issue.)

One step at a time ... the step that Tivo, DISH and the court is at is simply has DISH disabled the DVRs and if not are they in contempt. That's all!


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## nobody99

jacmyoung said:


> constructions


To quote the wise Inigo Montoya, "You keep using that word. I do not think it means what you think it means."


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## James Long

Greg Bimson said:


> TiVo briefs the court in their motion for contempt for prima facie violations of the injunction.


Docket #832 - TIVO'S MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF THIS COURT'S PERMANENT INJUNCTION (Filed 6/13)



> DISH/SATS responds in opposition by stating that they are allowed to modify the Infringing Products and that *their modified devices no longer infringe*, with loads of case law supporting their stance (but my opinion it does not live up to the standard).


Docket #839 - THE ECHOSTAR DEFENDANTS' OPPOSITION TO TIVO'S MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF THIS COURT'S PERMANENT INJUNCTION (Filed 6/30 - Sealed but the main document was made available via another court in a "redacted" form that is easily bypassed).



> TiVo gets one more chance to respond. Of course they need to counterpoint anything and everything in DISH/SATS response. So of course TiVo is going to say that the new software still infringes. *TiVo must counter any and all objection* by DISH/SATS. And the new software might not even be on the table during the 9/4 hearing.


Docket #844 - TIVO'S REPLY IN FURTHER SUPPORT OF ITS MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF THIS COURT'S PERMANENT INJUNCTION (Filed 7/18 - one week after original 7/11 date by joint agreement.)

Next event: "Hearing. Each side shall have 30 minutes. September 4, 2008"
(Unless the parties agree to a change - Order signed June 18th. There has been no resolution of the disagreement between Tivo and DISH over additional steps proposed by Tivo.)


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## nobody99

http://bulk.resource.org/courts.gov/c/F2/959/959.F2d.936.91-1157.91-1147.html



> The portion of Eli Lilly cited by AHP is merely a recognition that "[r]easonable restraints ... placed on an infringer to *eliminate the consequences of past bad acts* and to prevent further encroachment on the [subject] patent"


Hmm...eliminate the consequences of past bad acts? Curtis, I thought the only thing that an injunction could do was prevent infringement? So you must think that the appeals court made an error in this case. You should call the Supreme Court and have them take this case right away!

The third order in the injunction eliminates the consequences of past bad acts (Disable DVR functions)
The second order in the injunction prevents further encroachment on the [subject] patent (stop selling infringing DVRS)



> the district court, recognizing that the infringer had improved its marketing position by six months to one and a half years, ordered the infringer to destroy, before the expiration of the patent, all data obtained in violation of the injunction


Wow, that sounds awfully familiar!


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## spear61

[QUOTE

If there is any doubt in DISH/SATS strategy, it is that they'll drag this on for as long as possible, since it appears they in no way, shape or form want to agree to license technology from TiVo.

If there is any doubt in TiVo's strategy, it is that they'll fight this for as long as possible, since it appears TiVo in no way, shape or form will take anything but a monthly licensing agreement from DISH/SATS.QUOTE].

High stakes poker at its best!


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## jacmyoung

Greg Bimson said:


> ...Many times, some of us have stated that the issue is most defendants do not ignore a specific court order, because that is simply a prima facie violation of an injunction, and one does not see too many of those violations....


And I have said no, I had examples of infringers simply "ignored" the letter of the injunctions and avoided contempt, because they had met the goal of the injunction, that is no more infringement at the time of the contempt proceedings. You have yet find one single case in which an infringer was found in contempt without infringement actually taken place at the time of the contempt proceeding.



> I realize we are dealing with a somewhat precedential case, i.e, the fact that the adjudicated infringing products can be modified in the field so that they may no longer be infringing. However, one must follow the order of the court, and address the workaround when the time comes, not simply just ignore the order.


I very much appreciate the fact you now realize what is at issue here. And let me say it again, violation of the letter of the injunction had occurred many times as my examples could attest, the only justification you have is those cases were irrelevant, but even if you are correct that they are irrelevant, the fact still remains, those infringers *did not* follow the orders, and were not in contempt, that was an absolute fact, regardless the background.

So when you insist that without any conditions, or without considering any circumstances at hand, you only care about following the letter of the injunction or not, I have in fact proven, that without any conditions to be considered, to only view the act of "ignoring the letter of the injunction" alone, it happened many times before with my clear examples, and a contempt was not automatic, some other factors had to be taken into consideration.

What you are insisting is there is no other factors involved here, or even if there were any, they must not be taken into consideration. The prior cases had proven you wrong, in fact other factors were considered.

Even Tivo recognizes it, because Tivo itself is taking other factors into considderation, when they made the new software, its technical details, and the colorable difference test, one of the main discussions during the 9/4 hearing.

Other than that, I hope you realize, if not then let me clarify, I did not include you as those Tivo fans I was referring to. Not that you are not a Tivo fan, not that you did not come in here to discredit DISH, only that you have argued on merits, not resorting to insults. You don't have to defend those other Tivo fans I was referring to, they are more than capable of defending themselves.

Again let me clarify, that in a debate, when you establish a certain standard for the debate yourself, such standard must be applied to both sides.

You insist that no other factors in the case can be considered, only the "ignoring the letter of the injunction" is to be considered, then when I used those prior cases, you cannot insist other factors in those cases must be considered. Instead only one thing to be considered.

That question is, did the infringers in those cases "ignore the letter of the injunction"?, the answer is yes. Were they in contempt? The answer is no. Again you may not use those other factors in those other cases to support your argument, because you just told me all the other factors may not be considered in determining your "letter of the injunction contempt" argument.

You must apply the same standard you set up yourself for the debate, and apply it to all cases, not pick and choose a case you like to apply, if you insist one standard must be applied here, the same standard must be allowed on those other cases.


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## kmill14

jacmyoung,

You haven't brought forth a single case where the defendant refused to obey a court order regarding a device already adjudged to infringe and was not held in contempt. The rest of us have brought forth multiple cases where contempt was found for disregarded order for those specific adjudged devices.


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## Greg Bimson

jacmyoung said:


> And I have said no, I had examples of infringers simply "ignored" the letter of the injunctions and avoided contempt, because they had met the goal of the injunction, that is no more infringement at the time of the contempt proceedings.


And that is where I disagree.

In Fisher-Price v. Safety 1st, Safety 1st was found to violate the injunction in two ways:

1) Continuing sales of listed products; and,
2) Not following the order to recall the infringing products.

Infringement of devices already found to infringe was never a factor in the contempt proceeding. If it was a question pertinent to the contempt finding, you would have seen it in the decision as a question that must be answered, according to your standard. That question was never brought up.

In the TiVo v. Echostar case, TiVo is accusing DISH/SATS of one violation: ignoring the disable clause of the injunction against products in customers' hands that were found to infringe. Because of the standard used in the Fisher-Price v. Safety 1st contempt finding, ongoing infringement will not be a question regarding this hearing, no matter what anyone else believes. The devices in question were found to infringe and are always subject to the injunctive relief.

It is Fisher-Price v. Safety 1st that resembles the TiVo v. Echostar case the most, and that is the standard that will apply to this contempt hearing.


jacmyoung said:


> You have yet find one single case in which an infringer was found in contempt without infringement actually taken place at the time of the contempt proceeding.


No one knows if DISH/SATS has modified the adjudicated devices to avoid any infringement of the patent. Everyone knows that DISH/SATS was found guilty of infringement on those devices already.

What we know is that supposedly DISH/SATS has modified adjudicated infringing devices subject to an injunction. What we also know is that procedure dictates that DISH/SATS get a modification of the injunction to take the adjudicated infringing products out of the subject of the injunction. It is not DISH/SATS that gets to make that determination. And it is truly risky to go into a contempt hearing with the attitude that DISH/SATS has shown.


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## James Long

nobody99 said:


> The portion of Eli Lilly cited by AHP is merely a recognition that "[r]easonable restraints ... placed on an infringer to *eliminate the consequences of past bad acts* and to prevent further encroachment on the [subject] patent"
> 
> 
> 
> Hmm...eliminate the consequences of past bad acts?
Click to expand...

In Tivo vs Echostar the money eliminates the consequences of the bad act. Tivo will be paid for their lost profits and lost sales ... full compensation per the courts.

There was a provision to award treble damages ... which would penalize DISH and reward Tivo _beyond_ the actual consequences of the bad act ... Judge Folsom declined to apply such a penalty.


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## phrelin

Nomo said:


> The technology wasn't just stolen, the customer was too. A fair remedy is to not only reverse the lost profits to TiVo from that customer but also to take that product completely off the market.


Fair to whom? Unless the Judge is going to make Dish do what they have already done - turn off the infringing software - except you want the box disabled. Will he be making Dish replace them with TiVo boxes? Because if he doesn't, no one benefits from the ruling. TiVo loses because those old boxes cannot be a source of license fees, Dish loses because as they replace the boxes with non-infringing boxes they'll lose customers (but not to TiVo), and, most importantly, the customers lose and they'll be mad at both Dish and TiVo.

The only ruling that makes sense in this case would be to order Dish to start paying license fees to TiVo on the enumerated boxes from the date they were manufactured and so long as they can record. Unless TiVo's only objective is to lose more money. Which, sometimes, based on the arguments here, is the whole purpose of the legal process. Then, of course, destroying the boxes (or their DVR functionality) makes sense so that everyone loses forever.

Does that mean federal marshal's will come to my house and get my two 508's?:eek2:

Edit: Oh, I forgot. There are always winners in long, drawn out lawsuits - attorneys.


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## nobody99

James Long said:


> In Tivo vs Echostar the money eliminates the consequences of the bad act. Tivo will be paid for their lost profits and lost sales ... full compensation per the courts.


Really?




Judge Folsom in the Permanent Injunction said:


> And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. Thus, the Court concludes that *the full impact of Defendants' infringement cannot be remedied by monetary damages.*


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## James Long

Yes, really. Disabling the DVRs is to prevent continued consequences of the bad act.

"The full impact" is more than just "eliminate the consequences of past bad acts".
See Apples vs Oranges (citation omitted).


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## nobody99

You: Tivo will be paid for their lost profits and lost sales ... full compensation per the courts

The Court: the full impact of Defendants’ infringement cannot be remedied by monetary damages

Honestly, I'm confused. How can both of these statements be true?


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## phrelin

James Long said:


> See Apples vs Oranges (citation omitted).


:lol:


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## James Long

nobody99 said:


> You: Tivo will be paid for their lost profits and lost sales ... full compensation per the courts


Sorry I didn't make that clear ... full compensation for the consequences of _past_ bad acts.


> The Court: the full impact of Defendants' infringement cannot be remedied by monetary damages


Correct. There was ongoing infringement to deal with ... monetary damages (not trebled) is enough to remedy the _past_ - but the full impact (beyond compensation for the consequences of past bad acts) requires something more. Prevention of continued infringement.

IIRC the paragraph you quoted was from when Judge Folsom refused to stay the injunction? That refusal was quickly overruled by the appeals court. Apparently they did not agree that DISH's receivers needed to immediately be shut down during the appeal to avoid damage to Tivo.

Money can solve many of these problems.


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## nobody99

James Long said:


> Sorry I didn't make that clear ... full compensation for the consequences of _past_ bad acts.
> Correct. There was ongoing infringement to deal with ... monetary damages (not trebled) is enough to remedy the _past_ - but the full impact (beyond compensation for the consequences of past bad acts) requires something more. Prevention of continued infringement.


This actually brings up an interesting point - what was Judge Folsom's intent? Was his intent to permanently and forever have DVR functionality turned off on existing receivers? Ignore everything else for a second - was that his intent? Or was his intent to allow a way for DISH to restore DVR functionality to those receivers?



> IIRC the paragraph you quoted was from when Judge Folsom refused to stay the injunction? That refusal was quickly overruled by the appeals court. Apparently they did not agree that DISH's receivers needed to immediately be shut down during the appeal to avoid damage to Tivo.


Sorry, I had meant to put a link in:

http://www.southernme.com/DAVY_v_GOLIATH/Tivo v Echostar/perm injunction.pdf

It's actually not part of his denying the stay. It's a few paragraphs before that.


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## James Long

Perhaps it could go either way:


> One thing the parties agree on is that DVR customers are "sticky customers," that is they tend to remain customers of the company from which they obtain their first DVR. Dkt. No. 737 at 30 (EchoStar); Dkt. No. 747 at 1 (Tivo). Thus, the impact of Defendants' continued infringement is shaping the market to Plaintiff's disadvantage and results in long-term customer loss. This is particularly key where, as is the case here, Plaintiff's primary focus is on growing a customer base specifically around the product with which Defendants' infringing product competes. And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.


The full paragraph discusses "the impact of Defendants' continued infringement" (beyond past bad acts) but also notes Tivo's desire for "growing a customer base" (something past bad acts have interfered with).

A couple of paragraphs later - similar language:


> The balance of hardships weighs in favor of granting a permanent injunction. As discussed, Plaintiff faces ongoing irreparable injury as Defendants' infringement continues. As a relatively new and small company, every day of Defendants' infringement affects Plaintiff's business. And, as discussed above, Plaintiff's primary product, its DVRs, are those with which Defendants' infringing products directly compete. The harm caused by such infringement weighs heavily in favor of an injunction.


Continued infringement being the key issue.


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## jacmyoung

James Long said:


> Perhaps it could go either way:The full paragraph discusses "the impact of Defendants' continued infringement" (beyond past bad acts) but also notes Tivo's desire for "growing a customer base" (something past bad acts have interfered with).
> 
> A couple of paragraphs later - similar language:Continued infringement being the key issue.


"the impact of Defendants' *continued infringement*"

Here is the key, to base one's argment on that, one must first answer this question, does the *continued infringement* still exist?

On the other hand, the interference from the past bad acts is a legit issue. To answer this question, one only needs to again look at what the courts had usually done. Most of the time the infringing products already in the hands of the end users were never even recalled or asked to be disabled. Talk about continued interference by the past bad acts, yet the courts allowed such most of the time. Tivo can't possibly win on this issue, unless they can convince the court to go back and reverse all past rulings, and disable all infringing products already in the hands of the end users.


----------



## Greg Bimson

jacmyoung said:


> To answer this question, one only needs to again look at what the courts had usually done. Most of the time the infringing products already in the hands of the end users were never even recalled or asked to be disabled. Talk about continued interference by the past bad acts, yet the courts allowed such most of the time.


Because most of the time the Plaintiff is awarded lost profits for ALL of the infringing devices. In this case, TiVo was awarded lost profits on only 194K devices out of over *four million* infringing devices. As I recall, DISH/SATS damages restitution for those lost units was in the neighborhood of $48 million. If DISH/SATS wants to keep all of the Infringing Product on they can also pay lost damages on the remaining 3.807 million receivers (4 million minus the 193 thousand) at $250 per receiver, and pay TiVo *$951 million* in lost profits.


jacmyoung said:


> Tivo can't possibly win on this issue, unless they can convince the court to go back and reverse all past rulings, and disable all infringing products already in the hands of the end users.


TiVo will not need to "convince the court to go back and reverse all past rulings," as the injunction states to disable DVR functionality, and ignoring that order is a valid reason to be found in contempt without looking at any modifications to the models already found to infringe.

I am having a hard time understanding how people think an injunction is easily defeated. The injunction states to disable the adjudicated infringing products in the hands of the end user. Even when modified so that the functionality is disabled, the Infringing Products are still under the scope of the injunction. So why is it people believe that by simply downloading some modified software (infringing or not), that the injunction is defeated?

There may be some valid reasons why the modification should be considered, but *procedurally*, only a modification of the injunction can allow functionality in the Infringing Products to be restored. When that happens, DISH/SATS may have a leg to stand on. However, since no request of modification brief has been filed, I can only assume that this will be painful.


----------



## jacmyoung

Greg Bimson said:


> Because most of the time the Plaintiff is awarded lost profits for ALL of the infringing devices.


Yes, but only up to the point of the verdict, and injunctions had always been used to stop further infringement, no more no less.



> In this case, TiVo was awarded lost profits on only 194K devices out of over *four million* infringing devices. As I recall, DISH/SATS damages restitution for those lost units was in the neighborhood of $48 million. If DISH/SATS wants to keep all of the Infringing Product on they can also pay lost damages on the remaining 3.807 million receivers (4 million minus the 193 thousand) at $250 per receiver, and pay TiVo *$951 million* in lost profits.


Wrong math Greg, the $250/ea had to do with "life-time" subscription estimate, the rest of the DVRs were not calculated at $250/ea at all because they were not life-time subscription DVRs. And most importantly, all judgments are calculated up to the time the verdicts are rendered, not perpetually extended after the verdicts. Future issues are covered by injunctions or future proceedings.

So for the purpose of determining the violation of this injunction alone, as long as DISH stopped infringement of the patent, no more damages can be assumed or rendered, nor the so called continued profits may be used as the argument. The court simply cannot punish DISH once DISH began doing things legally.


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## Curtis52

Greg Bimson said:


> Because most of the time the Plaintiff is awarded lost profits for ALL of the infringing devices. In this case, TiVo was awarded lost profits on only 194K devices out of over *four million* infringing devices.


TiVo is lucky that they were awarded any lost profits.


> Lost Profits
> 
> The discussion of patent damages in this paper is confined to lost profits.
> A commonly used and accepted practice by patentees seeking lost profits due to
> infringement is to use the four-part "test" enumerated in Panduit, perhaps the leading case concerning lost profits in patent infringement matters. This test requires that the patentee prove (1) demand for the patented product, (2) *absence of acceptable non-infringing substitutes*, (3) possession of manufacturing and marketing ability capable of exploiting the demand, and (4) *the amount of profit the patentee would have made absent infringement. *Patentees historically were able to prove damages to the courts based upon lost profits if they "passed" this test.
> 
> The Panduit decision has generated a substantial quantity of literature
> with a significant amount of it criticizing the second part of the Panduit test.
> Simply put, under Panduit's second factor, lost profits damages often were
> barred if non-infringing substitutes were shown to be present; if not, then pat-
> entees typically were assumed to have been able to make all the infringer's
> sales. Over time, however, the CAFC's economic reasoning has evolved beyond
> the mechanical application of Panduit. For example, in State Industries,
> the CAFC recognized that the mere existence of acceptable non-infringing substi-
> tutes should not preclude recovery of lost profits when more than two suppliers
> exist in the relevant market.


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## jacmyoung

Greg Bimson said:


> ...I am having a hard time understanding how people think an injunction is easily defeated. ...


If you insist by finding DISH not in contempt, the injunction will be "defeated", then as I said in a previous post, injunctions had been "defeated" many times before. Sorry they happened.

No, in those cases, as well in all cases when the infringers were found not in contempt of the injunctions, the injunctions were never defeated, either the injunctions did not prohibit the acts the rulings said the infringers had violated, or the goals of the injunctions were met, or would be met.


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## Curtis52

"Retained by Irell & Manella and McKool Smith, counsel for TiVo, Dr. Ugone assessed the economic impact of EchoStar's patent infringement. *He developed a lost profits model that used a market penetration rate analysis to determine the portion of EchoStar's DVR sales that would have gone to TiVo had EchoStar not infringed the patent.* Dr. Ugone also estimated royalty damages based upon a reasonable royalty rate TiVo would have received had the company entered into a licensing agreement with EchoStar to use TiVo's technology. Dr. Ugone estimated total damages of $74 million or $87 million, depending upon the time period the jury found TiVo appropriately marked its DVRs with a patent designation.

The jury accepted Dr. Ugone's damages estimate, awarding TiVo $73.99 million in damages: $32.66 million in lost profits from lost sales of its set-top boxes."


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## Greg Bimson

jacmyoung said:


> If you insist by finding DISH not in contempt, the injunction will be "defeated", then as I said in a previous post, injunctions had been "defeated" many times before. Sorry they happened.


But erase all of those contempt proceedings that were overturned because of infringement on a modified device, and you get left with the MTC case only. And that was a special case in and of itself, because it appears there was another guiding principle in the injunction that allowed MTC to interpret the injunction in a different manner, which appeared to be a legal interpretation. Not to mention that the case was tried in California, where many say the Federal Circuit is quite liberal and contains activist jurists.

Thanks, Curtis52 for finding that info.


jacmyoung said:


> So for the purpose of determining the violation of this injunction alone, as long as DISH stopped infringement of the patent, no more damages can be assumed or rendered, nor the so called continued profits may be used as the argument. The court simply cannot punish DISH once DISH began doing things legally.


That would be why TiVo needs discovery for damages, which appears to be sorely lacking, and supposedly off schedule.

And the big "if" is "once DISH began doing things legally."


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## jacmyoung

Greg Bimson said:


> ...That would be why TiVo needs discovery for damages, which appears to be sorely lacking, and supposedly off schedule.
> 
> And the big "if" is "once DISH began doing things legally."


That I agree in part. The part I agree with you is there should be discovery related to finding when, if indeed DISH began to do things legally, then when did that happen.

What you believe is Tivo asked for such discovery, but in fact Tivo did not. In its initial briefing leading to the 5/30 status meeting, Tivo asked for the new software discovery only in the context of infringement, and only in the contempt topic. In the damages section Tivo did not ask for a discovery, only a list of specific data about everything related to DISH's DBS operations, number of the total DVRs down to each model of them, when and how many were placed in service and how many were active at any given time, how many were in the pipeline and so on.

Tivo did not ask for discovery on the software for the purpose of damages determination. On 5/30 Tivo did change its tone, after it was obvious to them they would not getting that discovery granted because it was raised in the contempt topic, and in the infringment context, which was legally a no no. Only then Mr. Chu said but they really meant that discoery for the damages purpose. It was too late.

That is not to say the additional damages will not be discussed, it is in fact a part of the hearing on 9/4, or at least following that hearing, because enhanced damages are on the agenda. But since there is no formal discovery, Tivo risks having to accept whatever DISH says when the new software was installed. And the risk arises from the fact that on 9/4, the colorable difference issue will be discussed, becasue Tivo made it an issue themselves.

As I said before, by doing so it is possible that the Judge may agree to one side and end it all, as far as discovery is concerned, if so whatever DISH says Tivo has to accept it, unless of course Tivo can prove otherwise.

Had Tivo refused to discuss the new software, as both you and I had anticipated, Tivo would have had another chance, if the Judge refuses to found DISH in contempt on the face of the injunction, Tivo can then ask for a new discovery, both in the context of colorable difference of the new software for contempt determination, but also for damages determination, therefore obtaining more substantial evidence from DISH regarding the new software and the timings of those downloads.

Of course the above is only my guess, by no means certain. And even if the above can be true, that also by no means rules out the possibility that Tivo may still get a new discovery granted for the damages later.


----------



## jacmyoung

Greg Bimson said:


> But erase all of those contempt proceedings that were overturned because of infringement on a modified device, and you get left with the MTC case only. And that was a special case in and of itself, because it appears there was another guiding principle in the injunction that allowed MTC to interpret the injunction in a different manner, which appeared to be a legal interpretation. Not to mention that the case was tried in California, where many say the Federal Circuit is quite liberal and contains activist jurists...


But you must understand I am by no means expert in legal matters, and by no means had the resources to research in the vast law libraries to find similar cases. There are literally thousands of patent cases in the inventory, I was only able to skim the surface, whatever I could find on the Internet. And even with such limited access and resources and expertise, I was able to find at least two, and I have little doubt there were cases that are out there.

The other one was the Footprint 2.0 case. It in fact told us that an adjudicated service was modified right in the field, at the hands of the end users, and modified to avoid a contempt. I know there is argument about the letter of that injunction that you insist separated it from this injunction, but still it is a fact an adjudicated item already in the hands of the end users was modified in the field and afterwards there was no contempt.


----------



## nobody99

http://bulk.resource.org/courts.gov/c/F2/525/525.F2d.775.74--2256.html

This one's pretty close to ours - as far as contempt hearings go (I apologize if someone already brought this one up...I can't keep track of examples anymore)



> this court stated that *a contempt proceeding following a fully litigated issue of infringement is not a 'de novo inquiry as to infringement*, since the earlier determination of the validity of the patent and all the defenses to a charge of infringement which are related thereto are res judicata . . ..'
> ...
> Were it permissible upon every proceeding in contempt to again challenge the validity of the claims, and to reopen issues already decided, such practice would be subversive, if not indeed wholly destructive, of the plenary power of the court to enforce its decrees, and to reopen questions of validity upon an appeal from a contempt order would be to *invite all defeated litigants in patent infringement suits to defy injunctional orders, and by such defiance to seek review of adjudicated issues not otherwise open to them.*


Hmmm. Sounds familiar.


----------



## James Long

jacmyoung said:


> Here is the key, to base one's argment on that, one must first answer this question, does the *continued infringement* still exist?


At the time it was written, yes - infringement was continuing. Even DISH did not claim to stop infringing until a time after the appeals process began. (Other than the basic claim that they never infringed at all.)



jacmyoung said:


> The other one was the Footprint 2.0 case. It in fact told us that an adjudicated service was modified right in the field, at the hands of the end users, and modified to avoid a contempt. I know there is argument about the letter of that injunction that you insist separated it from this injunction, but still it is a fact an adjudicated item already in the hands of the end users was modified in the field and afterwards there was no contempt.


The issue with Footprint 2.0 was that the injunction was against the service configured as described. A big invitation to reconfigure the service to something that wasn't described.

The only invitation in the Tivo vs Echostar injunction was to reconfigure the infringing products into something without DVR functionality. Whether that was done by recall, software download or techs visiting with sledgehammers the stated goal remains: "disable the DVR functionality". DISH has not quite met the stated goal, have they?

(Tivo fans would probably prefer sledgehammers ... but alas, the court didn't specify.  )

Curiosity: Had DISH not of told the court that it was possible to disable the DVR functionality via a software download I wonder if the injunction would have specified some other relief - such as a recall/replacement of all "Infringing Products"? DISH's ability to leave "Infringing Products" in the field (with disabled DVR functionality, per court order) saved them a more physical replacement.


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## CuriousMark

James Long said:


> Curiosity: Had DISH not of told the court that it was possible to disable the DVR functionality via a software download I wonder if the injunction would have specified some other relief - such as a recall/replacement of all "Infringing Products"? DISH's ability to leave "Infringing Products" in the field (with disabled DVR functionality, per court order) saved them a more physical replacement.


I have also wondered about this. It seems to me, that in situations like this a recall was required. I suppose that is still a possibility and an order th judge could impose as a possible outcome of the September 4th hearing. If Dish won't follow instructions on already placed hardware, he could see to it that the hardware is no longer placed.

Personally I think TiVo and TiVo supporters would prefer a negotiated solution that leaves the DVRs on to any alternative that involves disabling, removing or sledge hammering them. TiVo would want the possibility of these users becoming future customers rather than TiVo haters. Dish may not ever let such a positive outcome occur, which is sad.


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## phrelin

The only truly sad thing in this situation is the sad state of affairs of the patent system and the legal system, neither of which can cope with the real world results of Moore's Law. There were no quad core processors on the retail market when this lawsuit was originally filed. Both corporations involved have most certainly moved on technologically, probably by three generations, and economically, to incorporate streaming internet video.

In my mind, its comparable to the heirs of Richard Gatling wrangling in court with the heirs of Uziel Gal over automatic weapon design patents in a lawsuit filed in 1952.

As a corollary to Moore's Law, software designs become irrelevant after 18 months because of changes in hardware capability and therefore a legal system that can't resolve software patent issues in less than 12 months is equally irrelevant.


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## scooper

phrelin said:


> The only truly sad thing in this situation is the sad state of affairs of the patent system and the legal system, neither of which can cope with the real world results of Moore's Law. There were no quad core processors on the retail market when this lawsuit was originally filed. Both corporations involved have most certainly moved on technologically, probably by three generations, and economically, to incorporate streaming internet video.
> 
> In my mind, its comparable to the heirs of Richard Gatling wrangling in court with the heirs of Uziel Gal over automatic weapon design patents in a lawsuit filed in 1952.
> 
> As a corollary to Moore's Law, software designs become irrelevant after 18 months because of changes in hardware capability and therefore a legal system that can't resolve software patent issues in less than 12 months is equally irrelevant.


Have you read my signature ? 

I have maintained from the beginning that the Patent Office allowed a patent on something that should have been COPYRIGHTable only.

If the Patent and court system can't ratchet up their speed in resolving these kinds of issues - we need a new system. In a hurry.


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## dgordo

I have been trying to avoid this topic, but you guys are right on about the flaws of the patent system. I mentioned in one of the 15 topics about this case that I interned at the PTO during law school. Obviously I wasn't an examiner, but the attorneys would joke about how easy that job was. All they had to do was be able to say approved as they stamped a piece of paper. Every once in a while the federal circuit would issue a ruling commenting on how they were approving everything, so the examiners would deny a few applications but then it was back to business as usual.


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## TBoneit

Curtis52 said:


> "Retained by Irell & Manella and McKool Smith, counsel for TiVo, Dr. Ugone assessed the economic impact of EchoStar's patent infringement. *He developed a lost profits model that used a market penetration rate analysis to determine the portion of EchoStar's DVR sales that would have gone to TiVo had EchoStar not infringed the patent.* Dr. Ugone also estimated royalty damages based upon a reasonable royalty rate TiVo would have received had the company entered into a licensing agreement with EchoStar to use TiVo's technology. Dr. Ugone estimated total damages of $74 million or $87 million, depending upon the time period the jury found TiVo appropriately marked its DVRs with a patent designation.
> 
> The jury accepted Dr. Ugone's damages estimate, awarding TiVo $73.99 million in damages: $32.66 million in lost profits from lost sales of its set-top boxes."


Lost profits on set top boxes by Tivo? They probably saved money by not having to subsidize them in hopes of a financial return from monthly fees.

The biggest problem with Tivo boxes is the monthly fee per box. That stopped me from buying more than one especially once they dropped reasonable lifetime sub fees. Not to mention the loss in quality versus recording teh stream direct to the hard drive such a D* & E* do.


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## Greg Bimson

TBoneit said:


> The biggest problem with Tivo boxes is the monthly fee per box. That stopped me from buying more than one especially once they dropped reasonable lifetime sub fees. Not to mention the loss in quality versus recording teh stream direct to the hard drive such a D* & E* do.


Of course the monthly fee per box is TiVo's biggest problem. People do not want another monthly TV bill. Heck, with telephone - internet - TV triple-play, most people are starting to wrap more than one service into one bill. And TiVo itself would be destined to only be a small player in that market.

Of course, TiVo did develop the box for DirecTV to enable direct from the broadcast stream recording, but not so with Echostar. Echostar therefore was TiVo's largest direct threat at the time the lawsuit was started.


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## Nomo

Greg Bimson said:


> Of course the monthly fee per box is TiVo's biggest problem. People do not want another monthly TV bill. Heck, with telephone - internet - TV triple-play, most people are starting to wrap more than one service into one bill. And TiVo itself would be destined to only be a small player in that market.


The bigger problem is that you have DISH/DTV/AT&T U-Verse and countless others, bundling DVR's or promotionally offering them for free to new customers. Consumers can often find themselves having a DVR in their home without even planning it. And ask many, and they won't be able to tell you what they are paying a month for their DVR. It is all wrapped up in that bundle price. It puts TiVo at an extreme disadvantage. And when someone like DISH is found to have willfully infringed on TiVo's patent in order to take that advantage, that is something the courts really need to expediate through the system. Think of the alternative... if DISH didn't infringe they wouldn't have many of those 4 million customers because they wouldn't have had a DVR to offer.

An injunction is made to be equitable. Folsom had every right and duty to disable those boxes as he did.

His language is precise and indisputable, despite the weak arguments that the DISH cheerleaders in the room keep reiterating.


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## TBoneit

Or Dish could have come out with a 40, 80 or 120 hour Dishplayer. They possibly still could depending on how their license deal is with Microsoft. My suspicion is that they felt it would be cheaper to roll their own. 

It doesn't make one a Cheerleader to think that since according to the courts they infringed on Tivo patents there is also the possibility that they independently arrived at the same process. The courts would not look at that since it would not change any infringement that occurred. 

Tivo's own expert witness putting the best possible spin on it stated that the infringement cost Tivo 192,000 some subs. So using simple math the rest of the boxes should not be turned off and the court should instead set a mandatory license fee that is ongoing until the boxes are retired. To me that would be better for both sides. 

Others may feel differently


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## Greg Bimson

TBoneit said:


> Tivo's own expert witness putting the best possible spin on it stated that the infringement cost Tivo 192,000 some subs. So using simple math the rest of the boxes should not be turned off and the court should instead set a mandatory license fee that is ongoing until the boxes are retired. To me that would be better for both sides.


I also believe there should be a license fee, but I am unsure it should be mandatory. The reality is DISH/SATS does not want a licensing agreement, and they'd probably be forced to pay more than what they'd like.


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## jacmyoung

James Long said:


> At the time it was written, yes - infringement was continuing. Even DISH did not claim to stop infringing until a time after the appeals process began. (Other than the basic claim that they never infringed at all.)...


That is the whole point of the term "continued infringement", as soon as DISH declared the act of infringement had stopped, then in a contempt setting, the judges will be compelled to examine such claim from the infringer. You will not be able to find one, a single one of the contempt of injunction proceedings in which examining the alleged workarounds had not been taken place, no matter how sternly worded the injunctions were.

Tivo understood this, that is why they plunged themselves into the new software colorable difference debate, and that is also why Tivo said the impact of continuing infringement, not just the impact of past infringement up to the point DISH claimed the modification made them no longer infringe.

The question Tivo is asking it just that, what will be the impact of the *continued infringement*. For the court to determine the impact, of course the judge must first answer the question, does the continued infringement still exist? If the answer is not, then of course there is no impact of continued infringement, there of course were impact of past infringement, just no impact of continued infringement, when the continued infringement is not present.

I agree the patent system needs reform, but the standards established by the courts on contempt of injunction on infringement is not one of the issues needs reform, I also read many articles on reform in such area, not once had I come across one that discussed the contempt rules, the standards had been tested over and over, and the reason those standards continue to be true, is precisely because they work.


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## phrelin

jacmyoung said:


> I agree the patent system needs reform, but the standards established by the courts on contempt of injunction on infringement is not one of the issues needs reform, I also read many articles on reform in such area, not once had I come across one that discussed the contempt rules, the standards had been tested over and over, and the reason those standards continue to be true, is precisely because they work.


I guess I disagree. If on day 1 of the injunction, the infringement exists and if the injunction is enforced it all makes sense. But if on day 30 the appeals process has resulted in a stay, the injunction would only make sense if on day 120 the appeals court offers its findings. Under Moore's Law the whole thing becomes moot in a year or so, because the hardware everything is based on is junk (assuming a development time for that hardware/software package of at least a year). Injunctions that can be stayed for two years in this particular field are essentially irrelevant. It makes the court system look 30 years out of touch and silly.

IMHO software is like symphonic music. It should be copyrightable as an overall piece of music. But everyone understands that it's unlikely that if one sees a similar phrase in the oboe section arrangement in two compositions there probably isn't an enforceable copyright infringement.

Now if you have a newly invented instrument, it's patentable. Instructions for how to play it are copyrightable. But arrangements for it for pre-existing compositions are likely not copyrightable as it is just one more way of expressing the same piece of music, the same harmonies. When things are this complex, huffy lawsuits are viewed as questionable at best.

If you were around to use a Wang word processor in the 1970's or Visicalc in 1980 you know that software as created property is a concept similar to a one-legged stool. Such a thing exists, but don't rely on it for stable support. The court system operates like someone stuck a couple of cats under the one legged stool thinking it will make it stable.


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## Curtis52

phrelin said:


> IMHO software is like symphonic music. It should be copyrightable as an overall piece of music. But everyone understands that it's unlikely that if one sees a similar phrase in the oboe section arrangement in two compositions there probably isn't an enforceable copyright infringement.


Calling the infringed claims "software claims" is actually a misnomer. There isn't a single line of code in TiVo's patent. TiVo patented a process.


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## phrelin

Curtis52 said:


> Calling the infringed claims "software claims" is actually a misnomer. There isn't a single line of code in TiVo's patent. TiVo patented a process.


Yes, and in music the same phrase can be represented in 12 tonal keys which are heard only when played and the notation on paper is merely a representation in code - the phrase is a "process." Hence my simile.


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## Curtis52

phrelin said:


> Yes, and in music the same phrase can be represented in 12 tonal keys which are heard only when played and the notation on paper is merely a representation in code - the phrase is a "process." Hence my simile.


What about the Bessemer process for making steel, patented in 1855 ? That can be represented on paper too. Should that have been copyrighted instead?


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## jacmyoung

phrelin said:


> I guess I disagree. If on day 1 of the injunction, the infringement exists and if the injunction is enforced it all makes sense. But if on day 30 the appeals process has resulted in a stay, the injunction would only make sense if on day 120 the appeals court offers its findings. Under Moore's Law the whole thing becomes moot in a year or so, because the hardware everything is based on is junk (assuming a development time for that hardware/software package of at least a year). Injunctions that can be stayed for two years in this particular field are essentially irrelevant. It makes the court system look 30 years out of touch and silly.
> 
> IMHO software is like symphonic music. It should be copyrightable as an overall piece of music. But everyone understands that it's unlikely that if one sees a similar phrase in the oboe section arrangement in two compositions there probably isn't an enforceable copyright infringement.
> 
> Now if you have a newly invented instrument, it's patentable. Instructions for how to play it are copyrightable. But arrangements for it for pre-existing compositions are likely not copyrightable as it is just one more way of expressing the same piece of music, the same harmonies. When things are this complex, huffy lawsuits are viewed as questionable at best.
> 
> If you were around to use a Wang word processor in the 1970's or Visicalc in 1980 you know that software as created property is a concept similar to a one-legged stool. Such a thing exists, but don't rely on it for stable support. The court system operates like someone stuck a couple of cats under the one legged stool thinking it will make it stable.


Of course your argument makes sense only if the infringer is in contempt. If not then what's the beef? Patent reform I read about mostly had to do with the way the system works in granting a patent, the way a patent's validity is determined by the court in case of a formal complaint, then how infringement may be determined whether by a jury or by a judge, and how damages and injunctions may or may not be appropriate. Contempt of injunction proceedings as it is currently managed are under no pressure to reform.

And whatever the calls for reform, or the current actual patent reform legislations in the Congress, all appear to make some effort to limit the rights of the patentees, not the potential infringers.

I think the rules governing contempt of an injunction of patent infringement are well balanced. They guarantee the infringers' right to legitimate workaround without been subject to a summary contempt proceeding or cited in contempt at every turn, on the other hand, the winning patentees do not have to file a new lawsuit each time they think the infringers are still infringing on the same patent. Again I am talking about summary contempt proceedings only, all the patent reform debates are of entirely different issues, some I think are legit, others not.


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## phrelin

Curtis52 said:


> What about the Bessemer process for making steel, patented in 1855 ? That can be represented on paper too. Should that have been copyrighted instead?


When someone develops computer code, it is always for a "process." But to compare such code to an industrial process for making steel, I don't see it. I fully buy into the explanation of "intellectual property" in Wikipedia:


> Intellectual property rights are a bundle of exclusive rights over creations of the mind, both artistic and commercial. The former is covered by copyright laws, which protect creative works such as books, movies, music, paintings, photographs, and software and gives the copyright holder exclusive right to control reproduction or adaptation of such works for a certain period of time.
> 
> The second category is collectively known as "industrial properties", as they are typically created and used for industrial or commercial purposes. A patent may be granted for a new, useful, and non-obvious invention, and gives the patent holder a right to prevent others from practicing the invention without a license from the inventor for a certain period of time.


In a logical world I don't think the _*effect*_ of the code in a word processing program creates a patentable process like making steel. To me, the critical concepts here are expressed clearly as:


> A. "...gives the copyright holder exclusive right to control reproduction or adaptation of such works for a certain period of time.
> 
> vs
> 
> B. "...gives the patent holder a right to prevent others from practicing the invention without a license from the inventor for a certain period of time."


In my opinion "A." applies in virtually everything related to computers except hardware. Obviously, there are many who disagree with me. But after 38 years of writing code when I needed to, I still don't think I ever created anything patentable even if it was a unique way of effecting a process within the constraints of the hardware available.


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## phrelin

jacmyoung said:


> Of course your argument makes sense only if the infringer is in contempt. If not then what's the beef?.


I think when the injunction was issued it was valid. I think six months later Dish was in contempt, but the appellate court said otherwise while it dawdled around until the 501, for instance, was junk. Yeah, still usable for a year or two, but it's still junk that is not keeping anyone from buying a new TiVo.

Instead, the not-listed 722 along with the various non-TiVo recorders from other signal sources are keeping some folks from buy a new TiVo. So if Dish was not in contempt of the original injunction during the appeals proceedings, who cares if it is in contempt next week? It is almost irrelevant because the court system delays make the court system almost irrelevant. At this point, some kind of equity judgment involving money is the only logical fair outcome, not telling Dish to shut off someone's 501. By all logical standards, the 501 is fully depreciated and totally out of date. But the injunction as written is about turning off the 501.

But, hey, when did anyone related to the legal system in this case want a logical, fair and timely outcome? I sure don't see it. There's real contempt here, it's my contempt for the whole process.:nono2:


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## nobody99

phrelin said:


> I think when the injunction was issued it was valid. I think six months later Dish was in contempt, but the appellate court said otherwise while it dawdled around until the 501, for instance, was junk. Yeah, still usable for a year or two, but it's still junk that is not keeping anyone from buying a new TiVo.


While I completely agree with your sentiment that the patent system is mostly crap in today's world, I think you might have overlooked one point.

The system also serves as a deterrent to would-be infringers. If, in fact, the judges intent was to forever disable the already-placed DVRs (the same as an order to recall or destroy infringing products), that action serves as a warning beacon to other would-be infringers across all industries. If the consequences of infringement are that you don't get to keep the gains made by your infringement, the patent system has served a purpose.

But for future products and future sales where an infringer has made a change to the design, I wholeheartedly agree with you.


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## jacmyoung

phrelin said:


> I think when the injunction was issued it was valid. I think six months later Dish was in contempt, but the appellate court said otherwise while it dawdled around until the 501, for instance, was junk. Yeah, still usable for a year or two, but it's still junk that is not keeping anyone from buying a new TiVo.
> 
> Instead, the not-listed 722 along with the various non-TiVo recorders from other signal sources are keeping some folks from buy a new TiVo. So if Dish was not in contempt of the original injunction during the appeals proceedings, who cares if it is in contempt next week? It is almost irrelevant because the court system delays make the court system almost irrelevant. At this point, some kind of equity judgment involving money is the only logical fair outcome, not telling Dish to shut off someone's 501. By all logical standards, the 501 is fully depreciated and totally out of date. But the injunction as written is about turning off the 501.
> 
> But, hey, when did anyone related to the legal system in this case want a logical, fair and timely outcome? I sure don't see it. There's real contempt here, it's my contempt for the whole process.:nono2:


I think I finally see your point, a very good one. This is about trying to look into the frame of mind of the Court when it renders an injunction against further infringement. Again, historically, infringing products already placed with the end users were almost never ordered to be disabled.

Tivo talked about "recalls" but notice Tivo ever used an example, because they knew as soon as they did, such argument would have gone down the drain. Anytime there was a recall, it was never to recall infringing products from the end users, rather from the store shelves, i.e. products not sold, not already in the hands of the end users. So Tivo did not bother to cite any of the cases when the so called "recalls" occurred, because Tivo was only arguing about "Adjudicated Receivers" already in the hands of the end users. Notice also Tivo did not use the term "Infringing Products" as clearly marked in the letter of the injunction, rather their own term: "Adjudicated Receivers."

In any event, it is clear injunction has been a very useful tool, used to stop further infringement. If your logic can prevail in framing an injucntion, then injunction will be meaningless, if it can only prohibit things you know for certain that will infringe into the future, for quite some time, say more that the next 12 months. That to me is too high an order to meet, and also not fair to the winning patentee.

On the other hand, if you look at the past experience, it is clear that products already in the hands of the end users were almost never touched, so it only adds to DISH's contention that once those products already in the hands of the end users are no longer infringing, then there is even less reason to insist they still be rendered useless.

In almost all other cases, infringing products already in the hands of the end users were almost always allowed to *continue to infringe*, not being removed. Now due to the more broad nature of this injunction, DISH had gone beyond any of its predecessor infringers ever done, made those infringing products already in the hands of the end users *no longer infringe*. How the court in its reasonable mind can possibly insist those possible non-infringing DISH products still be removed, when the same courts never in the past insisted infringing products already in the hands of the end users to be removed in the first place?


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## phrelin

That's why money is the only fair remedy in this case. And a big amount would be fair.


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## nobody99

You must think that if you type a novel for every response, people will think you are smart. But it doesn't work that way.



jacmyoung said:


> Tivo talked about "recalls" but notice Tivo ever used an example,


Just curious, have you even read TiVo's contempt reply?



TiVo said:


> Courts have issued drastic remedies such as market recalls, even at the preliminary injunction stage.
> 
> See also Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552, 1564-65 (Fed. Cir. 1984) (proposing that district court order
> defendant to "recall the [infringing products] from its customers").
> 
> In a recent case, the court ordered willful patent infringers to "discard or destroy" their infringing products. Knorr-Bremse  Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 372 F. Supp. 2d 833, 842 (E.D. Va. 2005).
> 
> In Eli Lilly, the court prohibited a defendant from, among other things, "using . . . the data generated from the infringing, manufacture, use, or sale of the [infringing products]." Eli Lilly, 735 F. Supp. at 654. The court held the defendant in contempt for violating this provision by presenting data about the products at medical meetings. Id. at 658. *The Court rejected the defendant's KSM-based argument that "only a showing of 'post-injunction infringement' will support a finding of contempt." Id. at 661. Because the data itself - while perhaps not infringing - was the fruit of products adjudged to infringe, the court prohibited its use and found contempt when its order was ignored. *


----------



## James Long

Greg Bimson said:


> I also believe there should be a license fee, but I am unsure it should be mandatory. The reality is DISH/SATS does not want a licensing agreement, and they'd probably be forced to pay more than what they'd like.


Tivo also didn't want to have their patent infringed on ... allowing DISH to infringe and pay later with no "real" penalty seems biased. One penny is more than DISH wants to pay ... but I expect that they would accept a "forced" license - especially coupled with their belief that they no longer use that license (and can stop paying).


jacmyoung said:


> That is the whole point of the term "continued infringement", as soon as DISH declared the act of infringement had stopped, then in a contempt setting, the judges will be compelled to examine such claim from the infringer.


DISH has mentioned it in several filings on other topics, but they have yet to declare to the court that they are no longer infringing.

Instead of filing that (now withdrawn) motion asking for interpretation on their exchange program they SHOULD have filed a motion asking for interpretation of the injunction based on their new software not infringing. They SHOULD have taken the offense ... approaching the court and saying what was done instead of offering alleged "new software" as a defense for not disabling their DVRs.


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## jacmyoung

James Long said:


> ...DISH has mentioned it in several filings on other topics, but they have yet to declare to the court that they are no longer infringing...


I don't know how you could possibly arrived at this conclusion, when starting from the briefing before the 5/30 meeting, the loudest thing DISH has been saying is their "Infringing Products" no longer infringe on Tivo's patent.


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## jacmyoung

phrelin said:


> That's why money is the only fair remedy in this case. And a big amount would be fair.


So you are basically advocating the total abandoning of injunctions as a tool? Good luck! There is no way the Court can anticipate a fair amount of time for any conceivable future infringement acts if this is what you demand it does in framing an injunction.


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## scooper

I think the USPTO needs to be much more diligent in granting patents - (/sarcasm) like actually researching them (/end sarcasm).


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## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> ...DISH has mentioned it in several filings on other topics, but they have yet to declare to the court that they are no longer infringing...
> 
> 
> 
> I don't know how you could possibly arrived at this conclusion, when starting from the briefing before the 5/30 meeting, the loudest thing DISH has been saying is their "Infringing Products" no longer infringe on Tivo's patent.
Click to expand...

Perhaps some day you will read my post and understand.

It's all there in whatever color scheme you have chosen.


----------



## jacmyoung

scooper said:


> I think the USPTO needs to be much more diligent in granting patents - (/sarcasm) like actually researching them (/end sarcasm).


I guess the same can be said about our federal agencies needing to be more diligent in things more important than granting patents, how have they been doing so far? And more importantly what are our expectations of them?

Honestly reading those boring court rulings has given me new found appreciation for our government in that I actually realized at least one branch of our government seems to still know what the heck they are talking about


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## TBoneit

Greg Bimson said:


> I also believe there should be a license fee, but I am unsure it should be mandatory. The reality is DISH/SATS does not want a licensing agreement, and they'd probably be forced to pay more than what they'd like.


Well I know what you are saying OTOH this is life and not what we'd like it to be.

News scroll today stated that Washington Mutual has posted it's largest ever single quarterly loss, $3.3 Billion.

I'm paying more than I'd like to pay for energy costs, Gas for the car, Gas & electric for the house. I'm not being forced to pay that I suppose I could walk to work, Kill the electric and Gas to the house but who wants to live like that. I don't like the way food prices are going either.

So if E* wouldn't like the rates to be forced on them then they can negotiate for a better rate now or plan on an appeal.

Life's a Beach, then you find out sand got in the works.


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## Greg Bimson

TBoneit said:


> Well I know what you are saying OTOH this is life and not what we'd like it to be.


Good point. It's just that I believe that the courts usually don't like to get involved in forcing financial terms. I realize each side can present its case to get the terms they'd like, but that can get even a little crazy.


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## scooper

jacmyoung said:


> In any event, it is clear injunction has been a very useful tool, used to stop further infringement. If your logic can prevail in framing an injucntion, then injunction will be meaningless, if it can only prohibit things you know for certain that will infringe into the future, for quite some time, say more that the next 12 months. That to me is too high an order to meet, and also not fair to the winning patentee.


In terms of computer software - an injunction is less than meaningless. There is ALWAYS a way around a patent / copyrighted software.



jacmyoung said:


> On the other hand, if you look at the past experience, it is clear that products already in the hands of the end users were almost never touched, so it only adds to DISH's contention that once those products already in the hands of the end users are no longer infringing, then there is even less reason to insist they still be rendered useless.
> 
> In almost all other cases, infringing products already in the hands of the end users were almost always allowed to *continue to infringe*, not being removed. Now due to the more broad nature of this injunction, DISH had gone beyond any of its predecessor infringers ever done, made those infringing products already in the hands of the end users *no longer infringe*. How the court in its reasonable mind can possibly insist those possible non-infringing DISH products still be removed, when the same courts never in the past insisted infringing products already in the hands of the end users to be removed in the first place?


And this one point is my biggest reason why Judge Fulsom's injunction is wholly inappropriate - there has NEVER been such a penalty applied as to turn off the infringing devices already in enduser's hands. Even the Footprint lawsuit had no way to enforce the patch actually being applied.


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## spear61

scooper said:


> And this one point is my biggest reason why Judge Fulsom's injunction is wholly inappropriate - there has NEVER been such a penalty applied as to turn off the infringing devices already in enduser's hands. Even the Footprint lawsuit had no way to enforce the patch actually being applied.


Don't think it is Fulsom's injunction anymore. When the appeals court upheld it, it became theirs.


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## jacmyoung

spear61 said:


> Don't think it is Fulsom's injunction anymore. When the appeals court upheld it, it became theirs.


Not true, the appeals court had said over and over they do not interfere with how the lower courts frame their injunctions, the appeals court also said their job is to ensure the uniform standards are followed *if* and only *if* a contempt issue is in front of them.

If the plaintiff doesn't bring up a contempt ever (about the majority of the cases), a broad injunction will be left alone without interference, only when contempt of the court becomes an issue, the standards will then be applied when it comes to finding a violation.

Yes it is and will always be Judge Folsom's injunction, but a violation of his injunction, if ever, can be appealed, and once appealed, the issue of the violation will in a sense be "the appeals court's violation" because the apeals court must apply all the relevant standards it had issued to determine if the ruling is appropriate or not.


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## nobody99

scooper said:


> In terms of computer software - an injunction is less than meaningless. There is ALWAYS a way around a patent / copyrighted software.


And if that's what the injunction was against, we wouldn't be having this discussion. But the injunction is against infringing _devices_. The injunction doesn't once mention software. The patent itself doesn't mention software AFAIK.

Regardless of how much this sucks, DISH had a every opportunity to ask the judge to reword the injunction. They had every opportunity to ask the appeals court to reword the injunction. The problem for DISH is that the injunction stands now on adjudicated devices. They can't change the meaning of something already judged. As Greg has pointed out numerous times, there is a procedure for all of this, and that procedure is there for a reason. One side doesn't just get to make up the rules.

While we can all blame the patent system for a lot of this, DISH's lawyers have a lot of blame too if contempt is granted.


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## jacmyoung

scooper said:


> In terms of computer software - an injunction is less than meaningless. There is ALWAYS a way around a patent / copyrighted software.


I see your point. But remember not everyone will try to workaround a software solution, in most cases parties indeed settled first. So injunctions as a big stick waved in front of the infringers still work for the most part.



> And this one point is my biggest reason why Judge Fulsom's injunction is wholly inappropriate - there has NEVER been such a penalty applied as to turn off the infringing devices already in enduser's hands. Even the Footprint lawsuit had no way to enforce the patch actually being applied.


Well the same "penalty" was applied in the Footprint 2.0 case didn't it? Yes it did seem that injunction specified the item referring to the trial case, but as I said before, based on the appeals court rule in framing an injunction, *anything specifically enjoined in the letter of the injunction must be those already adjudicated or admitted during the trial or by the court*, therefore *The DVR functions* enjoined in Judge Folsom's injunction must be the ones already adjudicated, admitted during the trial, by default, it went without saying.

Anyone insists it means more than what was adjudicated during the trial, such as the DVR functions under the new software, which were never adjudicated, will be very disappointed in the end. There is no real difference between this injunction, and the Footprint 2.0 injunction, the enjoined items, in that case the Footprint 2.0 Service, and in this case The DVR Functions, both have to refer to what had been already tried in the courts, not anything not adjudicated yet.

Anything not adjudicated yet is coverd under the "colorable difference" rule. If one can understand that, then it will be easy to understand why even Tivo was eventually drawn into the new software colorable difference debate, it is unavoidable.


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## nobody99

jacmyoung said:


> There is no real difference between this injunction, and the Footprint 2.0 injunction


Uhm, yeaaaaaahhh. M-kay. Sure. Can I have what you are smoking?


----------



## nobody99

> making, using, selling, offering for sale, or importing into the United States the patented inventions claimed in claims 1, 3, 5, and 9 of the '703 patent...*extended to Footprint 2.0 service, as configured and described at trial*.


Let me also point something out that you seem to missing. This is a *service.* When a customer signs up for this *service*, they are given urls for elements (graphics, documents, etc) to put into their web sites. The servers are *not owned by the customer* they are owned by the *service provider*.

When a web page is pulled up, the *service* goes out and finds the closest server to find the element referenced on the web page. Since the *service* runs each time a web page is called up, it is, in effect, a new instance of the use of that patent.

Let me try an analogy. Suppose you were tired of misspelling words on a internet message board. You have two options: buy a dictionary, or use a web-based dictionary service (dictionary.com).

If you buy the dictionary, it's yours. The sale is complete.

If you use dictionary.com, you know nothing of the equipment that provides the service, it just gives you a definition of the word. But you own nothing.

Let's say a book binding company won a patent infringement suit against the dictionary publisher. Let's say that the court ordered them to recall all dictionaries and destroy them. That would be our case.

Let's say that dictionary.com lost a suit for how it parses your request. They have an injunction to destroy the software _as described and configured at trial_ that does the parsing. What do you know, 14 days later, a new version is installed. Customers can again pose *new requests* to the server.

There is a big difference between a service and a device. But I'm not surprised you don't see it.


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## phrelin

jacmyoung said:


> So you are basically advocating the total abandoning of injunctions as a tool? Good luck! There is no way the Court can anticipate a fair amount of time for any conceivable future infringement acts if this is what you demand it does in framing an injunction.


I advocate the concept that an infringement in this kind of service oriented operation can only be protected by protecting the revenue stream. I don't think it matters if Dish infringes, as long as the value is transferred daily from Dish's bank account to TiVo's.

If a court enforced daily transfer stopped only after the same court found that the infringing has stopped - you know, a year for a jury trial, 5 years for appeals, 1 year of additional time wasting - with no required return of any payment made before the end of the new process, the protection would be real. It would be a true "infringe at your own risk" structure. What's needed is a combination of immediate equity judgement and financial penalty that continues to accrue to the winning plaintiff. Right now it is a "get rich" scheme for the legal community.


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## James Long

nobody99 said:


> Let's say a book binding company won a patent infringement suit against the dictionary publisher. Let's say that the court ordered them to recall all dictionaries and destroy them. That would be our case.


Not quite. There has been no recall and destroy order ... just disable the DVR functionality. The dictionary example also fails because the primary function of the infringing product is a dictionary - without definitions the dictionary is useless. The primary function of DISH's DVRs is to receive and satellite signals - without DVR functionality the receiver still has a function.

But, let's say that this is an electronic book with network connectivity and remote updates (Amazon's Kindle, as an example). Say that Kindle had a built in dictionary ... so one could look up the meaning of words in the downloaded books and articles. Say that the dictionary process was patented - Amazon believed that they were using a slightly different process but a jury has ruled that the dictionary in the Kindle violates someone's patent.

Amazon informs the court that it IS possible to disable the dictionary function via the network - and the court orders as part of the injunction the disabling of the dictionary function on all Kindle devices (instead of a recall or destruction). Kindles would continue to have _*a*_ function after the removal of the dictionary - but they would not have _*the*_ function that violates the patent.

Note that the court order was not to change dictionary software it was to remove the dictionary function - and THAT is where we are with Tivo vs Echostar.

After following the specific letter of the court order there should be no dictionary function on Kindles ... nor DVR functionality on the named receivers (and others only colorably different).

If Amazon wanted to introduce a new portable reading product with dictionary function they would be free to do so (with separate court action to decide if the new product infringed, was only colorably different or was clear of violation). If they recalled and exchanged all of their Kindles for the new product they may even convince a court that the product had actually changed. But if they merely claimed to have downloaded new dictionary software they would be in the same place that DISH is in ... in contempt for not following the court order.


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## jacmyoung

phrelin said:


> I advocate the concept that an infringement in this kind of service oriented operation can only be protected by protecting the revenue stream. I don't think it matters if Dish infringes, as long as the value is transferred daily from Dish's bank account to TiVo's.
> 
> If a court enforced daily transfer stopped only after the same court found that the infringing has stopped - you know, a year for a jury trial, 5 years for appeals, 1 year of additional time wasting - with no required return of any payment made before the end of the new process, the protection would be real. It would be a true "infringe at your own risk" structure. What's needed is a combination of immediate equity judgement and financial penalty that continues to accrue to the winning plaintiff. Right now it is a "get rich" scheme for the legal community.


What you are advocating here is already covered by the Court too, it is called a *preliminary injunction*. In such cases a bound is posted by the defendant to the plaintiff. What is different is that if in the end the defendant prevails, the plaintiff must refund the money, if the plaintiff wins, they get to keep the money and plus any enhanced damages and interest.

What you are advocating of course cannot pass the legal challenge, because if the defendant ends up not guilty as charged, on what legal ground can the court seize the money from them and give it to the plaintiff?


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## dgordo

jacmyoung said:


> What you are advocating here is already covered by the Court too, it is called a *preliminary injunction*. In such cases a bound is posted by the defendant to the plaintiff. What is different is that if in the end the defendant prevails, the plaintiff must refund the money, if the plaintiff wins, they get to keep the money and plus any enhanced damages and interest.
> 
> What you are advocating of course cannot pass the legal challenge, because if the defendant ends up not guilty as charged, on what legal ground can the court seize the money from them and give it to the plaintiff?


Its an equitable remedy called a constructive trust.


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## jacmyoung

James Long said:


> ...After following the specific letter of the court order there should be no dictionary function on Kindles ... nor DVR functionality on the named receivers *([and] others only colorably different).*


I almost missed this one. Indeed if the interpretation from the Tivo supporters are taken, that is *"the DVR functionalities"* refer to *all DVR functions*, whether based on the old software, or the new software, or any other software that may appear in the future.

Then you are correct, not only the *named receivers* but *others only colorably different* receivers will have to be disabled of their DVR functions, *without* any examination of the new software.

So as an example, a DVR622 can be brought into another contempt proceeding in order to determine if the 622 hardware is more than colorably different than the 942 hardware, and if the answer is no, then the 622 will have to be disabled, regardless if it uses the new software or not. Yes the new software will not be examined at all, for both the DVRs on the list, and those newer models that are not on the list but only colorably different.

I hope that is not the conclusion you intended, why? Because the new software is in fact examined right now, and the new software is what Tivo wanted to be tried too, if not in a contempt proceeding, for sure in a new trial.

Why would Tivo do that if according to you the new software will not be an issue at all, whether it is for the DISH DVRs on the list, or the DISH DVRs not on the list? What's the point of even mentioning the new software, why would Tivo even care about DISH's new suit in DE? It is about nothing but the new software isn't it?

Why should Tivo even care if DISH had a new software or not? Is Tivo so stupid to pay the lawyers big bucks to go after something that has no bearing on this case at all?


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## Greg Bimson

jacmyoung said:


> So as an example, a DVR622 can be brought into another contempt proceeding in order to determine if the 622 hardware is more than colorably different than the 942 hardware, and if the answer is no, then the 622 will have to be disabled, regardless if it uses the new software or not. Yes the new software will not be examined at all, for both the DVRs on the list, and those newer models that are not on the list but only colorably different.


Actually, that is quite incorrect.

For TiVo to go after the 622/722, 612 and 211 (collectively the "New Unadjudicated Products"), TiVo needs to have them found "not more than colorably different" from the "Infringing Products", for violations of an injunction against infringements. At that point, TiVo would then ask Judge Folsom to issue another injunction; this time to disable the "New Unadjudicated Products".

The only receivers listed in the disable order are the "Infringing Products", which are the eight named models tried before Judge Folsom in April 2006. Only the enjoin continuing infringement order contains the "and not more than colorably different" clause, so another injunction would have to be issued to disable the "New Unadjudicated Products".


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## Greg Bimson

jacmyoung said:


> Why would Tivo do that if according to you the new software will not be an issue at all, whether it is for the DISH DVRs on the list, or the DISH DVRs not on the list? What's the point of even mentioning the new software, why would Tivo even care about DISH's new suit in DE? It is about nothing but the new software isn't it?


Is the software part of a product that has been adjudicated as infringing? TiVo is correct to point out to the Delaware court that this issue is already being presented in the Texas court. After all, it is TiVo that wants to keep all discussion of infringement in the Texas court. And surprisingly enough, maybe TiVo has a master plan as well.


jacmyoung said:


> Why should Tivo even care if DISH had a new software or not? Is Tivo so stupid to pay the lawyers big bucks to go after something that has no bearing on this case at all?


Like I said, they are setting up for the next case.

Maybe you should reverse the question: if DISH/SATS is found in contempt after all is said and done, not only will DISH/SATS be paying for their lawyers (and more than likely TiVo's counsel), but stiff penalties and enhanced damages. Would that imply DISH/SATS is "so stupid to pay the lawyers big bucks to go after something that has no bearing on this case at all"?


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## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> ...After following the specific letter of the court order there should be no dictionary function on Kindles ... nor DVR functionality on the named receivers *([and] others only colorably different).*
> 
> 
> 
> I almost missed this one. Indeed if the interpretation from the Tivo supporters are taken, that is *"the DVR functionalities"* refer to *all DVR functions*, whether based on the old software, or the new software, or any other software that may appear in the future.
Click to expand...

If you are going to change what I write then your interpretation is meaningless ... just like when you change words in the injunction to things that Judge Folsom did not write - it makes whatever you say about what you are "quoting" irrelevant.

Greg has handled your misconceptions about where colorably different receivers fit in this case, so I will not repeat his words. Suffice it to say that you misunderstood what I wrote. :nono2:


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## jacmyoung

James Long said:


> If you are going to change what I write then your interpretation is meaningless ...


Please tell me exactly where did I change what you wrote? Did you not imply (correctly) that both the DVRs on the list, and those only colorably different...shall be viewed in the same breadth, that is *the DVR functions* on them, regardless if they have old or new software, must be disabled?

Greg was saying something from his own interpretation, which is *slightely* different than what you were saying. Until now, until you brought it up, we have not touched on the DVRs not on the list, but your above post actually correctly pointed out our oversight, because indeed, all DVRs on the list, and all DVRs not on the list but only colorably different, are treated the same.

Therefore, even when the time comes to discuss the contempt issue of the 622s, 722s, and any and all other DISH DVRs, as long as they may later be deemed only colorably different, will have to be disabled, the new software issue will not be part of it, because the new software issue is not part of the DVRs on the list as you have all claimed. The DVRs will all be treated the same, as long as either they are no the list, or they are only colorably different than the ones on the list.

Of course if the DVRs not on the list, if some of them later can be deemed more than colorably different, they will not have the DVR functions disabled, regardless what software they are running, correct?

So my question still is, then why even bother to discuss the new software, any software? What difference will it make by Tivo discussing the new software?


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## James Long

jacmyoung said:


> Please tell me exactly where did I change what you wrote?


If you can't read your own post I see no reason to waste my time.

Perhaps you were just doing a grammar flame ... but it is irrelevant - Greg expressed the correct interpretation. For you to claim that I meant otherwise is utterly incorrect.

Keep editing your reply ... your changes are irrelevant as I'm replying to what was there when I started my reply.

Perhaps you should think before you post so we won't have to keep going back to see what you changed.


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## jacmyoung

James Long said:


> If you can't read your own post I see no reason to waste my time.
> 
> Perhaps you were just doing a grammar flame ... but it is irrelevant - Greg expressed the correct interpretation. For you to claim that I meant otherwise is utterly incorrect.
> 
> Keep editing your reply ... your changes are irrelevant as I'm replying to what was there when I started my reply.
> 
> Perhaps you should think before you post so we won't have to keep going back to see what you changed.


It was an honest question, I did not try to flame you, where did you get that impression? Did you not mean the DVRs on the list ([and] others only colorably different)?

You only need to answer whether I was wrong for intepreting it this way before accusing me of flaming, which there is no evidence of.


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## Greg Bimson

jacmyoung, if there are DVR's found "not more than colorably different" during a contempt hearing for violations of an injunction against infringement, then the judge will issue a new injunction to enjoin sales and service of those DVR's. That is what James Long is stating. It does take a couple of steps to get to that point, but any found infringing and not colorably different will be subject to a disable order once issued.


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## James Long

So far Tivo has left the "only colorably different" issue alone and the court is focusing on the first issue - infringement on the face of the injunction. Per the May filings Tivo WOULD like to look at the deeper issues, but that will require discovery (to determine if the ViP series receivers infringe). But that isn't where we are on September 4th.

(Just as in the fictional Kindle example where turning off the dictionary in 'only colorably different' Kindle like products would be an eventual result. BTW: That example was intended to bring the dictionary example in line with this case NOT to state anything about September 4th.)


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## Curtis52

Greg Bimson said:


> jacmyoung, if there are DVR's found "not more than colorably different" during a contempt hearing for violations of an injunction against infringement, then the judge will issue a new injunction to enjoin sales and service of those DVR's.


Selling devices only colorably different in the context of the infringed claims is a prima facie violation of the injunction. That's how Dish can be found in contempt on the newer DVRs.


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## Greg Bimson

Curtis52 said:


> Selling devices only colorably different in the context of the infringed claims is a prima facie violation of the injunction. That's how Dish can be found in contempt on the newer DVRs.


But that's where the "violations of an injunction against infringements" comes into play; the accused DVR's would have to be evaluated for colorable difference. They would have to be not more than colorably different and would also have to be found infringing upon the same infringed claims.

Gut check: a DP-501 with old software and a DP-501 with new software do the exact same thing, just thru an unidentified, different process. Therefore, if found infringing, they most likely would be no more than colorably different, as they do the exact same thing.


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## Curtis52

Greg Bimson said:


> But that's where the "violations of an injunction against infringements" comes into play; the accused DVR's would have to be evaluated for colorable difference. They would have to be not more than colorably different and would also have to be found infringing upon the same infringed claims.


My point is that the injunction already covers those devices.


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## Greg Bimson

Curtis52 said:


> My point is that the injunction already covers those devices.


But only covers sales, not disabling. Our point is for DISH/SATS to be forced to disable the New Unadjudicated Devices, Judge Folsom will have to issue another injunction to disable those devices.


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## Curtis52

Greg Bimson said:


> But only covers sales, not disabling. Our point is for DISH/SATS to be forced to disable the New Unadjudicated Devices, Judge Folsom will have to issue another injunction to disable those devices.


Here is what you said:


> then the judge will issue a new injunction to enjoin sales and service of those DVR's.


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## James Long

Re: ViPs ... (including 622s, 722s, 211s, 222s etc.)

The key for other receivers is the actual motion filed ... Tivo did not ask the court to include DISH's other products under the injunction (at this time). Their complaint in this motion for contempt was basically on the third leg: Not disabling the DVR Functionality.

Tivo has not been paid (although cash will be flowing soon, subject to repayment if DISH wins on SCOTUS appeal) and Tivo has not yet made a motion involving the ViP products (mentioned in the status hearing filings but NO MOTION for judgement filed with the court - yet). September 4th is all about disabling the DVR functionality.


Greg Bimson said:


> Gut check: a DP-501 with old software and a DP-501 with new software do the exact same thing, just thru an unidentified, different process. Therefore, if found infringing, they most likely would be no more than colorably different, as they do the exact same thing.


When we get to that point ...
The injunction wording is against the named receivers and those "only colorably different". The other variations on "colorably different" can be confusing ... we've seen "more than colorably different" and "no more than colorably different". I've been trying to use "only colorably different" as much as possible, as that is the injunction wording.

As to the question of if a DP-501 with (alleged) new software is "only colorably different" than the DP-501 with judged infringing software --- gut level says YES. A "new" DP-501 is "only colorably different" from the named DP-501. And phrased that way, that "new" DP-501 is automatically included as an infringing product.

Personally I hope I'm wrong ... no, I don't hope that someone TELLS me I'm wrong (I don't need to hope for that) but I hope that the judge rules in favor of DISH. But I DO NOT expect the September 4th hearing to end in DISH's favor.
Why?
1) If the judge looks at the "new software" claim as continued infringement under the second part of the injunction (part 1 is pay, part 3 is disable, part 2 is stop infringing) the "new" products are "only colorably different" from the old. The color comes from the "new software" allegedly downloaded.
2) The third part of the injunction was a clear DISABLE ... until the expiration of the patent ... on the named products. DISH did not disable their products until the expiration of the patent. (And the court knows that the injunction was against products, not the software.)
3) Of all the cases presented where the "boss court" overruled the district court and reversed the contempt ruling - wait for it - the district court held the plaintiff in contempt. Even if it is the wrong decision, it is more likely that the district court will hold DISH in contempt. (Find the cases where the district court found for the plaintiff using any of the "president setting" cases presented or where the appeals court upheld an appeal of the 'not in contempt' ruling.) It seems that district courts error on the side of the plaintiff.


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## jacmyoung

James Long said:


> So far Tivo has left the "only colorably different" issue alone and the court is focusing on the first issue ...


So far we don't know what will the court focus on on 9/4, the only thing we do know is Tivo has plunged themselves into the "only colorable different" issue.


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## jacmyoung

James Long said:


> ...It seems that district courts error on the side of the plaintiff.


Based on all the reading of the prior cases, many of them I did not cite because they were "irrelevant", my impression is the opposite, in finding a contempt, the district courts always erred on the side of the defendants.


----------



## jacmyoung

James Long said:


> ...1) If the judge looks at the "new software" claim as continued infringement under the second part of the injunction ... the "new" products are "only colorably different" from the old. The color comes from the "new software" allegedly downloaded...


Did the court already decide that the new software is only colorably different? I don't think so.


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## James Long

jacmyoung said:


> So far we don't know what will the court focus on on 9/4, the only thing we do know is Tivo has plunged themselves into the "only colorable different" issue.


No, they have not ...
From the footnote on page # 8 (page 12 of the PDF) of their Motion for Contempt:
TiVo's preliminary review of EchoStar's allegedly modified software suggests that it is not colorably different from EchoStar's adjudged infringing software and that it continues to infringe the Barton Patent. Pursuant to the May 30 status conference, TiVo plans to address this issue separately, if necessary, after conducting a limited amount of discovery. Transcript, May 30, 2008, at 16-18. TiVo also plans to address separately, if necessary, EchoStar's new DVR products with model numbers that were not specified in the Permanent Injunction. TiVo believes these products are not colorably different from the Infringing Products and continue to infringe the Barton Patent, and therefore may constitute another ground for which EchoStar should be held in contempt.​Right there in black and white for anyone to read ... "*TiVo plans to address this issue separately, if necessary, after conducting a limited amount of discovery.*"

As I clearly stated, "_So far Tivo has left the "only colorably different" issue alone and the court is focusing on the first issue ..._" September 4th is 100% about what is on the docket ... Tivo's Motion for Contempt. The rest is to come another day (if necessary).


jacmyoung said:


> Did the court already decide that the new software is only colorably different? I don't think so.


Duh ... the court has not ruled EITHER WAY on that issue. No ruling doesn't automagically give the win to anyone (which is why I wrote what I wrote) ... if the court looks at that and if they decide ... etc.


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## jacmyoung

Greg Bimson said:


> jacmyoung, if there are DVR's found "not more than colorably different" during a contempt hearing for violations of an injunction against infringement, then the judge will issue a new injunction to enjoin sales and service of those DVR's. That is what James Long is stating. It does take a couple of steps to get to that point, but any found infringing and not colorably different will be subject to a disable order once issued.


But what if there are DVRs found more than colorably different, then what happens to them?

As Curtis already said, there will not be the need for a new injunction for the DVRs not on the list be only colorably different. They are coverd.

But my question now is what will happen to the DVRs not on the list and also found more than colorably different?


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## jacmyoung

James Long said:


> ...As I clearly stated, "_So far Tivo has left the "only colorably different" issue alone and the court is focusing on the first issue ..._" September 4th is 100% about what is on the docket ... Tivo's Motion for Contempt. The rest is to come another day (if necessary).


Of course you did clearly say so, but I disagreed, because Tivo did not leave the "only colorable difference" alone, they in fact plunged themselves into the new software colorable difference debate, point by point with DISH, in the most recent 10-page response to the DISH's 20-page response.

And I also said we don't know what exactly will the court focus on on 9/4, because Tivo devoted a lot of space in that 10-page response to the new software colorable difference debate, point by pont with DISH, so my guess is on 9/4 the court will be forced to address this issue, because both parties are now addressing this issue.


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## James Long

jacmyoung said:


> As Curtis already said, there will not be the need for a new injunction for the DVRs not on the list be only colorably different. They are coverd.
> 
> But my question now is what will happen to the DVRs not on the list and also found more than colorably different?


"Only colorably different" = this injunction, not "only colorably differerent" = new case.


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## jacmyoung

James Long said:


> "Only colorably different" = this injunction, not "only colorably differerent" = new case.


You need to tell Greg this, he disagreed with you on the above, not me. He said a new injunction will have to be issued for those DVRs not on the list be only colorably different.

You also quoted my second question, but did not answer it, what will happen to the DVRs not on the list but found *more than* colorably different? I guess you did answer it, no contempt, is that right?


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## James Long

jacmyoung said:


> Of course you did clearly say so, but I disagreed, because Tivo did not leave the "only colorable difference" alone, they in fact plunged themselves into the new software colorable difference debate, point by point with DISH, in the most recent 10-page response to the DISH's 20-page response.


Tivo only mentioned colorably different twice in their motion ... once in that footnote I quoted. They "covered all bases" in their Reply to Opposition ... by mentioning it ONCE more on page 10. Hardly a point by point debate.

Unless you're talking about some other document.


jacmyoung said:


> You need to tell Greg this, he disagreed with you on the above, not me. He said a new injunction will be issued for those DVRs not on the list be only colorably different.
> 
> 
> 
> Perhaps ... the court needs to alert DISH in some way that those other products are included - an injunction naming the additional models would be a fairly clear notice. The two thoughts are not in clonflict.
> 
> 
> 
> You also quoted my second question, but did not answer it, what will happen to the DVRs not on the list but found more than colorably different?
> 
> 
> 
> No, you're just not reading again. "Only colorably different" this case ... otherwise new case.
> 
> Click to expand...
Click to expand...


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## jacmyoung

James Long said:


> ...No, you're just not reading again. "Only colorably different" this case ... otherwise new case.


Good even though you did not answer it directly I take it as saying if the DVRs not on the list but found *more than* colorably different, DISH can use them anyway they want without a contempt.

Next question, what if DISH decides to go back to use the old software on those DVRs that are more than colorably different, will they be in contempt or not?


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## James Long

jacmyoung said:


> Good even though you did not answer it directly I take it as saying if the DVRs not on the list but found *more than* colorably different, DISH can use them anyway they want without a contempt.


I answered it HONESTLY ... I'm not going to be weasled into saying your words. If you don't understand an honest answer I can't help you. Don't take it to mean ANYTHING more than "new case".



> Next question, what if DISH decides to go back to use the old software on those DVRs that are more than colorably different, will they be in contempt or not?


Which receivers and what 'old' software? We're so deep down a hypothetical rabbit hole that you have hit irrelevant again. Do you not what to discuss THIS case?

If a receiver is ruled not "only colorably different" (or "more than colorably different") it is a new case. Simple sweet. What happens AFTER that dramatically affects your hypothetical. Has Tivo sued DISH on the new receivers after the "more than colorably different" ruling? Was infringement found in the new case? Or did Tivo simply wait until DISH (allegedly) changed "back" to infringing software to refile a complaint claiming that the previously "more than colorably different" receivers were now "only colorably different".

If you want to present irrelevant hypotheticals at least present the case in full.

BTW: I believe that all Tivo needs to do to include ViP models as "only colorably different" is to prove that at some point in time they used the infringing code. That proof will not be easy. I don't believe that "a DVR is a DVR is a DVR" regardless of model or software is going to get the ViPs included. But that is not the point where Tivo or the court is at in the case.


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## jacmyoung

James Long said:


> ...BTW: I believe that all Tivo needs to do to include ViP models as "only colorably different" is to prove that at some point in time they used the infringing code. That proof will not be easy. I don't believe that "a DVR is a DVR is a DVR" regardless of model or software is going to get the ViPs included. But that is not the point where Tivo or the court is at in the case.


Fine of you refuse to respond to my above question I will not insist.

But I have news for you on this one you said above, if all Tivo needs to prove that all the DVRs not on the list are only colorably different is to prove they at one time or another used the old software, then Tivo has already the proof, because DISH themselves never denied that those newer DVRs used the old software, DISH said themselves, right before the injunction was in full force, all their DVRs, on the list or not on the list, had the new software downloaded to replace the old, infringing software.

Are you prepared for the day that all DISH's DVRs to be disabled? You know including the 622s and 722s? Because Tivo does not need any more proof.


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## James Long

We're no where near that point, jacmyoung. Why borrow problems from the future?

That is the problem with rampant hypotheticals. The real case is what people should be concerned with ... not with what MAY happen IF Tivo ever presses the issue on the ViPs. Tivo doesn't have the proof ... and if you think they do perhaps you can be more accurate as to which filing you are talking about?

BTW: Have you changed sides?


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## Greg Bimson

James Long said:


> "Only colorably different" = this injunction, not "only colorably differerent" = new case.





jacmyoung said:


> You need to tell Greg this, he disagreed with you on the above, not me. He said a new injunction will have to be issued for those DVRs not on the list be only colorably different.


A new injunction will have to be issued to DISABLE the 622/722, 612, 222, etc., as they are not part of the current disable order. Curtis caught me on that one, since they would be considered part of the enjoining sales order in the injunction.


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## TBoneit

just curious, Tivo says that Dish infringed on their patents. Did the infringed patents cover all DVR functionality? To put it another way since I do not remember all the details at this time. Does dish really only have to disable the infringed functions? 

Pulling a function out of the air, If playback while recording is involved how would that be considered the same as playback the next day? At this point in time the hardware issue is parked on the shoulder waiting for a tow truck to take it in for repair by Tivo and the courts as I understand it. This would seem to indicate that only software functions that were found to infringe can be enforced and other functions should work, but then I am speculating of course.


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## CuriousMark

TBoneit said:


> just curious, Tivo says that Dish infringed on their patents. Did the infringed patents cover all DVR functionality? To put it another way since I do not remember all the details at this time. Does dish really only have to disable the infringed functions?


What was left standing are two very broad patent claims that the court's claim construction even further broadened. These claims are for a DVR process, whether implemented in hardware, software or any combination thereof. (They are referred to as software claims, but that description only clouds their reach) These claims do NOT cover all DVR functionality, but they do cover much more than some people would like to believe. They cover enough more that Echostar chose to characterize a broad interpretation of them as a grab for a DVR monopoly by TiVo. Those are Echostar's words, and I choose to interpret them to mean that they are very afraid of these claims.

In order to disable the "infringing functions" enough to not infringe these claims, either directly or via the doctrine of equivalents, they may have to do a lot more than they claim to have done so far. For instance, hardware that does one of the steps is still in some of these DVRs. Echostar claims that hardware is not being used, and that the output of that hardware is being ignored, but it is still there and it is still doing its thing, used or not. So it can be argued that the particular step of the claim is being done by the unit. Note it is being done in hardware, even though this claim has been mis-characterized as a software claim.

So things are not clear, the judge has a lot to think about, but it is entirely possible that these broad patent claims can sweep up many more DVRs than people originally thought and it is entirely possible that these broad claims are much harder to work around than most people think.

It is also possible I am wrong about all the above, so do your homework, read the patent claims, read the discussions here and elsewhere and decide for yourself.

I am sure to be challenged on several of the above statements and possibly even proven wrong on some of them, so follow the debate.

By the way most of my statements are based on my understanding of things that may be incomplete, so don't take it all as gospel.


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## TBoneit

I also wonder why Tivo didn't drag in the Dishplayers into the lawsuit? Afraid of Microsoft or they just didn't infringe?


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## CuriousMark

TBoneit said:


> I also wonder why Tivo didn't drag in the Dishplayers into the lawsuit? Afraid of Microsoft or they just didn't infringe?


Your guess is as good as mine.


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## Curtis0620

Why go after something that was discontinued?


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## Greg Bimson

TBoneit said:


> Pulling a function out of the air, If playback while recording is involved how would that be considered the same as playback the next day?


It is not manipulation of the same stream that is as much of a problem as manipulations of more than one program. As in recording a program while watching another pre-recorded program.


TBoneit said:


> just curious, Tivo says that Dish infringed on their patents. Did the infringed patents cover all DVR functionality? To put it another way since I do not remember all the details at this time. Does dish really only have to disable the infringed functions?


NO. The order is to disable all DVR functionality, not the functionality that infringed.


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## jacmyoung

Greg Bimson said:


> ...NO. The order is to disable all DVR functionality, not the functionality that infringed.


No, the order is to disable *The* DVR functionalities, ...of the *Infringing Products*, and yes, it specifies the DVR functions that was adjudicated or admitted or discussed during the trial, not *any or all* DVR functions.

The reason for my above claim was explained before, any specific reference to a specific item to be enjoined in the letter of an injunction, *must* be limited to those items already adjudicated or admitted or discussed during the trial and by the court.

Any items not already adjudicated or admitted or discussed in the trial *must be* coverd by the "colorable difference" rule, there is no third option. Either already adjudicted or admitted item to be specifically named in the injunction, or anything not already adjudicated or admitted, or discussed in the trial goes to be covered by the "colorable difference" clause.

Therefore, "the DVR functions" specifically mentioned in this injunction must be referring to the functions already adjudicated or admitted or discussed during the trial, any DVR functions not already adjudicated, admitted or discussed during the trial will have to be covered under the "colorable difference" rule.


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## nobody99

jacmyoung said:


> No, the order is to disable *The* DVR functionalities, ...of the *Infringing Products*, and yes, it specifies the DVR functions that was adjudicated or admitted or discussed during the trial, not *any or all* DVR functions.


Oh my God, are you back to that again. Hilarious!

Let's correct a couple of your errors.

First, the injunction doesn't say to disable *The* DVR functionalities, it says to disable 'the DVR functionality' (yes, all lower case). As opposed to 'the channel changing functionality' or 'the s-video output functionality.' And the court was thoughtful enough to explain _exactly_ what it meant: '(i.e., disable all storage to and playback from a hard disk drive of television data)'



> Any items not already adjudicated or admitted or discussed in the trial must be coverd by the "colorable difference"


Luckily for us, the September 4th meeting covers _only_ adjudicated devices. So joy of joys, the colorable difference question doesn't matter.

Also lucky for us, the court defined _exactly_ what "Infringing Products" are:

Defendants' following DVR receivers...: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942

So if any of those receivers have any storage to and playback from a hard disk, contempt will need to be found.


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## jacmyoung

First off before you pick on such a minor error in the use of "The" as say "the", why didn't you pick on the use of "all" in place of "the"?

Also you should have picked on Tivo's use of "Adjudicated Receivers" in place of "Infringing Products", and ask why did they avoid the term clearly identified by the injunction, did the injunction ever use the term "Adjudicated Receivers?"

Lastly, yes count your luck everyday is a good thing, because it will likely run out on 9/4


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## James Long

jacmyoung said:


> No, the order is to disable *The* DVR functionalities, ...of the *Infringing Products*, and yes, it specifies the DVR functions that was adjudicated or admitted or discussed during the trial, not *any or all* DVR functions.


No, it doesn't. The injunction is not against "the DVR functionality". The injunction orders disabling the DVR functionality on all "Infringing Products" except the ~192k that DISH is permitted to leave running. (A group of receivers that DISH will be replacing for MPEG4 anyways.) The injunction absolutely DOES NOT "specifies the DVR functions that was adjudicated or admitted or discussed during the trial". That would be Footprint 2.0. Apparently you're reading the wrong injunction again (or intentionally misleading).



> The reason for my above claim was explained before, any specific reference to a specific item to be enjoined in the letter of an injunction, *must* be limited to those items already adjudicated or admitted or discussed during the trial and by the court.


The PRODUCTS were adjudicated ... the PRODUCTS infringe ... the PRODUCTS have an injunction against them ... DISH needs to follow the injunction when it comes to the PRODUCTS.

The specific items enjoined are eight models of receivers ... the products. Simple.


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## Greg Bimson

jacmyoung said:


> Also you should have picked on Tivo's use of "Adjudicated Receivers" in place of "Infringing Products", and ask why did they avoid the term clearly identified by the injunction, did the injunction ever use the term "Adjudicated Receivers?"


You are worrying what is being stated in TiVo's motion is so different than the injunction yet...


jacmyoung said:


> No, the order is to disable The DVR functionalities, ...of the Infringing Products, and yes, it specifies the DVR functions that was adjudicated or admitted or discussed during the trial, not any or all DVR functions.


Pay attention...

The order is to disable all storage to and playback from the hard drive of television data. That is more encompassing than the the "DVR functions that [were] adjudicated or admitted or discussed during the trial".

I dare you to find where in the injunction it specifies only the infringing functions.


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## jacmyoung

Greg Bimson said:


> ...I dare you to find where in the injunction it specifies only the infringing functions.


I don't need to because by default anything "specifcally stated in the injunction" must be referring to what had already been adjudicated, or admitted, or discussed during the trial, it is the rule as stated many times by the appeals court, if only one cared to read those cases.

At one point I was silenced by the argument that the Footprint 2.0 was indeed different, as it did refer to the service as discussed in the trial, only after I read more and more cases that I realized, while the Footprint 2.0 injunction was more specific, it does not need to be so narrow to ensure the meaning of it, even if an injunction does not go to the trouble to emphasize it, by default it has to be referring to those adjudicated, admitted or discussed in the trial.

Anything at all outside of the court's adjudicated, admitted, or discussed already, must be covered under the colorable difference rule.


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## Greg Bimson

jacmyoung said:


> I don't need to because by default anything "specifcally stated in the injunction" must be referring to what had already been adjudicated, or admitted, or discussed during the trial, it is the rule as stated many times by the appeals court, if only one cared to read those cases.


Yet procedurally, the only time that "rule" is applied is if there is a challenge to the injunction. There was no challenge, so the injunction stands (and is enforced) as written.


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## James Long

- Can't put it any clearer.

Footprint 2.0 has an out that this case does not have. You can't wish that into this injunction.
Writing injunctions is the court's job.


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## jacmyoung

James Long said:


> - Can't put it any clearer.
> 
> Footprint 2.0 has an out that this case does not have. You can't wish that into this injunction.
> Writing injunctions is the court's job.


Of course you don't have to accept it, but what I am saying is this so called "out" wasn't necessary, the rules governing the framing of the injunction dictate that "the DVR functionalities" have to be specifically referring to the functionalities adjudicated, admitted or referenced during the trial, if not, they will have to be covered under the colorable difference rule.

Again, after extensive reading of many cases, that is the conclusion I have reached, as I read more, it became clearer it is true. Do you have to accept what I am saying? Of course not.

Another thing we had briefly touched on was, you believed in finding a contempt the courts usually erred on the side of the plaintiffs. I said not so according to again my extensive reading of the cases.

But I just realized I did not even have to rely on the readings to say it is the opposite. Because the courts have aleady referred to a contempt proceeding as a *summary* contempt proceeding. The word "summary" is a very critical one.

By definition, a *summary proceeding* is tilted to the "non-mover" (in this case DISH), and places very high burden of proof on the mover (in this case Tivo). The mover in a summary proceeding must prove their argument with clear and convincing evidence, on the other hand the non-mover only needs to demonstrate some evidence in dispute, and such evidence by the non-mover does not even have to be substantial.

If you don't believe the above, just do a google search on the definition of a "summary proceeding."

I hope we still remember the debate on how a summary judgment could be motioned by Tivo after the appeals court reversed the hardware verdicts. I predicted Tivo would not bring up the hardware issue again anytime soon, many of you disagreed. My then prediction was based on my reading of the concept of a summary proceeding, and my prediction turned out correct, that Tivo did not risk such a summary proceeding on the hardware verdicts because chances were they would not prevail for precisely the same reason, and Tivo did not want to risk it and delay the case further.

I still remember what Greg reacted to the fact Tivo did not bring up the hardware issue, he used the word he often uses: "WOW!"

You can say that again on or some time after 9/4.


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## Greg Bimson

jacmyoung said:


> I still remember what Greg reacted to the fact Tivo did not bring up the hardware issue, he used the word he often uses: "WOW!"


Yes, but at the time I said it was 50/50 that TiVo would even file something regarding the reversed hardware claims. My thought was that the injunction would be more bullet-proof if the hardware claims remained, but I was incorrect. As we've now seen from DISH/SATS position, if the hardware and software claims stood, we would still be at a contempt proceeding as DISH/SATS believes they no longer infringe on any of the claims at all. Then again, the order to disable is in plain language.

The disable order is to "equalize" the playing field, as it was ordered because of the infringement. Therefore, when it comes to the disable order, it has nothing to do with what was adjudicated; it has everything to do with gaining market share by infringing, and the disable order is to level the field.


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## scooper

Who are you kidding ? ""equalize" the playing field" - I sincerely doubt that will ever happen - if Dish is forced to "disable the DVR functions/functionality" - when customers call to complain, they will blame Tivo, thus generating bad light on Tivo. I'm not saying Dish will keep the customers either, but there will never be a box made by Tivo in my house if that ever happens.


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## James Long

jacmyoung said:


> I said not so according to again my extensive reading of the cases.


You have said a lot of things that were not so in these threads. 

September 4th can't come soon enough. Less 400 word rambles and more facts.


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## nobody99

scooper said:


> but there will never be a box made by Tivo in my house if that ever happens.


Oh, please. There would be a box in your house if it didn't?


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## scooper

nobody99 said:


> Oh, please. There would be a box in your house if it didn't?


Probably not (I haven't gotten anything Sony since the Rootkit debacle either) - but this would NOT help Tivo's case IMO.


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## James Long

scooper said:


> I'm not saying Dish will keep the customers either, but there will never be a box made by Tivo in my house if that ever happens.


I agree with the Tivo part - you don't become popular and accepted by customers by destroying their working equipment. DISH customers are more likely to use a knockoff DVR or none at all than flip to Tivo.

Not really an issue anyways ... DISH has DVRs not mentioned in the injunction and regardless of the outcome of September 4th will leave the "Infringing Products" running as long as possible as they fight and work around the problem.


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## jclewter79

My guess is that if the DVR's do get turned off it will be a victory for D* more than anybody. Most people don't want two boxes in their setup and even if they do, they are not going to want to pay tivo $13 a month, or whatever it is. If a shutdown happens people will look for an all in one solution and sat customers are more inclined to stay sat customers with whoever can provide their needs. D* or maybe cable wins. Either way tivo will not be doing themselves any favors by pushing a shutdown.


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## nobody99

scooper said:


> Probably not (I haven't gotten anything Sony since the Rootkit debacle either) - but this would NOT help Tivo's case IMO.


I COMPLETELY agree with you about Sony and the rootkit bullcrap that went out.

I understand the point you are making - but I'm sure a lot of people are in your position - they won't buy a TiVo one way or the other anyway, so they aren't going to piss off their intended audience in the near term, and taking this case all the way to the end is really TiVo's best long-term chance of surviving (though I disagree with jacmyoung's contention that they will be out of business if they lose the contempt hearing :lol: )


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## scooper

I don't give much hope for Tivo's long term prospects, win OR lose. Certainly, unless they come up with another "killer app" - they're dead at the end of their patent. If they lose - you can bet all the other DVR makers will tell them "get stuffed" and Tivo will spend the rest of their existence in court, until they are out of money.

IF they win - they may be able to "strongarm" other people into signing a license agreement, but still - what do they do when '389 expires ?


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## CuriousMark

scooper said:


> Who are you kidding ? ""equalize" the playing field" - I sincerely doubt that will ever happen - if Dish is forced to "disable the DVR functions/functionality" - when customers call to complain, they will blame Tivo, thus generating bad light on Tivo. I'm not saying Dish will keep the customers either, but there will never be a box made by Tivo in my house if that ever happens.


That attitude is exactly what Dish wants, you are playing right into their hands. They are threatening a scorched earth solution should TiVo win. If you fall into it, even though you are more enlightened than most, then many many others will too. I believe that TiVo doesn't want that to happen any more than you do, but if Dish leaves them no choice, it may come to be.

I doubt TiVo would pick many of those subs for just that reason, but at least other companies going forward would know TiVo won't knuckle under and things will be more fair going forward.


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## scooper

It's not that I'm falling into it - It's one I whole heartedly endorse and would do in the same situation !

I have my scenarios planned, depending what happens, and what options are presented. At best case, I don't have to worry about this and life goes on as it is, no changes on the DVR situation necessary. At worst - I expect Dish to stop charging the DVR fee on a now not DVR capable box, or I get either a DVR receiver that is capable of DVR or I change to a box that has no DVR capabilities at all. And then I start using my PC tuner cards as my "locally created DVRs".

WHY isn't there a VCR type device that is a DVR on the market with no ongoing fees ? I suppose the DVD recorders with a harddrive are about the closest to this ideal.


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## Greg Bimson

CuriousMark said:


> I doubt TiVo would pick many of those subs for just that reason, but at least other companies going forward would know TiVo won't knuckle under and things will be more fair going forward.


Of course, this is where there is a problem with principle...

If TiVo manages to win, they will be in a much stronger position with every other DVR maker that may infringe on the Time Warp patent. Hence, TiVo will probably get a decent amount of licensing agreements from the other companies.

If the DISH/SATS customers which lose DVR functionality (if it comes to that) decide to leave DISH/SATS and also screw TiVo, they may find themselves with a very limited selection of DVR's.

And before anyone goes blaming TiVo for disabling the DVR's, remember cash always solves a problem. It would be that DISH/SATS does not want to agree to a licensing agreement, much like the sizable fights DISH/SATS tends to have with some of their programming providers.


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## James Long

Interesting reading (from all of you) but it assumes that DISH will disable DVRs. As long as there are companies like DISH that keep fighting there is no win for Tivo. The only hope for Tivo is for DISH to roll over and play dead ... anyone see that happening?

What is a win and what is a loss? All we have are outcomes - interpreting them as wins and losses is for the PR departments (both sides probably have "we win" releases drafted regardless of what the outcome of September 4th is). Everybody wins!


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## Greg Bimson

James Long said:


> Interesting reading (from all of you) but it assumes that DISH will disable DVRs. As long as there are companies like DISH that keep fighting there is no win for Tivo. The only hope for Tivo is for DISH to roll over and play dead ... anyone see that happening?


Only if the courts make it more cost sensible to do a licensing agreement.

Yes, DISH/SATS will keep fighting. But I suspect that they may have a problem if they decide to ignore an order if a finding of contempt goes through and stands on appeal.


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## James Long

Outcomes:
1) *DISH is found in contempt*
- DISH puts out a press release and appeals the ruling claiming future victory - Tivo puts out a press release claiming victory. The industry is in the same position as today. No DVRs are disabled.
- Tivo starts the process of claiming that ViPs are "only colorably different". That separate proceeding follows basically the same path. (Any ruling appealed until SCOTUS decides or refuses a writ of certiorari. No DVRs are disabled.)

- Next year (2009) an appeals court looks at the case and eventually renders a verdict:
A) *The contempt ruling is upheld* (Appeals Court)
- DISH puts out a press release and appeals the ruling claiming future victory - Tivo puts out a press release claiming victory. The industry is in the same position as today. No DVRs are disabled.

- Late next year or in 2010 the Supreme Court gets to the case
a) a writ of certiorari is denied - the appeals court ruling stands
- DISH replaces all named "Infringing Products" with new ViP models (part of the MPEG4 transition) and the issue is moot.
b) a writ of certiorari is granted - the court hears the case
- Not likely. Too far down the rabbit hole to speculate. ​B) *The contempt ruling is reversed* (Appeals Court)
- DISH puts out a press release claiming victory - Tivo puts out a press release and appeals the ruling claiming future victory. The industry is in the same position as today. No DVRs are disabled.

- Late next year or in 2010 the Supreme Court gets to the case
a) a writ of certiorari is denied - the appeals court ruling stands
- Tivo "loses" and returns to competing by having "the better product" instead of "the better lawyer"
b) a writ of certiorari is granted - the court hears the case
- Not likely. Too far down the rabbit hole to speculate. ​2) *DISH is found not in contempt*
- DISH puts out a press release claiming victory - Tivo puts out a press release and appeals the ruling claiming future victory. The industry is in the same position as today. No DVRs are disabled.

- Next year (2009) an appeals court looks at the case and eventually renders a verdict:
(Pretty much "see above")​
Short term (next 12-24 months) DISH DVRs remain active and are replaced (MPEG4 conversion) before they are "disabled". Tivo lives out the rest of their corporate life fighting the next DVR to hit the market.

Tivo would be better off trying to have the better DVR than the better lawyer. But they have a right to defend their patent - even if it eventually runs the company out of business.

The only thing I can see as "killing Tivo" is if the current pending case waiting for a writ of certiorari at the Supreme Court is heard and Tivo loses. If that happens DISH gets their money back and Tivo doesn't have the cash to survive. Money is the key to survival here ... as long as there is money going to Tivo they can live to fight another day. If DISH wins the current SCOTUS appeal (unlikely) Tivo is done.


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## James Long

Greg Bimson said:


> Yes, DISH/SATS will keep fighting. But I suspect that they may have a problem if they decide to ignore an order if a finding of contempt goes through and stands on appeal.


The only problem DISH faces is money. They have that - and will (eventually) share their money to keep their customers. Unfortunately for Tivo, DISH keeps playing the next hand instead of walking away from the table with Tivo winning.


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## nobody99

James - if DISH is found in contempt, the fines could be enormous. I wouldn't expect an automatic stay of the injunction on appeal, either.

My guess - settlement of some kind before September 4.


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## jclewter79

I know that it has been covered in here but, in looking for it, it was taking a while. How long is tivo's time warp patent good for?


----------



## scooper

Greg Bimson said:


> Only if the courts make it more cost sensible to do a licensing agreement.
> 
> Yes, DISH/SATS will keep fighting. But I suspect that they may have a problem if they decide to ignore an order if a finding of contempt goes through and stands on appeal.


Yes Greg - I agree with you on this point - Dish will keep bringing Tivo to court until 
A: Tivo runs out of money
B: The courts make it more expensive than a settlement / licensing agreement would be.

The question here becomes "What can you do to a corporation that has more money than sense and has the gumption to keep going ?" Because this can just be wrote off as a tax deduction.


----------



## scooper

nobody99 said:


> My guess - settlement of some kind before September 4.


Only if Tivo offers really reasonable licensing terms...


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## CuriousMark

scooper said:


> Only if Tivo offers really reasonable licensing terms...


TiVo's original approach to Dish probably included really reasonable licensing terms and Dish didn't bite then. Now a lot has changed, TiVo's patent has been proven to have meat, and others have agreed to reasonable licensing terms. If Dish holds out for better terms than others are paying, then they are really saying they don't want to license at all. Which, is probably the reality anyway. Their money lets them game the system and small companies. They are a bully here, and will keep being a bully for as long as it has a (in the words of Dr. Phil) payoff.


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## CuriousMark

James Long said:


> Outcomes:


Now that is downright depressing. A summary of your post could be interpreted to indicate that patents mean nothing when there is a player with essentially unlimited funding involved.

I would hope that an outcome of Dish being found in contempt is followed by fines stringent enough to bring them to the bargaining table. Still no DVRs shut down, which is as it should be. The customers really should not be forced to suffer for Dish's bad behavior.


----------



## riffjim4069

jclewter79 said:


> I know that it has been covered in here but, in looking for it, it was taking a while. How long is tivo's time warp patent good for?


"The expiration date of the Time Warp patent is July 30, 2018."

Source: Tivo Inc. 2005 Annual Report


----------



## James Long

scooper said:


> The question here becomes "What can you do to a corporation that has more money than sense and has the gumption to keep going ?" Because this can just be wrote off as a tax deduction.


"More money than sense"? It seems that DISH has enough of both ... perhaps they have more money because they have the sense not to cave in to challenges.


CuriousMark said:


> Now that is downright depressing. A summary of your post could be interpreted to indicate that patents mean nothing when there is a player with essentially unlimited funding involved.


They mean something ... Tivo will get some compensation out of the court process (unless SCOTUS reverses the appeals court ruling).

A patent simply doesn't mean that you can own an industry. Tivo would like to claim (falsely) that no one else can create a DVR without their technology and own the DVR industry. That isn't going to happen.

They will be paid what they deserve for infringement ... but don't expect anything more.


----------



## jclewter79

riffjim4069 said:


> "The expiration date of the Time Warp patent is July 30, 2018."
> 
> Source: Tivo Inc. 2005 Annual Report


TYVM for the info.


----------



## scooper

CuriousMark said:


> Now that is downright depressing. A summary of your post could be interpreted to indicate that patents mean nothing when there is a player with essentially unlimited funding involved.


You said it - not me....



CuriousMark said:


> I would hope that an outcome of Dish being found in contempt is followed by fines stringent enough to bring them to the bargaining table. Still no DVRs shut down, which is as it should be. The customers really should not be forced to suffer for Dish's bad behavior.


Hence the question - " What fine would be large enough ?" Consider that Dish has a monthly cash flow in the HUNDREDS of Millions. Granted - a large portion of that pays programmers, salaries, etc. - but they still make a nice profit when all is said and done.


----------



## Greg Bimson

James Long said:


> A patent simply doesn't mean that you can own an industry. Tivo would like to claim (falsely) that no one else can create a DVR without their technology and own the DVR industry. That isn't going to happen.


But...

The ability to Time Warp a couple of different streams while recording or playing back is patentable. Remove that ability from a DVR, and you have something that resembles a VCR, unless one can work around the patent.

That Time Warp implementation is a bit more important for the development of a DVR than most of the other functionality, as one can playback something while recording, one of the more important features in a DVR.


----------



## nobody99

scooper said:


> Hence the question - " What fine would be large enough ?" Consider that Dish has a monthly cash flow in the HUNDREDS of Millions. Granted - a large portion of that pays programmers, salaries, etc. - but they still make a nice profit when all is said and done.


If a reasonable license is $2 per dvr per month, the contempt fines might be $6 per month per DVR. To be honest, I'd be perfectly happy with DISH if they paid $6 per DVR per month ($18 million per month to TiVo). That will give them a lot of money for future R&D. If DISH is so stubborn that they'll pay triple just to avoid a license, more power to them.

By the way, TiVo has a lot of other patents that will become important in future DVRs. Things like encoding and recognizing data in the vbi stream, sending digital data via video - all kinds of cool stuff. While these are not critical to a DVR, they are things that can set it apart in the future.


----------



## jacmyoung

scooper said:


> It's not that I'm falling into it - It's one I whole heartedly endorse and would do in the same situation !
> 
> I have my scenarios planned, depending what happens, and what options are presented. At best case, I don't have to worry about this and life goes on as it is, no changes on the DVR situation necessary. At worst - I expect Dish to stop charging the DVR fee on a now not DVR capable box, or I get either a DVR receiver that is capable of DVR or I change to a box that has no DVR capabilities at all. And then I start using my PC tuner cards as my "locally created DVRs".
> 
> WHY isn't there a VCR type device that is a DVR on the market with no ongoing fees ? I suppose the DVD recorders with a harddrive are about the closest to this ideal.


You don't have to believe me, but I have no plans, my 625 will stay on, so will yours.

That however is not the same as totally agreeing with James's above scenarios, though I think it was well-written.

The part I do not agree is if the circuit rules DISH in contempt, and if appeals upholds the ruling, DISH *will* turn off those DVRs. What you predicted DISH would do in such scenario has little basis, Charlie may be a risk taker, but he has not shown any inclination of disobeying final court orders.

But DISH will prevail, I have no doubt about it.


----------



## jacmyoung

Greg Bimson said:


> Yet procedurally, the only time that "rule" is applied is if there is a challenge to the injunction. There was no challenge, so the injunction stands (and is enforced) as written.


Again if I have not said it clearer, let me say it again, no there is no need to have the injunction modified in order to ensure the injunction was written properly, the rules governing the contempt decisions provide such protection by default, the rules have always been applied each time the contempt came up:

Infringement is the sine quo non of violation of an injunction on infringement.

Without finding of infringement with clear and convincing evidence, at the present time, during a contempt proceeding, there simply cannot be any violation, regardless what the injunction says.

I know the above is a very difficult concept for some of you to take in, I am not saying you have to take it.


----------



## nobody99

jacmyoung said:


> Infringement is the sine quo non of violation of an injunction on infringement.
> 
> Without finding of infringement with clear and convincing evidence, at the present time, during a contempt proceeding, there simply cannot be any violation, regardless what the injunction says.


Sigh.

There are *accused* devices, and there are *devices already adjudicated to infringe*. On September 4, it will simply be a question of "are the DVR functions turned off on the devices which were already proven to infringe?" There is no need to determine if they are infringing - a court of law has already determined that they are!

When a new player - let's call it the DP-666 - comes on the market and TiVo makes a contempt motion, that device will be an *accused* device and a determination will need to be made if it is more than colorably different.

You keep getting hung up on the idea that an already-adjudged device can be modified. With respect to the injunction, it can't.


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## James Long

Greg Bimson said:


> The ability to Time Warp a couple of different streams while recording or playing back is patentable. Remove that ability from a DVR, and you have something that resembles a VCR, unless one can work around the patent.
> 
> That Time Warp implementation is a bit more important for the development of a DVR than most of the other functionality, as one can playback something while recording, one of the more important features in a DVR.


It seems to come down to patenting the idea vs patenting the method.

Patenting the idea of human flight would be difficult ... people have been thinking of flying for a lot longer than they have been able to. Patenting a process that works is a different issue. So what if thousands had the idea first ... the patent goes to the person who files their process not their wishes.

Tivo's specific process of "Time Warp" or the Barton Media Switch is patentable ... but the idea of playing back while recording isn't - and if someone can figure out how to do that in a way that Tivo doesn't own the patent for Tivo is out of the picture.

They can own the process - not the idea.


----------



## Greg Bimson

James Long said:


> Tivo's specific process of "Time Warp" or the Barton Media Switch is patentable ... but the idea of playing back while recording isn't - and if someone can figure out how to do that in a way that Tivo doesn't own the patent for Tivo is out of the picture.
> 
> They can own the process - not the idea.


Oh, don't get me wrong, I do agree with this. I have a feeling, looking over the "software claims", that it is a diffiicult task to get around this part of the patent.


jacmyoung said:


> Again if I have not said it clearer, let me say it again, no there is no need to have the injunction modified in order to ensure the injunction was written properly, the rules governing the contempt decisions provide such protection by default, the rules have always been applied each time the contempt came up:
> 
> Infringement is the sine quo non of violation of an injunction on infringement.


Yet that is a rule for a finding of contempt regarding a violation of an injunction against infringements. That is not what this 4 September hearing is about, so this will be off the table.

Besides, the eight models of DVR were already found infringing, so the injunction definitely stands.


jacmyoung said:


> *Without finding of infringement with clear and convincing evidence, at the present time*, during a contempt proceeding, there simply cannot be any violation, regardless what the injunction says.


Funny. Never saw that "rule" anywhere.


----------



## CuriousMark

James Long said:


> A patent simply doesn't mean that you can own an industry. Tivo would like to claim (falsely) that no one else can create a DVR without their technology and own the DVR industry. That isn't going to happen..


Now it seems you are imputing motives to TiVo that don't match their behavior. Nowhere do they claim that no one else can create a DVR without their technology. Only Dish is saying this and they are saying it to help them pretty up their arguments against TiVo. If you buy into that part of it, I am surprised. You have been one of the most unemotional and clear headed posters here. I never expected you to buy into an emotional argument made by Dish.


----------



## CuriousMark

James Long said:


> Tivo's specific process of "Time Warp" or the Barton Media Switch is patentable ... but the idea of playing back while recording isn't - and if someone can figure out how to do that in a way that Tivo doesn't own the patent for Tivo is out of the picture.


Unassailable. TiVo and their experts are even quoted as saying the same themselves. It is only Dish who is trying to get people to think otherwise. Demonizing is a tried and true debating and propaganda tactic. In this case it has been used by both sides about equally.


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## Herdfan

jclewter79 said:


> My guess is that if the DVR's do get turned off it will be a victory for D* more than anybody.


Wouldn't that be ironic?


----------



## Herdfan

scooper said:


> I don't give much hope for Tivo's long term prospects, win OR lose. Certainly, unless they come up with another "killer app" - they're dead at the end of their patent.


I agree, but if they have the funding needed, in theory they develop more IP that is added to their boxes and keep a portfolio of current patents.


----------



## jacmyoung

Greg Bimson said:


> ...Funny. Never saw that "rule" anywhere.


Because you refused to read those appeals court cases where this "rule" has been cited over and over, which is not a very funny thing to say the least.


----------



## Greg Bimson

Greg Bimson said:


> ...Funny. Never saw that "rule" anywhere.





jacmyoung said:


> Because you refused to read those appeals court cases where this "rule" has been cited over and over, which is not a very funny thing to say the least.


Try again...


jacmyoung said:


> Without finding of infringement with clear and convincing evidence, *at the present time*, during a contempt proceeding, there simply cannot be any violation, regardless what the injunction says.


Never saw anything about "at the present time". Therefore, because the models have been adjudicated as infringing, infringement has already been determined. Also, not just any contempt proceeding, but a contempt proceeding regarding possible violations of an injunction for ongoing infringement.

Nothing like trying to change the rules, asking for precedential treatment on a patent infringement case. Your statement should read:

Without finding of infringement with clear and convincing evidence during a contempt proceeding for violations of an injunction against infringement, there simply cannot be any violation, regardless what the injunction says.

Too bad this isn't going to be a contempt proceeding for violations of an injunction against infringement.


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## jacmyoung

Greg Bimson said:


> Try again...Never saw anything about "at the present time". ...


Contempt of an injunction on infringement has always been present and future tenses, never past tense. Past acts are covered by damages. Again if you still have not formed such impression, you have not read carefully.


----------



## jacmyoung

Greg Bimson said:


> ...Too bad this isn't going to be a contempt proceeding for violations of an injunction against infringement.


Too bad there are no other types of contempt proceedings because all injunctions in patent cases are injunctions against infringement, no more no less. Without finding of infringement, a violation simply cannot be.

On 9/4 the judge will tell Tivo just that. It happened many times, we have the Starbrite case, and Footprint 2.0 case, just to name two, in both cases the plaintiffs asked for contempt charges precisely on prima facie basis, not on infringement, in both cases they had demonstrated clear violations of the letter of the injunctions, but they failed, not because products were not sold yet, nor because the injunction was narrowly worded, no, because the courts, after examining the modifed products, could not find clear and convincing evidence pointing to continued infringement.

Read through those rulings and you should reach the same conclusion.


----------



## Greg Bimson

jacmyoung said:


> Contempt of an injunction on infringement has always been present and future tenses, never past tense. Past acts are covered by damages. Again if you still have not formed such impression, you have not read carefully.


Hmm. There are three orders in the Final Judgment and Injunction Order:

1) Damages
2) No sales of the products adjudicated to infringe and those not more than colorably different
3) Disabling DVR functionality of the products adjudicated to infringe

I see that damages and the injunction are separate, so damages itself doesn't cover the past act alone.


jacmyoung said:


> Too bad there are no other types of contempt proceedings because all injunctions in patent cases are injunctions against infringement, no more no less. Without finding of infringement, a violation simply cannot be.


I'll be happy to provide you with Fisher-Price v. Safety 1st again, where you will not find a single discussion point about ongoing infringement during a contempt hearing on an injunction in a patent infringement case:


> III. STANDARD OF REVIEW
> A. Contempt of Court
> To prove civil contempt, the moving party must show by clear and convincing evidence that "(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order." Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995); see Robin Woods Inc. v. Woods, 28 F.3d 396, 399 (3d Cir. 1994) (internal citations omitted); United States v. Pozgai, 999 F.2d 719, 735 (3d Cir. 1993).
> 
> [...]
> 
> IV. DISCUSSION
> A. Fisher-Price's Motion for a Finding of Contempt
> Fisher-Price argues that Safety 1st should be found in contempt of the Injunction of August 28, 2003. (D.I. 445.) To prove civil contempt, Fisher-Price must establish that (1) the Injunction was a valid court order, (2) Safety 1st had knowledge of the Injunction, and (3) Safety 1st disobeyed the Injunction. Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995). This showing must be established by clear and convincing evidence. Robin Woods Inc. v. Woods, 28 F.3d 396, 399 (3d Cir. 1994) (internal citations omitted); United States v. Pozgai, 999 F.2d 719, 735 (3d Cir. 1993). There is no dispute as to the Injunction's validity or to Safety 1st's knowledge of it. Thus, the sole issue is whether Safety 1st violated the Injunction.
> 
> Fisher-Price argues that Safety 1st violated the Injunction in two ways. First, Fisher-Price contends that Safety 1st violated the Injunction by continuing to sell infringing models of the 2-n-1 Bouncenette and the Magic Motion after August 28, 2003. With respect to Magic Motion sales, Safety 1st has admitted to selling at least 442 units of the Magic Motion after the Injunction was entered. Safety 1st attempts to minimize its contemptuous conduct by portraying it as inadvertent or insignificant. The fact remains, however, that Safety 1st violated a valid court order. Thus, the court finds that Safety is in contempt of the Injunction with respect to Magic Motion sales. With respect to Bouncenette sales, Fisher-Price asserts that Safety 1st has failed to show that its post-Injunction Bouncenette sales were not in violation of the Injunction. Safety 1st counters that, while it sold Bouncenettes after the Injunction's entry bearing the proscribed base model numbers, all of those Bouncenettes had a new, non-infringing harness design that Fisher-Price has not accused of infringement. Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction.2 Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales.
> 
> Second, Fisher-Price argues that Safety 1st violated the Injunction by failing to make all reasonable efforts to retrieve infringing products from Safety 1st's major retail customers. The court agrees. Safety 1st hired another company to retrieve infringing products from Toys 'R Us and Babies 'R Us. That was a reasonable effort. But Safety 1st admits that it did not make similar efforts with its other major retail customers, such as Target. The court's order was unambiguous: Safety 1st was required to "make every reasonable effort possible." Safety 1st did not. Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.


And as I've said before, whatever modification DISH/SATS chooses to do, the only one the court has ordered is to disable the DVR functionality of eight models. Those models will be in the scope of the injunction until the injunction expires. They've been adjudicated as infringing, so there is no need to find out what they do now.

So they have new software. That doesn't take them out of the scope of the injunction. Heck, changing the software so that those models no longer have DVR functionality doesn't take them out of the scope of the injunction, and they would not be infringing any longer.


----------



## jacmyoung

Greg Bimson said:


> Hmm. There are three orders in the Final Judgment and Injunction Order:
> 
> 1) Damages
> 2) No sales of the products adjudicated to infringe and those not more than colorably different
> 3) Disabling DVR functionality of the products adjudicated to infringe
> 
> I see that damages and the injunction are separate, so damages itself doesn't cover the past act alone.I'll be happy to provide you with Fisher-Price v. Safety 1st again, where you will not find a single discussion point about ongoing infringement during a contempt hearing on an injunction in a patent infringement case:And as I've said before, whatever modification DISH/SATS chooses to do, the only one the court has ordered is to disable the DVR functionality of eight models. Those models will be in the scope of the injunction until the injunction expires. They've been adjudicated as infringing, so there is no need to find out what they do now.
> 
> So they have new software. That doesn't take them out of the scope of the injunction. Heck, changing the software so that those models no longer have DVR functionality doesn't take them out of the scope of the injunction, and they would not be infringing any longer.


I don't know why you continue to use that case because it totally missed the point, in that case the infringer admitted they continued to infringe, that they never attempted to modify the products, of course when the defendant admitted they were in violation themselves, why was there any need to even discusse it?

Show me one case, just one, which the infringer claimed they no longer infringe, and somehow the court ignored or disregarded such claim.

Whatever the infringer did, the only clear language in the injunction in the Starbrite case was the infringer to stop selling those 6 products specifically identified by their names, no more no less. The infringer clearly violated the letter of the injunction by continuing to sell those 6 products, but they were not in contempt. Regardless what circumstance in that case you want to exploit to justify it's "irrelevance", the bottomline is in that case the infringer *ignored* the letter of the injunction, and they were *not in contempt*.

There are other cases the patentees argued on prima facie violation as you do today, when modifications were involved, the court never once refused to hear evidence of modifications by the infringers, only after looking at the evidence, then decisions were made.

Please don't be fooled by the appearance that on 9/4 the judge will not look at the new software, because both DISH and Tivo, yes both parties in dispute are arguing the colorable difference of the new software. The judge may not care if it is not an agenda on his 9/4 hearing, but additional hearing will be needed to hear such argument on the new software, since both parties are arguing on this issue.

And the judge cannot find DISH in contempt before he even look at the evidence DISH claimed they no longer infringe. Well of course he can ignore it, but it will be an abuse of court's discretion to do so, and therefore will be overturned on appeal.


----------



## Greg Bimson

That's because you continue to believe, without one clear cut case, that somehow products already in the hands of customers and adjudicated infringing need to be addressed. Again.

Those products were found infringing and subject to the disable order. There is no need nor precedent to evaluate a set of products already found infringing. Again.

Those four million DVR's found infringing will have to be disabled, because they are still subject to the injunction. Again.

If those four million DVR's had their DVR functionality disabled, they would still be under the scope of the injunction until the Time Warp patent expires. Again.

Somehow, instead of a plain reading of this case, you believe DISH/SATS deserves a chance at evaluating product that has already been before the court. Again. And procedurally, that product will not be evaluated during this contempt proceeding.


----------



## TBoneit

James Long said:


> It seems to come down to patenting the idea vs patenting the method.
> 
> Patenting the idea of human flight would be difficult ... people have been thinking of flying for a lot longer than they have been able to. Patenting a process that works is a different issue. So what if thousands had the idea first ... the patent goes to the person who files their process not their wishes.
> 
> Tivo's specific process of "Time Warp" or the Barton Media Switch is patentable ... but the idea of playing back while recording isn't - and if someone can figure out how to do that in a way that Tivo doesn't own the patent for Tivo is out of the picture.
> 
> They can own the process - not the idea.


I'd love to know if the Dishplayers models 7100 & 7200 used a different method to playback while recording or if the only reason they weren't named is that Microsoft did that software and Tivo either did not want to drag MS into court too or if They wanted to go after only one defendant at a time.

I'm still using a Dishplayer along with a 612, 622 and a 721 (not 722), and in fact scheduled several recordings last night for later in the week with it. I use it for SD recordings and the 622 on the same TV set for HD recordings.

I sort of wonder how the Tivo lawsuit will impact me with my DVR line-up? 
Includes 2 DVD recorders both with hard drives, one of which I record off of the HD locals as 720 by 480 resolution in DVD format and the other as SD or from the 622 as well as a older Series one Tivo standalone. I still have a S-VHS that I can use as well. One of the last fancy models with many features to enhance recording from Tape to a DVD recorder.

FWIW the HD locals recorded from basic cable as a standard DVD and played back through a upconverting player look pretty good on my 32" HDTV. I suspect they'd look worse with a 60 inch TV of course.


----------



## nobody99

jacmyoung said:


> The judge may not care if it is not an agenda on his 9/4 hearing, but additional hearing will be needed to hear such argument on the new software, since both parties are arguing on this issue.
> 
> And the judge cannot find DISH in contempt before he even look at the evidence DISH claimed they no longer infringe. Well of course he can ignore it, but it will be an abuse of court's discretion to do so, and therefore will be overturned on appeal.


So when Judge Folsom does ask about the new software, and he issues contempt without a new hearing on the new software, I will assume that you will argue that he is wrong and doesn't know what he is doing?

I can already see it now. You will be explaining how the appeals court "must" overturn Judge Folsom's decision because of the "quite clear rules" that they "must" follow.


----------



## James Long

nobody99 said:


> I can already see it now. You will be explaining how the appeals court "must" overturn Judge Folsom's decision because of the "quite clear rules" that they "must" follow.


Actually, I expect the same argument from DISH when they are ruled in contempt.

I'll be very surprised if DISH is not found in contempt. It seems to be the norm. With the specific claim Tivo is pursuing (DISH not disabling the DVRs) the path seems to be narrow. And the excuse DISH offers (we disabled them before we enabled them again) sound like a page out of a politicians playbook ... will a court buy such an argument? Will the court enforce "disable until the patent expires"?

We'll know in about six weeks!


----------



## nobody99

James Long said:


> And the excuse DISH offers (we disabled them before we enabled them again) sound like a page out of a politicians playbook ... will a court buy such an argument? Will the court enforce "disable until the patent expires"?


Here's a case that I think will illustrate how Judge Folsom will react:



> This case illustrates a persistent pattern of defendants to take liberties and later try to excuse improper conduct, once detected, through hyper-technical and often absurd distinction and explanations. This pattern includes implausible claim onstruction to excuse infringement ghost-writing of the trial expert's report in violation of FRCP 26, and now a deceptive bait-and-switch concerning the prototypes and protocol.


www.animatics.com/download/Low_04.pdf


----------



## tnsprin

TBoneit said:


> I'd love to know if the Dishplayers models 7100 & 7200 used a different method to playback while recording or if the only reason they weren't named is that Microsoft did that software and Tivo either did not want to drag MS into court too or if They wanted to go after only one defendant at a time.
> 
> I'm still using a Dishplayer along with a 612, 622 and a 721 (not 722), and in fact scheduled several recordings last night for later in the week with it. I use it for SD recordings and the 622 on the same TV set for HD recordings.
> 
> ....


I believe it was previously said that the Dishplayer models are exempt due to an agreement about them between Tivo and Microsoft.


----------



## jacmyoung

James Long said:


> ... It seems to be the norm. ...


Did you mean it seems to be norm in such cases there have been a contempt ruling? I am not flaming you, only try to clarify.


----------



## James Long

I've seen no evidence to the contrary ...
Claims but no evidence.


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## jacmyoung

nobody99 said:


> Here's a case that I think will illustrate how Judge Folsom will react:
> 
> www.animatics.com/download/Low_04.pdf


I am so glad you find a case to demonstrate the extensive effort by the court to examine the work-around, not just by looking at the evidence on their face value, but also testimonies, actual demonstration of the prototype compared to the product in production.

And only after such exhaustive effort, did the court find that the infringer did not follow through with the kind of the work-around they promised, and reversed the approval of such work-around.

The above only further strengthen the argument that there is no three-sentence so called prima facie violation, the court always *first* look at the work-around or modification, and very carefully and exhaustively.

Only after that did they decide a contempt or not.


----------



## jacmyoung

James Long said:


> I've seen no evidence to the contrary ...
> Claims but no evidence.


But did you have evidence to support such prima facie contempt? You said it is the norm, so I assume you at least did have prior cases to call it a norm?

No evidence to the contrary is not proof. In fact if you read enough cases, should realize no evidenece to the contrary always got the defendants out of trouble, because the benefit of the doubt is given to the defendants, not the plaintiffs.


----------



## James Long

jacmyoung said:


> The above only further strengthen the argument that there is no three-sentence so called prima facie violation, the court always *first* look at the work-around or modification, and very carefully and exhaustively.


One case reference (even 100) does *not* prove that the court will *always* do anything. 



jacmyoung said:


> But did you have evidence to support such prima facie contempt? You said it is the norm, so I assume you at least did have prior cases to call it a norm?


In the cases I have seen the outcome I noted is the norm. Which is what I wrote. If you have a different opinion on what I wrote, fine. It is just a difference of opinion.

Twisting my few words into an entirely different opinion is not fine ... but I trust others reading this thread are capable of reading my posts and my opinions without resorting to your interpretations.


----------



## nobody99

jacmyoung said:


> I am so glad you find a case to demonstrate the extensive effort by the court to examine the work-around, not just by looking at the evidence on their face value, but also testimonies, actual demonstration of the prototype compared to the product in production.


Why? This case has nothing to do with September 4th:


The defendant *asked if their workaround was ok* and was given clearance by the court
The workaround was for *new products* not for *products already found to infringe*. I keep repeating this over, and over, and over, and over and over and you keep ignoring it.
I brought up this case because it showed just how nasty it can be when you are in contempt.

Look at some of the other quotes:



> Once a defendant has been adjudicated to be a wrongdoer, a court has broad equitable power to set matters right and to do justice for the plaintiff.





> An injunction can be broad and can even enjoin otherwise lawful acts to insure compliance with the law so long as the injunction is reasonably necessary to granting fair and reasonable relief to the plaintiff.


Uh, wait, I thought the only thing an injunction could do was prevent infringement? So, jacmyoung and curtis52, you were wrong on that, right?



> Thus, an adjudicated patent infringer, once an injunction is entered, has no automatic right to cut fine corners and make hair-splitting arguments over claim construction to win approval of a design-around substitute product.





> Once infringement is found, the equities run in favor of the victimized patent holder.


Oh, wait, so jacmyoung was wrong about any doubt needing to go in favor of the defendent? Ooops. Sorry Charlie.


----------



## jacmyoung

James Long said:


> ... but I trust others reading this thread are capable of reading my posts and my opinions without resorting to your interpretations.


That I agree 100%.


----------



## jacmyoung

nobody99 said:


> Why? This case has nothing to do with September 4th:


Then why bring it up?



> I brought up this case because it showed just how nasty it can be when you are in contempt.


No one said a contempt will not be nasty.



> Uh, wait, I thought the only thing an injunction could do was prevent infringement? So, jacmyoung and curtis52, you were wrong on that, right?


That case proved an injunction is in fact to prevent infringement, by proving a workaround that by the prototype clearly demostrated non-infringement, the court acted to prevent further infringement while allowing the infringer to "remain in the marketplace".

But the infringer blew it, their actual products did not follow their own promised prototype, as a result the court said no more such workaround, because it still in reality continued to infringe, and as such it had to be prevented.


----------



## nobody99

jacmyoung said:


> Then why bring it up?


Are you trying to be cute?


----------



## TBoneit

Thanks for the info, re dishplayers


----------



## jacmyoung

nobody99 said:


> Are you trying to be cute?


Ran out of things to say again?


----------



## jacmyoung

TBoneit said:


> Thanks for the info, re dishplayers


Just read your post, did not realize the Dishplayers still work, I have one sitting in the closet. I remember it had a great interface and was easy to use, ahead of anything at the time.


----------



## nobody99

jacmyoung said:


> Ran out of things to say again?


Well, at least we know that you don't have that problem, such as it is, with wordy posts that show that you must, at all costs, prove your point and always, such is the case, prove that you are right and must therefore always have the last word.

Since you brought it up, and not me, it is important therefore that you realize that you, not me, has opened yourself to ridicule from other members who otherwise would not necessarily think that ridicule was the correct answer. Whatever the case, it is quite clear that you have an unreasonable need to keep talking, even if it means, as it were, that sometimes, when language doesn't matter, that things don't always make sense, and grammar is unimportant, per se.

Whatever the case, it is now crystal clear to me, and to anyone watching this post, who might either be fans of either side, that such clarity is important to understand that it is impossible for you to run out of words, and as such, it would be impossible for me to win a "war of the words" with you if we were measuring such war merely by word count, because, honestly, it would be impossible for me to have the same typing stamina that you have shown clearly over the course of many days.

I hope that your side now understands that sometimes it is not always the word count that matters, but merely the subject of the information, but not always, as sometimes word counts matter, for example, if I had to write a paper that needed to be "500 or more" words, then it would matter if I had 500 words.

How'd I do? Do I have a career in impersonations? :lol:


----------



## James Long

And now we return to the topic ...
It isn't about jacmyoung (or anyone else in the thread) - it is about the case!

:backtotop Tivo vs Echostar


----------



## jacmyoung

James Long said:


> ... it is about the case!
> 
> :backtotop Tivo vs Echostar


Including discussions about case law I hope.


----------



## James Long

If it has to do with Tivo vs Echostar.

There are other places to discuss Voom, ESPN, the NFL and the other misc. cases that DISH is involved in --- and general discussion of case law isn't the purpose of DBSTalk. (Please note the name ... "DBS" ... not "LawTalk".)

But enough about moderation ... let's talk DBS (Tivo vs Echostar).


----------



## jacmyoung

Thank you for the clarification, with that in mind, please allow me to quote a few more from prior cases:

"'When the basis of a contempt proceeding is an injunction forbidding infringement, there can be no contempt unless there is infringement. See Eli Lilly, 915 F.2d at 673 (in an injunction prohibiting infringement, 'no contempt can be found thereunder without a finding of infringement'); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1528 (Fed.Cir.1985) ("Infringement is the sine qua non of violation of an injunction against infringements.')."

Again from KSM itself: "[a] judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, *using* or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement."

For Tivo to succeed in convincing the courts DISH is in contempt, Tivo therefore must convince the courts that the current injunction is not just an injunction prohibiting infringement, but something more, such as some supporters' claimed the order #2 is not just to stop further infringement, but to punish DISH for the past infringement, and such punishment must be applied even if DISH currently does not infringe on Tivo's patent.

I have read Tivo's arguments carefully, I have not seen anywhere Tivo argued that this standing injunction is anything more than to prohibit further infringement.

Alternatively, Tivo may prove that "the modified device (the modified DVR) falls within the admitted or adjudicated scope of the claims (claims 32 and 61 of the Tivo patent) and is, therefore, an infringement." Tivo indeed tried to do so in its latest 10-page response when it discussed in length about the new software colorable difference issue, but IMHO it failed.


----------



## James Long

jacmyoung said:


> "When the basis of a contempt proceeding is an injunction forbidding infringement, there can be no contempt unless there is infringement."


Is the basis of _this_ contempt proceeding an injunction forbidding infringement? It seems that only part of the injunction forbids infringement. The section in question September 4th is the part that requires that the infringing products have their DVR functionality disabled. Not "stop infringing by" disabling the DVR functionality ... just a cold hard disable the DVR functionality.


jacmyoung said:


> I have read Tivo's arguments carefully, I have not seen anywhere Tivo argued that this standing injunction is anything more than to prohibit further infringement.


Are you reading the right case? Tivo argued the issue of whether DISH disabled the DVR functionality ... which is beyond the "stop infringing" portion of the injunction.

The first two paragraphs of their Motion for Contempt: (Emphasis added)


> *Motion for Contempt*
> On September 8, 2006, this Court issued a permanent injunction to put an end to EchoStar's infringement of TiVo's patent and to the irreparable harm that it was causing to TiVo. *The injunction's key provision was simple: "disable the DVR functionality" in all of EchoStar's DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942 DVR receivers that had been placed with subscribers.* Yet EchoStar has not disabled the functionality in a single DVR. Instead, EchoStar has declared itself exempt from this Court's Order, issuing press releases and notices saying that EchoStar does not have to disable any of its DVRs. Today, nearly two years after the injunction issued, and nearly six months after the Federal Circuit affirmed, EchoStar's infringement continues to bring profit to EchoStar, while it continues to cause irreparable harm to TiVo.
> 
> Before the Court last month, EchoStar took the position that it need not comply with the terms of the injunction - to disable the DVR functionality - because it complied with the spirit of the injunction by deploying modified software that, it contends, makes the DVRs no longer infringing.(1) However, the Court's wording wisely anticipated and tried to prevent EchoStar's current mischief by enjoining the DVR functionality in all the units covered by the infringement verdict, not giving EchoStar the ability to re-classify, on its own, the identified units as noninfringing simply because some of the software had been changed. EchoStar had proposed language for the injunction that would have given it that ability (enjoining only "the provision of infringing DVR software") and the Court rejected it.
> 
> Footnote 1: The injunction did not define "DVR functionality" in terms of software. Instead, it provided as follows: "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive)."


Their motion is filled with references to "disable".



jacmyoung said:


> Tivo indeed tried to do so in its latest 10-page response when it discussed in length about the new software colorable difference issue, but IMHO it failed.


In the Motion for Contempt the word was discussed once ... in a footnote: (Emphasis added)


> *Motion for Contempt* (Footnote on page 8)
> TiVo's preliminary review of EchoStar's allegedly modified software suggests that it is not colorably different from EchoStar's adjudged infringing software and that it continues to infringe the Barton Patent. Pursuant to the May 30 status conference, *TiVo plans to address this issue separately*, if necessary, after conducting a limited amount of discovery.


Separately -- as in not in the Motion for Contempt.

In the Reply to Opposition (the latest 10 page document) the term appears once. Nearly an afterthought on the 10th page ... I guess that counts as "discussed at length". 

Are you sure you're reading the right case? It certainly is not discussed at length.

When assertions of fact are made that we know are not true it makes me wonder if the rest of the assertions being made have any merit at all ...


----------



## jacmyoung

James Long said:


> Is the basis of _this_ contempt proceeding an injunction forbidding infringement? It seems that only part of the injunction forbids infringement. ...


Why I said Tivo needs to convince the courts this injunction is not just to forbid infringement, it is more than that.

But Tivo never argued on such premise, unlike you, or some Tivo supporters did, because Tivo's lawyers know very well injunctions in patent infringement cases do one thing only, to prohibit further infringement.

You of course can think this injunction is trying to do more than just prohibiting infringement, but Tivo's lawyers did not dare to say that, they knew better.


----------



## jacmyoung

James Long said:


> ...In the Motion for Contempt the word was discussed once ... in a footnote: (Emphasis added)Separately -- as in not in the Motion for Contempt....


Read it again, Tivo devoted nearly a whole page to discuss the new software claims, point by point with DISH, and at the end of that discussion, said the adjudicated receivers therefore are not more than colorably different than the ones on the list.

Yeah they had a plan not to address it, but they forgot about their plan in the lastest 10-page response.


----------



## James Long

Uhhh ... Did you read the Motion for Contempt? I even quoted the opening paragraphs. It's all about disabling the DVR functionality regardless of infringement.

As far as the Reply ... it is supposed to be a reply ... so commenting on what DISH said is good ... but colorably still barely came up (not "discussed at length" as you claimed) ... and now your latest post agrees that it was an afterthought?


> Yeah they had a plan not to address it, but they forgot about their plan in the lastest 10-page response.


So we have moved from "discussed at length" to afterthought.


----------



## jacmyoung

James Long said:


> Uhhh ... Did you read the Motion for Contempt? I even quoted the opening paragraphs. It's all about disabling the DVR functionality regardless of infringement.
> 
> As far as the Reply ... it is supposed to be a reply ... so commenting on what DISH said is good ... but colorably still barely came up (not "discussed at length" as you claimed) ... and now your latest post agrees that it was an afterthought?
> So we have moved from "discussed at length" to afterthought.


"2. EchoStar's Non-Infringement Arguments Are Insubstantial.
EchoStar's "technical" arguments are aimed at creating confusion and delay, obscuring
the lack of any substantive product change. Most of the arguments concern matters completely
unrelated to claims 31 and 61, which are the claims that EchoStar seeks to relitigate. For
example, EchoStar contends that recent technological advances in the power of central
processing units (CPUs) and memory supposedly made its "new" design possible. Opp. at 2.
But EchoStar's alleged design-around did not change the CPU and memory - both hardware
1893695 - 9 -
TIVO'S REPLY RE: MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF
THIS COURT'S PERMANENT INJUNCTION
components - in the Adjudicated Receivers at all. It altered only the software. EchoStar also
devotes much attention to "indexing," the "Media Switch," and the concept of separation. Opp.
at 3-4 (citing trial testimony relating to claim 1). But claims 31 and 61 do not include limitations
requiring indexing, separation, or a Media Switch. EchoStar also makes much of the number of
hours it spent on its alleged design-around and the cost of those efforts. But the $750,000
EchoStar spent is hardly "Herculean." Opp. at 1. It is not evidence of non-infringement and is
trivial in comparison to the $226 million spent in 2007 alone on advertising to acquire new
customers at TiVo's expense,5 while operating under the grace of the stay. Ex. C.
To the extent EchoStar actually addresses claims 31 and 61, its arguments ignore this
court's claim construction and trial testimony - including testimony of EchoStar's own experts.
First, EchoStar argues that its 50X and Broadcom units no longer "parse," i.e., analyze, before
they "store" video and audio data. Opp. at 3-4. With respect to the 50X boxes,6 this is the only
non-infringement argument, and it cannot survive scrutiny. "Parse" means "analyze." Dckt.
No. 185, Claim Construction Order at 18 (Ex. D). It does not mean "index" or "separate." This
claim construction is law of the case. AFG Indus., 375 F.3d at 1372 (prior claim construction is
law of the case). EchoStar does not contend that the Adjudicated Receivers perform no analysis.
In fact, the opinions of EchoStar's counsel admit that parsing is still performed by "PID
filtering," which EchoStar's trial expert agreed meets the parsing limitation.7
Second, with respect to the Broadcom boxes (but not the 50X boxes), EchoStar argues
5 EchoStar even had an ad campaign featuring the slogan "Better Than TiVo." Ex. L.
6 The Adjudicated Receivers fall into two categories: 50X units (DP-501, DP-508, and
DP-510) and Broadcom units (DP-721, DP-921, DP-942, DP-522, and DP-625).
7 Compare 8/24/06 opinion letter at 28 (Dckt. No. 826 Ex. 2) ("A Broadcom chip
performs packet identifier (PID) filtering . . . .") and 4/7/06 AM Trial Tr. 110:10-14 (Ex. E) ("Q:
Okay. So you'll agree that the EchoStar products do actually parse the MPEG stream? A: Yes.
The Court said analyze, and there are PID filters in those products that examine the MPEG
transport stream and do a parsing."). See also id. at 111:8-13; 4/6/06 PM Trial Tr. 145:3-16
(Ex. F); 4/10/06 AM Trial Tr. 38:2-8 (Ex. G); 4/11/06 AM Trial Tr. 100:6-23 (Ex. H); 3/31/06
PM Trial Tr. 29:18-24 (Ex. I). EchoStar's products analyze the data at various stages. PID
filtering is one such analysis, which is used to identify the type of packets that should be
processed. The broadcast data is in packets, each of which has a "packet identifier" or PID. The
components that performs the PID filtering are actually named "parsers." See, e.g., Trial
Ex. 478, pp. 1-6, 1-23, fig 1-7 (Ex. J). EchoStar did not eliminate these components.
1893695 - 10 -
TIVO'S REPLY RE: MOTION FOR ECHOSTAR TO BE HELD IN CONTEMPT FOR VIOLATION OF
THIS COURT'S PERMANENT INJUNCTION
that its modified software does not have "automatic flow control" because it "does not and
cannot stop the flow of incoming data to the buffer." Opp. at 5. Under the Court's claim
construction, however, the term "automatic flow control" does not demand stopping the flow of
incoming data. It means only "self-regulated." Claim Construction Order at 24. EchoStar does
not dispute that its data pipelines are "self-regulated." Moreover, the opinions of its outside
counsel demonstrate that the data flow continues to be self-regulated. 8/24/06 opinion letter at
23 (Dckt. No. 826 Ex. 1) ("The EchoStar software . . . must keep up with the incoming
data . . . .").8 Thus, even the analysis of EchoStar's own counsel demonstrates that EchoStar's
alleged design-around lacks substance. *These units are not more than colorably different from
the Adjudicated Receivers and they continue to infringe.* The Court is well within its discretion
to find EchoStar in contempt on this ground as well. Stryker Corp. v. Davol Inc., 234 F.3d 1252,
1260 (Fed. Cir. 2000) (decision to proceed via contempt reviewed for abuse of discretion)."

And in conclusion Tivo said (highlighted) those DVRs with the new software are *[1]*not more than colorably different from the *Adjudicated Receivers* and *[2]continue to infringe*.

A big mistake to say [1], when Tivo devoted the whole thing before this section to argue the "Adjudicated Receivers" were absolute, unchangeable, yet here it admitted they were comparing the DVRs with the new software to the "Adjudicated Receivers", only that Tivo believed they were not more than colorably different.

Tivo then concluded they "continue to infringe", but as I have quoted from prior cases above, Tivo must prove with clear and convincing evidence "they continue to infringe", the question is did Tivo meet that standard?


----------



## James Long

jacmyoung said:


> And in conclusion Tivo said (highlighted) those DVRs with the new software are *[1]*not more than colorably different from the *Adjudicated Receivers* and *[2]continue to infringe*.


Yes ... duh ... that's not what is contention here. What is in contention is that YOU have claimed that the document "discussed at length" colorably different and yet both you and I have shown where it was mentioned ONCE.

The majority of Tivo's filing --- especially the Motion for Contempt (remember ... the big issue that will be discussed September 4th is the Motion for Contempt?) is about disabling - not colorably different.



> A big mistake to say [1], when Tivo devoted the whole thing before this section to argue the "Adjudicated Receivers" were absolute, unchangeable, yet here it admitted they were comparing the DVRs with the new software to the "Adjudicated Receivers", only that Tivo believed they were not more than colorably different.


The final argument here was offered as an "even if". Covering the event that the judge does consider (or considers considering) a software change as compliance of disabling.



> Tivo then concluded they "continue to infringe", but as I have quoted from prior cases above, Tivo must prove with clear and convincing evidence "they continue to infringe", the question is did Tivo meet that standard?


Tivo's motion for contempt is NOT based on continued infringement. They have CLEARLY said that infringement will be taken up in other proceedings. The motion for contempt is SOLELY on the issue of "disabling".

They don't have to meet DISH's straw man argument or any of yours ... they have to present the argument that they are presenting in a compelling manor and convince Judge Folsom that "disable" means "disable" ... nothing less. They DO NOT have to prove infringement to argue the strict legal argument that both parties agreed to argue on September 4th.


----------



## Greg Bimson

jacmyoung said:


> Again from KSM itself: "[a] judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement."


But what you are forgetting is how the courts work...

If TiVo wishes to press on violations against infringement, this is the section they point to. For example, if TiVo believes the 622/722, 612, etc., fall under no more than colorably different, TiVo files a motion of contempt with the court that DISH/SATS is committing violations of an injunction against patent infringement, which is the second order in the Final Judgment and Permanent Injunction, with the first order being the damages to be paid.

The third order of the Final Judgment and Permanent Injunction states to disable all storage to and playback from the hard disk drive of television data for the eight adjudicated, installed models. This what TiVo's motion is all about, and does not require a finding of infringement. In Fisher-Price v. Safety 1st, the standard used to find contempt had nothing to do with discussing infringement; there were two parts of the order that were violated, and Safety 1st was found in contempt for those violations.

DISH/SATS can state they made all kinds of modifications to the DVR's. The problem is that the order is absolute: disable the DVR functionality of eight models of DVR that were in customers hands as of the order date. Modifications of the installed base will not be considered, as that is not the standard for violating the "disable" order. DISH/SATS has stated that they have complied with the "disable" order, yet those receivers still have functionality, which is a prima facie violation of the injunction.

And of course TiVo has to counter DISH/SATS new software claim. TiVo cannot let DISH/SATS have 30 minutes in front of Judge Folsom and not counter the claim of non-infringement that DISH/SATS made in their brief.

I have the distinct feeling TiVo will file a motion for ongoing infringement not long after the 4 September hearing, to go after the boxes that were sold after August, 2006, which in their mind still infringe the Time Warp patent.


----------



## jacmyoung

Sorry folks, I am not going circular anymore simply because there is no time, the no news days are over, both E* and D* are making big news these days.

I have full D* HD serivce and now just ordered E* HD Absolute pack in time to be grandfathered in. After 8/2 I will have both HD services to compare and decide which to be my primary service, or keep both in some fashion since $29.99 for *all* the national HDs and Cinemax for $0.01/year are just a no brainer, and my DVRs will continue to work too.

Good luck on or a little after 9/4, I will be busy watching all the new HDs. Wake me up from my E* and D* HD/1080p dreams to come true with full DVR and VOD fucntions when the ruling is out to nail the last one on Tivo's you know what, and that is for Blu-ray also, what a scam!


----------



## James Long

OT? OK. Bye!

We'll be here to discuss the case if/when anything happens.


----------



## kmill14

Has jacmyoung finally realized he has nothing left to argue?


----------



## James Long

Irrelevant. We're here to discuss DBS, not jacmyoung. 

:backtotop Tivo vs Echostar


----------



## jacmyoung

kmill14 said:


> Has jacmyoung finally realized he has nothing left to argue?


To the contrary, I just loaded two more cases to prove Tivo is a goner, but right before I hit this thread came the big news, I will be busy for the next month A/B comparing E* and D* HD, DVR and VOD services. See ya all.


----------



## James Long

Well as long as you can claim "victory" and not have to prove it.


----------



## nobody99

jacmyoung said:


> To the contrary, I just loaded two more cases to prove Tivo is a goner, but right before I hit this thread came the big news, I will be busy for the next month A/B comparing E* and D* HD, DVR and VOD services. See ya all.


I just "loaded" three cases to prove that DISH is a goner. But I'm too busy too. I'm A/B comparing DISH/D* and fourteen cable companies for HDTV :lol:


----------



## Curtis52

Damages motion from TiVo submitted today. It's sealed.


----------



## Curtis52

"On on-going litigation between DISH and TiVo which might impact 4 to 6 million DISH subscribers if the satellite company loses:

Ergen: What we did was we designed around the TiVo patent and patent law encourages people to be innovative and our guys were very innovative and used some very sophisticated algorithms and so fourth to design around the TiVo patent. I believe we’ll prevail but TiVo, we’re going to have conversations with TiVo one way or the other about how we work together, and again, I’m just stubborn. I know this case inside and out. I’ve sat through trials. I’ve sat through the engineering models. I’ve sat and had the best and the brightest explain this to us, and I’m just stubborn. We don’t violate their intellectual property today, and I want to prove that. And so we’re going to go to the September 4th hearing and see who is right and so far, TiVo has been right."


----------



## James Long

[851] SEALED PATENT MOTION CORRECTED Motion on Remand for Damages During the Stay of the Permanent Injunction by TIVO Inc. (Attachments: # (1) Text of Proposed Order Proposed Order)

[849] SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: [851] Declaration of Keith R. Ugone In Support of SEALED PATENT MOTION Motion on Remand for Damages During the Stay of the Permanent Injunction. (Attachments: # (1) Exhibit Exhibit 1, # (2) Exhibit Exhibit 2, # (3) Exhibit Exhibit 3, # (4) Exhibit Exhibit 4, # (5) Exhibit Exhibit 5, # (6) Exhibit Exhibit 6, # (7) Exhibit Exhibit 7, # (8) Exhibit Exhibit 8, # (9) Exhibit Exhibit 9, # (10) Exhibit Exhibit 10, # (11) Exhibit Exhibit 11, # (12) Exhibit Exhibit 12, # (13) Exhibit Exhibit 13, # (14) Exhibit Exhibit 14, # (15) Exhibit Exhibit 14, # (16) Exhibit Exhibit 16, # (17) Exhibit Exhibit 17, # (18) Exhibit Exhibit 18, # (19) Exhibit Exhibit 19, # (20) Exhibit Exhibit 20, # (21) Exhibit Exhibit 21, # (22) Exhibit Exhibit 22, # (23) Exhibit Exhibit 23, # (24) Exhibit Exhibit 24, # (25) Exhibit Exhibit 25, # (26) Exhibit Exhibit 26, # (27) Exhibit Exhibit 27, # (28) Exhibit Exhibit 28)

[850] SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: [851] SEALED PATENT MOTION CORRECTED Motion on Remand for Damages During the Stay of the Permanent Injunction;Appendix to Declaration of Keith R. Ugone In Support of Motion on Remand for Damages During the Stay of the Permanent Injunction (Attachments: # (1) Exhibit App. Ex. 1, # (2) Exhibit App. Ex. 2, # (3) Exhibit App. Ex. 3, # (4) Exhibit App. Ex. 4, # (5) Exhibit App. Ex. 5, # (6) Exhibit App. Ex. 6, # (7) Exhibit App. Ex. 7, # (8) Exhibit App. Ex. 8, # (9) Exhibit App. Ex. 9, # (10) Exhibit App. Ex. 10, # (11) Exhibit App. Ex. 11, # (12) Exhibit App. Ex. 12, # (13) Exhibit App. Ex. 13, # (14) Exhibit App. Ex. 14, # (15) Exhibit App. Ex. 15, # (16) Exhibit App. Ex. 16, # (17) Exhibit App. Ex. 17, # (18) Exhibit App. Ex. 18, # (19) Exhibit App. Ex. 19, # (20) Exhibit App. Ex. 20, # (21) Exhibit App. Ex. 21, # (22) Exhibit App. Ex. 22, # (23) Exhibit App. Ex. 23, # (24) Exhibit App. Ex. 24, # (25) Exhibit Exhibit 25, # (26) Exhibit App. Ex. 26, # (27) Exhibit App. Ex. 27, # (28) Exhibit App. Ex. 28, # (29) Exhibit App. Ex. 29, # (30) Exhibit App. Ex. 30, # (31) Exhibit App. Ex. 31, # (32) Exhibit App. Ex. 32, # (33) Exhibit App. Ex. 33, # (34) Exhibit App. Ex. 34, # (35) Exhibit App. Ex. 35, # (36) Exhibit App. Ex. 36, # (37) Exhibit App. Ex. 37, # (38) Exhibit App. Ex. 38, # (39) Exhibit App. Ex. 39, # (40) Exhibit App. Ex. 40, # (41) Exhibit App. Ex. 41, # (42) Exhibit App. Ex. 42, # (43) Exhibit App. Ex. 43, # (44) Exhibit App. Ex. 44, # (45) Exhibit App. Ex. 45)

In an odd way, I'm happy it is sealed ... less to download.


----------



## James Long

Curtis52 said:


> "On on-going litigation between DISH and TiVo which might impact 4 to 6 million DISH subscribers if the satellite company loses:
> 
> Ergen: What we did was we designed around the TiVo patent and patent law encourages people to be innovative and our guys were very innovative and used some very sophisticated algorithms and so fourth to design around the TiVo patent. I believe we'll prevail but TiVo, we're going to have conversations with TiVo one way or the other about how we work together, and again, I'm just stubborn. I know this case inside and out. I've sat through trials. I've sat through the engineering models. I've sat and had the best and the brightest explain this to us, and I'm just stubborn. We don't violate their intellectual property today, and I want to prove that. And so we're going to go to the September 4th hearing and see who is right and so far, TiVo has been right."


Source?


----------



## peak_reception

DISH Network Corporation Q2 2008 Earnings Call Transcript:

Operator

Our next question comes from the line of Greg Mafidus [ph], Sanford.

Greg Mafidus - Sanford

Hi. Charlie, I know you may not be able to comment extensively on the TiVo litigation, but I'm wondering, specifically, what your contingency plans are in the event that the Delaware Court has not taken the case and if you have to go in on September 4th, potentially, with the risk of having to shut down as many as four to six million DVR's. What kind of contingency plan would you have in place to do or what exactly would you do if that turned out to be the case?

Charlie Ergen

Well, I really can't comment on our contingency plans. But let me put the TiVo litigation in perspective for you. One, is TiVo is - on September 4th, we have a hearing where TiVo have said that we didn't - it's a very narrow issue but the issue is that we didn't comply with the injunction of the court, and the court said that we have to turn off infringing set-top boxes. DVR's. It in no way restricts our ability - and what we did was - we were - we designed around the TiVo patent. And patent law encourages companies to be innovative and our guys were very innovative and used some very sophisticated algorithms, and so forth, to design around the TiVo patent. And obviously, as they explained the TiVo patent to the Court - to the Court of Appeals, everything we know that we've designed around that and got an external confirmation that we have successfully designed around that. We then turned our boxes off and downloaded new software to them and turned them back on again, so we believe we comply with the injunction.

I don't believe that TiVo is going - I believe that we'll prevail at that September 4th hearing and we will be found that we were not contempt of the judge's order.

If we were to be found in contempt, again, hypothetically, which I don't think is going to happen, we would merely go to the Court of Appeals for stay of that. I don't think TiVo can - I don't think TiVo is going to change patent law But that you can't design around patents. I think that's a pretty - it think that's a principle. It's been in patent law for a long time and I don't think that that's going to change in this case. There's just too many cases out there where people have been able to with around patent in very similar situations.

So, we certainly would go to Court of Appeals. Additionally, we're not prevented from - there's nothing that - nothing that TiVo has accused as of today and the course, for September 4th, that says we shouldn't be able to ship our own - ship fares [ph] today. So, we continue to ship DVRs that don't infringe today.

Having said that - I mean obviously, at some point, I believe we'll prevail. But TiVo - we're going to have conversations with TiVo one way or the other about how we work together. And again, its - I'm just stubborn. I know this case inside and out, I've sat through trials, I've sat through the engineering models, I've sat and have the best and the brightest explain this - and I'm just stubborn. We don't violate their intellectual property today and I want to prove that. And so, we're going to go to the September 4th hearing and see who's right.

And so far, TiVo's been right. So far, TiVo has won the court cases and at some - let's make it clear, we - through the Court of Appeal process, we're - we have to pay for intellectual property that the court says that we violated and, we're going to have to pay them for that. Now, we've changed that intellectual property in a way that we don't violate that anymore. And, I'm just stubborn enough to say "Why am I going to pay for something that we don't - that we don't violate?" And, its one of the great things about our technology that we were able to completely change the software. We were found not to violate the hardware, only the software. And, we changed the software. And, I think it's a real feather in our cap towards technology. It's a feather in our cap that we can design around it. It's a feather in our cap that we could turn the boxes off and restart them with new software and our bet is that we prevail on the September 4th hearing. Having said that, that still doesn't mean we won't have a relationship with TiVo, because I think we should. I think there's ways that we should work together, and I've said for the last year or so that at some point in time, we should have a relationship but we wouldn't go on to a relationship where somebody accuses us of something that we don't do.

Greg Mafidus - Sanford

Thank you, Charlie. Very helpful.

Also:

Kit Spring - Stifel Nicolaus

Okay. Can you talk about the impact of TiVo to SATS? You talked about it at DISH. How would it differ at SATS?

Charlie Ergen

It's a bit different. For SATS, it's opportunity, right? For DISH, the risk is you have existing customers that might loose part of their functionality, right? So that's kind of consumer risk where you - in theory, you don't have to replace the box, right? That makes sense. This is kind of a crazy thing I didn't answer in the last call but I think TiVo's position as well - you can send the guy or you can send somebody at 211 box today but if you had the 211 box, you have to turn it off, and so you can send it back to him and he'll send a new one, that's okay, but you can't use an existing one that you have if you download new software to it. So kind of a conflicting thought process but DISH has got consumers. That's their kind of risk.

SATS is an opportunity. There's not - they don't have consumers to deal with directly but what they do have is to think TiVo was successful is inventing the DVR. And the only people in the world that have access to DVR and the only people that you can - you have to - everybody would have to license from them. If everybody has a choice of licensing from TiVo or from SATS because SATS was found not to violate TiVo's patent, then it's an opportunity for them to go out and build set top boxes for people and include the DVR functionality for people where it gives them an option not have to pay TiVo for a license. So it's a great opportunity for them and certainly it's a high-risk reward. There's not much risk for SATS, but there's high reward there.


----------



## Herdfan

peak_reception said:


> I believe that we'll prevail at that September 4th hearing and we will be found that we were not contempt of the judge's order.


What event in his past makes him think they will win? Not trying to be a smartass, but he has had hit butt kicked all over the place in this case.

Is he really that delusional?


----------



## Greg Bimson

Herdfan said:


> What event in his past makes him think they will win? Not trying to be a smartass, but he has had hit butt kicked all over the place in this case.
> 
> Is he really that delusional?


Look what happened in the distants case. It is a pyrrhic victory for DISH that NPS is allowed to offer distant networks, but otherwise a complete defeat, because it now requires a distant network subscriber to pay two sources for their programming.


Charles Ergen said:


> Having said that - I mean obviously, at some point, I believe we'll prevail. But TiVo - we're going to have conversations with TiVo one way or the other about how we work together. And again, its - *I'm just stubborn*. I know this case inside and out, I've sat through trials, I've sat through the engineering models, I've sat and have the best and the brightest explain this - and *I'm just stubborn*. We don't violate their intellectual property today and I want to prove that. And so, we're going to go to the September 4th hearing and see who's right.


The problem is that 4 September doesn't determine if DISH/SATS "violate their intellectual property today". So stubborn may actually be a very good word to use.


----------



## James Long

Greg Bimson said:


> Look what happened in the distants case. It is a pyrrhic victory for DISH that NPS is allowed to offer distant networks, but otherwise a complete defeat, because it now requires a distant network subscriber to pay two sources for their programming.


And get them in lower quality ... plus DISH is making a lot less off of leasing the transponder to NPS than they made selling the channels to individual customers (per their court filings). Having the NPS distants serves few customers and seems to be more of a sign of stubbornness - not wanting to let go. Now NPS has won in court perhaps DISH will not let NPS renew the lease and put some valuable channels on that transponder. (Or be sued by NPS for not allowing them to use the transponder. :lol: )



> The problem is that 4 September doesn't determine if DISH/SATS "violate their intellectual property today". So stubborn may actually be a very good word to use.


It will be a gauge of if DISH is in contempt for not disabling the DVRs ... but the actual test of DISH's software is yet to come.


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## Curtis52

Dish filed their response in the Delaware suit today. It's sealed.


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## James Long

They're taking away all the fun.


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## Bidderman9

Maybe they will post a redacted version so that we can use our secret decoder rings again.


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## Albie

Bidderman9 said:


> Maybe they will post a redacted version so that we can use our secret decoder rings again.


Just decoded --- "Be sure to drink your Ovaltine"


----------



## Mainer_ayah

James Long said:


> but the actual test of DISH's software is yet to come.


The actual test of the case will be when Dish is forced to shut down the DVR functions, or pay TiVo for ongoing licensing. And that will happen long before the alleged software that was allegedly downloaded is proven to be the true hoax that it is. In other words, the software will mean nothing.


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## Jim5506

Well aren't we just a little ray of sunshine!


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## Bidderman9

Mainer_ayah said:


> The actual test of the case will be when Dish is forced to shut down the DVR functions, or pay TiVo for ongoing licensing. And that will happen long before the alleged software that was allegedly downloaded is proven to be the true hoax that it is. In other words, the software will mean nothing.


I have to agree with that. I don't think that it will ever get to the point where it is determined whether the software is "infringing" or not.


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## spear61

James Long said:


> And get them in lower quality ... plus DISH is making a lot less off of leasing the transponder to NPS than they made selling the channels to individual customers (per their court filings). Having the NPS distants serves few customers and seems to be more of a sign of stubbornness - not wanting to let go. Now NPS has won in court perhaps DISH will not let NPS renew the lease and put some valuable channels on that transponder. (Or be sued by NPS for not allowing them to use the transponder. :lol: )
> 
> QUOTE]
> 
> NPS has a two year contract up in November 08. Then we shall see what the value of those 2 conus transponders really is since the rollout of a bunch of locals in the last two years. I think NPS is paying a couple hundred thousand per month per transponder (2-2.5 million per year. How many channels can the new E11 carry on 2 transponders?


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## Curtis52

Bidderman9 said:


> I have to agree with that. I don't think that it will ever get to the point where it is determined whether the software is "infringing" or not.


So Dish is rightfully suing in Delaware?


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## Curtis52

Mainer_ayah said:


> The actual test of the case will be when Dish is forced to shut down the DVR functions, or pay TiVo for ongoing licensing.


I figure that the test of the case will be whether Judge Folsom or the appeals court decides to do that. Once that decision has been made the test is over. Pencils down.


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## spear61

Curtis52 said:


> I figure that the test of the case will be whether Judge Folsom or the appeals court decides to do that. Once that decision has been made the test is over. Pencils down.


Years to go as Charlie said in his earnings conference. sic " we'll just appeal it and things will continue on"


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## James Long

spear61 said:


> Then we shall see what the value of those 2 conus transponders really is since the rollout of a bunch of locals in the last two years.


FYI: NPS is only leasing one transponder ... and it is at 119°.


----------



## James Long

Mainer_ayah said:


> The actual test of the case will be when Dish is forced to shut down the DVR functions, or pay TiVo for ongoing licensing.


Make up your mind. Which is the real test of the case?

My answer: None of the above. Perhaps the events you propose will test DISH's resolve to defend their side of the case through until the last court has ruled and there is nothing more to appeal ... but there is no forced shut down - only a court request. NOTHING can force DISH to do anything that they do not agree to do.


> And that will happen long before the alleged software that was allegedly downloaded is proven to be the true hoax that it is. In other words, the software will mean nothing.


Wow ... nice to see that you're approaching the case with an open mind.


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## scooper

I'm waiting for September 4 to see what actually happens.


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## James Long

scooper said:


> I'm waiting for September 4 to see what actually happens.


That's a good idea ... especially for those who seem to think that September 4th will be anything more than "DISH is in contempt" or not.


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## peak_reception

*Top Ten Reasons why Absolutely Nothing will be decided on Sept. 4th, 2008:*

10) Dish's petition for Writ of Certiorari is accepted by the Supreme Court and the case is scheduled for 2012. :up:

9) On September 3rd, Dish files a strategic countersuit in Ulan Bator, Mongolia, triggering an automatic 6 month extension in Texas. :icon_lame

8) On the morning of September 4th it's found that he court stenographer is still not back from vacation yet so the hearing is rescheduled for late November. :sunsmile:

7) On August 15th, TiVo offers to settle the case if Dish pays a $10 per DVR box / per month royalty licensing agreement. Dish declines the offer but does make a counter-offer of one penny per DVR box / per year. Such negotiations are seen as a positive sign that the two sides are talking and may arrive at a mutual agreement/settlement soon. :icon_peac Or maybe not.... :nono2:

6) in late August, while reviewing the scope of his injunction, Judge Folsom is rushed to the hospital to undergo an emergency colonoscopy.  The case is reassigned to Judge Judy but she's not quite up-to-speed on it yet by the 4th. Due to Halloween, Thanksgiving, Christmas, and Hanukkah, the hearing is rescheduled for April 1st, 2009, where it belongs. :roundandr

5) Dish's new Bronze, Silver, Gold, and Platinum tiers and channel counts are caught up in confusion with Summer Olympic metals and medal counts. On September 1st the lawyers unanimously agree to a 2 month extension to sort things out.   

4) On Labor Day Weekend Tropical Storm Gustav moves out of the Gulf of Mexico inland over Galveston Texas. A State of Emergency is declared and all government offices are closed, even in bone-dry Marshall Texas 180 miles to the north. There is unanimous agreement for a 3 month extension. !pride

3) On August 22nd, Dish throws a wrench into the proceedings, declaring that the new "Turbo" software no longer infringes. The Appeals Court stays further action until Turbo is properly evaluated. Dissent is mufflered (sic). :scratch:

2) In late August Charlie Ergen :money: is committed to The Colorado State Psychiatric Hospital suffering from a schizophrenic delusion that he is Hercules, Son of Zeus. :icon_stup He is declared incompetent to manage the affairs of EchoStar/Dish and the lawyers agree unanimously to a 6 month extension.

1) Judge Folsom's Eastern District Court of Texas is still on DTV-Pal time come September and completely skips the hearing by mistake. :crying:


----------



## Curtis52

scooper said:


> I'm waiting for September 4 to see what actually happens.


I wasn't aware there was another option.


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## scooper

Perhaps rephrasing that as "I refuse to do any more idle speculation until 9/4"


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## Bidderman9

Curtis52 said:


> So Dish is rightfully suing in Delaware?


Everybody has the right to sue. I just think this thing will be settled long before the Delaware case comes in to play.


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## jacmyoung

peak_reception said:


> *Top Ten Reasons why Absolutely Nothing will be decided on Sept. 4th, 2008:*
> 
> 10) Dish's petition for Writ of Certiorari is accepted by the Supreme Court and the case is scheduled for 2012. :up: ...


Pretty good stuff, only one thing, if E* is ruled in contempt on or soon after 9/4, and the ruling is then upheld on appeal, even if the Supreme Court accepts the petition and reverse the judgment and vacate the injunction in a later time, the contempt will still stand because the contempt will be a violation of a court order, not influenced by the final judgment or its reversal.

That said however, if E* is found in contempt in the end, they will disable the DVRs on the list, period. Not doing so will have the most serious consequences. Charlie had never disobeyed a final court order before.

While I believe E* will prevail, the notion Charlie will disobey a final court order has no basis at all.


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## jacmyoung

Bidderman9 said:


> Everybody has the right to sue. I just think this thing will be settled long before the Delaware case comes in to play.


The problem is you agreed with the post prior to your last post, and by doing so Tivo's argument against E*'s suit in DE can be tossed out, therefore DE should have more reason to take E*'s case.

I think that was what Curtis was saying.

As far as any settlement, Charlie has said very clearly he will consider it after the appeals court rules, if it will ever get that far in the worst case scenario for him. Otherwise he is ready to settle after he wins on or a little after 9/4, and by that my take is he wants the damages re-assessed in exchange for some kind of licensing agreement with Tivo maybe.


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## peak_reception

jacmyoung, I for one am glad to have you back. This thread is pretty bare and boring without you. Here's to watching events unfold in the coming month :goodjob:


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## James Long

jacmyoung said:


> Charlie had never disobeyed a final court order before.


Really? How many final orders of a court has Mr Ergen had to consider obeying (or not)?


> While I believe E* will prevail, the notion Charlie will disobey a final court order has no basis at all.


The injunction was a final order of the court. The question of September 4th is whether or not that order was obeyed. There seems to be a lot of people questioning whether or not that final order was obeyed. That in itself is basis to question whether DISH will obey a "final order".

Unless you're redefining final order as you have done before with other terms. 

And if you are redefining refer to the first question, how many of your definition "final order" has DISH faced? Is there reasonable precedent to show which way DISH will go? One "final" case? Two?


----------



## jacmyoung

James Long said:


> Really? How many final orders of a court has Mr Ergen had to consider obeying (or not)?...


That was not the question I asked. Show me one time he had disobeyed a final court order. Your notion that he will refuse to disable the listed DVRs even if the appeals court upholds a contempt ruling has no basis at all. Clever change of the question does not answer my question.

Everyone in his/her life must consider how to obey the law and order all the time.

This order was not disobeyed, he believes he obeyed the order, the final verdict has yet to be rendered, not even on or soon after 9/4.

If your notion that once an order is issued, and once a motion is granted to show of cause why the party subject to the order has not violated the order, somehow automatically means the party has disobeyed the order, then all I can say is, well let me just stop from going further for now.


----------



## jacmyoung

peak_reception said:


> jacmyoung, I for one am glad to have you back. This thread is pretty bare and boring without you. Here's to watching events unfold in the coming month :goodjob:


I have been busy watching HD Olympics, free HBO/SHO/Starz/Cinemax HDs using both E* and D* HDDVRs


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## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> Really? How many final orders of a court has Mr Ergen had to consider obeying (or not)?...
> 
> 
> 
> Why are you asking me this question? How about showing me one?
Click to expand...

It is your claim. Why does everyone else have to prove your claims? Prove it yourself!

- And now Mr Post Edit has changed the post I was responding to removed the above and changed it to the following:


jacmyoung said:


> That was not the question I asked. Show me on time he had disobeyed a final court order. Your notion that he will refuse to disable the listed DVRs even if the appeals court upholds a contempt ruling has no basis at all. Clever change of the question does not answer my question.
> 
> Everyone in his/her life must consider how to obey the law and order all the time.


I did show you a time he has disobeyed a final court order. In less than 30 days we will see a court rule if that disobedience will lead to a judgement of contempt.

A not so clever change of your retort does not change how wrong you are. 

BTW: If you need another example go back to the distants case where an injunction was issued requiring DISH to cease delivering distants to all customers who were not qualified. That injunction was a final order of the court. DISH refused to follow it and their refusal played a major part in the issuance of the much stronger injunction requiring DISH to cease delivering distants to ALL customers regardless of qualification.

So ... what final orders have DISH followed? 



> This order was not disobeyed, he believes he obeyed the order, the final verdict has yet to be rendered, not even on or soon after 9/4.


It doesn't matter what HE believes ... the court issued an order that was labeled final. It is obvious that you want to completely ignore the court's definition of "final". Without that court standard your argument is once again irrelevant.


> If your notion that once an order is issued, and once a motion is granted to show of cause why the party subject to the order has not violated the order, somehow automatically means the party has disobeyed the order, then all I can say is, well let me just stop from going further for now.


Conceeding the argument would be a good idea.

Read a little more ... write a little less - at least figure out what you're going to say before submitting it. It makes it difficult to respond when you keep editing your posts.


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## jacmyoung

James Long said:


> ...In less than 30 days we will see a court rule if that disobedience will lead to a judgement of contempt...


If the court rules him not in contempt, he will not have disobeyed the order. So my question still stands, show me one example he disobeyed a final court order?

We don't know if he disobeyed this order or not, just because you think so has no bearing on what the court will say. Even if this court rules him in contempt, as long as the appeals court overturns the ruling, he will still have not disobeyed the court order.

The funny thing is Tivo in an attempt to prove E* not obeying the order, intentionally avoided the term "Infringing Products" explicitly used in the order, instead used its own term "Adjudicated Receivers". According to some of you, once "Infringing Products", always infringing products, if so you need to ask why Tivo was so shy about using this term? Why not proudly use the "Infringing Products" term in its responses? Why didn't Tivo insist the judge use the "Adjudicated Receiver" term in the order?

By Tivo avoiding the term "Infringing Products" you can see how the judge may teach them a lesson. Once a product no longer infringes, it is no longer an "Infringing Product".


----------



## jacmyoung

James Long said:


> ...Read a little more ... write a little less - at least figure out what you're going to say before submitting it. It makes it difficult to respond when you keep editing your posts.


Please don't lecture me on that, because it will make you look very bad when the judge rules in favor of E*. I have read plenty of cases, they all pointed to one conclusion.


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## James Long

jacmyoung said:


> If the court rules him not in contempt, he will not have disobeyed the order. So my question still stands, show me one example he disobeyed a final court order?


Please read my ENTIRE post - and learn what a final order is before throwing around the term loosely.


jacmyoung said:


> James Long said:
> 
> 
> 
> ...Read a little more ... write a little less - at least figure out what you're going to say before submitting it. It makes it difficult to respond when you keep editing your posts.
> 
> 
> 
> Please don't lecture me on that, because it will make you look very bad when the judge rules in favor of E*. I have read plenty of cases, they all pointed to one conclusion.
Click to expand...

Another example of poor reading. The court isn't ruling on your posting skills. Constantly changing your posts demonstrates your impulsiveness. It also makes people wonder what you took back via edit. As noted, it IS difficult to have a conversation with someone who keeps changing/redacting what they say.

But that is not really the topic ... you made a claim that Mr Ergen (who you called Charlie) obeys all final orders of the court and you refuse to back up that claim. Judge Folsom won't be ruling on this ... you only face the judgment of your peers and other posters who read your posts.


----------



## jacmyoung

I said Charlie has never disobeyed a final court order, how can you insist I prove it by showing an example he did disobey? You have to give me an example to the contrary to dispute my claim.

You have yet done so. Saying anything else is changing the subject, which I usaully don't care to waste time on.

If you are bothered by my edits, have a nice night sleep and come back tomorrow to respond. There is no need to feel compelled to slam a pro E* post in an E* forum as fast as it comes up


----------



## James Long

jacmyoung said:


> I said Charlie has never disobeyed a final court order, how can you insist I prove it by showing an example he did disobey? You have to give me an example to the contrary to dispute my claim.
> 
> You have yet done so. Saying anything else is changing the subject, which I usaully don't care to waste time on.
> 
> If you are bothered by my edits, have a nice night sleep and come back tomorrow to respond. There is no need to feel compelled to slam a pro E* post in an E* forum as fast as it comes up


It isn't slamming ... it is just frustrating to type a reply to something that has been redacted and then have to go back and reply to the rest of the post that some impulsive poster didn't have the patience to get right the first time. How long do you need to get it right? I gave you 12 hours to edit that one. 

As for your claims:
You said Charlie has never disobeyed a final court order.

I have given you two examples of a court's "final order" that has been disobeyed. You have not proven your point. Your claim that Charlie has _*never*_ disobeyed a final order is false - and easily proven false by the introduction of any "final order" not obeyed.

My secondary question was how many "final orders" has Charlie obeyed. I have asked you for examples of a "final order" Charlie _has_ obeyed. You have not provided one. Can you provide more than one?


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## Curtis52

A scheduling conference has been set for Sept. 11 in Delaware.


----------



## Curtis52

The Dish response to TiVo's Delaware motion to dismiss is available. There are some redactions.


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## jacmyoung

James Long said:


> ...I have given you two examples of a court's "final order" that has been disobeyed. ...


Sorry I did not read two of them, I will try to go back and try to find them if I could. You said two, I could only remmeber reading one which I disputed.



> ...My secondary question was how many "final orders" has Charlie obeyed. I have asked you for examples of a "final order" Charlie _has_ obeyed. You have not provided one. Can you provide more than one?


Charlie has obeyed this final order by removing all the "Infringing Products" as specified in the order, outside of the scope of the order because these same products are now no longer infringing on the patent, therefore no longer under the control of this order.

I know you disagree, but you simply can not use this one as an example to prove your notion, because the court has not ruled on it yet. I still don't know which was your second example.

Besides, I do not have to offer you any example of Charlie "obeying a final court order" because the question here is whether Charlie had ever disobeyed a final court order, as you have claimed he did. I made no claims of any kind, I only disputed your claim, so to turn around ask me to provide examples of Charlie obeying court orders is trying to chang the subject. The burden of proof is on you since you made that claim, I did not make any claim.

Again attacking my habit of editing is arguing against the man (An ad hominem argument), another fallacy in debate, when you can't debate on the question at hand. I have offered you a simple solution, wait for a day, by that time you know I will have done with all the editing, you will have plenty of time to work on it.


----------



## jacmyoung

Curtis52 said:


> A scheduling conference has been set for Sept. 11 in Delaware.


Well I don't know if the DE court will look into the outcome of the 9/4 hearing as a determining factor.


----------



## jacmyoung

Now I went back and saw your second example, no in that case Charlie still did not disobey the final court order, he followed the order and turned off the distants. He then made an arrangement to have another carrier use his facility to take over the distants. Did you mean he disobeyed the order for doing so?

The court had recently found Charlie not in contempt of that order by transferring the distants delivery to another carrier, meaning he did not disobey the order.

It goes to show you one simply cannot assume he is now disobeying a final court order just because you believe so, the court must make a decision whether or not he has disobeyed the current order. If he is not in contempt after 9/4, or even if he is, but on appeal the ruling is overturned, then he will not be in violation of the order, therefore not disobeyed the order.

The distant case is a perfect example. You need to first understnad what we are arguing about, we are arguing whether he ever "disobeyed a final court order", not whether he ever violated the law.

He had clearly violated the law in the distant case, and he also had violated the patent law in this case, but that is not the same as him disobeying a final court order.


----------



## Greg Bimson

jacmyoung said:


> Well I don't know if the DE court will look into the outcome of the 9/4 hearing as a determining factor.


They'll have to look at something, whether it be the outcome, or anything else, from the court in eastern Texas.

The Delaware case has become a 100 percent jurisdictional issue. And because we have not seen what was contained in DISH/SATS reply, we do not fully know what the 11 September discussion will be about.

EDIT: I'll take that last part back. I've found the DISH/SATS reply to TiVo's motion to dismiss, but now I'll have to read it.


----------



## Greg Bimson

From what I have read so far, it is exactly the same argument that is being presented in Judge Folsom's Court, with the exception being that DISH/SATS argument that *procedurally*, they are entitled to a speedy resolution for a declarative judgment on their new software.

This will be interesting.


----------



## jacmyoung

Of course the next interesting question is, we know no matter the ruling from the 9/4 hearing, Tivo will ask the same court to grant a new proceeding for the new software infringement judgment.

The question is will Judge Folsom consider the DE case when deciding whether to grant such new proceeding?

Regardless, to ask for a "speedy declaration judgment" is almost like to ask for a summary judgment, which shows DISH's confidence in its new software being non-infringing, because as I have said before, the court must weigh heavily in favor of the non-movant in rendering a summary judgment. Of course a speedy declaration judgment is not the same as a summary judgment, rather a speedy bench trial, but you get my point.


----------



## jacmyoung

Please tell us what court order did Charlie disobey again so we can continue, you said you give me two examples, in both cases I have clearly argued you were wrong by saying they disobeyed those orders.

And stop all the other useless personal attacks, stick to the points of argument. Again you used only two examples, one I disproved, the other is yet to be determined, and you dared to say based on that two examples that Charlie ignored orders "all the time"?

What am I suppose to apologize for, because of your above nonsense?


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## James Long

What nonsense? You don't understand the term "final order". That's pretty clear.

Anyways we have Tivo vs Echostar (or at least Echostar vs Tivo) to discuss.
No need to waste a minute on "jacmyoung's misunderstandings".

Redacted filings attached ... the filing and Dan Minnick's declaration ---


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## jacmyoung

I have just read the Tivo's DE brief and DISH's response. And indeed I was wrong to expect Tivo to seek a new proceeding to resolve the new software infringement issue in front of Judge Folsom.

As DISH correctly pointed out, Tivo has no intention to seek a new proceeding on the new software infringement ruling, Tivo believes the contempt proceeding on 9/4 is sufficient to address all issues, including the new software infringement issue.

Tivo's memory was too short, they forgot already on and after the 5/30 meeting, the judge agreed with DISH and denied Tivo's request for an additional discovery to address the new software infringement issue. The judge agreed with DISH already the 9/4 hearing could not touch the new software infringement issue, and yet Tivo even today still insist the 9/4 comtempt hearing will address the new software infringement argument, among other things.

What kind of crap is that?


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## jacmyoung

James Long said:


> What nonsense? You don't understand the term "final order". That's pretty clear.
> 
> Anyways we have Tivo vs Echostar (or at least Echostar vs Tivo) to discuss.
> No need to waste a minute on "jacmyoung's misunderstandings".
> 
> Redacted filings attached ... the filing and Dan Minnick's declaration ---


You can continue to change the subject by attacking me for "not understanding what a final order is", but that does not distract my argument at all.

You said from the beginning that even if DISH is in contempt on 9/4, and the appeals court then upholds the contempt ruling, DISH will still not disable the DVR functions on those DVRs on the list.

I am simply saying you have absolutely no basis in making such statement, Charlie had never disobeyed a court order when he had been ruled in contempt or in violation, because he had never been told he was in contempt or in violation of an order yet, not in this case nor in the distant case.

To the contrary DISH and Charlie had made many statements that if the court rules them in contempt this time and the appeals court upholds it, they will have to disable those DVRs. DISH's own statements and also their past actions are in direct contrast to your baseless statement above.

But I agree we have run the course on this one.


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## James Long

jacmyoung said:


> You can continue to change the subject by attacking me for "not understanding what a final order is", but that does not distract my argument at all.
> 
> You said from the beginning that even if DISH is in contempt on 9/4, and the appeals court then upholds the contempt ruling, DISH will still not disable the DVR functions on those DVRs on the list.
> 
> I am simply saying you have absolutely no basis in making such statement, Charlie had never disobeyed a court order when he had been ruled in contempt or in violation, because he had never been told he was in contempt or in violation of an order yet, not in this case nor in the distant case.
> 
> To the contrary DISH and Charlie had made many statements that if the court rules them in contempt this time and the appeals court upholds it, they will have to disable those DVRs. DISH's own statements and also their past actions are in direct contrast to your baseless statement above.
> 
> But I agree we have run the course on this one.


Not changing the subject ... just trying to keep you on it since you made a claim, repeated it and now want to let it drop off to the side and pretend you never said it. The definition of "final order" is key to your claim. If you were using a court definition you would be so obviously wrong that even you would notice. 

_"Charlie had never disobeyed a court order when he had been ruled in contempt or in violation, because he had never been told he was in contempt or in violation of an order yet."_

So is THAT your definition of "final order". If so it is totally irrelevant to reality. After all, it only demonstrates that in the ZERO times that "Charlie" has faced a jacmyoung brand "final order" he has done absolutely nothing. That is like saying every time I have met you in person I have shaken your hand or slapped your face. Neither can be proven since we've never met in person.

So how can you use an event that has never happened (in your opinion) to prove your point?

That is actually what I was getting at when I asked you to say when DISH has faced a jacmyoung defined "final order". I knew that one couldn't exist. So thanks for proving me right.

A real "final order" ... the way the court defines the term ... has been issued several times against DISH. Once you understand the court definition you'll understand that DISH ignores those often.


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## James Long

jacmyoung said:


> I have just read the Tivo's DE brief and DISH's response. And indeed I was wrong to expect Tivo to seek a new proceeding to resolve the new software infringement issue in front of Judge Folsom.


Congratulations on your speed reading.


> ... and yet Tivo even today still insist the 9/4 comtempt hearing will address the new software infringement argument, among other things.
> 
> What kind of crap is that?


It depends. When "today" did Tivo insist what you claim? The filing released was Echostar's. Tivo hasn't said anything in a week - let alone "insist".

Don't get confused by Tivo's future plans in Texas. We all know that they wanted to "work ahead" to get discovery for the next step in the Texas case (and were shot down by Judge Folsom). All they are trying to do in Delaware is make sure that the case comes back to the friendly confines of the Texas court (where they will eventually address the software issues).


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## nobody99

jacmyoung said:


> ... and yet Tivo even today still insist the 9/4 comtempt hearing will address the new software infringement argument, among other things.


TiVo asked Judge Folsom for limited discovery. The Judge Folsom, in "the interest of judicial economy" denied the request. I read it this way: "I understand what you are asking for, but you won't need it."

By the way, have you stopped beating your wife?


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## peak_reception

nobody99 said:


> TiVo asked Judge Folsom for limited discovery. The Judge Folsom, in "the interest of judicial economy" denied the request. I read it this way: "I understand what you are asking for, but you won't need it."


 That's as plausable as any other interpretation. The judge is not showing his cards. yet.



> By the way, have you stopped beating your wife?


 Please drop the personally abusive crap. jacmyoung does not stoop to this level and neither should you.


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## nobody99

peak_reception said:


> Please drop the personally abusive crap. jacmyoung does not stoop to this level and neither should you.


Oh, let me see if I understand you (and, by the way, I was hoping that jacmyoung would respond first, but you'll do).

You felt compelled to respond to an unfounded accusation, even if it has nothing to do with the subject matter at hand?

Kinda like how TiVo responded to DISH's contention that the software is new, even though it has nothing to do with the contempt hearing?

I was simply making a point - when someone throws out an accusation, you don't simply ignore it as jacmyoung has suggested should have done.


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## jacmyoung

nobody99 said:


> TiVo asked Judge Folsom for limited discovery. The Judge Folsom, in "the interest of judicial economy" denied the request. I read it this way: "I understand what you are asking for, but you won't need it."...


You have absolutely no understanding of the judge's decision at all. When the judge said in the interest of court economy, it had nothing to do with denying Tivo's discovery request, just ask James himself.

The only reason the judge denied Tivo's discovery request was as DISH pointed out, that Tivo's request was not proper, a discovery for the purpose of determining new software infringement cannot be allowed in the context of this contempt proceeding, period. As for your personal attack, I hope James will finally make a stand against it in public.

What James is say now is that Tivo has not shown its card yet, that Tivo may still, after reading this latest DISH response, elect to finally seek a new proceeding in Texas court to determine the new software infringement issue. That may be true, but what I am saying is Tivo should at least have told the DE court of such intention already. By not doing so, and by insisting at this point so far that the 9/4 contempt proceeding will take care of the new software infringement issue, therefore arguing that this new DE suit is not necessary or not proper, is a stupid move, and it is now too late, because I don't believe there are any more briefings allowed (correct me if I am wrong) before the 9/11 DE confernece. Tivo can not go into the 9/11 conference meeting to make a new declaration. DISH has clearly seized on this Tivo's mistake and made a good point of why only the DE court now has the jurisdiction over the new software infringement suit, because so far Tivo has refused to seek such proceeding anywhere, not in DE, nor in Texas.

In fact by Tivo not indicating its intention to seek such a new proceeding, DISH was able to go one step further to argue that such inaction indicates Tivo does not have solid evidence to prove the DISH's new software still infringes. When you don't know if you can win, of course you will be hesitated to file such complaint.

As far as James you continued distraction on the "disobeying the final court order" argument, let me concede that you are right that I do not understand what a final court order means, so to stop your distraction, and my only purpose is to point out that your consistent claim has no basis at all.

That claim was that even if this court finds DISH in contempt on or after 9/4, and even after the appeals court upholds such ruling, DISH will still not disable the listed DVRs. To that I say nonsense. You have absolutely no basis to make such claim. All evidence and DISH's past actions and their own public statements on this question are in direct contrast to your such claim.

I hope people do not make a baseless claim and suggest what DISH will do based on such false claim, especially when by doing so will really get DISH into serious legal trouble for not obeying a court order, it is irresponsible to make such baseless claim or suggestion.


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## Greg Bimson

jacmyoung said:


> As DISH correctly pointed out, Tivo has no intention to seek a new proceeding on the new software infringement ruling, Tivo believes the contempt proceeding on 9/4 is sufficient to address all issues, including the new software infringement issue.
> 
> Tivo's memory was too short, they forgot already on and after the 5/30 meeting, the judge agreed with DISH and denied Tivo's request for an additional discovery to address the new software infringement issue. The judge agreed with DISH already the 9/4 hearing could not touch the new software infringement issue, and yet Tivo even today still insist the 9/4 comtempt hearing will address the new software infringement argument, among other things.
> 
> What kind of crap is that?


What?

Let's see if I have this right. DISH/SATS defense in the contempt hearing is that their new software doesn't infringe. DISH/SATS also has filed a suit in a separate court, where they allege their new software doesn't infringe. Only one of the two courts can take that case.

It isn't that TiVo believes the 4 September hearing will address software infringement. TiVo believes since DISH/SATS filed motions with the existing Texas court that the new software does not infringe, it makes addressing the software in a separate court a jurisdictional issue.

The new software was in front of the Texas court before an action was filed in the Delaware court. The BEST DISH/SATS can hope for is that the Delaware court takes the case, but only on the ViP receivers. That will do nothing for the 8 models in the hands of customers that require disabling by the Texas court.


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## Greg Bimson

jacmyoung said:


> What James is say now is that Tivo has not shown its card yet, that Tivo may still, after reading this latest DISH response, elect to finally seek a new proceeding in Texas court to determine the new software infringement issue. That may be true, but what I am saying is Tivo should at least have told the DE court of such intention already.


What you've misinterpreted is that TiVo is only stating the new software has been discussed in the Texas court, and therefore, must be addressed in Texas before it is addressed in Delaware.

This is a completely jurisdictional issue, nothing based on the merits of the software.

You can tell DISH/SATS is grasping at straws when their defense at the contempt hearing in Texas and the response for the motion to dismiss in Delaware look eerily similar. Yet only one court can have jurisidiction.


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## nobody99

jacmyoung said:


> You have absolutely no understanding of the judge's decision at all. When the judge said in the interest of court economy, it had nothing to do with denying Tivo's discovery request


Really. Ok. Let me see if I can make my case, Judge Jacmyoung!

Let's look at the actual language from the court, shall we?



> The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time. *In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality* in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue.


jacmyoung, why do you have so much trouble understanding a very simple paragraph?

1. If DISH is in contempt, there is no reason to find out if allegedly new software still infringes.

2. If DISH is not not in contempt, TiVo can "renew its request" about the new software.

Look at the "judicial economy" sentence. Here's a quick wikipedia article on "judicial economy"



> For example, the plaintiff may claim that the defendant's actions violated three distinct laws. Having found for the plaintiff for a violation of the first law, the court then has the discretion to exercise judicial economy and refuse to make a decision on the remaining two claims, on the grounds that the finding of one violation should be sufficient to satisfy the plaintiff.


Hmm. That sounds familiar. If they are in contempt, they don't need to find out about the new software. *My opinion* is that the Judge thinks it would be a waste of everyone's time to allow TiVo's discovery.

Look at the "body language" of the court...

"whether EchoStar has *disabled the DVR functionality* with respect to the Infringing Products *as required* by the Court's Permanent Injunction"

"EchoStar's *allegedly* new software"

"held in contempt for its *failure to disable* the DVR functionality" 
versus
"*as urged by EchoStar*, the language of the Court's Permanent Injunction *allows EchoStar to comply with the spirit of the injunction*"

I think Judge Folsom's sending a pretty clear in indication that contempt is coming.


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## James Long

nobody99 said:


> TiVo asked Judge Folsom for limited discovery. The Judge Folsom, in "the interest of judicial economy" denied the request. I read it this way: "I understand what you are asking for, but you won't need it."


I disagree. Tivo's request at the status hearing was too complicated. They were creating a big "if-then" tree and wanted the court to go along with it. But "if-then" isn't a good way to run a court.

Judge Folsom wasn't telegraphing a win or a loss when he ordered Tivo to take it one step at a time ... he was just ordering Tivo to take their complaints one step at a time. The first step is basically "as a question of law (not of infringement) is DISH in contempt for not disabling the named DVRs as ordered".

I won't repeat the +/-3000 posts arguing for and against that point. In three weeks the courts will take care of that for us. 

The additional questions of whether or not DISH receivers continue to infringe or whether DISH's new receivers also infringe have been tabled pending the outcome of the first question.



> By the way, have you stopped beating your wife?


A good and historical question ... not directed at jacmyoung or his theoretical wife personally (as if you are claiming he's beating anyone or has in the past) but directed in the bigger sense.

Answering such a question requires skill. A "yes" could be seen as an admission that one had beaten their wife in the past. A "no" could be seen as an admission that the beatings continue. It is a good question to ask of someone who likes to fire off answers without thinking as they are likely to get caught in the trap.  The best answer would be "I am not now nor have I ever beaten my wife" ... if of course that statement is true.

DISH faces a problem when that question is asked of them "have you ceased infringing". By saying "yes" they admit that they have infringed and they could affect their appeals. By saying "no" they admit that they could still be infringing. So they have high priced lawyers who decide exactly what to say ... what to admit and how to continue an appeal based on errors made by the court while in many ways admitting that the correct verdict was reached.

Not what is happening September 4th ... but part of the big picture.


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## nobody99

James Long said:


> I disagree. Tivo's request at the status hearing was too complicated. They were creating a big "if-then" tree and wanted the court to go along with it. But "if-then" isn't a good way to run a court.
> 
> Judge Folsom wasn't telegraphing a win or a loss when he ordered Tivo to take it one step at a time ... he was just ordering Tivo to take their complaints one step at a time. The first step is basically "as a question of law (not of infringement) is DISH in contempt for not disabling the named DVRs as ordered".


I'm just too optimistic


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## James Long

jacmyoung said:


> You have absolutely no understanding of the judge's decision at all. When the judge said in the interest of court economy, it had nothing to do with denying Tivo's discovery request, just ask James himself.


For future reference, any time you put words in my mouth you are WRONG. Speak for yourself, not for me.

Denying Tivo's discovery was part of the judge's decision to take this case one step at a time and not allow Tivo to run discovery on hypothetical questions that may or may not be asked depending on the outcome of previous steps. "No discovery" was a definite part of the judicial economy Judge Folsom wanted.


> The only reason the judge denied Tivo's discovery request was as DISH pointed out, that Tivo's request was not proper, a discovery for the purpose of determining new software infringement cannot be allowed in the context of this contempt proceeding, period. As for your personal attack, I hope James will finally make a stand against it in public.


What personal attack? You didn't get a cultural reference?

And you have flip-flopped ... what ever happened to contempt is all about infringement? What ever happened to without infringement there can be no contempt? Now you're saying infringement has nothing to do with contempt?

Wait long enough and you'll choose all sides of the argument. 


> What James is say now ...


... is easily read in my posts. No need for you to re-interpret. Speak for yourself as you NEVER speak for me. Name dropping does not make you right!


> As far as James you continued distraction on the "disobeying the final court order" argument, let me concede that you are right that I do not understand what a final court order means, so to stop your distraction, and my only purpose is to point out that your consistent claim has no basis at all.


It was your claim I was discussing (that "Charile" has never disobeyed a final order) and I agree ... your claim has no basis in fact.


> That claim was that even if this court finds DISH in contempt on or after 9/4, and even after the appeals court upholds such ruling, DISH will still not disable the listed DVRs. To that I say nonsense. You have absolutely no basis to make such claim. All evidence and DISH's past actions and their own public statements on this question are in direct contrast to your such claim.


Claiming there is evidence does not create the evidence needed to prove your claim. The only place that I've seen DISH consider the possibility of disabling their DVRs is in communications to their investors. Other than that required warning (as a possible event that would hurt the value of the company) the message has been clear. DVRs will continue to function. DISH will continue to offer the products. DISH will NOT be disabling the DVR functionality.


> ... by doing so will really get DISH into serious legal trouble for not obeying a court order ...


Big fat hairy deal. What are they going to do?

Disobeying a court order is just part of dealing with the courts. It happens all the time.


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## jacmyoung

James Long said:


> ...Denying Tivo's discovery was part of the judge's decision to take this case one step at a time and not allow Tivo to run discovery on hypothetical questions that may or may not be asked depending on the outcome of previous steps. "No discovery" was a definite part of the judicial economy Judge Folsom wanted.


Not true at all, denying Tivo's discovery request for the purpose of finding the new software infringement was immediately done after DISH pointed out it was not a proper request, nothing to do with court economy. When the judge agreed with DISH and denied Tivo such request during the meeting, the so called "court economy" reference had not been even raised. It was after the damages issues and all other items came to the table the judge did say for court economy we would try to do a few things at once on 9/4, not devided them into several hearings, and both Tivo and DISH would use the time between 5/30 and 9/4 to make their multiple briefings without the court getting involved until 9/4. Had Tivo requested a discovery in the context of determining colorable difference of the old and new software, the judge would have granted such discovery no doubt, because it would be a proper discovery for 9/4.



> What personal attack? You didn't get a cultural reference?


At least more than one member considered it a personal attack. It is not a culture reference when you take into considertion of the pattern of what the poster has shown in his use of language. You only chose to ignore.



> And you have flip-flopped ... what ever happened to contempt is all about infringement? What ever happened to without infringement there can be no contempt? Now you're saying infringement has nothing to do with contempt?


This is precisely why I said you folks will find yourselves in disbelief in the end. The concept here are indeed confusing, takes a lot of reading to understand. In a summary contempt proceeding, the movant (Tivo) must prove with clear and convicing evidence that DISH still infringe to get a contempt ruling, regardless what is said in the injunction, so yes the burden of proof for Tivo is much higher. On the other hand, the non-movant (DISH) only needs to demonstrate doubt exists whether the new software still infirnges, that will be enough, DISH does not need to prove their new software no longer infringes.

I never said infringement has nothing to do with contempt, quote me as saying that. For Tivo to secure a contempt verdict, continued infringement is the key to prove. They failed to make any attempt to argue on that, only relied on the so called "face of the inunction" argument, that is why they will fail.



> Disobeying a court order is just part of dealing with the courts. It happens all the time.


Not with DISH, they have not shown to disobey a court order, not in this case nor in the distants case. For them to be deemed disobeying a court order, they must be found in contempt and the contempt must be upheld on appeal. It had not happended, not in this case, nor in the distants case.


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## jacmyoung

Greg Bimson said:


> What?
> 
> Let's see if I have this right. DISH/SATS defense in the contempt hearing is that their new software doesn't infringe. DISH/SATS also has filed a suit in a separate court, where they allege their new software doesn't infringe. Only one of the two courts can take that case.


Again there is a clear misunderstanding of what a contempt proceeding is and what kind of burden of proof on each side. When DISH is arguing their new software is no longer infringing in front of Judge Folsom, it is their right to do so, because if they can convince the judge their new softweare no longer infringe, it more than enough to establish the doubt. But DISH dose not have to prove non-infringement, and the 9/4 hearing has no such item on the agenda due to fault of Tivo.



> It isn't that TiVo believes the 4 September hearing will address software infringement. TiVo believes since DISH/SATS filed motions with the existing Texas court that the new software does not infringe, it makes addressing the software in a separate court a jurisdictional issue.


Again just because DISH is arguing their new software no longer infringes on 9/4, does not give the 9/4 hearing a juristiction over the new software infringement issue, there is no such agenda at all. DISH can argue whatever they want, they of course can argue the new software no longer infringes to establish the boubt, they do not have to prove their new software no longer infringes, but to try to make that point certainly goes far deeper to help establishing the doubt.

Actuall this is done all the time by a non-movant (infringer) in a contempt proceeding. I have read enough cases to know the infringers can simultaneously argue non-infringement of a modified device in a contempt proceeding, and request a separate proceeding to validate non-infringement. In fact both parties can do that, only now Tivo chose not to, and DISH decided to do it in DE.



> The new software was in front of the Texas court before an action was filed in the Delaware court. The BEST DISH/SATS can hope for is that the Delaware court takes the case, but only on the ViP receivers. That will do nothing for the 8 models in the hands of customers that require disabling by the Texas court.


If the DE takes the case, the issue will cover all DISH DVRs with the new software, the DE court will be looking into the new software only, no difference what DVRs are using it. What DISH is trying to do is to deny Tivo's future request for a new proceeding on the new software infringement in the Texas court.

What DISH is saying is the Texas court has no jurisdiction over the new software infringement issue after the judge denied Tivo's such discovery request as part of a contempt proceeding. And since DISH had made it an issue in DE court, the DE court now has the jurisdiction. The fact the new software is discussed in Texas court does not give the court juristiction, to have the jurisdiction, a formal proceeding must be requested and granted first.

Now if on 9/4, Tivo asks for a new proceeding to address the new software infringement and Judge Folsom grants Tivo such request before 9/11 DE conference, then the DISH suit should be promptly dismissed.

What is not known is what if Tivo requests such new proceeding on 9/4, and the judge not making a decision to grant it or not before 9/11, how will that have any effect in DE court.


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## Greg Bimson

jacmyoung said:


> Not true at all, denying Tivo's discovery request for the purpose of finding the new software infringement was immediately done after DISH pointed out it was not a proper request, nothing to do with court economy. When the judge agreed with DISH and denied Tivo such request during the meeting, the so called "court economy" reference had not been even raised.


I think the "judicial economy" was raised by DISH, in the "two bites of the apple" question raised to TiVo by Judge Folsom.

The problem was that TiVo is not entitled to discovery on a given point if there is no motion related to that point. That is, TiVo would not be granted discovery on the new software if TiVo did not file a motion on the new software. And they didn't.

Now we get back to the interrogatories. TiVo asked for (and we think received) answers from DISH/SATS regarding dates/times the new software was implemented. Therefore, the new software has definitely been discussed _ad nauseum_ during this contempt proceeding.

And it is quite possible TiVo learned information through those interrogatories. TiVo could file another motion on 4 September, claiming that the non-listed DVR's are not more than colorably different than before.

From what I've read of the Delaware suit, if TiVo goes after the ViP series for violations of an injunction against continuing infringement, it is possible the Delaware suit would be dismissed. After all, the software is not a "product", and from what I've read of the Delaware suit, I don't see anything regarding the ViP series from DISH/SATS.


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## Curtis52

Greg Bimson said:


> You can tell DISH/SATS is grasping at straws when their defense at the contempt hearing in Texas and the response for the motion to dismiss in Delaware look eerily similar. Yet only one court can have jurisidiction.


TiVo has no open legal action against Dish on the new software. Nature abhors a vacuum. The court in Delaware seems willing to fill the void. TiVo is under no obligation to ever take legal action on the new software. There is no logical basis for the Delaware court to deny the lawsuit.


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## James Long

jacmyoung said:


> Had Tivo requested a discovery in the context of determining colorable difference of the old and new software, the judge would have granted such discovery no doubt, because it would be a proper discovery for 9/4.


"Not true at all." The request made by Tivo was to have DISH found in contempt on the face of the injunction. They were asked by the judge if they needed discovery for that and Tivo declined. Tivo requested discovery for the next potential step in the process ... which for the sake of judicial economy will not be addressed September 4th. One step at a time THEN figure out what the next step is and what is needed for that step.


> At least more than one member considered it a personal attack. It is not a culture reference when you take into considertion of the pattern of what the poster has shown in his use of language. You only chose to ignore.


Then more that one person misunderstood ... it wasn't a personal attack. If you have any more complaints send a PM per forum rules.


> In a summary contempt proceeding, the movant (Tivo) must prove with clear and convicing evidence that DISH still infringe to get a contempt ruling, regardless what is said in the injunction, so yes the burden of proof for Tivo is much higher. On the other hand, the non-movant (DISH) only needs to demonstrate doubt exists whether the new software still infirnges, that will be enough, DISH does not need to prove their new software no longer infringes.


If true (and I doubt that) the judge has really messed up by not allowing any discovery for Tivo to prove anything. Which is why I believe you have overstepped the logic and have added too much to the ACTUAL PROCEEDING that will be taking place on September 4th.

September 4th is purely about the legal issue of whether or not DISH must disable the DVR functionality in the eight named products. It is not about infringement. And I believe we have reached flip again (Or is it flop? It changes so often!).


> For them to be deemed disobeying a court order, they must be found in contempt and the contempt must be upheld on appeal. It had not happended, not in this case, nor in the distants case.


All of jacmyoung's little hoops. Sorry, I forgot that the discussion was in your fantasy world. 

In the real world it is easy to disobey a court order ... punishment is a different issue. Disobedience is simple ... the court says "do this" or "don't do that" and the party disobeys. No contempt ruling needed.


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## jacmyoung

Greg Bimson said:


> ...The problem was that TiVo is not entitled to discovery on a given point if there is no motion related to that point. That is, TiVo would not be granted discovery on the new software if TiVo did not file a motion on the new software. And they didn't....


Of course Tivo did, in their briefing coming into the 5/30 meeting, they did motion for a discovery on the new software infringement, and it was denied in the meeting, not for court economy at all, rather because it was a wrong kind of motion.

So yes there was a motion, and yes it was denied on 5/30.


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## jacmyoung

James Long said:


> ...If true (and I doubt that) the judge has really messed up by not allowing any discovery for Tivo to prove anything. ...


He did not mess up anything, Tivo did. It was up to Tivo to make a proper motion, they did not, and therefore was denied. It is not the judge's job to tell Tivo how to make a proper motion, it would be unfair to DISH.



> ...In the real world it is easy to disobey a court order ... punishment is a different issue. Disobedience is simple ... the court says "do this" or "don't do that" and the party disobeys. No contempt ruling needed...


Absolutely false.  The only time your notion may stand is if the winning party decides not to seek contempt from the court for the violation--disobeying the order.

But if the winning party sticks it to the losing party, the determination of whether the infringer is obeying the order or not will be up to the court to decide. If the court finds the infringer not in contempt, then the infringer has not disobeyed the injunction.

In both examples you used, the winning parties continued to pursue DISH for disobeying the orders, in the distants case, DISH was found not in contempt, therefore they had not disobeyed the order. In this case the court has yet to rule whether DISH disobeyed the order or not.

If on 9/4 DISH is found in contempt, and the appeals court upholds it, and DISH still refuses to disable the listed DVRs, that will be really disobeying the court order. You say DISH will do that, I say you have no basis to say that is what DISH will do.


----------



## James Long

Greg Bimson said:


> Now we get back to the interrogatories. TiVo asked for (and we think received) answers from DISH/SATS regarding dates/times the new software was implemented. Therefore, the new software has definitely been discussed _ad nauseum_ during this contempt proceeding.


The interrogatories were marked "not agreed" on the docket control and no docket entries exist that show DISH ever providing the detailed answers Tivo requested.

The only dates that Tivo has to go on are the vague ones filed in DISH's response to Tivo's agenda for the May 30th status conference and Echostar's Opposition to Tivo's Motion for Contempt. Answers to the interrogatories were never filed.

The existence of "new software" has been introduced ... but the alleged new software is not on trial - only the concept that new software is a reason/excuse for why DISH should not be held in contempt. Both parties have probably spent too much time arguing the "new software" when they should have stuck with the conceptual legal issue. (Although I believe DISH has introduced the correct concepts, I believe they have also erred by claiming that their DVRs were "disabled" and that their claimed "disabling" of DVR functionality met the "letter" of the injunction. They may get spanked for that.)


----------



## jacmyoung

Curtis52 said:


> ...There is no logical basis for the Delaware court to deny the lawsuit.


If on 9/4 Tivo requests a new proceeding and the judge grants such request before 9/11, the DE court will have a logical basis to deny the DISH lawsuit.

But I must say it will be a wild one if Tivo can pull it off.


----------



## James Long

jacmyoung said:


> So yes there was a motion, and yes it was denied on 5/30.


There was no motion ... that was one of the problems with May 30th ... Tivo walked in to court with ZERO motions on the table. They had a lot of ideas for motions to file, and wanted to file them in an "if-then" manner - but there were NO motions before the court on May 30th.

Check out docket number 824 in the Texas case ... that is the agenda that Tivo set for the status hearing ... no motion attached.

FYI on your other postings (including very late edits of half an hour later?) - non response should not be read as agreement with your statements. You still have not made your points ... we just need to move on to reality.


----------



## peak_reception

nobody99 said:


> Oh, let me see if I understand you (and, by the way, I was hoping that jacmyoung would respond first, but you'll do).
> 
> You felt compelled to respond to an unfounded accusation, even if it has nothing to do with the subject matter at hand?
> 
> Kinda like how TiVo responded to DISH's contention that the software is new, even though it has nothing to do with the contempt hearing?
> 
> I was simply making a point - when someone throws out an accusation, you don't simply ignore it as jacmyoung has suggested should have done.


 nobody, If I'd been following every back and forth between you and jacmyoung then the point would've taken. I hadn't, and the wife-beating thing looked a lot like other posts you've made where the main purpose seems to be simply to mock and belittle your opponent jacmyoung. He can certainly stand up for himself (if he's allowed to) but even I'm getting tired of the mocking tone you asssume in almost every post. The worst that jacmyoung says is stuff like "You're wrong" or "You completely misunderstand," or "Absolutely false" or "You need to do more homework," stuff like that. All well within the bounds of vigorous debate.

I think jacmyoung is wrong on most of what will happen in this case but he's contributed more than most to the discussion here and has made many important arguments supported by case law examples (sometimes even before we see them from the Dish lawyers).

A really boring thread is where everyone agrees with each other. Impassioned arguments are stimulating. Arguments shot through with personal attacks are tiresome and unnecessary imo.


----------



## James Long

Sounds like a good PM ...

Can't stop spirited debate - especially when the ones who would want it stopped the most are the most spirited - but guys, try to keep the posts on topic and about Tivo vs Echostar. The constant put downs can be left out of everyone's posts. Politely disagree!

Don't make me put my mod hat on. 

:backtotop


----------



## Greg Bimson

Curtis52 said:


> TiVo has no open legal action against Dish on the new software.


That is correct, but the question is do they need one? After all, the "new software" is not a product.


Curtis52 said:


> Nature abhors a vacuum. The court in Delaware seems willing to fill the void.


No, the court in Delaware is going to see if the void has been filled.

At this juncture, I'd state that nature enjoys a vacuum, as over 99.9 percent of the universe is a vacuum. 


Curtis52 said:


> TiVo is under no obligation to ever take legal action on the new software.


That is correct, but then again, TiVo could file contempt against the modified DVR's.


Curtis52 said:


> There is no logical basis for the Delaware court to deny the lawsuit.


There might be, there might not be, but it does depend on what happens 4 September.


jacmyoung said:


> Of course Tivo did, in their briefing coming into the 5/30 meeting, they did motion for a discovery on the new software infringement, and it was denied in the meeting, not for court economy at all, rather because it was a wrong kind of motion.


Well, yes, TiVo did ask for discovery on the new software infringement, but that was not in the form of a motion. Because TiVo did not file a motion regarding violations of an injunction against ongoing infringement, TiVo was not entitled to discovery.


James Long said:


> The interrogatories were marked "not agreed" on the docket control and no docket entries exist that show DISH ever providing the detailed answers Tivo requested.
> 
> The only dates that Tivo has to go on are the vague ones filed in DISH's response to Tivo's agenda for the May 30th status conference and Echostar's Opposition to Tivo's Motion for Contempt. Answers to the interrogatories were never filed.


I agree with this interpretation. However, let's remember this:

5. Not agreed

TiVo motion and brief on damages incurred during the
period that the Permanent Injunction was stayed (up to 20
pages excluding exhibits).

August 4, 2008

It appears TiVo filed their motion regarding damages on 4 August, just as the docket control order specified. I don't believe DISH/SATS' responses to the interrogatories had to be filed with the court; they were to be delievered to TiVo so that TiVo could file the damages motion.

One could believe that if DISH/SATS did not answer those questions in TiVo's interrogatories, that TiVo would have filed a motion with the court, ordering DISH/SATS to produce the discovery. Instead, it appears TiVo must have received enough of the answers they were requesting, as they did follow the docket control order and have now filed a motion regarding the damages.

And if the damages relate to the new software, like those interrogatories suggested, then the new software is on the table during 4 September. *Remember, there is more than one issue being discussed 4 September.*


----------



## jacmyoung

James Long said:


> There was no motion ... that was one of the problems with May 30th ... Tivo walked in to court with ZERO motions on the table. They had a lot of ideas for motions to file, and wanted to file them in an "if-then" manner - but there were NO motions before the court on May 30th.
> 
> Check out docket number 824 in the Texas case ... that is the agenda that Tivo set for the status hearing ... no motion attached....


There were three motions before the judge on 5/30, the first was the motion to show cause why DISH had not being in contempt of the face of injunction, the second was motion to seek discovery for the purpose of determining additional damages during the stay of the injunction, and the third was the motion for a discovery for the purpose of determining the new software infringement.

The judge granted two, denied one. Again if you insist there must be a formal motion filed, see my response to Greg below.


----------



## jacmyoung

Greg Bimson said:


> That is correct, but the question is do they need one? After all, the "new software" is not a product.No, the court in Delaware is going to see if the void has been filled....[/b]


Of course the new software is a product, but that is not even relevant, whether the software is a product or not has no bearing on whether the DE court should accept DISH's lawsuit or not.



> &#8230; No, the court in Delaware is going to see if the void has been filled.At this juncture, I'd state that nature enjoys a vacuum, as over 99.9 percent of the universe is a vacuum. ..


The void has not been filled as of today because no court has currently accepted a complaint on the new software infringement.



> &#8230; That is correct, but then again, TiVo could file contempt against the modified DVR's&#8230;


Again nothing to do with the DE case.



> &#8230; There might be, there might not be, but it does depend on what happens 4 September&#8230;


That I have already said it is possible, but since we are no legal experts none of us can say exactly how the 9/4 event may influence the 9/11 event.



> &#8230; Well, yes, TiVo did ask for discovery on the new software infringement, but that was not in the form of a motion. Because TiVo did not file a motion regarding violations of an injunction against ongoing infringement, TiVo was not entitled to discovery&#8230;


If by that you mean Tivo did not file a formal motion after 5/30, then Tivo did not file a formal motion because the idea was shut down by the judge on 5/30. Had the idea of the new discovery of the new software were proper, the judge would have said yes on 5/30 and Tivo would have filed a formal motion to be formally granted by the judge.

Wait I take that back, in fact in mid June the court did issue in writing of a denial of Tivo's request for the discovery on the new software infringement, so yes there was a motion, otherwise the court would not have denied it had it not existed, formal or not.


----------



## James Long

Greg Bimson said:


> That is correct, but the question is do they need one? After all, the "new software" is not a product.


DISH is claiming (in Delaware) that their "new DVR product was not in existence during the Echostar Parties' prior litigation with TiVo in the Eastern District of Texas.

DISH is asking the Delaware court for a declaration that their new product does not infringe so that they can continue in the DVR business without continuing threat of lawsuit.

I don't see where DISH has stated on what specific equipment their "new product" runs.


> Curtis52 said:
> 
> 
> 
> There is no logical basis for the Delaware court to deny the lawsuit.
> 
> 
> 
> There might be, there might not be, but it does depend on what happens 4 September
Click to expand...

I don't see Judge Folsom getting in to "new products" on September 4th. Delaware could wash their hands of the case ... but the issue needs to be addressed in Texas for them to do that. At the moment, there is not enough overlap to interfere.


> James Long said:
> 
> 
> 
> The interrogatories were marked "not agreed" on the docket control and no docket entries exist that show DISH ever providing the detailed answers Tivo requested.
> 
> The only dates that Tivo has to go on are the vague ones filed in DISH's response to Tivo's agenda for the May 30th status conference and Echostar's Opposition to Tivo's Motion for Contempt. Answers to the interrogatories were never filed.
> 
> 
> 
> I agree with this interpretation. However, let's remember this:
> 
> 5. Not agreed
> 
> TiVo motion and brief on damages incurred during the
> period that the Permanent Injunction was stayed (up to 20
> pages excluding exhibits).
> 
> August 4, 2008
> 
> It appears TiVo filed their motion regarding damages on 4 August, just as the docket control order specified. I don't believe DISH/SATS' responses to the interrogatories had to be filed with the court; they were to be delievered to TiVo so that TiVo could file the damages motion.
Click to expand...

They refiled it today ....
[852] ***REPLACES #851*** (REPLACES #848)
SEALED PATENT MOTION REVISED/CORRECTED on Remand for Damages During the Stay of the Permanent Injunction by TIVO Inc. (Attachments: # (1) Text of Proposed Order Revised Proposed Order)(Byrd, Christine) Modified on 8/12/2008

[853] ***REPLACES #849***
SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: [852] SEALED PATENT MOTION on Remand for Damages During the Stay of the Permanent Injunction. (Attachments: # (1) Affidavit Revised Declaration of Keith R. Ugone in Support of TiVo's Motion on Remand for Damages, # (2) Exhibit Declaration Exhibit 1, # (3) Exhibit Declaration Ex. 2, # (4) Exhibit Declaration Ex. 3, # (5) Exhibit Declaration Ex. 4, # (6) Exhibit Declaration Ex. 5, # (7) Exhibit Declaration Ex. 6, # (8) Exhibit Declaration Ex. 7, # (9) Exhibit Declaration Ex. 8, # (10) Exhibit Declaration Ex. 9, # (11) Exhibit Declaration Ex. 10, # (12) Exhibit Declaration Ex. 11, # (13) Exhibit Declaration Ex. 12, # (14) Exhibit Declaration Ex. 13, # (15) Exhibit Declaration Ex. 14, # (16) Exhibit Declaration Ex. 15, # (17) Exhibit Declaration Ex. 16, # (18) Exhibit Declaration Ex. 17, # (19) Exhibit Declaration Ex. 18, # (20) Exhibit Declaration Ex. 19, # (21) Exhibit Declaration Ex. 20, # (22) Exhibit Declaration Ex. 21, # (23) Exhibit Declaration Ex. 22, # (24) Exhibit Declaration Ex. 23, # (25) Exhibit Declaration Ex. 24, # (26) Exhibit Declaration Ex. 25, # (27) Exhibit Declaration Ex. 26, # (28) Exhibit Declaration Ex. 27, # (29) Exhibit Declaration Ex. 28)(Byrd, Christine) Modified on 8/12/2008

[850] SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: [852] SEALED PATENT MOTION REVISED/CORRECTED Motion on Remand for Damages During the Stay of the Permanent Injunction;Appendix to Declaration of Keith R. Ugone In Support of Motion on Remand for Damages During the Stay of the Permanent Injunction (Attachments: # (1) Exhibit App. Ex. 1, # (2) Exhibit App. Ex. 2, # (3) Exhibit App. Ex. 3, # (4) Exhibit App. Ex. 4, # (5) Exhibit App. Ex. 5, # (6) Exhibit App. Ex. 6, # (7) Exhibit App. Ex. 7, # (8) Exhibit App. Ex. 8, # (9) Exhibit App. Ex. 9, # (10) Exhibit App. Ex. 10, # (11) Exhibit App. Ex. 11, # (12) Exhibit App. Ex. 12, # (13) Exhibit App. Ex. 13, # (14) Exhibit App. Ex. 14, # (15) Exhibit App. Ex. 15, # (16) Exhibit App. Ex. 16, # (17) Exhibit App. Ex. 17, # (18) Exhibit App. Ex. 18, # (19) Exhibit App. Ex. 19, # (20) Exhibit App. Ex. 20, # (21) Exhibit App. Ex. 21, # (22) Exhibit App. Ex. 22, # (23) Exhibit App. Ex. 23, # (24) Exhibit App. Ex. 24, # (25) Exhibit Exhibit 25, # (26) Exhibit App. Ex. 26, # (27) Exhibit App. Ex. 27, # (28) Exhibit App. Ex. 28, # (29) Exhibit App. Ex. 29, # (30) Exhibit App. Ex. 30, # (31) Exhibit App. Ex. 31, # (32) Exhibit App. Ex. 32, # (33) Exhibit App. Ex. 33, # (34) Exhibit App. Ex. 34, # (35) Exhibit App. Ex. 35, # (36) Exhibit App. Ex. 36, # (37) Exhibit App. Ex. 37, # (38) Exhibit App. Ex. 38, # (39) Exhibit App. Ex. 39, # (40) Exhibit App. Ex. 40, # (41) Exhibit App. Ex. 41, # (42) Exhibit App. Ex. 42, # (43) Exhibit App. Ex. 43, # (44) Exhibit App. Ex. 44, # (45) Exhibit App. Ex. 45)(Byrd, Christine) Modified on 8/4/2008 (mpv, ). Modified on 8/12/2008​Sealed doesn't help us here ...



> One could believe that if DISH/SATS did not answer those questions in TiVo's interrogatories, that TiVo would have filed a motion with the court, ordering DISH/SATS to produce the discovery. Instead, it appears TiVo must have received enough of the answers they were requesting, as they did follow the docket control order and have now filed a motion regarding the damages.


Or it could be argued they just filed what they wanted to file (and took a few attempts to get it right - maybe).

It is possible that DISH replied directly to Tivo ... but I don't see it as likely. The dispute over damages was the interrogatories. TiVo could have filed with estimates.

August 18th is the next milestone for DISH (a response to the damages filing, if that schedule is being followed). Probably under seal too (if filed).



> And if the damages relate to the new software, like those interrogatories suggested, then the new software is on the table during 4 September. *Remember, there is more than one issue being discussed 4 September.*


Yep.


----------



## jacmyoung

peak_reception said:


> ...I think jacmyoung is wrong on most of what will happen in this case but he's contributed more than most to the discussion here and has made many important arguments supported by case law examples (sometimes even before we see them from the Dish lawyers). ...


Then again I appreciate your above-the-board disagreement.

As you have mentioned I have quoted many prior cases, and those are only about 1/3 of what I have read. Throughout the course of this debate, I have more than once admitted I was wrong, and more than once had my own doubts.

But thanks to the rigorous nature of the other side, they forced me to read more and more, just to be sure. And as I continued to read, I become even more convinced of the outcome as I believe will be true.

I will leave you with one last note. A contempt ruling is not easily rendered by the court, the courts time after time had agonized over such decisions. I have read many times when the accused parties had flagrantly tried to beat the system, and their actions had bordered on criminal by our standards. Yet the courts refused to produce contempt verdicts, because it may sound unbelievable, a contempt ruling must not be rendered only to maintain court's authority or reputation, any good judge must know not to issue a contempt ruling for vindication of any perceived disrespect of the court. It is the law that must prevail, not the man.


----------



## James Long

jacmyoung said:


> The judge granted two, denied one. Again if you insist there must be a formal motion filed, see my response to Greg below.


It isn't me or Greg that is insisting ... it is the meaning of the word.

A motion is a motion ... Tivo presented a wish list May 30th but as clearly stated in the transcripts, no motion was ready. Even the Motion for Contempt.


jacmyoung said:


> &#8230; Well, yes, TiVo did ask for discovery on the new software infringement, but that was not in the form of a motion. Because TiVo did not file a motion regarding violations of an injunction against ongoing infringement, TiVo was not entitled to discovery&#8230;
> 
> 
> 
> If by that you mean Tivo did not file a formal motion after 5/30, then Tivo did not file a formal motion because the idea was shut down by the judge on 5/30. Had the idea of the new discovery of the new software were proper, the judge would have said yes on 5/30 and Tivo would have filed a formal motion to be formally granted by the judge.
> 
> Wait I take that back, in fact in mid June the court did issue in writing of a denial of Tivo's request for the discovery on the new software infringement, so yes there was a motion, otherwise the court would not have denied it had it not existed, formal or not.
Click to expand...

Mid June? Do you have a better reference link?
On June 5th [829] an Order coming from the Status Conference was issued ..."The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time."​No motion to be denied ... just an issue on the agenda that won't be taken up at this time.

Mid June was all the docket control issues ... no court ruling on a motion for discovery. Did you get your mid June mixed up with early June (as well as not understanding what a motion is?).


----------



## jacmyoung

James Long said:


> It isn't me or Greg that is insisting ... it is the meaning of the word.
> 
> A motion is a motion ... Tivo presented a wish list May 30th but as clearly stated in the transcripts, no motion was ready. Even the Motion for Contempt.
> Mid June? Do you have a better reference link?
> On June 5th [829] an Order coming from the Status Conference was issued ..."The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time."​No motion to be denied ... just an issue on the agenda that won't be taken up at this time.
> 
> Mid June was all the docket control issues ... no court ruling on a motion for discovery. Did you get your mid June mixed up with early June (as well as not understanding what a motion is?).


You can continue to insist on the word game, but my point was a request was made and then denied by the judge, due to error by Tivo or lack of merit, not due to court economy. The end result is no different, because of Tivo's error, it opened the door for DISH to file a new suit in DE.

You can not dispute my fact of matter statement, the only thing you can do is to find some mistake in the choice of words, as if that is enough to prove me wrong.

As another example, my definition of the "final court order" as you insisted I must apologize for, in no way distracted my dispute of your baseless claim that DISH will not disable the listed DVRs even if found in contempt and the contempt is upheld. A baseless claim is a baseless claim, regardless what you think how rightful you are at interpreting the term "final order."

Just your business as usual.


----------



## Curtis52

jacmyoung said:


> You can continue to insist on the word game, but my point was a request was made and then denied by the judge, due to error by Tivo or lack of merit, not due to court economy. The end result is no different, because of Tivo's error, it opened the door for DISH to file a new suit in DE.
> 
> You can not dispute my fact of matter statement, the only thing you can do is to find some mistake in the choice of words, as if that is enough to prove me wrong.


At the 5-30 hearing the judge saud he would take a look at the correspondence and decide later on new software discovery.


> THE COURT: VERY WELL. I WILL LOOK AT THE PARTIES'
> CORRESPONDENCE AND GIVE SOME GUIDANCE ON THAT ISSUE.


In his 6-05 order, the judge followed up as promised and denied discovery for reasons of judicial economy.


> In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue.


----------



## Greg Bimson

James Long said:


> DISH is claiming (in Delaware) that their "new DVR product was not in existence during the Echostar Parties' prior litigation with TiVo in the Eastern District of Texas.


If this is the case, then the Delaware case will have nothing to do with any of the install base that TiVo is trying to shut down on 4 September (as I've been trying to say all along). However, just like in any trial where the defense opens the door to any "disputed fact", it is more than likely that by using the new software as a defense in a contempt proceeding, that the new software will also be in front of the same court as that contempt proceeding.

The true question is whether or not TiVo files another contempt motion on 4 September. If TiVo does file a contempt motion for violations of an injunction order against infringement regarding the modified DVR models, the Delaware court will either be staying or dismissing the case.


----------



## Curtis52

Greg Bimson said:


> The true question is whether or not TiVo files another contempt motion on 4 September. If TiVo does file a contempt motion for violations of an injunction order against infringement regarding the modified DVR models, the Delaware court will either be staying or dismissing the case.


Judge Folsom indicated that TiVo shouldn't file on the modified software until he rules on the existing contempt motion.


----------



## jacmyoung

Curtis52 said:


> At the 5-30 hearing the judge saud he would take a look at the correspondence and decide later on new software discovery.
> 
> In his 6-05 order, the judge followed up as promised and denied discovery for reasons of judicial economy.


That denial was not for court economy, it was because Tivo could not possibly seek a motion for discovery for the purpose of the new software infringement on 9/4, not only because it was not proper, but also to determine infringement will be a very lengthy proceeding. A discovery to determine colorable difference, a proper precedure in a contempt proceeding, will be much more brief, and therefore will not put extra burden on court economy. Of course Tivo can later renew a discovery request, if they does it right next time, that is for determining the colorable difference issues. Because only the colorable difference issue may be adjudicated in a contempt proceeding.


----------



## jacmyoung

Greg Bimson said:


> ...The true question is whether or not TiVo files another contempt motion on 4 September. If TiVo does file a contempt motion for violations of an injunction order against infringement regarding the modified DVR models, the Delaware court will either be staying or dismissing the case.


The problem is if the judge rules in DISH's favor, no more contempt motion from Tivo, so again the danger of such outcome due to an error made by Tivo.

Had Tivo requested a discovery to determine the colorable difference issue of the new software as compared to the old software, the request would have been granted, and therefore a formal motion be granted too. And DISH would have been compelled to produce additional software codes and other new software evidence for that discovery, and effectively shut the door on any attempt to litigate the new software in a different jurisdiction. As it stands, the Texas court does not get into the new software evidence, it is only what DISH is saying, and what Tivo is saying.

I am not saying though, as Curtis had insisted, that the DE court will just accept the DISH's suit, but what I am saying is due to Tivo's error, they have put themselves in danger of not able to have the new software litigated in the Texas court ever.


----------



## Curtis52

jacmyoung said:


> The problem is if the judge rules in DISH's favor, no more contempt motion from Tivo,


TiVo can file a contempt motion on the new software regardless of the outcome from the 9-4 hearing.


----------



## Curtis52

jacmyoung said:


> That denial was not for court economy,


The judge lied?


----------



## Bidderman9

Has anybody been able to get the text out of the redacted version? I haven't been able to do it this time. I wasn't sure if it was because I upgraded to Adobe V8 or not.


----------



## Curtis52

Bidderman9 said:


> Has anybody been able to get the text out of the redacted version? I haven't been able to do it this time. I wasn't sure if it was because I upgraded to Adobe V8 or not.


No. It's just a raster scan this time. The text can't even be selected.


----------



## Bidderman9

Curtis52 said:


> No. It's just a raster scan this time. The text can't even be selected.


I guess somebody has been reading this forum and fixed that problem 

Broke my darn decoder ring.


----------



## scooper

Curtis52 said:


> No. It's just a raster scan this time. The text can't even be selected.


I guess that means they were all done as pictures - which means someone would have to download them and re-type them ... yuck.... or is it possible to use an OCR scanning program ?

Or, perhaps download and print them, and then attempt scanning them in as text ?


----------



## jacmyoung

Curtis52 said:


> TiVo can file a contempt motion on the new software regardless of the outcome from the 9-4 hearing.


Let me put it this way, if DISH is not in contempt on 9/4, there will be no basis to grant another contempt motion from Tivo. The only way for the judge to rule in favor of DISH will be that the new software has raised open issues on continued infringement, so to file a contempt on the new software afterwards will be meaningless.

If on the other hand the judge finds DISH in contempt, then certainly Tivo can file a contempt motion on the new software and likely the motion will be granted by the judge, but I don't know if such has to wait till the appeal is through. I would think so because if not, it will be a waste of time if the contempt ruling is later overturned.


----------



## jacmyoung

Curtis52 said:


> The judge lied?


You and I are both trying to read the judge's mind, your basis is in his own doc he used the term "court economy", my basis is during the meeting he agreed with DISH on their notion that Tivo's such discovery request was improper for a contempt hearing. Even Tivo recanted the purpose of their own request on 5/30, saying no their request was not really meant for the contempt purpose, rather for the damage calculation. So based on that, if indeed the court economy was the reason, it was not for the contempt disscussion itself, rather for the damage calculation. And by the judge saying "TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue" the judge was really saying Tivo could again try to do so for the purpose of the damage calculation, because that was Tivo's last story on that request during the 5/30 meeting.

Just difference of opinions.


----------



## Curtis52

jacmyoung said:


> my basis is during the meeting he agreed with DISH on their notion that Tivo's such discovery request was improper for a contempt hearing.


Please provide a quote where the judge said that.


----------



## Curtis52

jacmyoung said:


> Let me put it this way, if DISH is not in contempt on 9/4, there will be no basis to grant another contempt motion from Tivo.


So if Dish is not found in prima facie contempt on the adjudicated DVRs, TiVo will never be able to file for contempt on the non-adjudicated DVRs or to file for contempt on the adjudicated DVRs for merely colorable differences? Sure they could.


----------



## Greg Bimson

jacmyoung said:


> And by the judge saying "TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue" the judge was really saying Tivo could again try to do so for the purpose of the damage calculation, because that was Tivo's last story on that request during the 5/30 meeting.
> 
> Just difference of opinions.


Yes, but big differences...

On 4 August, TiVo filed with the court a motion regarding enhanced damages. Therefore, your interpretation of limited discovery above is incorrect, as "the first issue" has not been determined, and the motion for enhanced damages has been filed. That simply means the limited discovery request after this contempt hearing is on the new software is regarding infringement and the colorable difference issue.


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## scooper

First off - drop the term "adjudicated devices". Except for Tivo's briefs - it doesn't appear anywhere else. The proper term should be "infringing devices". Using tht term is as bad as Echostar stating that their now software-changed DVRs are non-infringing.

I think what jacmyoung has been saying all along is that in order to prove contempt - Tivo must prove that both the "infringing devices" and any other E* DVRs to be shutdown are "merely colorably different" and are still infringing. - prima facie be damned.

So, Echostar, in filing the case in DE, just made Tivo's job that much more difficult. If it comes down to it - you may end up with conflicting rulings - DE saying they are a legitimate workaround and therefore not infringing, and you can work out the other side of that.

One thing that struck me in the filings - Tivo is "accusing Echostar of forum shopping" - pot - meet kettle....


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## jacmyoung

Curtis52 said:


> Please provide a quote where the judge said that.


Because Tivo agreed with DISH's opposition by recanting the initial goal of the discovery request, the judge should naturally embrace what both parties had agreed on.


----------



## jacmyoung

Curtis52 said:


> So if Dish is not found in prima facie contempt on the adjudicated DVRs, TiVo will never be able to file for contempt on the non-adjudicated DVRs or to file for contempt on the adjudicated DVRs for merely colorable differences? Sure they could.


You did not understand what I said, the only reason DISH is not in contempt of prima facie contempt will be that the new software is deemed to have raised substantial open issues for continued infringement by the listed DVRs.

Of course Tivo can file for motions for contempt proceedings again, but due to the above reason the motions will be easily denied when DISH objects to it. Because all DISH non-adjudicated DVRs use the new software now, if the adjudicated DVRs are in good shape then the non adjudicated DVRs most certainly will be too.


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## Greg Bimson

scooper said:


> I think what jacmyoung has been saying all along is that in order to prove contempt - Tivo must prove that both the "infringing devices" and any other E* DVRs to be shutdown are "merely colorably different" and are still infringing. - prima facie be damned.


Yes, but what jacmyoung has been saying all along is irrelevant.  TiVo does not need to prove that the "Infringing Products" no longer infringe, as the court has already found them to infringe. The only question before the court, as Judge Folsom had stated, is whether or not DISH/SATS has "followed the spirit of the injunction" by possibly rewriting code.

However, that ruling does not predicate TiVo filing a contempt motion against ongoing violations of an injunction against infringements. If TiVo wants to go after the newly sold and modified 501, 508, 510, 522 and 625, as well as the ViP series, they can file that contempt motion and prove that those DVR's are not more than colorably different that those already found to infringe, and infringe upon the same claims as the original Infringing Products.


scooper said:


> So, Echostar, in filing the case in DE, just made Tivo's job that much more difficult. If it comes down to it - you may end up with conflicting rulings - DE saying they are a legitimate workaround and therefore not infringing, and you can work out the other side of that.


Not necessarily.

It is the job of the court to examine jurisdiction over existing issues when attention is raised to the court regarding those issues. The court in Delaware will NOT touch the devices already adjudicated as infringing, new software or not. The only question raised at this moment in the Delaware proceedings is if the Delaware court has jurisdiction regarding non-adjudicated devices using the new software. After all, the new software has reared its ugly head numerous times in the Texas court over the past five months.

I mean, let's get to this simple point. From Judge Folsom's order:


> TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue.


The new software issue is before the Texas court already.


----------



## jacmyoung

Greg Bimson said:


> Yes, but big differences...
> 
> On 4 August, TiVo filed with the court a motion regarding enhanced damages. Therefore, your interpretation of limited discovery above is incorrect, as "the first issue" has not been determined, and the motion for enhanced damages has been filed. That simply means the limited discovery request after this contempt hearing is on the new software is regarding infringement and the colorable difference issue.


Not according to Tivo, on 5/30 Tivo's latest story was their such limited discovery request was for damages, not contempt. Of course Tivo may try to change the story again, but DISH can also throw a copy of the 5/30 transcript in fornt of them to bring back their lost memory.

That said, Tivo could request a limited discovery on the new software colorable difference issue (not infringement issue) again later, but in my view only after DISH is found in contempt on 9/4 and the contempt is upheld on appeal. I have given my reasons above.


----------



## Greg Bimson

jacmyoung said:


> You did not understand what I said, the only reason DISH is not in contempt of prima facie contempt will be that the new software is deemed to have raised substantial open issues for continued infringement by the listed DVRs.


I don't think you understand what you just wrote...

If the new software raises substantial issues and causes the prima facie contempt motion to be overturned, then what?

You cannot simply assume that the new software no longer infringes and causes the product to be more than colorably different. You can only assume there is an open issue, to which a contempt proceeding for violations of an injunction against infringements would then correct:


jacmyoung said:


> Of course Tivo can file for motions for contempt proceedings again, but due to the above reason the motions will be easily denied when DISH objects to it. Because all DISH non-adjudicated DVRs use the new software now, if the adjudicated DVRs are in good shape then the non adjudicated DVRs most certainly will be too.


Do you honestly believe a ruling handed down on this motion for contempt will clear DISH/SATS' modified (and already adjudicated) products of being more than colorably different and infringement-free, neither of which are up for debate during this contempt hearing?


----------



## jacmyoung

Greg Bimson said:


> ...TiVo does not need to prove that the "Infringing Products" no longer infringe, ....


No, Tivo must prove with clear and convincing evidence the Infringing Products still infringe on the patent now to get a contempt ruling, because without infringement present, a violation of the injunction on infringement simply is not possible.


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## James Long

jacmyoung said:


> You can not dispute my fact of matter statement, the only thing you can do is to find some mistake in the choice of words, as if that is enough to prove me wrong.


The trouble is when you have narrowed interpretation down to what the meaning of the word "the" is you have set the bar for accurate use of language. When you fail to meet that bar by throwing around words like "motion" and "final order" with no understanding of the words it casts doubt on EVERYTHING you have said. Why should we believe your interpretations when you can't get the basic stuff right and complain all day when you have been proven wrong?


> As another example, my definition of the "final court order" as you insisted I must apologize for, in no way distracted my dispute of your baseless claim that DISH will not disable the listed DVRs even if found in contempt and the contempt is upheld.


YOUR baseless claim that "Charlie" had never disobeyed a "final order" (which ended in your admission that "Charlie" has never faced a "final order" by your definition) is the issue. You made an absolutely false claim and lied to everyone in this thread.

My claim isn't baseless as I explained in my last post on the subject. Stop lying and start reading - please! The basis of my statement is DISH's public statements and reassurances to their customers plus their history (real life, not jac's world) of not doing what a court has ordered them to do when they don't want to follow the court's order.


> A baseless claim is a baseless claim, regardless what you think how rightful you are at interpreting the term "final order."
> 
> Just your business as usual.


Yes, business as usual. jacmyoung makes false claims and cries when someone calls him on it. Enough! State your views ... let others state their views and move on. Let's make this a no whining zone. :grin:


----------



## Greg Bimson

jacmyoung said:


> Not according to Tivo, on 5/30 Tivo's latest story was their such limited discovery request was for damages, not contempt. Of course Tivo may try to change the story again, but DISH can also throw a copy of the 5/30 transcript in fornt of them to bring back their lost memory.


I hate to do this. My current view has posts 1351 to 1380 on it, for a span of less than NINE hours.


jacmyoung said:


> The problem is if the judge rules in DISH's favor, no more contempt motion from Tivo, so again the danger of such outcome due to an error made by Tivo.


Error 1 - TiVo can file another contempt motion even if TiVo somehow loses the prima facie violation contempt motion.


jacmyoung said:


> Had Tivo requested a discovery to determine the colorable difference issue of the new software as compared to the old software, the request would have been granted, and therefore a formal motion be granted too.


Error 2 - TiVo requested limited discovery on the new software, but was rightfully denied. TiVo indicated they would not file a motion for violations of an injunction against infringements at this time, so they did not need to understand the software, and granting discovery without a motion is procedurally incorrect.

Error 3 - TiVo would not be granted "a formal motion". TiVo has to file that with the court, and the judge has to rule on it. The judge does NOT grant motions unless he is ruling guilt or innocence upon those which parties have already filed.


jacmyoung said:


> Let me put it this way, if DISH is not in contempt on 9/4, there will be no basis to grant another contempt motion from Tivo. The only way for the judge to rule in favor of DISH will be that the new software has raised open issues on continued infringement, so to file a contempt on the new software afterwards will be meaningless.


Error 4 - and a big one - just because DISH/SATS could be found innocent of the contempt charges does not mean they aren't still infringing with only colorable differences, and therefore subject to another contempt proceeding.


jacmyoung said:


> my basis is during the meeting he agreed with DISH on their notion that Tivo's such discovery request was improper for a contempt hearing. Even Tivo recanted the purpose of their own request on 5/30, saying no their request was not really meant for the contempt purpose, rather for the damage calculation. So based on that, if indeed the court economy was the reason, it was not for the contempt disscussion itself, rather for the damage calculation.


Error 5 - TiVo's request for discovery was improper because TiVo was not going to file a motion against ongoing infringement against the injunction. The request would be proper for a contempt hearing if a motion was filed regarding contempt of an injunction against infringements.

Error 6 - Damages was a separate issue, raised at the end of the 30 May meeting, for which the discovery was granted.


jacmyoung said:


> And by the judge saying "TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue" the judge was really saying Tivo could again try to do so for the purpose of the damage calculation, because that was Tivo's last story on that request during the 5/30 meeting.


Error 7, in hand with error 6 -

Judge Folsom denied limited discovery on the modified software and allowed discovery via the Paice order for damages.

The whole point of this post is simply that you are complaining how TiVo "may try to change the story again", and in eight hours yours story has changed twice with about seven factual errors. That is why this thread becomes so long.


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## jacmyoung

Greg Bimson said:


> ...You cannot simply assume that the new software no longer infringes and causes the product to be more than colorably different. You can only assume there is an open issue, to which a contempt proceeding for violations of an injunction against infringements would then correct...


I cannot believe you still do not understand what substantial open issues mean to a contempt proceeding. Once it is demonstrated such open issues exist, no contempt.



> o you honestly believe a ruling handed down on this motion for contempt will clear DISH/SATS' modified (and already adjudicated) products of being more than colorably different and infringement-free, neither of which are up for debate during this contempt hearing?


A no contempt will mean the modified (and already adjudicated) products no longer within the scope of this injunction due to substantial open issues (doubt) whether they still infringe or not.

The fact it appears neither of the issues are up for debate is no loner true, both DISH and Tivo in their latest filing and response are debating the new software and the adjudicated products' colorable difference issues. They of course disagree, and the fact they disagree by itself is an indication that substantial open issues (doubt) do exist. The judge will have to side with one party or the other.


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## James Long

jacmyoung said:


> That denial was not for court economy,


Yes, it was ..._"The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time. In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue."_​One big thought from the court. Read carefully: Tivo has raised two issues - 1) DISH has failed to disable the DVR functionality and 2) Tivo wants discovery on the allegedly new software. Response - _*In the interest of judicial economy*_ issue one will be delt with on September 4th and discovery is denied at this time.

Read it again if you don't get it the first few times ... "In the interest of judicial economy" discovery is denied.


----------



## jacmyoung

Greg Bimson said:


> I hate to do this. My current view has posts 1351 to 1380 on it, for a span of less than NINE hours.


Sorry you need to write in a way I can understand.



> Error 1 - TiVo can file another contempt motion even if TiVo somehow loses the prima facie violation contempt motion.


Of course they can, did you not read me? But the motion will be denied and I have already explained why.



> Error 2 - TiVo requested limited discovery on the new software, but was rightfully denied. TiVo indicated they would not file a motion for violations of an injunction against infringements at this time, so they did not need to understand the software, and granting discovery without a motion is procedurally incorrect.


Did you not understand the reason they withdrew such request? Because the request was improper.



> Error 3 - TiVo would not be granted "a formal motion". TiVo has to file that with the court, and the judge has to rule on it. The judge does NOT grant motions unless he is ruling guilt or innocence upon those which parties have already filed.


I did not disagree with that.



> Error 4 - and a big one - just because DISH/SATS could be found innocent of the contempt charges does not mean they aren't still infringing with only colorable differences, and therefore subject to another contempt proceeding.


Of course they may still be found to infringe later, but for now if they are not in contempt, the products or the new software are more than colorably different, because that will be the only way for them to be not in contempt. And as such another contempt proceeding will be meaningless.



> Error 5 - TiVo's request for discovery was improper because TiVo was not going to file a motion against ongoing infringement against the injunction. The request would be proper for a contempt hearing if a motion was filed regarding contempt of an injunction against infringements.


Again you completely lost me.



> Error 6 - Damages was a separate issue, raised at the end of the 30 May meeting, for which the discovery was granted.


Why are you discussing the damage issue?



> Error 7, in hand with error 6 -
> 
> Judge Folsom denied limited discovery on the modified software and allowed discovery via the Paice order for damages.


So what? Did that change the fact that this court has not assumed jurisdiction over the new software infringement case?



> The whole point of this post is simply that you are complaining how TiVo "may try to change the story again", and in eight hours yours story has changed twice with about seven factual errors. That is why this thread becomes so long.


Do you want me to show the exact Tivo's language when they changed their stories? It will take a while since I will have to go back to find from those posts.


----------



## jacmyoung

James Long said:


> Yes, it was ..._"The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time. In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue."_​One big thought from the court. Read carefully: Tivo has raised two issues - 1) DISH has failed to disable the DVR functionality and 2) Tivo wants discovery on the allegedly new software. Response - _*In the interest of judicial economy*_ issue one will be delt with on September 4th and discovery is denied at this time.
> 
> Read it again if you don't get it the first few times ... "In the interest of judicial economy" discovery is denied.


I already explained why the court economy remark was not reserved for the Tivo's limited discovery request for the new software infringement issue. The request was denied because of one of the two reasons:

1) Either it was not proper to request a limited discovery for the purpose of the new software infringement issue;

2) or the court economy did not allow Tivo's changed story about this limited discovery actually was for the damage determination, as Tivo tried to explain in their final version on 5/30.

The interest of the court economy did not prevent discussion of the damage issues, only that it did not allow such a limited discovery for the purpose of the damage determination, it was not necessary.


----------



## James Long

jacmyoung said:


> A no contempt will mean the modified (and already adjudicated) products no longer within the scope of this injunction due to substantial open issues (doubt) whether they still infringe or not.


Not quite.

A ruling of no contempt does not mean that DISH's software is non-infringing ... it only means that the judge believes that DISH's response of allegedly changing software and not permanently disabling the DVR functionality does not rise to the level of "contempt".

Unless and until the judge also rules (improperly without discovery) that the new software is non-infringing or that the existing products are somehow new products because of that software the eight named products remain under the power of this injunction.

Look at what the judge ruled back when the injunction was issued ... despite the jury verdict the judge ruled against trebble damages because he gave DISH the benefit of the doubt that their infringement was not willful ... yet he still punished them for their infringement. He could follow the same path on September 4th ruling that DISH is not in contempt because they have made an effort not to infringe ... but he does NOT have to rule the products non-infringing until full discovery is made. Until the court rules the products non-infringing they infringe.

Not in contempt is a good ruling for DISH ... but it isn't the end of the case.


----------



## James Long

jacmyoung said:


> Sorry you need to write in a way I can understand.


What grade level do you need?  (Sorry, too easy.)


> It will take a while since I will have to go back to find from those posts.


Take all the time you need ... post it on September 6th.


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## James Long

jacmyoung said:


> The interest of the court economy did not prevent discussion of the damage issues, only that it did not allow such a limited discovery for the purpose of the damage determination, it was not necessary.


Irrelevant ... the issue is your false claim that discovery on the software issue was not connected to the "judicial economy". Move the cheese all you want ... your assertion has been proven wrong (again).


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## jacmyoung

James Long said:


> Not quite.
> 
> A ruling of no contempt does not mean that DISH's software is non-infringing ...


Correct, but DISH's software must either be more than colorably different, or can raise substantial open issues as whether it still infringes or not, or may establish the doubt whether there is on-going infringement, pick your poison.



> it only means that the judge does not believe that DISH's response of allegedly changing software and not permanently disabling the DVR functionality does not rise to the level of contempt.


And for that to happpen, read the above.



> Unless and until the judge also rules (improperly without discovery) that the new software is non-infringing or that the existing products are somehow new products because of that software the eight named products remain under the power of this injunction.


No the judge cannot rule the new software non-infringing in a contempt proceeding, only those I listed above again.



> Look at what the judge ruled back when the injunction was issued ... despite the jury verdict the judge ruled against trebble damages because he gave DISH the benefit of the doubt that their infringement was not willful ... yet he still punished them for their infringement. He could follow the same path on September th ruling that DISH is not in contempt because they have made an effort not to infringe ... but NOT ruling the products non-infringing until full discovery is made.


That I agree a brillaint anology. The only thing is again non-infringing cannot be ruled in a contempt proceeding, with or without a discovery. Only substantial open issues, doubt, and colorable difference are at issue in a contempt phase.



> Not in contempt is a good ruling for DISH ... but it isn't the end of the case.


It will be the end of this case, Tivo will have to file a new suit, if the DE court dismisses the DISH case that is.

Now the only way you and Greg will be right is if the judge says no prima facie violation Tivo, you go back start all over again. I would agree with that had Tivo not started to debate the new software and the "Adjudicated Receivers" colorable difference issues, but they did, while Tivo tried to avoid it, eventually they did in the lastest response. By doing so Tivo legitimized DISH's new software argument. I don't think the judge will ignore that.

When both parties agreed to debate on that, I doubt the judge will simply brush it off because it supposedly is not on the agenda.

But even if you are correct (another one of those "on alternative" argument) that the judge will ignore the above, merely stick to the prima facie issue, if he says no contempt, it practically will amount to the end of the case. Because while Tivo may again start over, it is nearly impossible to prove with clear and convincing evidence that the new software still infringes. Remember DISH only needs to establish the doubt, their evidence does not even have to be substantial. Because a contempt proceeding is summary in nature, and the non-movant (DISH) will be given all considerations by the court.


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## James Long

jacmyoung said:


> Unless and until the judge also rules (improperly without discovery) that the new software is non-infringing or that the existing products are somehow new products because of that software the eight named products remain under the power of this injunction.
> 
> 
> 
> No the judge cannot rule the new software non-infringing in a contempt proceeding, only those I listed above again.
Click to expand...

I don't know if you're agreeing with me ... but we've come to the same conclusion ... ruling the software non-infringing on September 4th would be improper.


> Not in contempt is a good ruling for DISH ... but it isn't the end of the case.
> 
> 
> 
> It will be the end of this case, Tivo will have to file a new suit, if the DE court dismisses the DISH case that is.
Click to expand...

As long as THIS injunction is in place (which is until it is lifted by this court, a higher court or expires with the patent) the Texas court has jurisdiction over this injuction. You just agreed that the injunction doesn't end with a verdict of "not in contempt". Don't change your mind in the same post! 


> Now the only way you and Greg will be right is if the judge says no prima facie violation Tivo, you go back start all over again.


Tivo won't be told to start over. They will just have to move on based on where the court leaves them. No contempt is not the end of the case.


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## jacmyoung

James Long said:


> I don't know if you're agreeing with me ... but we've come to the same conclusion ... ruling the software non-infringing on September 4th would be improper.


Did I ever disputed that?



> As long as THIS injunction is in place (which is until it is lifted by this court, a higher court or expires with the patent) the Texas court has jurisdiction over this injuction. You just agreed that the injunction doesn't end with a verdict of "not in contempt". Don't change your mind in the same post! Tivo won't be told to start over. They will just have to move on based on where the court leaves them. No contempt is not the end of the case.


Of course the injunction does not end unless it is lifted or the patent expires, why did you think I changed my mind?

What I am saying is if DISH is not in contempt, there will be no reason to file for another contempt proceeding, and even if Tivo does, it can be easily defeated by DISH. Because a no contempt will almost certainly be the result of finding the doubt, the open issues, or more than colorable differences. Once such are established, another contempt proceeding cannot change that, it will be a waste of time.

But then again, I also added an "on alternative" arguement above for you to read.


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## James Long

jacmyoung said:


> Did I ever disputed that?


Starting a reply with the word "No" usually is a flag of disagreement ...
You wrote "No" then agreed with what I wrote. 


> What I am saying is if DISH is not in contempt, there will be no reason to file for another contempt proceeding,


It isn't about contempt ... it is about infringement. September 4th is about contempt ... but DISH needs to get their software declared non-infringing so they can (as they requested in Delaware) go about their business of providing DVR service without the constant threat of lawsuits. That declaration is not coming September 4th.


> But then again, I also added an "on alternative" arguement above for you to read.


Oh joy ... you thought of something 15 minutes later and now I have to go find it where you posted it ...  


jacmyoung said:


> But even if you are correct (another one of those "on alternative" argument) that the judge will ignore the above, merely stick to the prima facie issue, if he says no contempt, it practically will amount to the end of the case. Because while Tivo may again start over, it is nearly impossible to prove with clear and convincing evidence that the new software still infringes. Remember DISH only needs to establish the doubt, their evidence does not even have to be substantial. Because a contempt proceeding is summary in nature, and the non-movant (DISH) will be given all considerations by the court.


You are (still) forgetting that until the products are declared non-infringinging the products remain infringing. A verdict of "not in contempt" would be good for DISH because it is in their favor and it allows them to address the infringement issue without openly defying the court order to disable the DVR functionality. But (everybody say it together!) a verdict of "not in contempt" is not the end of the case. For DISH to be off the hook they need their software and products ruled non-infringing. The only thing this motion for contempt addresses is the disabling issue ... not infringement or continued damages.

There is still a lot of case to go after September 4th ... and if DISH is found in contempt the outcome is about the same except DISH appeals the ruling instead of Tivo appealing the ruling. The DVRs remain active. Business as usual outside of the courts and this thread.


----------



## peak_reception

scooper said:


> First off - drop the term "adjudicated devices". Except for Tivo's briefs - it doesn't appear anywhere else. The proper term should be "infringing devices". Using tht term is as bad as Echostar stating that their now software-changed DVRs are non-infringing.


 You raise a good point. TiVo uses "adjudicated devices" because they want the focus to be on Dish's alleged flouting of the law in their failure (that most observers acknowledge) to follow a clear and explicit court order. If TiVo uses "infringing devices" then it does beg the question whether or not those devices *still* infringe or not ( a critical question in most* patent case contempt hearings).



> I think what jacmyoung has been saying all along is that in order to prove contempt - Tivo must prove that both the "infringing devices" and any other E* DVRs to be shutdown are "merely colorably different" and are still infringing. - prima facie be damned.


 I see where you get this but why doesn't the judge seem as interested as you are in putting this first? One can say it's not the judge's job to do TiVo's or Dish's work for them (as jacmyoung has) but if he has other plans than to make September 4th about whether Dish has obeyed the injunction or not, he's also engaging in something of a charade since in that case September 4th will be -- as Curtis52 has said -- a complete waste of time. From everything I've seen from and about Judge Folsom he is first and foremost *not* about wasting anyone's time, including his own.



> So, Echostar, in filing the case in DE, just made Tivo's job that much more difficult. If it comes down to it - you may end up with conflicting rulings - DE saying they are a legitimate workaround and therefore not infringing, and you can work out the other side of that.


 I'll agree it was a shrewd move for Dish to file in Delaware as it puts pressure on TiVo to play all their cards or risk losing the pot to a judgment in DE that Dish no longer infringes. They'll need to address the new software head on before September 11 but after September 4, a narrow window which doesn't leave much room for error. Once they file on the new software in TX then I think DE declines to hear the case. One could argue that Dish 'beat them to it' by filing first in DE, but it's obviously an issue in the TX case (the pink elephant in the courtroom) and I'll bet that the DE court wants no part of it if they can help it. Scheduling after September 4 is their best way out of the mess since they can then see how events unfold in TX first. For this reason I think that we won't have to wait long for Judge Folsom's ruling; He's going to want to rule in time for DE to have plenty of cause to bow out completely.

As much of a mess as this case already is, Judge Folsom is smart enough to see that it could get much messier if he doesn't step in and take charge on September 4th. I think we'll witness a decisive day 9-4, or a couple of days later.

* I say in "most" patent contempt hearings because this case is complicated by a defendant who has defied a clear and explicit court order, that Final and Permanent Injunction requiring that they shut down DVR functionality in Infringing Products listed therein.


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## jacmyoung

James Long said:


> Starting a reply with the word "No" usually is a flag of disagreement ...


Pick an item that was never in dispute and claim your opponent agrees with you as a sign of your strength is total lack of strength.



> You wrote "No" then agreed with what I wrote.


See above.



> It isn't about contempt ... it is about infringement. September 4th is about contempt ... but DISH needs to get their software declared non-infringing so they can (as they requested in Delaware) go about their business of providing DVR service without the constant threat of lawsuits. That declaration is not coming September 4th.


Again it just shows your continued misunderstanding of what a contempt proceeding is all about. No DISH does not need to get their modified products declared non-infringing in order to be found not in contempt, they only need to establish the doubt, to demonstrate that open issues now exist as whether there is on-going infringement, or to convince the court the modification is more than colorable.

If you are talking about the whole picture, not specific to the contempt issue in front of us, you are correct to a large extent, but I thought we are discussing the contempt issue, why change the subject again?

Now when I said "to a large extent", it is because I don't think your use of "constant lawsuits" is appropriate, DISH had not been faced with "constant lawsuits" on this issue, there has been only one lawsuit regarding this Tivo patent against DISH. If your are projecting future constant lawsuits by Tivo on the subject of this Tivo's patent again, I respectfully disagree.

If DISH is not in contempt, my feeling is Tivo and DISH will finally settle. Tivo can not afford to continue on this path, especially if DISH is not in contempt. Tivo is faced with loss of market that makes DISH's latest lack of quarterly performance looks like a winner. Tivo needs an anchor to survive, and they need DISH.



> Oh joy ... you thought of something 15 minutes later and now I have to go find it where you posted it ...


Did I not warn you more than once already



> You are (still) forgetting that until the products are declared non-infringinging the products remain infringing.


Disagree. In the contempt phase, the infringer needs not to prove their modified products no longer infringe, they only need to demosntrate there is doubt whenther the products still infringe or not, and if they can do so, there is no contempt threat.



> A verdict of "not in contempt" would be good for DISH because it is in their favor and it allows them to address the infringement issue without openly defying the court order to disable the DVR functionality. But (everybody say it together!) a verdict of "not in contempt" is not the end of the case. For DISH to be off the hook they need their software and products ruled non-infringing. The only thing this motion for contempt addresses is the disabling issue ... not infringement or continued damages.


Yes it will be the end of this case, to rule their new software still infringe, Tivo needs to start a new lawsuit, the new software cannot be adjudicated in this suit. DISH does not need to feel compelled to have a court to rule their new software non-infringing. Their DE case is a strategic move to deny Tivo's future attempt to file a new suit in the Texas court.



> There is still a lot of case to go after September 4th ... and if DISH is found in contempt the outcome is about the same except DISH appeals the ruling instead of Tivo appealing the ruling. The DVRs remain active. Business as usual outside of the courts and this thread.


And if on appeal the contempt ruling is upheld, DISH will disable the listed DVRs. Unfortunately my such prediction can never be proven, because DISH will not be in contempt.


----------



## Curtis52

jacmyoung said:


> What I am saying is if DISH is not in contempt, there will be no reason to file for another contempt proceeding, and even if Tivo does, it can be easily defeated by DISH. Because a no contempt will almost certainly be the result of finding the doubt, the open issues, or more than colorable differences. Once such are established, another contempt proceeding cannot change that, it will be a waste of time.


There will not be a "not in contempt" ruling. TiVo's motion fro a contempt finding may be denied but that's not the same thing as saying Dish is not in contempt. Since TiVo's motion is only about prima facie failure to disable the DVRs, TiVo will be free to file for contempt on other grounds such as merely colorable differences and the judge will be free to listen to arguments on that issue.


----------



## jacmyoung

peak_reception said:


> You raise a good point. TiVo uses "adjudicated devices" because they want the focus to be on Dish's alleged flouting of the law in their failure (that most observers acknowledge) to follow a clear and explicit court order. If TiVo uses "infringing devices" then it does beg the question whether or not those devices *still* infringe or not ( a critical question in most* patent case contempt hearings).


Except Tivo's entire basis for the contempt for now is the letter of the injunction, nothing else. By not sticking to the very letter it claims to be the only issue of violation, and by replacing the most important term "Infringing Products" purposefully elected by the judge to be in his order, and turned it into something called "Adjudicated Receivers", Tivo themsleves turned back on the very letter of the injunction they must rely on, why? Because if they stick to that letter, their whole argument will be out of the window.



> I see where you get this but why doesn't the judge seem as interested as you are in putting this first? One can say it's not the judge's job to do TiVo's or Dish's work for them (as jacmyoung has) but if he has other plans than to make September 4th about whether Dish has obeyed the injunction or not, he's also engaging in something of a charade since in that case September 4th will be -- as Curtis52 has said -- a complete waste of time. From everything I've seen from and about Judge Folsom he is first and foremost *not* about wasting anyone's time, including his own.


It might be precisely that he had no time, he had to just grant the motion and dealt with it in a later time.

I have proposed such theory before, when I read the denial of a motion in some prior cases, it was apparent to deny a motion takes time to prepare the justifications, not any less time consuming than producing a contempt ruling itself. Did it appear to you Judge Folsom had time to do it? When Tivo asked him to schedule the hearing in a week or two, his earliest available slot was almost three months later. He might not have a choice but simply to grant Tivo's motion since it took little time to do that, and to put the time consuming task off for another day.



> I'll agree it was a shrewd move for Dish to file in Delaware as it puts pressure on TiVo to play all their cards or risk losing the pot to a judgment in DE that Dish no longer infringes. They'll need to address the new software head on before September 11 but after September 4, a narrow window which doesn't leave much room for error. Once they file on the new software in TX then I think DE declines to hear the case. One could argue that Dish 'beat them to it' by filing first in DE, but it's obviously an issue in the TX case (the pink elephant in the courtroom) and I'll bet that the DE court wants no part of it if they can help it. Scheduling after September 4 is their best way out of the mess since they can then see how events unfold in TX first. For this reason I think that we won't have to wait long for Judge Folsom's ruling; He's going to want to rule in time for DE to have plenty of cause to bow out completely.


But Judge Folsom had clearly told Tivo to wait till he renders a decision after 9/4 before any more motions. Again to render a ruling after 9/4 will take time, and the judge had not shown any eagerness to be actively involved in this case, when DISH's lawyer asked to push the hearing back by almost another two weeks, the judge did not even think twice and agreed, if anything he seemed sick of both DISH and Tivo, it was obvious in his handling of both DISH and Tivo's lawyers, especially Tivo's lawyer, on 5/30.



> As much of a mess as this case already is, Judge Folsom is smart enough to see that it could get much messier if he doesn't step in and take charge on September 4th. I think we'll witness a decisive day 9-4, or a couple of days later.


But past experience does not make me think it will be done just right afer 9/4. I wish you are correct, we have been waiting for too long



> * I say in "most" patent contempt hearings because this case is complicated by a defendant who has defied a clear and explicit court order, that Final and Permanent Injunction requiring that they shut down DVR functionality in Infringing Products listed therein.


Contempt charges have always been the movants' alleged "defying the order" by the non-movants. It will be up to the judge, not you, me or Tivo, to decide if DISH had defied his order or not.


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## jacmyoung

Curtis52 said:


> There will not be a "not in contempt" ruling. TiVo's motion fro a contempt finding may be denied but that's not the same thing as saying Dish is not in contempt. Since TiVo's motion is only about prima facie failure to disable the DVRs, TiVo will be free to file for contempt on other grounds such as merely colorable differences and the judge will be free to listen to arguments on that issue.


Possible but unlikely IMO, simply because the new software and Adjudicated Receivers' colorable difference debate is right in front of the judge on 9/4, he can, and as all judges in a contempt proceeding should do, to address such issue and render a ruling based on that.

You should recall several cases both you and I researched on the "prima facie contempt proceedings", in which the patentees did exactly what Tivo is doing now, wanted to argue nothing but the letter of the injuntions, and in all of those cases we cited, the court nevertheless were compelled to look at the infringers' modification evidence, and based their rulings on those evidence instead.

I don't think the judge is compelled to limit his taskes to only the ones on his agenda, especially when both parties are now embarking on the issue of colorable difference. But I am not saying your notion is not possible, as I have made an on-alternative argument accepting your premise.


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## Curtis52

jacmyoung said:


> Possible but unlikely IMO, simply because the new software and Adjudicated Receivers' colorable difference debate is right in front of the judge on 9/4, he can, and as all judges in a contempt proceeding should do, to address such issue and render a ruling based on that.


No. A judge does not have a hearing on "X" and rule on "Y". The subject of any hearing needs to be the issue ruled on. Otherwise, the parties don't get a fair chance to present their cases and appeals can result. The judge needs technical advisors to make a ruling on colorable differences. It just won't happen.


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## James Long

jacmyoung said:


> Pick an item that was never in dispute and claim your opponent agrees with you as a sign of your strength is total lack of strength.


Sorry ... I forgot that your purpose here is to stir the pot and argue ... even when you agree with the points you are arguing against.  


> Again it just shows your continued misunderstanding of what a contempt proceeding is all about.


Are you sure that it is everyone else in the world that misunderstands and only jacmyoung who has it right? Do you need a list of stuff you don't understand that you have recently admitted?


> If you are talking about the whole picture, not specific to the contempt issue in front of us, you are correct to a large extent, but I thought we are discussing the contempt issue, why change the subject again?


Because of your lie (or gross misunderstanding) that a ruling of "not in contempt" somehow ends everything in Texas and allows DISH to freely go about infringing without any other court action. It isn't changing the subject. It is correcting your false statements.


> I don't think your use of "constant lawsuits" is appropriate,


Please direct your complaints to Echostar Corporation ... who used the term "continuous" lawsuits (close enough) in their complaint in Delaware. I'm just the messenger.


> Yes it will be the end of this case, to rule their new software still infringe, Tivo needs to start a new lawsuit, the new software cannot be adjudicated in this suit.


Once again for the painfully slow ... A RULING OF NOT IN CONTEMPT DOES NOT CLEAR THE SOFTWARE. THE SOFTWARE IS NOT BEING ADJUDICATED DURING THE CONTEMPT HEARING. WHAT IS BEING ADJUDICATED IS WHETHER OR NOT DISH'S ACTIONS SATISFY THE COURT OR IF THEY ARE IN CONTEMPT OF THE COURT'S ORDER.


> And if on appeal the contempt ruling is upheld, DISH will disable the listed DVRs. Unfortunately my such prediction can never be proven, because DISH will not be in contempt.


You've got me rooting for a Tivo victory just to prove that you're wrong. :lol:


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## James Long

Curtis52 said:


> There will not be a "not in contempt" ruling.


True ... It is just easier to say DISH is ruled "not in contempt" than to say "Tivo's Motion for Contempt is denied".


jacmyoung said:


> Except Tivo's entire basis for the contempt for now is the letter of the injunction, nothing else.


For September 4th or forever?

It is the "DISH wins forever" attitude that needs to be lost here. September 4th will be about whether DISH not disabling the DVR functionality is contempt of court, but the rest of the case is not dismissed. There is still plenty more for Tivo to argue.


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## Greg Bimson

jacmyoung said:


> Possible but unlikely IMO, simply because the new software and Adjudicated Receivers' colorable difference debate is right in front of the judge on 9/4, he can, and as all judges in a contempt proceeding should do, to address such issue and render a ruling based on that.


That debate is not in front of the judge, and that is not what Judge Folsom must address.

There are two issues being presented on 4 September: contempt for violations of the letter of the injunction, which we've refered to as the "disable" clause, and the calculation of damages since August 2006.

The new software debate is not in front of the judge on 4 September. If it were, the court would need a technical advisor for the hearing. Both sides agreed there was not to be a technical advisor for that hearing. The software will remain unadjudicated, as it is not needed for a contempt action for prima facie violations of an injunction.

Logic dicates:
DISH/SATS was told to disable the DVR functionality in eight models of DVR for the length of the Time Warp patent. Therefore, those receivers would be under the scope of the injunction even when modifiied so that DVR functionality is disabled.

Instead DISH/SATS changed the code of the DVR functionality in eight models of DVR, and now believes those receivers, already adjudicated to infringe, are somehow out of the scope of the injunction, even though disabling those receivers would keep them within the scope of the injunction.

*I read on satbiznews.com that DISH/SATS has filed their writ of certiorari with SCOTUS.*


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## Curtis52

OT but LOL

http://rapidtvnews.com/index.php/200808121881/echostar-vs-intelsat-orbital-squabble.html


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## Greg Bimson

There were three orders from the August, 2006 Final Judgment and Permanent Injunction order signed by Judge Folsom:

1) DISH/SATS is ordered to pay damages in the amount or $90 million
2) DISH/SATS is ordered to stop selling "Infringing Products" and those merely colorably different
3) DISH/SATS is ordered to disable DVR functionality from the "Infringing Products" in the hands of their customers as of the time of judgment (which was defined by TiVo as "Adjudicated Products")


jacmyoung said:


> Again it just shows your continued misunderstanding of what a contempt proceeding is all about. No DISH does not need to get their modified products declared non-infringing in order to be found not in contempt, they only need to establish the doubt, to demonstrate that open issues now exist as whether there is on-going infringement, or to convince the court the modification is more than colorable.


But once again, you've completely misunderstood what this contempt hearing is about: it only relates to the third order, and does not require any finding of ongoing infringement. As Curtis52 stated:


> No. A judge does not have a hearing on "X" and rule on "Y". The subject of any hearing needs to be the issue ruled on.


Just because DISH/SATS wants to use the allegedly "new software" as a defense for possibly violating a direct order of the court does not mean that the court will rule anything on that "new software".


jacmyoung said:


> But Judge Folsom had clearly told Tivo to wait till he renders a decision after 9/4 before any more motions.


No, Judge Folsom had clearly told TiVo to wait until he renders a decision to renew the request for limited discovery on the new software. If TiVo decides to file a motion of contempt for violations of an injunction against infringements relating to adjudicated receivers modified and sold during the stay of the injunction as well as the ViP series of receivers, then a request for discovery would be granted. It would also stop the Delaware lawsuit dead, as they'll stay the case pending a finding of colorable difference in Texas.


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## phrelin

Anyone find the memo reported in the thread MPEG 2 HD going away as of Sept 17th curious? While there are other reasons to act rapidly to get a changeover (creating transponder space for HD, for instance), it sure seems odd about the push for completion in September. And why exactly have the 50X boxes gotten what one poster called a "flurry of software updates" in August?


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## jacmyoung

Greg Bimson said:


> ...But once again, you've completely misunderstood what this contempt hearing is about: it only relates to the third order, and does not require any finding of ongoing infringement. ...


But once again I have reminded Curtis and many of you, that both Curtis and I had in the past cited many cases similar to this one, when the winning patentees brought upon contempt proceedings on prima facie argument alone, they did not want the courts to address any other issues, such as any issue of modification.

And in those cases we cited, the courts always ended up looking at the modification evidence presented by the infringers, regardless what the movants had asked for. And the courts had always made rulings based on the modification evidence, as long as the modificaitons existed.

So you can insist that on 9/4 Tivo will prevail because Tivo only wants to discuss one issue, I have case law after case law that proved you wrong, that those winning patentees did the same as Tivo is trying to do now, and failed. Courts had always ended up looking at modification evidence after all.

The reason is not hard to figure:

1) In a contempt proceeding, the court must *first* look at the differences between the accused devices and the adjudicated devices, and determine if the differences are more than colorable.

2) Infringement is the sine qua non of a violation [contempt] of an injunction on infringement.

3) Mere finding of violation of the injunction is not enough, infringement must also be found.

3) When in doubt whether the accused devices still infringe the patent or not, a contempt finding will not be appropriate. A new suit must be sought to address the infringement of the modified devices.

4) A device that may not be deemed to be within the scope of the patent in a separate proceeding, cannot possibly be enjoined under the current injunction.

5) The infringer must be allowed to make good faith effort to modify the adjudicated devices in order to workaround the patent and remain in the marketplace.

The 9/4 contempt proceeding is no different than any other contempt proceedings in patent infringement cases. There has never been any contempt proceedings that got special treatment, none what's so ever in the past, none of you was ever able to produce a single one of such case with modification present in order to support your notion that on 9/4 only one issue can be contested.

In fact now both DISH and Tivo have conformed to the above rule, and have actively engaged in the debate that is essential in a contempt proceeding where modification is present, that debate is about whether the new software, and the adjudicated DVRs that have been modified by the use of this new software, are more than colorably different or not.

So you can think about the above, and then think very hard how likely your notion of only a single issue may be addressed on 9/4. I am not saying it is impossible, just unlikely, based on all of the above facts, not imagination.


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## jacmyoung

phrelin said:


> Anyone find the memo reported in the thread MPEG 2 HD going away as of Sept 17th curious? While there are other reasons to act rapidly to get a changeover (creating transponder space for HD, for instance), it sure seems odd about the push for completion in September. And why exactly have the 50X boxes gotten what one poster called a "flurry of software updates" in August?


May be because DirecTV had jumped ahead completed the conversion already? May be E* must vacate additional BW in order to add more new HDs?

I am no longer a believer of timing, especially timing on the court's movement.


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## jacmyoung

Greg Bimson said:


> ...*I read on satbiznews.com that DISH/SATS has filed their writ of certiorari with SCOTUS.*


Shouldn't be surprised should we?


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## Curtis52

jacmyoung said:


> But once again I have reminded Curtis and many of you, that both Curtis and I had in the past cited many cases similar to this one, when the winning patentees brought upon contempt proceedings on prima facie argument alone, they did not want the courts to address any other issues, such as any issue of modification.


Keep me out of this. In the other cases, contempt arguments were based on continued infringement not on narrow "disable" arguments. The judge may decide not to find contempt and that TiVo will need to refile to look at colorable differences in a new motion for contempt but colorable differences won't be decided at the 9-4 hearing. Colorable differences aren't the subject of the 9-4 hearing. If there was some discussion of the colorable differences in the filings when it isn't even the subject of the hearing, just imagine how much more discussion there would be in filings if colorable differences becomes the subject of a contempt motion.


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## jacmyoung

Curtis52 said:


> OT but LOL
> 
> http://rapidtvnews.com/index.php/200808121881/echostar-vs-intelsat-orbital-squabble.html


That was funny!


----------



## jacmyoung

Curtis52 said:


> Keep me out of this. In the other cases, contempt arguments were based on continued infringement not on narrow "disable" arguments. The judge may decide not to find contempt and that TiVo will need to refile to look at colorable differences in a new motion for contempt but colorable differences won't be decided at the 9-4 hearing. Colorable differences aren't the subject of the 9-4 hearing. If there was some discussion of the colorable differences in the filings when it isn't even the subject of the hearing, just imagine how much more discussion there would be in filings if colorable differences becomes the subject of a contempt motion.


That I do not disagree entirely, but you have cited one case precisely in which the movant accused the infringer of contempt on one issue alone, *prima facie* violation of the injunction, and the court granted the motion on that single issue alone, but after looking at the infringer's modification evidence, found no contempt, and the movant appealed and lost again.

And the interesting part of this is, if DISH is found in contempt, they will appeal, and during the appeal, you can bet the appeals court will look at the modificaiton evidence, they always do, they had never missed a beat on this, even if Judge Folsom may refuse to look at it (which I doubt so), and overturning of the contempt ruling will be certain, on the fact alone that the judge did not look at the difference issue.

There are so many cases I cited and read before when a contempt ruling was overturned and remanded back to the lower court for one reason only, the lower court failed to look at the difference issue.

So if your prediction comes true and DISH is in contempt as a result, the appeals court will force the judge to redo his hearing and look at the difference/modification evidence already present in front of him, so in a sense the outcome will not be too different, Tivo will still not have much chance to motion for another proceeding.

But what I am saying is in the case if the judge finds no contempt without looking at the modification evidence, then you could be right, but logically that cannot happen, because if he disregards the new evidence as advocated by Tivo that he should disregard them, then he has to find in favor of Tivo. That is why I keep saying your scenario is not likely to happen at all.

Let put it this way, if the judge only looks at the single issue, he must find DISH in contempt. Logically there cannot be such scenario in which the judge looks at only this single prima facie issue and somehow finds DISH not in contempt.


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## phrelin

Curtis52 said:


> OT but LOL
> 
> http://rapidtvnews.com/index.php/200808121881/echostar-vs-intelsat-orbital-squabble.html


Love this:


> Echostar, always ready with a lawyer or two, is now applying....


I really think we need a whole forum entitled "Charlie and the Law" just to keep track of all the legal disputes in one place.


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## nobody99

jacmyoung said:


> There are so many cases I cited and read before when a contempt ruling was overturned and remanded back to the lower court for one reason only, the lower court failed to look at the difference issue.


You are missing, and have missed all along, such a basic understanding of this case. Every case you cite deals with a company's right to design around a patent when selling new devices. Everyone hear agrees with you, and we've all said it over and over, that colorable differences will apply to the sale of newly-manufactured boxes with new software. But the issue, as Greg pointed out, deals with the third order: to disable DVR functions on receivers already in the hands of customers.

In many cases in the past, items already in the hands of customers or vendors were ordered recalled and destroyed. They weren't ordered recalled, fixed, and sent back out, they were ordered to be destroyed never to be returned to a customer again.

So you can keep bringing up case after case about non-infringing software, but it simply doesn't matter. The 3+ million boxes can *not again have dvr functions until the '389 patent expires*. It's really that simple.


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## Greg Bimson

jacmyoung said:


> That I do not disagree entirely, but you have cited one case precisely in which the movant accused the infringer of contempt on one issue alone, *prima facie* violation of the injunction, and the court granted the motion on that single issue alone, but after looking at the infringer's modification evidence, found no contempt, and the movant appealed and lost again.


There is the problem. The only "prima facie volation of the injunction" that I have cited is Fisher-Price v. Safety 1st, and in that case, Fisher-Price won the prima facie contempt case without checking on devices already adjudicated to infringe.

You keep thinking that because Joe Blow has had a 501 in his A/V center for four years that the device is new because DISH/SATS simply changed the code. Yet the court crafted an injunction that ordered DISH/SATS to disable that box and millions of others, and those boxes would still be under the scope of the injunction while disabled. Simply changing a byte or two of the software, or even a billion lines of code does not take the receivers adjudicated as infringing out of the scope of the injunction.

I will AGREE that most of what you have found regarding modifications is correct, but that does not apply to products already adjudicated infringing.


jacmyoung said:


> And the interesting part of this is, if DISH is found in contempt, they will appeal, and during the appeal, you can bet the appeals court will look at the modificaiton evidence, they always do, they had never missed a beat on this, even if Judge Folsom may refuse to look at it (which I doubt so), and overturning of the contempt ruling will be certain, on the fact alone that the judge did not look at the difference issue.


It only depends upon the standard used to rule. Remember, even if Judge Folsom does not look at the allegedly new software, DISH/SATS will appeal that Judge Folsom used the wrong standard in granting TiVo's motion for contempt. That would be the only way the modification makes its way into the Court of Appeals. And at that point, even they will not look at the modification evidence; the Court of Appeals would simply remand the case back to Judge Folsom to look at the modification.


jacmyoung said:


> Let put it this way, if the judge only looks at the single issue, he must find DISH in contempt. Logically there cannot be such scenario in which the judge looks at only this single prima facie issue and somehow finds DISH not in contempt.


Now you understand what we've been trying to say all along.

Remember, at one point I agreed with you that the new software must be looked at. That was before it was pointed out that the injunction would go into full force and effect without anyone signing it, before anyone would ever look at the software. The game changed once the injunction was law regarding how the adjudicated infringing models operate.


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## kmill14

Funny to see jacmyoung still fighting the same fight (after he said he was done).

Without going back a few too many pages, has he addressed the fact that in all but one of his cases (KSM specifically), modification arguments have referred to new devices, and not devices already adjudged to infringe? 

In the one case he continually pulls up (footprint 2.0) that talks about modifications to an existing, adjudged "service", the injunction clearly limited the scope to the way the "service" was written/coded at the time of the trial. 

But I would love to know if jacmyoung still likes to quote KSM, which is the pillar of all arguments regarding "design arounds" and modifications", even though KSM specifically separates adjudged to infringe devices and modified or new devices.


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## phrelin

jacmyoung said:


> May be because DirecTV had jumped ahead completed the conversion already? May be E* must vacate additional BW in order to add more new HDs?
> 
> I am no longer a believer of timing, especially timing on the court's movement.


It's my understanding that DirecTV's core SD programming and local market channels are on 101w which is MPEG-2 because they too have millions of recievers out there that are not MPEG4 compatible.

But otherwise I'd be inclined to agree with you except for the gnawing fact that the "Eastern Arc" is already setup to be all MPEG4. To quote TiVo's filing:


> The injunction's key provision was simple: "disable the DVR functionality" in all of EchoStar's DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942 DVR receivers that had been placed with subscribers.


I think Charlie has a Plan B based on an "oops, we lost" scenario combined with a "screw TiVo" attitude.

If he can keep the injunction at bay until he has Ciel-2 up and running in early 2009 for a "Western Arc", it appears Dish could then replace all the listed receivers in a full MPEG4 roll-out, smoothly burying the whole TiVo issue with "We're the leader in...." Would it be more costly than waiting for all the folks to ask for HD? No. Yes it does mean replacing all the boxes in a short time, but it also completely solves the short term HD bandwidth problem.

And from an accounting standpoint running across two fiscal years, the cash-flush Echostar acquires a bunch of new boxes most using debt and sells them to Dish on credit. It's a sales income win on Echostar's books and it is simply a wash on the balance sheet as an increase in receivables and payables.

Dish increases it's assets and debt, so its a wash on its balance sheet. Dish leases the boxes to customers and starts depreciating them. Another income statement wash. But customers will change to HD sooner, a gain in revenue to offset the heavy investment in HD, so its a win for Dish.

The real issues here have nothing to do with the law. It's whose financials will look like what in 2012. TiVo's 2012 financials won't be significantly improved with a win unless they use the money well within an unpredictable market.

In the meantime, I think Dish has designed and downloaded software to allow them to specifically shut off the digital video recording (not playback or receiving) capability of my two owned 508's. Depending on how they handle it, I'll either be upset having to give up these 6-year old computers (why?) or I'll be happy with my new ViP. Yes, it is likely there will be some small short-term subscriber loss for Dish under this Plan B. But it is unlikely there will be any subscriber gain for TiVo resulting from Plan B.

As I follow this thread, I sometimes just have to throw in a discussion of the real world implications of this lawsuit within the context of apparent changes in Dish Network and Echostar market strategies. And those old boxes are not part of that.


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## jacmyoung

Greg Bimson said:


> There is the problem. The only "prima facie volation of the injunction" that I have cited is Fisher-Price v. Safety 1st, and in that case, Fisher-Price won the prima facie contempt case without checking on devices already adjudicated to infringe.


I was referring to a prima facie case Curtis cited some time ago, not this one of yours. Your prima facie case was a piece of cake, because as I said several times apparently you did not read them, your case had no modification, and the infringer also admitted they violated the order, so of course there was no need to go further.

Please remember one thing, everything I said has a precondition, that is a good faith modification had happened, without that I would not have even bothered.



> You keep thinking that because Joe Blow has had a 501 in his A/V center for four years that the device is new because DISH/SATS simply changed the code.


I never said the DVR is new, please don't put words in my mouth, I said the DVR was modified. You like Tivo want to argue the DVRs already in the hands of the end users may not be modified, I disagree, there is not a single standard I cited above that says such standard applies to products not already sold. There is never such precondition, all products can be modified, sold or not. So to insist that only the products not sold already may be modified has no basis what's so ever, it is only in your head.



> Yet the court crafted an injunction that ordered DISH/SATS to disable that box and millions of others, and those boxes would still be under the scope of the injunction while disabled. Simply changing a byte or two of the software, or even a billion lines of code does not take the receivers adjudicated as infringing out of the scope of the injunction.


Yes it does, if substantial open issues now can be raised that those same DVRs may no longer infringe, therefore no longer fit the definition of the term "Infringing Products" as very particularly specified in the injunction, than they no longer are within the scope of the injunction.



> I will AGREE that most of what you have found regarding modifications is correct, but that does not apply to products already adjudicated infringing...


Yes it does, if you read the below:

The infringer shall be allowed to make good faith effort to modify the *adjudicated devices* and workaround the patent in order to remain in the marketplace.


----------



## jacmyoung

phrelin said:


> It's my understanding that DirecTV's core SD programming and local market channels are on 101w which is MPEG-2 because they too have millions of recievers out there that are not MPEG4 compatible.


I thought you were referring to the HDs.



> But otherwise I'd be inclined to agree with you except for the gnawing fact that the "Eastern Arc" is already setup to be all MPEG4. To quote TiVo's filing: I think Charlie has a Plan B based on an "oops, we lost" scenario combined with a "screw TiVo" attitude.


That I agree 100%, it is always good to have a plan B.


----------



## jacmyoung

Greg Bimson said:


> ...It only depends upon the standard used to rule. Remember, even if Judge Folsom does not look at the allegedly new software, DISH/SATS will appeal that Judge Folsom used the wrong standard in granting TiVo's motion for contempt. That would be the only way the modification makes its way into the Court of Appeals. And at that point, even they will not look at the modification evidence; the Court of Appeals would simply remand the case back to Judge Folsom to look at the modification.


That I do not disagree in principle. But I just want to say this again, there has never been one case where in a contempt proceeding, where an infringer claimed modification, and the court refused to look at such evidence, ok I did read a few cases that had happened, and all were overturned on appeal.

It is called "abuse of the court discretion" if the court finds contempt without looking at evidence of modification.



> Now you understand what we've been trying to say all along.
> 
> Remember, at one point I agreed with you that the new software must be looked at. That was before it was pointed out that the injunction would go into full force and effect without anyone signing it, before anyone would ever look at the software. The game changed once the injunction was law regarding how the adjudicated infringing models operate.


Understand what? Unfortunately I do not remember. I was talking to Curtis in an "on alternative" form, not trying to agree with you. An on-alternative argument means I concede your premise is true (not agreeing with it), and can still prove you wrong.


----------



## Greg Bimson

jacmyoung said:


> I was referring to a prima facie case Curtis cited some time ago, not this one of yours. Your prima facie case was a piece of cake, because as I said several times apparently you did not read them, your case had no modification, and the infringer also admitted they violated the order, so of course there was no need to go further.


There was a modification. Maybe you need to re-read it. I will state that the modification was not found in contempt of the prima-facie violation of the injunction.


jacmyoung said:


> You like Tivo want to argue the DVRs already in the hands of the end users may not be modified, I disagree, there is not a single standard I cited above that says such standard applies to products not already sold. There is never such precondition, all products can be modified, sold or not. So to insist that only the products not sold already may be modified has no basis what's so ever, it is only in your head.


Ahh, I disagree. As I've stated numerous times, the DVR's found infringing most certainly are allowed to be modified. However, any other modification than disabling DVR functionality of DVR's in the hands of end users at the time of judgment is most likely going to be found in contempt. So to believe any modification allowed other than to disable the DVR functionality of the Infringing Products is fallacy. Just because something has changed since between the issuance of the injunction and the enforcment of it does not change the fact the injunction should be followed. And surprisingly enough, DISH/SATS states they did follow the injunction, and simply took the receivers out of scope of the injunction themselves, when only the courts can make that decision.


jacmyoung said:


> Yes it does, if substantial open issues now can be raised that those same DVRs may no longer infringe, therefore no longer fit the definition of the term "Infringing Products" as very particularly specified in the injunction, than they no longer are within the scope of the injunction.


They STILL fit the term "Infringing Products" as specified in the injunction:

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.

There is no other meaning to "Infringing Products", no matter what DISH/SATS wants to read into it.


jacmyoung said:


> The infringer shall be allowed to make good faith effort to modify the *adjudicated devices* and workaround the patent in order to remain in the marketplace.


That would be modifying a 625 so that it has new software and no longer infringes, so it can continue to be sold in the marketplace, since the injunction already covers the fact the 625 is no longer allowed to be sold AND all 625's in the hands of subscribers at that time must have their DVR functionality removed.

Besides, that statement has no bearing on devices already adjuidcated to infringe. The modification has no bearing on the order to disable those already in the hands of subscribers. After all, the court ORDERED a modification to those devices, to disable DVR functionality. Therefore, if the DVR functionality is disabled, it of course no longer infringes, but still remains in the scope of the injunction. Infringement has nothing to do with the disable clause.


----------



## peak_reception

First of all, where is TexasAg? Has he been on vacation all summer long? Good work if you can find it  But seriously it would be nice to have his expertise shared here once again. I'm thinking he's changed his mind now and isn't so sure of Dish's triumph come September 4 and beyond.

jacmyoung wrote: 


> Please remember one thing, everything I said has a precondition, that is a good faith modification had happened, without that I would not have even bothered.


 I remember back a few hundred posts or so ago I argued that Dish would be in deep doo doo for *not* acting in good faith on their modification (not letting the court know about it, playing word games with the injunction, crying wolf to the CAFC, etc). The reply was something like "how riduculous, good faith or bad faith has nothing to do with it, no laws were broken" etc. I agreed that no laws were broken (except flouting one of the main orders of the injunction if that's how Judge Folsom rules on it) but that acting in bad faith on their 'design-around' would damage Dish and factor into the contempt judgment to come, either explicitly or unspoken but held against them. "No way, ha ha, ridiculous...." So we'll see.


> The infringer shall be allowed to make good faith effort to modify the adjudicated devices and workaround the patent in order to remain in the marketplace.


 Where did you get this ^^^ from jacmyoung: KSM?

I have one last prediction; There are surprises still to come. No one saw the DE motion coming (not even TexasAg). This case is so complicated and so critical to patent law that I wouldn't even be shocked to see the Supreme Court accept it in the end. I'm not predicting that but I think there are still one or two big surprises yet to come. A fascinating case.


----------



## peak_reception

> After all, the court ORDERED a modification to those devices, to disable DVR functionality.-- Greg Bimson


 That's an interesting and clever way to frame the debate on modifications to infringing devices. Hadn't thought of it that way before.


----------



## jacmyoung

Greg Bimson said:


> There was a modification. Maybe you need to re-read it. I will state that the modification was not found in contempt of the prima-facie violation of the injunction


If the modification was not found, isn't it the same as saying there was no modification?



> .Ahh, I disagree. As I've stated numerous times, the DVR's found infringing most certainly are allowed to be modified. However, any other modification than disabling DVR functionality of DVR's in the hands of end users at the time of judgment is most likely going to be found in contempt. So to believe any modification allowed other than to disable the DVR functionality of the Infringing Products is fallacy. Just because something has changed since between the issuance of the injunction and the enforcment of it does not change the fact the injunction should be followed. And surprisingly enough, DISH/SATS states they did follow the injunction,


They did follow it, by disabling them, then brought back the non-infringing DVRs for use again. Tell me where in the injunction says DISH may not bring back the DVR functions on the DVRs that are no longer infringing the patent?



> There is no other meaning to "Infringing Products", no matter what DISH/SATS wants to read into it.That would be modifying a 625 so that it has new software and no longer infringes, so it can continue to be sold in the marketplace, since the injunction already covers the fact the 625 is no longer allowed to be sold AND all 625's in the hands of subscribers at that time must have their DVR functionality removed.


Every term in an injunction is carefully crafted, not to mention the term "Infringing Products" are with capital letters, and mentioned several times, and all at the most critical locations, so for you to insist there is no other meaning to it, is just a fantasy.



> Therefore, if the DVR functionality is disabled, it of course no longer infringes, but still remains in the scope of the injunction. Infringement has nothing to do with the disable clause.


Totally wrong, anything still in the scope of the injunction may not be used at all, period. The only reason the court will allow the DVRs to be continued used as Non-DVRs, will be that they are no longer within the scope of the injunction. Your conept of the "remains in the scope of the injunction" is totally off. Once the product is non-infringing, it is out of the scope of the injunction, meaning the injunction cannot reach it.


----------



## jacmyoung

peak_reception said:


> First of all, where is TexasAg? Has he been on vacation all summer long? Good work if you can find it  But seriously it would be nice to have his expertise shared here once again. I'm thinking he's changed his mind now and isn't so sure of Dish's triumph come September 4 and beyond.


Not at all, the argument has not really changed much since. TexasAg said he had to leave for an extended time due to his job. Being an AG of course often times he will not be able to make any public comments for legal reasons.



> jacmyoung wrote:
> I remember back a few hundred posts or so ago I argued that Dish would be in deep doo doo for *not* acting in good faith on their modification (not letting the court know about it, playing word games with the injunction, crying wolf to the CAFC, etc). The reply was something like "how riduculous, good faith or bad faith has nothing to do with it, no laws were broken" etc. I agreed that no laws were broken (except flouting one of the main orders of the injunction if that's how Judge Folsom rules on it) but that acting in bad faith on their 'design-around' would damage Dish and factor into the contempt judgment to come, either explicitly or unspoken but held against them. "No way, ha ha, ridiculous...." So we'll see. Where did you get this ^^^ from jacmyoung: KSM?


I do not remember saying good faith bad faith no matter, in fact I time after time have used "good faith effort" term. DISH's effort no doubt in my mind has been a good faith one, even Tivo does not truly dispute it, they just don't believe it matters.



> I have one last prediction; There are surprises still to come. No one saw the DE motion coming (not even TexasAg). This case is so complicated and so critical to patent law that I wouldn't even be shocked to see the Supreme Court accept it in the end. I'm not predicting that but I think there are still one or two big surprises yet to come. A fascinating case.


I do not totally disagree with that, I only do not think it is so unique. Once judge Folsom finds DISH not in contempt, you will read his ruling and realize it is just one of the thousands cases out there, nothing special.


----------



## jacmyoung

peak_reception said:


> That's an interesting and clever way to frame the debate on modifications to infringing devices. Hadn't thought of it that way before.


That actually was one of my earlier argument, since the court itself ordered a modification through a new software download, in order to make those DVRs no longer infringing, a different new software download to make the same DVRs no longer infringing must also be allowed. The infringer dose not need any permission to download a new software, in fact the infringer can download as many different new software as they pleases, as long as after the download the DVRs no longer infringe, the injunction's goal will be met, and the injunction can no longer touch them.


----------



## Greg Bimson

jacmyoung said:


> Tell me where in the injunction says DISH may not bring back the DVR functions on the DVRs that are no longer infringing the patent?


If you insist...


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





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


The injunction states to disable DVR functionality, until the expiration of the Time Warp patent. By enabling DVR functionality, of course it is a violation of the injunction.

After all, if DISH/SATS completely followed the injunction and disabled the DVR functionality of the Infringing Products used by susbscribers, they would no longer be infringing on the patent. Yet those Infringing Products without DVR functionality would still be in scope of the injunction. DVR functionality, according to the injunction, must be disabled on Infringing Products, "until the expiration of the '389 patent, and if any functionality is enabled, a contempt hearing would ensue.


----------



## jacmyoung

Greg Bimson said:


> If you insist...The injunction states to disable *[the]* DVR functionality, *[... of the Infringing Products]* until the expiration of the Time Warp patent. By enabling DVR functionality, of course it is a violation of the injunction.


Don't leave out a single word, as I said every word is important.



> After all, if DISH/SATS completely followed the injunction and disabled the DVR functionality of the Infringing Products used by susbscribers, they would no longer be infringing on the patent. Yet those Infringing Products without DVR functionality would still be in scope of the injunction. DVR functionality, according to the injunction, must be disabled on Infringing Products, "until the expiration of the '389 patent, and if any functionality is enabled, a contempt hearing would ensue.


Please stop arguing with me on this one, once a product is no longer infringing, it is no longer within the scope of the injunction. Please! Anything within the scope of the injunction must be stopped, as cannot be used, period, that is by definition, otherwise why call it an injunction?


----------



## Greg Bimson

jacmyoung said:


> That actually was one of my earlier argument, since the court itself ordered a modification through a new software download, in order to make those DVRs no longer infringing, a different new software download to make the same DVRs no longer infringing must also be allowed.


Hello. The court only ordered one kind of modification and that modification still keeps those DVR's in the scope of the injunction. Any other kind of modification is most likely directly disobeying the court's order because those DVR's are in the scope of the injunction, so "a different new software download" does not matter.


jacmyoung said:


> The infringer dose not need any permission to download a new software, in fact the infringer can download as many different new software as they pleases, as long as after the download the DVRs no longer infringe, the injunction's goal will be met, and the injunction can no longer touch them.


What is the injunction's goal?

Because as I've stated numerous times before, a four-year old 501 in Joe Blow's entertainment center is an adjudicated device that has been found to infringe, which is both subject to and in the scope of the injunction, no matter what DISH/SATS does to it.


----------



## Greg Bimson

jacmyoung said:


> Please stop arguing with me on this one, once a product is no longer infringing, it is no longer within the scope of the injunction. Please!


Are you trying to be dense?

Assuming no deal is ever struck, and assuming that DISH/SATS disabled DVR functionality in the Infringing Products, if DISH/SATS five years from now enabled DVR functionality in the 501 and 508, then TiVo will march right back into Judge Folsom's court with a contempt motion in hand, because those receivers are in the scope of the injunction, and not allowed to be enabled.

You can argue that infringement is key to the disable order, but I disagree wholeheartedly.


----------



## jacmyoung

Greg Bimson said:


> Hello. The court only ordered one kind of modification and that modification still keeps those DVR's in the scope of the injunction.


No it does not, anything still in the scope of the injunction cannot be used, period. The only reason the court will allow those DVRs to be used as non-DVRs is because after the DVR functionalities (the infringing elements) are removed, the receivers will be *out of the scope of the injunction*.



> Any other kind of modification is most likely directly disobeying the court's order because those DVR's are in the scope of the injunction, so "a different new software download" does not matter.What is the injunction's goal?


The injunction's goal is to prevent further infringement. Again since your concept of "still in the scope of the injunction"s totally wrong, it is no wonder you continue to argue. Let me say it again, once a product is no longer infringing, it is *out of the scope of the injunction*. Do you need me to quote a case law on this one?



> Because as I've stated numerous times before, a four-year old 501 in Joe Blow's entertainment center is an adjudicated device that has been found to infringe, which is both subject to and in the scope of the injunction, no matter what DISH/SATS does to it.


If DISH can make it non-infringing, it will be out of the scope of the injunction.


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## jacmyoung

Greg Bimson said:


> Are you trying to be dense?
> ...


That depends, are you still insisting that if the product is no longer infringing, it will still be within the scope of the injunction? If so those DVRs will not be able to be used as non-DVRs.

It is a matter of understanding the definition of the terms "injunction", and "within the scope of the injunction". If a receiver is within the scope of the injunction, the power of the injunction kicks in, and this receiver will have to be thrown out, or be used as door stop.


----------



## peak_reception

> They did follow it, by disabling them, then brought back the non-infringing DVRs for use again. Tell me where in the injunction says DISH may not bring back the DVR functions on the DVRs that are no longer infringing the patent? -- jacmyoung


That's exactly the kind of word gaming that will get Dish in trouble soon. Besides, no one has determined that Dish is no longer infringing except for Dish and their hired opinions. They don't get to manipulate the law any way they see fit, even in an infringement case where infringement is the sine qua non of a contempt hearing 

Originally Posted by peak_reception: 


> First of all, where is TexasAg? Has he been on vacation all summer long? Good work if you can find it But seriously it would be nice to have his expertise shared here once again. I'm thinking he's changed his mind now and isn't so sure of Dish's triumph come September 4 and beyond.


 jacmyoung replies:


> Not at all, the argument has not really changed much since. TexasAg said he had to leave for an extended time due to his job. Being an AG of course often times he will not be able to make any public comments for legal reasons.


 Actually i was kind of hoping to goad him (TX Ag) into replying if he did check back in now and then. A long shot but worth a try  You aren't thinking he's the Texas Attorney General are you? The "Ag" is much more likely short for "Aggies" as in Texas A&M Aggies. Probably where he went to law school.


----------



## peak_reception

> I do not totally disagree with that, I only do not think it is so unique. Once judge Folsom finds DISH not in contempt, you will read his ruling and realize it is just one of the thousands cases out there, nothing special. --jacmyoung


 I will be gallantly willing to admit that I was wrong after Sept. 4 if Judge Folsom does not find Dish/Echo in contempt. Will you do the same if he *does* find Dish/Echo in contempt or will you insist that we wait for Folsom's bosses to weigh in before eating your crow?


----------



## Greg Bimson

jacmyoung said:


> No it does not, anything still in the scope of the injunction cannot be used, period.


That is incorrect. The injunction states the DVR functionality of eight models of DVR is to be removed. That squarely places those eight models in the scope of the injunction. If they are disabled, they are legal. If they are not disabled, they will most likely be found in contempt.

And either way, because those eight models are the target of both the enjoinment of sales order and the disable order in the injunction, those eight models are in the scope of the injunction. They will be until the injunction expires.

If you use the word target instead of scope, you'll understand. The models adjudicated are the target of the injunction. A modification of the adjudicated devices may be a target of the injunction if the modified devices still infringe and are merely colorably different, but that would be found during a contempt proceeding for violations of an injunction against infringements.


----------



## jacmyoung

peak_reception said:


> I will be gallantly willing to admit that I was wrong after Sept. 4 if Judge Folsom does not find Dish/Echo in contempt. Will you do the same if he *does* find Dish/Echo in contempt or will you insist that we wait for Folsom's bosses to weigh in before eating your crow?


Be careful posting something like that, it got me into trouble

I will apologize to you then wait till the appeals court to speak then watch you eat crow, how does that sound?


----------



## peak_reception

jacmyoung said:


> That actually was one of my earlier argument, since the court itself ordered a modification through a new software download, in order to make those DVRs no longer infringing, a different new software download to make the same DVRs no longer infringing must also be allowed.
> The infringer dose not need any permission to download a new software, in fact the infringer can download as many different new software as they pleases, as long as after the download the DVRs no longer infringe, the injunction's goal will be met, and the injunction can no longer touch them.


 Judge Folsom ordered the DVR functionality disabled, *period*. He did not order the DVR functionality disabled *unless or until* Dish downloads new software to the listed Infringing products which Dish then unilaterally declares to no longer infringe. You can say that he didn't have to, or he couldn't, or it doesn't matter, but in that case the injunction is a worthless scrap of paper which either party could just as well use in the court's restroom since it has no force of law behind it. The expressed goal of such an injunction may well be to bring a defendant into compliance, i.e. to no longer infringe, but if that means that a convicted infringer can brazenly flout the law on the road to non-infringement then that is making a mockery of the judicial process. No judge is going to look kindly on the way Dish has conducted themselves in this case, imo. We'll see if it makes a difference or not. We may even get to see, eventually, whether Dish still infringes or not, but probably not if the law as written only cares about infringement and nothing else. Where software is concerned, a wily, well-heeled defendant (sound familiar?) could play such a shell game indefinitely until whatever patent supposedly protects the plaintiff expires. If you're right jacmyoung, then all it takes is money.


----------



## jacmyoung

Greg Bimson said:


> That is incorrect. The injunction states the DVR functionality of eight models of DVR is to be removed. That squarely places those eight models in the scope of the injunction. If they are disabled, they are legal. If they are not disabled, they will most likely be found in contempt.
> 
> And either way, because those eight models are the target of both the enjoinment of sales order and the disable order in the injunction, those eight models are in the scope of the injunction. They will be until the injunction expires.
> 
> If you use the word target instead of scope, you'll understand. The models adjudicated are the target of the injunction. A modification of the adjudicated devices may be a target of the injunction if the modified devices still infringe and are merely colorably different, but that would be found during a contempt proceeding for violations of an injunction against infringements.


Don't change the subject, my simple question is if the same products no longer infringe, are they still within the scope of the injunction?

As an example, if the DVR functions are disabled, and turned into non-DVRs, will they still be within the scope of the injunction?


----------



## jacmyoung

peak_reception said:


> Judge Folsom ordered the DVR functionality disabled, *period*. ...


Of course that has always been the only thing people on the other side can count on, the so called letter of the injunction, interpreted as they see fit.

What I am saying is this second order has clear conditions attached, as in not a "period" kind of order, most significantly, the DVR functions shall be disabled from those "Infringing Products." This term is not just there for show, it has a clear purpose, otherwise don't use it. You knwo why? Becasue at a minimum it creates ambiguity. Because it seems to imply if DISH somehow manages to turn those DVRs into non-infringing products, the products will be outside of the scope of the letter of the injunction defined as Infringing Products.

Why create such impression? Well no it was not to creat some ambiguity, it is exactly what it means, only when the products still infringe, so can they be defined as Infringing Products. If no longer, not Infringing Products anymore, therefore are outside of the scope of it.

People want to dismiss the importance of the term, in capital letters, and strategically placed in the injunction. It is a fantasy to think this term has no meaning and no purpose.


----------



## peak_reception

jacmyoung said:


> Be careful posting something like that, it got me into trouble I'm not worried
> 
> I will apologize to you then wait till the appeals court to speak then watch you eat crow, how does that sound?


 Ok, you've got a deal  Humble Pie with Crow after September 4th. Jumbo Humble Pie with Crow and a side order of hat after CAFC affirms, and a feathered crow taken whole if or when the SCOTUS affirms. p.s. did you know that a 'flock' of crows is called a "murder of crows" ? Strange but true.


----------



## peak_reception

jacmyoung said:


> Of course that has always been the only thing people on the other side can count on, the so called letter of the injunction, interpreted as they see fit.


 "Disable the DVR functionality" isn't an interpretation, it's a court order. Anyway I have to go for now. Have enjoyed sparring with you jac


----------



## jacmyoung

peak_reception said:


> Ok, you've got a deal  Humble Pie with Crow after September 4th. Jumbo Humble Pie with Crow and a side order of hat after CAFC affirms, and a feathered crow taken whole if or when the SCOTUS affirms. p.s. did you know that a 'flock' of crows is called a "murder of crows" ? Strange but true.


No I did not commit to any crow eating if you read me right


----------



## jacmyoung

peak_reception said:


> "Disable the DVR functionality" isn't an interpretation, it's a court order. Anyway I have to go for now. Have enjoyed sparring with you jac


No I was referring to the term "Infringing Products" if you have not noticed yet. Do come back in 9/08, don't be like TexasAG


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## n0rvx

You guys must love to argue. From what I have read on the internet this case is about one function of DVR's. That is being able to record one program and watch another at the same time. That can no longer be done ON ONE TUNER. It was turned of with a software download. Echostar Got around that with Multiple tuner receivers. The receivers that were able to "TIME WARP" are no longer able to.

Ron


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## scooper

n0rvx said:


> You guys must love to argue. From what I have read on the internet this case is about one function of DVR's. That is being able to record one program and watch another. That can no longer be done ON ONE TUNER.


Not quite....
You need to do ALOT more reading - in THIS forum....


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## nobody99

n0rvx said:


> You guys must love to argue. From what I have read on the internet this case is about one function of DVR's. That is being able to record one program and watch another. That can no longer be done ON ONE TUNER.


well, the case is about a lot more than that 

But what it's about now is whether DISH followed a court's order to disable DVR functionality on about three million dvrs.

After that decision, who knows where it will go.


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## Curtis52

n0rvx said:


> You guys must love to argue. From what I have read on the internet this case is about one function of DVR's. That is being able to record one program and watch another at the same time. That can no longer be done ON ONE TUNER. It was turned of with a software download. Echostar Got around that with Multiple tuner receivers. The receivers that were able to "TIME WARP" are no longer able to.


Here is the portion of TiVo's patent that Dish infringed. Which part is Dish no longer doing? Note that the number of tuners is not even mentioned.


> 31. A process for the simultaneous storage and play back of multimedia data, comprising the steps of:
> 
> providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data;
> 
> providing a source object, wherein said source object extracts video and audio data from said physical data source;
> 
> providing a transform object, wherein said transform object stores and retrieves data streams onto a storage device;
> 
> wherein said source object obtains a buffer from said transform object, said source object converts video data into data streams and fills said buffer with said streams;
> 
> wherein said source object is automatically flow controlled by said transform object;
> 
> providing a sink object, wherein said sink object obtains data stream buffers from said transform object and outputs said streams to a video and audio decoder;
> 
> wherein said decoder converts said streams into display signals and sends said signals to a display;
> 
> wherein said sink object is automatically flow controlled by said transform object;
> 
> providing a control object, wherein said control object receives commands from a user, said commands control the flow of the broadcast data through the system; and
> 
> wherein said control object sends flow command events to said source, transform, and sink objects.


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## Greg Bimson

jacmyoung said:


> People want to dismiss the importance of the term, in capital letters, and strategically placed in the injunction. It is a fantasy to think this term has no meaning and no purpose.


"Infringing Products" only has one meaning; it is definitely a fantasy to believe there is any other meaning.


jacmyoung said:


> Don't change the subject, my simple question is if the same products no longer infringe, are they still within the scope of the injunction?
> 
> As an example, if the DVR functions are disabled, and turned into non-DVRs, will they still be within the scope of the injunction?


I didn't change the subject. But let's talk reality here, and this does slightly change the subject. There was a trial and over four million receivers were found to infringe the Time Warp patent. There is nothing DISH/SATS can do to those four million recievers so that they are no longer "unadjudicated". If the eight models of DVR defined as "Infringing Products" no longer infringe, they are still defined as "Infringing Products", and subject to the injunction. No more, no less.

The only difference is that the disable order goes one step further, by stating DISH/SATS must "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. Therefore, the disable order only applies to Infringing Products placed with an end user or subscriber. At that point, questioning whether or not those products no longer infringe is moot, because those products have already been found to infringe.

The only open question becomes whether or not DISH/SATS modified those products and started selling a possibly non-infringing version, which would not be covered by the injunction. Make a modification and sell that product, and those are not covered by the injunction at all, unless the modification is merely colorably different.


----------



## Curtis52

Greg Bimson said:


> If the eight models of DVR defined as "Infringing Products" no longer infringe, they are still defined as "Infringing Products", and subject to the injunction. No more, no less.


Patent injunctions can only prevent infringement. As long as there is no infringement Dish is off the hook. The court will send a bouquet of flowers to Charlie if he has found a way to avoid inconveniencing millions of subscribers.


----------



## nobody99

Curtis52 said:


> Patent injunctions can only prevent infringement. As long as there is no infringement Dish is off the hook. The court will send a bouquet of flowers to Charlie if he has found a way to avoid inconveniencing millions of subscribers.


Absolutely true for new devices. Absolutely untrue for an already-adjudicated, specifically-identified device with a very clear court order.


----------



## jacmyoung

The biggest mistake Tivo makes, and many here follows religiously, is the notion that all past uniform standards established by the higher court only apply to "new devices", or devices "not already sold" or not already "with the end users".

Tivo will be so sorry to make such argument, because none of the standards I have quoted before ever made any distinction about products sold, or unsold, or in the field or not. If those standards had excluded products already sold, or already placed with the end users, such must be specifically stated, otherwise confusion and ambiguity exsit, and guess what the defendants always get the benefit of such confusion and ambiguity.

So for Tivo to prevail, the standards must at least look something like these:

1) In a contempt proceeding, the court must first look at the differences between the accused devices, and the adjudicated devices, *except for the adjudicated devices already sold*, and determine if the differences are more than colorable.

2) Infringement is the sine qua non of violation of an injunction on infringement, *except for the adjudicated devices already sold*.

3) When there is doubt or substantial open issues exist as whether the accused devices still infringe on the patent, *excpet for devices already sold*, a contempt will not be appropriate, a new independent proceeding will be needed to determine whether the accused devices still infringe on the patent.

4) Contempt proceeding shall not be used as a sword to wound an infringer when the infringer made a good faith effort to modify the adjudicated devices to workaround the patent in order to remain in the marketplace, *except when the adjudicatd devices were already sold*.

5) Mere finding of violation of the injunction is not enough, infringement must also be found, *except when the devices are already sold*.

....

Good luck with that.


----------



## peak_reception

Curtis52 said:


> Patent injunctions can only prevent infringement.


 And do so only if obeyed.


----------



## peak_reception

jacmyoung, just so I can have it ready in advance, would you like your crow rare or well-done?


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## jacmyoung

peak_reception said:


> And do so only if obeyed.


Whether DISH obeyed the order or not is not for you to determine, but the court, on or after 9/4.


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## peak_reception

jacmyoung said:


> Whether DISH obeyed the order or not is not for you to determine, but the court, on or after 9/4.


 Exactly Right! We agree


----------



## jacmyoung

peak_reception said:


> jacmyoung, just so I can have it ready in advance, would you like your crow rare or well-done?


Did you not read my post? Did I commit to eating crow? I don't even like chicken

I will apologize to you if DISH is in contempt after 9/4 proceeding, and you will have to prepare to eat crow after the appeal is over


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## peak_reception

Fillet or Barbecue?


----------



## peak_reception

Apology? None necessary. Abject Prostration will do.


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## jacmyoung

Let's not go too far down that path, just in case you are wrong.


----------



## peak_reception

jacmyoung said:


> Let's not go too far down that path, just in case you are wrong.


 Your concern is appreciated but it's not like my world will cave in if it goes the other way.  Unlike some others in on this discussion I have absolutely nothing at stake in the matter except my desire to see justice done. If it goes the other way I'll be just fine thank you. It will only further sour my opinion of the judicial system but I'll be otherwise unscathed physicaly, psychologically, and emotionally.  I would, however, be wrong, and I can handle that_ and_ eat my hat to boot.

Well, it's time to turn in. I'll be back, probably before TexasAg in all likelihood


----------



## James Long

jacmyoung said:


> That depends, are you still insisting that if the product is no longer infringing, it will still be within the scope of the injunction? If so those DVRs will not be able to be used as non-DVRs.


Don't forget that the injunction allows the "Infringing Products" to be used and placed as long as the DVR functionality is disabled. So yes, until the patent expires and even after the DVR functionality is disabled the "Infringing Products" are controlled by the injunction.


jacmyoung said:


> No I did not commit to any crow eating if you read me right


Of course not - the price is to high when you are wrong!

BTW: We've had too much crowing in this thread today ...
:backtotop!



Curtis52 said:


> Patent injunctions can only prevent infringement. As long as there is no infringement Dish is off the hook. The court will send a bouquet of flowers to Charlie if he has found a way to avoid inconveniencing millions of subscribers.


The court needs to rule on the new software before the hook is removed. That ruling isn't what is being looked at September 4th. DISH is on the hook until a court says they are not.


----------



## Greg Bimson

Oh, you are so close:


jacmyoung said:


> So for Tivo to prevail, the standards must at least look something like these:
> 
> 1) In a contempt proceeding, the court must first look at the differences between the accused devices, and the adjudicated devices, *except for the adjudicated devices already sold*, and determine if the differences are more than colorable.


Devices already ruled as infringing do not get a second chance to be found non-infringing. You (and others) are asking for some precedent that the four million plus receivers already adjudicated infringing are somehow unadjudicated, since a device already ruled infringing cannot be tried again.


jacmyoung said:


> 2) Infringement is the sine qua non of violation of an injunction on infringement, *except for the adjudicated devices already sold.*


...and already found infringing, which therefore satisfies this claim.


jacmyoung said:


> 3) When there is doubt or substantial open issues exist as whether the accused devices still infringe on the patent, *excpet for devices already sold,* a contempt will not be appropriate, a new independent proceeding will be needed to determine whether the accused devices still infringe on the patent.


The devices in question were already found infringing, so no open issue exists.


jacmyoung said:


> 4) Contempt proceeding shall not be used as a sword to wound an infringer when the infringer made a good faith effort to modify the adjudicated devices to workaround the patent in order to remain in the marketplace, *except when the adjudicatd devices were already sold.*


Because again, the devices already adjudicated as infringing cannot be retried.


jacmyoung said:


> 5) Mere finding of violation of the injunction is not enough, infringement must also be found, *except when the devices are already sold.*


And infringement of those devices was already found, so simply violating the clear order of the injunction, to disable Infringing Products in the hands of subscribers, is all that needs to be found.

And that changes the standard you believe into the only standard that should be used in this case:


> "In a civil contempt proceeding, the party seeking an order of contempt need only establish
> (1) that a court order was in effect, and
> (2) that the order required certain conduct by the respondent, and
> (3) that the respondent failed to comply with the court's order."
> FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)
> (citing Martin v. Trinity Indus., Inc., 959 F.2d 45, 47 (5th Cir. 1992)).


Just because DISH/SATS modified 4 million DVR's found to infringe does not have them become an "open issue". Those 4 million DVR's from August, 2006, were found infringing, are the target of the injunction, and once disabled, will still be the target of the injunction until the injunction expires. Changing the software on those receivers does not remove those receivers from the scope of the injunction. And fundamentally, one cannot relitigate a product that has already been adjudicated.


----------



## scooper

Well - fundamentally, Judge Folsom should not have said that units already placed with endusers have to be disabled either, as THAT is totally precedent making too. At the VERY least, when the hardware claims were handed back to him, he should have modified the injunction until such time that they were reinstated as infringing.


----------



## Curtis52

Greg Bimson said:


> Oh, you are so closeevices already ruled as infringing do not get a second chance to be found non-infringing. You (and others) are asking for some precedent that the four million plus receivers already adjudicated infringing are somehow unadjudicated, since a device already ruled infringing cannot be tried again....


That's where the colorably different part comes in. If they are different, they aren't the same.

"At the heart of any contempt proceeding is the circumstance that the substantive issues were *finally adjudicated* in prior litigation between the same parties.

Contempt "should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. When an *adjudged* infringer has modified the infringing device in an attempt to avoid infringement, *courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated*."

http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


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## nobody99

Curtis52 said:


> Contempt "should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. When an *adjudged* infringer has modified the infringing device in an attempt to avoid infringement, *courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated*."
> 
> http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


For Christ's sake, at what point are we going to get over the idea that these cases apply to freakin' already-manufactured products?

I get your point. Ok? I get it. Honestly, I get 100% of it. There are decades of patent cases that say a design can be changed to produce *new* devices fresh off an assemly line. You can quote 10 cases, a hundred cases, a thousand cases. It all looks fine and dandy, and sure, you even sound like a high-fallutin lawyer who knows what he's talking about, but the bottom line is that every case that you cite that allows workarounds deal with new product and the continuation of the manufacture of those products.

We all agree with you. Even the most ardent, hard-core TiVo fan-boy and Charlie-hater agrees with you. Any new DVRs coming off an assembly line will be allowed to have the changes analyzed and be subject to the more than colorably different "standard."

That does not, however, mean that the 4 million receivers that already came off that assembly line and went into homes or warehouses get the same treatment. They don't. For the life of the '389 patent, the *only way those receivers will see DVR functions again is if DISH licenses the technolog from TiVo.*

It's too bad there's not some automatic counting mechanism on this message board. I'll bet that each side has made the exact same point more than a thousand times


----------



## Greg Bimson

scooper said:


> Well - fundamentally, Judge Folsom should not have said that units already placed with endusers have to be disabled either, as THAT is totally precedent making too. At the VERY least, when the hardware claims were handed back to him, he should have modified the injunction until such time that they were reinstated as infringing.


Procedurally, Judge Folsom could not have modified the injunction. The injunction went into effect before anything could ever be addressed, thanks to the Court of Appeals. Also, because DISH/SATS never addressed the language of the injunction at the Court of Appeals, DISH/SATS is very much to blame.

The reason DISH/SATS did not address the language of the injunction is because that would have shut the door airtight on what they are doing right now.


Curtis52 said:


> That's where the colorably different part comes in. If they are different, they aren't the same.
> 
> "At the heart of any contempt proceeding is the circumstance that the substantive issues were *finally adjudicated *in prior litigation between the same parties.


That is the entire point. The four million plus DVR's at the heart of the litigation have been found to infringe, and were *finally adjudicated* in prior litigation between the same parties.

From the exact same case Curtis52 provided (KSM):


> In view of these and other considerations to be discussed, *where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation*, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings.


This isn't about "a manufacture which was not subject of the original litigation"; this is not about finding infringement of a modified device as the KSM case dictates.

TiVo's action does not address ongoing infringment. This action is completely about devices evaluated and adjudicated infringing already, and those devices are subject to an order, disabling their functionality. There is no need to find infringement, as the devices have already been found to infringe.

The argument that DISH/SATS changed those devices does not hold water. The devices were ordered to have their DVR functionality disabled, and those devices would still be within the scope of the injunction, not to have their functionality enabled until the expiration of the Time Warp patent. So DISH/SATS modified the devices that were ordered to have their DVR functionality disabled. It does not take them out of the scope of the injunction; only the court can change the scope of the injunction.


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## Curtis52

Greg Bimson said:


> This action is completely about devices evaluated and adjudicated infringing already, and those devices are subject to an order, disabling their functionality. There is no need to find infringement, as the devices have already been found to infringe.





> This isn't about "a manufacture which was not subject of the original litigation"; this is not about finding infringement of a modified device as the KSM case dictates.


That's exactly why this action will fail.

TiVo has already stipulated that the DVRs in the field have been modified. The situation fits case law perfectly.



> "When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues *previously adjudicated*." KSM


----------



## Greg Bimson

Curtis52 said:


> TiVo has already stipulated that the DVRs in the field have been modified. The situation fits case law perfectly.


Except that TiVo is not going after "DVRs in the field that have been modified". TiVo is only going after DVR's in the field which have been adjudicated and which are subject to the disable order. The modification is irrelevant, and case law does not fit, as no one is questioning whether or not the adjudicated devices still infringe (other that DISH/SATS defense). Those devices have already been found to infringe.


----------



## scooper

Greg Bimson said:


> Except that TiVo is not going after "DVRs in the field that have been modified". TiVo is only going after DVR's in the field which have been adjudicated and which are subject to the disable order. The modification is irrelevant, and case law does not fit, as no one is questioning whether or not the adjudicated devices still infringe (other that DISH/SATS defense). Those devices have already been found to infringe.


Give me a break - they are EXACTLY the same. The only Dish DVRs not "currently covered" by the injunction are the MPEG4 models and the older Dishplayers, so for all practical intents and purposes - its the same thing. The only thing missing is the court declaration of that fact.


----------



## Curtis52

Greg Bimson said:


> Except that TiVo is not going after "DVRs in the field that have been modified". TiVo is only going after DVR's in the field which have been adjudicated and which are subject to the disable order. The modification is irrelevant, and case law does not fit, as no one is questioning whether or not the adjudicated devices still infringe (other that DISH/SATS defense). Those devices have already been found to infringe.


If there is no infringement there is no contempt.



> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, *not patent infringement*.


That sounds familiar: "no one is questioning whether or not the adjudicated devices still infringe".

Continuing:


> *Nevertheless*, devices which could not be enjoined as infringements on a separate complaint *cannot possibly be deemed enjoined* as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " '*fair ground for doubt*' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.


----------



## James Long

Curtis52 said:


> If there is no infringement there is no contempt.


Unfortunately there was infringement ... and a specific order to do a specific something because of that infringement ... which hasn't been followed.

Based on the evidence allowed September 4th the "new" software won't be ruled infringing or not ... the question is of contempt. Did DISH do as told? Do their actions satisfy the court?

BTW: Caution to others who might want to read it backwards: "If there is no contempt there is no infringement." is a statement fraught with problems. Don't take a "victory" as the end of the case.


----------



## spear61

James Long said:


> Unfortunately there was infringement ... and a specific order to do a specific something because of that infringement ... which hasn't been followed.QUOTE]
> 
> Which "may" not have been followed. The judge said he will be deciding if the "spirit" of the injunction was followed.


----------



## Greg Bimson

scooper said:


> Give me a break - they are EXACTLY the same. The only Dish DVRs not "currently covered" by the injunction are the MPEG4 models and the older Dishplayers, so for all practical intents and purposes - its the same thing. The only thing missing is the court declaration of that fact.


But maybe you haven't read DISH/SATS declarations, which basically state that *DISH/SATS has ZERO DVR's in the field that are subject to the injunction.* And this contempt hearing is not about the MPEG4 models and the Dishplayers; this is wholly about the devices already adjudged.


Curtis52 said:


> If there is no infringement there is no contempt.


But infringement has already been found, so this is moot.


Curtis52 said:


> Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.


This is one section of a decision from an appeal of a contempt judgment. If we look at the simple history of this, we'll see the difference between KSM and TiVo v. Echostar:


> The injunction entered in the present case was in the following terms:
> 
> 6. The Defendant ... [is] enjoined and restrained from making, using or selling insulation hangers or refractory anchors of the type and nature identified by the Plaintiff in its Complaint against the Defendant for the remainder of the life of U.S. Patent No. 3,738,217 issued June 12, 1973.
> 
> Despite the reference to the complaint, contrary to Rule 65(d), Jones has not challenged this error, *nor does Jones challenge that the injunction is enforceable against devices other than the specific THERMAL-LOCK device of the original suit. Jones' challenge is to the standards applied by the district court in holding the company in contempt. Jones urges that its ULTRA-LOCK devices do not infringe the claims of '217 and that the differences between the THERMAL-LOCK and ULTRA-LOK devices are so great that KSM should have to bring a separate suit to determine infringement by these devices.* KSM, on the other hand, asks us to endorse the standard on contempt proceedings utilized in this case and, of course, to uphold the contempt judgment.


Conversely, in TiVo v. Echostar, DISH/SATS is stating that the order to disable applies to NO devices. Four million plus DVR's adjudicated to infringe didn't simply disappear from the hands of subscribers.

TiVo simply wants the injunction to be enforced on the four million plus DVR's that were already adjudicated to infringe. And those devices most certainly exist.


----------



## nobody99

Curtis, let me ask you a simple question. From the KSM case that you know and love so well:



> proceedings by way of contempt should not go forward if there is more than a 'colorable difference' in the accused and adjudged devices


Explain to me how the eight-named DVRs are not adjudged devices?


----------



## scooper

Greg Bimson said:


> TiVo simply wants the injunction to be enforced on the four million plus DVR's that were already adjudicated to infringe. And those devices most certainly exist.


Sure they do - just not in the "infringing form" that they were earlier in the proceedings. And this is where you, Your arguement, and Tivo's arguements all fail. If the devices no longer infringe - they are not in contempt.


----------



## Curtis52

Greg Bimson said:


> TiVo simply wants the injunction to be enforced on the four million plus DVR's that were already adjudicated to infringe. And those devices most certainly exist.


If the modified devices don't infringe, they aren't enjoined. If they aren't enjoined the disable order doesn't apply to them. If the disable order doesn't apply to them there is no contempt.

TiVo admits that the DVRs have been modified. There is fair ground for doubt. Case law dictates that infringement must first be determined on the modified devices before contempt can be found.


> "At the heart of any contempt proceeding is the circumstance that the substantive issues were finally adjudicated in prior litigation between the same parties.
> 
> Contempt "should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, *courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated*."


----------



## Greg Bimson

scooper said:


> If the devices no longer infringe - they are not in contempt.


And if you can show us a case where an adjudicated infringing, enjoined device is somehow no longer the subject of an injunction, then you'll have my position beat.

However, I seriously doubt you will find any case law where a device that has already been found to infringe and that went through the appeals process unscathed is "retried". After all, you are asking that the court find a device they've already adjudicated infringing to be retried and found no longer infringing.

Never seen case law like that. And everyone that makes this argument is asking for DISH/SATS to have some kind of special ruling in order to make that happen, for DISH/SATS to have a precedential finding. This case is not precedent setting.


----------



## nobody99

http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html



> The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before. Allowing the patentee to proceed by a summary contempt proceeding in all cases would unnecessarily deter parties *from marketing new devices that are legitimately outside the scope of the patent in question. On the other hand, to require in each instance the patentee to institute a new infringement suit diminishes the significance of the patent and the order of the court holding the patent to be valid and infringed*.


----------



## nobody99

Let me throw out an obscenely unlikely hypothetical situation:

Suppose that DISH wins the DE case, that the software is more than colorably different. Suppose that they get patent approval. Suppose that a president declares that DISH DVR's are a national treasure.

Even if all this were true, the adjudicated devices aren't allowed to run the new software. Get it?

It doesn't matter if the new software infringes or not.
It doesn't matter that the injunction makes no mention of software.

The only thing that matters is that the adjudicated devices cannot have DVR functions until the expiration of the '389 patent.


----------



## Curtis52

Greg Bimson said:


> And if you can show us a case where an adjudicated infringing, enjoined device is somehow no longer the subject of an injunction, then you'll have my position beat.


In the Star-Brite case, Star-Brite was a named, enjoined, adjudicated product. The plaintiff filed a contempt motion for prima facie violation of the injunction. The defendant proved that their modified product did not infringe. The defendant won. There was no contempt because there was no longer any infringement.


----------



## Greg Bimson

Curtis52 said:


> If the modified devices don't infringe, they aren't enjoined.


I'll bite. I'll also agree, as:


> The second order of the 8 September, 2006 Final Judgment and Permanent Injunction:
> *IT IS FURTHER ORDERED THAT*
> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.


If DISH/SATS modified the "Infringing Products", then they are not subject to being enjoined, unless they are merely colorably different. However:


Curtis52 said:


> If they aren't enjoined the disable order doesn't apply to them.


Really? Are you sure?


> The third order of the 8 September, 2006 Final Judgment and Permanent Injunction:
> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. 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.


I don't see ANY linkage between the two orders. No matter how much anyone tries to put a linkage there, this third order is distinctly separate from the second order, not subservient. The second order addresses ongoing sales of infringing products; the third order only addresses the installations of the Infringing Products.

Therefore, while it is possible that if "modified devices don't infringe, they aren't enjoined", they are certainly subject to the disable order.


----------



## Greg Bimson

Curtis52 said:


> In the Star-Brite case, Star-Brite was a named, enjoined, adjudicated product. The plaintiff filed a contempt motion for prima facie violation of the injunction. The defendant proved that their modified product did not infringe. The defendant won. There was no contempt because there was no longer any infringement.


Simply because Star-Brite changed the product without changing the name. Just like DISH supposedly changed the 501, 508, 510, 522 and 625 so that they no longer infringe, but kept the name.

TiVo could concievably have that problem. If they walk into court stating the 625 is still being sold, DISH/SATS has the ability to state they modified it, so the modification is still in question because the second order addresses ongoing infringement.

The disable order does not address ongoing infringement.


----------



## Curtis52

Greg Bimson said:


> Therefore, while it is possible that if "modified devices don't infringe, they aren't enjoined", they are certainly subject to the disable order.


Injunctions can order actions. If devices are not enjoined they aren't subject to the action.


----------



## nobody99

Curtis52 said:


> In the Star-Brite case, Star-Brite was a named, enjoined, adjudicated product. The plaintiff filed a contempt motion for prima facie violation of the injunction. The defendant proved that their modified product did not infringe. The defendant won. There was no contempt because there was no longer any infringement.


Wow, more rehashing of the same old crap.

Let's look at the fine research that jacmyoung arleady did on the starbrite case. He quoted directly from DISH's 6/30 response:



> In Star Brite, the defendant had "continue[d] to market the six products named in [the] court's injunction" but (as here) had modified certain key internal features of the products. Id. at 641. As TiVo does here, the patentee "argue[d] that the injunction should be read as requiring defendant to cease the manufacture and sale of any product using the same brand names as were listed in the injunction."


Not even DISH is grasping at straws as much as you are. They only brought this case up with regards to new sales of existing DVRs with new software.


----------



## Greg Bimson

Curtis52 said:


> Injunctions can order actions. If devices are not enjoined they aren't subject to the action.





> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, 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.


The devices aren't enjoined. The word "enjoined" doesn't appear anywhere in this order.


----------



## scooper

nobody99 said:


> Let me throw out an obscenely unlikely hypothetical situation:
> 
> Suppose that DISH wins the DE case, that the software is more than colorably different. Suppose that they get patent approval. Suppose that a president declares that DISH DVR's are a national treasure.
> 
> Even if all this were true, the adjudicated devices aren't allowed to run the new software. Get it?
> 
> It doesn't matter if the new software infringes or not.
> It doesn't matter that the injunction makes no mention of software.
> 
> The only thing that matters is that the adjudicated devices cannot have DVR functions until the expiration of the '389 patent.


No - I don't. They are not infringing (or there is now doubt about that status currently). So explain why they need to be shutdown if they are no longer infringing. And even IF we're wrong about that - what can a court do to a corporation like Echostar if they decide to willingly flout that shutdown order that will make them change their mind ?

Not to mention that Judge Folsom is doing an unprecedented injunction.


----------



## Curtis0620

scooper said:


> No - I don't. They are not infringing (or there is now doubt about that status currently). So explain why they need to be shutdown if they are no longer infringing. And even IF we're wrong about that - what can a court do to a corporation like Echostar if they decide to willingly flout that shutdown order that will make them change their mind ?
> 
> Not to mention that Judge Folsom is doing an unprecedented injunction.


Big $$$$$


----------



## Greg Bimson

scooper said:


> Not to mention that Judge Folsom is doing an unprecedented injunction.


So now we are back to "an unprecedented injunction".

If the injunction was "unprecedented", why did DISH/SATS ignore discussing it on appeal? Shouldn't DISH/SATS have asked the Court of Appeals "why they need to be shutdown if they are no longer infringing"?


----------



## nobody99

scooper said:


> They are not infringing (or there is now doubt about that status currently). So explain why they need to be shutdown if they are no longer infringing.


Because they were infringing, and that infringement did irreparable harm to TiVo (court's view). That irreparable harm can be solved, in part, by giving TiVo a chance to get these customers back.



> And even IF we're wrong about that - what can a court do to a corporation like Echostar if they decide to willingly flout that shutdown order that will make them change their mind ?


Oh, I think it would be highly entertaining theater if it got to that stage . Think frozen bank accounts, potential jail time, lots of fun.



> Not to mention that Judge Folsom is doing an unprecedented injunction.


Not so much.


----------



## Curtis52

Greg Bimson said:


> The devices aren't enjoined. The word "enjoined" doesn't appear anywhere in this order.


Nevertheless, it's an injunction.


> Although most injunctions order a party not to do something, occasionally a court will issue a "mandatory injunction" to order a party to carry out a positive act--for example, return stolen computer code.


http://www.nolo.com/definition.cfm/Term/61CEC355-3ED9-4098-806B6DBE68B2D556/alpha/I/

TiVo certainly considers it an injunction:



> Before the Court last month, EchoStar took the position that it need not comply with the
> terms of the injunction - to disable the DVR functionality


----------



## Curtis52

Greg Bimson said:


> Shouldn't DISH/SATS have asked the Court of Appeals "why they need to be shutdown if they are no longer infringing"?


There is no need to disable the DVRs. The injunction doesn't require it unless TiVo can prove the retrofitted DVRs infringe.


----------



## Greg Bimson

Curtis52 said:


> Nevertheless, it's an injunction.


And the order is to disable the products found infringing in the hands of the customers. No more, no less.


Curtis52 said:


> There is no need to disable the DVRs. The injunction doesn't require it unless TiVo can prove the retrofitted DVRs infringe.





> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, 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.


Don't see anything there about retrofitting. Just disabling.


Curtis52 said:


> There is no need to disable the DVRs. The injunction doesn't require it unless TiVo can prove the retrofitted DVRs infringe.


Again?

Since when does a court have to find someone guilty twice of the same action on the same issue, especially after an appeal is upheld? It does violence to court procedure to find infringement again and again and again on the same devices.


----------



## James Long

spear61 said:


> James Long said:
> 
> 
> 
> Unfortunately there was infringement ... and a specific order to do a specific something because of that infringement ... which hasn't been followed.
> 
> 
> 
> Which "may" not have been followed. The judge said he will be deciding if the "spirit" of the injunction was followed.
Click to expand...

It is pretty simple to say that the injunction HAS NOT been followed ... and DISH's claims of following the letter of the injunction by saying "we disabled the DVR functionality before we re-enabled it" just highlights the craziness.

Whether on not that failure to follow the injunction is contempt is the question. We could see a verdict along the lines of "I find that DISH has not followed the letter nor the spirit of the injunction - however it appears DISH has made an effort to comply with what they believed the injunction required and I will not hold them in contempt at this time."


----------



## jacmyoung

Greg Bimson said:


> ...Really? Are you sure?...


Yes I am 100% sure.

You will understand eventually. Everything and anything said in an injunction of infringement, will not work unless the court first finds that infringement continued to exist. In absense of any on-going infringemet, or if there is doubt infringement still exists, a contempt ruling will not be appropriate, *regardless what the injunction says*.

Soon the court will make sure everyone understands the above.


----------



## jacmyoung

peak_reception said:


> .... It will only further sour my opinion of the judicial system ...


That is a pretty strong statement, more so than any physical injuries in my view.


----------



## Curtis52

Greg Bimson said:


> And the order is to disable the products found infringing in the hands of the customers. No more, no less.Don't see anything there about retrofitting. Just disabling.


If there is no infringement the DVRs are not enjoined. 


> devices which could not be enjoined as infringements on a separate complaint *cannot possibly be deemed enjoined* as infringements under an existing injunction in contempt proceedings.





Greg Bimson said:


> Since when does a court have to find someone guilty twice of the same action on the same issue, especially after an appeal is upheld?





> "At the heart of any contempt proceeding is the circumstance that the substantive issues were finally adjudicated in prior litigation between the same parties.
> 
> Contempt "should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. *When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated*."


----------



## jacmyoung

James Long said:


> ... DISH is on the hook until a court says they are not.


No DISH is no the hook only when the court says they are. You have it backwards.

Give you an example, even had DISH had blatantly violated the injunction, if by whatever the reason Tivo had failed to initiate a contempt proceeding upon DISH, DISH would be off the hook. DISH is only on the hook if Tivo brings the contempt proceeding on to them, *AND* then the court agrees with Tivo.


----------



## jacmyoung

James Long said:


> ...BTW: Caution to others who might want to read it backwards: "If there is no contempt there is no infringement." is a statement fraught with problems. Don't take a "victory" as the end of the case.


Before caution anyone, you need first make a correct statement, it is not:

If there is no contempt there is no infringement,

rather:

If there is no infringement, there cannot be a contempt.


----------



## James Long

Curtis52 said:


> In the Star-Brite case, Star-Brite was a named, enjoined, adjudicated product. The plaintiff filed a contempt motion for prima facie violation of the injunction. The defendant proved that their modified product did not infringe. The defendant won. There was no contempt because there was no longer any infringement.


Star-Brite had the benefit of having an obviously different product ... my 501 isn't so obviously different from the one I had (same serial number) before the software change. The value of Star-Brite is to show that the branding does not have to change in order for the product to cease infringing. The formulation still must change. For that, other cases are needed.

DISH isn't presenting new products with the same brand labeling ... they are updating old products magically via satellite. Many cases need to stitch together for Judge Folsom to accept their arguments. DISH may have the right formula to get them out of the contempt charge. No found case alone clears them 100%. It all comes down to which pieces of what cases Judge Folsome allows to be applied.


----------



## Greg Bimson

jacmyoung said:


> Everything and anything said in an injunction of infringement, will not work unless the court first finds that infringement continued to exist.


Injunction against infringement:


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


Injunction to disable:


> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, 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.


Separate orders, separate injunctions.

The first injunction order only *enjoins* DISH/SATS from continuing to sell the product found to infringe. So of course, any contempt brought before the court on this point must address the status of a product: it must both infringe and be merely colorably different.

The second injunction order *disables* the functionality of product found to infringe within subscribers' hands. There is no discussion of the status of this product, as it has already been found to infringe.

These two orders are completely separate from one another. And only the first one requires infringement to be found, as the second one has already found infringement on those products.


----------



## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> ... DISH is on the hook until a court says they are not.
> 
> 
> 
> No DISH is no the hook only when the court says they are. You have it backwards.
> 
> Give you an example, even had DISH had blatantly violated the injunction, if by whatever the reason Tivo had failed to initiate a contempt proceeding upon DISH, DISH would be off the hook. DISH is only on the hook if Tivo brings the contempt proceeding on to them, *AND* then the court agrees with Tivo.
Click to expand...

You've got the wrong hook ... the hook is the injunction (all of it, even the parts you don't like). Whether or not Tivo tries to reel in their catch is irrelevant ... DISH is on the hook - flapping around trying to get free.

The court said they were on the hook when the injunction was issued ... and the "boss court" agreed. No one has taken DISH off the hook yet --- and as I clearly stated, DISH is on the hook until a court says they are not.



jacmyoung said:


> James Long said:
> 
> 
> 
> ...BTW: Caution to others who might want to read it backwards: "If there is no contempt there is no infringement." is a statement fraught with problems. Don't take a "victory" as the end of the case.
> 
> 
> 
> Before caution anyone, you need first make a correct statement, it is not:
> 
> If there is no contempt there is no infringement,
> 
> rather:
> 
> If there is no infringement, there cannot be a contempt.
Click to expand...

You are failing to read ... want to try again? The caution is for people who might want to read it backwards - which is why it is presented in that way.


----------



## jacmyoung

nobody99 said:


> ... new devices ...


This is what I consider the biggest mistake Tivo is making in their argument, because the standards established by the higher court had never specified what products were subject to those standards, when one read those standards as I have listed them earlier, one will never found the word "new", "unsold", "already in the field", "already with the end users", "still in the warehouse" or "yet to be assembled"...

*All adjudicated products* are subject to those same standards, unless noted otherwise. And none of those clear and uniform standards has any footnote to state otherwise.

The second big mistake Tivo made is Tivo devoted a lot of its time trying to gain sympathy of the court by painting a very negative picture of DISH for their past alleged bad behaviors, for example "lying to court" or "not seeking permission"--the "attacking the man" fallacy.

Unfortunately, the court may not be influenced by any past experience when rendering a contempt decision, only to focus on the injunction at hand. So Tivo had wasted a lot of time and space in their briefings and responses.

The third big mistake is now Tivo are engaging in the new software colorable difference debate with DISH, by doing so they have practically accepted the new software evidence claimed by DISH without a discovery, and potentially making a future motion for a limited discovery on the new software very unlikely to be granted, because if the evidence already claimed by DISH, and accepted by Tivo, is sufficient to determine the colorable difference issue, there will be no need for a further discovery.

Tivo of course may motion for further discovery, but DISH can easily point to the evidence already provided by DISH, *and accepted by Tivo*, as a solid basis to deny the motion for further discovery. This could turn out to be a fatal mistake by Tivo.


----------



## Curtis52

Greg Bimson said:


> These two orders are completely separate from one another. And only the first one requires infringement to be found, as the second one has already found infringement on those products.


The enjoined DVRs ordered to be disabled were enjoined as infringements. Infringement was the reason they were enjoined. Case law establishes how devices enjoined as infringements and then modified are to be judged:


> "devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined *as infringements* under an existing injunction in contempt proceedings."


----------



## jacmyoung

James Long said:


> You've got the wrong hook ... the hook is the injunction (all of it, even the parts you don't like). Whether or not Tivo tries to reel in their catch is irrelevant ... DISH is on the hook - flapping around trying to get free.


The injunction is the hook, as you just said yourself, how can a hook be the same as "on the hook"? A contempt will put DISH on that hook. DISH is not on that hook unless there is a contempt.

Whether you decide to drop your hook in the water is certainly relevant, only when you drop that hook in the water, and only when your hook and bait are good enough to get the fish to take the bait and be hooked on, otherwise the fish is not "on the hook." If the fish is good enough to swim around the hook with the bait, eats everything around them, and never touch that hook, or if the fish is even smarter, able to eat the bait and avoid being hooked on, the fish will not be on that hook.



> The court said they were on the hook when the injunction was issued ... and the "boss court" agreed. No one has taken DISH off the hook yet --- and as I clearly stated, DISH is on the hook until a court says they are not.


The court offered Tivo the fisherman a hook--the injunction, as you admitted yourself, Tivo must first decide to cast that hook, which they did, and then the court must agree with the fisherman, so the fish is on the hook. The second step to complete the "put on the hook" action has not occurred yet.



> You are failing to read ... want to try again? The caution is for people who might want to read it backwards - which is why it is presented in that way.


Then you are cautioning pepole with a backward-reading wrong statement.


----------



## Greg Bimson

jacmyoung said:


> *All adjudicated products* are subject to those same standards, unless noted otherwise. And none of those clear and uniform standards has any footnote to state otherwise.


Wrong.


> Fundamentally, the law does not allow relitigation of infringement with respect to
> adjudicated products. That issue has concluded and cannot be reopened. *None of the cases that EchoStar cites addresses a product that entered the marketplace as an infringing product, and none concerns ongoing exploitation of an unlawfully installed product base by a willful patent infringer*. KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 1523 (Fed. Cir. 1985), for example, involved a consent judgment, not a fully litigated and affirmed judgment of willful infringement. *Moreover, the products subject to the consent judgment were the THERMALLOCK products. On the other hand, the products at issue in the contempt proceeding were the ULTRA-LOK products.* Id. at 1523-24. The decision refers repeatedly to the difference between "the particular device found to be [an] infringement" and modified products that entered the marketplace after judgment. Id. at 1525. KSM casts no doubt on a court's ability to enforce an injunction as to the particular devices found to infringe in the underlying action. See id. at 1527 (distinguishing between "an enjoined device and an accused device"); id. at 1530 (distinguishing between "accused and adjudged devices" and between an "alleged offending device . . . and an enjoined device"). See also Aero Prods., 2005 WL 1182430, at *3-7 (holding defendant in contempt for selling (1) new products that continued to infringe (following KSM) and (2) previously enjoined products (following regional circuit law)).
> 
> Like KSM, EchoStar's other authorities do not involve adjudicated products. See Abbott Labs. v. TorPharm, Inc., 503 F.3d 1372, 1383 (Fed. Cir. 2007) (contempt proceeding applied only to new units not before the court when it entered injunction; *adjudicated product remained subject to injunction*); Bass Pro Trademarks, L.L.C. v. Cabela's, Inc., 485 F.3d 1364, 1367-68 (Fed. Cir. 2007) (contempt proceeding applied only to new units; *adjudicated product remained subject to consent decree*); Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 856, 867 (Fed. Cir. 1988) (contempt proceeding applied only to new units; *original products remained subject to injunction*); Star Brite Distrib., Inc. v. Gavin, 746 F. Supp. 633, 641 (N.D. Miss. 1990) (contempt proceeding applied only to new units; *defendant destroyed existing stock of adjudicated products*).


And surprisingly enough from TiVo's reply to DISH/SATS response, which happens to be the footnote to this exact paragraph:

EchoStar is free to attempt to design around the patent for newly placed receivers.

TiVo, nor anyone else here, is suggesting the design-around should be prohibited. Just that it cannot be implemented on receivers already adjudicating infringing and subject to the disable order of the injunction.


----------



## jacmyoung

Greg Bimson said:


> ...EchoStar is free to attempt to design around the patent for newly placed receivers.


That is exactly where Tivo will be sorry they said that. The uniform standards as I quoted before never said "only the newly placed products" may be designed around, Tivo invented such new rule. That is where Tivo will fail, because they tried to tell the court that the court said something, except the court never said it.

All the other cases you quoted Tivo used are just like the one case you used, not applicable, because no modifications happened in those cases. Where the cases that had modifications, there were no contempt.


----------



## Curtis52

TiVo hasn't tried to claim that Dish can't give new DVRs to subscribers with Infringing Products due to "exploitation of an unlawfully installed product base" because that would be silly. Saying that they can't be modified is silly too. The law already allows modification:


> "[C]ontempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to *remain in the marketplace*."





> An enjoined party is entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device


----------



## Greg Bimson

Curtis52 said:


> The enjoined DVRs ordered to be disabled were enjoined as infringements. Infringement was the reason they were enjoined.


Not quite, as enjoin simply means prohibited:

The prohibited DVR's ordered to be disabled were prohibited as infringements. Infringement was the reason they were prohibited.

Doesn't make much sense.

Joe Blow has a four year old 501, which was adjudicated as infringing. Is the device in his hands subject to this order?


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


This order has nothing to do with product adjudicated as infringing already in customers' hands. Only the disable order does.


----------



## jacmyoung

Greg Bimson said:


> ... Only the disable order does.


And the disable order cannot touch anything that no longer infringes, therefore no longer "Infringing Products".


----------



## Curtis0620

jacmyoung said:


> And the disable order cannot touch anything that no longer infringes, therefore no longer "Infringing Products".


Correct. So those DVR's not listed in the injuction won't be affected.


----------



## Curtis52

Greg Bimson said:


> Not quite, as enjoin simply means prohibited:


No.


> enjoin |enˈjoin|
> verb [ trans. ]
> instruct or urge (someone) to do something : the code enjoined members to trade fairly.


----------



## jacmyoung

Curtis0620 said:


> Correct. So those DVR's not listed in the injuction won't be affected.


If you truly agree with my statement, you must also agree DVRs on the list but no longer infringe, won't be affected either. But I am sure you will take back that "correct" now.


----------



## jacmyoung

Curtis52 said:


> No.


Enjoin can also mean prohibit, and such is the meaning in the context of an injunction.


----------



## Curtis0620

jacmyoung said:


> If you truly agree with my statement, you must also agree DVRs on the list but no longer infringe, won't be affected either. But I am sure you will take back that "correct" now.


There are no DVR's on the list that don't infringe.

Show me a ruling that says that they don't infringe.

The only ruling is that they do.


----------



## Curtis52

Curtis0620 said:


> There are no DVR's on the list that don't infringe.
> 
> Show me a ruling that says that they don't infringe.
> 
> The only ruling is that they do.


It doesn't matter what the injunction says. The modified devices are not enjoined and not subject to the injunction. They were modified before the injunction went into effect.


----------



## Curtis0620

Curtis52 said:


> It doesn't matter what the injunction says. The modified devices are not enjoined and not subject to the injunction. They were modified before the injunction went into effect.


So, that doesn't mean that they no longer infringe. What must be done with them?

A re-trial?


----------



## jacmyoung

Curtis0620 said:


> There are no DVR's on the list that don't infringe.
> 
> Show me a ruling that says that they don't infringe.
> 
> The only ruling is that they do.


Does that mean you are taking back your word "correct"?


----------



## Curtis52

jacmyoung said:


> Enjoin can also mean prohibit, and such is the meaning in the context of an injunction.


It can be either one.



> en·join (n-join)tr.v. en·joined, en·join·ing, en·joins
> 1. To direct or impose with authority and emphasis.
> 2. To prohibit or forbid.
> 
> http://www.thefreedictionary.com/enjoining


----------



## Curtis0620

jacmyoung said:


> Does that mean you are taking back your word "correct"?


Does it matter?


----------



## jacmyoung

Curtis0620 said:


> So, that doesn't mean that they no longer infringe. What must be done with them?
> 
> A re-trial?


Even if they may later again found to infringe, for now, in a contempt proceeding, if there is the doubt whether they still infringe or not, there cannot be a contempt, and yes a new trial (not a retrial) will have to be initiated by Tivo to determine if the modified DVRs still infringe.

The reason it will not be a retrial, rather a new trial, is because what needs to be tried is the new software, which had not been tried before, hence a "new trial", not a "re-trial".


----------



## jacmyoung

Curtis0620 said:


> Does it matter?


In a sense yes, you either agree or disagree with that statement. For now you said you agree with me, yet you at the same time seem to disagree, it does not look good.


----------



## jacmyoung

Curtis52 said:


> It can be either one.


Of course, but in the context of injunctions, I think it is the second meaning.

But even if it can be the first, what is the significance of it? I did not read everything between you and Greg.


----------



## Curtis52

jacmyoung said:


> Of course, but in the context of injunctions, I think it is the second meaning.


It depends on what type of injunction it is. If it is a mandatory injunction it's the first meaning. Anything subject to an injunction is enjoined.


> Although most injunctions order a party not to do something, occasionally a court will issue a "mandatory injunction" to order a party to carry out a positive act--for example, return stolen computer code.


----------



## Greg Bimson

Curtis52 said:


> It doesn't matter what the injunction says. The modified devices are not enjoined and not subject to the injunction. They were modified before the injunction went into effect.


The adjudicated devices in the hands of the end users are enjoined and subject to the injunction. Modifying the adjudicated devices in the hands of the end users does not change the fact they were adjudicated and enjoined, to be disabled per the terms of the injunction.

That would be like arguing once the adjudicated devices in the hands of end users are disabled, that they would no longer be subject to the injunction because they do not infringe. Those devices will be subject to the injunction until the injunction expires.


----------



## Curtis52

Greg Bimson said:


> The adjudicated devices in the hands of the end users are enjoined and subject to the injunction.


TiVo will have to prove they infringe on a separate complaint to be considered enjoined.


> "devices which could not be enjoined as infringements on a separate complaint *cannot possibly be deemed enjoined* as infringements under an existing injunction in contempt proceedings."


----------



## Greg Bimson

Curtis52 said:


> TiVo will have to prove they infringe to be considered enjoined.


Good.

Since the jury already proved they infringe, they're enjoined.


> "*devices which could not be enjoined as infringements on a separate complaint* cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings."


These devices were enjoined as infringements under THIS complaint.


----------



## James Long

jacmyoung said:


> The injunction is the hook, as you just said yourself, how can a hook be the same as "on the hook"?


The injunction is the hook and DISH is on it. Can I put it any more simple? Being on the hook is being caught up by the injunction. DISH cannot freely go about their business (and swim the entire ocean) because they are "on the hook".


> Then you are cautioning pepole with a backward-reading wrong statement.


I am cautioning people not to read the statement backwards ... as you have demonstrated in the past. A = C does not mean C = A in the text shown. You agree with that. And yet again you are arguing with statements you agree with. 



jacmyoung said:


> And the disable order cannot touch anything that no longer infringes, therefore no longer "Infringing Products".


Who says they no longer infringe? Nobody with any authority over the injunction. The "Infringing Products" infringe until a court says otherwise.


----------



## Curtis52

Greg Bimson said:


> Good.
> 
> Since the jury already proved they infringe, they're enjoined.These devices were enjoined as infringements under THIS complaint.


So far, the modified devices have not been the subject of any complaint.


----------



## Greg Bimson

Curtis52 said:


> So far, the modified devices have not been the subject of any complaint.


And the four million plus devices subject to the original complaint and the disable order of the injunction are, even if DISH/SATS modified them.


----------



## James Long

Curtis52 said:


> So far, the modified devices have not been the subject of any complaint.


That is the next step ... put off by the court until after September 4th.

Right now it is just a simple question of contempt over the non-disabling of the DVR functionality. The ruling will probably contain less words than have been posted on DBSTalk about them (not counting attachments).


----------



## Curtis52

Greg Bimson said:


> And the four million plus devices subject to the original complaint and the disable order of the injunction are, even if DISH/SATS modified them.


Only if TiVo is successful with a separate complaint and can show that the modified devices could be enjoined as infringements on the separate complaint. TiVo needs to file it ASAP.


----------



## Greg Bimson

Curtis52 said:


> Only if TiVo is successful with a separate complaint and can show that the modified devices could be enjoined as infringements on the separate complaint. TiVo needs to file it ASAP.


Let's see if I get this right:

TiVo needs to file suit against millions of receivers which have already been been adjudicated and found to infringe. So TiVo needs to file against devices already found guilty?

Are we living in China?


----------



## James Long

Curtis52 said:


> Only if TiVo is successful with a separate complaint and can show that the modified devices could be enjoined as infringements on the separate complaint. TiVo needs to file it ASAP.


You have the same problem as jacmyoung ... The devices are not modified until a court says they are. They remain "Infringing Products" under this injunction until a court says otherwise (or the patent expires).

The court isn't looking that close in three weeks ... perhaps after September 4th, but that isn't the question of the day.


----------



## Curtis52

Greg Bimson said:


> Let's see if I get this right:
> 
> TiVo needs to file suit against millions of receivers which have already been been adjudicated and found to infringe. So TiVo needs to file against devices already found guilty?


No. That would be redundant. TiVo needs to file against the modified devices.


----------



## Curtis0620

Curtis52 said:


> No. That would be redundant. TiVo needs to file against the modified devices.


This is what I have a problem with.

File against the modified devices. 
They are found to infringe.
New Permanent Injuction.
Dish Changes software.
Start over.

Where does it end.

This is why the listed DVR's in the injuction can not be re-looked at.

It is game over for these. Tivo can then go after the other DVR's with this new software. But I think DISH would settle by then.

Or they will just raise your rates and keep the legal process going and going. Charlie did say he is stubborn.


----------



## James Long

Curtis52 said:


> No. That would be redundant. TiVo needs to file against the modified devices.


Which will not occur until AFTER September 4th, per the order of the court.


----------



## Greg Bimson

Curtis52 said:


> No. That would be redundant. TiVo needs to file against the modified devices.


But it is exactly what you are suggesting.

Joe Blow's four-year old 501 has been adjudicated infringing, and you are stating that because DISH/SATS modified it, that TiVo will have to file another suit again, even though this injunction already covers it.


----------



## nobody99

Curtis0620 said:


> This is what I have a problem with.
> 
> File against the modified devices.
> They are found to infringe.
> New Permanent Injuction.
> Dish Changes software.
> Start over.
> 
> Where does it end.


I would have a problem with it to if it weren't in the exclusive realm of jacmyoung and Curtis52's fantasyland of imaginary make-believe.

However, this is reality. Even though it's still light years away from perfect, the current system is nowhere near as unfair as the one that jacmyoung and curtis propose. Your fear is unfounded. On or shortly after September 4, DISH will be found in contempt. Either that or they'll settle some time beforehand.


----------



## Curtis52

Curtis0620 said:


> This is what I have a problem with.
> 
> File against the modified devices.
> They are found to infringe.
> New Permanent Injuction.
> Dish Changes software.
> Start over.
> 
> Where does it end.


This has been answered several times. In a few egregious cases where a defendant has not acted in good faith and has cried wolf several times with regard to alleged modifications, the appeals court has allowed putting a modification pre-approval requirement in the injunction.


----------



## Curtis52

Greg Bimson said:


> But it is exactly what you are suggesting.
> 
> Joe Blow's four-year old 501 has been adjudicated infringing, and you are stating that because DISH/SATS modified it, that TiVo will have to file another suit again, even though this injunction already covers it.


Whether the current injunction covers the modified DVRs is precisely the question that the separate complaint would need to address.


----------



## James Long

Curtis0620 said:


> This is what I have a problem with.
> 
> File against the modified devices.
> They are found to infringe.
> New Permanent Injuction.
> Dish Changes software.
> Start over.
> 
> Where does it end?


Which is why the default for adjudicated devices is what they have been adjudicated to be. Tivo proved to a jury that the products infringed. An injunction was issued and upheld punishing that infringement.

It is DISH who should be approaching the court FIRST saying "we have modified the products so they no longer infringe - please modify the injunction" and let that go to trial (bench or jury I don't care as long as a court decides). The default needs to be the status quo.

Tivo filing against similar devices ... for example claiming that a ViP-622 DVR is only colorably different than one of the named "Infringing Products" is a similar answer. The status quo is that ViP DVRs do not infringe. Until a court says that they are only colorably different or a full case is run proving they infringe there is no injunction against them.

But for the 4 million infringing products? No - DISH doesn't get a new trial every time they send a software update. If that were true the courts would never be able to catch up with the progression of upgrades.


> This is why the listed DVR's in the injuction can not be re-looked at.


I wouldn't go that far ... modifying the product is allowed but a court ruling on the modification MUST be done the right way ... not through the back door. If DISH wants those products to be non-infringing and free of the injunction they need to get the products re-adjudicated.

Unfortunately right now they are just trying smoke and mirrors ... "we disabled the DVR functionality (and then re-enabled it)" ... "these are NEW products" ... Jedi mind tricks.


----------



## Greg Bimson

Curtis52 said:


> Whether the current injunction covers the modified DVRs is precisely the question that the separate complaint would need to address.


The current injunction covers the adjudicated DVR's, modified or not. No need for a separate complaint.


----------



## Curtis52

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


Dish bears the risk but they have done absolutely nothing wrong in modifying the DVRs to become noninfringing and not subject to the injunction. As always, they can be found in contempt if the changes are not more than colorably different.


----------



## Curtis52

Greg Bimson said:


> The current injunction covers the adjudicated DVR's, modified or not. No need for a separate complaint.


That's what they said about Star-Brite.


----------



## James Long

Curtis52 said:


> An enjoined party is entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device although he bears the risk that the enjoining court may find changes to be too insubstantial to avoid contempt.
> 
> 
> 
> Dish bears the risk but they have done absolutely nothing wrong in modifying the DVRs to become noninfringing and not subject to the injunction. As always, they can be found in contempt if the changes are not more than colorably different.
Click to expand...

That is nice for the second part of the injunction (if you count the first part as "pay money") but we're dealing with the third part that has nothing to do with colorable difference.

DISH can be found in contempt for not following the order of the court.

"Only colorably different" is a way to bring additional products, including modifications, under the injunction without a full trial. Basically to stop companies from doing what DISH may be doing by saying these are "new products" that require a new case. Contempt is a different question.


----------



## nobody99

James Long said:


> modifying the product is allowed but a court ruling on the modification MUST be done the right way ... not through the back door. If DISH wants those products to be non-infringing and free of the injunction they need to get the products re-adjudicated.


While I agree with you wholeheartedly that this is the way things _should_ work, I'm not sure it's how it works in today's system. If you look at TiVo's contempt motion reply, they are pretty vehement the existing 3+ million DVRs can't have DVR functions until the end of the '389 patent. Here's one part of their reply:



> Fundamentally, the law does not allow relitigation of infringement with respect to adjudicated products. That issue has concluded and cannot be reopened. None of the cases that EchoStar cites addresses a product that entered the marketplace as an infringing product, and none concerns ongoing exploitation of an unlawfully installed product base by a willful patent infringer.


----------



## James Long

Curtis52 said:


> That's what they said about Star-Brite.


Star-Brite introduced a new product with the same name as an old product. They didn't claim to modify an old product on storekeeper's or customer's shelves to be a new product.

But you are right about Star-Brite needing an appeals court to get "the right decision". Another reason why I don't see it going well for DISH. Judge Folsom has to pick a lot of precedent from various cases and add it together just right for DISH to win.


----------



## jacmyoung

James Long said:


> ...Who says they no longer infringe? Nobody with any authority over the injunction. The "Infringing Products" infringe until a court says otherwise.


DISH said so with evidence provided, and such evidence cannot be ignored by the court in a contempt proceeding, if for whatever the reason the court ignores the evidence and renders a contempt, it will be an abuse of court discretion, and the contempt ruling will have to be overturned on that ground alone.

In a contempt proceeding, Tivo as the movant must prove with clear and convincing evidence that DISH is wrong, that their evidence does not raise any doubt that the DVRs on the list with the new software still infringe. If Tivo fails on that there cannot be a contempt, Tivo must initiate a new proceeding to litigate the new software in order to prove the DVRs with the new software still infringe.

DISH on the other hand only needs to establish the doubt that the DVRs on the list, now with the new software, may no longer infringe, that will be enough to get them out of a contempt.


----------



## James Long

nobody99 said:


> While I agree with you wholeheartedly that this is the way things _should_ work, I'm not sure it's how it works in today's system. If you look at TiVo's contempt motion reply, they are pretty vehement the existing 3+ million DVRs can't have DVR functions until the end of the '389 patent. Here's one part of their reply:


Just because Tivo says it works that way doesn't mean it does. 

That's the whole point of having Judge Folsom consider the arguments on the legal issue at stake here ... has contempt on the "disable" command been avoided by attempting a modification?

Not many injunctions are against a product already in customer's hands. It is different when it is an ongoing service that needs to be maintained or it automatically disables itself. This is "functionality" that a court ordered disabled. What does "disable" mean? We'll find out in September.


----------



## James Long

jacmyoung said:


> DISH on the other hand only needs to establish the doubt that the DVRs on the list, now with the new software, may no longer infringe, that will be enough to get them out of a contempt.


Agreed ... but as noted before (and I'll note it again and again as needed) "not in contempt" does not mean "not infringing" nor does it mean the end of the injunction or the case. It is a good start.


----------



## jacmyoung

Greg Bimson said:


> Good.
> 
> Since the jury already proved they infringe, they're enjoined.These devices were enjoined as infringements under THIS complaint.


You did not understand what the above court rule said. What it says was if the DVRs now with the new software may be found non-infringing in a separate proceeding, for example if Tivo files a new suit against those DVRs with the new software, and if there is the chance that these same DVRs with the new software may be ruled non-infringing (I know you agreed such chance does exist), then these same DVRs with the new software cannot possibly be enjoined under this current complaint, under this current injunction.

This is just another way the court tries to explain why if there is no proof of on-going infringement, there cannot be a contempt, no matter what is said in this injunction.


----------



## scooper

Greg Bimson said:


> But it is exactly what you are suggesting.
> 
> Joe Blow's four-year old 501 has been adjudicated infringing, and you are stating that because DISH/SATS modified it, that TiVo will have to file another suit again, even though this injunction already covers it.


Exactly.


----------



## jacmyoung

James Long said:


> Agreed ... but as noted before (and I'll note it again and again as needed) "not in contempt" does not mean "not infringing" nor does it mean the end of the injunction or the case. It is a good start.


If the judge rules DISH not in contempt after 9/4, it must be that the new software has raised substantial open issues, that will be the *only reason* DISH is not in contempt.

Therefore this case is practically over, because all DISH DVRs now use this new software, and therefore open issues now exist for all DISH DVRs. Tivo cannot possibly use another contempt proceeding to catch DISH, there is nothing more to be used to catch DISH. Tivo will have to file a new suit, which will be a new case, not the same case as this one, to litigate the new software, hopefully prove that the new software still infringe.

So in all practicality, if DISH is not in contempt on 9/4, this case is over.

Ok I take that back a little, Tivo of course can still appeal, and when the appeals court affirmes no-contempt, this case will be over.


----------



## Curtis52

jacmyoung said:


> If the judge rules DISH not in contempt after 9/4, it must be that the new software has raised substantial open issues, that will be the *only reason* DISH is not in contempt.


There will not be a 'not in contempt" ruling. The judge may simply deny TiVo's contempt motion on the legal question. The next contempt hearing would look at the software as to whether there is a colorable difference.


----------



## jacmyoung

Curtis52 said:


> There will not be a 'not in contempt" ruling. The judge may simply deny TiVo's contempt motion on the legal question. The next contempt hearing would look at the software as to whether there is a colorable difference.


The judge cannot deny a motion that he has already granted. But I am no lawyer so I will not insist on that.


----------



## Curtis52

jacmyoung said:


> The judge cannot deny a motion that he has already granted. But I am no lawyer so I will not insist on that.


Here is the motion that you say has already been granted:


> TiVo respectfully requests that the Court issue an Order holding EchoStar in contempt of the Permanent Injunction and requiring EchoStar to comply by disabling the DVR functionality within seven calendar days in the DVR receivers specified in the injunction (i.e., DP-501, DP- 508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942).


----------



## peak_reception

Originally Posted by James Long:


> DISH is on the hook until a court says they are not.


 jacmyoung replies:


> No DISH is on the hook only when the court says they are. You have it backwards... DISH is only on the hook if Tivo brings the contempt proceeding on to them, AND then the court agrees with Tivo.


 To which James replies:


> You've got the wrong hook ... the hook is the injunction (all of it, even the parts you don't like). Whether or not Tivo tries to reel in their catch is irrelevant ... DISH is on the hook - flapping around trying to get free. The court said they were on the hook when the injunction was issued ... and the "boss court" agreed. No one has taken DISH off the hook yet --- and as I clearly stated, DISH is on the hook until a court says they are not.


 To which jacmyoung replies:


> The injunction is the hook, as you just said yourself, *how can a hook be the same as "on the hook"?*


 Jac, are you serious or are you just trying to _bait_ James? "How can a hook be the same as 'on the hook'?" He never said they were the same. His analogy could not have been clearer or more apt. The hook is the injunction. Dish is *on* the hook . Not yet "reeled in" to the boat which would mean no more possibility of getting off the hook and swimming away free.

Contempt, if rendered on or shortly after 9-4, does not necessarily mean that Dish is reeled in either but it does mean the hook is more deeply imbedded and therefore more difficult to shake loose from. Only the Boss Court can determine once the fish is reeled in, and only if they are not overruled by the Boss Court's Boss Court, should they decide to accept the case. Once The Boss Court rules on appeal (assuming they affirm Contempt) then Dish the Fish is finished so far as this case is concerned unless the Boss Court's Boss Court wants a piece of it. If the Boss Court overrules then Dish the Fish swims away. As you can tell I'm trying to put this into jac-speak so that you will understand 

IF something fishy happens in September and Dish is *not* found In Contempt, it takes them off one hook (Judge Folsom's Injunction) but they could still be hooked in other ways.

Watch the World Fishing Network; It might help clarify all of this 



> Whether you decide to drop your hook in the water is certainly relevant, only when you drop that hook in the water, and only when your hook and bait are good enough to get the fish to take the bait and be hooked on, otherwise the fish is not "on the hook." If the fish is good enough to swim around the hook with the bait, eats everything around them, and never touch that hook, or if the fish is even smarter, able to eat the bait and avoid being hooked on, the fish will not be on that hook.


  


> The court offered Tivo the fisherman a hook--the injunction, as you admitted yourself, Tivo must first decide to cast that hook, which they did, and then the court must agree with the fisherman, so the fish is on the hook. The second step to complete the "put on the hook" action has not occurred yet.


 Only in Jac-World


----------



## peak_reception

> Quote:
> Originally Posted by Greg Bimson View Post
> Not quite, as enjoin simply means prohibited:
> No.
> Quote:
> enjoin |enˈjoin|
> verb [ trans. ]
> instruct or urge (someone) to do something : the code enjoined members to trade fairly.


 This is like deja-vu all over again


----------



## peak_reception

Curtis52 said:


> *It doesn't matter what the injunction says.* The modified devices are not enjoined and not subject to the injunction. They were modified before the injunction went into effect.


 Exactly the attitude which will bury Dish in this case.


----------



## peak_reception

Curtis52 said:


> This has been answered several times. In a few egregious cases where a defendant has not acted in good faith and has cried wolf several times with regard to alleged modifications, the appeals court has allowed putting a modification pre-approval requirement in the injunction.


 Why should "several times" of crying wolf be necessary before putting in a pre-approval clause? Shouldn't one instance be enough?


----------



## scooper

peak_reception said:


> Exactly the attitude which will bury Dish in this case.


How so ? Explain your reasoning.


----------



## Greg Bimson

The problem some of you have is what exactly how the verdict and the later Final Judgment and Permanent Injunction work:

Eight models were found to infringe. The judgment defined those eight models as the "Infringing Products", and orders:

1) DISH/SATS to pay TiVo $97 million
2) DISH/SATS and their agents to cease sales of said Infringing Products and those merely colorably different (and does not address the install base)
3) DISH/SATS to disable those Infringing Products installed with a customer.

Modifying the products allows DISH/SATS to continue to sell a modified device, with the threat of contempt hanging over their head. Modifying the products does not get DISH/SATS out of the "disable order".


----------



## jacmyoung

peak_reception said:


> ...The hook is the injunction. Dish is *on* the hook . ...


You ran into the same problem as James, yes the injunction is the hook, but DISH is not on it. You simply cannnot say: "Hook=On the Hook", a two year old can see this equation is wrong.


----------



## peak_reception

Originally Posted by Curtis52: 


> No. That would be redundant. TiVo needs to file against the modified devices.





James Long said:


> Which will not occur until AFTER September 4th, per the order of the court.


 Curtis52 has convinced himself that September 4th will be just one big waste of time; A judicial charade if you will. We'll soon see if Judge Folsom agrees.


----------



## scooper

Greg Bimson said:


> The problem some of you have is what exactly how the verdict and the later Final Judgment and Permanent Injunction work:
> 
> Eight models were found to infringe. The judgment defined those eight models as the "Infringing Products", and orders:
> 
> 1) DISH/SATS to pay TiVo $97 million
> 2) DISH/SATS and their agents to cease sales of said Infringing Products and those merely colorably different (and does not address the install base)
> 3) DISH/SATS to disable those Infringing Products installed with a customer.
> 
> Modifying the products allows DISH/SATS to continue to sell a modified device, with the threat of contempt hanging over their head. Modifying the products does not get DISH/SATS out of the "disable order".


Number 3 is out of line and unprecedented. Especially since the hardware claims were sent back. And it won't do Tivo any good even if it happens - scorched earth. I don't see Tivo having 3-5 million DVR units ready to go immediately at a monthly fee of $6


----------



## Greg Bimson

> In a civil contempt proceeding, the party seeking an order of contempt need only establish:
> 
> (1) that a court order was in effect, and
> (2) that the order required certain conduct by the respondent, and
> (3) that the respondent failed to comply with the court's order."
> FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995) (citing Martin v. Trinity Indus., Inc., 959 F.2d 45, 47 (5th Cir. 1992)).


(1) The court order is in effect, as of 18 April, 2008
(2) the order required certain conduct by the respondent, 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
(3) the respondent failed to comply with the court's order, as nothing has been disabled.


----------



## peak_reception

jacmyoung said:


> You ran into the same problem as James, yes the injunction is the hook, but DISH is not on it. You simply cannnot say: "Hook=On the Hook", a two year old can see this equation is wrong.


 Oh jac, you really do hate admitting that you're wrong, don't you?


----------



## jacmyoung

peak_reception said:


> Why should "several times" of crying wolf be necessary before putting in a pre-approval clause? Shouldn't one instance be enough?


Because the appeals court had time after time assured the infringers that pre-approval for workaround was not necessary, that when a contempt proceeding surfaced, the rules would be applied uniformly to look at the workarounds. But in a few cases the infringers refused to accpet that assurrance, cried and cried until the lower courts relented and gave them some form of pre-approvals they wanted.

But it only happened in a few cases. For the majority of the cases there were never pre-approvals, and when contempt issue arised, workarounds were always examined very carefully, never ignored just because there were "no pre-approval."


----------



## jacmyoung

peak_reception said:


> Oh jac, you really do hate admitting that you're wrong, don't you?


Why if it is you that is wrong?


----------



## jacmyoung

Greg Bimson said:


> (1) The court order is in effect, as of 18 April, 2008
> (2) the order required certain conduct by the respondent, 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
> (3) the respondent failed to comply with the court's order, as nothing has been disabled.


Except the order is not disobeyed, just that you think so is not good enough, the court must decide whether the order is obeyed or not.


----------



## Guest

Why is it that no one talks about the Hardware claim that was remanded. If I was Tivo I would push that issue. If they can get that claim reinstated on DOE then the whole software issue will be a non issue.


----------



## Greg Bimson

scooper said:


> Number 3 is out of line and unprecedented. Especially since the hardware claims were sent back. And it won't do Tivo any good even if it happens - scorched earth.


1) A recall would have been ordered if the functionality could not be disabled
2) If it is unprecedented, it should have been challenged upon appeal
3) If DISH/SATS does scorch earth, you can watch the subscriber count, earnings, revenues and the stock price of DISH/SATS go south, quickly


----------



## scooper

peak_reception said:


> Originally Posted by Curtis52:
> Curtis52 has convinced himself that September 4th will be just one big waste of time; A judicial charade if you will. We'll soon see if Judge Folsom agrees.


I certainly think it will be a big waste of time /big letdown for this forum - nothing substanstial will really happen.


----------



## peak_reception

scooper said:


> How so ? Explain your reasoning.


 Playing word games with the law. Brazenly defying a court order? Crying wolf to the CAFC. Undertaking a "Herculean effort" in order to no longer infringe, yet neglecting to inform the court of its planning or existence, and so on. Only the first one is against the law (if Judge Folsom sees it that way) but all the rest is *acting in bad faith.*. I think it will hurt them. If they've also broken the law it will bury them, imo. That's my reasoning. Why do you think it won't hurt them?


----------



## jacmyoung

Curtis52 said:


> Here is the motion that you say has already been granted:


Ok, am I missing something? Are you saying the judge can again dismiss that motion on 9/4, after he had already granted it?

I don't know just asking.

But regardless, denial of a motion, as I said before, is no less of a work than making a formal contempt ruling, I have read many denial of motions too to say this.

To deny a contempt motion, the court must go into detials to provide justifications why so to the mover. And the only reason to deny that motion will be that the DISH new software has raised substantial open issues. So it will not be too different than saying DISH cannot posibly be in contempt, therefore the motion must be denied.


----------



## peak_reception

scooper said:


> I certainly think it will be a big waste of time /big letdown for this forum - nothing substanstial will really happen.


 Indeed, that's what happened on May 30, but sooner or later this case is coming to a head. September 4th seems like the perfect time. Do you think Judge Folsom is just going to "dink" around (i wanted to use another term  forever with all of this?


----------



## jacmyoung

peak_reception said:


> Playing word games with the law. Brazenly defying a court order? Crying wolf to the CAFC. Undertaking a Herculean effort in order to no longer infringe, yet neglecting to inform the court of its planning or existence, and so on. Only the first one is against the law (if Judge Folsom sees it that way) but all the rest is *acting in bad faith.*. I think it will hurt them. If they've also broken the law it will bury them, imo. That's my reasoning. Why do think it won't hurt them?


It is Tivo who is playing with the letter of the injunction, by replacing the very critical term used in the injunction, "Infringing Products", with something called "Adjudicated Receivers".

Very bad indeed when Tivo is trying to play the judge's words, rather sticking to them.


----------



## Greg Bimson

jacmyoung said:


> Except the order is not disobeyed, just that you think so is not good enough, the court must decide whether the order is obeyed or not.





> the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.


Even the court states that DISH/SATS failed "to disable DVR functionality in the Infringing Products". Only DISH/SATS is maintaining that they actually followed that section of the order.


----------



## peak_reception

jacmyoung said:


> It is Tivo who is playing with the letter of the injunction, by replacing the very critical term used in the injunction, "Infringing Products", with something called "Adjudicated Receivers".
> 
> Very bad indeed when Tivo is trying to play the judge's words, rather sticking to them.


 Have the "Infringing Products" not been adjudicated?


----------



## Greg Bimson

tomrogerssucks said:


> Why is it that no one talks about the Hardware claim that was remanded. If I was Tivo I would push that issue. If they can get that claim reinstated on DOE then the whole software issue will be a non issue.


Because in a nutshell, it would take forever to get the hardware readjudicated. Besides, all one needs to see is DISH/SATS tact after the stay to understand.

If DISH/SATS won the entire appeal outright, no problem, since the entire case would have been dismissed.

If not, DISH/SATS would do exactly as they are doing now, stating they've modified the adjudicated receivers so they no longer infringe. It wouldn't matter if what was reversed were the software claims that or the hardware claims, or if the entire verdict came through appeals unscathed.

The hardware claims are now simply an appendix or coccyx; no vestigial function in this case.


----------



## Curtis52

jacmyoung said:


> Ok, am I missing something? Are you saying the judge can again dismiss that motion on 9/4, after he had already granted it?


Already granted it? I don't know what you are talking about. The judge has not issued the order TiVo requested in the motion. The motion has not been granted. The 9-4 hearing is to determine whether TiVo's motion should be granted or denied.


> And the only reason to deny that motion will be that the DISH new software has raised substantial open issues. So it will not be too different than saying DISH cannot posibly be in contempt, therefore the motion must be denied.


No. The new software is not being looked at in this hearing other than acknowledgement that there is new software. The only question that will be resolved is whether it makes any difference whether Dish has new software or not (regardless of whether it infringes or not). If it is dtermined that new software needs to be considered then it will be looked at in the next hearing to see if it is more than colorably different.


----------



## jacmyoung

Greg Bimson said:


> Even the court states that DISH/SATS failed "to disable DVR functionality in the Infringing Products". Only DISH/SATS is maintaining that they actually followed that section of the order.


So what? Everyone knows that. But did the judge say in the above DISH disobeyed the order? No, it says: "...or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."

The court will decide on or after 9/4 *whether* by not literally disabling the DVR functions constitutes disobeying the order, or *whether* his order allows Echostar to obey the order without disabling the DVR functions.


----------



## jacmyoung

peak_reception said:


> Have the "Infringing Products" not been adjudicated?


Not the ones with the new software no they have not, because the new software has not been adjudicated, and the hardware as of now had been adjudicated to be non-infringing, only the old software had been adjudicated to be infringing, and now the old software no longer exists, replaced with the new software.


----------



## scooper

peak_reception said:


> Playing word games with the law.


I thought this is what being a lawyer / practicing law is all about.



peak_reception said:


> Brazenly defying a court order?
> Crying wolf to the CAFC. Undertaking a "Herculean effort" in order to no longer infringe, yet neglecting to inform the court of its planning or existence, and so on. Only the first one is against the law (if Judge Folsom sees it that way) but all the rest is *acting in bad faith.*. I think it will hurt them. If they've also broken the law it will bury them, imo. That's my reasoning. Why do you think it won't hurt them?


The rest of that is normal business - are you saying that YOU would have disclosed that you were working on a workaround before you had it ready ? The "Herculean effort" is more word games to exagerate the words in a briefing, and the judge should see it that way.


----------



## jacmyoung

Curtis52 said:


> Already granted it? I don't know what you are talking about. The judge has not issued the order TiVo requested in the motion. The motion has not been granted. The 9-4 hearing is to determine whether TiVo's motion should be granted or denied.
> No. The new software is not being looked at in this hearing other than acknowledgement that there is new software. The only question that will be resolved is whether it makes any difference whether Dish has new software or not. If it is dtermined that new software needs to be considered then it will be looked at in the next hearing to see if it is more than colorably different.


If you are correct, then am I corerct that you are also saying the 9/4 hearing will not be a contempt hearing, only a hearing to decide if Tivo's motion shall be granted or not?


----------



## nobody99

jacmyoung said:


> It is Tivo who is playing with the letter of the injunction, by replacing the very critical term used in the injunction, "Infringing Products", with something called "Adjudicated Receivers".
> 
> Very bad indeed when Tivo is trying to play the judge's words, rather sticking to them.


Wow, are you really seriously thinking DISH's chance hing on the "very critical" term "Infringing Products?"

How about we take the term as it is defined in the Injunction itself, would that help?



> the Court thereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 ("'389 patent"), claims 1, 5, 21, 23, 32, 36, 52, 31 and 61 ("the Infringed Claims") by Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


Ok, there's the definition. Now let's do fun word substitution like we've done before. Simply replace "Infringing Products" which as you can see the court has conveniently described as the "following DVR receivers: 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 following DVR receivers: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 that have been placed with an end user or subscriber. 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 following DVR receivers: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


There, does that make it easier to understand?


----------



## Curtis52

jacmyoung said:


> If you are correct, then am I corerct that you are also saying the 9/4 hearing will not be a contempt hearing, only a hearing to decide if Tivo's motion shall be granted or not?


TiVo's motion was a request to find Dish in contempt. The judge has not granted that motion. The 9-4 hearing is to discuss whether TiVo's contempt motion should be granted or denied. It has not been granted yet.


----------



## Bidderman9

Does anybody know if E* filed with SCOTUS? Wasn't the filing date about now?


----------



## Curtis52

Bidderman9 said:


> Does anybody know if E* filed with SCOTUS? Wasn't the filing date about now?


Yes they did. On 8-11.


----------



## scooper

peak_reception said:


> Indeed, that's what happened on May 30, but sooner or later this case is coming to a head. September 4th seems like the perfect time. Do you think Judge Folsom is just going to "dink" around (i wanted to use another term  forever with all of this?


I think he wants it to be over and done with it, but the two sides aren't letting that happen just yet.

I think nothing would make him happier with this case than to see Tivo and Echostar standing there with a settlement just needing his signature for approval.


----------



## nobody99

jacmyoung, let me just offer you one more tidbit regarding the fantasy where you think "Infringing Products" means anything more than the eight named DVRs. I just did a quick google search and found the first case that uses the words patent and collectively.



> By judgment dated February 7, 1980, appellants Webster Publishing Company, Ltd., Webster Home Mailing Service, Ltd., and Webster Home Mailing Service, Inc. (collectively, "Webster Publishing") and George W. Hoskins were held in contempt of court for violation of an injunction issued by the district court on October 27, 1977, and were assessed a fine, jointly and severally, in the amount of $50,000.
> [/b]


Using your logic, Webster Publishing could get out of contempt by simply changing their name. Let's say to Wehster Publishing. Right?


----------



## jacmyoung

nobody99 said:


> jacmyoung, let me just offer you one more tidbit regarding the fantasy where you think "Infringing Products" means anything more than the eight named DVRs. I just did a quick google search and found the first case that uses the words patent and collectively.
> 
> Using your logic, Webster Publishing could get out of contempt by simply changing their name. Let's say to Wehster Publishing. Right?


You certainly had not read me enough, I have said over and over, simply changing the names or the labels of those DVRs will not be good enough, because name or label change is *only colorable*, and can't avoid a contempt.

Nice try though.


----------



## jacmyoung

Curtis52 said:


> TiVo's motion was a request to find Dish in contempt. The judge has not granted that motion. The 9-4 hearing is to discuss whether TiVo's contempt motion should be granted or denied. It has not been granted yet.


If you are right, then of course a lot of what I said about whether there can be another motion or not could be off, because now you are saying the 9/4 hearing is not a contempt hearing, rather a hearing to determine if this Tivo's motion may be granted or not.

I am still very skeptical though of what you are saying, but still if the motion is denied, and denied only on the prima facie basis without any other justifications at all, then I can agree with you Tivo may file and be granted another motion.


----------



## Curtis52

jacmyoung said:


> If you are right, then of course a lot of what I said about whether there can be another motion or not could be off, because now you are saying the 9/4 hearing is not a contempt hearing, rather a hearing to determine if this Tivo's motion may be granted or not.
> 
> I am still very skeptical though of what you are saying, but still if the motion is denied, and denied only on the prima facie basis without any other justifications at all, then I can agree with you Tivo may file and be granted another motion.


 A hearing to determine whether Dish is in contempt is a contempt hearing. The 9-4 hearing is to determine whether Dish is in contempt as requested by TiVo's contempt motion. The contempt motion has not been granted yet. That's what the contempt hearing 9-4 is for.


----------



## peak_reception

scooper said:


> I thought this is what being a lawyer / practicing law is all about.


 Within bounds, yes. Dish broke the bounds by twisting words in order to evade a court order. 


> The rest of that is normal business - are you saying that YOU would have disclosed that you were working on a workaround before you had it ready ?


 Yes. 


> The "Herculean effort" is more word games to exagerate the words in a briefing, and the judge should see it that way.


 I'm just saying that such an enormous project, so central to this case, might have interested the judge if Dish saw fit to mention it to him. Why wouldn't they want him to know about it? Everything about it was legal, right?


----------



## peak_reception

jacmyoung said:


> The court will decide on or after 9/4 *whether* by not literally disabling the DVR functions constitutes disobeying the order, or *whether* his order allows Echostar to obey the order without disabling the DVR functions.


 The beauty of the word "disable" in the context of this court case is that it has no other meaning than to make inoperable. "Literally disabling" is redundant.


----------



## scooper

peak_reception said:


> I'm just saying that such an enormous project, so central to this case, might have interested the judge if Dish saw fit to mention it to him. Why wouldn't they want him to know about it? Everything about it was legal, right?


Why would you show Tivo some cards that you weren't sure would be playable ? Tivo had to know that their Media switch is not the only way to DVR - If Tivo didn't plan for that contignency let them be surprised. As it was - they got some edited notes at about the same time or shortly before.

The fact that they WERE presented for the 5-30 hearing is showing that they were at least close enough (if not there yet) for it to be viable.


----------



## peak_reception

jacmyoung said:


> So what? Everyone knows that. But did the judge say in the above DISH disobeyed the order? No, it says: ".*..or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."*


 If I were Dish that statement would scare me. For as we all know there is nothing in the language of the Court's Permanent Injunction about changing software so that the products no longer infringe.

Furthermore, TiVo has alluded to encounters with the judge where Dish actually requested that such language be included in the injunction. No one can seem to find those transcripts, if indeed they even exist, but if TiVo is remembering correctly (and telling the truth) then that's even more reason to believe that Dish will be in hot water with the judge come September 4. For if they made that request, and the judge said "No," then they went ahead in defiance of his answer, behind his back, in secret, and did it anyway. That might explain why they didn't inform the court of their "Herculean effort" to no longer infringe. If true, yet another instance of acting in bad faith. A big "If" I know, but why else would they keep their plans hidden from the judge? Even if they don't yet know it would work it seems like such an effort might win brownie points with the judge that they were making every effort to come into compliance.


----------



## peak_reception

scooper said:


> Why would you show Tivo some cards that you weren't sure would be playable ?


 Not TiVo, the Judge. Can one party approach the judge confidentially on a matter like this? I don't know the answer. But even if they had to tell TiVo too it's not like TiVo could do anything about except implore the judge to not allow it. 


> The fact that they WERE presented for the 5-30 hearing is showing that they were at least close enough (if not there yet) for it to be viable.


 Didn't Dish start the new code downloads well before May 30th?


----------



## scooper

peak_reception said:


> If I were Dish that statement would scare me. For as we all know there is nothing in the language of the Court's Permanent Injunction about changing software so that the products no longer infringe.
> 
> Furthermore, TiVo has alluded to encounters with the judge where Dish actually requested that such language be included in the injunction. No one can seem to find those transcripts, if indeed they even exist, but if TiVo is remembering correctly (and telling the truth) then that's even more reason to believe that Dish will be in hot water with the judge come September 4. For if they made that request, and the judge said "No," then they went ahead in defiance of his answer, behind his back, in secret, and did it anyway. That might explain why they didn't inform the court of their "Herculean effort" to no longer infringe. If true, yet another instance of acting in bad faith. A big "If" I know, but why else would they keep their plans hidden from the judge? Even if they don't yet know it would work it seems like such an effort might win brownie points with the judge that they were making every effort to come into compliance.


One can also argue that since this is a patent infringement trial, where your "defense" might be research that might result in your own patent, that you want to keep things quiet. Also using that context (patent infringement trial) - that comes with its own set of baggage / rules that anything not prohibited is allowed to pursue a workaround the patent under discussion, so long as it is truly a legit workaround. If Dish is going to be in "hot water" September 4th - why did the judge have to say something to Tivo's lawyer in the hearing of 5-30 ?

You can also argue that Motion 3 (the shutdown of customers units) can be intrepreted to say that if any the "Infringing Units" (the listed DVRs) are still infringing, they need to be shutdown *if they are still infringing *. I can see Greg flying all over this...


----------



## Greg Bimson

scooper said:


> You can also argue that Motion 3 (the shutdown of customers units) can be intrepreted to say that if any the "Infringing Units" (the listed DVRs) are still infringing, they need to be shutdown if they are still infringing . I can see Greg flying all over this...


Not flying, other that to say...

No, that interpretation is not even valid, as the injunction (and court procedure) dictate that the units adjudicated infringing within the customers' hands must be disabled. Any other reading is sheer folly.


----------



## scooper

peak_reception said:


> Not TiVo, the Judge. Can one party approach the judge confidentially on a matter like this? I don't know the answer. But even if they had to tell TiVo too it's not like TiVo could do anything about except implore the judge to not allow it.


I think there is some requirement that if the judge gets some info from one side, he is required to share it with the other side so they can prepare their arguement against it.



peak_reception said:


> Didn't Dish start the new code downloads well before May 30th?


Start ?!? How about FINISHED before 5-30 (at least the earliest versions) ? I wouldn't be surprised if there is a flurry of downloads happening now on fine tuning their new code. My wife keeps noticing blips in our 625 playback of recorded shows.


----------



## peak_reception

jacmyoung said:


> Because the appeals court had time after time assured the infringers that pre-approval for workaround was not necessary, that when a contempt proceeding surfaced, the rules would be applied uniformly to look at the workarounds. But in a few cases the infringers refused to accpet that assurrance, cried and cried until the lower courts relented and gave them some form of pre-approvals they wanted.


 The infringers wanted pre-approval?? Please spend a few more minutes with each post so that you don't end up saying the opposite of what you mean to say. 


> But it only happened in a few cases. For the majority of the cases there were never pre-approvals, and when contempt issue arised, workarounds were always examined very carefully, never ignored just because there were "no pre-approval."


 Yes, I realize that pre-approval is not the norm.


----------



## peak_reception

scooper said:


> I think there is some requirement that if the judge gets some info from one side, he is required to share it with the other side so they can prepare their arguement against it.


 Ok, I thought there could be some requirement like that.


> Start ?!? How about FINISHED before 5-30 (at least the earliest versions) ?


 Yes, that's why I was surprised when you wrote:


> The fact that they WERE presented for the 5-30 hearing is showing that they were at least close enough (if not there yet) for it to be viable.


----------



## Bidderman9

Curtis52 said:


> Yes they did. On 8-11.


Does anybody have a copy of their filing?


----------



## James Long

jacmyoung said:


> If the judge rules DISH not in contempt after 9/4, it must be that the new software has raised substantial open issues, that will be the *only reason* DISH is not in contempt.


:bang :bang :bang 
The software is neither plaintiff, defendant nor judge. If things start raising issues instead of parties we really are off the map of reality.

If the judge does not find DISH in contempt it means one thing ... whatever Judge Folsom says it means in his ruling. Which is likely the _*option*_ that Judge Folsom laid out in his ruling on June 5th: "_the language of the Court's Permanent Injunction *allows* EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe._" Note that this isn't a ruling that says the products do not infringe just that somehow the injunction allows software change in place of disablement. (Also note that this is an option to finding DISH in contempt.)


> Tivo cannot possibly use another contempt proceeding to catch DISH, there is nothing more to be used to catch DISH.


Yes, they can. "Not in contempt" does NOT clear the software nor the product ... it clears DISH of wrongdoing on one issue in the case. Not disabling the DVR functionality.


> Tivo will have to file a new suit, which will be a new case, not the same case as this one, to litigate the new software, hopefully prove that the new software still infringe.


No new suit required. Until the software/products are PROVEN non-infringing or PROVEN to be different enough not to be "only colorably different" this case is not over.


> So in all practicality, if DISH is not in contempt on 9/4, this case is over.


Absolutely not.



> Ok I take that back a little, Tivo of course can still appeal, and when the appeals court affirmes no-contempt, this case will be over.


No ... there is plenty more for Tivo to do in the Texas courts that do not require a victory on September 4th or on the issue being discussed on that date. The whole issue of whether or not DISH's products actually infringe is left to deal with.

September 4th is not the end.


----------



## James Long

jacmyoung said:


> You ran into the same problem as James, yes the injunction is the hook, but DISH is not on it. You simply cannnot say: "Hook=On the Hook", a two year old can see this equation is wrong.


Are you less than two years old?
I'm not saying the poorly constructed equation ... you are.


----------



## James Long

peak_reception said:


> Originally Posted by Curtis52:
> Curtis52 has convinced himself that September 4th will be just one big waste of time; A judicial charade if you will. We'll soon see if Judge Folsom agrees.


I'm not sure about calling it "a judicial charade" (and I'd let Curtis52 speak for himself by quoting where he said that instead of putting the words in his mouth). But I don't believe that September 4th will be the big finish that some are expecting ... regardless of if DISH is found in contempt (or not).

Unfortunately there will be more ... and with Judge Folsom's schedule the next step (infringement) could be heard next May. Another few months of speculation.


----------



## James Long

jacmyoung said:


> Curtis52 said:
> 
> 
> 
> Here is the motion that you say has already been granted:
> 
> 
> 
> TiVo respectfully requests that the Court issue an Order holding EchoStar in contempt of the Permanent Injunction and requiring EchoStar to comply by disabling the DVR functionality within seven calendar days in the DVR receivers specified in the injunction (i.e., DP-501, DP- 508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942).
> 
> 
> 
> 
> 
> Click to expand...
> 
> Ok, am I missing something? Are you saying the judge can again dismiss that motion on 9/4, after he had already granted it?
Click to expand...

No ... that motion has not yet been granted nor dismissed. What has been granted is a hearing on the issue to be held (if I remember correctly) sometime in early September. I'm sure you know the date better than anyone.


----------



## James Long

jacmyoung said:


> If you are correct, then am I corerct that you are also saying the 9/4 hearing will not be a contempt hearing, only a hearing to decide if Tivo's motion shall be granted or not?


It depends ... what do YOU think is happening September 4th?

The rest of us think that the court will be hearing arguments on the "Motion for Contempt" that Tivo filed June 13th per the June 6th order arising from the May 30th Status Conference. We're not sure what is happening in your parallel universe ... but in ours the "contempt hearing" is a hearing on Tivo's Motion for Contempt on the disabling issue as outlined in several hundred posts.


----------



## James Long

scooper said:


> peak_reception said:
> 
> 
> 
> Indeed, that's what happened on May 30, but sooner or later this case is coming to a head. September 4th seems like the perfect time. Do you think Judge Folsom is just going to "dink" around (i wanted to use another term  forever with all of this?
> 
> 
> 
> I think he wants it to be over and done with it, but the two sides aren't letting that happen just yet.
> 
> I think nothing would make him happier with this case than to see Tivo and Echostar standing there with a settlement just needing his signature for approval.
Click to expand...

That would be the best and most unlikely outcome. 
Neither party will be walking into September 4th with settlement papers.

I do agree that Judge Folsom wants it done with ... but he is quite happy to let the parties wait for time in his schedule. He's not thinking about this every day.


----------



## James Long

peak_reception said:


> Didn't Dish start the new code downloads well before May 30th?


IIRC DISH's filing claimed that they started development in 2006 and downloads in 2007. While there have been a "flurry" of recent updates I would not tie those to adding "Tivo free code". Per the court filings that changed a long time ago.

(The recent updates are more likely the usual bug fixes for the last update and changes needed to support new orbital locations and the increasing size of the channel tables. Even my 301 got a software update that now handles "72". There is more going on than Tivo vs Echostar.)

BTW: I enjoyed watching the Olympics tonight - I think I caught up with the thread now!


----------



## jacmyoung

Curtis52 said:


> A hearing to determine whether Dish is in contempt is a contempt hearing.


Isn't the 9/4 hearing just that?



> The 9-4 hearing is to determine whether Dish is in contempt as requested by TiVo's contempt motion. The contempt motion has not been granted yet. That's what the contempt hearing 9-4 is for.


By that you almost seem to say there is really no difference between a motion hearing and a contempt hearing. The reason I say this is if you are correct that the 9/4 hearing is about a motion hearing only, then am I correct to say there cannot be a contempt ruling at all on 9/4? Only a ruling if Tivo's motion is to be granted or not?

Again I am no lawyer so this is simply trying to find out answers.

I will say that after reading many cases, there is no doubt the lower courts have wide latitude to take actions as they see fit. For example, I think Judge Folsom could take many different actions on 9/4.

1) He could deny Tivo's motion and schedule another one three months from now.

2) He could find DISH in contempt and say this is it, DISH you disable those DVRs and this case is over. Tivo you go check into at DE court and you two can fight it over there. Or he could also tell Tivo no DISH is not in contempt and yes this case is over, you go check in with the DE court.

Or he could do something in between 1) and 2).

What should not happen is if his action, whatever he so decides, constitutes an abuse of the court discretion. One of the examples of such abuse of discretion will be to find DISH in contempt *without* looking at the new evidence of the new software, and in that case, on appeal, the appeals court will be compelled to overturn such contempt ruling and remand it back to Judge Folsom. It has been done so many times.


----------



## jacmyoung

peak_reception said:


> The beauty of the word "disable" in the context of this court case is that it has no other meaning than to make inoperable. "Literally disabling" is redundant.


The beauty of the words "disable...of the Infringing Products" are that the first word must be viewed within the confine of the second term, and when the product is no longer part of the Infringing Products, of course the first word will be inoperable on it.


----------



## Greg Bimson

jacmyoung said:


> The beauty of the words "disable...of the Infringing Products" are that the first word must be viewed within the confined of the second term, and when the product is no longer part of the Infringing Products, of course the first word will be inoperable on it.


Who changed the definition of Infringing Products? Modifying the "Infringing Products" did not change its definition.


----------



## jacmyoung

peak_reception said:


> If I were Dish that statement would scare me. For as we all know there is nothing in the language of the Court's Permanent Injunction about changing software so that the products no longer infringe.
> 
> Furthermore, TiVo has alluded to encounters with the judge where Dish actually requested that such language be included in the injunction. No one can seem to find those transcripts, if indeed they even exist, but if TiVo is remembering correctly (and telling the truth) then that's even more reason to believe that Dish will be in hot water with the judge come September 4. For if they made that request, and the judge said "No," then they went ahead in defiance of his answer, behind his back, in secret, and did it anyway. That might explain why they didn't inform the court of their "Herculean effort" to no longer infringe. If true, yet another instance of acting in bad faith. A big "If" I know, but why else would they keep their plans hidden from the judge? Even if they don't yet know it would work it seems like such an effort might win brownie points with the judge that they were making every effort to come into compliance.


Do you sense DISH is scared at all? If so they should have settled already. Please don't use those words trying to scare people, we are not juniors.

The reason there is no such transcript is because Tivo made it up. At one time DISH had asked the court to allow change of software to prove they could make the DVRs non-infringing, a proposal, which Tivo argued such proposal was to cheat the system. And after that DISH dropped such proposal, because they realized it was not necessary.

DISH didn't need any proposal, nor did they need any "pre-approval" in order to make a good faith effort to workaround this patent, and the courts had said so time after time.

But Tivo continues to bring back this item trying to paint a bleek picture of DISH, yet as I said more than once, when considering a contempt of the injunction, the court will not be influenced by anything happened in the past, whether DISH "lied" or not in the past, whether DISH tried to "hide" anything or not in the past. The court must only look at whether *the current DISH actions* constitute a violation of this injunction on infringement of this Tivo's patent, no more no less.


----------



## jacmyoung

Greg Bimson said:


> Who changed the definition of Infringing Products? Modifying the "Infringing Products" did not change its definition.


Yes it does, if by such modification, those DVRs are no longer infringing on the Tivo's patent, then they cannot possibly be defined as Infringing Products anymore.

This is precisely why Tivo tried to change the wording of the injucntion, instead of using this term "Infringing Products", they used "Adjudicated Receivers". Tivo knew the use of "Infringing Products" would get them into big trouble, that was why they changed it hoping no one would notice it.

The term "Infringing Products" was used in the injunction because DISH asked for it, and the judge agreed to it. It is in there for a clear purpose. Tivo did not contest it, or had Tivo contested it, the judge would have told them no.

So Tivo is left to try "Adjudicated Receivers", unfortunately this term is nowhere to be found in the injunction.


----------



## dgordo

jacmyoung said:


> Isn't the 9/4 hearing just that?
> 
> By that you almost seem to say there is really no difference between a motion hearing and a contempt hearing. The reason I say this is if you are correct that the 9/4 hearing is about a motion hearing only, then am I correct to say there cannot be a contempt ruling at all on 9/4? Only a ruling if Tivo's motion is to be granted or not?


A contempt hearing is a type of motion hearing.


----------



## peak_reception

Originally Posted by Greg Bimson:


> Meanwhile, there is this little 4 September hearing only regarding whether or not DISH complied with the disable order, and surprisingly enough, infringement is not an issue. If modifications and ongoing infringement were going to be an issue for this contempt hearing, the court would have ordered discovery and retained a technical advisor.





Curtis52 said:


> That's why 9-4 is a waste of time.


 Post #953, page 48.


----------



## James Long

jacmyoung said:


> By that you almost seem to say there is really no difference between a motion hearing and a contempt hearing. The reason I say this is if you are correct that the 9/4 hearing is about a motion hearing only, then am I correct to say there cannot be a contempt ruling at all on 9/4? Only a ruling if Tivo's motion is to be granted or not?


Tivo has made a motion that will be discussed on September 4th. The motion (request of the court) is to hold DISH in contempt for not disabling the DVR functionality on the named "Infringing Products". If the motion is granted DISH is in contempt.

Simple. No need to clutter it up.



jacmyoung said:


> Yes it does, if by such modification, those DVRs are no longer infringing on the Tivo's patent, then they cannot possibly be defined as Infringing Products anymore.


There is a process that needs to be followed. Modifying a product without telling anyone until much later (OOPS! Did we forget to tell you we changed software?) isn't the way you get a court to lift an injunction against an adjudicated "Infringing Product". Unless of course you want to be found in contempt and run through the appeals process like (IIRC) every case you have presented. 

This history is what casts the biggest shadow on DISH ... in the cases DISH is relying on every one of them found the defendant in contempt of the court. Which is why DISH should expect the same this time (unless Judge Folsom is specially enlightened).

It will take Judge Folsom reversing his earlier decision NOT to allow DISH to change the software to avoid the disabling required by the injunction for DISH to not be in contempt.

(And even if Judge Folsom makes that decision, the definition of "Infringing Product" does not change ... the case continues another day (month/year) with discovery and a ruling on the new software.)


----------



## nobody99

jacmyoung said:


> Yes it does, if by such modification, those DVRs are no longer infringing on the Tivo's patent, then they cannot possibly be defined as Infringing Products anymore.


If you are adding meaning to the term "Infringing Products" thinking that this is how Dish will get out of contempt, you are in for a sad day on or shortly after September 4. The term, as stated in the injunction, has a very clear and specific legal meaning. It means eight models of DVR's that were placed in customer's homes. It has nothing to do with whether they are infringing or not.



> 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.


Parenthetically referring to them collectively as the "Infringing Products" establishes absolutely zero connection between the terms and the products. They could have called said this:



> Defendants' following DVR receivers (collectively the "Shiny Monkey Butts"): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


That would no more require the DVRs to be monkey-related than the term "Infringing Products" requires them to infringe.

The clause was used simply for convenience, and nothing more.

But hey, plainly obvious facts haven't slowed you down yet, so why should it start now, right?


----------



## peak_reception

jacmyoung said:


> The reason there is no such transcript is because Tivo made it up. At one time DISH had asked the court to allow change of software to prove they could make the DVRs non-infringing, a proposal, which Tivo argued such proposal was to cheat the system. And after that DISH dropped such proposal, because they realized it was not necessary.


 Source(s) please?


----------



## peak_reception

> Originally Posted by kmill14:
> Unless this new software ensures Joe Blow's DP-501 can no longer write TV data to the hard-drive, they won't be looking at it for this hearing.





Curtis52 said:


> That's why this hearing is a waste of time.


 Post 651, Page 33


----------



## peak_reception

*



Contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders.

Click to expand...

* -- Arbek Mfg., 55 F.3d at 1570


----------



## peak_reception

Originally Posted by Greg Bimson: 


> One can take DISH/SATS word those devices were modified. However, we still haven't seen any documents filed with the court that make one iota of difference. Specifically, if it is important that colorable difference and infringement must be adjudged, TiVo must have discovery on the new software. Full discovery.





Curtis52 said:


> Fine. TiVo needs to file a motion and get on with it. The 9-4 hearing is a waste of time.


 Post #711, Page 36.


----------



## scooper

peak_reception said:


> -- Arbek Mfg., 55 F.3d at 1570


Shield - not a sword.


----------



## peak_reception

James Long said:


> I'm not sure about calling it "a judicial charade" (and I'd let Curtis52 speak for himself by quoting where he said that instead of putting the words in his mouth). (


 There. Curtis52 has re-spoken three times now where I've quoted him saying that September 4th will be a waste of time. He didn't call it "a judicial charade" as that was me extending the logic of it (adding "if you will") but he has repeatedly written that the Contempt Hearing on September 4 will be a waste of time. Curtis52 is no dummy and of course he has his reasons for saying it, but he has convinced himself that it's 100% true or he wouldn't keep repeating it. He'll probably say it again after reading this post. He might be right too but that's for the judge(s) to decide.


----------



## Greg Bimson

jacmyoung said:


> Yes it does, if by such modification, those DVRs are no longer infringing on the Tivo's patent, then they cannot possibly be defined as Infringing Products anymore.


Big mistake...

The order is to disable the DVR functionality of the Infringing Products, which were eight models of DVR which have been adjudged infringing.

If the Infringing Products were disabled, using your theory, they would no longer infringe, no longer be subject to the injunction, and no longer be "Infringing Products". That theory couldn't be much further from the truth as the Andromeda galaxy is from the sun. Procedurally, those receivers are subject to the injunction until the injunction expires. Modify them, trash them, throw them out twelve story buildings for crash tests, DISH/SATS can do whatever they'd like with them, as long as they are also disabled, as that is the order applied to them.

Using your theory, once again you are asking for DISH/SATS to have precedential treatment.


----------



## peak_reception

jacmyoung said:


> What should not happen is if his action, whatever he so decides, constitutes an abuse of the court discretion. One of the examples of such abuse of discretion will be to find DISH in contempt *without* looking at the new evidence of the new software, and in that case, on appeal, the appeals court will be compelled to overturn such contempt ruling and remand it back to Judge Folsom. It has been done so many times.


 The boss court will get to decide if Judge Folsom has abused his discretion. You're starting to sound like you think Judge Folsom will rule EchoStar In Contempt on 9-4 after all. Yes?


----------



## jacmyoung

dgordo said:


> A contempt hearing is a type of motion hearing.


Thank you, do you then agree with Curtis that Tivo's motion for finding DISH in contempt has not been granted?

If a motion for contempt finding can be the same as a contempt hearing, then to me the standard for both will be the same, in another word, to find DISH in contempt, whether through a motion hearing, or a contempt hearing, whatever you like to call it, the uniform standards required to render a contempt finding must be applied either way.

Of course Curtis will be right if the 9/4 hearing is a motion hearing, the judge can certainly deny Tivo's motion and ask Tivo to come up with a motion that actually has merit so he can grant it.

But what I am saying is the judge can also deny the motion and also rule that DISH is not in contempt based on the new software evidence, in such case any additional Tivo's motion will certainly lack any merit, because the only possible merit Tivo has, called "prima facie" merit, will have already been thrown out, and the only merit for a no contempt, ie. the new software, will have been affirmed.


----------



## jacmyoung

Greg Bimson said:


> Big mistake...
> 
> The order is to disable the DVR functionality of the Infringing Products, which were eight models of DVR which have been adjudged infringing.
> 
> If the Infringing Products were disabled, using your theory, they would no longer infringe and also no longer be subject to the injunction. Procedurally, those receivers are subject to the injunction until the injunction expires. Modify them, trash them, throw them out twelve story buildings for crash tests, DISH/SATS can do whatever they'd like with them, as long as they are also disabled, as that is the order applied to them.
> 
> Using your theory, once again you are asking for DISH/SATS to have precedential treatment.


We will just have to agree to disagree.


----------



## nobody99

I found the text regarding DISH's request to be able to download new DVR software with any injunction. However, it only refers to new sales. DISH never requested that the existing, installed DVRs have the ability to have new software downloaded to them.

As Greg has pointed out many times, as has TiVo, DISH had the opportunity to appeal the language of the injunction already. That door is now closed. They cannot have the language of the appeal changed on already-adjudicated products.

From Echostar's (1) Opposition to TiVo's Motion for Entry of Judgement and Permanent Injunction and (2) Cross-motion to Stay any Injunction Pending Appeal:



talking about boxes already sold said:


> Indeed, the scope of the injunction requested by TiVo far exceeds the permissible boundaries of a proper injunction given the jury's liability and damages verdicts. The jury awarded TiVo damanges for the DVRs already installed in customer homes. It would be improper to emjoin those cusotmers from the continued use of those DVRs. Moreover, EchoStar's only continued activity with respect to those DVRs already in customer homes is the transmission of satellite telvision programming. There has been no finding of infringement with respect to the mere transmission of satellite television programming, nor was there any finding of contributory infringement or inducement to infringe. Accordingly, it would be an improper extension of the jury's findings as to damanges and infringement to enjoin the continued use by those (redacted) DVRs already in customers homes.





talking about future sales said:


> TiVo also demands that EchoStar be enjoined from selling or distributing any of the receiver models that were found to infringe, and that EhoStar recall from distirbutors and retailers those receiver models that have "not yet entered the stream of commerce." This too is overbroad, because, as discussed above, until they are installed at a subscriber's home and receive a software download from EchoSTar's satellites, these receivers are incapable of any DVR function. *Accordingly, the appropriate scope of an injunction, if one were to issue, would enjoin only the provision of infringing DVR software to those boxes upon activation.* In this fashion, proper and non-infringing uses, e.g., to receive and display live satellite television, or to perform DVR functions in a non-infringing manner, may be made of the boxes.


Bottom line, DISH never even asked if they could download new software to the already-placed DVRs. And it's too late now that they've appealed.

In granting the injunction, the court said this, though it wasn't very particular about whether or not it referred to new sales or existing placements:



> And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. Thus, *the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages. *


In the motion for contempt, TiVo says this:



> The injunction here is clear and unambiguous. EchoStar was required to disable the DVR functionality in its illegally installed base of Adjudicated Receivers "until the expiration of the '389 patent." Judgment at 3. EchoStar has not complied. If EchoStar believed the scope of the injunction was improper, it had an opportunity and obligation to raise the issue with the Federal Circuit. But it did not. The mandate having issued, litigation about these units is over. EchoStar's various arguments to the contrary all lack merit. In light of the language of the injunction, EchoStar's argument that it has a meaningful design-around is irrelevant and, in any event, is simply wrong. EchoStar is in contempt.


----------



## jacmyoung

Then Tivo lied, can you not admit that? Tivo said DISH asked to be allowed to do one thing they did just now, to change the software for the DVRS already in the field, and it turned out through your discovery DISH never asked for such thing.

So why did Tivo keep lying on that one?


----------



## peak_reception

jacmyoung said:


> The beauty of the words "disable...of the Infringing Products" are that the first word must be viewed within the confine of the second term, and when the product is no longer part of the Infringing Products, of course the first word will be inoperable on it.


 Ah, but the Injunction didn't say to disable "Infringing Products" but rather to disable the "DVR functionality" in listed products. Those products are infringing products until ruled otherwise.


----------



## nobody99

jacmyoung said:


> Thank you, do you then agree with Curtis that Tivo's motion for finding DISH in contempt has not been granted?


Wow, seriously, this case is consuming you too much. It's really not hard.

TiVo made a motion for a hearing for the court to decide contempt.
That hearing is on 9/4. The court may or may not find DISH in contempt on 9/4.

TiVo can then make another motion for another hearing regarding contempt. The court can decide to hold a hearing or not. Ad naseum.


----------



## peak_reception

That's a good find, nobody, but it may not be the only instance where the possibility of software downloading was discussed with Judge Folsom. Otherwise I would think that Dish would've jumped all over that and said "See, we didn't ask for any such download authorization." The Judge will know the truth. If TiVo lied to him then he would know. Very reckless conduct if true.


----------



## Greg Bimson

We're arguing legalities with someone that doesn't know how a motion for contempt works or is getting to wrapped up in the wrong terminology (again).


jacmyoung said:


> Then Tivo lied, can you not admit that? Tivo said DISH asked to be allowed to do one thing they did just now, to change the software for the DVRS already in the field, and it turned out through your discovery DISH never asked for such thing.


TiVo never stated DISH/SATS asked for new software to be downloaded. TiVo quoted the exact passage nobody99 has shown:


> Accordingly, the appropriate scope of an injunction, if one were to issue, would enjoin only the provision of infringing DVR software to those boxes upon activation. In this fashion, proper and non-infringing uses, e.g., to receive and display live satellite television, or to perform DVR functions in a non-infringing manner, may be made of the boxes


DISH/SATS argument was that only the infringing DVR software should be enjoined.

TiVo's argument is that DISH/SATS has simply followed the injunction as if it were exactly as they argued. However, because the hardware claims were remanded, it would be legal if the new software doesn't infringe, but only applicable to NEW DEVICES.


----------



## nobody99

peak_reception said:


> That's a good find, nobody, but it may not be the only instance where the possibility of software downloading was discussed with Judge Folsom. Otherwise I would think that Dish would've jumped all over that and said "See, we didn't ask for any such download authorization." The Judge will know the truth. If TiVo lied to him then he would know. Very reckless conduct if true.


I totally agree - they might have brought it up elsewhere, maybe even in sealed documents.

But the more I try to digest some of the documents, I think even TiVo brought it up only in the context of new receivers. They seem to think that the installed base (order #3 from the injunction for the Shiny Monkey Butts) is a slam-dunk.


----------



## jacmyoung

peak_reception said:


> ... Those products are infringing products until ruled otherwise.


The ruling will have to be made in a contempt proceeding as whether they are still Infringing Products or not, if there is doubt whether they still are, no contempt. If there is no doubt they are still Infringing Products, a contempt.


----------



## Curtis52

jacmyoung said:


> Thank you, do you then agree with Curtis that Tivo's motion for finding DISH in contempt has not been granted?


The phrasing of your question tells me that you still don't understand. If Dish is found to be in contempt then their contempt motion will have been been granted. It isn't a matter of opinion. You don't need to poll the readers. It hasn't been granted yet. Dish hasn't been found to be in contempt yet. They haven't even had the hearing yet. Sheesh


----------



## nobody99

jacmyoung said:


> The ruling will have to be made in a contempt proceeding as whether they are still Infringing Products or not, if there is doubt whether they still are, no contempt. If there is no doubt they are still Infringing Products, a contempt.


You are too hung up on the term "Infringing Products." It means one thing - a term to identify a very specific set of three million or so DVRs, regardless of the software on them.


----------



## jacmyoung

nobody99 said:


> Wow, seriously, this case is consuming you too much. It's really not hard....


Do you say similar things in the court?

Did you not read my second part, to find DISH in contempt, the standards must be applied, motion or contempt hearing whatever you wish to call it. Without applying those standards, a finding of a contempt will constitute abuse of the court discretion.

The appeals court had said so so many times themselves, not me.


----------



## jacmyoung

Curtis52 said:


> The phrasing of your question tells me that you still don't understand. If Dish is found to be in contempt then their contempt motion will have been been granted. It isn't a matter of opinion. You don't need to poll the readers. It hasn't been granted yet. Dish hasn't been found to be in contempt yet. They haven't even had the hearing yet. Sheesh


I was not polling, I was asking both of you the question.

Do you then agree in order to find DISH in contempt, the court must apply those uniform standards? Who cares what one likes to call it, a motion or not?


----------



## jacmyoung

nobody99 said:


> You are too hung up on the term "Infringing Products." It means one thing - a term to identify a very specific set of three million or so DVRs, regardless of the software on them.


I hope you realize that is just an opinion?


----------



## peak_reception

jacmyoung said:


> Do you sense DISH is scared at all?


 Sure. I think both sides will be scared on 9-4. A lot is at stake.



> If so they should have settled already.


 Don't you remember what "Charlie" said in the recent earnings call:


> And again, its - I'm just stubborn. I know this case inside and out, I've sat through trials, I've sat through the engineering models, I've sat and have the best and the brightest explain this - and I'm just stubborn.


 When you've got $10 Billion you can afford to indulge your ego and your company in such risky, high stakes poker. 


> Please don't use those words trying to scare people, we are not juniors.


 The words were Judge Folsom's. Unlike you, I think words matter and he choose them carefully. It didn't even occur to me that someone here would be scared by what I posted. Sorry if I scared you


----------



## Greg Bimson

jacmyoung said:


> Did you not read my second part, to find DISH in contempt, the standards must be applied, motion or contempt hearing whatever you wish to call it. Without applying those standards, a finding of a contempt will constitute abuse of the court discretion.


Try again...

You believe the standards that should dictate a finding of contempt must find infringement a second time on products that have already been found infringing.

So we are only discussing which standards you believe apply in a contempt. I BELIEVE the order to disable does not have to evaluate infringement at all, because evaluating infringement is done on devices which have not been in front of the court before. I believe 100 percent that you are using the wrong standard.


----------



## James Long

peak_reception said:


> James Long said:
> 
> 
> 
> I'm not sure about calling it "a judicial charade" (and I'd let Curtis52 speak for himself by quoting where he said that instead of putting the words in his mouth).
> 
> 
> 
> He didn't call it "a judicial charade" as that was me extending the logic of it (adding "if you will") but he has repeatedly written that the Contempt Hearing on September 4 will be a waste of time.
Click to expand...

Good ... then we are agreed that calling it "a judicial charade" was your words and not Curtis52's.

A waste of time?


James Long said:


> I don't believe that September 4th will be the big finish that some are expecting ... regardless of if DISH is found in contempt (or not).
> 
> Unfortunately there will be more ... and with Judge Folsom's schedule the next step (infringement) could be heard next May. Another few months of speculation.


I suppose anyone who wants a big finish would consider September 4th a time waster. What are the options?

*Tivo's Motion for Contempt is granted -*
DISH is in contempt, the DVRs keep working (despite threats and dire predictions) and DISH appeals. Tivo moves on to the next step of their multistep process and asks for discovery to prove that the ViP series receivers (which were apparently using infringing software in 2006 before the great alleged software change) are only colorably different from the named receivers and should also be under the injunction.​
*Tivo's Motion for Contempt is denied -*
DISH is not in contempt, the DVRs keep working (as permitted) and Tivo appeals. Tivo moves on to the next step of their multistep process and asks for discovery on the new software alleging that the new software is only colorably different than that found to be previously infringing.​
Either way we are discussing software well into next year ... even beyond contempt (or not).


----------



## James Long

jacmyoung said:


> We will just have to agree to disagree.


Can't we just agree that Greg is right?


----------



## dgordo

jacmyoung said:


> Thank you, do you then agree with Curtis that Tivo's motion for finding DISH in contempt has not been granted?


Im not sure what you are asking, Tivo filed a motion for DISH to be held in contempt. On 9/4 Judge Folsom will hear arguments on this motion in a hearing and then make a decision.


----------



## James Long

jacmyoung said:


> peak_reception said:
> 
> 
> 
> ... Those products are infringing products until ruled otherwise.
> 
> 
> 
> The ruling will have to be made in a contempt proceeding as whether they are still Infringing Products or not, if there is doubt whether they still are, no contempt. If there is no doubt they are still Infringing Products, a contempt.
Click to expand...

Absolutely not ... certainly not in the September 4th hearing. The products DO NOT need to be ruled non-infringing for DISH to avoid contempt. A ruling dismissing Tivo's motion for contempt DOES NOT clear DISH's software or products.


----------



## nobody99

James Long said:


> *Tivo's Motion for Contempt is granted -*
> DISH is in contempt, the DVRs keep working (despite threats and dire predictions) and DISH appeals. Tivo moves on to the next step of their multistep process and asks for discovery to prove that the ViP series receivers (which were apparently using infringing software in 2006 before the great alleged software change) are only colorably different from the named receivers and should also be under the injunction.​


Do you believe that the receivers will keep working if Judge slaps them with a fine of $1 million per day? $5 million?

At what number does Dish cry uncle (assuming contempt is found).

Furthermore, I believe there will a much smaller chance of a stay during appeal. So appeal away, but they will be in contempt during the entire duration of that appeal.


----------



## spear61

nobody99 said:


> Do you believe that the receivers will keep working if Judge slaps them with a fine of $1 million per day? $5 million?
> 
> At what number does Dish cry uncle (assuming contempt is found).
> 
> Furthermore, I believe there will a much smaller chance of a stay during appeal. So appeal away, but they will be in contempt during the entire duration of that appeal.


Odds on Dish wins but if they lose odds are they will pay court costs and not much else


----------



## peak_reception

James Long said:


> Good ... then we are agreed that calling it "a judicial charade" was your words and not Curtis52's.


 Of course those were my words. That's why I added "if you will" to it. The online Merriam-Webster Dictionary gives a definition of "charade" as follows:


> An empty or deceptive act or pretense <his concern was a charade>


 Saying over and over that 9-4 will be a waste of time does make it sound like an empty action, at least to me. The deception aspect was more in line with my argument that Judge Folsom would *not* schedule a big waste of time like that, and if he did then it would amount to deceiving TiVo into thinking that there was something to be gained by so doing. Not allowing discovery on the new software would only increase the deception. I don't think Judge Folsom is deceiving anyone and I don't think 9-4 will be a waste of time either. Certainly not both, in the form of a charade. p.s. If Curtis thought I had mischaracterized his attitude toward 9-4 then he is certainly capable to speak up for himself and set me straight


----------



## scooper

I don't think it will be a charade, but it will be a big disappointment as far as any fireworks on this forum...


----------



## Greg Bimson

I don't believe that the decision on contempt will be handed down on 4 September, either. It could be, but it is doubtful. But the fireworks on this forum will still erupt.


----------



## peak_reception

Greg Bimson said:


> I don't believe that the decision on contempt will be handed down on 4 September, either. It could be, but it is doubtful. But the fireworks on this forum will still erupt.


 Well, no, not on the 4th (in all likelihood), but hopefully not long after. And we might all get a good sense of what it will be by how the exchanges with Judge Folsom go. If it's another deflated air bag like May 30 then I for one will be very disappointed. But somehow I'll manage to soldier on.  Well, it's time to throw some burgers on the barbecue with Olympics to follow. Maybe even a beer! :goodjob:


----------



## James Long

nobody99 said:


> Do you believe that the receivers will keep working if Judge slaps them with a fine of $1 million per day? $5 million?


If you're going to choose obscenely high figures you might as well say $5 billion or $5 trillion. 

I don't believe the "fee" for being in contempt would be anywhere near that high.



spear61 said:


> Odds on Dish wins but if they lose odds are they will pay court costs and not much else


That is much closer to what I was thinking. Judge Folsom does not seem to have a personal interest in this case ... he won't charge a vindictive fee. Besides, Tivo has not asked for one.

What Tivo has asked for if DISH is found guilty is an order of:
"EchoStar is ordered to comply with the injunction within seven calendar days."

Damages? "TiVo ... reserves its right to request appropriate financial remedies after a finding of contempt by this Court."


----------



## James Long

peak_reception said:


> The deception aspect was more in line with my argument that Judge Folsom would *not* schedule a big waste of time like that, and if he did then it would amount to deceiving TiVo into thinking that there was something to be gained by so doing.


I believe there is merit in the contempt hearing ... something important to decide that warrants requiring Tivo to wait on discovery and the "if-then" next steps of their complaints of May 30th ... but the outcome will be more fizzle than a definitive ending.


Greg Bimson said:


> I don't believe that the decision on contempt will be handed down on 4 September, either. It could be, but it is doubtful. But the fireworks on this forum will still erupt.


"The outcome of the September 4th hearing" is a more accurate way of putting it ... and since we don't know the date that outcome will become known calling it "September 4th" is as good anything.

Someone will be wrong, and I'm sure everyone here could say in unison (referring to themselves) "it won't be me".


----------



## jacmyoung

Greg Bimson said:


> I don't believe that the decision on contempt will be handed down on 4 September, either. It could be, but it is doubtful. But the fireworks on this forum will still erupt.


Did you mean no actual ruling on that day, or Tivo will not get a contempt ruling from this 9/4 hearing?


----------



## Greg Bimson

No ruling on that day.


----------



## nobody99

James Long said:


> If you're going to choose obscenely high figures you might as well say $5 billion or $5 trillion.
> 
> I don't believe the "fee" for being in contempt would be anywhere near that high.
> 
> That is much closer to what I was thinking. Judge Folsom does not seem to have a personal interest in this case ... he won't charge a vindictive fee. Besides, Tivo has not asked for one.
> 
> What Tivo has asked for if DISH is found guilty is an order of:
> "EchoStar is ordered to comply with the injunction within seven calendar days."
> 
> Damages? "TiVo ... reserves its right to request appropriate financial remedies after a finding of contempt by this Court."


I would gues it will be more like $6 a month per dvr still in service. Reasonable License x 3. That works out to about between $18 and $24 million per month.

Nevertheless, it could go higher. The court is not going to like a company flat out refusing to obey its order.


----------



## jacmyoung

Greg Bimson said:


> Try again...
> 
> You believe the standards that should dictate a finding of contempt must find infringement a second time on products that have already been found infringing.
> 
> So we are only discussing which standards you believe apply in a contempt. I BELIEVE the order to disable does not have to evaluate infringement at all, because evaluating infringement is done on devices which have not been in front of the court before. I believe 100 percent that you are using the wrong standard.


You can not ignore those standards, the best you can say is there had not been many prior cases in which the products already sold were involved. But that is not to say the products already sold will be under a different set of standards, unless you can produce a court standard that said products already sold may not be subject to those uniform standards, because the standards established made absolutely no attempt to separate the products already sold or already in the field, from the products not already sold or produced.

As a result, the standards *must* apply to all products, sold or not, in the hands of the end users or not, until such time the court makes a clear, unambiguous statement that all the standards shall not apply to products already sold or in the field.

That is how the law and the court work, when a law, or a rule contains reasonable disputed interpretation or ambiguity, the defendant gets the benefit.  It is too bad Tivo is not the defendant, otherwise Tivo would have had that benefit.


----------



## jacmyoung

Greg Bimson said:


> No ruling on that day.


That is not much a prediction, it usually takes courts a lot of time to prepare rulings.


----------



## Greg Bimson

jacmyoung said:


> But that is not to say the products already sold will be under a different set of standards, unless you can produce a court standard that said products already sold may not be subject to those uniform standards, because the standards established made absolutely no attempt to separate the products already sold or already in the field, from the products not already sold or produced.


Sure they are different standards.

In an injunction against infringements, the _modified_ product has not been adjudicated, and must be found not only infringing but also merely colorably different before it can be considered in contempt.

In an injunction order which requires an action, such as disabling adjudicated products, there is no need to establish whether or not they infringe *again* because they've already been found to infringe. The order is to disable; there is no evaluation needed, other than to see if the products have been disabled.


----------



## jacmyoung

peak_reception said:


> ... Don't you remember what "Charlie" said in the recent earnings call:


You did not understand what Charlie meant, what he was saying was, he would still try to settle with Tivo after he is found not in contempt, he was signaling the investors that he will try to reduce, if not eliminate the $100 million to be paid to Tivo by settling with Tivo after no contempt, with some form of working together. Such is done all the time.



> ...Sorry if I scared you


You raised this issue of being scared, I did not use that word, because I did not even think anyone should be scared. It never even occurred to me anyone of us should be scared, maybe it was you, at least you had that thought.


----------



## Curtis52

jacmyoung said:


> Isn't the 9/4 hearing just that?


Bingo.


> By that you almost seem to say there is really no difference between a motion hearing and a contempt hearing.


There are all kinds of motions. If a hearing is to discuss granting a contempt motion then it's a contempt hearing (just like the one on 9-4). If Dish is found in contempt, TiVo's motion will be granted simultaneously with the finding of contempt. After all, that's what TiVo asked for in the motion.


----------



## jacmyoung

Greg Bimson said:


> Sure they are different standards.
> 
> In an injunction against infringements, the _modified_ product has not been adjudicated, and must be found not only infringing but also merely colorably different before it can be considered in contempt.
> 
> In an injunction order which requires an action, such as disabling adjudicated products, there is no need to establish whether or not they infringe *again* because they've already been found to infringe. The order is to disable; there is no evaluation needed, other than to see if the products have been disabled.


Your above statement goes in stark contrast to the following standard:

In a *contempt proceeding*, the court must *first* look at the differences between the accused devices (the DVRs with the new software), and the adjudicated devices (the DVRs with the old software) and determine whether the differences are mere colorable or not, and make a contempt ruling based on that.

To defeat the above standard, you must first tell the judge the 9/4 proceeding is *not a contempt proceeding*, because the above standard covers all contempt proceedings, nothing in that standard says it is for some of the contempt proceedings, but not for the others.

Secondly, you must prove to the court that there are *no differences* between the accused devices (the DVRs with the new softwware) and the adjudicated deivces (the DVRs with the old software).

If you cannot convince the court of the above, then next you must convince the court the differences are merely colorable.

There is no way around it. The wall that has been established by the courts to protect both the infringers and the patentees has stood the test of time for nearly 100 years and after thousands of patent cases, and is air tight, that is why many of you had tried to find case law to disprove them but failed.

The only thing left for you to say is well this one is unique, first of its kind, it needs no precedent, needs not be subject to all the standards, well good luck with that.


----------



## jacmyoung

Curtis52 said:


> Bingo.
> There are all kinds of motions. If a hearing is to discuss granting a contempt motion then it's a contempt hearing (just like the one on 9-4). If Dish is found in contempt, TiVo's motion will be granted simultaneously with the finding of contempt. After all, that's what TiVo asked for in the motion.


But to find DISH in contempt without looking at the new software evidence, ie the differences between the accused and the adjudicated, the court will have abused its discretion according to the appeals court, and the ruling will be overturned on appeal.

If there is no contempt ruling from the 9/4 hearing, the court must also explain to Tivo why. And the only reason there is no contempt, or the motion for contempt is denied, will be of the new software evidence.

Without the new software at play, DISH *will be* in contempt from the 9/4 hearing, or the Tivo motion for contempt will be granted, period, no matter how you call it a contempt, or a motion for contempt.


----------



## Curtis52

jacmyoung said:


> But to find DISH in contempt without looking at the new software evidence, ie the differences between the accused and the adjudicated, the court will have abused it discretion according to the appeals court, and the ruling will be overturned on appeal.
> 
> If there is no contempt ruling from the 9/4 hearing, the court must also explain to Tivo why. And the only reason there is no contempt, or the motion for contempt is denied, will be of the new software evidence.
> 
> Without the new software at play, DISH *will be* in contempt from the 9/4 hearing, period.


The worst outcome for TiVo would be a ruling of contempt. It would be stayed within a few hours and overturned on appeal. Meanwhile, all the dithering gives Dish a foothold in Delaware and delays or prevents looking at the software in Texas.


----------



## Greg Bimson

jacmyoung said:


> In a *contempt proceeding*, the court must *first* look at the differences between the accused devices (the DVRs with the new software), and the adjudicated devices (the DVRs with the old software) and determine whether the differences are mere colorable or not, and make a contempt ruling based on that.


Then why isn't the court looking at the differences on 4 September? Why isn't there a technical advisor for Judge Folsom?

Because procedurally, you are incorrect, as contempt can take many different forms, and your standard is only for finding contempt of an injunction against infringement.

You can insist that differences must be found, but I certainly DO NOT SEE any "colorably different" language in the order to disable; the "colorable difference" language is only in the order to stop infringing.


----------



## James Long

jacmyoung said:


> In a *contempt proceeding*, the court must *first* look at the differences between the accused devices (the DVRs with the new software), and the adjudicated devices (the DVRs with the old software) and determine whether the differences are mere colorable or not, and make a contempt ruling based on that.


First of all that "standard" cannot apply to all "contempt proceedings" because not all "contempt proceedings" involve devices, infringement, etc. Open up your mind to something beyond the VERY NARROW category that you are boxing yourself into. You're in the wrong box!

LOOK at the hearing that is actually taking place. READ the motion for contempt and the opposition and reply to opposition. FOCUS like a laser beam on THIS CASE and THIS PROCEEDING so that you can UNDERSTAND what is happening on September 4th.

The accusation that DISH faces September 4th is pure, simple and clear. An injunction is in force that REQUIRES DISH to disable the DVR functionality on all but a few DVRs of eight specific models.

The Motion for Contempt filed is not a question of infringement ... it is a question of following the court's order. It has NOTHING to do with the software nor colorable difference nor the phase of the moon. The question teh court agreed to hear (PER COURT ORDER) is:
whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo _*or*_ whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.​Howl at the moon or make a million more posts ... that is the question that will be dealt with on September 4th. Damages from 2006 through 2008 will also be delt with but NO question of 'colorable difference' or 'infringing software' will be answered.

A long as you're not understanding the question your answers remain irrelevant. Good to look ahead to a phase of the case where Tivo actually files a motion for contempt alleging that the software still infringes and/or other models also use the software ruled infringing ... but of NO USE for this phase of the case. Period.


----------



## jacmyoung

Curtis52 said:


> The worst outcome for TiVo would be a ruling of contempt. It would be stayed within a few hours and overturned on appeal. Meanwhile, all the dithering gives Dish a foothold in Delaware and delays or prevents looking at the software in Texas.


That may sound unbelievable but I agree. First you are right, as long as a contempt ruling is appealable, it will be stayed, I have never seen a contempt ruling not stayed pending appeal, and I also believe it will be overturned for reasons I stated before. While pending appeal, Tivo cannot do anything, which I think is what you are saying, and I also tend to agree. Since the appeal will take a long time to go through, the DE case will likely go the DISH's way because the DE decision will not take long.

Which is why I believe Tivo was forced to discuss the new software in its final response, because by participating in the new software debate, Tivo makes it an issue of this court, gives merit to Tivo's claim in front of the DE court that the new software is a contested item in the Texas Court. It is a double edged sword of course. On the other hand, DISH by filing the new software suit, also managed to force Tivo to debate the new software in the 9/4 contempt hearing.

The best scenario, if as you said is possible, it that Judge Folsom denies Tivo's prima facie contempt motion because judge tells Tivo it cannot happen when there is modification involved, but refuses to touch the new software. In that case Tivo may have time before the DE court renders a final decision to motion for a discovery for the new software colorable difference determination, and if Judge Folsom grants such motion in time, DISH will likely lose in DE, but even if the Texas court does not grant such motion in time, Tivo can still claim the new software will be contested elsewhere so the DE court may dismiss DISH's lawsuit.

Of course most of the above are speculations only.


----------



## jacmyoung

Greg Bimson said:


> ...as contempt can take many different forms,


But they must all follow the same standdard, because the standard as I quoted, never says it applies to only some forms of the contempt proceedings but not the others. If there are other forms that this rule simply does not apply, it will have to be stated clearly which types of of them do not apply, which do. Not stating such condition, at a minimum, creates ambiguity, and DISH as the defendant must receive the benefit of it, not Tivo.



> and your standard is only for finding contempt of an injunction against infringement.


First this is not my standard, secondly, you apparently are convinced the 9/4 contempt proceeding is a special kind of contempt proceeding.

For one thing, all contempt proceedings are for finding violation of injunction against infringement, you have yet provided a single example indicating otherwise. For the other, even the prima facie contempt you quoted was a violation of an injunction against infringement. And that prima facie contempt existed beause there was no modification found. Whenever modification was found, no prima facie contempt, because other standards dictated so:

Mere violation of the injunction [prima facie violation] is not enough, infringement must also be found, and, infringement is the sine qua non of violation of injunction on infringement.



> You can insist that differences must be found, but I certainly DO NOT SEE any "colorably different" language in the order to disable; the "colorable difference" language is only in the order to stop infringing.


The coloarable difference reference is not in the disable order because an injunction never anticipates future events, only can be based on the final judgment itself. And at the time of that final judgment, no new software was at issue nor could it be discussed, nor anticipated, even if DISH had made a proposal of it, unless the court decided to include it. In most cases the injunctions do not do that. Therefore there was no need to include the colorable difference reference in the second order. That second order deals with adjudicated products that carried the adjudicated (old) software, both were adudicated items, no colorable difference issues exist with adjudicated items.

But once some differences surface (as the result of modification), no matter how big or small they are, and in a contempt proceeding, such differences *must first* be looked at, there is no exception, the court by not doing so will have abused its discretion.

That is why I continue to have difference with Curtis on this one, he believes it is possible for the judge to conclude the 9/4 contempt proceeding without looking at the differences, because as you said, and I agree, there is no such thing on the agenda on 9/4, but to me it does not change anything, if the judge does not *first looke at the differences* on 9/4, he will have abused his discretion, whether he sides with DISH, or with Tivo on 9/4.

Except one thing, if he shall abuse such discretion and at the same time tells Tivo no your motion is denied, then there will be no appeal, because denial of a motion is not appealable, such decision is called a interlocutory decision and usually not appealable, mainly because an interlocutory desicion is not a final decision. Only a final decision, such as a contempt of the order ruling, will be appealable.

But this is for Curtis, even if in the above scenario the abuse of discretion is not addressed since it is not appealable, such abuse of discretion can be brought up in another appeal later, if necessary.

For example, if the judge tells Tivo no I cannot grant you this prima facie contempt motion because there is modification involved, but I am not going to touch the modification yet because it is not on my agenda, you Tivo submit me another motion that includes the new software. And after another three months, a new contempt hearing is conducted and the judge then finds DISH in contempt. On appeal, DISH can argue that the judge not only abused his discretion in finding them in contempt, presumably because the judge decides the new software is only colorably different, DISH can also argue that the judge abused his discretion during the 9/4 hearing for not looking at the new software difference back then.


----------



## Greg Bimson

Talking out of both sides of your mouth again...


jacmyoung said:


> The coloarable difference reference is not in the disable order because an injunction never anticipates future events, only can be based on the final judgment itself.


The "colorably different" language is there to anticipate future events.


jacmyoung said:


> For one thing, all contempt proceedings are for finding violation of injunction against infringement, you have yet provided a single example indicating otherwise.


So if the court orders someone to produce a witness or evidence, patent infirngement must be found, because "all contempt proceedings are for finding violation of injunction against infringement".


jacmyoung said:


> but to me it does not change anything, if the judge does not *first looke at the differences* on 9/4, he will have abused his discretion, whether he sides with DISH, or with Tivo on 9/4.


Yet there is no techinical advisor for the court, and it has been stated this hearing is only a legal question.

Over and over again. It never ends.


----------



## Greg Bimson

Or maybe the most telling argument of all...


Greg Bimson said:


> ...as contempt can take many different forms,





jacmyoung said:


> But they must all follow the same standdard, because the standard as I quoted, never says it applies to only some forms of the contempt proceedings but not the others. If there are other forms that this rule simply does not apply, it will have to be stated clearly which types of of them do not apply, which do. Not stating such condition, at a minimum, creates ambiguity, and DISH as the defendant must receive the benefit of it, not Tivo.


I am hoping you are kidding.

Plaintiff: I'd like to file a motion for contempt.
Judge: For what?
Plaintiff: You have ordered the defendant, a reporter, to give us the name of the source he used for the story that was found to be libelous.
Judge: Okay. First I must check to see if the defendant has a modified device that infringed on a patent...
Plaintiff: Your Honor, we are not filing a motion of contempt against an injunction for infringement, this is a "prima facie" violation of your order, to produce the name of the source.
Judge: But jacmyoung says the standard for a violation of an order must first check to see if infringement still exists.
Plaintiff: That standard would be if this were a motion for contempt for ongoing infringement, for products that have not been before this court before. The only standard needed to determine if the order to produce a witness is:
1) An order was given and in effect,
2) The defendant had knowledge of that order, and
3) The defendant did not do their best to satisfy following that order.

Besides:


> But they must all follow the same standdard, because the standard as I quoted, never says it applies to only some forms of the contempt proceedings but not the others.


The standards you have cited, over and over again, would be if TiVo was accusing DISH/SATS of continually infringing on the Time Warp patent with modified devices, which have never been before the court before.

Instead, TiVo is accusing DISH/SATS of ignoring the order to disable products that have been before the court before and were already found infringing. It commits violence against the judiciary to have TiVo drag the three million plus devices already found infringing into another suit, to find them infringing again.

That is not how the system works. Once found guilty, unless there is a remand or retrial, guilt has been established and will not have to be tried again. It is the basis of our court system.


----------



## James Long

jacmyoung,

Let us know when you want to discuss this case and the motion that will be dealt with on September 4th and we'll let you know if/when the Tivo vs Echostar case in Texas ever gets to the level where infringement and software are an issue.

Until then, could you go back a few posts and read what this case and September 4th is about?


----------



## dgordo

No. 08-179 
Title: EchoStar Communications Corporation, et al., Petitioners 
v. 
TiVo, Inc.

Docketed: August 13, 2008 
Lower Ct: United States Court of Appeals for the Federal Circuit 
Case Nos.: (2006-1574) 
Decision Date: January 31, 2008 
Rehearing Denied: April 11, 2008

~~~Date~~~ ~~~~~~~Proceedings and Orders~~~~~~~~~~~~~~~~~~~~~ 
Jun 26 2008 Application (08A1) to extend the time to file a petition for a writ of certiorari from July 10, 2008 to August 11, 2008, submitted to The Chief Justice. 
Jun 27 2008 Application (08A1) granted by The Chief Justice extending the time to file until August 11, 2008. 
Aug 11 2008 Petition for a writ of certiorari filed. (Response due September 12, 2008)

--------------------------------------------------------------------------------

~~Name~~~~~~~~~~~~~~~~~~~~~ ~~~~~~~Address~~~~~~~~~~~~~~~~~~ ~~Phone~~~ 
Attorneys for Petitioners: 
Beth S. Brinkmann Morrison & Foerster LLP (202) 887-1544 
2000 Pennsylvania Ave., N.W. 
Washington, DC 20006-1888 
[email protected] 
Party name: EchoStar Communications Corporation, et al.


----------



## Curtis52

dgordo said:


> Aug 11 2008 Petition for a writ of certiorari filed. (Response due September 12, 2008)


"3. Any brief in opposition shall be filed within 30 days 
after the case is placed on the docket, unless the time is ex- 
tended by the Court or a Justice, or by the Clerk under Rule 
30.4. "


----------



## James Long

http://origin.www.supremecourtus.gov/docket/08a1.htm
http://origin.www.supremecourtus.gov/docket/08-179.htm

FYI: The September 12th date comes from the court.


----------



## Bidderman9

Curtis52 said:


> "3. Any brief in opposition shall be filed within 30 days
> after the case is placed on the docket, unless the time is ex-
> tended by the Court or a Justice, or by the Clerk under Rule
> 30.4. "


The response, I assume that would be from TiVo? Sorry, I am not a legal type. 
Also, is there any way to get a copy of the Petition that E* filed?


----------



## James Long

Yes, that is the date that Tivo needs to file their opposition before.

I don't see a site that shares the filings publicly ... if anyone knows of one I'll be glad to pull the documents and post them.


----------



## nobody99

James Long said:


> http://origin.www.supremecourtus.gov/docket/08a1.htm
> http://origin.www.supremecourtus.gov/docket/08-179.htm
> 
> FYI: The September 12th date comes from the court.


Links don't seem to work any more. Settlement imminent? :lol:


----------



## harsh

It is truly amazing how poor the US gubmint sites are with their search facilities. I wasn't able to find any dockets mentioning Echostar (or TiVo). You would think that even if a case was dismissed or tossed out, there would be some record.


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## James Long

The links worked when posted ... odd. It looks like they messed something up.


----------



## BNUMM

I tried them shortly after they were posted and they worked then.


----------



## Bidderman9

nobody99 said:


> Links don't seem to work any more. Settlement imminent? :lol:


Interesting. The don't show up in the docket search either.


----------



## jacmyoung

Greg Bimson said:


> ...Besides:The standards you have cited, over and over again, would be if TiVo was accusing DISH/SATS of continually infringing on the Time Warp patent with modified devices, which have never been before the court before....


Precisely what Tivo did, although Tivo wished to separate the DVRs already sold, from the DVRs not on the market yet, to which I have already told you they will fail, because the standards do not make such separation, therefore they are all treated the same:

The DVRs on the list as they stand now, have not been before the court, in a sense that the hardware part has been reversed, so no more hardware issue to even begin with, and the software part has been replaced, the item before the court (the old software) no longer exists, the one that is before the court now, is the new software, never before adjudicated.

As a result the colorable difference test must take over. I know you can't understand it, but soon you will.


----------



## dgordo

Bidderman9 said:


> Interesting. The don't show up in the docket search either.


It wouldnt show up in a docket search unless SCOTUS agreed to hear the case.


----------



## peak_reception

jacmyoung said:


> The DVRs on the list *as they stand now*, have not been before the court, in a sense that the hardware part has been reversed, so no more hardware issue to even begin with, and the software part has been replaced, the item before the court (the old software) no longer exists, *the one that is before the court now*, is the new software, never before adjudicated.


 Hello Jac, sorry if I got a little testy a few days ago. Overworked and underpaid.  I've put two of your above sentence fragments in bold in order to highlight two important points:

1) The DVRs _*as they stand now*_, still legally infringe. Period. They'll retain that infringing status unless or until they are judged to be no longer infringe.

2) The new software is *not* before the court now. It's been mentioned but that's different from being formally addressed. It might be mentioned on September 4 too, but not in any depth. The new software's time will come, either in TX or in DE, but it hasn't come yet. September 4 is NOT about the new software. September 11, in DE, IS about the new software.

And now, back to the Olympics!


----------



## jacmyoung

peak_reception said:


> Hello Jac, sorry if I got a little testy a few days ago. Overworked and underpaid.  I've put two of your above sentence fragments in bold in order to highlight two important points:
> 
> 1) The DVRs _*as they stand now*_, still legally infringe. Period. They'll retain that infringing status unless or until they are judged to be no longer infringe.


They will be judged on 9/4, if the judge follows the rules, and they do not have to be ruled as no longer infringing, as long as there is doubt as whether they still infringe or not, DISH is in the clear.



> 2) The new software is *not* before the court now. It's been mentioned but that's different from being formally addressed. It might be mentioned on September 4 too, but not in any depth. The new software's time will come, either in TX or in DE, but it hasn't come yet. September 4 is NOT about the new software.


The new software is before the court on 9/4, and if the judge follows the rules, it will be the first thing to be looked at, because the new software is what makes the current DVRs on the list, different than the adjudicated DVRs mentioned in the injunction. In a contempt proceeding, the difference must first be looked at, not anything else.



> September 11, in DE, IS about the new software.
> 
> And now, back to the Olympics!


Sept 11 is about a new trial, nothing to do with 9/4 in a sense that the 9/4 is a contempt proceeding, part of the old trial. And the new software infringement will not be discussed on 9/4, only the colorable difference issue, which is why the 9/11 meeting should not be influenced by the 9/4 hearing, because each is for a different purpose.

Olympics broadcasts by NBC so far suck big time, very little live competitions, too much commercials and human intersest stories. To each's own of course.


----------



## Greg Bimson

I know it is easy to understand, but I don't know why the arguing continues.

Wait. I know why:


jacmyoung said:


> The DVRs on the list as they stand now, have not been before the court, in a sense that the hardware part has been reversed, so no more hardware issue to even begin with, and the software part has been replaced, the item before the court (the old software) no longer exists, the one that is before the court now, is the new software, never before adjudicated.


The items before the court, the *adjudicated infringing receivers*, have been before the court, which is how they've become *adjudicated infringing receivers*. Just because DISH/SATS has modified between one bit to one billion bytes of code does not change the fact that those are adjudicated infringing receivers.


jacmyoung said:


> Precisely what Tivo did, although Tivo wished to separate the DVRs already sold, from the DVRs not on the market yet, to which I have already told you they will fail, because the standards do not make such separation, therefore they are all treated the same:


That is wholly incorrect.

In a patent infringement suit, there are normally two actions ordered of every infringer:

1) The infringer and other business parties now and in the future cannot sell or use the infringing product (i.e., the injunction against infringement); and,
2) The install base of those infringing products must be addressed, either by monetary damages or by a recall or disable order.

*The injunction order itself divides the two parts: the first is where DISH/SATS is enjoined and restrained on future sales of the "Infringing Products"; the second is where DISH/SATS must rectify prior sales of infringing products, by disabling those products adjudicated to infringe.*

The court ordered that DISH/SATS modify the products found infringing and installed in customers' homes. There is only one modification ordered: to disable storage to and playback from a hard disk drive of television data. Because the *adjudicated infringing products will be subject to the injunction until the injunction expires along with the Time Warp patent,* the only modification *acceptable to the court will be disabling those DVR's*, as the standard for violating an injunction order is rather simple to prove, especially when the defendant has not complied with that order.

You can state the modification has not been before the court before. I agree. So if TiVo wants to go after the "modified products", they certainly can. But a subset of those products already sold to customers have been addressed before the court, and those have been ordered by the court to have their DVR functionality removed, not modified.


----------



## Mainer_ayah

Mainer_ayah said:


> The only thing that I think is telling of the judges frame of mind is that on 6/16/08 Echostar submitted their proposed docket control order (doc #834), and the court was silent. On 6/17/08 Tivo submitted their proposed docket control order (doc #835, which included, by the way, the mention of the evidentiary hearing) And within , as i recall, a couple of hours the court fired the same document out, unedited, (doc #836) as an order. Yes, I think that spoke volumes to the judges frame of mind, he was pissed off because all E* had told him about was the stuff that was agreed to, TiVo showed all the items and noted which were not agreed to. The judge was obviously livid with Echostar and their ongoing obstinance.
> 
> The notation of the witnesses and evidentiary hearing was an item included in Tivos original submission, it was not something that was included by the judge as you seem to be implying.
> 
> And as far as me being a noob, I am a noob to this board, not to this case. If you'd like to see any of the documents referenced above please feel free to visit my web site on the topic: -southernme.com/DAVY_v_GOLIATH/


James Long,
jacmyoung,
Curtis52,

I think the fact that E* filed their response today, despite the fact that they never agreed to it supports my argument that judge Folsom, when he saw TiVo's proposed schedule, reacted swiftly by rendering the proposal as an order (in fact within hours). Also, I feel that my theory that Judge Folsom was fed up with the Dish foot dragging is supported by the filing of the response today.


----------



## James Long

dgordo said:


> Bidderman9 said:
> 
> 
> 
> Interesting. The don't show up in the docket search either.
> 
> 
> 
> It wouldnt show up in a docket search unless SCOTUS agreed to hear the case.
Click to expand...

Actually they showed up under the docket search when found on Sunday (and previously). That's where the status information has been coming from.



jacmyoung said:


> As a result the colorable difference test must take over. I know you can't understand it, but soon you will.


Actually it is you that needs to come to an understanding. The contempt motion IS NOT a question of infringement.

And yes, I realize that no matter how many times it is said by no matter how many people you probably won't understand that. But the truth needs to be stated occasionally (and apparently often).


----------



## James Long

Mainer_ayah said:


> James Long,
> jacmyoung,
> Curtis52,
> 
> I think the fact that E* filed their response today, despite the fact that they never agreed to it supports my argument that judge Folsom, when he saw TiVo's proposed schedule, reacted swiftly by rendering the proposal as an order (in fact within hours). Also, I feel that my theory that Judge Folsom was fed up with the Dish foot dragging is supported by the filing of the response today.


Damages during the stay of the injunction have been part of the plan for September 4th since May 30th. No change there. Our argument was over the interrogatories that Tivo wanted DISH to file ... that was the "not agreed" part of the docket.

DISH's filed a "Response to Motion on Remand for Damages During the Stay of the Permanent Injunction". Unfortunately sealed, as was the motion they are responding to. Your opinion as to the content of what sealed documents include is noted ... but it is a case of "your guess is as good as and certainly no better than ours".

(There is no magic decoder ring for these sealed documents.  )


----------



## dgordo

James Long said:


> Actually they showed up under the docket search when found on Sunday (and previously). That's where the status information has been coming from.


Docket files are different than the docket.


----------



## James Long

The point remains, that when one searched for "Echostar" using the Supreme Court's website search for Docket Files on Sunday and prior the filing for the "writ of certiorari" was found. As of Monday those filings are not found.


----------



## dgordo

I know, I'm the one who posted the doc. 
My point, if you see this case listed on the SCOTUS docket, that would really be something to talk about.


----------



## Mainer_ayah

James Long said:


> Damages during the stay of the injunction have been part of the plan for September 4th since May 30th. No change there. Our argument was over the interrogatories that Tivo wanted DISH to file ... that was the "not agreed" part of the docket.
> 
> DISH's filed a "Response to Motion on Remand for Damages During the Stay of the Permanent Injunction". Unfortunately sealed, as was the motion they are responding to. Your opinion as to the content of what sealed documents include is noted ... but it is a case of "your guess is as good as and certainly no better than ours".
> 
> (There is no magic decoder ring for these sealed documents.  )


No, your response to my argument was that if dish did not comply with the next item in the order, than the order was superseded by the next order. Well you would not know if interrogatories were responded to or not, since they are not filed with the court, they are submitted to opposing counsel. That makes the next item (still listed as not agreed to in the TiVo proposed schedule) the E* response, listed by TiVo as due 8/18, and indicated as not agreed to by E*. Yet they complied, why you might ask, because if they didn't comply with the order they would have lost their chance to reply.

Also, our argument (as you put it) was over whether the TiVo proposed schedule issued as a court order on the 17th was superseded by the abbreiviated order issued on the 18th, with a docket entry establishing time and place of the hearing. Your acid test of this was whether E* complied with the items they had yet to agree to. Well, guess what, they are complying.


----------



## James Long

Mainer_ayah said:


> Also, our argument (as you put it) was over whether the TiVo proposed schedule issued as a court order on the 17th was superseded by the abbreiviated order issued on the 18th, with a docket entry establishing time and place of the hearing. Your acid test of this was whether E* complied with the items they had yet to agree to. Well, guess what, they are complying.


You have NO PROOF that the interrogatories were ever filed by DISH ... none. zip. zero. nada.

Greg graciously reminded us a couple of weeks ago that the damages during the stay issue would also be dealt with on September 4th. All we know about these filings is the subject ... which matches perfectly with the decisions made based on the May 30th status hearing and ordered June 5th.

If you will read through Tivo's argument when requesting the interrogatories you will see that it is possible for Tivo to make the filing that has been made with DISH having the opportunity to reply WITHOUT DISH replying to the interrogatories. The disagreement between DISH and Tivo was over those interrogatories ... not over whether or not the damages issue would be dealt with.

I'm sorry if you have misunderstood anything that has happened in the case or this thread discussing it. It has been a long winding road filled with a lot of distractions. If you're trying to play "got-ya" then you need to keep up with the conversation. As I noted with Greg last week when Tivo first attempted to file their motion for damages, the contents are sealed ... Greg and I disagree about whether the interrogatories needed to be filed with the court or could go directly to Tivo ... but with sealed documents anyone's guess is as good as anyone else's (and no better) as to content. The mere filing of a sealed document proves nothing (unless of course the title gives it away ... such as "Echostar response to Interrogatories" - no such title has been filed).


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## Greg Bimson

> 4. Not agreed - due 11 July
> EchoStar to produce interrogatory responses and documents responsive to TiVo written discovery.
> 5. Not agreed - due 4 August
> TiVo motion and brief on damages incurred during the period that the Permanent Injunction was stayed (up to 20 pages excluding exhibits).
> 6. Not agreed - due by 15 August
> EchoStar may depose any witness providing a declaration supporting TiVo's motion for no longer than three hours.
> 7. Not agreed - due 18 August
> EchoStar response brief on damages motion (up to 20 pages, excluding exhibits).
> 8. Not agreed - due by 28 August
> TiVo may depose any witness providing a declaration supporting EchoStar's opposition for no longer than three hours.
> 9. Not agreed - due 29 August
> TiVo reply brief on damages motion (up to 10 pages, excluding exhibits).


TiVo did file their brief on damages during which the injunction was stayed on 4 August, as ordered. Mainer says that DISH/SATS response was filed yesterday, 18 August. Both of those are "not agreed", yet both of those have happened. I've marked those in green.

It is as if this is now an order of the court; it is the timeline for discovery and filing briefs with the court.

The point of contention is that these were the items listed as "not agreed". However, in documents filed with the court, it appears this is the docket. Therefore, if the responses to the interrogatories were never given to TiVo, TiVo would have filed another contempt motion. TiVo obviously had the information they needed, otherwise there would have been some other filing by TiVo to state they aren't receiving the information that is required by DISH/SATS.

You can bet that DISH/SATS certainly took the time to depose the witness providing a declaration supporting TiVo's motion. That is the one I've marked in blue; DISH/SATS would need to depose the witness to file their response brief against the damages motion. So you can also bet that the interrogatories were given to TiVo so they could file their brief on enhanced damages during the stay period.

So it is obvious DISH/SATS gave the interrogatory responses back to TiVo; the one in red is the one that started it all.


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## Greg Bimson

And in case this does need to be setup again...


> 1 due 13 June, 5:00 p.m. Pacific time
> a) TiVo to file opening brief of no more than 20 pages regarding whether EchoStar should be held in contempt.
> b) EchoStar to file opening brief of no more than 20 pages regarding its Advance Exchange Program.
> 
> 2 due 16-23 June
> Upon reasonable notice, parties shall make available for deposition any witness that executes a declaration submitted in support of an opening brief. Deposition time for each witness will last no longer than three (3) hours, unless interpretation is required, in which case time is limited to six (6) hours. Unless the parties agree otherwise, depositions of TiVo witnesses will take place in Los Angeles and depositions of EchoStar witnesses will take place in Denver or San Francisco. In the event that the parties are unable to agree on the location of a deposition, the Court shall determine the location.
> 
> 3 due 20 June, 5:00 p.m. Pacific time
> TiVo to file opening brief of no more than 20 pages regarding damages incurred during period in which injunction was stayed.


This was the first three of 14 points in DISH/SATS proposed docket control. Two points are glaringly obvious:

1) TiVo did not file its opening brief regarding damages on 20 June; it was filed as TiVo's proposed docket control stated on 4 August.
2) DISH/SATS proposed docket control is missing the "interrogatory" section, as DISH/SATS tried to argue that Judge Folsom did not grant discovery for the damages motion. This would be the dispute to which James Long alludes.

It is now obvious that TiVo's proposed docket control is the order, and that DISH/SATS must have produced some kind of responses that were satisfactory to TiVo. TiVo did file their brief by the 4 August deadline, and did not file anything with the court to state DISH/SATS was not complying with the docket control.


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## James Long

Greg Bimson said:


> TiVo obviously had the information they needed, otherwise there would have been some other filing by TiVo to state they aren't receiving the information that is required by DISH/SATS.


DISH cannot be in contempt for not filing responses that they are not required to file --- which leaves us with three options (and no proof):
1) DISH was not required to file interrogatories (my opinion)
2) DISH filed interrogatories, but not with the court (your opinion)
3) DISH was required to file yet did not file but Tivo has not yet filed for contempt on that issue

Personally (looking back to the interrogatories) I can not imagine DISH answering them to Tivo's satisfaction ... so I would expect a motion to compel or motion for DISH to be held in contempt for not complying in full even if DISH had complied in part. Which is why it is my opinion that the interrogatories were not answered and either 1) they were not required or 3) Tivo has declined to make a motion to complain (and not 2) ).

Thanks for sharing your opinion ... but thats all we have is competing opinions (and sealed documents).


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## Greg Bimson

And with that, I agree, even with your belief it is my opinion that DISH gave TiVo the interrogatory responses.

And I, too, have a hard time believing DISH/SATS answered the interrogatories to TiVo's complete satisfaction.

Maybe we'll see a redacted version at some point.


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## nobody99

Can we lock this thread down to allow only Greg & James to post? 

You two are the most reasoned and fair-minded of all of us. Thanks for the continued info.


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## jacmyoung

Greg Bimson said:


> I know it is easy to understand, but I don't know why the arguing continues.
> 
> Wait. I know why:The items before the court, the *adjudicated infringing receivers*, have been before the court, which is how they've become *adjudicated infringing receivers*. Just because DISH/SATS has modified between one bit to one billion bytes of code does not change the fact that those are adjudicated infringing receivers....


*The accused items* that will be before the court on 9/4, have not been adjudicated, because the only thing adjudicated before related to those accused items is the hardware which as for now are *not infringing*, and the only other thing related to those accused items is the new software, never before the court yet.

The only item that was before the court and deemed infringing (the old software) is gone, no more, does not exist, no where to be found.

Any of you who refuse to see such facts will have to wait till after 9/4 to understand why Tivo will fail.


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## James Long

Jedi mind tricks not withstanding, the court is NOT addressing whether or not the products infringe at this time. Period.

The question for the court is simple ... is DISH in contempt for not disabling the DVR functionality or have they met the requirements of the injunction in another way. The question of infringement is NOT before the court on September 4th.


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## jacmyoung

The problem with Tivo's thinking is somehow any events occurred after the injunction took full effect must be ignored, unfortunately the court cannot ignore any changes happened after the injunction is in full effect and up to the point that the contempt is in front of the parties. Because the changes make thing *different*, and the *difference* must be *first* looked at in a contempt proceeding, not the second to look at, but the very first thing to be looked at, before anything else. In fact if by looking at the difference first, the court can already determine the difference is more than colorable, and therefore there is no contempt, then all other things may be irrelevant, as a waste of time, just as Curtis has said, only maybe in a slightly different context than mine.

As an example, had both the hardware and software verdicts been reversed, the injunction would have been lifted, but since the software at the time was still the old software and still infringing, the order to disable the DVR functions was entirely appropriate, because the effect of the order was just that, to remove the old, infringing software, not to remove the hardware. The court cannot possibly order DISH to remove the hardware that never infringed.

So for you to insist that the hardware in front of us has been adjudicated, then you must admit that the hardware in front of us, if indeed adjudicated, had been adjudicated to be non-infringing. And since the same, non-infringing hardware now no longer uses the old, infringing software, rather the new software, then yes, the accused DVRs no matter how you look at them, either no longer infringing for the hardware part, and/or not adjudicated, for the software part.

By law, the colorable difference test must be used in a contempt proceeding to addressed the new software used by those accused DVRs.


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## jacmyoung

James Long said:


> Jedi mind tricks not withstanding, the court is NOT addressing whether or not the products infringe at this time. Period.
> 
> The question for the court is simple ... is DISH in contempt for not disabling the DVR functionality or have they met the requirements of the injunction in another way. The question of infringement is NOT before the court on September 4th.


But if the judge disregards the new software (the difference) on 9/4, he will have abused his discretion. And if he then issues a contempt on that basis, the contempt will easily be overturned on appeal.


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## James Long

The PRODUCTS remain adjudicated ... DISH has made no motion to have their PRODUCTS readjudicated as non-infringing. The last word of the court is that those PRODUCTS are infringing.

At this point the question raised in Texas is limited to disabling the DVR functionality ... and apparently it bears repeating that whether or not the products _actually_ infringe will not be answered. The products are not being reajudicated at this point. Perhaps DISH will file that motion after September 4th.

DISH is trying their Jedi mind tricks where they are claiming that the adjudicated products no longer exist and those already placed were somehow magically replaced by "new products" but the flaw in their claim is that they are claiming the SOFTWARE as the product when the injunction is not against the software, it is against the full product.

The product that the infringement stands against is eight models of DVRs ... not the software on the product (which DISH claims to have replaced) or the hardware in the product (which DISH claims to have partially disabled - the alleged infringing hardware is no longer used). The infringement is against DVR functionality on the eight models of receivers.


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## CuriousMark

James Long said:


> The product that the infringement stands against is eight models of DVRs ... not the software on the product (which DISH claims to have replaced) or the hardware in the product (which DISH claims to have partially disabled - the alleged infringing hardware is no longer used). The infringement is against DVR functionality on the eight models of receivers.


Also, Dish may have partially disabled that hardware and may not be using results from the portions they cannot disable, but it is still there. I don't know whether that matters, but it certainly might. Dish did not make that hardware go away with a software change.

it certainly doesn't matter for 9/4. I am thinking of the next stage, when they get around to addressing colorable differences.


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## Greg Bimson

jacmyoung said:


> *The accused items* that will be before the court on 9/4, have not been adjudicated, because the only thing adjudicated before related to those accused items is the hardware which as for now are *not infringing*, and the only other thing related to those accused items is the new software, never before the court yet.


The items before the court on 4 September are *only* the receivers already adjudicated to infringe and in the customers' hands, subject to a disable order.

Modifying the DVR functionality is permitted. If DISH/SATS wants to continue selling the 501, 508, 510, 522 and 625, they must modify the receiver (and likely done with software) in order to continue selling those products. If TiVo wants DISH/SATS to stop selling those receivers, and the others because they still infringe on the Time Warp patent in fundamentally the same way as they did before, TiVo will have to file a motion for contempt for violations of an injunction against infringements. Then your arguments stand intact.

Modifying the DVR functionality for the receivers already adjudicated to infringe and in the hands of customers is permitted, as long as that modification also follows the order of the court, "to disable all storage to and playback from a hard disk drive of television data." And that is where your arguments fail.

And talk about a leap of faith as to what was found infringing:

A jury trial reached the conclusion that DISH/SATS infringed on five hardware claims and two software claims of the patent, on eight different models of receivers. Upon appeal, the five hardware claims were reversed and remanded, which leaves the two software claims upheld as infringing on eight different models of receivers.

The receivers infringed. Not the software. The receviers infringed; hardware and software in whole, the receivers infringed upon the software claims of the patent. The software was not found to infringe upon the software claims of the patent.


jacmyoung said:


> But if the judge disregards the new software (the difference) on 9/4, he will have abused his discretion. And if he then issues a contempt on that basis, the contempt will easily be overturned on appeal.


Only if Judge Folsom uses your incorrect standard for determining contempt for a violation of an injunction.


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## peak_reception

Interesting discussion on the docket(s) and whether or not interrogatories were submitted by Echostar. Anyone can look up definitions of "interrogatories" but I found this one to be the most helpful. Just thought I'd share:  

"Written questions submitted to a party from his or her adversary to ascertain answers that are prepared in writing and signed under oath and that have relevance to the issues in a lawsuit.

Interrogatories are a discovery device used by a party, usually a defendant, to enable the individual to learn the facts that are the basis for, or support, a Pleading with which he or she has been served by the opposing party. They are used primarily to determine what issues are present in a case and how to frame a responsive pleading or a deposition. Only parties to an action must respond to interrogatories, unlike depositions that question both parties and witnesses.

Interrogatories are used to obtain relevant information that a party has regarding a case, but they cannot be used to elicit privileged communications. The question must be stated precisely to evoke an answer relevant to the litigated issues. A party can seek information that is within the personal knowledge of the other or that might necessitate a review of his or her records in order to answer. The federal rules of Civil Procedure and the rules governing state court proceedings provide that when interrogatories seek disclosure of information contained in corporate records, the party upon whom the request is served can designate the records that contain the answers, thereby making the requesting party find the answer for himself or herself. No party can be compelled to answer interrogatories that involve matters beyond the party's control. Objections to questions submitted can be raised and a party need not answer them until a court determines their validity.

Interrogatories are one of the most commonly used methods of discovery. They can be employed at any time and there is no limit on the number that can be served. Although they are not generally used for purposes of evidence in a trial, they might be admissible if they satisfy the rules of evidence, such as the best evidence rule or are an exception to the Hearsay rule."

From West's Encyclopedia of American Law, edition 2.


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## jacmyoung

James Long said:


> The PRODUCTS remain adjudicated ... DISH has made no motion to have their PRODUCTS readjudicated as non-infringing. The last word of the court is that those PRODUCTS are infringing.
> 
> At this point the question raised in Texas is limited to disabling the DVR functionality ... and apparently it bears repeating that whether or not the products _actually_ infringe will not be answered. The products are not being reajudicated at this point. Perhaps DISH will file that motion after September 4th.
> 
> DISH is trying their Jedi mind tricks where they are claiming that the adjudicated products no longer exist and those already placed were somehow magically replaced by "new products" but the flaw in their claim is that they are claiming the SOFTWARE as the product when the injunction is not against the software, it is against the full product.
> 
> The product that the infringement stands against is eight models of DVRs ... not the software on the product (which DISH claims to have replaced) or the hardware in the product (which DISH claims to have partially disabled - the alleged infringing hardware is no longer used). The infringement is against DVR functionality on the eight models of receivers.


I know what you are saying, but for your logic to prevail you must first convince the court the *adjudicated products* may not be modified. Tivo is not saying that, Tivo is saying no only for those adjudicated prodcuts not yet sold, but not for those already with the end users.

Unfortunately the court had never excluded the adjudicated products already sold from the modification rules. Show me one that said such.

Without such condition set, DISH of course can argue the rules apply to all adjudicated products, sold or not, with the end users or not.

And once the adjudicated products are modified, of course they will have to be reexamined in a contempt proceeding, I did not say so, the rules say so.


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## jacmyoung

Greg Bimson said:


> ...Only if Judge Folsom uses your incorrect standard for determining contempt for a violation of an injunction.


Those are not my standards, but the court established standards applied to all contmept proceedings, and Judge Folsom's 9/4 hearing is just one of those proceedings, therefore he must use those standards. He is no God, he must follow the rules.

He of course can choose to ignore those rules, and I have cited several cases when the lower courts ignored the rules, and without exception, the higher court overturned their decisions on appeal.


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## James Long

FYI: I've attached for reference the discovery that Tivo requested via the interrogatories (as discussed back in June).


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## jacmyoung

I don't think DISH has to provide any documents on anything other than the DVRs on that list, nor any advertising information that mentioned Tivo or DVRs. They are not relevant to the enhanced damage determination during the stay.

DISH will be able to satisfy the Tivo's request by providing the information of those DVRs on the list, up to the point when the new software was installed onto them and the old software was removed.

Based on DISH's claim, they started such software replacement soon after the final judgment was issued in 06, then the effort lasted a few months until the software replacement was all complete.


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## Greg Bimson

jacmyoung said:


> I know what you are saying, but for your logic to prevail you must first convince the court the *adjudicated products* may not be modified. Tivo is not saying that, Tivo is saying no only for those adjudicated prodcuts not yet sold, but not for those already with the end users.


And a couple more leaps of faith...

TiVo themselves said that DISH/SATS could modify adjudicated products, and as your standard states, "continue on as before". That is, DISH/SATS can continue sales of the enjoined product once the enjoined product is modified so that it no longer infringes and is more than colorably different.

It is the models already in the hands of the end users which have been ordered to have their DVR functionality disabled. No more, no less, and certainly no matter what your position is.


jacmyoung said:


> Unfortunately the court had never excluded the adjudicated products already sold from the modification rules. Show me one that said such.


And show me where the adjudicated products that have been ordered disabled are allowed to continue? Or are you asking for both precedential and preferential treatment in this case?


jacmyoung said:


> And once the adjudicated products are modified, of course they will have to be reexamined in a contempt proceeding, I did not say so, the rules say so.


A product that has been in Joe Blow's hands for four years might now be modified, but the fact that it was adjudicated as infringing already takes precedent. It cannot be tried again nor examined again to determine anything. Welcome to the judicial system.


jacmyoung said:


> Those are not my standards, but the court established standards applied to all contmept proceedings, and Judge Folsom's 9/4 hearing is just one of those proceedings, therefore he must use those standards. He is no God, he must follow the rules.


Only if the 4 September hearing is deciding a motion of contempt for violations of an injunction against infringements. TiVo has not filed a motion for contempt for violations of an injunction against infringements; TiVo has filed a motion for contempt for violation of the order to disable DVR functionality on receivers adjudicated and in customers' hands, where infringement need not (and will not) be tested.


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## Mainer_ayah

Greg Bimson said:


> TiVo did file their brief on damages during which the injunction was stayed on 4 August, as ordered. Mainer says that DISH/SATS response was filed yesterday, 18 August. Both of those are "not agreed", yet both of those have happened. I've marked those in green.
> 
> It is as if this is now an order of the court; it is the timeline for discovery and filing briefs with the court.
> 
> The point of contention is that these were the items listed as "not agreed". However, in documents filed with the court, it appears this is the docket. Therefore, if the responses to the interrogatories were never given to TiVo, TiVo would have filed another contempt motion. TiVo obviously had the information they needed, otherwise there would have been some other filing by TiVo to state they aren't receiving the information that is required by DISH/SATS.
> 
> You can bet that DISH/SATS certainly took the time to depose the witness providing a declaration supporting TiVo's motion. That is the one I've marked in blue; DISH/SATS would need to depose the witness to file their response brief against the damages motion. So you can also bet that the interrogatories were given to TiVo so they could file their brief on enhanced damages during the stay period.
> 
> So it is obvious DISH/SATS gave the interrogatory responses back to TiVo; the one in red is the one that started it all.


Greg, you beat me to it. I think jac my oung has too many arguments going to keep them all straight in his head. My position was that the TiVo recommended schedule was the one adopted and ordered by the court, and his position was otherwise. I am convinced that E* is also of that opinion given their performance on that schedule REGARDLESS OF THE CONTENT OF THE FILINGS. I never even mentioned content.

The fact that Ergen et al have fallen into line on the ordered schedule, convinces me that they also saw the immediate nature of the order (within hours of its proposal by TiVo) the same way I did, as a deliberate action by the judge to convey his frame of mind to the defendants that he isn't putting up with their childish **** anymore.


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## nobody99

There are really three classes of products:


 DVRs in customers' hands (the issue to be discussed on September 4)
 DVRs in warehouses at the time of the decision
 DVRs which are newly-built since the decision

The injunction removed any DVR functionality from the first two classes of receivers. It's a real simple test: were they already manufactured at the time of the decision?

If the answer to that question is "yes" then they cannot have DVR functions again until the expiration of the '389 patent.

In fact, DISH tried to say that the DVRs in warehouses - that hadn't even been placed with a customer yet - shouldn't be included because new software could be downloaded. The court even rejected that idea.

The third class of device - those that have been manufactured _since_ the injunction - are exactly what the "colorable difference" standard is for. When the court says that a company is allowed to design around a patent, this is what it means. When the court says that an injunction is to be used as a shield, not a sword, it's for future manufacture.


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## James Long

jacmyoung said:


> Unfortunately the court had never excluded the adjudicated products already sold from the modification rules. Show me one that said such.


Greg already has shown you where that is in this case. There was a SPECIFIC modification REQUIRED to be done to the adjudicated products in THIS CASE. That SPECIFIC modification was "disable the DVR functionality".

Please see the previous 3000 (or so) posts for a complete discussion of the topic.

As for whether those products have actually been modified to be non-infringing or have been modified enough to require a new trial on their construction ... that isn't the question before the court September 4th.


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## Greg Bimson

I'll put it this way:

It is my (and mainer's) opinion that DISH/SATS did respond to the interrogatories supplied by TiVo. That opinion is derived from the fact that TiVo's proposed docket control order, signed by Judge Folsom, is being followed: both the motion on damages by TiVo and the response to that motion have both been supplied on the dates from TiVo's proposed docket control order. If the docket control order weren't being followed, we'd have known something by now.

No more, no less...


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## peak_reception

Greg Bimson said:


> Only if the 4 September hearing is deciding a motion of contempt for violations of an injunction against infringements. TiVo has not filed a motion for contempt for violations of an injunction against infringements...


 Well, it is a contempt motion for violation of an injunction in an infringement case. This litigation is like the solar system in the sense that infringement is the Sun and all the other planet-issues revolve around it. TiVo has narrowly tailored their contempt motion to zero in on one of the planets -- the order to disable DVR functionality. That's a smart move and Judge Folsom does seem receptive. But on appeal the CAFC might focus arguments back on the Sun in which case TiVo has another tough fight on their hands if the new software does turn out to be no longer infringing (if things get that far).


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## Greg Bimson

peak_reception said:


> But on appeal the CAFC might focus arguments back on the Sun in which case TiVo has another tough fight on their hands if the new software does turn out to be no longer infringing (if things get that far).


And I'll always go back to the fact that a product which has a ruling placed upon it will not be re-evaluated, because guilt or innocence has already been assigned to it.

Double jeopardy works both ways, to an extent.


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## peak_reception

Greg Bimson said:


> And I'll always go back to the fact that a product which has a ruling placed upon it will not be re-evaluated, because guilt or innocence has already been assigned to it.


 Makes perfect sense to me but I'm jaded and don't have the same serenity that you have about how the law will be applied to this situation (especially by CAFC). Jacmyoung sounds even more certain about the outcome. That doesn't lend any more weight to his arguments (in fact it takes away weight imo) but he does score some points when he reminds everyone that this case is fundamentally about infringement. It reminds me of the lawyer for O.J. Simpson who kept hypnotizing the jury with "If the glove doesn't fit, you must acquit!" And amazingly enough, against overriding good sense and justice, they did acquit.

What's working against EchoStar here is that they're torturing logic and language to a judge, not a jury. A tough, no-nonsense judge. I don't have the same confidence that CAFC is full of tough, no-nonsense judges.


> Double jeopardy works both ways, to an extent.


 It should, I agree, but law has its own logic which sometimes tramples on good sense and even fairness. I don't know if it will in this case (hope not) but I've seen enough abominations to not be shocked if EchoStar wiggles free of "the hook" (the injunction) on appeal and swims away with only a big bill of damages for infringement up to the point when they completed downloading their new software. Chump change for Charlie the Tuna.


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## Curtis52

Greg Bimson said:


> And I'll always go back to the fact that a product which has a ruling placed upon it will not be re-evaluated, because guilt or innocence has already been assigned to it.
> 
> Double jeopardy works both ways, to an extent.


"When an adjudged infringer has *modified the infringing device* in an attempt to avoid infringement, *courts have consistently first analyzed the changes* in the devices, in the context of determining whether to reopen issues *previously adjudicated*."

http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


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## jacmyoung

Greg Bimson said:


> And a couple more leaps of faith...
> 
> TiVo themselves said that DISH/SATS could modify adjudicated products, and as your standard states, "continue on as before". That is, DISH/SATS can continue sales of the enjoined product once the enjoined product is modified so that it no longer infringes and is more than colorably different.


Yes and Tivo themsleves said products already sold cannot be modified, which is their own rule, the court never said that.



> It is the models already in the hands of the end users which have been ordered to have their DVR functionality disabled. No more, no less, and certainly no matter what your position is.


It is not my position, how many times do I have to remind you that? You contineu to ignore the court rules, as if they do not apply to this one simply because there is this one second order that *appears* to support your notion, but it does not, because only products that continue to be Infinging Products may be subject to this order. I know you refuse to admit it now, and I said you soon will.



> And show me where the adjudicated products that have been ordered disabled are allowed to continue?


I have shown you two already, one is the Footprint 2.0, the only argument you have is well the court allowed it. My point is no even if the court does not say it would allow such, it is still ok, because modification needs no pre-approval as for which specific type of adjudicated products can be modified or not.

I also cited on other case in which a food processing method was found infringing and prohibited. The infringer simply modified one stage of its process that was found infringing, and was found not in contempt. That process was in use, not replaced. I will have to go back to dig it out if I have time.

But most importantly, the key point you must take into consideration is DISH does not even have to find one case where there must be an identical prior case, DISH only needs to prove all rules do not single out products already with the end users, and specifically says these products may not be modified. And since there is no such provision, DISH gets the benefit of all the rules. This is how the court system works, like it or not. Because DISH is the defendant, not Tivo.



> Or are you asking for both precedential and preferential treatment in this case?A product that has been in Joe Blow's hands for four years might now be modified,


Again you are asking for special treatment, not me, by insisting products already with the end users may not be modified, even though you could not find a single case to prove it. You cited a Pricefisher case, and in the end admitted the prima facie contempt stood because "no modification was found", that had clearly proved modification was also the key in that prima facie case. Why the court even bothered to try to find if modification was there or not in a prima facie case such as that one? According to you those products already on the shelves had to be removed regardless, could not be modified, then why waste time to even try to figure out if the infringer modified them or not? Because indeed all products may be modified, only when no modifications exsited, the infringer was found on prima facie contempt. Your case only strengthened my point.



> but the fact that it was adjudicated as infringing already takes precedent. It cannot be tried again nor examined again to determine anything. Welcome to the judicial system...


Indeed welcome to 9/4 hearing and thereafter when the only thing you will be able to say is the judge is wrong, and the patent system is a piss, Tivo is wronged. I can't wait to hear it.


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## jacmyoung

James Long said:


> The PRODUCTS remain adjudicated ... DISH has made no motion to have their PRODUCTS readjudicated as non-infringing. The last word of the court is that those PRODUCTS are infringing.


There has never been one single contempt proceeding where the non-mover had to motion for finding its modified products non-infirnging. In fact it cannot even be done in a contempt proceeding anyway, are you to say for that reason all infringers must be found in contempt anytime there is a contempt motion? The nonmover in a *summary proceeding* is given all the benefit of doubt, they only need to offer some evidence to prove the mover wrong, the evidence do not even have to be substantial. The nonmovers need no motions, they are nonmovers. The burden of proof is on the movers who make the motions.



> At this point the question raised in Texas is limited to disabling the DVR functionality ... and apparently it bears repeating that whether or not the products _actually_ infringe will not be answered. The products are not being reajudicated at this point. Perhaps DISH will file that motion after September 4th.


Again it indeed bears repeating that if this will be what Judge going to do on 9/4, he will have abused his discretion.


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## jacmyoung

James Long said:


> ...Please see the previous 3000 (or so) posts for a complete discussion of the topic....


Please see the previous 3000 posts that it is not enough, when modifications exist, meaning differences exist, just as Curtis pointed out, the differences (the modifications) must *first* be looked at, in any contempt proceeding, no exception, and the modifications can be done on *all* products, the courts never said which products may be modified, which may not, Tivo invented its own rule, and therefore Tivo will fail.

But I also said, the judge or course can make it an excpetion to not look at the differences at all, and by doing so he will have abused his discretion, and if he cites DISH in contempt because of that, the contempt will be overturned on appeal.


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## nobody99

Curtis52 said:


> "When an adjudged infringer has *modified the infringing device* in an attempt to avoid infringement, *courts have consistently first analyzed the changes* in the devices, in the context of determining whether to reopen issues *previously adjudicated*."
> 
> http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


For fun, let's add another quote from case you love so much:



> A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent.


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## nobody99

Curtis52 said:


> "When an adjudged infringer has *modified the infringing device* in an attempt to avoid infringement, *courts have consistently first analyzed the changes* in the devices, in the context of determining whether to reopen issues *previously adjudicated*."
> 
> http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


One more



> In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an *enjoined infringer* by *reason of a manufacture which was not the subject of the original litigation*


Wait, what? by reason of a manufacture? You mean like they changed the design and started the assembly line back up again? Not the subject of the original litigation?


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## jacmyoung

nobody99 said:


> For fun, let's add another quote from case you love so much:





> A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent


That is right, a decision adjudicating...[the]accused device must be made in a contempt proceeding first.

Look at the quote below:
"When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated."

Did it say it only applies to devices not with the end users? No, it only referred to "infrining device" without any provisions added, as a result the defendant gets the benefit of such definition, that is *all infringing devices* are subject to this rule.


----------



## jacmyoung

Now that Tivo's interrogations request appeared to be satisfied by DISH's providing the new software installation info, I will go one step further to say it is possible the judge may end this case after finding DISH not in contempt from the 9/4 hearing.

The reason is, if DISH is not in contempt, as I said before such ruling has to be based on the new software, and by finding that the new software has raised substantial open issues, and since all DISH DVRs are now using the new software, any additional Tivo's contempt motions will be moot.

Not only that, DISH has satisfied Tivo by providing the new software download information, so that the enhanced damage determination is now ready to be completed, because all necessary documents are in place.

Once the judge settles the only dispute in front of the parties, that is whether DISH is allowed to modify the adjudicated products to workaround the patent in order to remain in the marketplace, then there will be no issue left in dispute.

This case can end when there is no dispute left unsolved.


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## James Long

Please see previous responses on the above repeated topics.

Looking forward to September 4th with full knowledge of the agenda ... it won't be over.


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## Jason Nipp

nobody99 said:


> One more
> 
> Wait, what? by reason of a manufacture? You mean like they changed the design and started the assembly line back up again? Not the subject of the original litigation?


IIRC the hardware was found not to be infringing. So why stop production of hardware.


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## James Long

Jason Nipp said:


> IIRC the hardware was found not to be infringing. So why stop production of hardware.


The hardware decision was reversed and remanded ... it could come up again with the jury given different instructions. But in the end it is moot ... DISH's new software does not use the alleged infringing part of the hardware and the rest of the hardware isn't in dispute.


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## phrelin

Jason Nipp said:


> IIRC the hardware was found not to be infringing. So why stop production of hardware.


Wasn't most of that hardware MPEG2? Dish is headed towards MPEG4 only, so they'd stop production anyway.


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## James Long

Most of the named models are obsolete ... perhaps not discontinued, just obsolete. That will be the final resolution to this case - when DISH ceases supporting those receivers. But it takes time to get an installed base moved over to new receivers.


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## Greg Bimson

> *From Curtis52, once again using KSM v. Jones:*
> When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated.


And that is when KSM had filed a motion for contempt against the newly-modified products. Of course if *TiVo* is asking the court to enjoin newly-modified products, then this entire statement is true.

TiVo is asking the court to force DISH/SATS compliance by disabling the 4 million plus DVRs already adjudged infringing. Just because DISH/SATS made a modification to the adjudged infringing receivers is not enough, because the court ordered one specific modification: disable. Addressing infringement does not come into play, as these receivers have already been found by the court to infringe.


jacmyoung said:


> Yes and Tivo themsleves said products already sold cannot be modified, which is their own rule, the court never said that.


Uh, TiVo isn't saying that products already sold cannot be modified. TiVo is asking for DISH/SATS to modify the devices in the manner the court prescribed: disable the DVR functionality.


jacmyoung said:


> ...because only products that continue to be Infinging Products may be subject to this order.


How many times do I have to tell you how wrong you are on this point:

Even with the DVR functionality disabled in the eight models of DVR defined as "Infringing Products", they would no longer infringe and still be the subject of the injunction until the injunction expires.


jacmyoung said:


> You cited a Pricefisher case, and in the end admitted the prima facie contempt stood because "no modification was found", that had clearly proved modification was also the key in that prima facie case. Why the court even bothered to try to find if modification was there or not in a prima facie case such as that one? According to you those products already on the shelves had to be removed regardless, could not be modified, then why waste time to even try to figure out if the infringer modified them or not? Because indeed all products may be modified, only when no modifications exsited, the infringer was found on prima facie contempt. Your case only strengthened my point.


I tell you what. Why don't you go back and read the decision in Fisher-Price v. Safety 1st? You will find that addressing modification of adjudicated infringing product is not a standard. Why? Because if you cannot find that the court did not address whether or not the adjudicated product was modified, it is not a standard.

*I'm done here until there is concrete information on this case.* I'll let others run amok with their wild interpretations of the law.


----------



## Mainer_ayah

James Long said:


> Most of the named models are obsolete ... perhaps not discontinued, just obsolete. That will be the final resolution to this case - when DISH ceases supporting those receivers. But it takes time to get an installed base moved over to new receivers.


Yeah, all 4 million of them, no sweat. And it shouldn't take long the way Charlie is scaring away customers. Until, of course, Judge Folsom sees fit to enjoin the rest of the product line into the injunction.


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## Curtis52

> *From Curtis52, once again using KSM v. Jones:*
> When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated.





Greg Bimson said:


> And that is when KSM had filed a motion for contempt against the newly-modified products. Of course if KSM is asking the court to enjoin newly-modified products, then this entire statement is true.


What was the phase of the moon during the ruling? Surely that has to be the same too for the case law to apply here.


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## nobody99

Curtis52 said:


> What was the phase of the moon during the ruling? Surely that has to be the same too for the case law to apply here.


No.

"by reason of a manufacture which was not the subject of the original litigation"


----------



## Greg Bimson

Curtis52 said:


> What was the phase of the moon during the ruling? Surely that has to be the same too for the case law to apply here.


Last post:

Simple. KSM was asking that sales of the Ultra-Lok product be restrained and enjoined through contempt, because KSM felt it was an infringing modification of the already adjudicated, restrained and enjoined Therma-lok product.

TiVo is not asking for sales of a modified receiver be restrained and enjoined, so how can this case law even apply? TiVo is asking for products adjudicated infringing to be disabled as per the injunction. Those products did not disappear from customers' homes.

That "modification" standard does not apply in this hearing. The courts will see it this way.


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## Curtis52

Greg Bimson said:


> Last post:
> 
> Simple. KSM was asking that sales of the Ultra-Lok product be restrained and enjoined through contempt, because KSM felt it was an infringing modification of the already adjudicated, restrained and enjoined Therma-lok product.
> 
> TiVo is not asking for sales of a modified receiver be restrained and enjoined, so how can this case law even apply? TiVo is asking for products adjudicated infringing to be disabled as per the injunction. Those products did not disappear from customers' homes.
> 
> That "modification" standard does not apply in this hearing. The courts will see it this way.


The location where the modification takes place is irrelevent. So is the phase of the moon.


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## jacmyoung

James Long said:


> Most of the named models are obsolete ... perhaps not discontinued, just obsolete. That will be the final resolution to this case - when DISH ceases supporting those receivers. But it takes time to get an installed base moved over to new receivers.


And DISH does not have to, they are not in violation, so the change over will occur over time, just not for the purpose of this injunction. Mark my word.


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## jacmyoung

Greg Bimson said:


> ... Just because DISH/SATS made a modification to the adjudged infringing receivers is not enough, ...


Yes it may not be enough, and on 9/4 whether such is enough or not will be ruled on.

The problem you guys are in is you refuse to admit whether the modification is enough or not should not even be an issue on 9/4, that is why you will fail.

The court order specifically said on 9/4, it will determine if DISH's is allowed to modify the adjudicated DVRs with the installation of the new software and be in compliance with the spirit of the injunction.

And understand how familiar is the above sentence to this one:

Whether the contempt may be used as a sword to wound the infringer (or in another word whether it is allowed) when the infringer makes a good faith effort to modify the adjudicated devices to workaround the patent in order to remain in the marketplace.

The answer has already been given by the higher court, Judge Folsom will just have to reaffirm his boss's past ruling.


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## James Long

jacmyoung said:


> And DISH does not have to, they are not in violation, so the change over will ocur over time, just not for the purpose of this injunction. Mark my word.


I never said it wouldn't. In fact, I have clearly said (much to your chagrin) that DISH will NOT disable the DVR functionality on the named receivers regardless of the court decisions.

As long as the eight models of product that have been ruled infringing exist the injunction and the case continue. DISH is trying to claim that those "products" don't exist because of the claimed software upgrade ... I do not expect the court to buy that argument. DISH is trying to redefine the injunction to apply to software as the product instead of the complete unit as the product. I expect that effort will also fail.

But as for the question for September 4th ... which is not whether or not the named products infinge but whether DISH is in contempt for not following the injunction's order to disable the DVR functionality: I expect that DISH will not be found in contempt.

That doesn't mean that DISH is cleared of all charges or that the case is over. It simply means that their actions are not in contempt of the court's instructions. There will still have to be a hearing on the claimed new software to clear the existing products for sale and continued use.

Infringement is not the issue September 4th ... obeying the court is the issue September 4th. The infringement issue can be dealt with later (per the order of the court released June 5th - unless Tivo decides not to pursue the issue).


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## jacmyoung

Greg Bimson said:


> ...That "modification" standard does not apply in this hearing. The courts will see it this way.


Of course it does, the standards apply to all contempt proceedings. To say that this hearing is not subject to all the standards of course is without basis. Even your own cases you have quoted all used the same standards.

There had never been a single case, including those of yours, ignored these standards.


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## Curtis52

jacmyoung said:


> The court order specifically said on 9/4, it will determine if DISH's is allowed to modify the adjudicated DVRs with the installation of the new software and be in compliance with the spirit of the injunction.


Here is what the hearing order said:


> whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.


Note that the ruling will not be on whether the software change makes the product non-infringing. The ruling will only be on whether the wording of the injunction allows Dish to comply by doing something other than disabling the DVRs. The success or failure of Dish to modify the software to be non-infringing is not the subject of the hearing. The subject is whether the injunction even allows them to try.


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## jacmyoung

James Long said:


> I never said it wouldn't. In fact, I have clearly said (much to your chagrin) that DISH will NOT disable the DVR functionality on the named receivers regardless of the court decisions....


That is completely differenct than what I am saying. You are saying DISH will be in violation but DISH will ignore a final contempt ruling, I already said you are wrong, you have absolutely no basis to say that, DISH has never in the past disobeyed a final contempt ruling.

But DISH is not in contempt, therefore they will not have to disable the DVRs, any DVRs. You and I cannot be further apart, even though we both are saying DISH will not disable the DVRs.


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## James Long

Greg Bimson said:


> TiVo is not asking for sales of a modified receiver be restrained and enjoined, so how can this case law even apply? TiVo is asking for products adjudicated infringing to be disabled as per the injunction. Those products did not disappear from customers' homes.


Correct. The question is not one of infringement it is of disabling the named products as ordered.

DISH would like it to be all about infringement ... and if you believe their Jedi mind trick that the installed receivers somehow became new products with a software download Tivo will have to ask the court to look at the modified product ... but that is at the next step. For September 4th the question is purely about disabling.


----------



## jacmyoung

Curtis52 said:


> Here is what the hearing order said:
> 
> Note that the ruling will not be on whether the software change makes the product non-infringing. The ruling will only be on whether the wording of the injunction allows Dish to comply by doing something other than disabling the DVRs. The success or failure of Dish to modify the software to be non-infringing is not the subject of the hearing. The subject is whether the injunction even allows them to try.


What I am saying is it has to be, if the judge is to follow the rules, because in a contempt proceeding, the differences [as a result of the new software] between the accused DVRs and the adjudicated DVRs must *first* be looked at, before anything else, and whether the differences are more than colorable will determine if a violation exists.

I also said of course the judge has wide latitude to do what he sees fit, he can ignore the standards, but if he does so, he will have abused his discretion, and if he then finds DISH in contempt, the contempt ruling will be easily overturned on appeal.


----------



## James Long

jacmyoung said:


> That is completely differenct than what I am saying. You are saying DISH will be in violation but DISH will ignore a finhal contempt ruling, I already said you are wrong, you have absolutely no basis to say that, DISH has never in the past disobeyed a final contempt ruling.


Are we back to that again? You have also said that DISH has never FACED a final contempt ruling. So you're saying in zero of zero cases DISH will disobey. Kind of a pointless claim. Saying I'm wrong doesn't make me wrong, and ignoring the basis that I have provided earlier in the thread does not make the basis of my opinion go away.



> But DISH is not in contempt, therefore they will not have to disable the DVRs, any DVRs. You and I cannot be further apart, even though we both are saying DISH will not disable the DVRs.


You just don't want to agree with me on anything, do you? If I said "jacmyoung is absolutely correct" you would fight it. 

These next three weeks won't pass quickly enough ... I expect that we'll get a ruling that we both like (and others won't like) but you won't like it because it won't be the end of the case forever as you would like it to be.


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## Curtis52

jacmyoung said:


> What I am saying is it has to be, if the judge is to follow the rules,


Then if the judge rules that Dish can't be found in contempt without looking at the modification then TiVo would need to file another contempt motion to try to show that the modification is not more than colorably different.


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## peak_reception

Curtis52 said:


> What was the *phase of the moon* during the ruling? Surely that has to be the same too for the case law to apply here.


 A good line but it's not your's. That was James' line from a few posts back. Try to be original please.


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## jacmyoung

James Long said:


> ...You just don't want to agree with me on anything, do you? ...


Why should I agree with a wrong opinion? Will you?



> These next three weeks won't pass quickly enough ... I expect that we'll get a ruling that we both like (and others won't like) but you won't like it because it won't be the end of the case forever as you would like it to be.


Whether after 9/4 will call for the end of this trial is my guess based on the latest filing, I did not say it will end but rather it can go that way based on the latest evidence.

I will not feel any sadness if the trial does not end there, because that was only my speculation, I did not say it will go that way 100%, only a good possibility. If the trial goes no as Tivo insists, it will only waste both DISH and Tivo some more legal fees and court's time, the end will not be different, that DISH will not be in contempt.

But you won't be happy because DISH will not be in contempt


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## jacmyoung

Curtis52 said:


> Then if the judge rules that Dish can't be found in contempt without looking at the modification then TiVo would need to file another contempt motion to try to show that the modification is not more than colorably different.


Agreed except:

1) By doing so the judge will have abused his discretion. But if no one appeals, such abuse will not be addressed.

2) and as the evidence of the new software claimed by DISH has already been accepted by Tivo, unless the judge decides the evidence at hand is not sufficient to make a colorble difference determination, otherwise it will be inappropriate to let Tivo seek a motion for discovery of additional new software evidence.

IMHO, the existing new software evidence, claimed by DISH, and accepted by Tivo, is enough to find more than colorable difference. Additional discovery is not necessary. But that is just MHO.


----------



## scooper

Ok - so this is so mixed up I'm losing track of who thinks what will happen on 9/4. How about everybody do a quick summary - what do you think will happen, and a SHORT (no more than 3-4 line paragraph) of why.

scooper - "Infringing Products" left on - either Dish convinces Judge Folsom that their modification is in the spirit and no longer infringing, or Dish is appealing to higher court and stayed in the meantime. Possibly the order on disablement is removed as the hardware claims on infringement have been remanded.


----------



## peak_reception

Curtis52 said:


> *The worst outcome for TiVo would be a ruling of contempt.* It would be stayed within a few hours and overturned on appeal. Meanwhile, all the dithering gives Dish a foothold in Delaware and delays or prevents looking at the software in Texas.


 An Alice in Wonderland quality of unreality has now taken hold among some here and it's getting more bizarre all the time.

Now it's if TiVo wins on 9-4 then they actually lose, and if Dish loses then they actually win! :lol: It's not unlike a lot of what's come before, only even more unreal and fantasy based.

In Charlie World... "Disable the DVR Functionality" means turn it off a few minutes, download some new code, and turn it immediately back on. :nono:

In Charlie World... Doing what you please instead of what the Court ordered means dutiful compliance, not just in "spirit" but in letter too no less. :nono:

In Charlie World... A software download of unknown composition not yet examined by any court automatically means throwing out 4 years of litigation and rulings and starting all over again. :nono:

In Charlie World... you can do whatever you want since you're "worth" $10 Billion and can buy your way out of whatever trouble your ego gets you and your company into. :nono:

It's a narcissistic, solipsistic, fantasy world, but Charlie can afford to indulge intensely in it because of his money (no one will say "No" to him; In all likelihood surrounded by "yes" men and women) and the hypnotic power of his refusal to accept Reality if it means he doesn't win [he himself calls it 'just being stubborn' but it goes _way_ beyond that].

This Irrisistible Force -- Charlie World -- is on a collision course with an Immovable Object in the form of Judge Folsom who is about to Burst the Bubble at last, on or shortly after September 4th. What happens after that depends on the quality of judges sitting on the CAFC, but Judge Folsom is going to bring the great fantasy world crashing down and it isn't going to be pretty . :nono: That's my prediction anyway. Soon we shall see.


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## Curtis52

jacmyoung said:


> Agreed except:
> 
> 1) By doing so the judge will have abused his discretion. But if no one appeals, such abuse will not be addressed.


If the judge rules that the software will have to be looked at before contempt can be found he will have abused his discretion? Wouldn't such a ruling agree with what you have been saying?


----------



## jacmyoung

Too bad Greg has indicated he will not participate for now, because I just went back to read his one single case:

http://depatentlaw.morrisjames.com/01 051 193.pdf

In which Greg argued it proved the issue of infringement was never discussed in that case in order to find a contempt, which is not true:

In that case, some of the infringing products were never modified, and the infringer was found in contempt for selling those products again or failing to remove them from the stores.

But there was one product the infringer claimed they had made some modification, and the court did not like how the modification was documented by the infringer, and decried that the infringer's recordkeeping of such modification evidence was not in line with the letter of the injunction, yet nevertheless the patentee did not prove with clear and convincing evidence the infringer's modified product still infringed, so the infringer was not in contempt for selling that modified product:

"With respect to Bouncenette sales, Fisher-Price asserts that Safety 1st has failed to show that its post-Injunction Bouncenette sales were not in violation of the Injunction. Safety 1st counters that, while it sold Bouncenettes after the Injunction's entry bearing the proscribed base model numbers, all of those Bouncenettes had a new, non-infringing harness design that Fisher-Price has not accused of infringement. Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction. Despite Safety 1st's less-than-ideal recordkeeping, *however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales*."

So as long as modification existed, the standard required the patentee had to prove by clear and convincing evidence the modified products still infringed in order to prove violation.


----------



## jacmyoung

Curtis52 said:


> If the judge rules that the software will have to be looked at before contempt can be found he will have abused his discretion? Wouldn't such a ruling agree with what you have been saying?


No if he refuses to look at the new software evidence already at hand on 9/4 he will have abused his discretion.

As I said, please read carefully, if the judge believes the evidence at hand is not sufficient to make a colorable difference determination, *after first looking at them*, then yes he can grant Tivo a new discovery to seek additional new software evidence.

The problem is, Tivo has already accepted DISH's new software evidence in their latest contempt respsonse. Tivo is not disputing the new software evidence as provided by DISH, so additional discovery will be unnecessary. It will not likely be granted because DISH has a good reason to object to such motion.

The reason for additional discovery is usually when there is no evidence or the evidence is not sufficient, or the evidence itself is in dispute, neither is true here.

As I said already, IMHO, the new software evidence already in front of us, and accepted by both parties, are sufficient to raise substantial open issues.


----------



## Curtis52

jacmyoung said:


> As I said, please read carefully, if the judge believes the evidence at hand is not sufficient to make a colorable difference determination, then yes he can grant Tivo a new discovery to seek additional new software evidence.


The judge said he will consider such a motion after he decides on whether it makes any difference whether the modified software infringes or not.

So far, there has been no discovery granted on the modified software itself.


----------



## Greg Bimson

> Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction *with respect to Bouncenette sales.*


And TiVo is alleging NOTHING regarding ongoing sales.

Meanwhile, Safety 1st was found in contempt for continuing sales of adjudicated products which were enjoined and restrained from sales, and for not doing their best to follow the order given to recall the product from their distributors.

Ignore the sales, and you are simply left with an order against the adjudicated products. In Fisher-Price v. Safety 1st, the order was to recall all infringing products at the distributors, and Safety 1st already paid full damages regarding lost sales for each of the infringing products. In TiVo v. Echostar, the order is to disable all "Infringing Product" at a subscribers house, and a modification does not change the status as an "Infringing Product", and DISH/SATS did *not* pay damages for lost sales on all infringing product due to infringement.


jacmyoung said:


> Too bad Greg has indicated he will not participate for now...





scooper said:


> Ok - so this is so mixed up I'm losing track of who thinks what will happen on 9/4. How about everybody do a quick summary - what do you think will happen, and a SHORT (no more than 3-4 line paragraph) of why.


Just for the record...

DISH/SATS will be found in contempt, for the only modification ordered by Judge Folsom was to disable the adjudicated DVR's. Modifying said DVR's does not mean they are no longer adjudicated. DISH/SATS does not get to relitigate the question of infringement on devices already adjudged as infringments.

jacmyoung will state Judge Folsom has abused his discretion and that the Court of Appeals will rectify the situation. I wonder if the Court of Appeals will even look at the case. And I believe that Judge Folsom's finding of contempt will stand at the Court of Appeals, based on the correct standard I've been quoting.

I'm out...


----------



## Guest

scooper said:


> Ok - so this is so mixed up I'm losing track of who thinks what will happen on 9/4. How about everybody do a quick summary - what do you think will happen, and a SHORT (no more than 3-4 line paragraph) of why.
> 
> scooper - "Infringing Products" left on - either Dish convinces Judge Folsom that their modification is in the spirit and no longer infringing, or Dish is appealing to higher court and stayed in the meantime. Possibly the order on disablement is removed as the hardware claims on infringement have been remanded.


Dish will not be found in contempt until the new software is reviewed. Tivo will successfully argue that it is not more than colorably different. Dish will then be found in contempt. Dish will appeal, and be granted a stay during the appeal.

During this time, Dish will settle.

Now what Tivo should be doing is pushing to have the hardware retried on the basis of DOE. If Tivo can get that done, Charlie boy settles and for much more.


----------



## jacmyoung

Curtis52 said:


> The judge said he will consider such a motion after he decides on whether it makes any difference whether the modified software infringes or not.
> 
> So far, there has been no discovery granted on the modified software itself.


True but the order was issued before Tivo ever admitted and accepted DISH's new software evidence. After that order, Tivo in its latest response to DISH's briefing, finally accepted DISH's new software evidence.


----------



## James Long

jacmyoung said:


> But you won't be happy because DISH will not be in contempt


You really have not been paying attention, have you?


James Long said:


> But as for the question for September 4th ... which is not whether or not the named products infinge but whether DISH is in contempt for not following the injunction's order to disable the DVR functionality: *I expect that DISH will not be found in contempt.*


Highlighted for those who miss things.


----------



## jacmyoung

Greg Bimson said:


> And TiVo is alleging NOTHING regarding ongoing sales.
> 
> Meanwhile, Safety 1st was found in contempt for continuing sales of adjudicated products which were enjoined and restrained from sales, and for not doing their best to follow the order given to recall the product from their distributors.
> 
> Ignore the sales, and you are simply left with an order against the adjudicated products. In Fisher-Price v. Safety 1st, the order was to recall all infringing products at the distributors, and Safety 1st already paid full damages regarding lost sales for each of the infringing products. In TiVo v. Echostar, the order is to disable all "Infringing Product" at a subscribers house, and a modification does not change the status as an "Infringing Product", and DISH/SATS did *not* pay damages for lost sales on all infringing product due to infringement.Just for the record...
> 
> DISH/SATS will be found in contempt, for the only modification ordered by Judge Folsom was to disable the adjudicated DVR's. Modifying said DVR's does not mean they are no longer adjudicated. DISH/SATS does not get to relitigate the question of infringement on devices already adjudged as infringments.
> 
> jacmyoung will state Judge Folsom has abused his discretion and that the Court of Appeals will rectify the situation. I wonder if the Court of Appeals will even look at the case. And I believe that Judge Folsom's finding of contempt will stand at the Court of Appeals, based on the correct standard I've been quoting.
> 
> I'm out...


Except in that case there were two orders, one to stop selling those infirnging products, including the modified one *by name*, and the *second order* required those products be removed from the store shelves.

The infringer did neither, and was found in contempt, but not for the item that they modified. In another word for the modified item, the infringer was neither in contempt of selling them, nor in contempt for not removing them off the shelves, even though the court said the infringer did a very bad job of recordkeeping, in fact they only added a piece of paper in the packaging of those modified products as I read it, to describe the modification.

But regardless, my only point was you claimed in that case, only the standards below were used to find contempt:

"To prove civil contempt, the moving party must show by clear and convincing evidence that "(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order."

You claimed in that case no discussion of on going infringement was made. Not true. When the modification was in the picture, the court clearly knew what was the *"requisite standard"* applied, that was the patentee must prove with clear and convincing evidence the modified products still infringe. Since they did not the infringer was not in contempt of selling, and not pulling of the shelves, those alleged modified products.

Yes exactly two orders in that injunction to be complied with, sounded familiar? One to stop sell and use, one to remove from the shelves...and no contempt for continued sale, and not pulling off the shelves, of that modified product.


----------



## jacmyoung

James Long said:


> You really have not been paying attention, have you?Highlighted for those who miss things.


Apparently you have not been paying attention to what I have been saying for the 1,000th time either


----------



## nobody99

I predict a quick hearing, but no contempt on September 4, but a contempt decision on September 11*

* Possible settlement between September 4 - 11 depending on the hearing.


----------



## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> 
> 
> jacmyoung said:
> 
> 
> 
> But you won't be happy because DISH will not be in contempt
> 
> 
> 
> You really have not been paying attention, have you?
> 
> Click to expand...
> 
> Apparently you have not been paying attention to what I have been saying for the 1,000th time either
Click to expand...

A reminder to all that jacmyoung does not speak for me. Any summary of my position (such as that found in the core post above) is likely to be incorrect. If you are interested in my opinion feel free to read my posts. If you are not interested, feel free to read past my posts.

The only thing that would make me happy about DISH being found in contempt would be when DISH proves me right by acting in the manner that I have consistently predicted (no DVR shutdown). Otherwise I'd rather see DISH not found in contempt so the case can proceed to the next step ... actually considering whether or not the "new software" infringes ... instead of being stuck in the mud on the "existing products must have their DVR functionality disabled and not enabled until the expiration of the patent" issue.

A "contempt" ruling means focusing on appeals instead of dealing with infringement. I'd like to see the parties get to the core infringement issue so DISH can get on with offering DVR service without constant threat of lawsuits.

That, is what would make me happy. Tivo will get paid for DISH's past infringement, but they need to know that they don't own the patent on every DVR ever made ... the world CAN have a DVR without Tivo. It isn't all about them.

BTW: I'm not going to break it down to what day a ruling will be announced. The issue is whether or not DISH is in contempt, not on what date the ruling is handed down. Once the current contempt motion is dismissed I expect Tivo to file one that actually deals with infringement and can actually focus on whether the apparently modified products infringe.


----------



## Curtis52

"Update: As one reader was kind enough to point out, I neglected to mention Moffett's other major point pertaining to Dish, namely, its ongoing patent litigation with TiVo (TIVO). Moffett believes there is "serious legal risk facing Dish." On September 4, a Texas court will consider whether to hold Dish in comtempt for failing to disable TiVo-style functionality from Dish's set-tops. TiVO back in June asked the court to declare invalid Dish's proposed work-around of infringing functionality. If Dish loses on Sept. 4, writes Moffett, "In a worst case scenario, a contempt finding on September 4th could require DISH to immediately shut down as many as four million DVRs." Having to shut down service is potentially "devestating," Moffett says, and he believe investors have been living in a fantasy, thinking Dish would merely end up paying a royalty to TiVo. Dish could end up paying $1.6 billion if it had to replace 4 million DVRs, says Moffett. Even worse, TiVo could refuse to license its technology to Dish. "Imagine the economics of a possible DVR "exclusive" for a DISH competitor," muses Moffett."

Link


----------



## jacmyoung

James Long said:


> A reminder to all that jacmyoung does not speak for me. Any summary of my position (such as that found in the core post above) is likely to be incorrect. If you are interested in my opinion feel free to read my posts. If you are not interested, feel free to read past my posts.


I trust the readers know what they are reading, therefore I never feel the need to remind them of anything. I only remind my opponents from time to time



> The only thing that would make me happy about DISH being found in contempt would be when DISH proves me right by acting in the manner that I have consistently predicted (no DVR shutdown). Otherwise I'd rather see DISH not found in contempt so the case can proceed to the next step ... actually considering whether or not the "new software" infringes ... instead of being stuck in the mud on the "existing products must have their DVR functionality disabled and not enabled until the expiration of the patent" issue.


They will be cleared of any mud on 9/4, and BTW neither party can proceed to determine the new software infringement without filing a new suit. This suit cannot determine such issue.



> A "contempt" ruling means focusing on appeals instead of dealing with infringement. I'd like to see the parties get to the core infringement issue so DISH can get on with offering DVR service without constant threat of lawsuits.


Again the new software infringement issue cannot be resolved in this lawsuit, and you don't have to like to see it, DISH is already doing it, in the DE court.



> That, is what would make me happy. Tivo will get paid for DISH's past infringement, but they need to know that they don't own the patent on every DVR ever made ... the world CAN have a DVR without Tivo. It isn't all about them.


Agreed, with one thing added, Tivo cannot even own the patent on DISH's adjudicated DVRs.



> BTW: I'm not going to break it down to what day a ruling will be announced. The issue is whether or not DISH is in contempt, not on what date the ruling is handed down. Once the current contempt motion is dismissed I expect Tivo to file one that actually deals with infringement and can actually focus on whether the apparently modified products infringe.


Again Tivo cannot do so in this lawsuit, they have to do it in a new suit, independent of this lawsuit. If the DE court accepts DISH's such lawsuit, Tivo will have to go there. But if the DE court dismisses DISH's such suit, Tivo can request this Texas Court to grant a new suit on the new software infringement. But regardless it will have to be a new suit, independent of this case.


----------



## jacmyoung

Curtis52 said:


> "Update: As one reader was kind enough to point out, I neglected to mention Moffett's other major point pertaining to Dish, namely, its ongoing patent litigation with TiVo (TIVO). Moffett believes there is "serious legal risk facing Dish." On September 4, a Texas court will consider whether to hold Dish in comtempt for failing to disable TiVo-style functionality from Dish's set-tops. TiVO back in June asked the court to declare invalid Dish's proposed work-around of infringing functionality. If Dish loses on Sept. 4, writes Moffett, "In a worst case scenario, a contempt finding on September 4th could require DISH to immediately shut down as many as four million DVRs." Having to shut down service is potentially "devestating," Moffett says, and he believe investors have been living in a fantasy, thinking Dish would merely end up paying a royalty to TiVo. Dish could end up paying $1.6 billion if it had to replace 4 million DVRs, says Moffett. Even worse, TiVo could refuse to license its technology to Dish. "Imagine the economics of a possible DVR "exclusive" for a DISH competitor," muses Moffett."
> 
> Link


Nothing new, everyone who paid attention to his rambling read that part already.

Have you just noticed however, it was Greg who actually cited a case law that did more than anything we ever did to prove our point that DISH will not be in contempt?

In his single case law, the injunction had two parts, one was the usual no selling, use...part, the second order was to remove the products from the stores. Similar to this case, one usual order, the second is what the Tivo people like to call a "mandatory order".

In Greg's case, what happened was the infringer claimed before the injucntion was in effect, they already modified some of the infringing products, without telling anyone. Those modified products were shipped to the stores in the same packaging with the same name and model number.

After the injunction was in effect, the infringer made an half-a#$% effort to notify the stores of such modification, by sending them some product instruction sheets, in which they described the new part (the hardness which was found infringing) and designated those modified products as model 43002c (from the old 43002b), and that was all the infringer did to try to come into compliance of the order.

Such effort was less than ideal, as noted by the court, because in the end those stores continued to sell the products under the same old name and model #, as a result the sales records continued to show violation of the order by the continued sale of the infringing products (the first order), and failing to remove them from the shelves (the second order).

And guess what, despite the court's displeasure with what the infringer did, the court nevertheless was compelled to treat the unmodified prodcuts differently than the alleged modified products, and refused to find the infringer in contempt of selling (the first order) and not pulling off the shelves (the second "mandatory order"), those alleged modified products.

How familiar it sounded indeed.


----------



## nobody99

jacmyoung said:


> prove our point that DISH will not be in contempt


Is there more than one of you in there?


----------



## James Long

jacmyoung said:


> Again the new software infringement issue cannot be resolved in this lawsuit, and you don't have to like to see it, DISH is already doing it, in the DE court.


The infringing products have not been cleared of infringement and will not be cleared of infringement on September 4th. Nor will the named products be cleared of infringement in Delaware. The question in Delaware is a new software product, not the pre-existing products under control of the Texas court.

The adjudicated products infringe until a court says they do not infringe. The infringement decision will not be dealt with on September 4th.



> Tivo cannot even own the patent on DISH's adjudicated DVRs.


Tivo can and does own the patent on the infringing portions of DISH's adjudicated DVRs. A jury determined, as upheld by the appeals court, that DISH infringed on Tivo's patents in the construction of their DVRs. Tivo will continue to hold their patent until the patent expires (or they assign the patent to another owner).

Tivo can patent their way of making a DVR work and continue to protect and defend that method and process. The point is that they cannot control other ways of performing DVR functions when those ways do not infringe.


----------



## Curtis52

jacmyoung said:


> neither party can proceed to determine the new software infringement without filing a new suit. This suit cannot determine such issue.


If the software is not more than colorably different, no new suit is necessary.


----------



## Curtis52

jacmyoung said:


> Nothing new, everyone who paid attention to his rambling read that part already.


So everyone that has already read his stuff has already read it? That seems redundant.

This isn't the same analyst that was quoted a couple of months ago.


----------



## Greg Bimson

I've decided to continue. Shame on me.


jacmyoung said:


> But regardless, my only point was you claimed in that case, only the standards below were used to find contempt:
> 
> "To prove civil contempt, the moving party must show by clear and convincing evidence that "(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order."


And that is true.


jacmyoung said:


> You claimed in that case no discussion of on going infringement was made. Not true. When the modification was in the picture, the court clearly knew what was the "requisite standard" applied, that was the patentee must prove with clear and convincing evidence the modified products still infringe.


The discussion of modified products only revolved around a product that had not been before the court before. The discussion of modified products were not addressed in the recall. *Modified products were only addressed regarding ongoing sales.*

*Modified products were not addressed in the recall.* Fisher-Price accused certain *product sales* to be infringing, but upon review, those sales were found to be modified products. *Ready for this: when a product is modified it then continues to be sold in the marketplace, so I am agreeing that sales of modified product must first have colorable difference and infringement status determined if a contempt motion is to be filed on them.* That will be TiVo's next step.

However, Joe Blow's four-year old 501 DVR was found to infringe. Now, it doesn't matter what modification is made to Joe's 501 and all others that have been before the court. Those have already been found infringing. DISH/SATS can modify those products in the hands of consumers all they want, as long as they are also modified to have their DVR functionality disabled, as infringement has been determined.


jacmyoung said:


> In Greg's case, what happened was the infringer claimed before the injucntion was in effect, they already modified some of the infringing products, without telling anyone. *Those modified products were shipped to the stores* in the same packaging with the same name and model number.
> 
> After the injunction was in effect, *the infringer made an half-a#$% effort to notify the stores of such modification*, by sending them some product instruction sheets, in which they described the new part (the hardness which was found infringing) and designated those modified products as model 43002c (from the old 43002b), and that was all the infringer did to try to come into compliance of the order.
> 
> Such effort was less than ideal, as noted by the court, because in the end *those stores continued to sell the products* under the same old name and model #, as a result the sales records continued to show violation of the order by the continued sale of the infringing products (the first order), and failing to remove them from the shelves (the second order).


Is TiVo asking for contempt regarding ongoing sales of infringing product?

No.

Then this does not apply.

How's this for logic:
DISH/SATS disables DVR functionality on the "Infringing Products" on 18 April, 2008. Of course, this means there is no more infringement on these products.

DISH/SATS enables DVR functionality with new software on the "Infringing Products" on 19 April, 2008, the very next day.

The injunction states DVR functionality is to be disabled on "Infringing Products" until the injunction expires along with the TiVo Time Warp patent in 2018.

Everyone here, with great certainty, can agree that this action is not allowed.

So I am trying to understand why it matters when DISH/SATS modifies the "Infringing Products". It certainly isn't as if there is an "out" in the disable order.


----------



## Curtis52

Greg Bimson said:


> So I am trying to understand why it matters when DISH/SATS modifies the "Infringing Products".  It certainly isn't as if there is an "out" in the disable order.


If there is no infringement there is no contempt.


> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, *devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction* in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'f*air ground for doubt' on infringement*." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.


----------



## Greg Bimson

Curtis52 said:


> If there is no infringement there is no contempt.


Infringement on four million DVR's placed in customers' homes has already been found.


----------



## Curtis52

Greg Bimson said:


> Infringement on four million DVR's placed in customers' homes has already been found.





> "At the heart of any contempt proceeding is the circumstance that the *substantive issues were finally adjudicated in prior litigation* between the same parties.
> 
> Contempt "should not be resorted to where there is *fair ground of doubt* as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, *courts have consistently first analyzed the changes in the devices*, in the context of determining whether to *reopen issues previously adjudicated*." KSM


..


----------



## James Long

> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, *devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction* in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " '*fair ground for doubt' on infringement*." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.


The four million products in question HAVE been enjoined as infringements after trial on a complaint. The above would apply to new products that are not only colorably different in an infringement complaint ... it doesn't apply to existing products.



> "At the heart of any contempt proceeding is the circumstance that the *substantive issues were finally adjudicated in prior litigation* between the same parties.
> 
> Contempt "should not be resorted to where there is *fair ground of doubt* as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, *courts have consistently first analyzed the changes in the devices*, in the context of determining whether to *reopen issues previously adjudicated*." KSM


Tivo does not doubt that DISH's conduct is wrong ... which is why they resorted to a contempt motion.

The court has not been asked to reopen the previously adjudicated issues. Not even by DISH (who are claiming 'new products' and 'virtual product replacement' not 'please re-adjudicate our existing products ruled infringing').


----------



## Greg Bimson

> In making a finding that the accused *new* device is an infringement, the court cannot avoid looking at the claims of the patent. KSM


There is no motion before the court asking modified products be ruled infringing. There is a motion before the court to find DISH/SATS non-compliant with the order to disable the existing devices found to infringe.


----------



## nobody99

Curtis52 said:


> If there is no infringement there is no contempt.


Wrong.



> A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent


Direct from the case you know and love so well.


----------



## James Long

nobody99 said:


> Direct from the case you know and love so well.


But he knows so many so well (not sure any of them are loved). Care to name the case?


----------



## jacmyoung

Greg Bimson said:


> There is no motion before the court asking modified products be ruled infringing. There is a motion before the court to find DISH/SATS non-compliant with the order to disable the existing devices found to infringe.


Greg, let's keep our eyes on the ball here.

First off, you and I apparently disagree if the products already sold may be modified to be outside of the scope of the injunction, you say no, I say yes because the standards never excluded products already sold from those rules.

Your response is then, but there is the second order in this injunction to disable, well yeah, in your case law there was also a second order to pull of the shelf.

You said in your case the patentee only accused the infringer of contempt of the continued sale and not pulling of the shelves those non-modified products.

Absolutely not true, the patentee in your case did precisely what Tivo is doing, accused the infringer of violation of the letter of the injunction, on both the first order and the second order, for *all products* the infringer sold and not pulled off the shelves after the injunction took effect.

Those modified products in your case were already on the shelves even before the injunction took effect. The infringer only notified the stores after the injunction took effect by mailing the stores some kind of product instruction sheets, in which they described a new hardness part, and a new model # assigned for those products with the new hardness part.

So it was clear the infringer violated the letter of the injunction even with the modified products because all the products in question in that case, whether modified or not, were already in the stores, before the injunction took effect, and all the products in question, also all bore the same name and model # as specifically proscribed in the letter of the injunction.

And that is the bottom line. It did not even have to do with if the products were sold or not, in that case it had to do with if the products were already on the shelves or not, and according to the patentee, and based on the letter of the injunction, all products already on the shelves bearing the names proscribed had to be pulled.

But the court said, no, not for the modified ones, because once a product was modified, the *requisite standard* must be used. Sounds familiar? And since the patentee did not meet such standard, and failed to prove with clear and convincing evidence that the modified products still infringed, the infringer was not in contempt of the continued sale of those products after the injunction took effect, and also not in contempt of not pulling them off the shelves even though those products were placed on the shelves before the injunction was in effect, and also those products were specifically named in the injunction as to be pulled off the shelves.

Violation of the letter of the injunction in that case was abundantly clear, but since the patentee did not prove with clear and convincing evidence that those modified products were still infringing, the court said it could not find the infringer in contempt of selling those modified products or not pulling them off the shelves.

Again keep our eyes on the ball here, at this point we are not arguing whether the products are sold or not, but if those products were already on the shelves or not, and if prima facie violation is enough because the injunction ordered all the products already on the shelves be pulled.

Your case clearly proved , when it comes to modified products, prima facie violation is not enough, infringement must also be found.

This is exactly what is in front of the court on 9/4. On one hand Tivo insists prima facie violation is enough to cite DISH in contempt, on the other hand DISH says wait a minute, for the modified products, prima facie violation is not enough, Tivo must prove with clear and convincing evidence that the accused modified DVRs still infringe.


----------



## Curtis52

> In making a finding that the accused *new* device is an infringement, the court cannot avoid looking at the claims of the patent. KSM





Greg Bimson said:


> There is no motion before the court asking modified products be ruled infringing.


Then why bring it up? The motion before the court isn't about fasteners either. The KSM appeal was made precedential and the court detailed the logic in their ruling so that other courts could apply the same logic in other cases (even if the cases aren't about fasteners during a waning moon).


Greg Bimson said:


> There is a motion before the court to find DISH/SATS non-compliant with the order to disable the existing devices found to infringe.


We know.


----------



## jacmyoung

Curtis52 said:


> Then why bring it up?
> We know.


Because that is the only thing going for Tivo. Sadly the above statement does not say *used* products do not apply, only that in that case the product was new.

But we have more than one case in which *used* products/services/processes were subject to the same rules, those rules use the terms such as "adjudicated products" or "infringing devices", and without exception stated that they can be modified to workaround the patent in order to stay in the marketplace.

The Tivo people choose to ignore those rules, but the court cannot.


----------



## nobody99

James Long said:


> But he knows so many so well (not sure any of them are loved). Care to name the case?


Sorry - it's KSM.


----------



## nobody99

jacmyoung said:


> Because that is the only thing going for Tivo.


You just don't see the train wreck coming for DISH, do you.


----------



## nobody99

Curtis, every time you quote KSM, just keep this in mind. The court said this in KSM:



> In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings.


----------



## jacmyoung

nobody99 said:


> Curtis, every time you quote KSM, just keep this in mind. The court said this in KSM:


Again there are other cases where the products involved were already in use, the same rules apply.

Curtis did not only cite the KSM, in fact he made fun of Greg continued to bring up the KSM case. I remember Curtis' most recent quotes were all from other cases, where the term used was either modifying "adjudicated products" or modifying "infringing devices", no where indicating they had to be not sold yet.

And keep in mind if you ask a "smart" question, you also run the risk of making yourself look very bad if that question turns out not so smart in the end.


----------



## Greg Bimson

jacmyoung said:


> First off, you and I apparently disagree if the products already sold may be modified to be outside of the scope of the injunction, you say no, I say yes because the standards never excluded products already sold from those rules.


Care to prove this?


jacmyoung said:


> Curtis did not only cite the KSM, in fact he made fun of Greg continued to bring up the KSM case.


Uh, Curtis is the one continually bringing up the KSM case. I use the KSM case to diffuse his (and your) incorrect theory.

KSM is about accusing a modified device which has never been before the court of continued infringement. Fisher-Price is about contempt regarding products that have been before the court before, as any infringing product which had been modified and sold were correctly removed from contempt relief. TiVo is only asking that adjudicated infringing product follow the order which was given: disable DVR functionality.


----------



## Greg Bimson

Greg Bimson said:


> There is a motion before the court to find DISH/SATS non-compliant with the order to disable the existing devices found to infringe.





Curtis52 said:


> We know.


Then I find it incredibly curious as to why every single standard in defense of DISH/SATS points to devices that have never been before the court before, espeically when TiVo is simply asking that the devices before the court and adjudicated infringing should simply follow the injunction.

Not a single standard applies to a product adjudged infrining.

Even DISH/SATS says they've complied with the injunction.


----------



## Curtis52

Greg Bimson said:


> KSM is about accusing a modified device which has never been before the court before of continued infringement.


KSM is about contempt of court for not complying with a patent injunction with regard to a modified adjudicated product. The appeals court laid out all the logical decision steps to be applied in such a case. They knew the case was precedential and would be used in a variety of patent cases. If they felt like a step in the logic needed caveats such as "if the modification is of a blue part then..." or "if the modification is performed north of the equator then ..." they would have said so. There are no caveats that remove the 9-4 contempt hearing from the case law they laid down.



> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.





> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings."


----------



## Greg Bimson

> In making a finding that the accused new device is an infringement, the court cannot avoid looking at the claims of the patent. KSM





Greg Bimson said:


> There is no motion before the court asking modified products be ruled infringing.





Curtis52 said:


> Then why bring it up?


Because the order to disable applies to the devices already found infringing. Although those devices' infringement status now is questionable, the fact those devices have been ruled infringing and will never get another ruling otherwise is the rule of law.

The only caveat being if SCOTUS agrees to hear the writ of certiorari filed by DISH/SATS. The appeals process still has a way to go on the original verdict.


----------



## Greg Bimson

Curtis52 said:


> KSM is about contempt of court for not complying with a patent injunction with regard to a modified adjudicated product.


And Jones (the defendant, or infringer) agreed that the *adjudicated product*, the THERMA-LOCK, was still enjoined and subject to the injunction.


Curtis52 said:


> Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings."


And once again, TiVo cannot file suit against a product already found infringing. Said devices are already enjoined as infringements under an existing injunction under this complaint.

You are asking for TiVo to file another suit against a device already adjudicated to infringe.


> The mandate rule provides that issues actually decided [on appeal]-those within the scope of the judgment appealed from, minus those explicitly reserved or remanded by the court-are foreclosed from further consideration." Amado v. Microsoft


Devices adjudicated to infringe do not get any more consideration.


----------



## Curtis52

Greg Bimson said:


> Because the order to disable applies to the devices already found infringing. Although those devices' infringement status now is questionable, the fact those devices have been ruled infringing and will never get another ruling otherwise is the rule of law.


Gee, that sounds a lot like reopening issues previously adjudicated.


> "When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to *reopen issues previously adjudicated*." KSM


----------



## nobody99

Let's put Curtis52's quotes in context, shall we?



> In view of...a manufacture which was not the subject of the original litigation...a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.





> In view of...a manufacture which was not the subject of the original litigation...turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings.


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## Curtis52

Greg Bimson said:


> And Jones (the defendant, or infringer) agreed that the *adjudicated product*, the THERMA-LOCK, was still enjoined and subject to the injunction.


The plaintiff said that the modified device was subject to the injunction.


> And once again, TiVo cannot file suit against a product already found infringing. Said devices are already enjoined as infringements under an existing injunction under this complaint.


Why would TiVo need to file suit? They would only need to do that if the devices are more than colorably different. At that point res judica doesn't apply. That's the reason for the colorably different test, to determine whether there needs to be a new suit.


> You are asking for TiVo to file another suit against a device already adjudicated to infringe.Devices adjudicated to infringe do not get any more consideration.


I am not asking TiVo to do anything. To follow case law with regard to modified devices they need to first find out whether the devices are not more than colorably different. If they aren't, then Dish is in contempt. If they are more than colorably different then they aren't the same device for the purpose of res judica and TiVo would need to file suit.


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## Greg Bimson

Greg Bimson said:


> Because the order to disable applies to the devices already found infringing. Although those devices' infringement status now is questionable, the fact those devices have been ruled infringing and will never get another ruling otherwise is the rule of law.





Curtis52 said:


> Gee, that sounds a lot like reopening issues previously adjudicated.


Is there somewhere in the Curtis52 "Book of Standards" that allows a device found infringing to be tried a second time? Is there somewhere in this "Book of Standards" that TiVo must get a ruling of infringement on a device where there has already been a ruling of infringement? That just doesn't make any legal sense.


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## Curtis52

Greg Bimson said:


> Is there somewhere in the Curtis52 "Book of Standards" that allows a device found infringing to be tried a second time? Is there somewhere in this "Book of Standards" that TiVo must get a ruling of infringement on a device where there has already been a ruling of infringement? That just doesn't make any legal sense.


That is the reason for the "colorably different" test. If the devices are more than colorably different, they aren't legally the same devices.


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## Ergan's Toupe

jacmyoung said:


> And keep in mind if you ask a "smart" question, you also run the risk of making yourself look very bad if that question turns out not so smart in the end.


Huh?:lol:


----------



## jacmyoung

Curtis52 said:


> KSM is about contempt of court for not complying with a patent injunction with regard to a modified adjudicated product. The appeals court laid out all the logical decision steps to be applied in such a case. They knew the case was precedential and would be used in a variety of patent cases. If they felt like a step in the logic needed caveats such as "if the modification is of a blue part then..." or "if the modification is performed north of the equator then ..." they would have said so. There are no caveats that remove the 9-4 contempt hearing from the case law they laid down.


I don't think you can use such legal logic to convince them, because they are not interested in understanding it in the legal context.

Give you an example, the Tivo people argued because DISH "lied" before, therefore the court should punish them on 9/4 for the past "lies." Such logic of course completely flies in the face of how the court works. On 9/4, the judge's decision cannot be based on what DISH did or did not do in the past, only the acts after the injunction took effect. The fact DISH had lost the infringement case will have absolutely no bearing on whether DISH is now in violation or not.

They also say we have to prove that all the rules must specifically include the used products in order to support our notion that the used products may also be modified. But of course that is not how the court works.

The court works in the opposite ways. It is the plaintiff who must prove that the court did indeed exclude used products from those rules, if not, the defendant gets the benefit of the court not specifically excluding the used products. It is Tivo who must prove, not DISH.

And one step further, they also completely ignore how a "summary proceeding" works in the legal context. They believe the dispute on 9/4 will be just like the debate happening now among ourselves, where each person gets the same treatment, the same benefit of the doubt, the same standard of proof or arguing power.

But on 9/4, DISH and Tivo will not be equal parties, DISH will be given preferential treatment. It may sound hard to believe, but in a summary proceeding, the court is required to give all considerations to the non-mover (DISH), and demand that the mover (Tivo) must prove with clear and convincing evidence. DISH only needs to offer some evidence in dispute, DISH's evidence needs not be substantial at all, much less clear and convincing.

Of course Tivo's supporters don't have to think in the legal context, after all Tivo is their beloved company, and in the end after Tivo is shown the door by the judge, the Tivo supporters will just blame it all on DISH, the judge and our legal system.


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## CuriousMark

Thank you nobody99.

It seems the nitty gritty issue the judge will have to consider is whether downloading new software can be considered new manufacture or not. Obviously, up till this point, that was never an issue, things came off the assembly line once and that was it. Downloadable software that can change the behavior and internal workings of a device appears to be new territory. No one has provided examples of how this should be interpreted that I have seen, so it appears to be completely up to Folsom at this point.

Obviously Dish wants him to see the download as a form of new manufacture. Just as obviously TiVo wants him to see the box in the context of history where things can only come off an assembly line once. 

This brave new world of software modifiable devices has not been embedded into the legal system yet, so no matter what he decides, there will be an appeal and this decision could set some very long term precedent after it wends its way through the legal maze.

If Dish is found in contempt, and chooses to settle rather than appeal this could be over fairly quickly. I think that is the main reason TiVo is pursuing this course rather than proceeding to colorable differences and doctrines of equivalence. Those could take much longer. 

Settlement is still probably Dish's best move long term, but I doubt they will. The chance to set precedent is probably too exciting to them and their lawyers to pass up.


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## Greg Bimson

Curtis52 said:


> That is the reason for the "colorably different" test. If the devices are more than colorably different, they aren't legally the same devices.


Yet the "colorably different test" is only on *sales* of products alleged to infringe, not those that have already been found to infringe. At least that is what KSM says.


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## peak_reception

Curtis52 said:


> The KSM appeal was made precedential and the court detailed the logic in their ruling so that other courts could apply the same logic in other cases (even if the cases aren't about fasteners during a waning moon).


 Well, apparently Curtis52 has me on ignore since he continues to copycat ("infringe" on) James' patented *moon phases* quip from awhile back. :lol: He'll have to add Judge Folsom to the ignore list soon as well  "Charlie" already has and we'll see how well that works out


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## Curtis52

Greg Bimson said:


> Yet the "colorably different test" is only on *sales* of products alleged to infringe, not those that have already been found to infringe. At least that is what KSM says.


Can you provide a quote where they said that the following only applies to new sales or only to fasteners etc.?


> "When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, courts have consistently first analyzed the changes in the devices, in the context of determining whether to reopen issues previously adjudicated."


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## nobody99

Curtis52 said:


> Can you provide a quote where they said that the following only applies to new sales or only to fasteners etc.?


Wow, guess who has ME on ignore? :lol:

Once again (for the third time in two days), from the very same KSM case you cite:



> In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation


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## peak_reception

Greg Bimson said:


> Is there somewhere in the Curtis52 "Book of Standards" that allows a device found infringing to be tried a second time? Is there somewhere in this "Book of Standards" that TiVo must get a ruling of infringement on a device where there has already been a ruling of infringement? That just doesn't make any legal sense.


Exactly. And instead of following Judge Folsom's explicit court order to disable DVR functionality, Dish instead downloads some new code to their Infringing Products and all of sudden that is supposed to instantly dissolve 4+ years of litigation and rulings, juries and judges alike, and it starts all over again :icon_lame Sheer fantasy. Desperate denial.


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## peak_reception

nobody99 said:


> Wow, guess who has ME on ignore? :lol:
> 
> Once again (for the third time in two days), from the very same KSM case you cite:


 You're in good company, he has Judge Folsom on ignore too :lol:


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## nobody99

CuriousMark said:


> It seems the nitty gritty issue the judge will have to consider is whether downloading new software can be considered new manufacture or not. Obviously, up till this point, that was never an issue, things came off the assembly line once and that was it. Downloadable software that can change the behavior and internal workings of a device appears to be new territory. No one has provided examples of how this should be interpreted that I have seen, so it appears to be completely up to Folsom at this point.


No question about it, a field-modifiable device brings up its own issues. But that could very well be handled in the future by asking the judge to write the injunction in such a way that it allows for the product to be changed. Dish could have asked Judge Folsom to write the injunction to say something like "DVR functions are disabled until the end of the '389 patent or until a court-approved substitute for those functions is downloaded." But here's the problem: they didn't ask for it, and they don't have another chance.

As Greg has pointed out several times, there's a very clear procedure that must be followed. That procedure is there for a reason: it protects _both_ sides.


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## nobody99

peak_reception said:


> You're in good company, he has Judge Folsom on ignore too :lol:


Heheheh. Good stuff :lol:


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## jacmyoung

Curtis52 said:


> If the software is not more than colorably different, no new suit is necessary.


You are absolutely correct. If after the judge *first* looks at the differences and decides the differences are only colorable as argued by Tivo, then Tivo would have, according to the judge, proved with clear and convincing evidence that the accused DVRs still infringe, and DISH will be in contempt.

In that case DISH will also appeal of course, and the basis of appeal will not be Judge Folsom's abuse of his discretion, rather to dispute his interpretation of the differences being mere colorable, in another word just a difference of opinions.

I have already said before, DISH has more than proved the differences are more than colorable, to the point that it no longer infringes. Because DISH only needs to create the doubt, or raise substantial open issues, and DISH's evidence does not have to be substantial, while Tivo's evidence must be clear and convincing. Therefore it will be near impossible for judge to rule it is only colorable.

The only time when mere colorable decisions were made, the infringers had only relabeled the infringing products, or re-packaged them, without any changes in the infringing elements. Every time an infringer went a little beyond such mere colorable attempt, the infringer was cleared of a contempt, even in the cases when the infringer's attempts were considered "less than ideal" or not very convincing or incomplete.

DISH's new software changes go far beyond cosmetic changes, their new software evidence show each and everyone of the infringing elements is removed or changed. More than enough to convince the court the differences are more than colorable.


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## jacmyoung

CuriousMark said:


> ...It seems the nitty gritty issue the judge will have to consider is whether downloading new software can be considered new manufacture or not. Obviously, up till this point, that was never an issue, things came off the assembly line once and that was it. Downloadable software that can change the behavior and internal workings of a device appears to be new territory. No one has provided examples of how this should be interpreted that I have seen, so it appears to be completely up to Folsom at this point...


Yes I have proved it, using that Footprint 2.0 case, the only argument from the Tivo bunch was in that case the court allowed it. To which I say no the infringer does not need court pre-approval, nor be allowed by the court before downloading, or modifying. A software download was allowed by the court before as a legit way to modify, so it is proven.


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## nobody99

Can you show me where the injunction prohibits certain software?


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## CuriousMark

nobody99 said:


> No question about it, a field-modifiable device brings up its own issues. But that could very well be handled in the future by asking the judge to write the injunction in such a way that it allows for the product to be changed. Dish could have asked Judge Folsom to write the injunction to say something like "DVR functions are disabled until the end of the '389 patent or until a court-approved substitute for those functions is downloaded." But here's the problem: they didn't ask for it, and they don't have another chance.


So instead of both sides talking past one another, what I would like to know is the following.

1) Why is it good to consider a download as effective new manufacture? Why is that good for the patent system? Why is it good for America? Why should Judge Folsom then open the proceedings to determination of colorable difference?

or

2) Why is it good to see download as being nothing more than a form of maintenance and not new manufacture? Why is it good for the patent system? Why is it good for America? Why should Judge Folsom then find Dish in contempt?

Aren't these the issues the judge will have to think about in deciding whether he can treat this as a standalone Prima Facie violation rather than as a prelude to a colorable differences determination? Are there other issues that should be included in his thinking?

We all get that the two sides of the discussion here see this point differently, but both are talking past it. Let's dig a little deeper.


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## Curtis52

CuriousMark said:


> So instead of both sides talking past one another, what I would like to know is the following.
> 
> 1) Why is it good to consider a download as effective new manufacture? Why is that good for the patent system? Why is it good for America? Why should Judge Folsom then open the proceedings to determination of colorable difference?


Because it could end infringement without inconveniencing the subscribers and without emptying their wallets. Ending infringement is the goal of the injunction and if it can be done painlessly the court will be overjoyed.


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## nobody99

CuriousMark said:


> So instead of both sides talking past one another, what I would like to know is the following.
> 
> 1) Why is it good to consider a download as effective new manufacture? Why is that good for the patent system? Why is it good for America? Why should Judge Folsom then open the proceedings to determination of colorable difference?
> 
> or
> 
> 2) Why is it good to see download as being nothing more than a form of maintenance and not new manufacture? Why is it good for the patent system? Why is it good for America? Why should Judge Folsom then find Dish in contempt?
> 
> Aren't these the issues the judge will have to think about in deciding whether he can treat this as a standalone Prima Facie violation rather than as a prelude to a colorable differences determination? Are there other issues that should be included in his thinking?
> 
> We all get that the two sides of the discussion here see this point differently, but both are talking past it. Let's dig a little deeper.


Well there's another issue - and its an important one to this case. Despite the vocal cries from two certain posters to the contrary, the injunction against _existing_ DVRs was in fact a form of remedy where monetary damages were not adequate. The judge even mentioned the "sticky customers" discussion and that may have played into it. We really don't know how much of the "turn off the DVR functionality" really was a form of leveling the playing field.

If DISH had attempted to get the wording of the injunction changed with regard to the existing, placed DVRs as I suggested (to allow court-approved updates to the software), TiVo would have had the opportunity to argue against those changes. And that's why procedure is important - because there is a correct time and place for it. As TiVo has said, that door has closed permanently.


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## nobody99

Curtis52 said:


> Because it could end infringement without inconveniencing the subscribers and without emptying their wallets. Ending infringement is the goal of the injunction and if it can be done painlessly the court will be overjoyed.


It is _one_ of the goals of the injunction. The other is to disable the DVR functions of the receivers _already_ adjudged to infringe.

From KSM, again,



> A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent


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## CuriousMark

Curtis52 said:


> Because it could end infringement without inconveniencing the subscribers and without emptying their wallets. Ending infringement is the goal of the injunction and if it can be done painlessly the court will be overjoyed.


Even if that is true for this case, why would it be good policy for all cases to follow? Wouldn't it open the door to easier infringement as a sort of get out jail free card? Wouldn't such a precedent weaken the patent system overall?

I certainly see your points as applying to this case as being valid, but I am looking for a more global perspective in the answer to the question. Perhaps a weaker, more easily designed around patent system is better? If so, why?


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## Ergan's Toupe

jacmyoung said:


> Of course Tivo's supporters don't have to think in the legal context, after all Tivo is their beloved company, and in the end after Tivo is shown the door by the judge, the Tivo supporters will just blame it all on DISH, the judge and our legal system.


Just curious. Are you a lawyer for Dish? you seem to know a lot about this case.


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## CuriousMark

nobody99 said:


> Well there's another issue - and its an important one to this case. Despite the vocal cries from two certain posters to the contrary, the injunction against _existing_ DVRs was in fact a form of remedy where monetary damages were not adequate. The judge even mentioned the "sticky customers" discussion and that may have played into it. We really don't know how much of the "turn off the DVR functionality" really was a form of leveling the playing field.


Yes, that is a good point. It certainly applies to this particular case. I just want to stimulate discussion on the one point in isolation from a national perspective. Perhaps that is not possible or reasonable, but I want to give it a try.

Let's come back to that facet next, after hearing what people think of the downloadable software precedent in relation to "new manufacture".


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## nobody99

Ergan's Toupe;1752246 said:


> Just curious. Are you a lawyer for Dish? you seem to know a lot about this case.


"seem" being the key word :lol:


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## Greg Bimson

CuriousMark said:


> 1) Why is it good to consider a download as effective new manufacture? Why is that good for the patent system? Why is it good for America? Why should Judge Folsom then open the proceedings to determination of colorable difference?





Curtis52 said:


> Because it could end infringement without inconveniencing the subscribers and without emptying their wallets. Ending infringement is the goal of the injunction and if it can be done painlessly the court will be overjoyed.


So now we allow a convicted infringer to continually modify product and have it tested for colorable difference until the infringement is gone, which could take years.


> The contempt proceeding is an essential tool of the judicial and public interest in the finality of litigation. KSM


And by allowing a field-modifiable device the ability to be litigated after every modification, no matter how herculean or trival the amount the modifications are, the finality of litigation will never be attained.

It commits violence to the judiciary and the public interest if an infringer can have adjudicated devices relitigated because they changed a byte or two.


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## Curtis52

CuriousMark said:


> Even if that is true for this case, why would it be good policy for all cases to follow? Wouldn't it open the door to easier infringement as a sort of get out jail free card? Wouldn't such a precedent weaken the patent system overall?
> 
> I certainly see your points as applying to this case as being valid, but I am looking for a more global perspective in the answer to the question. Perhaps a weaker, more easily designed around patent system is better? If so, why?


Dish isn't evading damages. The injunction isn't a penalty. The only lawful purpose of a patent injunction is to prevent infringement. As long as that happens the court is satisfied.


> 35 U.S.C. 283 Injunction. - Patent Laws
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent* the violation of any right secured by patent, on such terms as the court deems reasonable.


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## Ergan's Toupe

nobody99 said:


> If DISH had attempted to get the wording of the injunction changed with regard to the existing, placed DVRs as I suggested (to allow court-approved updates to the software), TiVo would have had the opportunity to argue against those changes. And that's why procedure is important - because there is a correct time and place for it. As TiVo has said, that door has closed permanently.


Dish didn't need the injunction worded differently because Charlie knew his engineers were going to put forth a "Herculean effort" and save the day.


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## CuriousMark

Curtis52 said:


> Dish isn't evading damages. The injunction isn't a penalty. The only lawful purpose of a patent injunction is to prevent infringement. As long as that happens the court is satisfied.
> 
> 
> 
> 35 U.S.C. 283 Injunction. - Patent Laws
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.
Click to expand...

Based on your quote, I would think that the CAFC would have struck down the disable part of the injunction. Given the existence of field modifiable devices, not specifically allowing a change to make it non-infringing sounds like it would have violated that rule and the CAFC would have had to tell the judge to change the injunction. They didn't, so it sounds like you are saying they missed an important part of their review of this case. They let it stand and here we are. Maybe there is more to it than just that.


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## nobody99

Ergan's Toupe;1752280 said:


> Dish didn't need the injunction worded differently because Charlie knew his engineers were going to put forth a "Herculean effort" and save the day.


And it's going to end up costing DISH a Hurculean amount of money :hurah:


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## Curtis52

Greg Bimson said:


> So now we allow a convicted infringer to continually modify product and have it tested for colorable difference until the infringement is gone, which could take years.And by allowing a field-modifiable device the ability to be litigated after every modification, no matter how herculean or trival the amount the modifications are, the finality of litigation will never be attained.
> 
> It commits violence to the judiciary and the public interest if an infringer can have adjudicated devices relitigated because they changed a byte or two.


As has been pointed out several times, the appeals court has allowed modification pre-approval requirements in a few cases where defendants have "cried wolf" several times and made bad faith efforts to claim modifications to infringing devices were more than colorable when they were found not to be. There are no pre-approval requirements in the current injunction. As it stands now, here is the case law that applies:



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


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## nobody99

Curtis52 said:


> The only lawful purpose of a patent injunction is to prevent infringement.


Let's not forget that this notion is merely Curtis' opinion, and certainly not supported by fact.


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## Curtis52

CuriousMark said:


> Based on your quote, I would think that the CAFC would have struck down the disable part of the injunction. Given the existence of field modifiable devices, not specifically allowing a change to make it non-infringing sounds like it would have violated that rule and the CAFC would have had to tell the judge to change the injunction. They didn't, so it sounds like you are saying they missed an important part of their review of this case. They let it stand and here we are. Maybe there is more to it than just that.


There would be no need to strike down the disable clause in the injuncion. It would not apply to devices more than colorably different just as it does not apply to devices more than colorably different in this case.


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## nobody99

Curtis52 said:


> As has been pointed out several times, the appeals court has allowed modification pre-approval requirements in a few cases where defendants have "cried wolf" several times and made bad faith efforts to claim modifications to infringing devices were more than colorable when they were found not to be. There are no pre-approval requirements in the current injunction. As it stands now, here is the case law that applies:


There you go again. You keep forgetting that all this fluff only deals with new manufacture. Let's put your quote from KSM in its proper context by mention what the court had said earlier:



> In view of ... a manufacture which was not the subject of the original litigation...An enjoined party is entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device although he bears the risk that the enjoining court may find changes to be too insubstantial to avoid contempt.


Keep misquoting KSM, and I'll keep fixing it for you. It's my civic duty.


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## nobody99

How about one more from KSM:



> with a consent decree, an adjudged device conceivably could have been found not to fall within the scope of the claims upon a full trial. Nevertheless, such a device is an admitted infringement


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## phrelin

I admit, this discussion baffles me. The bafflement begins and ends with the term "device."

As far as I'm concerned if the words in a book are plagiarized and found to contain a copyright infringement and 5,000 people own the book and have stored it in a Brand X Model 101 Color Brown bookcase, the bookcase isn't an infringing device, the type of paper the book is printed on is not an infringing device, and even the words themselves cannot be considered infringing - just the particular order of the words.

In this case as you all argue here I feel like someone ruled that the owners of the Brand X Model 101 Color Brown bookcase have been ordered to turn them into nicknack displays. To me, words are all about their arrangement and use and code is all about its order and use. What they are written on or stored in should be irrelevant. It's the plagiarized words or infringing code that must be eliminated sufficiently to prevent further earnings therefrom and, more importantly, that any previous or future earnings therefrom should accrue to the original author or programmer.

And in this case, the bookcases are sufficiently out of date that they are slowly being turned into firewood, so they are truly irrelevant.

I can't understand why this case isn't about money and nothing but money.


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## jacmyoung

CuriousMark said:


> Based on your quote, I would think that the CAFC would have struck down the disable part of the injunction. Given the existence of field modifiable devices, not specifically allowing a change to make it non-infringing sounds like it would have violated that rule and the CAFC would have had to tell the judge to change the injunction. They didn't, so it sounds like you are saying they missed an important part of their review of this case. They let it stand and here we are. Maybe there is more to it than just that.


This question is fair and has been answered before.

First off, the appeals court upheld the software infringement verdicts, so to struck down the disabling part, would be to continue to allow DISH to use the old software to infringing, obviously not a correct thing to do.

Your question was to ask the court to anticipate what DISH may do to workaround the patent, and struck down the lower court's order is such anticipation. The court rightfully had always refused to do so. In fact I had cited cases where the infringers tried very hard to have the court to struck down certain provisions of the injunctions without success, because the courts do not look ahead, nor rely on the past, but construct the injunctions on the present, based on what is the final judgment.

The appeals court also told those infringers who wished to have some provisions truck down, that they need not to do so, because in the event a contempt charge is to surface by the winning patentee, and during a contempt proceeding, the rules will be applied religiously, if not by the lower court, than will be by the appeals court on appeal. So the higher court basically was telling those infringers, there is no need to struck down everything for the protection of your right to modify, such protection is guaranteed in a contempt proceeding with all the uniform standards already in place.

Beside, there is nowhere in this injunction that says changes are not allowed, only when Tivo's bunch tried to interpret it that way, it may sound so. But they are wrong, this injunction never said DISH cannot change the listed DVRs.


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## James Long

jacmyoung said:


> First off, you and I apparently disagree if the products already sold may be modified to be outside of the scope of the injunction, you say no, I say yes because the standards never excluded products already sold from those rules.


The trouble is, as illustrated by Fisher Price, telling the difference between modified and unmodified.

It that case a much stricter order was placed ... the products were ordered recalled. The court could have ordered a recall in the Tivo case but did not do that on the assurance that DISH could disable the DVR functionality. (If it had not been for that assurance the products would have simply been recalled.)

The error in Fisher Price was making it near impossible for the court to monitor compliance by using a confusing model number. In this case DISH has made no effort to make the difference between modified and unmodified products. DISH is expecting the court to 'take their word for it'.

But that is an issue for another court date ...
Keep your eyes on the ball - the issue for September 4th isn't infringement, it is compliance.


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## Crunchy

Biotech companies patent DNA. That doesn't mean the finding stands up to appeal. There was a big publicity over Blackberry service and patents. That was solved too.


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## jacmyoung

Greg Bimson said:


> So now we allow a convicted infringer to continually modify product and have it tested for colorable difference until the infringement is gone, which could take years.And by allowing a field-modifiable device the ability to be litigated after every modification, no matter how herculean or trival the amount the modifications are, the finality of litigation will never be attained.
> 
> It commits violence to the judiciary and the public interest if an infringer can have adjudicated devices relitigated because they changed a byte or two.


But you cannot convict an already convicted felon of a crime simply based on suspicion, without evidence, just because he was convicted of another crime before.

Sadly, or you can say luckily, our legal system requires the court to prove, in a criminal case, beyond reasonable doubt, in a civil case, with preponderance of evidence, and in a civil contempt proceeding, with clear and convincing evidence, that the defendant's accused acts are indeed in violation of the law and order.

If it may appear that by doing so we may let some people who we are convinced as the violators, slip through the cracks, then that is just the price we have to pay. Otherwise welcome to a totalitarian society.

And besides, Tivo will not be wronged by the court if DISH is not in contempt, Tivo can file a new complaint against the DISH's new software, and if the new software is later found continue to infringe, DISH will have to pay the damages during the entire time it used the new software, plus interest, and depending on the circumstances, may incur up to treble damages and attorney fees at that time also.


----------



## scooper

CuriousMark said:


> Even if that is true for this case, why would it be good policy for all cases to follow? Wouldn't it open the door to easier infringement as a sort of get out jail free card? Wouldn't such a precedent weaken the patent system overall?
> 
> I certainly see your points as applying to this case as being valid, but I am looking for a more global perspective in the answer to the question. Perhaps a weaker, more easily designed around patent system is better? If so, why?


The Patent system and the courts relating to enforcement in this country is already broke - witness this case in the first place. It can't keep up with rapid changes in software changes (when the Patent Office even gets it right in the first case - I have ALWAYS maintained that what Tivo has is COPYRIGHTABLE, not patentable).


----------



## jacmyoung

James Long said:


> The trouble is, as illustrated by Fisher Price, telling the difference between modified and unmodified.
> 
> It that case a much stricter order was placed ... the products were ordered recalled. The court could have ordered a recall in the Tivo case but did not do that on the assurance that DISH could disable the DVR functionality. (If it had not been for that assurance the products would have simply been recalled.)
> 
> The error in Fisher Price was making it near impossible for the court to monitor compliance by using a confusing model number. In this case DISH has made no effort to make the difference between modified and unmodified products. DISH is expecting the court to 'take their word for it'.
> 
> But that is an issue for another court date ...
> Keep your eyes on the ball - the issue for September 4th isn't infringement, it is compliance.


Yes the court could but it did not, but that is not even the point. The point was two orders in that injunction were clearly both violated, one the usual order, the second a "mandatory order" as the Tivo crowd incorrectly wanted to call it.

Tivo is arguing on the exact same premise, DISH violated two clear court orders by letter as Tivo claimed, and must be found in contempt, regardless any evidence of modification or differences. Sadly Tivo will be sorry, because they only need to look to PriceFisher to learn the lesson.


----------



## jacmyoung

scooper said:


> The Patent system and the courts relating to enforcement in this country is already broke - witness this case in the first place. It can't keep up with rapid changes in software changes (when the Patent Office even gets it right in the first case - I have ALWAYS maintained that what Tivo has is COPYRIGHTABLE, not patentable).


What did you mean, on or after 9/4, when the court says DISH is not in contempt, the court will have demonstrated it is keeping up with the rapid changes just fine.

Now whether the patent office is doing a good job is another issue, but that has nothing to do with the court.


----------



## Guest

I think this case brings up some very interesting question:

Should Dish be allowed to modify an existing infringing product to make it non-infringing? 

I think the problem is this will allow companies that have entered a marketplace with an infringing device to continue to reap the benefit of having done so, instead of protecting the patent holder.

It will be interesting to see how the court rules on this, as I don't think any of the other case has really dealt with an issue exactly like this one.


----------



## scooper

jacmyoung said:


> What did you mean, on or after 9/4, when the court says DISH is not in contempt, the court will have demonstrated it is keeping up with the rapid changes just fine.
> 
> Now whether the patent office is doing a good job is another issue, but that has nothing to do with the court.


No - if the courts couldn't solve this in 6 months from initial filing (all appeals) - the system is broke and can't keep up. Any longer and it's basically a money game - who has the money to continue.


----------



## James Long

jacmyoung said:


> Tivo is arguing on the exact same premise, DISH violated two clear court orders by letter as Tivo claimed, and must be found in contempt, regardless any evidence of modification or differences. Sadly Tivo will be sorry, because they only need to look to PriceFisher to learn the lesson.


Must be a new case tossed in there ... infringing faucets?

You are incorrect. Tivo is arguing ONE issue. That issue is that the court ordered that ALL placed products (except 192k) have their DVR functionality disabled and ALL new placements must have DVR functionality disabled. The issue Tivo has called before the court is NOT infringement. That portion of the case is yet to come.

DISH is defending their actions by claiming they have modified products and Tivo has responded to that defense, but the question before the court is clear:
*The Court will determine "whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."*​
The question of continued production and sales of Infringing Products and the question of any modified products are questions for later court activity ... as _ORDERED_ by Judge Folsom.*"The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time."* ... *"TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue."*​
Don't get so confused with other cases (PriceFisher?) that you forget what THIS hearing is about.


----------



## CuriousMark

scooper said:


> No - if the courts couldn't solve this in 6 months from initial filing (all appeals) - the system is broke and can't keep up. Any longer and it's basically a money game - who has the money to continue.


I have to agree with you there. I think TiVo's patent was a valid improvement on the state of the art and thus patentable, as opposed to just copyrightable, but when a Bully like Dish can grind it to near worthlessness simply with money and a system that takes too long and is blind to capabilities of new technologies in the marketplace, then it is definitely broken. It makes patents into little more than a farce used by the companies with big money to hold back those with less. It is positively feudal.


----------



## James Long

tomrogerssucks said:


> I think this case brings up some very interesting question:
> 
> Should Dish be allowed to modify an existing infringing product to make it non-infringing?


Prior case history says they can ... the problem here is that there is an order that requires specific action that DISH has apparently not taken (although they claim to have taken it). They were ordered to disable the DVR functionality on four million products until the patent expires. Whether or not they have done that _to the satisfaction of the court_ is the question being discussed in court in two weeks.


----------



## Greg Bimson

Curtis52 said:


> As it stands now, here is the case law that applies:
> 
> 
> 
> "An enjoined party is entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device although he bears the risk that the enjoining court may find changes to be too insubstantial to avoid contempt."
Click to expand...

And let's not forget that it is Curtis' opinion that this is applicable case law, just as my opinion is backed with the simple fact that a device tried and found infringing does not need to be readjudicated.


----------



## jacmyoung

tomrogerssucks said:


> ...I think the problem is this will allow companies that have entered a marketplace with an infringing device to continue to reap the benefit of having done so, instead of protecting the patent holder...


This statement certainly sounds very reasonable, but as soon as you realize in most cases, infringing devices already entered in the marketplace were never asked to be disabled or removed, you can see how lack of persuasion your statement is.


----------



## jacmyoung

Greg Bimson said:


> And let's not forget that it is Curtis' opinion that this is applicable case law, just as my opinion is backed with the simple fact that a device tried and found infringing does not need to be readjudicated.


Except you have no backing of case law, only your own belief.


----------



## jacmyoung

James Long said:


> Must be a new case tossed in there ... infringing faucets?
> 
> You are incorrect. Tivo is arguing ONE issue. That issue is that the court ordered that ALL placed products (except 192k) have their DVR functionality disabled and ALL new placements must have DVR functionality disabled. The issue Tivo has called before the court is NOT infringement. That portion of the case is yet to come...


In Greg's case, while PriceFisher was arguing several issues, one if them was that the court ordered all products to be pulled from the shelves, the issue was also not infringement, but the simple following of that order.

Do I need to repeat what the court said regarding that particular issue?


----------



## Greg Bimson

Crunchy said:


> There was a big publicity over Blackberry service and patents. That was solved too.


The parties in question regarding Blackberry _settled_. Both parties in this case are more interested in fighting.


----------



## nobody99

jacmyoung said:


> This statement certainly sounds very reasonable, but as soon as you realize in most cases, infringing devices already entered in the marketplace were never asked to be disabled or removed, you can see how lack of persuasion your statement is.


Oh, wait. "in most cases,were never asked to be disabled or removed"

But this one was. So what you're saying is that most cases don't apply to this one. So you are admitting that DISH has failed to bring a single case that makes its point.

I am glad you are starting to see the light.


----------



## Curtis52

Greg Bimson said:


> And let's not forget that it is Curtis' opinion that this is applicable case law, just as my opinion is backed with the simple fact that a device tried and found infringing does not need to be readjudicated.


If there is more than a colorable difference, it isn't legally the same device.


----------



## Greg Bimson

jacmyoung said:


> In Greg's case, while PriceFisher was arguing several issues, one if them was that the court ordered all products to be pulled from the shelves, the issue was also not infringement, but the simple following of that order.
> 
> Do I need to repeat what the court said regarding that particular issue?


Obviously.


> Second, Fisher-Price argues that Safety 1st violated the Injunction by failing to make all reasonable efforts to retrieve infringing products from Safety 1st's major retail customers. The court agrees. Safety 1st hired another company to retrieve infringing products from Toys 'R Us and Babies 'R Us. That was a reasonable effort. But Safety 1st admits that it did not make similar efforts with its other major retail customers, such as Target. The court's order was unambiguous: Safety 1st was required to "make every reasonable effort possible." Safety 1st did not. Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.


----------



## jacmyoung

nobody99 said:


> Oh, wait. "in most cases,were never asked to be disabled or removed"
> 
> But this one was. So what you're saying is that most cases don't apply to this one. So you are admitting that DISH has failed to bring a single case that makes its point.
> 
> I am glad you are starting to see the light.


You continue to fail to understand what I was responding to, the poster said it will be unfair if the infringing devices already in the marketplace be allowed to continue to be used, and I pointed out it is done all the time, so nothing unfair, please understand what he and I were discussing first before responding so you do not go off mark.


----------



## Greg Bimson

Curtis52 said:


> If there is more than a colorable difference, it isn't legally the same device.


That's a stretch. Precedential, even.


----------



## Greg Bimson

jacmyoung said:


> You continue to fail to understand what I was responding to, the poster said it will be unfair if the infringing devices already in the marketplace be allowed to continue to be used, and I pointed out it is done all the time, so nothing unfair, please understand what he and I were discussing first before responding so you do not go off mark.


You fail to understand that when products aren't recalled nor disabled, the infringer pays lost profits on all those devices. If DISH/SATS wants to *pay half a BILLION dollars* in damages to TiVo, so be it.


----------



## jacmyoung

Greg Bimson said:


> Obviously.


Greg Greg, please please keep your eyes on the ball. It is not the non-modified products in that case that was at issue here, please quote the court discision on the modified product, because that was the only item I was talking about.

If you can't find it, then I have quoted for you in a previous post of mine.


----------



## scooper

If Tivo thinks the lost sales were worth $500 million to them, then they are overestimating.

Tivo's big thing always has been getting their technology *LISCENSED* to other box makers, not to make money off their own.


----------



## jacmyoung

Greg Bimson said:


> You fail to understand that when products aren't recalled nor disabled, the infringer pays lost profits on all those devices. If DISH/SATS wants to *pay half a BILLION dollars* in damages to TiVo, so be it.


Greg you have conviniently forgot our such debate before, the lost profits were only applicable for those 197,000 units with lifetime subscriptions, not the others. There were no lost profits on those other DVRs, otherwise the court final judgment would have assessed all 4 million DVRs based on that formular used on those 197,000 units, then allowed all the DVRs on the list to continue to infringe without disabling, just like what it did to the 197,000 units.


----------



## jacmyoung

scooper said:


> If Tivo thinks the lost sales were worth $500 million to them, then they are overestimating.
> 
> Tivo's big thing always has been getting their technology *LISCENSED* to other box makers, not to make money off their own.


And when they "licensed" it to DirecTV, how much did they make per box per month? $0.80 I believe.


----------



## jacmyoung

Greg Bimson said:


> That's a stretch. Precedential, even.


It is not, because the case law said so. The one latest case law DISH cited said for things to be only colorably different, they have to be "essentially the same", so yes in reverse, if they are more than colorably different, legally they are not the same.


----------



## dgordo

jacmyoung said:


> It is not, because the case law said so. The one latest case law DISH cited said for things to be only colorably different, they have to be "essentially the same", so yes in reverse, if they are more than colorably different, legally they are not the same.


Please define "essentially the same."


----------



## Curtis52

Greg Bimson said:


> That's a stretch. Precedential, even.


The concept that if they are different then they are not the same is a stretch? Huh? Besides being common sense it's the law. The whole purpose of the colorable differences test is to determine whether legally the devices are the same or different.


> "Conversely, where an injunction is written narrowly against a particular infringing device, contempt may, nevertheless, be found on the basis of a modified infringing device. An enjoined party under a narrow decree will not be permitted to escape on a purely "in rem" theory that only a particular device is prohibited, where it is evident that the modifications do not avoid infringement and were made for the purpose of evasion of the court's order. Again, the standard is whether the differences between the two devices are merely colorable. Accord McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230, 233, 158 USPQ 81, 84 (10th Cir.), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261, 159 USPQ 799 (1968), and cases cited therein."


Precedential? Hardly. That's how the Star-Brite people got off the hook. They were told to stop selling it. At the contempt hearing it was found that they had modified the product and it was more than colorably different. No contempt. It happens all the time. It isn't precedential.


----------



## scooper

jacmyoung said:


> And when they "licensed" it to DirecTV, how much did they make per box per month? $0.80 I believe.


Ok - so the 501 first came out , what - 4 years ago ?

Just to make things easy - we'll assume that all of a sudden Dish had 4 million DVR units out there

4,000,000 * $1 *12 months = $48 million /year * 4 years = $192 million over 4 years.

But we all "know" that figure is probably on the high side. 

It's not that Echostar / Dish couldn't afford to pay it - they don't *want* to pay it.

By that token, maybe Tivo isn't asking enough in damages.


----------



## scooper

Greg Bimson said:


> That's a stretch. Precedential, even.


Well - in terms of an infringer being able to make infringing units out in the field "non-infringing" this case may very well be Precedential.


----------



## nobody99

Curtis52 said:


> The concept that if they are different then they are not the same is a stretch? Huh? Besides being common sense it's the law. The whole purpose of the colorable differences test is to determine whether legally the devices are the same or different.


Context, once again:



> where an injunction is written narrowly against a particular infringing device [the adjudicated device], contempt may, nevertheless, be found on the basis of a modified infringing device [which was not the subject of the original litigation]. An enjoined party under a narrow decree will not be permitted to escape on a purely "in rem" theory that only a particular device [which was not the subject of the original litigation] is prohibited, where it is evident that the modifications do not avoid infringement and were made for the purpose of evasion of the court's order. Again, the standard is whether the differences between the two devices [the adjudicated device and the device which was not the subject of the original litigation]are merely colorable.


Newly-manufactured devices only.



Curtis52 said:


> Precedential? Hardly. That's how the Star-Brite people got off the hook. They were told to stop selling it. At the contempt hearing it was found that they had modified the product and it was more than colorably different. No contempt. It happens all the time. It isn't precedential.


You're almost there, Curtis. Tell me, when they were told to stop "selling it" does that mean a newly-manufactured item?


----------



## nobody99

scooper said:


> Ok - so the 501 first came out , what - 4 years ago ?
> 
> Just to make things easy - we'll assume that all of a sudden Dish had 4 million DVR units out there
> 
> 4,000,000 * $1 *12 months = $48 million /year * 4 years = $192 million over 4 years.
> 
> But we all "know" that figure is probably on the high side.
> 
> It's not that Echostar / Dish couldn't afford to pay it - they don't *want* to pay it.
> 
> By that token, maybe Tivo isn't asking enough in damages.


Who says its $1? Just because DirecTV licensed it for that amount doesn't mean that DISH gets to.

When DISH is found in contempt, it's entirely possible that the damages will be substantially more than $1 per box after the stay. Think on order of $3-$6 per month range.


----------



## nobody99

scooper said:


> Well - in terms of an infringer being able to make infringing units out in the field "non-infringing" this case may very well be Precedential.


That is absolute true. If Judge Folsom says that DISH was allowed to do what it did, it would set precedence. And TiVo would appeal immediately, and that appeal would certainly be heard. The outcome - who knows.

But one thing is for certain as far as I am concerned. _Even if_ DISH should be allowed to modify the box, and _even if_ Judge Folsom allows it and denies contempt, DISH lost its chance to "fix" the injunction to allow it to do what it did. In the infinitesimally small chance that Folsom says that they were within their right, the Court of Appeals will disagree. The court's ability to enforce its orders as written is far more important than this case.


----------



## scooper

nobody99 said:


> Who says its $1? Just because DirecTV licensed it for that amount doesn't mean that DISH gets to.


Just doing some VERY rough calculations. I make no claims if my "guess" is valid or not 



nobody99 said:


> When DISH is found in contempt, it's entirely possible that the damages will be substantially more than $1 per box after the stay. Think on order of $3-$6 per month range.


Change the "When" to "If" - 
Just because Tivo SAYS they want $x per box per month doesn't mean they will get it - either from the court or from Dish.


----------



## nobody99

Interesting case...

http://bulk.resource.org/courts.gov/c/F2/434/434.F2d.1212.28531.html



> But CCI's argument fails to recognize that this is a civil contempt proceeding, not a patent infringement suit. *The patent infringement was established in the previous round of litigation; we here determine the appropriateness of damages, compensatory and exemplary, for willful violation of a court order*. Siebring v. Hansen, 8 Cir. 1965, 346 F.2d 474, 480; Textag Company v. Hayslip, 5 Cir. 1951, 192 F.2d 435, 438. In dealing with a civil contempt proceeding the district court was not bound by the provisions of Title 35, U.S.C., § 284. Rather it was free to exercise the inherent discretion possessed by a court to correct willful violations of its solemnly passed orders


----------



## nobody99

scooper said:


> Change the "When" to "If" -
> Just because Tivo SAYS they want $x per box per month doesn't mean they will get it - either from the court or from Dish.


I figured someone would notice that 

I agree - that doesn't mean they'll get it. It all depends on just how firmly Judge Folsom meant his "disable the DVR" order to be. None of us know what he truly meant.


----------



## James Long

jacmyoung said:


> ... as soon as you realize in most cases, infringing devices already entered in the marketplace were never asked to be disabled or removed, you can see how lack of persuasion your statement is.


You do realize that this is Tivo vs Echostar ... not some "most case"? We have specific facts in THIS CASE that should not be ignored.



jacmyoung said:


> In Greg's case, while PriceFisher was arguing several issues, one if them was that the court ordered all products to be pulled from the shelves, the issue was also not infringement, but the simple following of that order.


It is always most humorous when you get things wrong, are corrected, and stay on the wrong path. This one is simple: "PriceFisher". :lol:

Assuming you're talking about "Fisher-Price" the issue was one of confusion. Yes, Safety 1st were ordered to pull all of the infringing products off the shelf. But at the end of the day it was proven that they DID pull all infringing products ... or at least made an attempt to do so through a recall. The flaw was that they messed up the documentation. Because they reused the model number with only a minor modification (a change in appended letter) it became impossible to prove if the stores sold infringing products or the modified product. Eventually it was sorted out with the courts issuing their review of the problem. But it took contempt to get the story straight.

And now DISH pulls the same stupid trick? They didn't heed the warning in Fisher-Price and make it abundantly clear that they had modified the products and where those modified products were. They kept their "replacement" program secret for years. How does DISH distinguish between "old" receivers and "new" other than via outrageous claims that sound like Jedi mind tricks? "These are not the infringing products - these are new products delivered via satellite into millions of home via a secret update program." Oh how much fun this case will be when the courts actually addresses the infringement issue!

For now we're at the "we disabled the DVR functionality and then enabled it again" stage.
A different Jedi mind trick.


----------



## James Long

scooper said:


> Ok - so the 501 first came out , what - 4 years ago ?
> 
> Just to make things easy - we'll assume that all of a sudden Dish had 4 million DVR units out there
> 
> 4,000,000 * $1 *12 months = $48 million /year * 4 years = $192 million over 4 years.


Damages for DISH's infringement through 2006 has been set ... "the total sum of $73,991,964.00, together with prejudgment interest at the rate of prime, said prejudgment interest in the total sum of $5,367,544.001, together with supplemental damages in the amount of $10,317,108.00, together with post-judgment interest on the entire sum calculated pursuant to 28 U.S.C. § 1961. The amounts awarded in this judgment shall bear interest from the date of judgment at the lawful federal rate."

Damages during the stay of the injunction will be discussed September 4th. That will cover 2006 through 2008 ... One could estimate it as four million DVRs at "x" dollars per month but for how many months? For some of those months DISH claims that they were using new software. Just more for the court to figure out.


----------



## Greg Bimson

Greg Bimson said:


> The whole purpose of the colorable differences test is to determine whether legally the devices are the same or different.


Rewrite:
The whole purpose of the colorable differences test is to determine whether *new constructions* are different that adjudicated infringing constructions.

At least that is what KSM is all about, no matter which sentence is dredged up to make "case law".


----------



## Curtis52

Greg Bimson said:


> Rewrite:
> The whole purpose of the colorable differences test is to determine whether *new constructions* are different that adjudicated infringing constructions.
> 
> At least that is what KSM is all about, no matter which sentence is dredged up to make "case law".


Yes and since KSM is about fasteners it can't possibly be applied to this case. These are both artificial obstacles.


----------



## James Long

Patent cases are about patents not the patented item.


----------



## nobody99

http://bulk.resource.org/courts.gov/c/F2/269/269.F2d.660.16141.html



> We have spelled out the appellant's contentions in this respect at such length because we are convinced that the appellant, despite its initial lip-service to the weight to be given to this Court's previous holding that the patent in suit is valid and has been infringed, is still unregenerate and unconvinced. On the adjudicated issues of validity and infringement, the appellant's corporate head is bloody but unbowed.
> 
> The point that we are here making is not a technical one. It relates to a salutary principle, firmly imbedded in the law. Again and again we are told that "There must be an end to litigation," and yet attorneys still seek to relitigate adjudicated issues.
> 
> For a century and a half, our Supreme Court has hammered home the principle that, on a second appeal, the higher court is confined to a consideration of the proceedings that took place in the trial court after the mandate in the first case was handed down. *Matters that were adjudicated on the first appeal are no longer open to re-examination.*


The eight named DVRs, installed in customer's homes, are, and forever will be, infringing products.

_New_ DVRs have the benefit of law in that they can design around the patent.


----------



## James Long

There is a problem applying that here ... we're not talking about a second appeal of the same facts. That quote would apply if DISH attempted to appeal the injunction again. The appeal would be limited to what changed.

(This occurred in the Florida Distants case when DISH attempted to re-argue issues that were settled on a previous appeal. The appeals court on the second pass limited DISH to only facts that had changed since the first appeal that the lower court had dealt with.)

Clearing existing products of infringement isn't the issue being presented September 4th, but DISH can modify existing products to avoid infringement and can do that without changing the name of the existing products. Once September 4th is passed Tivo will be allowed (if they choose to do so) to make their motion for discovery on the software issue and determine if they want to file a contempt complaint on infringement.

We have seen a "preview" of Tivo's next complaint in their reply to DISH's opposition to the motion for contempt ... but those comments were made without discovery. Once Tivo has that discovery in hand their comments will be more meaningful. The next step (if Tivo chooses to continue) is discovery ... but that _must_ wait until after the first issue (contempt for failure to disable) is dealt with on September 4th.

It is cleaner if an infringer comes out with a completely new product that is obviously different than the adjudicated infringing product. It is cleaner when the infringer doesn't try to reuse model names and numbers that confuse the issue. But it is possible to modify and live ... it just needs to be done in an open and honest environment. DISH's "secret upgrade" didn't do them any favors.


----------



## nobody99

James Long said:


> There is a problem applying that here ... we're not talking about a second appeal of the same facts. That quote would apply if DISH attempted to appeal the injunction again. The appeal would be limited to what changed.


If DISH is found in contempt, wouldn't the only basis of appeal be that the judge erred in not allowing a software change, or that the wording of the injunction wasn't clear? Perhaps the best reason to attack the injunction is that the hardware was remanded, so that should have opened the door to allow a software change to avoid infringement. But since the injunction makes reference only to "DVRS" and no reference to hardware or software, it would be awfully hard to argue that.

That sort of appeal, even if it had merits, is what I think is barred by the above case.

That means, if contempt is found, they really don't have any basis to appeal. And if they don't have any basis, they likely won't get a stay.


----------



## Ergan's Toupe

jacmyoung said:


> This statement certainly sounds very reasonable, but as soon as you realize in most cases, infringing devices already entered in the marketplace were never asked to be disabled or removed, you can see how lack of persuasion your statement is.


So in other words I can rip a product off and when caught just tell the judge, "well I changed it so everything is cool"? And when It turns out maybe I didn't change anything I can tell the Judge, "well I REALLY changed it this time" 

When does it end? The patent system would be worthless if Folsum allows this moving target defense.

The order said "SHUT THEM DOWN" and shut them down it will be.


----------



## jacmyoung

Ergan's Toupe;1753654 said:


> So in other words I can rip a product off and when caught just tell the judge, "well I changed it so everything is cool"? And when It turns out maybe I didn't change anything I can tell the Judge, "well I REALLY changed it this time"
> 
> When does it end? The patent system would be worthless if Folsum allows this moving target defense.
> 
> The order said "SHUT THEM DOWN" and shut them down it will be.


It ends when both the infringer and the patentee agree to end, or the infringer decides to stop the modification attempt, meanwhile, modification is allowed, but if as you described, the modification is not in good faith, the infringer will be found still infringing in a new complaint, and will be assessed not only the usual damages from continued patent infringement, but treble damages and attorney fees for willful infringement and maybe other punishment.

One of those punishment was spelled out in a case where the infringer made attempts to modify four times still found to infringe, and the court said that was it, no more modification for you mister unless the court first agreed to your modification proposal.

That is how it will end, based on case law, not someone's own wishes. Good faith modification is encouraged by the court because it is good for the marketplace, good for competition and good for the society over all, the judges are fully aware of that, no matter how some of us think otherwise.


----------



## Greg Bimson

nobody99 said:


> If DISH is found in contempt, wouldn't the only basis of appeal be that the judge erred in not allowing a software change, or that the wording of the injunction wasn't clear?


For the most part, correct.

An appeal is allowed by challenging the the standards and reasoning behind a given ruling. Therefore, if DISH/SATS believes that Judge Folsom used the incorrect standard to find contempt, then that is what is filed.

The writ of certiorari at the Supreme Court most likely contains the exact same infromation that was appealed _en banc_ at the Court of Appeals: that TiVo's witness impeached himself because he supposedly gave two different, conflicting answers to the same question. If it can be found that he is not an "expert witness", his testimony can be wiped from the record, and therefore the verdict would be reversed.


nobody99 said:


> Perhaps the best reason to attack the injunction is that the hardware was remanded, so that should have opened the door to allow a software change to avoid infringement.


Here is why DISH/SATS is so screwed:

In most cases, the trial judge stays their own injunction until it goes through appeal. Once the case is remanded back to the court, the judge then asks for any reasons why the injunction should not be enforced as written. That would have been the time to address the fact the guilty verdict on the hardware claims were reversed, and therefore have an impact on the injunction order.

In this case, the trial judge did not stay the ordered injunction, and that injunction went into effect without any action from either party or Judge Folsom. The injunction took effect once the Court of Appeals upheld the verdict on the software claims and removed the stay they placed on the injunction. Now it is impossible to attack the reasoning of the injunction as the injunction has stood upon appeal and is in full force and effect. The only question becomes whether or not the injunction is being followed.

The time to attack the injunction was on appeal. One wonders why DISH/SATS did not do it, knowing the injunction would become "law" once the appeal was complete.


jacmyoung said:


> This statement certainly sounds very reasonable, but as soon as you realize in most cases, infringing devices already entered in the marketplace were never asked to be disabled or removed, you can see how lack of persuasion your statement is.


Now that I re-read this, there is an issue:

In most cases, infringing devices that have "already entered in the marketplace" are normally recalled. Infringing devices that have been sold may either be subject to a recall or a disable order.


----------



## jacmyoung

James Long said:


> There is a problem applying that here ... we're not talking about a second appeal of the same facts. That quote would apply if DISH attempted to appeal the injunction again. The appeal would be limited to what changed....


Modifying *adjudicated products*, or *infringing devices*, is allowed, you just failed to read those quotes both Curtis and I cited here over and over.

Modifying adjudicated or infringing devices is not an appeal, it is a way to workaround the patent in order to remain in the marketplace. Once the adjudicatded, or infringing products are modified, the differences must be first examined in a contempt proceeding to determine if such modification is a good faith one (more than colorable) or not, if it turns out to be a bad faith attempt (only colorable), the infringer will be in contempt, otherwise no contempt.

In addition, I have also destroyed the notion that since there is this "second order" this case is unique, but it is not, based on Greg's case, a second "mandatory order" was nothing special, when modification was on the table, mere violation of the letter of the order was not enough, infringement must also be found with clear and convincing evidence.

We now have case law to cover both bases.


----------



## Greg Bimson

Curtis52 said:


> Yes and since KSM is about fasteners it can't possibly be applied to this case. These are both artificial obstacles.


Yet one of the actual obstcales is that adjudicated devices aren't tried over and over again. They're adjudicated.

In this case, the DVR's are adjudicated as infringing claims 31 and 61 of the Time Warp patent. The same slow judicial process that gave DISH/SATS time to change the software on adjudicated receivers will now catch up with them, because there is no *legal* question about the infringement status of Joe Blow's four-year old 501: it has been found infringing and subject to the disable order.


jacmyoung said:


> Modifying adjudicated or infringing devices is not an appeal, it is a way to workaround the patent in order to remain in the marketplace.


But not remain in end user's homes.


jacmyoung said:


> In addition, I have also destroyed the notion that since there is this "second order" this case is unique, but it is not, based on Greg's case, a second "mandatory order" was nothing special, when modification was on the table, mere violation of the letter of the order was not enough, infringement must also be found with clear and convincing evidence.


Hello? There was a recall? That recall wasn't followed? Infringment was not even discussed on the recall order.


----------



## Curtis52

Greg Bimson said:


> there is no *legal* question about the infringement status of Joe Blow's four-year old 501: it has been found infringing and subject to the disable order.


If there is more than a colorable difference in the modified devices they are not legally the same devices that were found to infringe. 


> If there is "more than a colorable difference" between the
> accused product and the adjudged infringing product such that "substantial open issues
> with respect to infringement to be tried" exist, contempt proceedings are not
> appropriate. KSM





> The Eleventh Circuit in Sure Plus Mfg. Co. v. Kobrin, 719 F.2d 1114 (11th Cir.1983), stated that in a contempt proceeding *"a court should first determine whether there is more than a colorable difference between the modified device and the enjoined device.*" 719 F.2d at 1118. It defined a "more than colorable difference" as "one that gives rise to some fair ground for *doubt that the modified product is within the scope of the injunction*." Id. In determining whether the difference was more than colorable the court applied the test of the doctrine of equivalents, citing the Interdynamics decisions and equating equivalence with colorable difference. *The court stated that "it was necessary for the district court to compare the modified assembly to the infringing assembly, while bearing in mind its previous construction (during the infringement litigation) of the [patent] claims* ... and the scope of their protection." Id. Then, if there were such "fair ground of doubt" (i.e., more than a colorable difference) litigation of the infringement question was required.


----------



## nobody99

Curtis52 said:


> If there is more than a colorable difference in the modified devices they are not legally the same devices that were found to infringe.


Could somebody please post this so Curtis sees it? This is in the preface to KSM:



> In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings.


Keep quoting KSM, and I'll keep pointing out that it has no bearing on this case. The court very clearly stated that KSM involved a manufacture that was not the subject of the original litigation.

In fact, in regards to actual devices already adjudged, KSM went so far as to say



> A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent


----------



## nobody99

jacmyoung said:


> Modifying *adjudicated products*, or *infringing devices*, is allowed, you just failed to read those quotes both Curtis and I cited here over and over.












DISH, in two weeks 

You still can't see the train wreck coming.


----------



## Greg Bimson

nobody99 said:


> Could somebody please post this so Curtis sees it? This is in the preface to KSM:
> 
> 
> 
> In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings.
Click to expand...

It is being ignored as it completely destroys their argument.

That is why only a few statements are coming from the KSM suit; the ones that support their argument. When taken as a whole, KSM kills DISH/SATS arguments.


Curtis52 said:


> If there is more than a colorable difference in the modified devices they are not legally the same devices that were found to infringe.
> 
> 
> 
> If there is "more than a colorable difference" between the accused product and the adjudged infringing product such that "substantial open issues with respect to infringement to be tried" exist, contempt proceedings are not appropriate. KSM
Click to expand...

Must be Richard Simmons day, as it is a stretch to believe DISH/SATS can do something to an adjudicated product to make it "unadjudicated". It is a judge or the jury that decides, not DISH/SATS.

Besides, there is no accusation that a product infringes, only that an adjudicated infringing product has not been disabled. A mere modification of an installed, adjudicated infringing product does not change the fact those have been ruled by the court as infringing and subject to the disable order. The judge ordered DVR functionality disabled, so therefore, the judge's own order would both make the adjudicted devices both no longer infringing AND subject to the injunction order until said order expires.


----------



## Curtis52

> "In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings."


"of a manufacture" means "of a configuration".


----------



## Greg Bimson

Source?


----------



## Curtis52

Greg Bimson said:


> Besides, there is no accusation that a product infringes, only that an adjudicated infringing product has not been disabled. A mere modification of an installed, adjudicated infringing product does not change the fact those have been ruled by the court as infringing and subject to the disable order. The judge ordered DVR functionality disabled, so therefore, the judge's own order would both make the adjudicted devices both no longer infringing AND subject to the injunction order until said order expires.


If there is no infringement there is no contempt. If there is more than a colorable difference, the modified devices are not enjoined. They are legally different from the enjoined devices.


> Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.





> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, *devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined* as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.
> 
> The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction. See, e.g., Panther Pumps Equipment Company, Inc. v. Hydrocraft, Inc.,"


----------



## nobody99

Curtis52 said:


> "of a manufacture" means "of a configuration".


No.



> A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent


----------



## Curtis52

Greg Bimson said:


> Source?


Where and when a modification is made has no bearing on the magnitude or type of change. Whether a device is new or used is not germane to whether the difference is more than colorable. The only thing that matters is the configurations of the two devices.


----------



## Greg Bimson

Curtis52 said:


> If there is no infringement there is no contempt.


When accusing a product of ongoing infringement.


Curtis52 said:


> If there is more than a colorable difference, the modified devices are not enjoined.


When accusing a product of ongoing infringement.


Curtis52 said:


> They are legally different from the enjoined devices.


Those devices have been found infringing by a jury and are subject to a disable order, whatever modification DISH/SATS may have employed. They have been adjudicated.

And once the device has DVR functionality disabled, it will no longer infringe AND be subject to the injunction order until it expires.


----------



## James Long

nobody99 said:


> If DISH is found in contempt, wouldn't the only basis of appeal be that the judge erred in not allowing a software change, or that the wording of the injunction wasn't clear? Perhaps the best reason to attack the injunction is that the hardware was remanded, so that should have opened the door to allow a software change to avoid infringement. But since the injunction makes reference only to "DVRS" and no reference to hardware or software, it would be awfully hard to argue that.


The injunction was upheld by the appeals court that reversed and remanded the hardware claims. If it was felt that the injunction should no longer apply the appeals court would have continued the stay and ordered the lower court to reissue an injunction that was more appropriate. They didn't. Instead the appeals court intentionally put the existing injunction into effect.


> That means, if contempt is found, they really don't have any basis to appeal. And if they don't have any basis, they likely won't get a stay.


DISH could (theoretically) appeal on the changed circumstances that they have presented to the court as part of the current contempt hearing. They cannot relitigate the injunction at the appeals level, but DISH can argue that the changed circumstances should allow them to avoid disabling the DVR functionality (under penalty if the modified/new software is also found infringing).

Judge Folsom opened the door for DISH when he spoke of obeying the "spirit" of the injunction. DISH stubbed their corporate toe on the threshold walking through that door when they claimed they had followed the "letter and spirit" of the injunction and have disable the DVR functionality. I'm not sure how this will play out. (Although I'm sure a dozen people could offer their guesses before I compose my next post.  )


----------



## Greg Bimson

> Under the standard we adopt, a judgment of contempt against an enjoined party for *violation of an injunction against patent infringement by the making, using or selling of a modified device* may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.


Look familiar? It is the order that enjoins the infringer from selling, which was the second of three orders given by Judge Folsom.

The third order is the disable order. So this statement, which does not apply to the disable order, cannot even apply to this case.


----------



## Curtis52

You can't try impose an injunction of device A on device B.

If device A and device B are more than colorably different they aren't legally the same device. That is why KSM says:

"devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings."


----------



## James Long

jacmyoung said:


> Modifying *adjudicated products*, or *infringing devices*, is allowed, you just failed to read those quotes both Curtis and I cited here over and over.


I'm looking around for the cameras ... how in the world do you know what I have or have not done? It appears you're watching the live feed of someone else's life ... because, once again, you are absolutely misstating my position.

Perhaps some day you'll figure it out. :nono2:


----------



## Greg Bimson

James Long said:


> Judge Folsom opened the door for DISH when he spoke of obeying the "spirit" of the injunction. DISH stubbed their corporate toe on the threshold walking through that door when they claimed they had followed the "letter and spirit" of the injunction and have disable the DVR functionality. I'm not sure how this will play out.


I could be wrong, but in cases where functionality of devices found infringing were to be removed or shut down, hasn't the consensus been that the orders and procedure of the court be followed?

That is, I recall the Blackberry case, where the threat was a proposed injunction that would have disabled the users devices, that the courts would have had to approve service on the devices already found to infringe? The service would have had to be shut-down until the work-around in already adjudicated devices was given the OK stamp?


----------



## TBoneit

scooper said:


> Ok - so the 501 first came out , what - 4 years ago ?
> 
> Just to make things easy - we'll assume that all of a sudden Dish had 4 million DVR units out there
> 
> 4,000,000 * $1 *12 months = $48 million /year * 4 years = $192 million over 4 years.
> 
> But we all "know" that figure is probably on the high side.
> 
> It's not that Echostar / Dish couldn't afford to pay it - they don't *want* to pay it.
> 
> By that token, maybe Tivo isn't asking enough in damages.


Four years didn't sound right to me so I looked and found that:

From this review http://reviews.cnet.com/digital-vid...-network-dishpvr-501/4505-6474_7-7487590.html 
"CNET editors' review
Reviewed by: Jeff Milstead 
Reviewed on: 10/14/2001 
Updated on:02/10/2003"

7 ago years sounds about right for when I remember buying my two.


----------



## Greg Bimson

Curtis52 said:


> You can't try impose an injunction of device A on device B.


Under your theory, if the injunction order were followed without question, once the devices which have their DVR functionality (device A) had that functionality removed (device B) they would no longer be subject to the injunction order.

RIIIIIIIGHT. Richard Simmons strikes again.


----------



## Curtis52

Greg Bimson said:


> Under your theory, if the injunction order were followed without question, once the devices which have their DVR functionality (device A) had that functionality removed (device B) they would no longer be subject to the injunction order.


That is correct. Device A would only need to be shut off when it is device A. It doesn't need to be shut off again unless it becomes device A again.


----------



## nobody99

TBoneit said:


> Four years didn't sound right to me so I looked and found that:
> 
> From this review http://reviews.cnet.com/digital-vid...-network-dishpvr-501/4505-6474_7-7487590.html
> "CNET editors' review
> Reviewed by: Jeff Milstead
> Reviewed on: 10/14/2001
> Updated on:02/10/2003"
> 
> 7 ago years sounds about right for when I remember buying my two.


If I remember, though, the patent wasn't actually issued until a few years later. DISH wouldn't have to pay anything until after the patent had actually been granted (even though the application was years earlier).


----------



## James Long

Greg Bimson said:


> I could be wrong, but in cases where functionality of devices found infringing were to be removed or shut down, hasn't the consensus been that the orders and procedure of the court be followed?
> 
> That is, I recall the Blackberry case, where the threat was a proposed injunction that would have disabled the users devices, that the courts would have had to approve service on the devices already found to infringe? The service would have had to be shut-down until the work-around in already adjudicated devices was given the OK stamp?


I agree that a more polite to Tivo procedure would be for DISH to approach the courts with a modification and say "we have found a way to modify pre-existing infringing products so they no longer infringe - please modify the injunction to allow this software change". But DISH is getting what they want (at the risk of contempt) by just doing it and clearing up the legalities later.

Is it easier and more efficient to ask forgiveness than permission?

The "disable the DVR" question being dealt with September 4th is an interesting one ... perhaps Judge Folsom will have the "dammit I said disable I mean disable!" response. Perhaps he'll be more forgiving. He apparently doesn't exactly like either party in this case. "Look guys, work it out!" might be the response. 

But when we actually get to the question of modified products and infringement (at least two steps away - September 4th 1st, then discovery, then Tivo can deal with alleged modifications in another motion) I can see DISH being cleared.

DISH has offered decent case law covering the various parts of this case. There isn't a specific "This happened before in A vs Z" case that covers it all. But there is "A vs B" that covers one part and "C vs D" covers another part and "E vs F" covers another part ... it appears all the parts are in place.

But that judgement does have to wait a few steps. It CANNOT be made without proper discovery.


----------



## scooper

I know of at least one department of the federal government that operates under "It is better to ask forgiveness than permission" - and often rewards commanders for showing such initiative.


----------



## Greg Bimson

Curtis52 said:


> That is correct. Device A would only need to be shut off when it is device A. It doesn't need to be shut off again unless it becomes device A again.


Device A becomes device B when it is modified with DVR functionality disabled, under your logic, and no longer subject to the injunction. That is incorrect. Wholly.


----------



## James Long

Curtis52 said:


> That is correct. Device A would only need to be shut off when it is device A. It doesn't need to be shut off again unless it becomes device A again.


Playing along ... Device A is a receiver with DVR functionality. Device B is a receiver with DVR functionality disabled. Device A is the same receiver with DVR functionality enabled.

It certainly sounds like Device A has become Device A again.


----------



## nobody99

James Long said:


> The "disable the DVR" question being dealt with September 4th is an interesting one ... perhaps Judge Folsom will have the "dammit I said disable I mean disable!" response. Perhaps he'll be more forgiving. He apparently doesn't exactly like either party in this case. "Look guys, work it out!" might be the response.


I think you are on to something - but let me offer another possibility.

At the hearing September 4, Folsom states that "damint, I said disable!" Then he says "It's too bad you didn't talk to me before today. I might have held a conference if you had suggested that new software would get the devices out of jail. As it stands now, you are in contempt _at least_ through today. I might award TiVo a lot of money for your contempt. But you should approach the court with a seperate motion about the alleged new software."

Now he has both TiVo and DISH guessing. If DISH doesn't try to settle, he punishes them with a big contempt fine and damages. If TIVO doesn't attempt to settle, he allows the new software, and only allows a small direcTV-like licensing fee up until this point.

In other words, he gets them to settle as a result of this meeting. That's how the judge in the Blackberry case handled it. He scared both sides into settling.


----------



## Curtis52

Greg Bimson said:


> Device A becomes device B when it is modified with DVR functionality disabled, under your logic, and no longer subject to the injunction. That is incorrect. Wholly.


Device B is more than colorably different from device A and not subject to the injunction. Only device A needs to be disabled. If device B ever becomes device A again it would no longer be more than colorably different and the infringer would be in contempt for violation of the injunction.


----------



## James Long

nobody99 said:


> If I remember, though, the patent wasn't actually issued until a few years later. DISH wouldn't have to pay anything until after the patent had actually been granted (even though the application was years earlier).


All infringement through the injunction in 2006 has already been dealt with ... so it is irrelevant to count from the introduction of the DISH DVR or from the issuance of the patent or any other early date. We have a court approved number for whenever through 2006.


----------



## Greg Bimson

nobody99 said:


> In other words, he gets them to settle as a result of this meeting. That's how the judge in the Blackberry case handled it. He scared both sides into settling.


I read that transcript, but I've also read what one Mr. Charles Ergen, CEO of DISH and SATS, has said:


> Having said that - I mean obviously, at some point, I believe we'll prevail. But TiVo - we're going to have conversations with TiVo one way or the other about how we work together. And again, its - I'm just stubborn. I know this case inside and out, I've sat through trials, I've sat through the engineering models, I've sat and have the best and the brightest explain this - and I'm just stubborn. *We don't violate their intellectual property today and I want to prove that.* And so, we're going to go to the September 4th hearing and see who's right.


The bolded statement is still up for debate and four million receivers have been found to infringe.

There is no middle ground here. DISH/SATS CEO Ergen doesn't want to pay a monthly licensing fee, and TiVo CEO Rogers wants a monthly licensing fee.

Scare both sides into settling, a la Blackberry? The injunction in that case never went into full force and effect.

There will be no "middle ground" until one side is throughly battered, bruised and beaten.


----------



## Greg Bimson

I understand you don't play well with others:


Curtis52 said:


> Device B is more than colorably different from device A and not subject to the injunction.


Say device B is a 501 with no DVR functionality; one that adhered to the disable clause and does not infringe. Your theory is that it is no longer subject to the injunction because it is colorably different.

Right. Now we have completely bypassed Richard Simmons' territory and went straight to Reed Richards' land.


----------



## Curtis52

Greg Bimson said:


> There is no middle ground here. DISH/SATS CEO Ergen doesn't want to pay a monthly licensing fee, and TiVo CEO Rogers wants a monthly licensing fee.


I doubt whether TiVo wants to do ongoing business with anyone with Charlie's character. TiVo might accept a one time royalty payment if it's for enough money ala Blackberry but I doubt whether TiVo would want monthly payments. TiVo also might prefer instead to do an exclusive deal with DirecTV or someone else.


----------



## Curtis52

Greg Bimson said:


> I understand you don't play well with others:Say device B is a 501 with no DVR functionality; one that adhered to the disable clause and does not infringe. Your theory is that it is no longer subject to the injunction because it is colorably different.


Close. *More than* colorably different. I don't see why you are having a problem with this. What is it you want them to do to the disabled B devices? I mean, they are already disabled (in this hypothetical case), what else do you want them to do with them?

It isn't just a theory.


> devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings.


----------



## jacmyoung

James Long said:


> ...Is it easier and more efficient to ask forgiveness than permission?
> 
> ...


The civil court was rarely about forgiveness or permission rather legality. Asking for forgiveness from the court is meaningless anyway because if such thing exists that a defendant should ask for forgiveness, he would ask for forgiveness from the plaintiff not from the court, because it was the plaintiff who filed the complaint. In a civil case, the plaintiff must motion the court, before the court will act. The court will do nothing unless the plaintiff requests it and with sufficient justification to do it.

Besides who is to kid anyone that if DISH asks for forgiveness Tivo will care? Tivo wants to see all DVRs in the world be disabled unless all the providers license their patent, so to say DISH should have asked for forgiveness is just another example of Tivo crowd's continued wishful thinking without really paying attention how the court works.

The court needs no asking for forgiveness or asking for permission, before it may feel vindicated enough to have mercy on DISH. When making a decision on 9/4, whatever it maybe, it cannot be used as a punishment for some perceived disobeying the order or not respecting the court by the defendant, the decision must only be based on the evidence and the law and order, the "requisite standards" as so clearly stated in the Greg's case, when modification evidence has surfaced.

It dose not matter how many so-called "mandatory orders" are in the injunction, the "requisite standards" must be applied first, all else are secondary, when the evidence of modifications (differences) are on the table.

The court in Greg's own case has shown us the path in which the court on 9/4 may follow.


----------



## James Long

Curtis52 said:


> I doubt whether TiVo wants to do ongoing business with anyone with Charlie's character. TiVo might accept a one time royalty payment if it's for enough money ala Blackberry but I doubt whether TiVo would want monthly payments. TiVo also might prefer instead to do an exclusive deal with DirecTV or someone else.


Tivo needs long term cash income. A one time payment doesn't keep them in business for long. An ongoing license fee helps boost their subscriber count. As bad as the situation with Echostar has been for Tivo, losing DirecTV and market share to other manufacturer's devices is their biggest problem. A one time license fee doesn't fix that problem.

The only thing a one time fee does is clear up the issue of what DISH will do in the future. There is a good chance DISH has already engineered around the problem and the new software doesn't infringe. There are also millions of DISH DVRs out there that Tivo has not been able to get a judgment against ... a one time license fee would compensate them for a lot more than they are likely to get via a monthly fee. Any fee paid also strengthens their position in suing any other DVR manufacturer. But it doesn't guarantee Tivo health and long life.

Tivo needs recurring guaranteed income and some way of showing their investors that income will be coming in. A one time fee doesn't do that.


----------



## Greg Bimson

Curtis52 said:


> Close. More than colorably different. I don't see why you are having a problem with this. What is it you want them to do to the disabled B devices? I mean, they are already disabled (in this hypothetical case), what else do you want them to do with them?


Once disabled, an adjudicated device with no DVR functionality and therefore not infringing is still subject to the injunction. Therefore, both device A and device B are subject to the injunction, because they are adjudicated devices, even though device B no longer infringes.

So I've just proved a non-infringing device is subject to the injunction.

And within the bounds of that injunction, the DVR functionality must remain disabled for the term of the injunction, as it is an adjudicated device. So of course if that device receives modified DVR software (a change I'll call Device C), it is still subject to the injunction as an adjudicated device, no matter what the colorable difference or infringement status is.


----------



## Greg Bimson

jacmyoung said:


> The court in Greg's own case has shown us the path in which the court on 9/4 may follow.


Correct. Because TiVo is not accusing DISH/SATS of selling or offering any devices that infringe, DISH/SATS will be found in contempt of violating the disable order, just as Safety 1st was found in contempt of not doing their best to recall product found to infringe.


----------



## jacmyoung

Greg Bimson said:


> ...So I've just proved a non-infringing device is subject to the injunction....


You did not prove anything Greg, the only time you can say that is when DISH is found in contempt and the contempt ruling is upheld on appeal.

Until then it is only your opinion, not proven, please don't say it when it is not so.

A non-infringing product is outside of the scope of the injunction, not subject to it. Yes this is my opinion also, and only after DISH is found not in contempt on 9/4, so will it be proven.


----------



## James Long

Not playing along with Curtis as I did before ...

Device A remains Device A even with it's DVR functionality disabled as per the court's order. Colorable difference has nothing to do with that part of the injunction, but if it did it would be easy to say that Device A is only colorably different than what Device A was.

Throwing in the "colorable difference" argument in a part of the injunction where it doesn't belong just muddies the issue. Device A is Device A even after the modification required by the injunction.


----------



## Curtis52

Greg Bimson said:


> Once disabled, an adjudicated device with no DVR functionality and therefore not infringing is still subject to the injunction. Therefore, both device A and device B are subject to the injunction, because they are adjudicated devices, even though device B no longer infringes.
> 
> So I've just proved a non-infringing device is subject to the injunction.


A device that is more than colorably different from an enjoined device is legally a different device and is not enjoined. Case law is abundantly clear on this point.



> And within the bounds of that injunction, the DVR functionality must remain disabled for the term of the injunction, as it is an adjudicated device. So of course if that device receives modified DVR software (a change I'll call Device C), it is still subject to the injunction as an adjudicated device, no matter what the colorable difference or infringement status is.


A device receiving a modification that becomes more than colorably different whether it is a modification that disables the hard drive or any other modification is not an enjoined device. Legally, it is a different device than the one that is enjoined. That is why a new trial is required instead of a contempt hearing. It is no longer the same device. The law doesn't allow a new trial for the same device but requires it in the case of devices more than colorably different.


----------



## Greg Bimson

The court has ordered a modification to DVR's adjudged infringing. That modifcation does NOT move the adjudicated DVR's out of the scope of the injunction. Any other modification does NOT move the adjudicated DVR's out of the scope of the injunction.


----------



## jacmyoung

Greg Bimson said:


> Correct. Because TiVo is not accusing DISH/SATS of selling or offering any devices that infringe, DISH/SATS will be found in contempt of violating the disable order, just as Safety 1st was found in contempt of not doing their best to recall product found to infringe.


Nor was Pricefisher accusing the modified products still infringed in your case, PriceFisher did not care, they only asked the court to find the infringer in contempt on the letter of the injucntion, you know that two orders.

There was no agenda in that contempt hearing to discuss the modification either, becuase the infringer did not even tell anyone of such modification, but when the modification evidence surfaced in that contempt proceeding, even though the court considered the infringer's such attempt "not ideal", the court still was compelled to rule the infringer not in violation of the two orders, for the continued sale and not pulling off the shelves of those alleged modified products, because PriceFisher failed to prove with clear and convincing evidence that those modified products still infringed.

You continue to focus on the contempt ruling in your case, and continue to totally ignore that the contmept ruling was for products not modified, and for the products that were modified, the ruling was *no contempt*.

Again, it had nothing to do with if the products were already sold or not, it had to do with can the court ignore the modification evidence, just because such evidence is not on the court's agenda? The answer is no.

In a contempt proceeding, any contempt proceeding, when there is evidence of modification (differences), such evidence must be first looked at, period. Not doing so the court would have abused its discretion.

BTW, please do not be alarmed by my use of "abuse of discretion" phrase, the courts are very accustomed to such phrase, everytime a party appeals, it is usually based on the argument that the previous court abused its discretion. And everytime the higher court oveturned a lower court's decision, it was usually that they had affirmed the argument that the lower court had abused its discretion.

It is done all the time.


----------



## jacmyoung

Greg Bimson said:


> The court has ordered a modification to DVR's adjudged infringing. That modifcation does NOT move the adjudicated DVR's out of the scope of the injunction. Any other modification does NOT move the adjudicated DVR's out of the scope of the injunction.


Again that is your opinion only, not proven. Wait till after 9/4 you will know why it is unproven.


----------



## Greg Bimson

jacmyoung said:


> the court still was compelled to rule the infringer not in violation of the two orders, for the continued sale and not pulling off the shelves of those alleged modified products, because PriceFisher failed to prove with clear and convincing evidence that those modified products still infringed.


Uh, the court ruled Safety 1st in contempt for violating the order selling infringements and for not recalling infringing product to the best of their ability. The court also ruled that Safety 1st could NOT be held in contempt for sales of the Bouncenette product, as sales of that modified product must first past the colorable difference test.

From Reed Richards to Pinocchio. The arguments are so circular and twisted that it has morphed into Mobius strip logic, imploding upon itself.


----------



## jacmyoung

Greg Bimson said:


> Uh, the court ruled Safety 1st in contempt for violating the order selling infringements and for not recalling infringing product to the best of their ability. The court also ruled that Safety 1st could NOT be held in contempt for sales of the Bouncenette product, as sales of that modified product must first past the colorable difference test.
> 
> From Reed Richards to Pinocchio. The arguments are so circular and twisted that it has morphed into Mobius strip logic, imploding upon itself.


The Bouncenette products were adjudicated products too, and were on the store shelves too before the injunction took effect, the Bouncette was only one of several products enjoined by the injunction.

The only diffrence is, after the injunction took full effect, the infrigner sent out some kind of product instruction sheets to the stores, and telling them that this particular Bouncentte model had a modified hardness, and that was enough for the court to rule that the Bouncentte version could still be sold and not pulled off the shelves, even though the Bounncentte model was also on the list of the injunction to be stopped from continued selling, and to be pulled off the shelves.


----------



## Ergan's Toupe

jacmyoung said:


> Again that is your opinion only, not proven. Wait till after 9/4 you will know why it is unproven.


Are you a lawyer for Dish?


----------



## nobody99

Curtis52 said:


> A device that is more than colorably different from an enjoined device is legally a different device and is not enjoined. Case law is abundantly clear on this point.


I am a furry, gray-haired squirrel who eats acorns for breakfast, and I like to climb trees.*

* The above statement has as much to do with the TiVo/DISH case as the case law that Curtis claims is "abundantly clear."


----------



## nobody99

Greg Bimson said:


> The arguments are so circular and twisted that it has morphed into Mobius strip logic, imploding upon itself.


Most excellent analogy!


----------



## James Long

jacmyoung said:


> Nor was Pricefisher accusing the modified products still infringed in your case, PriceFisher did not care, they only asked the court to find the infringer in contempt on the letter of the injucntion, you know that two orders.


Pricefisher has nothing to do with "Fisher-Price vs Safety 1st" ...



jacmyoung said:


> Again that is your opinion only, not proven. Wait till after 9/4 you will know why it is unproven.


Long after September 4th ... when Tivo actually asks that question.


----------



## jacmyoung

Greg, below is the actual injunction in your case:

"On August 28, 2003, on Fisher-Price's motion, the court entered a permanent injunction (the "Injunction") prohibiting Safety 1st from 'making, using, offering for sale, selling, licensing, importing, or otherwise distributing in the United States the following products: (a) the '2-n-1' *Bouncenette*, including model numbers 43002, 43002A, 43006, 43006A, 25006, and 25105; and (b) the Magic Motion, model number 43003." (D.I. 354.) The Injunction also required Safety 1st to "make every reasonable effort possible to retrieve from their major retail customers *infringing products including the above-listed specifically identified products that are still in the possession of those customers.*" Id."

In the end Safty 1st was found in contempt of selling and not pulling of the shelves the Magic Motion products because they were not modified, but not in contempt for the selling and not pulling off the shelve the Bouncenette products because it turned out, according to Safty 1st, some of the Bouncenette products already on the shelves before the injunction was in full effect, already contained a modified hardness part. And such effort to notify the stores, and more importantly to let the court know so late, was not ideal according to the court, but it made no difference. PriceFisher (sorry James my keyboard is stuck to this name) did not prove with clear and convincing evidence those modified Bouncenette items still infringed.

According to you, anything named in the injunction as infringing products, will always be infringing products, and always within the scope of the injunction, did the above outcome make you think twice?

Now use a little bit of imagination, and think of the above highlighted sentence for a minute, it looks familiar don't you think? Notice the term "infringing products" in there? Notice "the above-listed specifically identified products" and notice "that are still in the possession of those customers"? The second your so called "mandatory order" applied to those conditions so strickingly similar to the current injunction's second order. Did Safty 1st have to "obey" such second order for the modified products? No.

More importantly, did the court tell Safty 1st hey you, why didn't you request a permission first? Why did you hide that fact you modified some of the products? Are you nuts? Did you not read my orders? Who do you think I am? Pull those Bouncenette products off the shelves first, and then file a request to get a permission to modify those Bouncenette products, then we can talk.

Oh BTW before you leave today, you must also seek forgiveness from the court and PriceFisher, so we can be made whole. Thank you!


----------



## Ergan's Toupe

OK, lets see if I have this right...

If the injunction says to shut the boxes down until the patent is up, can someone explain how these boxes are allowed to still be working?

Are the boxes working?

Has the patent expired?

That looks like all anyone really needs to look at as far as I'm concerned.

Short answers please. I'm just looking for the bottom line.


----------



## jacmyoung

Ergan's Toupe;1754235 said:


> OK, lets see if I have this right...
> 
> If the injunction says to shut the boxes down until the patent is up, can someone explain how these boxes are allowed to still be working?
> 
> Are the boxes working?
> 
> Has the patent expired?
> 
> That looks like all anyone really needs to look at as far as I'm concerned.
> 
> Short answers please. I'm just looking for the bottom line.


If the boxes have since been modified to be no longer infringing, then they are outside of the scope of the injunction, the injunction can no longer touch them. The purpose of an injunction is to *prevent further infringement*, and if the products no longer infringe, there is no longer further infringement, the goal of the injunction is acheived.


----------



## Ergan's Toupe

jacmyoung said:


> If the boxes have since been modified to be no longer infringing, then they are outside of the scope of the injunction,


How can they be modified if they were supposed to be turned off until the patent expired?

In other words, how did they modify something that was supposed to cease to exist in the first place?


----------



## nobody99

Ergan's Toupe;1754309 said:


> How can they be modified if they were supposed to be turned off until the patent expired?
> 
> In other words, how did they modify something that was supposed to cease to exist in the first place?


As James has pointed out, Jedi Mind Tricks.


----------



## Ergan's Toupe

jacmyoung said:


> The purpose of an injunction is to *prevent further infringement*


*

OK, so your saying an injunction is like this:

I tell my son to turn that TV off and not turn that set back on until I tell him he can.

Now if the next day I come home from work he's sitting in front of the TV but it's a DIFFERENT TV I can't punish him, right? After all, he's not watching the same TV I told him not to watch! :lol:

Would you care to guess what I would do in that instance? *


----------



## Ergan's Toupe

nobody99 said:


> As James has pointed out, Jedi Mind Tricks.


Oh, well that explains everything!


----------



## Greg Bimson

jacmyoung said:


> In the end Safty 1st was found in contempt of selling and not pulling of the shelves the Magic Motion products because they were not modified, but not in contempt for the selling and not pulling off the shelve the Bouncenette products because it turned out, according to Safty 1st, some of the Bouncenette products already on the shelves before the injunction was in full effect, already contained a modified hardness part.





> Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction.2 Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard.


Ooh. They modified the product then continued to sell it. That is allowable, and a ruling must be issued because Fisher-Price accused Safety 1st of infringing sales of the Bouncenette product. That ruling was found as no contempt.

Meanwhile, TiVo has not accused a single modified product of infringement, so the standard does not have to evaluate infringement.


> Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.


Considering the arguments so far, including a wild definition on how to read "Infringing Products" (when a definition was given), as well as stating DISH/SATS has complied completely with the terms of the injunction, one wonders how this judge (and any appeals panel) will react to a complete disregard for the injunction.


----------



## jacmyoung

Ergan's Toupe;1754309 said:


> How can they be modified if they were supposed to be turned off until the patent expired?
> 
> In other words, how did they modify something that was supposed to cease to exist in the first place?


To answer your question, let me first ask you to read the case above, and notice the court ordered Safety 1st to stop selling the Bouncenette products did it not? And also to remove those Bouncenette products from the stores, did it not?

Did Safety 1st do as the court ordered it to? No. Was Safety 1st in violation of the orders? No.

How could it be? How could it be that the court clearly ordered something yet the infringer failed to follow it, but got away with it?

Because the court allowed it, that is why. The court has the power to do whatever it sees fit, after applying the legal standards. It was not up to PriceFisher, and it will not be up to Tivo, nor any of us, to decide, but the court to decide, what it will allow any party to do or not do. It will be up to the court to interpret its own order as well.

How you or I have tried to interpret the order will not have any bearing on what the court will say. I don't know if you are early enough in this discussion to have read another case called StarBrite case, in which the court ordered the infringer to top selling 6 paint products by name, and the infringer modified the internal paint formula and continued to sell those 6 products without any name change.

The plaintiff asked the court to find the infringer in contempt, as they pointed out, rightfully so, that the 6 products were still sold, even though they were specifically ordered to be stopped from selling them.

But the court refused to find a violation. The plaintiff asked how could it be? Didn't they not obey your order which was so crystal clear? To which the court replied, but what the court really meant was the infringer must stop using the same internal formula of the paint in those 6 paint products, and the plaintiff "could not possibly" insist that the court meant for those products, not the internal formula.

Despite the fact in the order, the court never even mentioned the words "internal formula", only the 6 products by their names. You see the court has the power to interpret its own order for you, in order to meet those requisite standards, the court will not be even ashamed of twisting the words of its own order, say it means something it did not say, as long as it serves the requisite standards well.

And there is nothing a plaintiff could so, because in a *summary* contempt proceeding, the mover (plaintiff) is severely handicapped, the non-mover (defendant) gets all the considerations from the court. Two parties are not treated equally.

It is too bad Tivo is not a defendant on 9/4


----------



## Ergan's Toupe

jacmyoung said:


> How could it be that the court clearly ordered something yet the infringer failed to follow it, but got away with it?
> 
> Because the court allowed it, that is why. The court has the power to do whatever it sees fit, after applying the legal standards. It was not up to PriceFisher, and it will not be up to Tivo, nor any of us, to decide, but the


So you think that Folsom was only kidding when he said turn the DVD's off for the life of the patent? Are you saying he really meant "Oh, just do whatever the hell you want, Charlie, I'll take care of that pesky Tivo later... "nudge, nudge, wink wink..."

Again, It said turn them off, NOT modify them, TURN THEM OFF, KILL THEM, MAKE THEM USELESS.

How did DISH modify a product that was supposed to cease to exist?

And since you are such a stickler for this so called "injunction", Why didn't DISH have the wording of the injunction changed when they had the chance? Seems like that ship has sailed.

I see Charlie in a world of hurt come sometime late Sept.


----------



## Ergan's Toupe

jacmyoung said:


> To answer your question, let me first ask you to read the case above,


I'm not interested in other cases, only this one.

Once again I ask, How does one modify a product that is supposed to cease to exist?

If you think about it, It's a simple question really.


----------



## jacmyoung

Greg Bimson said:


> Ooh. They modified the product then continued to sell it. That is allowable, and a ruling must be issued because Fisher-Price accused Safety 1st of infringing sales of the Bouncenette product. That ruling was found as no contempt.
> 
> Meanwhile, TiVo has not accused a single modified product of infringement, so the standard does not have to evaluate infringement.Considering the arguments so far, including a wild definition on how to read "Infringing Products" (when a definition was given), as well as stating DISH/SATS has complied completely with the terms of the injunction, one wonders how this judge (and any appeals panel) will react to a complete disregard for the injunction.


What are you talking about? You continue to point out the contempt ruling related to the un-modified products. Please keep your eyes on the ball, the Bouncenettes products, is this too much to ask of you?

So what if they modified it? Did they not disobey the two orders by continuing to sell and not pulling off the shelves those Bouncenettes products? It is a question of if they obeyed or disobeyed the orders, don't inject anything else in here, you know why?

Because this is precisely what you people have accused DISH of doing, disobeying the court order, nothing else. You cannot have it both ways, when safety 1st case may prove you wrong, all the sudden modification is ok to be used, but not here.

If you don't think modification is relevant, then don't mention it, if you believe "disobeying the order" is the only thing at issue, then stick to this one.

Now answer my question, did Safety 1st disobey the orders? Were they in violation?

Did the infringer in the StarBrite case disobey the order? Were they in violation?

Again, if you refuse to let the issue of modification be considered, only whether the order is obeyed or not, then the same rule must apply in all cases. You cannot in any instance finding yourself in trouble, suddenly conveniently bring the modification back for discussion, you can't have it both way.

We have case after case the infringer clearly disobeyed the orders, but found not in contempt.

And now you people insist DISH must be found in contempt for disobeying the order, and disobeying the order alone, nothing else matters. So we have case after case to prove when the infringers disobeyed the orders, they were still not in violation.

Enough said.


----------



## jacmyoung

Ergan's Toupe;1754519 said:


> I'm not interested in other cases, only this one.
> ...


Then you will learn on 9/4, because when a judge renders a ruling, he/she always rely on prior case law as justification, not the case at hand.


----------



## Ergan's Toupe

jacmyoung said:


> Then you will learn on 9/4, because when a judge renders a ruling, he/she always rely on prior case law as justification, not the case at hand.


Are you saying Folsom is not going to use his own ruling as justification? So it only matters to Folsom what happened to other companies in other cases?

:eek2:


----------



## James Long

Ergan's Toupe;1754351 said:


> OK, so your saying an injunction is like this:
> I tell my son to turn that TV off and not turn that set back on until I tell him he can.
> 
> Now if the next day I come home from work he's sitting in front of the TV but it's a DIFFERENT TV I can't punish him, right?


Not under the terms of the "injunction" that you have written above. You mistakenly said _*that*_ TV. 

DISH was ordered to disable the DVR functionallity in eight named products. It could be fun to read that as "that" DVR functionality or "the infringing" DVR functionality ... and many do read it that way. The injunction simply says "the". 



Ergan's Toupe;1754494 said:


> Again, It said turn them off, NOT modify them, TURN THEM OFF, KILL THEM, MAKE THEM USELESS.
> 
> How did DISH modify a product that was supposed to cease to exist?


Not quite. OFF was never ordered. DVR functionality disabled was ordered, but not "off". DISH is absolutely free to use those products as non-DVR satellite receivers.


----------



## jacmyoung

Ergan's Toupe;1754548 said:


> Are you saying Folsom is not going to use his own ruling as justification? So it only matters to Folsom what happened to other companies in other cases?
> 
> :eek2:


He cannot rely on his own ruling in this case because there is none yet produced as far as contempt is concerned, how can he rely on something that does not exist?


----------



## Greg Bimson

jacmyoung said:


> Again, if you refuse to let the issue of modification be considered, only whether the order is obeyed or not, then the same rule must apply in all cases.


WRONG.

The rule you discuss is applied once there is an accusation of infringement regarding a device never before the court. The modification of the Bouncenette product makes that product a new construct, and thus never been before the court. Of course those were allowed, just like those in Star-Brite were allowed as the newly-modified but same-named product were modified. Those were new constructs never adjudicated.

The rule does not apply to the devices that have been before the court. Joe Blow's four-year old 501 as well as four million others have been before the court and have been found infringing. The only accusation by TiVo is not regarding sales of that product, but that DISH/SATS has not done what it has been ordered to do with that product.

Infringement on a product that has been before the court does not need to be litigated for infringement again.


----------



## Ergan's Toupe

jacmyoung said:


> He cannot rely on his own ruling in this case because there is none yet produced as far as contempt is concerned, how can he rely on something that does not exist?


His own ruling doesn't exist? Does he know this? 

Maybe someone should remind him he said to turn the DVR's OFF for the life of the patent.

What part of that is so hard to understand? The DVR's are still on and the patent is still valid. Looks like a failure to follow orders to me :nono2:


----------



## jacmyoung

Ergan's Toupe;1754494 said:


> So you think that Folsom was only kidding when he said turn the DVD's off for the life of the patent? Are you saying he really meant "Oh, just do whatever the hell you want, Charlie, I'll take care of that pesky Tivo later... "nudge, nudge, wink wink..."
> 
> Again, It said turn them off, NOT modify them, TURN THEM OFF, KILL THEM, MAKE THEM USELESS.
> 
> How did DISH modify a product that was supposed to cease to exist?
> 
> And since you are such a stickler for this so called "injunction", Why didn't DISH have the wording of the injunction changed when they had the chance? Seems like that ship has sailed.
> 
> I see Charlie in a world of hurt come sometime late Sept.


As I have demonstrated above, the courts have wide latitude to interpret their own orders for you, not letting you interpret it for them, and the courts can interpret their orders in ways you can't even imagine, as in the StarBrite case example, when nowhere in the order did it say "internal formulation" but the court insisted that was precisely what they meant. What are you going to do about it?

In the same spirit, it is not a stretch to see Judge Folsom interpreting his second order in the following way:

"Disable *the DVR functionalities* (i.e. all storage and playback&#8230&#8230; of the *Infringing Products*&#8230;"

1)	When I said "the DVR functionalities" that was precisely what I meant, the DVR functionalities tried in the court already, you know the functionalities under the old infringing software, not *any DVR fundtionalities* under other software.
2)	When I used the term "Infringing Products" in capital cases, what you think I am nuts? Of course those DVRs must be still under the definition of "Infringing Products" for the disabling order to apply. If the current DVRs with the new software are no longer infringing on the patent, they cannot possibly be called Infringing Products anymore.

You see it is all about how the court may interpret the way it sees fit. I am not saying the interpretation offered by the Tivo crowed is wrong, just that in a contempt setting we know the court can interpret its own order anyway it sees fit so to stay within the boundary of the uniform standards.

The court in the StarBrite case did so, please don't tell me Judge Folsom cannot do the same.


----------



## Ergan's Toupe

jacmyoung said:


> how can he rely on something that does not exist?


The same way DISH can modify a product that ceases to exist? :bang


----------



## Greg Bimson

James Long said:


> DISH was ordered to disable the DVR functionallity in eight named products. It could be fun to read that as "that" DVR functionality or "the infringing" DVR functionality ... and many do read it that way. The injunction simply says "the".


And what makes it worse is that "the DVR functionality" is clarified and defined with the phrase right after it: (i.e., disable all storage to and playback from a hard disk drive of television data).


----------



## Ergan's Toupe

jacmyoung said:


> In the same spirit, it is not a stretch to see Judge Folsom interpreting his second order in the following way:
> 
> "Disable *the DVR functionalities* (i.e. all storage and playback&#8230&#8230; of the *Infringing Products*&#8230;"


You really are a DISH lawyer, aren't you? 

How much do they pay you to dream this stuff up?

Seriously, this is cut and dry. Folsom said to turn them off for the life of the patent. The patent is still valid and the boxes still work.

End of story.

You can drag this out as long as you can, but Charlie is going to be in world of hurt when all is said and done. His "stubborness" is going to bite him in the butt. :kickbutt:


----------



## jacmyoung

Greg Bimson said:


> WRONG.
> 
> The rule you discuss is applied once there is an accusation of infringement regarding a device never before the court. The modification of the Bouncenette product makes that product a new construct, and thus never been before the court. Of course those were allowed, just like those in Star-Brite were allowed as the newly-modified but same-named product were modified. Those were new constructs never adjudicated.
> 
> The rule does not apply to the devices that have been before the court. Joe Blow's four-year old 501 as well as four million others have been before the court and have been found infringing. The only accusation by TiVo is not regarding sales of that product, but that DISH/SATS has not done what it has been ordered to do with that product.
> 
> Infringement on a product that has been before the court does not need to be litigated for infringement again.


The Bouncenette products were before the court, they were shipped to the stores already before the injunction was in full force. After the injunction was in full force, Safety 1st did something, by sending out some instruction sheets to inform the stores some of the Bouncenette products had a modified hardness. So the injunction covered all the products in question because they were all "on the shelves" when the order asked they be pulled off the shelves.

Again the time line and location are very important, in that order, the question is whether the products were already on the shelves before the injunction ordered them to be pulled, the answer was yes. But did the court insist they all be pulled? No.

The same issue is before us here, whether the same DVRs were already at the hands of the end users before the injunction ordered them to be disabled, the answer is also a yes.

And in your case, by claiming some of those products were modified before the injunction was in full force, the court allowed those products *not be pulled off the shelves*, even though the order clearly said they must be pulled off the shelves.

And in our case, DISH is saying the same, all of the DVRs on the list have been modified before the injunction was in full force. The question is should the court allow these DVR's functions *not disabled*, even though the order says the DVR functions must be disabled?

Now let's talk about your only remaining issue. But before we do so I want you to at least agree not to even bring up some of the other arguments such as:

1)	On 9/4 the new software is not on the agenda, well same was true in your PriceFisher case;
2)	In this case we have a second "mandatory order", well same was true in your priceFisher case;
3)	The second order in this case cannot be interpreted as anything other than those DVRs on the list can no longer be used as DVRs. Of course there can be other interpretations, as I have demonstrated the courts' ability to interpret the way they see fit, sometimes beyond our imagination.

So if you agree not to waste time on the above issues, then let's look that this one last item of yours, that is adjudicated products already with the end users may not be modified.

Oh wait, I forgot, I have this Footprint 2.0 case in which the infringer did send a software update while the Footprint 2.0 service that was already in the field never stopped working, and there was no contempt after the software modification. So:

4)	Adjudicated device/service *already in the field, with the end users*, can also be modified in order to workaround the patent.

So what is left to argue about really?

Oh I know, in that Footprint 2.0 case the court "allowed" such software download modification to take place. Ok whatever you say.

So the only remaining issue is really whether the infringer needs court's permission in order to modify the adjudicated products already in the field, am I correct?

Because before we go on, I want to make sure we are eyeing the same ball, and the only ball. I don't want our eyes off that ball. So let me make sure if this is that ball you agree to have your eyes on before I go on.


----------



## Ergan's Toupe

jacmyoung said:


> 4)	Adjudicated device/service *already in the field, with the end users*, can also be modified in order to workaround the patent.
> 
> Why did Folsom even bother writing an injunction then? Why didn't he just tell DISH "don't worry about this silly court order thingy... just come back in a year or so and tell me you modified the product and I'll forget all about it." :lol:


----------



## jacmyoung

Ergan's Toupe;1755045 said:


> jacmyoung said:
> 
> 
> 
> 4)	Adjudicated device/service *already in the field, with the end users*, can also be modified in order to workaround the patent.
> 
> Why did Folsom even bother writing an injunction then? Why didn't he just tell DISH "don't worry about this silly court order thingy... just come back in a year or so and tell me you modified the product and I'll forget all about it." :lol:
> 
> 
> 
> Why did the judge in Greg's case ordered Safety 1st to pull the products off the shelves? Why not just wait a few years then till Safety 1st told them they modified the products?
> 
> Because if the court does not, the infringer will not modify. What you think people are stupid just to modify on their own? You think modifying a product is piece of cake and cost nothing?
> 
> What kind of question is that? What will be your next question?
Click to expand...


----------



## Albie

Ergan's Toupe;1754780 said:


> Seriously, this is cut and dry. Folsom said to turn them off for the life of the patent. The patent is still valid and the boxes still work.
> 
> End of story.


This case is anything but "cut and dry" specifically the contempt motion. I do not know how it will be ruled by Judge Folsom, but I do believe the aftermath (appeals rulings) will set precedent for the future. My reasoning for this is that all of the case law presented by both viewpoints (in this thread) have only dealt with a physical product where once in the hands of customers it was unmodifiable at any reasonable level of ease and economy or it was a software service that did not have any real physical presence in the hands of the customers. This case involves a physical product that requires a good bit of software to make it function as intended. Because of the nature of this particular product it is modifiable while still in the hands of the customer in an easy and economical manner. The only previous instance where this was the case appears to have been the NTP vs RIM (Blackberry) case, but it was settled before it got this far.

I make no predictions on how Judge Folsom will rule, but either way I do predict that the fine boys and Girls of the Fifth Circuit will be listening to more arguments from Morgan Chu et al as well as Harold McIlhenny et al. If they have the arguments here in New Orleans maybe I will try to attend.

By the way it certainly been fascinating reading the verbal sparring in this thread


----------



## James Long

jacmyoung said:


> The Bouncenette products were before the court, they were shipped to the stores already before the injunction was in full force. ...
> 
> The same issue is before us here, whether the same DVRs were already at the hands of the end users before the injunction ordered them to be disabled, the answer is also a yes.


Not quite the same. The Bouncenette was a modified product that happened to be shipped before the injunction went into force. DISH attempted NO modification of their products until long after the injunction was scheduled to be in force. Safety 1st made it clear which Bouncenette products were modified and gave specific instructions on how to tell the difference between the adjudicated product and the modified product. DISH has made no such distinction.

The biggest difference is that the new Bouncenette's were shipped as non-infringing (real world definition) products. DISH's products were shipped as infringing (real world definition and adjudicated as such) products and remained infringing (real world definition) until long after the appeals process began.



> ... PriceFisher case; ... priceFisher case; ...


You might as well be repeating "I'm a moron" "I'm a moron" over and over. People who repeat known mistakes make me wonder what else they have wrong in their posts. You are not garnering trust.


----------



## Greg Bimson

> *From jacmyoung:*
> Again the time line and location are very important, in that order, the question is whether the products were already on the shelves before the injunction ordered them to be pulled, the answer was yes. But did the court insist they all be pulled? No.





> Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction.2 Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard.


Again, keep reading more into what was found. Safety 1st modified the product and gave it a new number, by appending a different letter to the same model number. That is, Safety 1st changed the harness on 43002B and made it 43002C. Therefore, it is outside the scope of the injunction _unless_ it infringes and is merely colorably different.


jacmyoung said:


> 1) On 9/4 the new software is not on the agenda, well same was true in your PriceFisher case;


No, Fisher-Price accused Safety 1st of sales of infringing product. TiVo is not accusing DISH/SATS of sales of infringing product.


> *From jacmyoung:*
> 2) In this case we have a second "mandatory order", well same was true in your priceFisher case;





> Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.


Considering that DISH/SATS has in fact stated no product has been disabled while there is an order to disable product found infringing and installed in subscribers' homes, it is exactly how Safety 1st was found in violation of the injunction.


> 3) The second order in this case cannot be interpreted as anything other than those DVRs on the list can no longer be used as DVRs. Of course there can be other interpretations, as I have demonstrated the courts' ability to interpret the way they see fit, sometimes beyond our imagination.


I'll agree with this.


> *From jacmyoung:*
> 4) Adjudicated device/service already in the field, with the end users, can also be modified in order to workaround the patent.


Correct. And if there is an order to modify the product so its functionality becomes disabled, then that is what must be done. Any other modification be forbidden, unless approved by the court.


> *From jacmyoung:*
> So the only remaining issue is really whether the infringer needs court's permission in order to modify the adjudicated products already in the field, am I correct?


Almost. The remaining issue is that Joe Blow's 501 and almost four million other DVR's have been found infringing. They have an order to disable their functionality.

A unilateral modifction other than the one given in the order does not remove those devices from the scope of the injunction.

Heck, according to TiVo and even DISH/SATS counsel, the devices still infringe because they still self-regulate and analyze the data to do a trick play.

And there certainly isn't a more than colorable difference as:
The DVR's found infringing with the old software did trick plays.
The DVR's with the new software still do trick plays.

A 501 with old software and a 501 with new software have exactly the same functionality, so they are merely colorably different.

For those of you that forget what the injunction does, one part restrains and enjoins future sales of merely colorable different infringing products. The second part only addresses product found to infringe that had already been sold. Since the product that had been sold is no longer in the marketplace, and that product has already been found to infringe, the only way to get DISH/SATS off the hook is if they initiated some kind of modification to the injunction order.

That injunction order should have been challenged. DISH/SATS needed that injunction order to be modified in order to play the game they are playing now. However, with the simple fact that the "new software" still makes the DVR's infringe, we can see why this game is being played out in a contempt hearing, rather than an appeal or a request for a modification of the injunction: because those requests would have ended the case already.


----------



## Ergan's Toupe

jacmyoung said:


> Ergan's Toupe;1755045 said:
> 
> 
> 
> Why did the judge in Greg's case ordered Safety 1st to pull the products off the shelves? Why not just wait a few years then till Safety 1st told them they modified the products?
> 
> Because if the court does not, the infringer will not modify. What you think people are stupid just to modify on their own? You think modifying a product is piece of cake and cost nothing?
> 
> 
> 
> The infringer was told to disable the product until the patent expires. They did not. I don't care how much money they spent. They were given a specific order and ignored it.
> 
> By the way that "herculean" effort came to about 700,000 dollars. So yes, the modification was a piece of cake and cost almost nothing.
> 
> Regardless, how did they modify a product that did not exist in the first place? Why the super secret modification? Why didn't they have the wording of the injunction changed to "modify the DVR" instead of "disable the DVR"?
> 
> 
> 
> jacmyoung said:
> 
> 
> 
> 
> 
> Ergan's Toupe;1755045 said:
> 
> 
> 
> What will be your next question?
> 
> Click to expand...
> 
> The one you keep ignoring... Are you a lawyer for DISH?
> 
> Click to expand...
Click to expand...


----------



## Curtis52

Greg Bimson said:


> And there certainly isn't a more than colorable difference as:
> The DVR's found infringing with the old software did trick plays.
> The DVR's with the new software still do trick plays.
> 
> A 501 with old software and a 501 with new software have exactly the same functionality, so they are merely colorably different.


If there is more than a colorable difference with the modified device, Dish is not in contempt because a device that is more than colorably different is legally a different device than the enjoined devices. Since whether or not Dish is in contempt is _somewhat_ important at a contempt hearing there should be a determination made as to whether the devices are more than colorably different at any contempt hearing.


----------



## Ergan's Toupe

Curtis52 said:


> If there is more than a colorable difference with the modified device, Dish is not in contempt because a device that is more than colorably different is legally a different device than the enjoined devices.


Can you tell me how DISH modified a device that doesn't exist?


----------



## nobody99

Curtis52 said:


> If there is more than a colorable difference with the modified device, Dish is not in contempt because a device that is more than colorably different is legally a different device than the enjoined devices. Since whether or not Dish is in contempt is _somewhat_ important at a contempt hearing there should be a determination made as to whether the devices are more than colorably different at any contempt hearing.


Look, please stop. You've said this no less than a thousand times. You think it applies to already-adjudicated and devices. Many of us think it doesn't. We get it. Repeating it over and over and over gets us nowhere. So please, if you are going to be a part of this conversation, add something new.


----------



## Ergan's Toupe

Curtis52 said:


> Dish is not in contempt


How is DISH not in contempt? They were told to shut the boxes down for the life of the patent and ignored a court order.

That's contempt as far as I'm concerned.

Here is how this should play out on Sept. 4th:

Folsom: I told you to turn the boxes off, did you?

DISH: We modified them.

Folsom: I didn't tell you to modify them, I told you to shut them off.

DISH: Well, we did shut them off, but then we turned them back on.

Folsom: Who told you you can turn them back on? I told you to turn them off for the duration of the patent.

How is this not contempt of court? I realize that Folsom's decision is going to be appealed either way but to say DISH is not in contempt is ridiculous.


----------



## scooper

Ergan's Toupe;1756386 said:


> How is DISH not in contempt? They were told to shut the boxes down for the life of the patent and ignored a court order.
> 
> That's contempt as far as I'm concerned.
> 
> Here is how this should play out on Sept. 4th:
> 
> Folsom: I told you to turn the boxes off, did you?
> 
> DISH: We modified them.
> 
> Folsom: I didn't tell you to modify them, I told you to shut them off.
> 
> DISH: Well, we did shut them off, but then we turned them back on.
> 
> Folsom: Who told you you can turn them back on? I told you to turn them off for the duration of the patent.
> 
> How is this not contempt of court? I realize that Folsom's decision is going to be appealed either way but to say DISH is not in contempt is ridiculous.


Start reading - you only have 3000 posts to cover all arguements.


----------



## scooper

Greg Bimson said:


> Any other modification be forbidden, unless approved by the court.


Really ? Where does it explicitly say that ?



Greg Bimson said:


> Almost. The remaining issue is that Joe Blow's 501 and almost four million other DVR's have been found infringing. They have an order to disable their functionality.
> 
> A unilateral modifction other than the one given in the order does not remove those devices from the scope of the injunction.
> 
> Heck, according to TiVo and even DISH/SATS counsel, the devices still infringe because they still self-regulate and analyze the data to do a trick play.
> 
> And there certainly isn't a more than colorable difference as:
> The DVR's found infringing with the old software did trick plays.
> The DVR's with the new software still do trick plays.
> 
> A 501 with old software and a 501 with new software have exactly the same functionality, so they are merely colorably different.


Don't think so - what's important is HOW the functionality gets done - not what the end result is. And in terms of that - Dish MORE than meets the "more than colorably different" .



Greg Bimson said:


> For those of you that forget what the injunction does, one part restrains and enjoins future sales of merely colorable different infringing products. The second part only addresses product found to infringe that had already been sold. Since the product that had been sold is no longer in the marketplace, and that product has already been found to infringe, the only way to get DISH/SATS off the hook is if they initiated some kind of modification to the injunction order.
> 
> That injunction order should have been challenged. DISH/SATS needed that injunction order to be modified in order to play the game they are playing now. However, with the simple fact that the "new software" still makes the DVR's infringe, we can see why this game is being played out in a contempt hearing, rather than an appeal or a request for a modification of the injunction: because those requests would have ended the case already.


No arguement there - when the remand on the H/W came down from the Appeals Court, Dish should have IMMEDIATELY petitioned to have that changed, as well pursuing the other actions - all at once.


----------



## Greg Bimson

> *From scooper:*
> Don't think so - what's important is HOW the functionality gets done - not what the end result is. And in terms of that - Dish MORE than meets the "more than colorably different" .





> " '_f two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.' " Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950) (quoting Machine Co. v. Murphy, 97 U.S. (7 Otto) 120, 125, 24 L.Ed. 935 (1877) )."_


_The 501 adjudged infringing does the same work in substantially the same way, and accomplishes the substantially the same result as the 501 modified after the stay was granted.

The modified 501 accomplishes substantially the same result as the infringing 501, so the latter half of the test easily falls within this standard.

The software wasn't completely overhauled, either, and I can flat out admit there was a change to the software. However, the only component changed was the software as it relates to Time Warp functionality. All other functionality between the old adjudicated devices and the new modified devices are the same.

No one here seriously believes a hearing on colorable difference will relate only to the changed software code, right?_


----------



## CuriousMark

Greg Bimson said:


> No one here seriously believes a hearing on colorable difference will relate only to the changed software code, right?


I saw the answer to that posted somewhere, possibly even here, but am not sure where. As I recall the colorable difference tests are taken on a claim by claim basis of the patent. I am sure, I will be corrected if I got that wrong.


----------



## scooper

Greg Bimson said:


> The 501 adjudged infringing does the same work in substantially the same way, and accomplishes the substantially the same result as the 501 modified after the stay was granted.
> 
> The modified 501 accomplishes substantially the same result as the infringing 501, so the latter half of the test easily falls within this standard.
> 
> The software wasn't completely overhauled, either, and I can flat out admit there was a change to the software. However, the only component changed was the software as it relates to Time Warp functionality. All other functionality between the old adjudicated devices and the new modified devices are the same.
> 
> No one here seriously believes a hearing on colorable difference will relate only to the changed software code, right?


Yes I do . Tivo's Lawyers believe it is significant. What more do you need ?

You obviously can't read Dish's brief on their new method. The methods to the way they accomplish trick play is completely different. And THAT is what the '389 patent is all about.


----------



## Greg Bimson

> In KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 227 USPQ 676 (Fed.Cir.1985), this court sets forth a standard for deciding whether an accused infringer is in contempt of an injunction prohibiting infringement. To show contempt, the patent owner must prove by clear and convincing evidence that "the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." Id. at 1530.


The only changes made to the devices were to remove infringement. If the infringement has not been removed as TiVo is claiming, there is no way the devices are more than colorably different, as they still do "the same work in substantially the same way, and accomplish the substantially the same result." The order of some of the processes were changed around, but that is simply doing something substantially the same way.

And it is from DISH/SATS own brief in response to TiVo's contempt motion where those changes are stated.


----------



## Greg Bimson

> *From scooper:*
> You obviously can't read Dish's brief on their new method. The methods to the way they accomplish trick play is completely different. And THAT is what the '389 patent is all about.


But colorable difference, while looking at the claims, also looks at the functionality of the device (see Graver). Colorable difference does NOT look only at the claims that were infringed.

Colorable difference looks at the entire device.


----------



## nobody99

None of this matters for September 4. Colorably different or not, it doesn't apply. Dish is in contempt for the adjudicated receivers. No amount of wishful thinking, incessant babbling, or coma-inducing repetition of the same point is going to change that.


----------



## scooper

Greg Bimson said:


> But colorable difference, while looking at the claims, also looks at the functionality of the device (see Graver). Colorable difference does NOT look only at the claims that were infringed.
> 
> Colorable difference looks at the entire device.


So if you're going to say that - Tivo "owns" the whole DVR market ? I don't think so.


----------



## Curtis52

CuriousMark said:


> I saw the answer to that posted somewhere, possibly even here, but am not sure where. As I recall the colorable difference tests are taken on a claim by claim basis of the patent. I am sure, I will be corrected if I got that wrong.


It seems to hinge on the complexity of the case and whether testimony is needed to resolve it.

KSM:


> "Under the above standard for determining a *colorable difference*, a party may seek relief by way of contempt proceedings only if the issues are appropriate for summary disposition. *If substantial issues need to be litigated, particularly if expert and other testimony subject to cross-examination would be helpful or necessary, the court may properly require a supplemental or new complaint.* The question to be answered under such standard is essentially a procedural one. Must substantial new issues be litigated to determine infringement?"





> "With respect to the issue of when contempt proceedings will be allowed, we conclude that the procedural analysis used by the majority of courts should be adopted as the general rule.7 A standard based on procedural considerations is more likely to meet due process requirements, considering the usual summary nature of contempt proceedings. Under a procedural standard, the district court is able to utilize principles of claim and issue preclusion (res judicata ) to determine what issues were settled by the original suit and what issues would have to be tried. Such a determination may vary depending upon whether the original suit was settled by consent or fully litigated.8 *If there are substantial open issues with respect to infringement to be tried, contempt proceedings are inappropriate.* Accord California Paving, 113 U.S. at 618, 5 S.Ct. at 622 (proceeding by way of a new suit "is by far the most appropriate one where it is really a doubtful question whether the new process adopted is an infringement or not"). The presence of such disputed issues creates a fair ground for doubt that the decree has been violated. So long as the district court exercises its discretion to proceed or not to proceed by way of contempt proceedings within these general constraints, this court must defer to its judgment on this issue. MAC Corporation of America, 767 F.2d at 885-86, 226 USPQ at 518."


----------



## jclewter79

Lets say that the judge does find E* in contempt on 9-4-08 and orders a shutdown. Do ya'll think Charlie will deal with tivo to keep the DVR's on or will he shut them down for a few days to get the best price? Ya'll think that E* has been working on a software patch to disable the DVR's? It does not seem like something that could be thrown together in a few hours.


----------



## Curtis52

jclewter79 said:


> Lets say that the judge does find E* in contempt on 9-4-08 and orders a shutdown. Do ya'll think Charlie will deal with tivo to keep the DVR's on or will he shut them down for a few days to get the best price? Ya'll think that E* has been working on a software patch to disable the DVR's? It does not seem like something that could be thrown together in a few hours.


Dish would appeal to the CAFC, get a stay, and then appeal to the Supreme court if necessary.


----------



## scooper

I don't think that shutting down the DVR functionality will be happening on 9/4 or shortly after.


----------



## Greg Bimson

scooper said:


> So if you're going to say that - Tivo "owns" the whole DVR market ? I don't think so.


Possibly just the Time Warp aspect. DISH was not the first company upon which TiVo filed a patent infringement suit regarding the Time Warp patent.

And I agree that there will not be a shut down... maybe a ruling, but not a shut down.


----------



## scooper

Fast Forward, Reverse, pause, and skip have been around since the VCR. I can't see how Tivo can claim to own them.


----------



## jclewter79

scooper said:


> Fast Forward, Reverse, pause, and skip have been around since the VCR. I can't see how Tivo can claim to own them.


That is a good point, I think that tivo is sueing because the have to. Nobody really wants a standalone box. Since D* split the bedsheets with tivo, they are only left in one cable box intergrated that is not availble in all areas. Thing is if tivo does not sue somebody they have one foot in the grave and another on a bananna peel. If they win a lawsuit or two they might make it till the patents run out.


----------



## nobody99

scooper said:


> Fast Forward, Reverse, pause, and skip have been around since the VCR. I can't see how Tivo can claim to own them.


And you are the only one who has made such a preposterous suggestion. They certainly do not own them. Read the patent and what DISH violated.

(You're attempt at baiting people is plainly obvious)


----------



## scooper

Even if they win - I'd still say they're on 2 banana peels


----------



## Greg Bimson

scooper said:


> Fast Forward, Reverse, pause, and skip have been around since the VCR. I can't see how Tivo can claim to own them.


They don't claim to own them. They do claim to own a specific version of that process while recording to a hard drive.


----------



## scooper

nobody99 said:


> And you are the only one who has made such a preposterous suggestion. They certainly do not own them. Read the patent and what DISH violated.
> 
> (You're attempt at baiting people is plainly obvious)


(It's "YOUR" not "YOU'RE" - BTW )

I'm just taking Greg at his literal words at "the end functionality" is all that matters - not the method that the device accomplishes it.... - IOW - I'm using satire to show you that your position is wrong. 
Yes I've read the patent and I agree Dish did violate them on the S/W that was in the devices when the suit was filed. It's that Dish was required to get court approval to change the devices to work around the patent that I find lacking in your arguement and that such change cannot be used like this.


----------



## Greg Bimson

scooper said:


> It's that Dish was required to get court approval to change the devices to work around the patent that I find lacking in your arguement and that such change cannot be used like this.


A device found infringing by a court means the devices have been adjudicated as infringing. Modifying said devices in customers' hands does NOT change the ruling of infringement. So of course there needs to be some kind of sign-off by the court to remove those devices from both the adjudication and the injunction.


----------



## nobody99

scooper said:


> (It's "YOUR" not "YOU'RE" - BTW )


Believe me, son, I know a few things about grammar and the English language. Now go back to the sandbox and play with your toys like a good little boy.


----------



## nobody99

Curtis52 said:


> Dish would appeal to the CAFC, get a stay, and then appeal to the Supreme court if necessary.


No.

A stay would not be granted.


----------



## scooper

nobody99 said:


> Believe me, son, I know a few things about grammar and the English language.


Obviously NOT !


----------



## James Long

scooper said:


> Fast Forward, Reverse, pause, and skip have been around since the VCR. I can't see how Tivo can claim to own them.


VCRs generally don't play and record at the same time. That's the magic of time warp.

Tivo developed and patented a method of performing those functions using a hard drive and a low powered processor. DISH has been found guilty of infringing on that patent. While it is possible that there are other ways of performing the "time warp" functions without using Tivo's patented processes it is adjudicated that the eight products named in the injunction infringed on that patent. A specific portion of that injunction ordered "the DVR functionality" described as "all storage to and
playback from a hard disk drive of television data" disabled.

Tivo doesn't own every method of performing the functions but they do continue to own the methods infringed on by DISH.


----------



## scooper

Try telling that to Greg....


----------



## James Long

Please see my previous posts ... It isn't the first time I've stated that idea.


----------



## Ergan's Toupe

scooper said:


> Even if they win - I'd still say they're on 2 banana peels


Have you seen DISH's sub numbers lately? :eek2:


----------



## jclewter79

Ergan's Toupe;1757824 said:


> Have you seen DISH's sub numbers lately? :eek2:


Yes, they did lose 25,000 subs over the course of the last quarter but, still made more money than that time last year. Sure sounds like they are on their way down making more money this year than last year.


----------



## Ergan's Toupe

Curtis52 said:


> Dish would appeal to the CAFC, get a stay, and then appeal to the Supreme court if necessary.


No way do they get another stay.


----------



## harsh

James Long said:


> DISH has been found guilty of infringing on that patent.


I have some reservations about this issue and whether or not the body that made the judgment was technically qualified to determine infringement. Because the defense fails to educate a jury doesn't make it true (I still speak of my last speeding ticket this way).


----------



## jacmyoung

I have already proven products/services already found to infringe and in the field can be modified to be outside of the scope of the injunction.

I have already proven just because something is not on the agenda such as modification does not mean it will not be discussed, when modification will be the first thing a contempt proceeding must consider, before anything else.

I have already proven a "second mandatory order" adds absolutely no additional weight to an otherwise standard injunction, it is still a secondary consideration in a contempt proceeding when modification must first be addressed.

What is really left for the other side to cling on is this so called court pre-approval of modification of adjudicated products already in the field.

As soon as I may find that case in which a food processing procedure was found to infringe and enjoined, but a step in which was modified, I will post it here for you folks to chew on. But since it was burried deep in the past posts, it may take a while, and who knows, Judge Folsom may have already spoken by then.


----------



## scooper

Ergan's Toupe;1757824 said:


> Have you seen DISH's sub numbers lately? :eek2:


Sub numbers aren't the whole picture. As the other posters showed you, Dish actually made MORE profit last quarter as compared to last year...


----------



## jacmyoung

scooper said:


> Sub numbers aren't the whole picture. As the other posters showed you, Dish actually made MORE profit last quarter as compared to last year...


Anyone seen Tivo's numbers lately? Tivo's entire livelihood is hinged on 9/4 hearing.

DISH's sub numbers had nothing to do with this lawsuit. Even if Tivo wins on 9/4 and also wins on appeal, DISH will continue its business. Disabling some of its DVRs will not kill them.

But when DISH is found not in contempt, it will be the beginnig of the end of Tivo.


----------



## Greg Bimson

James Long said:


> Tivo doesn't own every method of performing the functions but they do continue to own the methods infringed on by DISH.





scooper said:


> Try telling that to Greg....





scooper said:


> Fast Forward, Reverse, pause, and skip have been around since the VCR. I can't see how Tivo can claim to own them.





Greg Bimson said:


> They don't claim to own them. They do claim to own a specific version of that process while recording to a hard drive.


If DISH/SATS can make a DVR with Time Warp functionality that gets around the claims of the patent, then there is a DVR with Time Warp that can be made outside of TiVo's.

In case you missed it, I just agreed with you. However...

The modification made to DISH/SATS DVR's appears to still infringe on the Time Warp patent.


----------



## jacmyoung

Greg Bimson said:


> ...The modification made to DISH/SATS DVR's appears to still infringe on the Time Warp patent.


Even Greg is talking about the modified software, and you wisely used the word "appears".

Can you elaborate a little how you came to such conclusion?


----------



## James Long

harsh said:


> James Long said:
> 
> 
> 
> DISH has been found guilty of infringing on that patent.
> 
> 
> 
> I have some reservations about this issue and whether or not the body that made the judgment was technically qualified to determine infringement. Because the defense fails to educate a jury doesn't make it true (I still speak of my last speeding ticket this way).
Click to expand...

It doesn't matter if the jury is qualified or not ... they are authorized - and that is how our court system works.

Common people were asked to decide this case. Judge Folsom accepted their ruling (although he declined to punish Echostar for any "willful infringement" because he believed Echostar did not act in bad faith and this was not an "exceptional case").

That jury decision was appealed and withstood appeal, for the most part. The decision on the hardware claims were reversed and remanded but the decision of the jury to find Echostar guilty of infringement still stands. The only chance of that decision falling at this point in time is the Supreme Court.

If juries were limited to the technically qualified we would probably never see another one seated in a high tech case. The system isn't perfect, but it is the one we have.


----------



## scooper

Oh- I don't know about that - you just need to pick the right jurors in the right location. Or have the courts that see those kind of cases in certain more high-tech areas - example on computer-type stuff - Silicon Valley, Raleigh Durham NC, etc.


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## James Long

Claiming to have proven something doesn't prove that you have proven it. 

I'll respond to this claim as an example:


jacmyoung said:


> I have already proven a "second mandatory order" adds absolutely no additional weight to an otherwise standard injunction, it is still a secondary consideration in a contempt proceeding when modification must first be addressed.


The disable order is NOT secondary. It does not depend on whether or not DISH has complied with any other part of the order.

Think of it this way ... say that you were brought before the court and found guilty of reckless driving. The judge orders you to 1) pay a fine, 2) obey speed limits and 3) stop completely at stop signs. You appeal and a higher court confirms that you MUST follow the court's orders.

Now you're back in court being accused of not obeying stop signs. Your defense is that you have stopped speeding?

That's where we are in the Tivo vs Echostar case. Tivo has filed a motion for contempt claiming that DISH has not disabled the DVR functionality (the third order). DISH is defending by saying they are obeying the second order and no longer need to follow the third. DISH is saying that because they stopped speeding they no longer have to obey the court ordered stop sign.


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## James Long

scooper said:


> Oh- I don't know about that - you just need to pick the right jurors in the right location. Or have the courts that see those kind of cases in certain more high-tech areas - example on computer-type stuff - Silicon Valley, Raleigh Durham NC, etc.


Then you have a problem finding impartial jurors ... the more high tech of an area the more likely it is you're going to find a connection to one of the parties or a third party who is interested in a specific outcome that would affect their own product development (for example - in this case, someone developing a third party DVR system that doesn't want to see Tivo's patent extended any further by the courts).


----------



## harsh

James Long said:


> Common people were asked to decide this case.


Aren't juries supposed to be composed of peers?

I'm not blaming the jury. The fault lies substantially with the DISH Network legal representation due to their half-baked to nonexistant attempts at bringing up the right issues at the right time. Through DISH's lack of effort and the judge's instructions, the jury didn't have a chance at rendering an informed verdict.

This must be an hourly rate defense.


----------



## James Long

Greg Bimson said:


> The modification made to DISH/SATS DVR's appears to still infringe on the Time Warp patent.


I look forward to that question being addressed by the court ... two steps after September 4th.

Next step: Motion for discovery so Tivo can figure out if that claim is true and find some way of complaining to the court _with evidence_ about the products.

2nd Step: Motion for contempt using said evidence to show that DISH continues to infringe.


----------



## Curtis52

harsh said:


> Aren't juries supposed to be composed of peers?
> 
> I'm not blaming the jury. The fault lies substantially with the DISH Network legal representation due to their half-baked to nonexistant attempts at bringing up the right issues at the right time. Through DISH's lack of effort and the judge's instructions, the jury didn't have a chance at rendering an informed verdict.
> 
> This must be an hourly rate defense.


Here is the part of the patent Dish infringed. Which part do you think Dish didn't do?


> 31. A process for the simultaneous storage and play back of multimedia data, comprising the steps of:
> 
> providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data;
> 
> providing a source object, wherein said source object extracts video and audio data from said physical data source;
> 
> providing a transform object, wherein said transform object stores and retrieves data streams onto a storage device;
> 
> wherein said source object obtains a buffer from said transform object, said source object converts video data into data streams and fills said buffer with said streams;
> 
> wherein said source object is automatically flow controlled by said transform object;
> 
> providing a sink object, wherein said sink object obtains data stream buffers from said transform object and outputs said streams to a video and audio decoder;
> 
> wherein said decoder converts said streams into display signals and sends said signals to a display;
> 
> wherein said sink object is automatically flow controlled by said transform object;
> 
> providing a control object, wherein said control object receives commands from a user, said commands control the flow of the broadcast data through the system; and
> 
> wherein said control object sends flow command events to said source, transform, and sink objects.


----------



## James Long

jacmyoung said:


> Even Greg is talking about the modified software, and you wisely used the word "appears".


Greg is smart enough not to make absolute statements.

He could be wrong, I could be wrong, you could be wrong, {insert poster username here} could be wrong. The difference is sharing an opinion (even a strong one) vs posting absolutes.

We have no proof either way on the "modified software" ... it would be foolish to judge it with limited evidence and no proof.


----------



## harsh

James Long said:


> Then you have a problem finding impartial jurors ... the more high tech of an area the more likely it is you're going to find a connection to one of the parties or a third party who is interested in a specific outcome that would affect their own product development (for example - in this case, someone developing a third party DVR system that doesn't want to see Tivo's patent extended any further by the courts).


The world is full of engineers and technicians capable of understanding the technologies. Most of them work in non-MVPD electronics and computers as well as the competition. The idea is not who the juror works for but whether or not they can understand the technology.

You can't very well decide on facts that you don't understand the meaning of.


----------



## harsh

Curtis52 said:


> Which part do you think Dish didn't do?


Is it true that if any of the items taken separately isn't infringed than the whole of the patent isn't infringed?


----------



## Curtis52

harsh said:


> Is it true that if any of the items taken separately isn't infringed than the whole of the patent isn't infringed?


It is sufficient that each and every step in a single claim be performed in any particular order to find patent infringement. Dish infringed claim 31.


----------



## James Long

harsh said:


> Aren't juries supposed to be composed of peers?


Perhaps that would be ideal ... but where would we find twelve Albert Einsteins (plus alternates) should someone of his level be accused of a crime? Where do you find his peers if you define that as a group of people with an IQ of 269? Does that mean that he could have committed any crime without fear of a trial because our government could not find his peers? We don't have juries of our peers ... we have juries of average Americans who can't or don't want to get out of jury duty. 

If a crackhead is accused of a crime would he need a different jury than someone with a doctoral degree? Should a defense attorney "This jury is too smart to decide the fate of my crackhead client." I've heard the "not smart enough" complaint when a allegedly intelligent person is put on trial.

On a corporate scale who would be the peers of a company? When DISH goes on trial who is a peer? DirecTV or cable employees? (Sorry - possible bias, since they compete with DISH.) What about Microsoft? Are they the untouchable company with no peers?

The system isn't perfect, but it is the one we have. It would be anarchy to cast it aside on a case by case basis. The system has multiple levels of appeals to _help_ sort out the rough spots.


----------



## Curtis52

harsh said:


> Aren't juries supposed to be composed of peers?
> 
> I'm not blaming the jury. The fault lies substantially with the DISH Network legal representation due to their half-baked to nonexistant attempts at bringing up the right issues at the right time. Through DISH's lack of effort and the judge's instructions, the jury didn't have a chance at rendering an informed verdict.
> 
> This must be an hourly rate defense.


There was a time when people were required to pass a test before being allowed to vote. Then came civil rights.


----------



## harsh

Curtis52 said:


> It is sufficient that each and every step in a single claim be performed in any particular order to find patent infringement. Dish infringed claim 31.


My question was whether or not deleting or using substantially different steps effectively changed the process.


----------



## harsh

James Long said:


> On a corporate scale who would be the peers of a company?


The issue isn't corporate-wide. I'm thinking more along the lines of assembling a group of people who are qualified to understand the evidence that would be presented in a DVR case. You don't have to be a crackhead to comprehend chemistry or the testimony of an addiction expert (though it may help and crackheads are plentiful).


----------



## Curtis52

harsh said:


> My question was whether or not deleting or using substantially different steps effectively changed the process.


Most jurors can understand simple instructions.


----------



## James Long

harsh said:


> The issue isn't corporate-wide. I'm thinking more along the lines of assembling a group of people who are qualified to understand the evidence that would be presented in a DVR case.


If the technology is too narrowed then we run the risk of choosing people with skin in the game.

The current system of choosing people who _could_ understand the technology is what we have. There does seem to be some bias in favor of plaintiffs in the Texas Eastern District that makes it more popular in patent cases. What would be ideal would be to find the most honest jury available ... people who could say "I don't understand this" and change the system so it can be explained to them in an unbiased manner. But that's not the system we have.

Each side blindly presents the case hoping that the jury is understanding. They can read body language and perhaps extend and revise their remarks when they believe they are not being understood ... but our court system is not like a public internet forum. It isn't an open conversation that comes to a conclusion it is a debate between two parties judged by those who could be convinced.

Flawed or not - they provide the outcome we live with. There are always judges and appeals courts for sorting out major flaws.


----------



## phrelin

James Long said:


> ... but our court system is not like a public internet forum. It isn't an open conversation that comes to a conclusion...


Conclusion??? 10,000 posts maybe....


----------



## jacmyoung

James Long said:


> ...I'll respond to this claim as an example:The disable order is NOT secondary. It does not depend on whether or not DISH has complied with any other part of the order....


Again James the pulling off the shelves order was "NOT secondary. It did not depend on whether or not Safety 1st had complied with any other part of the order."

You continue to play the word game, no matter how you attack my choice of words, you cannot dispute the similarity of the "second order" in both the Safety 1st case and this one. Safety 1st did not pull some of the adjudicated products off the shelves and was not in contempt only because they claimed those products had a modified part in them. They modified them without telling the court or anyone, they only disclosed such fact after the injunction was in full effect, by mailing out some kind of product instruction sheets in which they described the modified part in some of the products already on the shelves.

The court said such notification was very much not "ideal", and of course safety 1st was clearly in violation of the letter of the two orders, but still since PriceFisher did not prove with clear and convincing evidence the modified products(which were named in the injunction to be 1) stopped from selling and also 2) pulled off the shelves) still infringed, so the defendant could continue to sell and not pulling off the shelves, those products.

Cleverly attacking the wording of my statement never worked for you James.

The only thing you and Greg have left is that DISH needed court pre-approval to modify those adjudicated DVRs already with the end users, because as Greg insists, adjudicated products already sold and in the hands of the end users must be treated differently.

Nowhere could Greg quote any court making such statement, that adjudicated products already sold and with the end users are not treated the same as all other products when it comes to getting modified to workaround the patent. It is only his belief, as I can believe DISH never infringed, the Supreme Court will review the case and overturn the final judgment of this case. My such belief is as good as Greg's.

But I will come back to prove that adjudicated product/service already with the end users can be modified without any permission from anyone


----------



## Greg Bimson

jacmyoung said:


> Safety 1st did not pull some of the adjudicated products off the shelves and was not in contempt only because they claimed those products had a modified part in them.


Since when can an adjudicated product be a modified product? I only see one person playing a word game.

Everyone has pretty much agreed a product enjoined and restrained from sales and manufacture can be modified and sold. If the patentee feels that the UNADJUDICATED product being sold is simply a merely colorably different construction of the adjudicated products, the patentee will file a motion for contempt.

The entire problem with your line of thinking:


> With respect to Magic Motion sales, Safety 1st has admitted to selling at least 442 units of the Magic Motion after the Injunction was entered. Safety 1st attempts to minimize its contemptuous conduct by portraying it as inadvertent or insignificant. The fact remains, however, that Safety 1st violated a valid court order. Thus, the court finds that Safety is in contempt of the Injunction with respect to Magic Motion sales.


That is a prima facie violation.

There is an admission that Safety 1st sold the same infringing product that was enjoined. So let's translate these sentences into the TiVo case, as the most likely outcome from Judge Folsom's ruling:

With respect to disabling "Infringing Products", Echostar has admitted that no units of the "Infringing Products" have been disabled. Echostar attempts to minimize its contemptuous conduct by playing word games with the Injunction. The fact remains, however, that Echostar violated a valid court order. Thus, the court finds that Echostar is in contempt of the Injunction with respect to complying with the disable order.

Or, I could simply use the recall order from the Fisher-Price case:


> Second, Fisher-Price argues that Safety 1st violated the Injunction by failing to make all reasonable efforts to retrieve infringing products from Safety 1st's major retail customers. The court agrees. Safety 1st hired another company to retrieve infringing products from Toys 'R Us and Babies 'R Us. That was a reasonable effort. But Safety 1st admits that it did not make similar efforts with its other major retail customers, such as Target. The court's order was unambiguous: Safety 1st was required to "make every reasonable effort possible." Safety 1st did not. Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.


Translation to the most likely outcome of the TiVo case:

TiVo argues that Echostar violated the Injunction by making no attempt to comply with the disable order regarding products found to infringe before this court. The court agrees. Considering the inconsistent attempts arguing against the plain language of the injunction, Echostar has admitted during depositions and at trial that no product found to infringe has been disabled. Therefore, the court finds that Echostar is in contempt of the Injunction with respect to its efforts to disable products found to infringe.

The problem is that the product ordered disabled has been adjudicated. There is no need for any other finding in order to rule contempt. And most certainly, colorable difference does not apply.


----------



## harsh

James Long said:


> If the technology is too narrowed then we run the risk of choosing people with skin in the game.


This is a legal case, not a popularity contest. The question of infringement should be an easy one to answer regardless if your a E* beneficiary, a TiVo beneficiary (I don't think there are many of these) or aligned with one of DISH Network's partners or its direct and indirect competitors. If the question doesn't have an obvious answer, the case should be tossed out and the patent reviewed by intellectual property specialists, not citizens way out yonder in East Jesus, TX.


> The current system of choosing people who _could_ understand the technology is what we have.


Yet TiVo chose to hold court as far away as possible from the technology centers and well-known for voting for the little guy. Is that how justice is best served or as close as you can come to buying a decision?

What makes this case so difficult to decide? Is it that the patent is ambiguous? Was the testimony misleading or obfuscatory? Where the instructions impossible?


----------



## James Long

jacmyoung said:


> Again James the pulling off the shelves order was "NOT secondary. It did not depend on whether or not Safety 1st had complied with any other part of the order."


Sorry jacmyoung, I'm talking about THIS case and THIS order. Once again you are missing the point and now you're spinning into topics that I wasn't responding to. Your response and attacks are irrelevant.

My reply was relating to THIS SEPTEMBER 4TH's MEETING where DISH will face the judge on a charge of "running a stop sign" by not disabling the DVR functionality on the named products. The issue of modifications is clearly (and by order of Judge Folsom) an issue for another day.



> But I will come back to prove that adjudicated product/service already with the end users can be modified without any permission from anyone


Will that prevent the court from finding the infringer in contempt? Show us the case.

Have you done that yet? Have you shown us a case where the district court relies on the precidents you say were set by other cases to ACTUALLY come up with a denial for a motion for contempt? Or has the district court consistently ruled contempt in these cases? Simple question ... it deserves a simple answer. Under 10 words will do. I expect you'll post another 400 word tirade on the subject just to further obfuscate the thread ... but if YOU want to convince ME post a simple case reference. Any more than that will be taken as a further attempt to hide the truth in a multiplicity of verbage designed to obfuscate. Show us the case.


----------



## James Long

harsh said:


> This is a legal case, not a popularity contest.


Yes, it is a legal case. And you are fully aware that our legal system allows for plaintiffs to file against defendants wherever they do business. Should or shouldn't be able to really isn't the issue ... it is the system we have.

Under that system DISH has been found guilty. Introducing anarchy will not make DISH innocent. We've got to accept the court system as is and move on with the case in the system we have. (Or get congress to change the system ... which is beyond the scope of this thread.)


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## jclewter79

I don't think it is a must that you have an engineering degree to hear this case. Any person that can read, with a normal intellegence level should be able to be told how dish infringed and then make a ruling as to whether they did or not.


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## Greg Bimson

Four questions from harsh, four answers from me.


> What makes this case so difficult to decide?


It has been decided. It only took a jury a couple of hours to render the verdict. So obviously there wasn't difficulty.


> Is it that the patent is ambiguous?


First, the patent could not have been too ambiguous, as DISH/SATS challenged it at the PTO, and the patent was upheld.

Of course, the validity was also challenged in court, and the guilty infringement verdict certainly proved the validity, with respect to both the claims and their constructions.


> Was the testimony misleading or obfuscatory?


Most likely what is being appealed at SCOTUS.

However, realize that one of DISH/SATS experts had their testimony stricken from the record for being misleading or obfuscatory. If you really want to win your defense case, use some propriety in making sure your defense is bulletproof.


> Where the instructions impossible?


Couldn't have been too impossible, as the verdict was rendered rather quickly.


jacmyoung said:


> But I will come back to prove that adjudicated product/service already with the end users can be modified without any permission from anyone


And you won't find one. Just like James mentions, you've taken every case law you've found and pieced it together so it looks wonderful. However, in context of the other cases, such as KSM, the patentee never accused products already adjudicated as infringement. The modified products were treated differently than products already adjudicated as infringing.

So some people, based on incorrect assertions, are asking for DISH/SATS to receive preferential treatment by setting precedent and finding no contempt. A denial of the contempt motion will gum up the judicial system to no end, as there will never be finality to litigation, as the infringer can simply say, "We've modified the product again, so please stay the contempt proceedings since none of the adjudicated products exist anymore."


----------



## Ergan's Toupe

jacmyoung said:


> Anyone seen Tivo's numbers lately? Tivo's entire livelihood is hinged on 9/4 hearing.


Would that be because DISH stole TIVO's IP?


----------



## Curtis52

Greg Bimson said:


> However, in context of the other cases, such as KSM, the patentee never accused products already adjudicated as infringement.


The manufacturer of Star-Brite was accused of a prima facie injunction violation by continuing to sell Star-Brite, a named, enjoined, adjudicated product. The company was not found in contempt because they had modified the product to be more than colorably different.


> The modified products were treated differently than products already adjudicated as infringing.


That's the way it's supposed to work. The modified products should be examined to see if they are more than colorably different as happened in the Star-Brite case.


----------



## Greg Bimson

Curtis52 said:


> The manufacturer of Star-Brite was accused of a prima facie injunction violation by *continuing to sell* Star-Brite...


Correct. And the defense against an accusation of prima facie sales of an enjoined product is that it has been modified so it does not infringe.

So obviously, when talking about the injunction against infringements, the status of the product has to be checked. That is consistently correct with the arguments that both you and jacmyoung have found. Almost everyone here would agree that is the case.

That would also be the case if TiVo accuses DISH/SATS of selling a 625. If it has been modified, it has not been before the court.

However, every old 625, prior to modification and prior to the issuance of the injunction order, has been before the court and found infringing. A modification of that product does not change the fact it was adjudicated as infringing. Products which have been adjudged infringing do not simply disappear from customers' homes with a simple change in code. The status of infringement is attached to the device by the court, and that status is certainly not removed by a simple change in code. The court is the only one that can remove the status of infringement.


----------



## Curtis52

Greg Bimson said:


> However, every old 625, prior to modification and prior to the issuance of the injunction order, has been before the court and found infringing. A modification of that product does not change the fact it was adjudicated as infringing. Products which have been adjudged infringing do not simply disappear from customers' homes with a simple change in code. The status of infringement is attached to the device by the court, and that status is certainly not removed by a simple change in code. The court is the only one that can remove the status of infringement.


Just as in Star-Brite, a modified adjudicated product that is more than colorably different from the adjudicated product is legally a different product. It doesn't matter where the product sits.


----------



## scooper

Ergan's Toupe;1759315 said:


> Would that be because DISH stole TIVO's IP?


No - it's because Tivo appears to have difficulty in getting others to license it.


----------



## scooper

Curtis52 said:


> Just as in Star-Brite, a modified adjudicated product that is more than colorably different from the adjudicated product is legally a different product. It doesn't matter where the product sits.


And it's not going to be decided on September 4th.


----------



## jacmyoung

Curtis52 said:


> Just as in Star-Brite, a modified adjudicated product that is more than colorably different from the adjudicated product is legally a different product. It doesn't matter where the product sits.


Greg's entire argument now is hinged on, as Tivo insists, that an adjudicated product already sold, or already with the end users, may not be modified, because most prior cases "pieced together" (which is exactly all rulings are based on, pieced together case law) did not address products already sold or already in the field. Greg's notion is he does not have to piece together anything, just because Tivo is only accusing products already in the field (and may not be modified).

But he continues to avoid the fact we do have casses in which adjudicated service such as Footprint 2.0 already in the field was modified to avoid contempt, to which Greg insists again it was because the court "allowed" such modification.

So the question is not whether it can be done rather if it needed court pre-approval. But I think we have proven modification needs no pre-approval.

Again let's keep our eyes on the ball there, the only question remaining for Greg and his companies is whether the infringer needs court pre-approval to modify an adjudicated infringing device already in the field to workaround the patent.

Many other arguments from them have been refuted such as:

1) There is a second "mandatory order";
2) The modification is not on the agenda on 9/4;
3) The only case where pre-approval was required was when the infringer "modified" a total of four times, each time the effort was only colorable.

So what if Tivo is not accusing DVRs not already sold? They will not even be able to successfully accuse the DVRs already sold because nowhere did the court ever said the products already sold may not be modified to workaround the patent, and we have cases where services/products already in the field were modified just fine, and we have also clearly demonstrated courts did not insist pre-approval at all.

Yes all of the above were "pieced together" of course, the only way the court rulings are constructed and based on.

Greg does not need to piece together anything, because he has his own belief system to ensure Tivo will prevail. How are you going to be able to argue with someone's belief?


----------



## jacmyoung

scooper said:


> And it's not going to be decided on September 4th.


But what if it gets decided on 9/4, will you be so disappointed of our patent system as to move out of the country(US patent laws cannot reach foreign soils)?


----------



## scooper

jacmyoung said:


> But what if it gets decided on 9/4, will you be so disappointed of our patent system as to move out of the country(US patent laws cannot reach foreign soils)?


You just now noticed that in my sig ? 

Actually, I'll either celebrate or be pissed, depending on the decision's results.


----------



## Curtis52

scooper said:


> And it's not going to be decided on September 4th.


TiVo thinks it's possible:


> These units are not more than colorably different from the Adjudicated Receivers and they continue to infringe. The Court is well within its discretion to find EchoStar in contempt on this ground as well.


----------



## scooper

Not without discovery, and Tivo should get that on Sept 4. Or rather - it would not surprise me if they get discovery then.


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## Greg Bimson

Curtis52 said:


> Just as in Star-Brite, a modified adjudicated product that is more than colorably different from the adjudicated product is legally a different product. It doesn't matter where the product sits.


Really? Then why is it that every single case law brought up regarding "colorable difference" starts with an accusation of sales of infringing products?


jacmyoung said:


> So the question is not whether it can be done rather if it needed court pre-approval. But I think we have proven modification needs no pre-approval.


You've proven nothing.


jacmyoung said:


> Many other arguments from them have been refuted such as:
> 
> 1) There is a second "mandatory order";
> 2) The modification is not on the agenda on 9/4;
> 3) The only case where pre-approval was required was when the infringer "modified" a total of four times, each time the effort was only colorable.


No, none of these have been refuted.

1) There are two orders with which DISH/SATS must comply. Only one of them tests colorable difference, and that is for *sales* of products never adjudicated.
2) Modification is not on the agenda 4 September.
3) And all four of those times were for violating the injunction by *selling* modified but still infringing products.


jacmyoung said:


> Yes all of the above were "pieced together" of course, the only way the court rulings are constructed and based on.


And summarily refuted by TiVo. Have you read any of TiVo's briefs without DISH/SATS colored glasses? You want a pieced-together argument? This is why KSM and the others quoted do not apply:


> *Fundamentally, the law does not allow relitigation of infringement with respect to
> adjudicated products. That issue has concluded and cannot be reopened. None of the cases that EchoStar cites addresses a product that entered the marketplace as an infringing product, and none concerns ongoing exploitation of an unlawfully installed product base by a willful patent infringer.* KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 1523 (Fed. Cir. 1985), for example, involved a consent judgment, not a fully litigated and affirmed judgment of willful infringement. Moreover, the products subject to the consent judgment were the THERMALLOCK products. On the other hand, the products at issue in the contempt proceeding were the ULTRA-LOK products. Id. at 1523-24. The decision refers repeatedly to the difference between "the particular device found to be [an] infringement" and modified products that entered the marketplace after judgment. Id. at 1525. *KSM casts no doubt on a court's ability to enforce an injunction as to the particular devices found to infringe in the underlying action.* See id. at 1527 (distinguishing between "an enjoined device and an accused device"); id. at 1530 (distinguishing between "accused and adjudged devices" and between an "alleged offending device . . . and an enjoined device"). See also Aero Prods., 2005 WL 1182430, at *3-7 (holding defendant in contempt for selling (1) new products that continued to infringe (following KSM) and (2) previously enjoined products (following regional circuit law)).
> 
> *Like KSM, EchoStar's other authorities do not involve adjudicated products.* See Abbott Labs. v. TorPharm, Inc., 503 F.3d 1372, 1383 (Fed. Cir. 2007) (contempt proceeding applied only to new units not before the court when it entered injunction; adjudicated product remained subject to injunction); Bass Pro Trademarks, L.L.C. v. Cabela's, Inc., 485 F.3d 1364, 1367-68 (Fed. Cir. 2007) (contempt proceeding applied only to new units; adjudicated product remained subject to consent decree); Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 856, 867 (Fed. Cir. 1988) (contempt proceeding applied only to new units; original products remained subject to injunction); Star Brite Distrib., Inc. v. Gavin, 746 F. Supp. 633, 641 (N.D. Miss. 1990) (contempt proceeding applied only to new units; defendant destroyed existing stock of adjudicated products).


Every argument regarding modification does not apply to the products originally found infringing.

None of DISH/SATS supposed citations of case law revolve around installed, adjudicated infringing products. So unless you believe precedent will be set with this case, the motion for contempt will be granted.


----------



## nobody99

link



> *clutch/grasp at straws*
> 
> 1. to try any method, even those that are not likely to succeed, because you are in such a bad situation. _He's hoping that this new treatment will help him but I think he's clutching at straws. (usually in continuous tenses)_
> 
> 2. to try to find reasons to feel hopeful about a situation when there is no real cause for hope. _She thinks he might still be interested because he calls her now and then but I think she's clutching at straws. (usually in continuous tenses)_
> See also: clutch, grasp


Seems apropos.

Dish is using the first definition, and Curtis/jacmyoung are using the second :lol:


----------



## Greg Bimson

scooper said:


> And it's not going to be decided on September 4th.





Curtis52 said:


> TiVo thinks it's possible:
> 
> 
> 
> These units are not more than colorably different from the Adjudicated Receivers and they continue to infringe. The Court is well within its discretion to find EchoStar in contempt on this ground as well.
Click to expand...

Oh, it is possible that could be ruled upon. Just not likely.


----------



## Curtis52

Greg Bimson said:


> Really? Then why is it that every single case law brought up regarding "colorable difference" starts with an accusation of sales of infringing products?


Because non-infringing products are seldom enjoined.


----------



## jacmyoung

Greg Bimson said:


> Really? Then why is it that every single case law brought up regarding "colorable difference" starts with an accusation of sales of infringing products?You've proven nothing.No, none of these have been refuted.


The Footprint 2.0, hello?



> 1) There are two orders with which DISH/SATS must comply. Only one of them tests colorable difference, and that is for *sales* of products never adjudicated.


There are two orders with your PriceFisher case, the second order had nothing to do with infringement, only to remove from the stores, and this second order was literaly violated but Safety 1st was not in contempt for some of the products.



> 2) Modification is not on the agenda 4 September.


Modification was not on the agenda in your PriceFisher hearing either, so much so that Safety 1st got away with it, because the plaintiff simply did not think it was relevant. Had they tried to rip the modifed products apart, they might still have proven Safety 1st still infringed with the modified products.



> 3) And all four of those times were for violating the injunction by *selling* modified but still infringing products. And summarily refuted by TiVo. Have you read any of TiVo's briefs without DISH/SATS colored glasses? You want a pieced-together argument? This is why KSM and the others quoted do not apply:Every argument regarding modification does not apply to the products originally found infringing.
> 
> None of DISH/SATS supposed citations of case law revolve around installed, adjudicated infringing products. So unless you believe precedent will be set with this case, the motion for contempt will be granted.


Tivo's logic will not work because while they insist products already litigated to infringe may not be relitigated, it is only true for the products not modified. They "pieced together" those quotes from the courts but the cases were all for products either not modified, or even with modifications, eventually the differences were found only colorable.

Tivo never was able to prove in one instance in which an adjudicated product was modifed in a way more than colorable, and the court still refused to re-litigate it.

So Tivo was left to insist, that DISH may not modified the adjudicated products already with the end users.

Tivo did not refute anything, which was why in the end Tivo was forced to debate on the modified DVRs' colorable difference issue, as Curtis had pointed out above.

Had Tivo refuted successfully, why bother to give DISH's new software argument any legitimacy and debate on it? Because Tivo knew their prior arguments did not hold water.


----------



## jacmyoung

Greg Bimson said:


> Oh, it is possible that could be ruled upon. Just not likely.


When both DISH and Tivo are debating the new software colorable issue, based on the new software evidence already in front of them, and each has accepted those evidence, and made the conclusion on each's own, then there is no need for further discovery, the court can certainly rule on it.

What DISH had done successfully was to use the DE filing to finally force Tivo to address the new software in its latest response, so to give support to Tivo's notion that the new software may not be tried elsewhere. Before that, Tivo continued to refuse to touch on the new software colorable issue, only after the DE case was Tivo forced into it in the Texas court.


----------



## Greg Bimson

jacmyoung said:


> The Footprint 2.0, hello?





jacmyoung said:


> But he continues to avoid the fact we do have casses in which adjudicated service such as Footprint 2.0 already in the field was modified to avoid contempt, to which Greg insists again it was because the court "allowed" such modification.





> IT IS HEREBY ORDERED that:
> 
> Defendants, including Digital Island (now known as Cable & Wireless Internet Services, Inc.), their officers, agents, servants, employees, and attorneys are permanently enjoined and prohibited from making, using, selling, offering for sale, or importing into the United States the patented inventions claimed in claims 1, 3, 5 and 9 of the '703 patent, and from active inducement of infringement of these claims of the '703 patent. *This injunction extends to Digital Island's Footprint 2.0 service, as configured and described at trial.*


And if Digital Island changed the Footprint 2.0 service, it would not be the same as it was when it was configured and described at trial.

I'll even throw the bone: if the injunction specified to disable the "Infringing Products as configured and described at trial", we wouldn't be having any of this conversation. I would have flat out stated the modification to the adjudicated product takes the receivers out of the scope of the injunction.


jacmyoung said:


> There are two orders with your PriceFisher case, the second order had nothing to do with infringement, only to remove from the stores, and this second order was literaly violated but Safety 1st was not in contempt for some of the products.


Go back and read the recall section of the decision. The order to recall was violated and Safety 1st was found in contempt. Fully.


jacmyoung said:


> Modification was not on the agenda in your PriceFisher hearing either, so much so that Safety 1st got away with it, because the plaintiff simply did not think it was relevant.


Another bone: Safety 1st modified the "infringing product", and changed the model number from 43002B to 43002C by giving the product a modified harness. OF COURSE it cannot be found in contempt via a prima facie violation: the device had never been adjudicated as infringing.


jacmyoung said:


> Tivo's logic will not work because while they insist products already litigated to infringe may not be relitigated, it is only true for the products not modified.
> 
> [...]
> 
> Tivo never was able to prove in one instance in which an adjudicated product was modifed in a way more than colorable, and the court still refused to re-litigate it.


You have made a couple of massive leaps of faith. Products before the court may not be relitigated. Period. Just because they've been modified does not change court procedure.


jacmyoung said:


> So Tivo was left to insist, that DISH may not modified the adjudicated products already with the end users.


Another fairly large leap of faith.

TiVo isn't saying the adjudicated products with subscribers cannot be modified. TiVo is saying there is only one modification allowed to those adjudicated products once the injunction was in effect: DVR functionality must be disabled.


jacmyoung said:


> Tivo did not refute anything, which was why in the end Tivo was forced to debate on the modified DVRs' colorable difference issue, as Curtis had pointed out above.


Now we go from leaps of faith to flat out worship. TiVo did refute everything. And, if your opponent decides to use a defense to prove their position, and you can use that defense against them for another proceeding, why not start on it now? TiVo has stated that even without discovery, the only proof offered by DISH/SATS and their counsel proves that the receivers running the new software are only colorably different and still infringe.

In other words, DISH/SATS modification may not only find them in contempt of the disable order for simply refusing to comply with the plain language order, it may also find them in contempt of the injunction against infringements.


jacmyoung said:


> When both DISH and Tivo are debating the new software colorable issue, based on the new software evidence already in front of them, and each has accepted those evidence, and made the conclusion on each's own, then there is no need for further discovery, the court can certainly rule on it.


And that is the point. From the evidence presented as a defense by DISH/SATS own counsel, it appears that DISH/SATS DVR's still infringe.


----------



## peak_reception

scooper said:


> No - it's because Tivo appears to have difficulty in getting others to license it.


 Why buy the cow when you can get the milk for free?


----------



## Curtis52

Greg Bimson said:


> Products before the court may not be relitigated. Period.


That's the reason for the colorable difference test. If there is more than a colorable difference they aren't legally the same devices.


> "At the heart of any contempt proceeding is the circumstance that the substantive issues were *finally adjudicated in prior litigation* between the same parties.
> 
> Contempt "should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct". Id. at 618, 5 S.Ct. at 622. When an adjudged infringer has modified the infringing device in an attempt to avoid infringement, *courts have consistently first analyzed the changes in the devices*, in the context of determining whether to *reopen issues previously adjudicated*."


----------



## Ergan's Toupe

peak_reception said:


> Why buy the cow when you can get the milk for free?


DING! DING! DING! we have a WINNER!!!! :joy:


----------



## Greg Bimson

Source for that quote? KSM, of course.

Better yet, it is the opinion written by Circuit Court Judge Pauline Newman dissenting in part to the KSM ruling. So let's take a look at the first three sentences written in the opnion:


> I agree that this case should be remanded for further findings on the question of equivalency, but I do not endorse the sweeping rules of law and procedure espoused by the majority.
> 
> I.
> 
> 68
> The question before the court is the law to be applied in the contempt action brought by KSM against Jones, an adjudged infringer that had modified its infringing insulation device in an attempt to avoid an existing injunction against infringement. On the facts of this case, it is a narrow question.


Hmm. Yet the products adjudicated in the consent decree still remained under the injunction.

And once again, the colorable difference test only applies to product the infringer is trying to sell in the marketplace:


> In view of these and other considerations to be discussed, *where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation*, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings.


The original litigation tagged four million DISH/SATS DVR's as infringing. They are forever off the table, and subject to a disable order. Modifying those DVR's does not change the fact these have been tagged as infringing. From KSM, the majority opinion:


> The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule, to be addressed infra, *that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe,* and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent.


The modification doesn't change the fact there are products the court found which were infringing. The accusation is that the devices previously adjudged to infringe have a clear order on them which has not been followed. Even if the modification has not been before the court, those adjudicated devices certainly have.


----------



## Curtis52

> "The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule, to be addressed infra, that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other *devices which are no more than colorably differen*t therefrom and which clearly are infringements of the patent. "


In other words, devices that are more than colorably different are off the hook. Contempt can only be found on the unmodified adjudicated device and those only colorably different.

That's what happened in Star-Brite:


> "the court is, however, of the opinion that the change made in defendant's formulations of the infringing products is more than colorable, and is thus sufficiently substantial so as to make decision on this matter in a summary contempt action improper. Accordingly, plaintiff's motion for the imposition of civil or criminal contempt sanctions on the defendant should be, in the opinion of this court, denied."


----------



## Greg Bimson

That is far from what happened in Star-Brite: Star Brite Distrib., Inc. v. Gavin, 746 F. Supp. 633, 641 (N.D. Miss. 1990) (contempt proceeding applied only to new units; defendant destroyed existing stock of adjudicated products). 

Defendant in TiVo v. Echostar did not destroy the adjudicated products in the hands of subscribers, which are still functional despite an order to disable those devices.


----------



## Greg Bimson

> Contempt can only be found on the unmodified adjudicated device and those only colorably different.





> that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe


Contempt can be found on a device previously adjudged to infringe. The modification to the adjudged device is irrelevant.

Besides, this doesn't apply anyway...


> *The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent"* is alleviated because of the universal rule, to be addressed infra, that contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent.


The disable order is not a prohibition against infringement. The disable order is for products which have already been found as infringements.


----------



## Curtis52

Greg Bimson said:


> That is far from what happened in Star-Brite: Star Brite Distrib., Inc. v. Gavin, 746 F. Supp. 633, 641 (N.D. Miss. 1990) (contempt proceeding applied only to new units; defendant destroyed existing stock of adjudicated products).


Case law does not caveat that how to legally treat attempts by infringers to modify infringing products to become non-infringing applies only to new devices or only to used devices. It is a red herring. It just ain't there.


> Defendant in TiVo v. Echostar did not destroy the adjudicated products in the hands of subscribers, which are still functional despite an order to disable those devices.


If the devices in the hands of subscribers are more than colorably different they aren't legally the same as the adjudicated devices. That's why they require new trials. They aren't the same devices. The same device can't be tried twice but the law requires a new trial. Therefore, they aren't the same device.


----------



## jacmyoung

The problem with Greg's argument is he can only quote what Tivo is saying, not what the case law is saying. Notice both Curtis and I simply cite case law, not what DISH is saying.

Because relying on your party's logic is very risky, just think of what happened when Tivo asked the judge to order DISH to pay treble damages and attorney fees based on jury's willful infringement charge?

Did you not think Tivo's argument was absolutely on the mark and DISH was doomed? What happened?

Anything said by any one party in dispute is always biased and not reliable. That is why we look into past cases, not just what Tivo is saying, or what DISH is saying, but what the court has been saying, because it is the court that will make a ruling, not Tivo, nor DISH.


----------



## jacmyoung

Greg Bimson said:


> And if Digital Island changed the Footprint 2.0 service, it would not be the same as it was when it was configured and described at trial.


If DISH changed the DVRs software (same as Footprint 2.0 software change), they would not be the same as they were when they were configured and described at trial. Are you saying they are still the *same*?



> I'll even throw the bone: if the injunction specified to disable the "Infringing Products as configured and described at trial", we wouldn't be having any of this conversation.


I will give you a shocker, an injunction can *only proscribe* items as configured and described at trial, or those only colorably different than the items as configured and described at trial, there cannot be any other items to be prohibited in an injunction. So the fact that injunction specified "configured and described at trial" was not even necessary, it was a given.

The DVR functions as proscribed in this injunction to be disabled must be those as configured and described at trial, if not, the colorable difference test must kick in.

The colorable difference test, if the judge does it correctly, will be the *first* thing to be addressed in a contempt proceeding, and once a decision can be made on such test, all else will be moot.


----------



## Greg Bimson

Curtis52 said:


> Case law does not caveat that how to legally treat attempts by infringers to modify infringing products to become non-infringing applies only to new devices or only to used devices. It is a red herring. It just ain't there.


Case law always caveats how to treat adjudicated devices, for the most part, in three categories:

1) Attempts to sell/make the enjoined device
2) What must be done with existing inventory of infringing devices
3) What must be done with the infringing products which have been sold.

Case law for colorable difference only applies to attempts to sell/make the enjoined device. There has not been case law for a modification on points 2 and 3, so it is a lark to state colorable difference applies to all three.

Here is why:


Curtis52 said:


> If the devices in the hands of subscribers are more than colorably different they aren't legally the same as the adjudicated devices.


And if there is no ruling regarding the colorable difference status of these devices, they are simply adjudicated, and must follow a specific order.


----------



## Ergan's Toupe

Curtis52 said:


> That's why they require new trials. They aren't the same devices. The same device can't be tried twice but the law requires a new trial. Therefore, they aren't the same device.


So 4/5 years from now when the new trials/appeals are over and DISH is found to infringe again, Charlie will Just claim that he really, CROSS MY HEART,REALLY will change it this time? If you remember correctly, Charlie claimed they didn't infringe the first time. How did that work out for him? Why should anyone believe him now? Why should you give a proven thief the benefit of the doubt?

The patent system will be worthless if DISH is allowed to keep introducing a moving target.

I expect a contempt ruling followed by a DISH appeal. If DISH is unable to get a stay, it's game OVER for DISH.

After all the BS that Charlie has put TIVO through, I really hope that TIVO refuses to give them a license. How funny would that be? No thanks Charlie, we don't want your money, just shut them down, thanks... :lol:

I know I wouldn't want to do business with scum like Charlie. How may of those 4 million DVR customers jump ship to DTV when their boxes go dark? Half? 3/4?


----------



## Greg Bimson

jacmyoung said:


> So the fact that injunction specified "configured and described at trial" was not even necessary, it was a given.


Yet that case was from 2002, while the entry for the 2006 injunction against DISH/SATS did not need this?

It is not a given. The device has been found infringing. There will not be a need to relitigate an adjudicated device EVER, no matter how many arguments there are to the contrary.


jacmyoung said:


> If DISH changed the DVRs software (same as Footprint 2.0 software change), they will not be the same as they were when they were configured and described at trial. Are you saying they are still the same?


The injunction at the heart of the Digital Island suit was to stop a service, not a physical product.

Even if DISH/SATS changed the software on the DVR, the DEVICE has been ruled infringing. The adjudicated DEVICE will not be relitigated. Even Curtis agrees:


> The same device can't be tried twice but the law requires a new trial. Therefore, they aren't the same device.


One law takes precedence over the other. If you guess that "the law requires a new trial," you've made a bad choice.


----------



## jacmyoung

Greg Bimson said:


> Yet that case was from 2002, while the entry for the 2006 injunction against DISH/SATS did not need this?


Most injunctions do not specifiy the term "as configured and described at trial", are they all wrong? I have not seen one of them disregarded modification yet.



> It is not a given. The device has been found infringing. There will not be a need to relitigate an adjudicated device EVER, no matter how many arguments there are to the contrary.


To make your above statement true, you must first defeat the following court's statement:

Contempt shall not be used as a sword to wound an infringer from modifying *adjudicated devices* to workaround the patenet in order to remain in the marketplace.

Go ahead try it. If an adjudicated device may not be relitigated ever, then what the #$%$ was the court saying above? Are they nuts by making such statement, because Greg says the court is so wrong.



> The injunction at the heart of the Digital Island suit was to stop a service, not a physical product.


So now we have another argument, it was a service, all the standard must only apply to products, not services. Then what the heck do you think the judge was basing her ruling on when she ruled Digital Island not in contempt after the Footprint 2.0 softwere update? Her order and her order alone? Are you even serious? Maybe not, because this is exactly what you are saying, Judge Folsom will rule on his own order and his order only, without considering any standards and the law. Good luck with that.



> Even if DISH/SATS changed the software on the DVR, the DEVICE has been ruled infringing. The adjudicated DEVICE will not be relitigated. Even Curtis agrees:One law takes precedence over the other. If you guess that "the law requires a new trial," you've made a bad choice.


The adjudicated devices, once modified, will have to be relitigated, if the modification makes them more than colorably different than the devices described at trial. You simply refuse to see the statements made by the courts, only rely on your own belief.

Only when the adjudicated devices not modified, as not different than those already tried, will not be relitigated.


----------



## jacmyoung

Ergan's Toupe;1759868 said:


> So 4/5 years from now when the new trials/appeals are over and DISH is found to infringe again, Charlie will Just claim that he really, CROSS MY HEART,REALLY will change it this time?


DISH would have been ordered to pay all the damages, even treble damages and attorney fees, incurred for all the 4/5 years back.



> If you remember correctly, Charlie claimed they didn't infringe the first time. How did that work out for him? Why should anyone believe him now? Why should you give a proven thief the benefit of the doubt?


This statement just shows a total lack of understanding how the court works. When the court tries on an act, it does not take any reference from past evidence, it must only look at the evidence at hand. The court works differently than how average people argue in a casual setting.



> The patent system will be worthless if DISH is allowed to keep introducing a moving target.


In an extreme case when the infringer tried to tell the court they modified the products, but still found to infringe, they did so not once, not twice, not three times, but four times, and after the 4th time the modified products were still found infringing, only then the court said wait a minute, you could not do that anymore, next time the court must first approve your modification proposal. You see even after that the court did not say no couldn't modify, rather to show us how you were going to modify before actually doing it.



> I expect a contempt ruling followed by a DISH appeal. If DISH is unable to get a stay, it's game OVER for DISH.
> 
> After all the BS that Charlie has put TIVO through, I really hope that TIVO refuses to give them a license. How funny would that be? No thanks Charlie, we don't want your money, just shut them down, thanks... :lol:
> 
> I know I wouldn't want to do business with scum like Charlie. How may of those 4 million DVR customers jump ship to DTV when their boxes go dark? Half? 3/4?


Save your question for now, and be a little concerned if you have a Tivo box, prepare an exist strategy, you never know.


----------



## James Long

jacmyoung said:


> This statement just shows a total lack of understanding how the court works. When the court tries on an act, it does not take any reference from past evidence, it must only look at the evidence at hand. The court works differently than how average people argue in a casual setting.


Perhaps one you should check out the decisions in the Distants case in Florida? There were plenty of references to the entire case and DISH's actions (inlcuding failure to act) throughout the process. It was part of the evidence that led the court to determine that DISH deserved the "death penalty" for distants in that case. Without that evidence, DISH likely would have received a lesser penalty (as they did earlier in the case before the evidence existed).


----------



## Ergan's Toupe

jacmyoung said:


> Save your question for now, and be a little concerned if you have a Tivo box, prepare an exist strategy, you never know.


I don't need an "excist" strategy. Without a doubt, my TIVO will work fine either way after the 9/4 decision.

Can you say the same about your DISH box?


----------



## jacmyoung

Greg Bimson said:


> Case law always caveats how to treat adjudicated devices, for the most part, in three categories:
> 
> 1) Attempts to sell/make the enjoined device
> 2) What must be done with existing inventory of infringing devices
> 3) What must be done with the infringing products which have been sold.
> 
> Case law for colorable difference only applies to attempts to sell/make the enjoined device. There has not been case law for a modification on points 2 and 3, so it is a lark to state colorable difference applies to all three.
> 
> Here is why:And if there is no ruling regarding the colorable difference status of these devices, they are simply adjudicated, and must follow a specific order.


You are so good at even ignore your own case, in the Safety 1st case you quoted yourselve, the 2) was addressed and the modified products were allowed to remain on the shelves, even though the order was to have them pulled off the shelves. And in Footrpoint 2.0 case 3) was addressed as for what may happen to an adjudicated serivce that was ordered to be shut down, yet a small modification by software update was enough to allowed it to continue be used as before, no stopping at all.

Keep saying no case law to address 2) and 3) when they are right in your face, is just beyond me.


----------



## jacmyoung

Ergan's Toupe;1760036 said:


> I don't need an "excist" strategy. Without a doubt, my TIVO will work fine either way after the 9/4 decision.
> 
> Can you say the same about your DISH box?


I don't even need to say it, you know my answer.


----------



## jacmyoung

James Long said:


> Perhaps one you should check out the decisions in the Distants case in Florida? There were plenty of references to the entire case and DISH's actions (inlcuding failure to act) throughout the process. It was part of the evidence that led the court to determine that DISH deserved the "death penalty" for distants in that case. Without that evidence, DISH likely would have received a lesser penalty (as they did earlier in the case before the evidence existed).


Yes, all relevant within that same trial as evidence, for the same violation, of course the pattern of behavior would matter. But suh evidence cannot be used in a separate trial for a different act in review. This is the fundation of our legal system, only evidence specific to what is on trial, not evidence in a prior case or anything irrelevant, such as you personal opinion of the defendant, may be submitted.

In a later contempt proceeding, in fact I beleive FOX used the precisely same argument that DISH was found guilty during the trial and not be trusted, did the court give such argument even the slightest look? No, DISH was not in contempt.


----------



## James Long

jacmyoung said:


> ... the modified products were allowed to remain on the shelves, even though the order was to have them pulled off the shelves.


Modified products were ordered removed from the shelves? Amazing! 

The flaw in Fisher-Price vs Safety 1st was that un-modified products were easily confused with modified products leading to confusion over what was and was not sold after the injunction went into effect.

But if you want to say that modified products were ordered removed, great, It just helps Tivo.


----------



## James Long

jacmyoung said:


> Yes, all relevant within that same trial as evidence, for the same violation, of course the pattern of behavior would matter. But suh evidence cannot be used in a separate trial for a different act in review.
> 
> In a later contempt proceeding, in fact I beleive FOX used the precisely same argument that DISH was found guilty during the trial and not be trusted, did the court give such argument even the slightest look? No, DISH was not in contempt.


DISH wasn't in contempt because they were not in violation of the distants injunction. They had ceased offering distant networks by the deadline.

We are talking within the same trial here ... Tivo vs Echostar ... DISH's actions since the beginning of the case are part of this case.


----------



## Greg Bimson

jacmyoung said:


> Contempt shall not be used as a sword to wound an infringer from modifying adjudicated devices to workaround the patenet in order to remain in the marketplace.
> 
> Go ahead try it. If an adjudicated device may not be relitigated ever, then what the #$%$ was the court saying above? Are they nuts by making such statement, because Greg says the court is so wrong.


I don't need to defeat the statement from the court. However, you are not using the correct quote from the court, even though DISH/SATS did:


> "[C]ontempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace."


Marketplace means selling. DISH/SATS modified the 625 in order to have it "remain in the marketplace", because the injunction will not allow DISH/SATS to sell 625's already ruled as infringing. These devices are only covered by the "no infringement" order, not the disable order, as they aren't supposed to be sold. Modify those, and they become a manufacture not adjudicated by the court.

DISH/SATS modified the infringing 625's in customers' hands. Those are not enjoined from sales or manufacture, because they've already been both manufactured and sold. Therefore the disable order only applies to these. And there isn't any language in the injunction about modifying the devices found infringing in customers' homes, other than the order to disable. Modify these, and there isn't any case law to support any other modification than ordered, i.e., disable the DVR's found infringing.


jacmyoung said:


> The adjudicated devices, once modified, will have to be relitigated, if the modification makes them more than colorably different than the devices described at trial. You simply refuse to see the statements made by the courts, only rely on your own belief.


You cannot relitigate a device found infringing. Simple fact of law there. Modifying the devices in customers' hands found infinging does not change the fact these devices were adjudicated.

And the only thing I do is simply refuse to see the statements made by the courts and presented by others here taken out of context and applied incorrectly to this case.


----------



## jacmyoung

James Long said:


> Modified products were ordered removed from the shelves? Amazing!
> 
> The flaw in Fisher-Price vs Safety 1st was that un-modified products were easily confused with modified products leading to confusion over what was and was not sold after the injunction went into effect.
> 
> But if you want to say that modified products were ordered removed, great, It just helps Tivo.


Yes the modified products already on the shelves were also ordered to be pulled off the shelve, but the infringer did not follow the order, and was not in contempt. Happy now?

So now you are talking about confusion? As if there is no confusion here? The fact you and I are arguing is an indication there is difference of opinions or confusion. Just because you beleive there is no confusion does not make it so, I have no confusion you are wrong, you have no confusion I am wrong, here lies confusion, and the defendant gets the benefit of that confusion, not the plaintiff.

Tivo wants to benefit? Be a defendant next time, it is too late now.


----------



## jacmyoung

> And the only thing I do is simply refuse to see the statements made by the courts and presented by others here taken out of context and applied incorrectly to this case.


On or some time after 9/4 you will see all the case law be applied, like all other cases. Simply thinking this one case is above all other cases is ok, just not something you should try again after DISH is found not in contempt.


----------



## peak_reception

jacmyoung said:


> In an extreme case when the infringer tried to tell the court they modified the products, but still found to infringe, *they did so not once, not twice, not three times, but four times, and after the 4th time the modified products were still found infringing, only then the court said wait a minute, you could not do that anymore, next time the court must first approve your modification proposal.*You see even after that the court did not say no couldn't modify, rather to show us how you were going to modify before actually doing it.


 So after four rounds of making a complete mockery of the patent protection system the court finally laid down the law and said "Hey, you can't do that any more without getting pre-approval." What a Joke! Patents will expire before those kind of games come to an end. I don't believe that Judge Folsom is such a joker, nor a sucker. Look for him to lower the boom on or about September 4. Sure, EchoStar will appeal but will even the CAFC want to hear any more of this crap?


----------



## Greg Bimson

jacmyoung said:


> And in Footrpoint 2.0 case 3) was addressed as for what may happen to an adjudicated serivce that was ordered to be shut down, yet a small modification by software update was enough to allowed it to continue be used as before, no stopping at all.


Because the injunction allowed it, and Footprint 2.0 was not a DEVICE.

It was ruled that the service was infringing, and that the service "as adjudicated" could not be used. So tweak a few things, and the service no longer exists "as adjudicated". That would put it out of scope of the injunction.


jacmyoung said:


> Yes the modified products already on the shelves were also ordered to be pulled off the shelve, but the infringer did not follow the order, and was not in contempt. Happy now?


NO.

Safety 1st did not make a good-faith effort to recall the infringing product. Modified product had no bearing here. Safety 1st was found in contempt for not recalling the adjudicated product to the best of their ability.

Nothing was mentioned about the recall and modified product.


----------



## Greg Bimson

jacmyoung said:


> On or some time after 9/4 you will see all the case law be applied, like all other cases.


And you won't like the outcome.


----------



## Ergan's Toupe

jacmyoung said:


> I don't even need to say it, you know my answer.


Actually, I don't. Why don't you tell me? :grin:


----------



## Ergan's Toupe

peak_reception said:


> So after four rounds of making a complete mockery of the patent protection system the court finally laid down the law and said "Hey, you can't do that any more without getting pre-approval." What a Joke! Patents will expire before those kind of games come to an end. I don't believe that Judge Folsom is such a joker, nor a sucker. Look for him to lower the boom on or about September 4. Sure, EchoStar will appeal but will even the CAFC want to hear any more of this crap?


Exactly why it's game over for Charlie. Folsom is not going to play "I dare you to step over this line, OK, THIS line" with Charlie.

Folsom will rule contempt, Charlie will appeal, the CAFC will tell Charlie to pound salt and DTV will gain somewhere between 2-3 million new subs over night.

All because of "stubborness". :nono:


----------



## Ergan's Toupe

jacmyoung said:


> Tivo wants to benefit? Be a defendant next time, it is too late now.


Don't take this as a personal attack, but that is just stupid. The stupidest thing I have read in this whole thread.


----------



## Ergan's Toupe

Greg Bimson said:


> And you won't like the outcome.


Speaking of outcomes....

I can see Charlie buying TIVO. It makes a lot of sense when you think about it. I think it's the only way Charlie can get out of this gracefully.


----------



## scooper

Ergan's Toupe;1760153 said:


> Speaking of outcomes....
> 
> I can see Charlie buying TIVO. It makes a lot of sense when you think about it. I think it's the only way Charlie can get out of this gracefully.


Heck, if I was Charlie - I would have been marshalling the money to do it a long time ago


----------



## jacmyoung

peak_reception said:


> So after four rounds of making a complete mockery of the patent protection system the court finally laid down the law and said "Hey, you can't do that any more without getting pre-approval." What a Joke! Patents will expire before those kind of games come to an end. I don't believe that Judge Folsom is such a joker, nor a sucker. Look for him to lower the boom on or about September 4. Sure, EchoStar will appeal but will even the CAFC want to hear any more of this crap?


Have you even looked at Judge Folsom's own prior cases? I have, and I did not get any sense he was out there fighting for the patentees against this broken patent system. Stop dreaming.

The jury found DISH infringement willful, but Judge Folsom told Tivo no treble damages and attorney fees, you two are both nuts and equally at fault for this mess.

But hold on to your dream while it lasts.


----------



## jacmyoung

Greg Bimson said:


> Because the injunction allowed it, and Footprint 2.0 was not a DEVICE.
> 
> It was ruled that the service was infringing, and that the service "as adjudicated" could not be used. So tweak a few things, and the service no longer exists "as adjudicated". That would put it out of scope of the injunction.NO.


Sorry Greg, the infringer needs not court's to allow any specific modification. The court will only look at such modificaiton after the fact. As stated earlier, only in one very extreme case after four bad faith attempts by the infringer did the court ever imposed some kind of measure to "allow" the next modificaiton attempt.



> Safety 1st did not make a good-faith effort to recall the infringing product. Modified product had no bearing here. Safety 1st was found in contempt for not recalling the adjudicated product to the best of their ability.
> 
> Nothing was mentioned about the recall and modified product.


Go read it again, Safety 1st was found not in contempt of the continued sale of the Bouncate products, and not pulling them off the shelves, even though the Bouncatte products was on the list to be pulled off the shelves. The only contempt was for the Digital Motion (?) products.

Your refusal to even read your own case is beyond me.


----------



## jacmyoung

scooper said:


> Heck, if I was Charlie - I would have been marshalling the money to do it a long time ago


Why? After the no contempt, Tivo will worth much less and continue to see itself becoming ever irrelevant.


----------



## jacmyoung

Ergan's Toupe;1760146 said:


> Don't take this as a personal attack, but that is just stupid. The stupidest thing I have read in this whole thread.


In a court setting, your above statement is just as stupid as calling DISH a scumbag in front of the judge. You have demonstated no ability to understand the language of the court.


----------



## James Long

jacmyoung said:


> Yes the modified products already on the shelves were also ordered to be pulled off the shelve, but the infringer did not follow the order, and was not in contempt. Happy now?


I believe you are incorrect. The injunction required adjudicated _infringing_ product models to be removed from the store shelves. In the contempt filing: "Fisher-Price contends that Safety 1st violated the Injunction by continuing to sell *infringing* models of the 2-n-1 Bouncenette and the Magic Motion after August 28, 2003."

This contention was found to be partially correct and partially incorrect, thanks to the errors of Safety 1st ..."With respect to Magic Motion sales, Safety 1st has admitted to selling at least 442 units of the Magic Motion after the Injunction was entered. Safety 1st attempts to minimize its contemptuous conduct by portraying it as inadvertent or insignificant. The fact remains, however, that Safety 1st violated a valid court order. Thus, the court finds that Safety is in contempt of the Injunction with respect to Magic Motion sales."​This is contempt for selling the unmodified Magic Motion product. (Anyone want to disagree that an unmodified infringing product left in the marketplace is not contempt?)

The second part of the contention was in regards to the Bouncenette ..."With respect to Bouncenette sales, Fisher-Price asserts that Safety 1st has failed to show that its post-Injunction Bouncenette sales were not in violation of the Injunction. Safety 1st counters that, while it sold Bouncenettes after the Injunction's entry bearing the proscribed base model numbers, all of those Bouncenettes had a new, non-infringing harness design that Fisher-Price has not accused of infringement. Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction. Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales."​This is lack of contempt because they were selling an actually modified product. The confusion came because Safety 1st's recordkeeping was inaccurate. DISH failed to learn the lesson of Fisher-Price vs Safety 1st as they too have made it very difficult for the court to determine what is and is not a modified product.



> So now you are talking about confusion? As if there is no confusion here? The fact you and I are arguing is an indication there is difference of opinions or confusion. Just because you beleive there is no confusion does not make it so, I have no confusion you are wrong, you have no confusion I am wrong, here lies confusion, and the defendant gets the benefit of that confusion, not the plaintiff.


Am I arguing with Dr Sabaitso? "WHY DO YOU FEEL THAT WAY ABOUT CONFUSION?" 

DISH's failing (as outlined above) was not introducing their modified products in a way that makes it abundantly clear that they exist and are actually the products now in customer's homes. When we get two steps past September 4th I believe the court will have nasty words to say to DISH ... as nasty as was written to Safety 1st ... for the way they carried out the "modifications".

Of course the only question on the table now is whether DISH is in contempt for not disabling the DVRs as ordered. DISH is claiming to have replaced the infringing products with new products via a software upgrade but did not notify the court of any changes until after they were accused of contempt. There is confusion over whether DISH is allowed to not disable the existing DVRs in the field ... and that confusion will be dealt with on September 4th ... does DISH have to disable their DVRs?



> Tivo wants to benefit? Be a defendant next time, it is too late now.


You're not understanding. Saying that MODIFIED products can be recalled supports Tivo's claim that DISH's DVRs must suffer the court ordered change (disable the DVR functionality) regardless of modification.


----------



## James Long

Ergan's Toupe;1760153 said:


> Speaking of outcomes....
> 
> I can see Charlie buying TIVO. It makes a lot of sense when you think about it. I think it's the only way Charlie can get out of this gracefully.


Possible ... but Charlie wants to be proven right first. Not only is it a point of honor, but when DISH wins it will lower Tivo to a fire sale price. DISH will pick up the ashes, revert to Tivo code software and still have a DVR that is "Better than Tivo".


----------



## James Long

jacmyoung said:


> Go read it again, Safety 1st was found not in contempt of the continued sale of the Bouncate products, and not pulling them off the shelves, even though the Bouncatte products was on the list to be pulled off the shelves. The only contempt was for the Digital Motion (?) products.
> 
> Your refusal to even read your own case is beyond me.


Have you read it? What are the products again? Who was the plaintiff? So many errors!


----------



## jclewter79

Ergan's Toupe;1759868 said:


> So 4/5 years from now when the new trials/appeals are over and DISH is found to infringe again, Charlie will Just claim that he really, CROSS MY HEART,REALLY will change it this time? If you remember correctly, Charlie claimed they didn't infringe the first time. How did that work out for him? Why should anyone believe him now? Why should you give a proven thief the benefit of the doubt?
> 
> The patent system will be worthless if DISH is allowed to keep introducing a moving target.
> 
> I expect a contempt ruling followed by a DISH appeal. If DISH is unable to get a stay, it's game OVER for DISH.
> 
> After all the BS that Charlie has put TIVO through, I really hope that TIVO refuses to give them a license. How funny would that be? No thanks Charlie, we don't want your money, just shut them down, thanks... :lol:
> 
> I know I wouldn't want to do business with scum like Charlie. How may of those 4 million DVR customers jump ship to DTV when their boxes go dark? Half? 3/4?


Tivo cannot afford to not give them a license, that would be the dumbest thing they could do, the stockholders would be pissed.


----------



## Ergan's Toupe

jclewter79 said:


> Tivo cannot afford to not give them a license, that would be the dumbest thing they could do, the stockholders would be pissed.


Not if they have deal with DTV.


----------



## dgordo

jacmyoung said:


> Yes, all relevant within that same trial as evidence, for the same violation, of course the pattern of behavior would matter. But suh evidence cannot be used in a separate trial for a different act in review. This is the fundation of our legal system, only evidence specific to what is on trial, not evidence in a prior case or anything irrelevant, such as you personal opinion of the defendant, may be submitted.
> 
> In a later contempt proceeding, in fact I beleive FOX used the precisely same argument that DISH was found guilty during the trial and not be trusted, did the court give such argument even the slightest look? No, DISH was not in contempt.


You cant just make stuff up and assume no one will notice. You need to review the Federal Rules of Evidence before you assume that prior bad acts are not admissible. The are numerous types of evidence not specific to "what is on trial" that can be used.


----------



## jclewter79

Ergan's Toupe;1760315 said:


> Not if they have deal with DTV.


Tivo have a deal with Direct TV? Why would Direct TV want to deal with Tivo again?


----------



## Ergan's Toupe

jclewter79 said:


> Tivo have a deal with Direct TV?


Yes they have a deal now. I'm not saying they get a new one, but you can't say they can't work something out.

[/QUOTE]Why would Direct TV want to deal with Tivo again?[/QUOTE]

Think about it....


----------



## Ergan's Toupe

jacmyoung said:


> Yes, all relevant within that same trial as evidence, for the same violation, of course the pattern of behavior would matter. But suh evidence cannot be used in a separate trial for a different act in review. This is the fundation of our legal system, only evidence specific to what is on trial, not evidence in a prior case or anything irrelevant, such as you personal opinion of the defendant, may be submitted.


Sorry, you are flat out WRONG. :nono:


----------



## Ergan's Toupe

dgordo said:


> You cant just make stuff up and assume no one will notice. You need to review the Federal Rules of Evidence before you assume that prior bad acts are not admissible. The are numerous types of evidence not specific to "what is on trial" that can be used.


EXACTLY.


----------



## Ergan's Toupe

jacmyoung said:


> Why? After the no contempt, Tivo will worth much less and continue to see itself becoming ever irrelevant.


I hope Charlie is as overconfident as you!


----------



## Ergan's Toupe

jacmyoung said:


> In a court setting, your above statement is just as stupid as calling DISH a scumbag in front of the judge. You have demonstated no ability to understand the language of the court.


Well, you will have to excuse me for not understanding, I'm not the one playing lawyer. :lol:


----------



## jclewter79

Ergan's Toupe;1760474 said:


> Yes they have a deal now. I'm not saying they get a new one, but you can't say they can't work something out.


Why would Direct TV want to deal with Tivo again?[/QUOTE]

Think about it....[/QUOTE]

D* has bet the farm on the HR-20-21-22. If they were going to give in to all the pleas the keep the Directivo, they would have done that a while back. As much as I love E*, even I have to admit that what D* has done with the CE program is revolutionary. They are finally making something that resembles a stable DVR, and they are talking about issueing HDDVR's to everybody whether they subcribe to HD or not, and looking to built a whole house DVR in the next 5 years. It is crazy to think that they are going to give a piece of that revolutionary pie to Tivo. Not with as far as they have come, no way. When Tivos stock gets low enough look for for Charles to buy a controlling amount. One day not too far in the future all those pretty Tivo boxes are going to say Echostar on the side, and you standalone guys will benifit with a better working DVR and most likely about a $6 decrease per month in subcription fees.


----------



## Mainer_ayah

Ergan's Toupe;1760483 said:


> Sorry, you are flat out WRONG. :nono:


And whoever thought jac my young might be an attorney is obviously flat out wrong as well.


----------



## Ergan's Toupe

jclewter79 said:


> Why would Direct TV want to deal with Tivo again?


Think about it....[/QUOTE]

D* has bet the farm on the HR-20-21-22. If they were going to give in to all the pleas the keep the Directivo, they would have done that a while back. As much as I love E*, even I have to admit that what D* has done with the CE program is revolutionary. They are finally making something that resembles a stable DVR,[/QUOTE]

No they are not. I have an HR-22, it is a door stop. A piece of junk. I hate it. It works when it feels like it. After 14 years, the day DTV shuts my TIVO off is the day I go back to cable or FIOS.

As far as ECHO buying TIVO, I'm all for it. I think it would be a killer box.


----------



## CuriousMark

jclewter79 said:


> D* has bet the farm on the HR-20-21-22. If they were going to give in to all the pleas the keep the Directivo, they would have done that a while back. As much as I love E*, even I have to admit that what D* has done with the CE program is revolutionary. They are finally making something that resembles a stable DVR, and they are talking about issueing HDDVR's to everybody whether they subcribe to HD or not, and looking to built a whole house DVR in the next 5 years. It is crazy to think that they are going to give a piece of that revolutionary pie to Tivo. Not with as far as they have come, no way.


The day is coming when the waiver for opening their networks to third party consumer "navigation" devices will expire. Both DTV and Dish know this. That pie will have to be opened up. It may be that they are using the time until then to come up with a competitive offering, but they can't keep the pie to themselves forever. Meanwhile, they could be getting ahead of the curve on that requirement by working with TiVo or other CE vendors now. They are missing a good opportunity to get out ahead of the regulators.


----------



## Greg Bimson

CuriousMark said:


> The day is coming when the waiver for opening their networks to third party consumer "navigation" devices will expire.


I could be wrong about this...

I thought that waiver was only for cable, as a cable box is a different animal than a satellite receiver?

DirecTV receivers aren't being made by DirecTV, either. Unlike Echostar, owner of Eldon Technologies which manufactures all Dish Network receivers, DirecTV outsources the receivers according to their specifications. You can tell the manufacturer by the ending of the receiver model number:

-100 = Thomson / RCA
-200 = Samsung
-250 = TiVo
-300 = Philips
-400 = Hughes
-500 = Humax
-600 = LG
-700 = Pace Micro Technology
-800 = NEC
from the faq here on DBSTalk.com


----------



## CuriousMark

Greg Bimson said:


> I could be wrong about this...
> 
> I thought that waiver was only for cable, as a cable box is a different animal than a satellite receiver?


Cable didn't get a waiver, although they got lots of delays. Now cable has followed the rules and allow third party navigation devices to work via cable cards (the separable security).

Satellite got waivers to the requirement to implement separable security and open their network to third party devices. That waiver is still in place, but it will not last forever.

Note, satellite receivers with smart cards already implement separable security, but their network is still closed. When it is opened, in theory you will be able to buy a satellite ready TV and just plug the satellite drop directly to the back of the TV and then plug a smart card into a slot and be on your way. That day is not yet here, but my wish is that it comes soon.


----------



## Greg Bimson

Thank you for clearing that up.


----------



## jacmyoung

James Long said:


> I believe you are incorrect. The injunction required adjudicated _infringing_ product models to be removed from the store shelves. In the contempt filing: "Fisher-Price contends that Safety 1st violated the Injunction by continuing to sell *infringing* models of the 2-n-1 Bouncenette and the Magic Motion after August 28, 2003."
> 
> This contention was found to be partially correct and partially incorrect, thanks to the errors of Safety 1st ..."With respect to Magic Motion sales, Safety 1st has admitted to selling at least 442 units of the Magic Motion after the Injunction was entered. Safety 1st attempts to minimize its contemptuous conduct by portraying it as inadvertent or insignificant. The fact remains, however, that Safety 1st violated a valid court order. Thus, the court finds that Safety is in contempt of the Injunction with respect to Magic Motion sales."​This is contempt for selling the unmodified Magic Motion product. (Anyone want to disagree that an unmodified infringing product left in the marketplace is not contempt?)
> 
> The second part of the contention was in regards to the Bouncenette ..."With respect to Bouncenette sales, Fisher-Price asserts that Safety 1st has failed to show that its post-Injunction Bouncenette sales were not in violation of the Injunction. Safety 1st counters that, while it sold Bouncenettes after the Injunction's entry bearing the proscribed base model numbers, all of those Bouncenettes had a new, non-infringing harness design that Fisher-Price has not accused of infringement. Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st's sales records did not reflect the change in revision letter. This ambiguity in Safety 1st's recordkeeping appears careless in the face of the Injunction. Despite Safety 1st's less-than-ideal recordkeeping, however, Fisher-Price's evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales."​This is lack of contempt because they were selling an actually modified product. The confusion came because Safety 1st's recordkeeping was inaccurate. DISH failed to learn the lesson of Fisher-Price vs Safety 1st as they too have made it very difficult for the court to determine what is and is not a modified product.
> 
> Am I arguing with Dr Sabaitso? "WHY DO YOU FEEL THAT WAY ABOUT CONFUSION?"
> 
> DISH's failing (as outlined above) was not introducing their modified products in a way that makes it abundantly clear that they exist and are actually the products now in customer's homes. When we get two steps past September 4th I believe the court will have nasty words to say to DISH ... as nasty as was written to Safety 1st ... for the way they carried out the "modifications".
> 
> Of course the only question on the table now is whether DISH is in contempt for not disabling the DVRs as ordered. DISH is claiming to have replaced the infringing products with new products via a software upgrade but did not notify the court of any changes until after they were accused of contempt. There is confusion over whether DISH is allowed to not disable the existing DVRs in the field ... and that confusion will be dealt with on September 4th ... does DISH have to disable their DVRs?
> 
> You're not understanding. Saying that MODIFIED products can be recalled supports Tivo's claim that DISH's DVRs must suffer the court ordered change (disable the DVR functionality) regardless of modification.


So what?

First off, Safety 1st had those "B" products on the shelves before the injunction was in full effect, only after the order was in full force did they claim some of the "B" products had a modified part. The fact that Safety 1st's bad recordkeeping had to do with that they did not even make any attempt to show on the store receipts which were sold as the modified "B" products, which were sold as unmodified "B" products, after the order was in full force, and that caused difficulties for the court to assess the accurate enhanced damages. But despite that, and the fact the infringer clearly violated the letter of the injunction, there was no contempt for the continued sale and not pulling off the shelves, those modified "B" products.

But I don't even know if you are agreeing with me or disagreeing with me, so now DISH according to you did a similar thing, caused confusion, but again Safety 1st was not in contempt for those modified products, so what are you trying to prove? That DISH shall not be in contempt of their modified products?

I am equally confused by what you tried to tell us above. So DISH will get some nasty words from the judge but not in contempt anyway, is that what you tried to say?

On the issue of the distant case, my point was, any evidence of the pattern of bad acts by DISH to violate the distant signal retransmission law, were used in the trial to render a final judgment. Once the final judgment was made, the evidence were put away.

Even though the later contempt proceeding was the continuation of the trial, but the prior evidence of DISH's pattern of violating the distant signal law could not be used in that contempt proceeding to find DISH in contempt. The court could only look at the evidence relevant to the contempt issue, and correctly found DISH not in contempt.

So again I don't know if you were trying to prove my point wrong or just tried to change the argument again. I was responding to one poster's claim that the court will take into consideration DISH's past "lies" on 9/4, and also his own opinion that DISH is a scumbag must be relevant on 9/4.

Neither will be true. Past evidence to render the final judgment cannot be used in the contempt hearing, and one's opinion of course cannot be used as evidence at all.


----------



## Curtis52

> "[C]ontempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to *remain in the marketplace*."





Greg Bimson said:


> Marketplace means selling.


If Dish's DVRs aren't in the marketplace then I guess TiVo doesn't need monthly royalties.


----------



## jacmyoung

Curtis52 said:


> If Dish's DVRs aren't in the marketplace then I guess TiVo doesn't need monthly royalties.


Of course the opinion "marketplace is selling" was again one of the many Greg's own inventions just so he can continue to argue on his point that products already sold may not be modified.

DISH by modifying those DVRs already in the hands of the end users (adjudicated devices) to workaround the patent, was precisely as the court said, in order to allow those DVRs (adjudicated devices) to remain in the marketplace.

Greg can try all he can to give other meanings to the term "marketplace" to suit his needs, but the court only needs to see if the above DISH's interpretation of the "marketplace" is acceptable or not, if acceptable, regardless how Greg or Tivo wants to frame it any other ways, DISH will get the benefit of the acceptable interpretation.

This is the same how the benefit of the interpretation of the disabling order goes, as long as DISH's intepretation of it is acceptable, DISH will get the benefit of it, even though Tivo's interpretation may have an opposite result.

DISH's interpretation is, "the DVR functionalities" must refer to "the DVR functions" configured and described at trial (which is of course true by the standards to frame an injunction anyway), not "any DVR functions" in the world, and the disabling order only applies to the "Infringing Products", if the products no longer infringe, they are no longer "Infringign Products", therefore are no longer subject to the order.

Of course Greg and Tivo disagree, but as long as DISH's above interpretation has merit, DISH gets the benefit of it, even though Tivo's intepretation may also have merit, or even have more merit than DISH's, but too bad Tivo is not the defendant, so Tivo will not get the benefit of its own merit.


----------



## Greg Bimson

jacmyoung said:


> First off, Safety 1st had those "B" products on the shelves before the injunction was in full effect, only after the order was in full force did they claim some of the "B" products had a modified part.


They never claimed that the 43002B product had a modified part.


Curtis52 said:


> If Dish's DVRs aren't in the marketplace then I guess TiVo doesn't need monthly royalties.


TiVo's claim to monthly royalties is only based off of a similar agreement, from daledietrich.com:


> Estimating a loss of $1.00 per month (the royalty rate paid by DirecTV) for each of the 4.1 million remaining Echostar subscribers, TiVo claims further lost royalties in the amount of $52.95 million.


Once sold, those DVR's aren't in the marketplace.


jacmyoung said:


> DISH by modifying those DVRs already in the hands of the end users (adjudicated devices) to workaround the patent, was precisely as the court said, in order to allow those DVRs (adjudicated devices) to remain in the marketplace.
> 
> Greg can try all he can to give other meanings to the term "marketplace" to suit his needs, but the court only needs to see if the above DISH's interpretation of the "marketplace" is acceptabel or not, if acceptable, regardless how Greg or Tivo wants to frame it an other way, DISH will get the benefit of the acceptable interpretation.


Right.

Just like DISH/SATS can use KSM _et al_ to their advantage, when none of the case law discusses product already adjudicated, but does discuss product modified so that it can "remain in the marketplace", as in product that is not enjoined from sales. Just like KSM _et al_ discuss products never litigated in front of the court, unlike the products ordered disabled.


----------



## Curtis52

Greg Bimson said:


> Once sold, those DVR's aren't in the marketplace.


A marketplace exists wherever money changes hands. Dish charges a monthly fee for the DVRs and TiVo wants a share of each month's profit. The DVRs are in the marketplace.


----------



## Greg Bimson

Curtis52 said:


> A marketplace exists wherever money changes hands. Dish charges a monthly fee for the DVRs and TiVo wants a share of each month's profit. The DVRs are in the marketplace.


Wrong marketplace:

DirecTV paid TiVo $1 per box per subscriber. The *marketplace* values were used to order DISH/SATS pay the royalty, as defined by the *marketplace*. That is irrespective if DISH/SATS charges their customers for DVR service (or not).


----------



## Curtis52

TiVo has filed a new reply in Delaware.


----------



## jacmyoung

Greg Bimson said:


> They never claimed that the 43002B product had a modified part.


But the products that they claimed to have a modified part was allowed to be continued sold and not pulled off the shelve, even though they were on the shelves when the order specifically said they needed to be pulled off the shelves.



> Once sold, those DVR's aren't in the marketplace.


What are you talking about? As long as they are still used and collecting fees, they are in the marketplace.


----------



## jacmyoung

Greg Bimson said:


> Wrong marketplace...


Who cares, you do not have the authority to dictate how the marketplace should mean according to your own belief.

Beside, the word "marketplace" the court used in its statement was a general term, not specific to a flea market where people trade goods. The court simply means the infringer's right to do its business using such *adjudicated devices* as long as such *adjudicated devivces* are modified to workaround the patent.

Yes, the court says, the infringer can modify the *adjudicated devices* to workaround the patent in order to remain in the marketplace.

The above statement does not even rely on the word "marketplace", it simply says yes *adjudicated devices* can be modified, as long as the modification works around the patent.

But even if you may be right of your very limited interpretation of the word "marketplace", again as I said, as long as DISH's interpretation has merit, as a defendant DISH gets the benefit of it. The court will give all considerations to the non-mover (DISH), not the mover(Tivo), no matter how much merit Tivo may have, even if Tivo's interpretations have more merit than DISH's, as long as DISH's have merit, DISH shall prevail, that is the rule.


----------



## jacmyoung

Curtis52 said:


> TiVo has filed a new reply in Delaware.


Is this the reply to the last DISH's response? If so is it the last thing to be submitted by either party before the 9/11 conference?


----------



## jacmyoung

BTW, just read through Tivo's reply, several points:

1) In it Tivo has finally admitted on 9/4 the issue of redesign and new software may be resolved.

2) Tivo continues to mix the suit in DE court with the issue in the Texas court. Tivo says the two issues are the same. But of course they are not. The DE case is about the new software infringement, the 9/4 Texas hearing is about the new software colorable difference issue, one must be tried in a separate lawsuit, the latter is determined in a contempt proceeding.

3) Tivo used the same arguments to claim the DISH new software is only colorable, with two main points:

a) Because the DVRs on the list did not use the new software from the get go (therefore did not utilize the higher CPU power DISH claimed the new software needs), therefore it is proof the DVRs on the list have no higher power to run the new software.

This is of course a stupid argument. Just because the DVRs on the list did not initially run the new software, is no proof they do not have the higher power to run the new software. Those DVRs were manufactured long after those earlier DVRs such as the Dishplayers or the first generation of Tivo boxes, and of course have more powerful CPUs. Just because such higher CPU power was not utilized initially is no way to say such power never existed to run the new software.

b) Tivo's second main argument is DISH's new software still "parse" or analyze the incoming streams.

But Tivo themselves admitted during the trial that at issue is only one of the many DVR technologies they claim DISH had infringed on their patent, not other DVR technologies.

We can all agree for a DVR technology to do all the trick plays such as pause, replay, skips, the streams have to be "parsed" or analyzed, there is no way around it. So why did Tivo say it was only for one kind of the DVR technology, not for all other DVR technologies?

Because only by saying so was Tivo able to get an infringement verdict. Now Tivo is saying DISH by removing the "index file" and by not "parsing" before the trick plays, is not enough because DISH's new software still parses data at the end. Well if so Tivo should never have gotten the verdict in the first place, because it was precisely those so called "index files", and the "parsing before the storage" got DISH an infringemnet ruling, nothing else. So by removing those elements of course at a minimum DISH has raised substantial open issues as whether it still infringes or not.

Tivo did not prove with any evidence, much less clear and convincing evidence, that DISH's redesigned software still infringes.


----------



## Ergan's Toupe

Charlie got spanked! :kickbutt: 

What a bunch of creeps. I can't figure out why anyone would willingly do business with these weasels.


----------



## James Long

jacmyoung said:


> So what?


You claimed modified products were ordered recalled. You were wrong. Your claim was false.

That's all I need to say about that. Greg has handled the specific continued false claims quite well.


----------



## James Long

jacmyoung said:


> ... the 9/4 Texas hearing is about the new software colorable difference issue ...


Incorrect again.

The 9/4 hearing is ONLY on the contempt issue as filed which focuses SOLELY on "disabling the DVR functionality". The alleged new software is a side show that will not be dealt with on 9/4. No discovery, no ruling, no "colorable difference".


----------



## jacmyoung

James Long said:


> You claimed modified products were ordered recalled. You were wrong. Your claim was false.
> 
> That's all I need to say about that. Greg has handled the specific continued false claims quite well.


Yes they were, when the injunction ordered all products under those names be removed from the shelves, that was exactly what that order said. Just because Safety 1st later after the injunction went in full force, said oh BTW your honor, some of the products already on the shelves had a modified part, in no way changed the fact those products, with or without that modified part, as long as they were all on the shelves when the order went into full force, must be pulled.

According to you of course, not me. And yet during the contempt hearing, those with the modified part were allowed to stay on the shelves and be sold.


----------



## jacmyoung

James Long said:


> Incorrect again.
> 
> The 9/4 hearing is ONLY on the contempt issue as filed which focuses SOLELY on "disabling the DVR functionality". The alleged new software is a side show that will not be dealt with on 9/4. No discovery, no ruling, no "colorable difference".


Again tell it to Tivo, not me, because Tivo is now saying the new software and the redesign issue may be resolved on 9/4.


----------



## James Long

Curtis52 said:


> TiVo has filed a new reply in Delaware.


REPLY BRIEF re [12] MOTION to Dismiss Based upon Rule 12(b) filed by TiVo Inc..


----------



## Curtis52

From TiVo's 8-25-08 Delaware filing.








:eek2:


----------



## jacmyoung

DISH's strategy, as I guessed, to file a new software infringement suit, was to force Tivo's hand. Up until that time Tivo refused to touch on the new software colorable difference issue. Tivo first insisted after their limited discovery the new software still *infringed*, but "to be sure" Tivo asked for a further discovery to find the new software still infringing on the patent.

But DISH correctly told the judge no Tivo could not do that in a contempt proceeding. The judge agreed, and Tivo quickly changed the tone and told the judge but the further discovery was really for assessing the enhanced damages, but that did not fool anyone, the further discovery was denied for 9/4.

Immediately DISH filed a suit in DE court. I said back then DISH's intent was to force Tivo to discuss the new software in the Texas court, which Tivo did.

In order to have the DISH's suit dismissed by the DE court, Tivo was forced to discuss the new software colorable difference issue in its latest response for 9/4.

And additionally, now in the latest DE filing, Tivo goes one step further to say the new software and redesign may be resolved on 9/4, Tivo says so to further convince the DE court they should dismiss the DISH suit. Tivo of course does not want the new software infringement suit in the DE court.

DISH may have achieved its goal of expediting the new software discussion on 9/4. I didn't think DISH had real intention to have the DE court to settle the new software infringement issue, if the DE court accepts the DISH case after 9/11, DISH as the plaintiff can withdraw the case anytime (correct me if I am wrong), but the timing of it will be under DISH's control.

If the DE court dismisses DISH's suit, it shouldn't matter all that much, because it is assumed Tivo should be able to raise the modified products infringement issue in a separate suit in Texas court anyway.


----------



## Ergan's Toupe

jacmyoung said:


> Again tell it to Tivo, not me, because Tivo is now saying the new software and the redesign issue may be resolved on 9/4.


How long do you think it will take for the DE court to kick Charlie to the curb? Think it gets done before the 9/4 hearing? 

Do you think Folsom holds a grudge for Charlie trying to go over his head?


----------



## jacmyoung

Curtis52 said:


> From TiVo's 8-25-08 Delaware filing.
> 
> View attachment 15339
> 
> :eek2:


Again just goes to show how the DISH strategy has worked very well, Tivo is now squarely in the colorable difference debate.


----------



## James Long

Curtis52 said:


> From TiVo's 8-25-08 Delaware filing.
> 
> View attachment 15339
> 
> :eek2:


What page number? I'd like to find the context and text that can be pasted in a larger size.


----------



## James Long

Ergan's Toupe;1762093 said:


> Think it gets done before the 9/4 hearing?


Nope. The hearing in Delaware isn't until a week later (IIRC).


----------



## peak_reception

Curtis52 said:


> From TiVo's 8-25-08 Delaware filing.
> 
> View attachment 15339
> 
> :eek2:


 Magnifying Glass Please!


----------



## Ergan's Toupe

James Long said:


> What page number? I'd like to find the context and text that can be pasted in a larger size.


Middle of page 2 of the response or page 5 of the PDF.


----------



## James Long

James Long said:


> What page number? I'd like to find the context and text that can be pasted in a larger size.


Ahh ... page 5 of the PDF I posted earlier (for context). Here is a larger print clipping ...
(I wish people wouldn't put text as graphics in a PDF.  )

Note that the case quoted is NOT the Texas case ... eventually the Texas case could get to the issue quoted from the other case here of infringement, but the issue before the Texas Court next Thursday is one of disablement. (Although the fact that infringement isn't being dealt with today shouldn't take the issue out of the Texas court.)


----------



## Ergan's Toupe

jacmyoung said:


> Again just goes to show how the DISH strategy has worked very well, Tivo is now squarely in the colorable difference debate.


How do you figure having Folsom decide colorable difference is a good thing for DISH?


----------



## jacmyoung

Ergan's Toupe;1762197 said:


> How do you figure having Folsom decide colorable difference is a good thing for DISH?


Short answer, because DISH wants it to.

Long answer, to prove it, Tivo must have clear and convincing evidence, not only that, Tivo must also prove the two are "essentially the same", a very tall order to fill in a contempt setting.

In the past the only times the patentees were successful were when the modifications by the infringers involved only product name or label changes, no other changes of substance.


----------



## Ergan's Toupe

jacmyoung said:


> Short answer, because DISH wants it to.
> 
> Long answer, to prove it, Tivo must have clear and convincing evidence, not only that, Tivo must also prove the two are "essentially the same", a very tall order to fill in a contempt setting.
> 
> In the past the only times the patentees were successful were when the modifications by the infringers involved only product name or label changes, no other changes of substance.


I think its the complete opposite. I think it's easier for Tivo, in front of someone who knows the details of this case (Folsom), without experts for either side testifying, to argue how the boxes are not colorably different.

Do you think the stunt Charlie pulled in DE will not be brought up 9/4? I think if I was Folsom I would be pissed. I understand fair and balanced but never the less, I would be fuming.

I think Charlie is going to regret filing that DE case when they did.


----------



## James Long

Ergan's Toupe;1762197 said:


> How do you figure having Folsom decide colorable difference is a good thing for DISH?


It doesn't have to be a good thing or a bad thing, it is the only thing. Colorable difference ONLY comes from Judge Folsom.

What DISH requested in Delaware was for their new software to be ruled non-infringing ... which is well beyond colorable difference and several steps beyond where the case is in Texas.

Step 1: September 4th - Disable DVR functionality. Is this a MUST?
Step 2: Tivo files a motion for discovery on DISH's new software.
Step 3: Tivo files some motion using the discovery as evidence.
Most likely this will be where Tivo claims the new software/product is only colorably different than the old software and tries to get Judge Folsom to rule it as infringing. This is where Judge Folsom can rule that the new software infringes and only colorably different - leading to appeals etc. Or more than colorably different requiring a new case to determine if it infringes.

If Delaware has not been dismissed by then Judge Folsom could wash his whole hands of the issue and let Delaware spend it's time on the new software (assuming he doesn't consider it only colorably different).


Ergan's Toupe;1762232 said:


> I think its the complete opposite. I think it's easier for Tivo, in front of someone who knows the details of this case (Folsom), without experts for either side testifying, to argue how the boxes are not colorably different.


There will still be experts ... can't run a tech case without them!


> Do you think the stunt Charlie pulled in DE will not be brought up 9/4? I think if I was Folsom I would be pissed. I understand fair and balanced but never the less, I would be fuming.


Delaware has nothing to do with Texas' outcome. It may annoy him on some level but so does a lot of what Tivo has tried. E'll make the decision based on Texas facts ... not Delaware filings.


----------



## peak_reception

I have to agree with jacmyoung that Dish's strategy behind filing in DE has born fruit. Most everyone, including Dish, figured the DE suit would be dismissed. But it's served its purpose now by forcing TiVo's hand in addressing the new software for September 4 and beyond. Previously it was "beyond" but now TiVo is forced to say that the Contempt Proceeding will "necesssarly" address EchoStar's Design Around.

*II. ARGUMENT

1. In Ruling On The Contempt Proceeding, The Texas Court Necessarily Will Address The Validity Of The Alleged Redesign.*

Right there in bold no less! I suppose they could mean the validity of whether or not the road to redesign was "valid" or not, but it looks like it means whether or not the "Redesign" itself is valid insofar as no longer infringing, or not colorably different, or ??. As usual with TiVo filings there is imprecise use of language throughout. Also, I see TiVo has discarded "Design Around" now for "Redesign." I wish they would make up their minds on just how to frame things.

Reading TiVo's filing was the usual chore. It's kind of like reading jacmyoung in that they have lots to say but end up diluting their points with rambling sentences and poor construction. They'll say something like "EchoStar's claim has absolutely no merit and deserves no consideration," and then spend the next 2000 words arguing why it has no merit and deserves no consideration. And on it goes for 11 pages what should've taken no more than 5 or so if done effectively. It gives an appearance that they don't really know how they want to go about this and are more than willing to cede the initiative to EchoStar's counsel. As with the May agendas and hearing, a dilute, reactive posture. Disappointing.


----------



## scooper

Colorably different shouldn't be covered on Sept 4, but I can see Judge Folsom granting Tivo discovery on that hearing. 

Colorably different can't really be handled without this discovery / the courts tech experts / expert witnesses, none of which are on order for Sept 4. Or at least not in the original from the 30 May hearing (the tech experts / expert witnesses may have been told to be available for Sept 4).


----------



## peak_reception

scooper said:


> Colorably different shouldn't be covered on Sept 4, but I can see Judge Folsom granting Tivo discovery on that hearing.
> 
> Colorably different can't really be handled without this discovery / the courts tech experts / expert witnesses, none of which are on order for Sept 4. Or at least not in the original from the 30 May hearing (the tech experts / expert witnesses may have been told to be available for Sept 4).


 One would think, but it sounds like TiVo is hoping for a "Not Colorably Different" judgment from Judge Folsom on September 4. Is that even possible??


----------



## Ergan's Toupe

James Long said:


> It doesn't have to be a good thing or a bad thing, it is the only thing. Colorable difference ONLY comes from Judge Folsom.
> 
> What DISH requested in Delaware was for their new software to be ruled non-infringing ... which is well beyond colorable difference and several steps beyond where the case is in Texas.
> 
> Step 1: September 4th - Disable DVR functionality. Is this a MUST?
> Step 2: Tivo files a motion for discovery on DISH's new software.
> Step 3: Tivo files some motion using the discovery as evidence.
> Most likely this will be where Tivo claims the new software/product is only colorably different than the old software and tries to get Judge Folsom to rule it as infringing. This is where Judge Folsom can rule that the new software infringes and only colorably different - leading to appeals etc. Or more than colorably different requiring a new case to determine if it infringes.
> 
> If Delaware has not been dismissed by then Judge Folsom could wash his whole hands of the issue and let Delaware spend it's time on the new software (assuming he doesn't consider it only colorably different).There will still be experts ... can't run a tech case without them!
> Delaware has nothing to do with Texas' outcome. It may annoy him on some level but so does a lot of what Tivo has tried. E'll make the decision based on Texas facts ... not Delaware filings.


My head hurts. Seriously. :uglyhamme

So what exactly is going to get accomplished 9/4 without experts? Do you think Folsom decides "colorable" or "not colorable" on the 4th? I don't.


----------



## Curtis52

scooper said:


> Colorably different shouldn't be covered on Sept 4, but I can see Judge Folsom granting Tivo discovery on that hearing.
> 
> Colorably different can't really be handled without this discovery / the courts tech experts / expert witnesses, none of which are on order for Sept 4. Or at least not in the original from the 30 May hearing (the tech experts / expert witnesses may have been told to be available for Sept 4).


If expert testimony is needed and the similarity isn't readily apparent then there may be substantial issues and it may take a new trial.


> "Under the above standard for determining a *colorable difference*, a party may seek relief by way of contempt proceedings only if the issues are appropriate for summary disposition. *If substantial issues need to be litigated, particularly if expert and other testimony subject to cross-examination would be helpful or necessary, the court may properly require a supplemental or new complaint.* The question to be answered under such standard is essentially a procedural one. Must substantial new issues be litigated to determine infringement?"


----------



## Ergan's Toupe

Curtis52 said:


> If expert testimony is needed and the difference isn't readily apparent then there may be substantial issues and it may take a new trial.


 I thought Folsom was going to make a decision on that?

If the difference isn't readily apparent wouldn't that be only colorably different? Why would you need a new trial for that?


----------



## nobody99

Once again, Curtis52, jacmyoung, and other members of Charlies Band of Merry Straw Graspers fail to understand the Delaware filing.

This isn't about the contempt motion on September 4 regarding the "disable the DVR functions" on existing receivers already with customers. It's about DISH's ability to sell new receivers that have new software.

From today's filing, and this quote doesn't require a secret decoder ring so I'm not sure why I'm the only person to see it,



> Ironically, the Texas court ordered that consideration of EchoStar's claimed design-around should be postponed *until after a decision on a seperate contempt question*.


That seperate contempt question is whether or not the DVR functions have been disabled.

Sorry to spoil your party jac & curt.


----------



## Ergan's Toupe

nobody99 said:


> Once again, Curtis52, jacmyoung, and other members of Charlies Band of Merry Straw Graspers fail to understand the Delaware filing.
> 
> This isn't about the contempt motion on September 4 regarding the "disable the DVR functions" on existing receivers already with customers. It's about DISH's ability to sell new receivers that have new software.
> 
> From today's filing, and this quote doesn't require a secret decoder ring so I'm not sure why I'm the only person to see it,
> 
> That seperate contempt question is whether or not the DVR functions have been disabled.
> 
> Sorry to spoil your party jac & curt.


I think I kind of, sort of, maybe, am starting to see how you guys think this plays out...

Folsom orders the boxes shut off and then the arguing about the "new" boxes starts? right? :grin:


----------



## peak_reception

nobody99 said:


> Once again, Curtis52, jacmyoung, and other members of Charlies Band of Merry Straw Graspers fail to understand the Delaware filing.
> 
> This isn't about the contempt motion on September 4 regarding the "disable the DVR functions" on existing receivers already with customers. It's about DISH's ability to sell new receivers that have new software.
> 
> From today's filing, and this quote doesn't require a secret decoder ring so I'm not sure why I'm the only person to see it,
> 
> That seperate contempt question is whether or not the DVR functions have been disabled.
> 
> Sorry to spoil your party jac & curt.


 TiVo is all over the place with their statements. Some are clear, some are not, some are contradictory between clear and not. The case is complicated enough (except to jacmyoung and Curtis52 who know exactly how it will all play out  ) without TiVo making it even more confused by not communicating effectively. They need to bring back Sam Baxter who wrote their single most effective filing (for Contempt). Their _only_ effective filing I should say.

Honestly, I need to go back and read this DE response again so that I can hopefully determine exactly what TiVo is trying to say. I wish I had that magic decoder ring instead


----------



## jacmyoung

scooper said:


> Colorably different shouldn't be covered on Sept 4, but I can see Judge Folsom granting Tivo discovery on that hearing.
> 
> Colorably different can't really be handled without this discovery / the courts tech experts / expert witnesses, none of which are on order for Sept 4. Or at least not in the original from the 30 May hearing (the tech experts / expert witnesses may have been told to be available for Sept 4).


In keeping with what Curtis had said:

"In sum, contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders. Contempt, however, is not a sword for wounding a former infringer who has made a good-faith effort to *modify a previously adjudged or admitted infringing device* to remain in the marketplace. See id. at 1525-26. Rather, *the modifying party generally deserves the opportunity to litigate the infringement question at a new trial, "particularly if expert and other testimony subject to cross-examination would be helpful or necessary."* Id. at 1531."

The "technical advisor" mentioned on the 5/30 meeting was for determining the technicality of the 197,000 units how the replacement program may be carried out.

I am not saying Judge Folsom will not grant Tivo another discovery, but what I am saying is since the new software evidence claimed by DISH was accepted by Tivo, the only question remains is whether such evidence is sufficient to determine the colorable difference issue, if so there is no need to seek another discovery.

A discovery is needed usually because either there is no evidence, or the evidence isn't enough to make a decision, or parties disagree on the exsiting evidence.

IMHO, the evidence available to the judge is sufficient to say the new software is more than colorably different compared to the old software, and since there is no dispute of the evidence from either party, additional discovery may be unnecesary.

What Tivo should have said was, we don't believe DISH's new software evidence, we already had seen some of the codes provided by DISH and they were not even close to support what DISH has claimed what the new software can do today. Therefore we need further discovery to make sure we actually have evidence we can rely on, not just what DISH is telling us.

But Tivo does not dispute DISH's evidence, so the evidence now can be used for decision making.


----------



## James Long

peak_reception said:


> *II. ARGUMENT
> 
> 1. In Ruling On The Contempt Proceeding, The Texas Court Necessarily Will Address The Validity Of The Alleged Redesign.*
> 
> Right there in bold no less! I suppose they could mean the validity of whether or not the road to redesign was "valid" or not, but it looks like it means whether or not the "Redesign" itself is valid insofar as no longer infringing or not.


I'll take option 1. 

September 4th is to determine whether DISH can avoid contempt on the disablement issue by modifying their software. Whether DISH can avoid contempt on the infringement issue isn't being determined September 4th (and is irrelevant if DISH is found in contempt on disablement - DISH would be forced to replace products already distributed instead of being able to modify products already distributed if the "disable" part if the injunction is enforced).

But Texas relates to existing products with an injunction against them. These are not the same products that DISH introduced in Delaware. In Delaware DISH offers up their new DVR software as a product and wishes for their DVR software to be ruled non-infringing of the patent. It does not offer up a 501 DVR or any of the other named adjudicated infringing products in Texas.

The two courts are discussing entirely different products ... however, since the introduction of the new software product to the existing infringing product is the magic pill that DISH is alleging makes their existing products non-infringing it is inevitable that Texas WILL look at the same software that is the product in Delaware. So there is a conflict.


> They'll say something like "EchoStar's claim has absolutely no merit and deserves no consideration," and then spend the next 2000 words arguing why it has no merit and deserves no consideration.


Kinda fun ... and sad at the same time. Tivo has made that error before. I suppose they do it just in case the court doesn't accept it as a given that it considers no consideration. They don't want to lose just because they failed to fight.


----------



## James Long

Ergan's Toupe;1762291 said:


> I think I kind of, sort of, maybe, am starting to see how you guys think this plays out...
> 
> Folsom orders the boxes shut off and then the arguing about the "new" boxes starts? right? :grin:


Predictions:

If DISH is found in contempt Tivo will move on to the ViP series of receivers, claiming that the software at their core is only colorably different than the software ruled infringing.

If DISH is not found in contempt Tivo will ask for discovery on the new software and eventually file a motion for contempt alleging that the new software is only colorably different.

There is always something to argue.


----------



## peak_reception

Now we get to spend the next 100 posts arguing about what the word "valid" means. You either laugh or cry.  If TiVo's lucky, Judge Folsom's too busy to read their DE response. EchoStar lawyers won't be shy about bringing things up though, unless they get tongue-tied like on May 30 (um, er, ah, uh).


----------



## peak_reception

James Long said:


> Predictions:
> 
> If DISH is found in contempt Tivo will move on to the ViP series of receivers, claiming that the software at their core is only colorably different than the software ruled infringing.


 Even I don't want it to go that far! (I like my 622  )


----------



## jacmyoung

peak_reception said:


> ... unless they get tongue-tied like on May 30 (um, er, ah, uh).


Very true, but being tougue tied was still better than Tivo's lead attorney being talked over by the judge, at least DISH's got to talk his talk, in a tougue-tied way


----------



## James Long

peak_reception said:


> James Long said:
> 
> 
> 
> Predictions:
> 
> If DISH is found in contempt Tivo will move on to the ViP series of receivers, claiming that the software at their core is only colorably different than the software ruled infringing.
> 
> 
> 
> Even I don't want it to go that far! (I like my 622  )
Click to expand...

I don't believe Tivo will win claiming the ViP series are only colorably different. Since the Texas case and injunction focus on the DVR models as products the comparison between products isn't limited to the software and potentially a tiny portion of the software ... there is too much difference between the two series to tie them together. But Tivo will make the attempt ... assuming they win the motion for contempt on September 4th and are not busy trying to get the new 501 etc software determined to be "only colorably different" and eventually infringing.


----------



## Greg Bimson

jacmyoung said:


> The "technical advisor" mentioned on the 5/30 meeting was for determining the technicality of the 197,000 units how the replacement program may be carried out.





> Judge Folsom: Very well. I appreciate everyone -- oh, the Court did not have a technical advisor initially. What are the parties' thoughts on perhaps a technical advisor for this phase of the case?
> Mr. Chu: I don't think one will be necessary. That is certainly the case for the September 4th hearing.
> Judge Folsom: And I meant primarily in connection with the injunction issue.
> Mr. Chu: Right. I think it's strictly a legal question, your honor.
> Judge Folsom: Very well.
> Mr. McElhinny: I agnree with that for the September 4th hearing.
> Judge Folsom: Very well. Then if there is nothing more, we will be in recess.


BZZZT.


----------



## Greg Bimson

jacmyoung said:


> But Tivo does not dispute DISH's evidence, so the evidence now can be used for decision making.





> Thus, even the analysis of EchoStar's own counsel demonstrates that EchoStar's alleged design-around lacks substance. These units are not more than colorably different from the Adjudicated Receivers and they continue to infringe. The Court is well within its discretion to find EchoStar in contempt on this ground as well.


BZZZT again.

And for anyone paying any remote amount of attention, if this is the same software that is used on ALL DISH/SATS DVR's, and the argument TiVo constructs is correct (and it is), this is a prima facie case of infringement.


----------



## peak_reception

*1. In Ruling On The Contempt Proceeding, The Texas Court Necessarily Will Address The Validity Of The Alleged Redesign.*

Ok, on second read I think there are two interpretations to this:

1) that the TX Court will address the validity of the introduction of EchoStar's Design Around in the manner in which it was done.

Or, 2) that the TX Court will address the validity of the Design Around as a viable, colorably different change in the status of the Infringing Devices.

I now think that TiVo means the word "Validity" to refer to whether or not the "Redesign" is responsive to the demands of the injunction. But giving it an ambiguous twist like they do (with the word "validity") may help to scare off DE from taking the case so maybe it's not such bad wording after all.

And if EchoStar comes at them on 9-4 saying, "Your Honor, in their Delaware filing they say that you would be necessarily addressing the validity of the new software today," TiVo can reply "No, Your Honor, we were referring to the validity of whether or not your Injunction allowed their Redesign."

And now that I have a minor headache, from wading through TiVo's Corpus Corpulence twice in two hours, I will go enjoy some mindless TV. "Bikini Destinations" springs to mind.  Hopefully to somewhere like the South Pacific, far, far away.... :icon_cool


----------



## jacmyoung

peak_reception said:


> ...And if EchoStar comes at them on 9-4 saying, "Your Honor, in their Delaware filing they say that you would be necessarily addressing the validity of the new software today," TiVo can reply "No, Your Honor, we were referring to the validity of whether or not your Injunction allowed their Redesign." ...


This is of course a double edged sword, if Tivo says no, then DISH will tell the DE court on 9/11 you see Tivo still refuses to address the new software, by changing their stories back and forth, DE must not dismiss our case because only the DE court now is the first to be asked to address the new software infringement.

A poker game unfolding right in front of our eyes.


----------



## scooper

jacmyoung will tell that #1 is a no brainer - it is allowed. Greg may argue that point that Dish was required to get permission from the court to do it, but there is plenty of case law supporting modification of infringing devices without such permission. Indeed - it's only in cases where the infringer had multiple times said they had done a modification that was shown to not be more than colorably different that the court put the "get permisssion from the court before any more mods are done" .

So, I would believe it's going to come down to your #2 - is Dish allowed to make such a modification and still be complying with the spirit of the injunction (I.e. to prevent any further infringement). Certainly, that will probably be the position Dish will be arguing. Indeed - Dish was ordered to modify the DVRs - they just did it in a manner not prescribed by the court (but not prohibited by the court either).


----------



## jacmyoung

Greg Bimson said:


> BZZZT again.
> 
> And for anyone paying any remote amount of attention, if this is the same software that is used on ALL DISH/SATS DVR's, and the argument TiVo constructs is correct (and it is), this is a prima facie case of infringement.


If you have read my analysis earlier of Tivo's two main arguments about DISH's new software being only colorable, Tivo's logic simply does not stand a chance at all.

One of them is the DVRs on the list have no power to run the new software because when they were first put to use they were using the old software. And one can see lack of logic on that one.

The other is removing the "index file" and the Broadcom chip use and the "parse" after storage are not enough, because the new software still parses data. Yeah right, the index file, the Broadcom chip use and the parse before storage were exactly the three items as evidence to prove the old software infringed.

Now how in the world after the new software removes all three evidences, Tivo still think they have proven with clear and convincing evidence it still infringes? The evidences are not even there anymore.

Not to mention by saying just because the DVR technology "parses" or analyzes in coming streams, it automatically infringes on the patent, then *all DVR technologies* must all infringe.

But wait it was Tivo that said no, only this particular DVR technology of theirs, not all other DVR technologies infringed. You think Tivo will get away with trying to have it both ways?


----------



## jacmyoung

scooper said:


> ...So, I would believe it's going to come down to your #2 - is Dish allowed to make such a modification and still be complying with the spirit of the injunction (I.e. to prevent any further infringement). ...


First modification is allowed, on any products.

Next is the current modification enough to raise substantial open issues? As I said above, the answer is yes.


----------



## Curtis52

jacmyoung said:


> Not to mention by saying just because the DVR technology "parses" or analyzes in coming streams, it automatically infringes on the patent, then *all DVR technologies* must all infringe.


Strawman. Set it up and knock it down.


----------



## nobody99

scooper said:


> there is plenty of case law supporting modification of infringing devices without such permission


No, there's not.


----------



## scooper

nobody99 said:


> No, there's not.


So you're saying that EVERY case of patent infringement, the infringer must get court permission to modify their product first, right ?


----------



## James Long

peak_reception said:


> I now think that TiVo means the word "Validity" to refer to whether or not the "Redesign" is responsive to the demands of the injunction. But giving it an ambiguous twist like they do (with the word "validity") may help to scare off DE from taking the case so maybe it's not such bad wording after all.


It is the job of Tivo's lawyers to get the court to rule in the favor of their client using any legitimate means possible ... overstating is a common tool.

There is an instant reply in Delaware for this ... the court order from June 5th clearly states what the contempt hearing in Texas is about. It is simply on the disable issue.


> And if EchoStar comes at them on 9-4 saying, "Your Honor, in their Delaware filing they say that you would be necessarily addressing the validity of the new software today," TiVo can reply "No, Your Honor, we were referring to the validity of whether or not your Injunction allowed their Redesign."


DISH is unlikely to cross over to the Delaware case in Texas ... they don't need to. They can win on the strength of the law and their arguments without introducing non-law elements.

The only reason to introduce anything from outside would be to impeach Tivo's presentation. Being that we are past the time for filings it is unlikely for even that level of evidence to be introduced. Do you believe any Delaware filing impeaches a Texas filing? I don't.

There is no need for any more confusion.


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## nobody99

scooper said:


> So you're saying that EVERY case of patent infringement, the infringer must get court permission to modify their product first, right ?


No. I'm saying in this particular case, DISH can modify the 4 million DVRs (that already existed at the time of the decision) to their hearts content. As long as that modification doesn't cause video to be written to the hard disk.

The court is given wide latitude. DISH should have argued against the language of the injunction if they wanted to be able to modify the software. They didn't, and those four million DVRs are forever prohibited from writing television data to the hard disk.

Sorry. I know it sucks, but it is what it is.


----------



## Mainer_ayah

*I just posted this on the Investors Village board. I owe James Long an apology, and I want to make sure I retract anything negative I said about him regarding my mistake here today.*

_Boy do I feel like a jerk. I attempted to tag the PDF of the TiVo filing so that I could recognize it if it was lifted from my site and put on another without any links back to my site. Well, I saw that Lames Long over on the DBS forum had posted the document. I downloaded it and opened it, and sure enough there was my security tag. Well, of course I let him know what I thought in a PM. As ir turns out, the security tag appears on the document whenever I open it on my system, no matter where I get it from. He PM'd me back saying he downloaded it from PACER, but at the time I hadn't looked into the security issue, and of course in my best South Boston style called him about 20 different kinds of liar.

I was wrong, I admit it, and hopefully I'll be welcome back on the DBS forum._


----------



## peak_reception

Back from Tahiti now and feeling better for it 



James Long said:


> It is the job of Tivo's lawyers to get the court to rule in the favor of their client using any legitimate means possible ... overstating is a common tool.


 Ok.



> There is an instant reply in Delaware for this ... the court order from June 5th clearly states what the contempt hearing in Texas is about. It is simply on the disable issue.
> DISH is unlikely to cross over to the Delaware case in Texas ... they don't need to. They can win on the strength of the law and their arguments without introducing non-law elements.


 Maybe so, but what happens in oral arguments can often take sudden, unexpected turns.



> The only reason to introduce anything from outside would be to impeach Tivo's presentation. Being that we are past the time for filings it is unlikely for even that level of evidence to be introduced. Do you believe any Delaware filing impeaches a Texas filing? I don't.


 I don't know about "impeaches" but they certainly intersect in many ways. I can see Judge Folsom trying to keep the 9-4 hearing solely, entirely about whether or not EchoStar complied with the Injunction, but I can also envision a lot of other issues barging in and spoiling that intention. The presentation which _could_ get torpedoed by DE information would be TiVo's oral argument. Much different from a written presentation and -- as I say -- much more likely to take sudden, unexpected turns.

Unlike many on this forum thread I think 9-4 could hold surpises that no one anticipates. Everyone's going to Court there with their own game plan, including Judge Folsom. Will it follow the scripts? Doubtful, unless Judge Folsom really clamps down on what will and will not be discussed. I predict that he _will_ take charge and clamp down, but also lose his temper in the process. I think it will be a very tense session. Can hardly wait to see how it plays out now. Should be absolutely fascinating. Or it could be another wet rag like May 30 with most important issues again put off until later dates. Probably not though. 


> There is no need for any more confusion.


 I disagree. TiVo's DE filing added to the confusion in my opinion. Yes I realize that they are two different cases, but they do intersect in important ways until or unless DE is dismissed. I agree with jac that DE does put pressure on TiVo to lay out their cards in Texas that they'd rather not play yet. I also agree with jac that there is a high stakes game of poker unfolding before our eyes.


----------



## James Long

peak_reception said:


> Unlike many on this forum thread I think 9-4 could hold surpises that no one anticipates.


It seems that we've covered pretty much everything that _could_ happen ... except perhaps alien abduction (and now I've anticipated that  ).


> Everyone's going to Court there with their own game plan, including Judge Folsom. Will it follow the scripts? Doubtful, unless Judge Folsom really clamps down on what will and will not be discussed. I predict that he _will_ take charge and clamp down, but also lose his temper in the process. I think it will be a very tense session.


It all depends on the parties. He was pretty tight back on May 30th ... he didn't seem to want to waste a minute on anything that wasn't on his agenda. He didn't let Tivo ramble on past the line he drew May 30th ... I expect that he will do the same next week (for both parties).

The key question being disabling the DVR functionality ... I suspect the furthest that he will get into the software claims is the theoretical existence of new software. Without experts that won't be very far ... he cannot rule the new software infringing or non-infringing. That will have to wait for another day.


> Can hardly wait to see how it plays out now. Should be absolutely fascinating. Or it could be another wet rag like May 30 with most important issues again put off until later dates. Probably not though.


It depends on what the most important issue is. The immediate issue is contempt on disabling the DVRs - but even if DISH is found in contempt don't expect the DVRs to be off any time soon. There will be an appeal. In my view the most important issue isn't the immediate contempt ruling but the ongoing infringement issue - which will not be decided next week. So yes, the most important issue will be put off to another date.


----------



## James Long

BTW: I'll be very surprised if Tivo is prepared in court for the next step ... whatever that may be. DISH showed their preparedness May 30th by immediately filing the case in Delaware to address the new product infringement issue (DVR software as a product) when they saw it would not be addressed in Texas. Tivo wasn't even ready to file the Motion for Contempt which was the first step of the process they wanted the Texas court to follow.

I can't help but think that if the lawyers were reversed this case would go a different way ... which isn't a good thing. Cases should be decided based on the facts and the law, not on the competence of council.


----------



## jacmyoung

Curtis52 said:


> Strawman. Set it up and knock it down.


Except I would have to set it up myself first, but in this case it is precisely Tivo's current position that since DISH's new DVR software still "parses" data, it still infringes.

Since all DVR technologies must parse data to have trick plays, Tivo is now basically saying all DVR technologies out there are infringing on its patent.

But as DISH correctly pointed out, during the trial Tivo said no, of course not all DVR technologies, only this particular technology they believe is infringing.

Of course we know Tivo wishes to call all DVR technologies infringing technologies, the question is then why the court wasted so much time looking into the three essential items (the index file, the Broadcom Chip buffer, and the parsing before data storage) and go into such details before agreeing with the infringing verdict? The court could just have said hey the old software parsed data, that was it.

The word "parse" appears in only one of the 11 constructions of one of the Tivo's patent claims found to have been infringed. Even on equivalents standard, Tivo must prove more than just a single construction out of 11 to prove infringement on equivalents. Not to mention in the current contempt setting, DISH only needs to establish the doubt, DISH does not even have to prove non-infringement.

Tivo is again trying to pull a fast one, the same way they tried to pull a fast one on the prima facie violation, not going to work.


----------



## jacmyoung

James Long said:


> BTW: I'll be very surprised if Tivo is prepared in court for the next step ... whatever that may be. DISH showed their preparedness May 30th by immediately filing the case in Delaware to address the new product infringement issue (DVR software as a product) when they saw it would not be addressed in Texas. Tivo wasn't even ready to file the Motion for Contempt which was the first step of the process they wanted the Texas court to follow.
> 
> I can't help but think that if the lawyers were reversed this case would go a different way ... which isn't a good thing. Cases should be decided based on the facts and the law, not on the competence of council.


It wasn't because Tivo's lawyers were bad, just that they had no legal ground to begin with when it came to modification. So they were forced to initially not talk about the new software colorable difference, only the prima facie violation.

They couldn't have been repared to address the new software, they knew talking about the new software was fatal in a contempt setting, every time there was modification more than just a name or label change, there has been always a no contempt, well almost always.

They knew they stood little chance. DISH's move in DE court was smart to force Tivo's hand, but in reality it wasn't necessary, the standards governing the contempt proceedings dictate that the court must first look at the modification whenever it surfaces. Tivo cannot dictate the procedure of a contempt proceeding. Many patentees before Tivo had tried the same trick but failed.

There has not been a single case in the past a court had failed to look at the modification by the infringer, before rendering a decision on contempt, or if they did, the contempt rulings had always been overturned on appeals and remanded back so the lower courts must first look at the modifications.


----------



## James Long

jacmyoung said:


> It wasn't because Tivo's lawyers were bad, just that they had no legal ground to begin with when it came to modification. So they were forced to initially not talk about the new software colorable difference, only the prima facie violation.


What you are missing is that Tivo didn't have a motion ready even for the prima facie violation ... they walked in to court with an agenda to first look at disable and while that was working through do discovery on the alleged new software so they would be ready for a motion based on infringement if the motion on not disabling did not succeed.

But they didn't even have the first motion available. DISH, however, had an entire case filing ready to go for Delaware. Who was prepared?

Tivo COULD have pushed ahead on the discovery issue but they got in their own way by raising prima facie first. They COULD have led with the interrogatories asking DISH in detail what they did when in order to make themselves compliant with the injunction ... but they decided to mention "prima facie contempt" and hoped they could do the rest provisionally. Judge Folsom shot them down.



> They couldn't have been repared to address the new software, they knew talking about the new software was fatal in a contempt setting, every time there was modification more than just a name or label change, there has been always a no contempt, well almost always.
> 
> They knew they stood little chance. DISH's move in DE court was smart to force Tivo's hand, but in reality it wasn't necessary, the standards governing the contempt proceedings dictate that the court must first look at the modification whenever it surfaces. Tivo cannot dictate the procedure of a contempt proceeding. Many patentees before Tivo had tried the same trick but failed.
> 
> There has not been a single case in the past a court failed to look at the modification by the infringer, before rendering a decision on contempt, or if they did, the contempt rulings had always been overturned on appeals and remanded back so the lower courts must first look at the modifications.


Not one? Always? Absolutes? 

In this way Tivo is fortunate they did lead with the "prima facie" on disabling. They have a shot at getting an "in contempt" ruling after the hearing next week. If they would have led with discovery/interrogatories that opportunity would have passed. (But they still should have walked into court with a motion ready ...)


----------



## jacmyoung

James Long said:


> What you are missing is that Tivo didn't have a motion ready even for the prima facie violation ... they walked in to court with an agenda to first look at disable and while that was working through do discovery on the alleged new software so they would be ready for a motion based on infringement if the motion on not disabling did not succeed.
> 
> But they didn't even have the first motion available. DISH, however, had an entire case filing ready to go for Delaware. Who was prepared?
> 
> Tivo COULD have pushed ahead on the discovery issue but they got in their own way by raising prima facie first. They COULD have led with the interrogatories asking DISH in detail what they did when in order to make themselves compliant with the injunction ... but they decided to mention "prima facie contempt" and hoped they could do the rest provisionally. Judge Folsom shot them down.
> 
> Not one? Always? Absolutes?
> 
> In this way Tivo is fortunate they did lead with the "prima facie" on disabling. They have a shot at getting an "in contempt" ruling after the hearing next week. If they would have led with discovery/interrogatories that opportunity would have passed. (But they still should have walked into court with a motion ready ...)


Tivo had their motions ready coming into the 5/30 meeting, in fact three of them, the first was the prima facie violation, second discovery for enhanced damage assessment, the third discovery for the new software infringement (not colorable difference).

Tivo was prepared, and the judge granted 1 and 3, but denied 2. It took time to formally grant the motions but that is not to say Tivo was not prepared.

If we take what you are saying, DISH is also not prepared because DISH's motion in DE court is not granted yet, so you can say DISH is less prepared, if the preparedness is based on how soon the motion is granted.

At least Tivo has two out of three, DISH has not gotten a single one granted yet.

You correctly pointed out that the Tivo's 2nd was denied. That was exactly what I was saying, Tivo did not want to discuss the new software in a way that is too risky for them.

DISH did do a good move in that they used the DE move to force Tivo to discuss the new software, a good move, but that is not to say Tivo wasn't prepared.


----------



## Greg Bimson

scooper said:


> jacmyoung will tell that #1 is a no brainer - it is allowed. Greg may argue that point that Dish was required to get permission from the court to do it, but there is plenty of case law supporting modification of infringing devices without such permission.


The modification of course is "allowed". However, there is ZERO case law supporting modification of devices adjudged infringing that are subject to a disable order.

Ever notice how all of the cited case law is on a contempt hearing accusing the infringer of *selling* devices that infringe?

Notice how the subject of THIS hearing is TiVo's accusation that devices adjudged infringing and in customers' homes follow the disable order?

That is why the case laws given do not apply. One side is arguing apples while the other oranges. When trying to make applesauce, DISH/SATS will have a hard time using the oranges to do it.


jacmyoung said:


> If you have read my analysis earlier of Tivo's two main arguments about DISH's new software being only colorable, Tivo's logic simply does not stand a chance at all.


But just like most of your arguments, your analysis is also faulty, so there isn't any point in going further.


James Long said:


> There is an instant reply in Delaware for this ... the court order from June 5th clearly states what the contempt hearing in Texas is about. It is simply on the disable issue.





> Specifically, TiVo requests a
> hearing at the earliest possible date to determine the following: (1) whether Defendant EchoStar Communications Corporation should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs;


The 5 June order does mention placement of new infringing DVR's.


James Long said:


> What you are missing is that Tivo didn't have a motion ready even for the prima facie violation ... they walked in to court with an agenda to first look at disable and while that was working through do discovery on the alleged new software so they would be ready for a motion based on infringement if the motion on not disabling did not succeed.


It appears that TiVo wanted to understand what the judge wanted on 30 May. Because Judge Folsom had no problem with TiVo only filing contempt on both the adjudicated infringing receivers installed before 8 September, 2006, and any that were sold after 8 September 2006 which weren't modified until later, that is why TiVo took separate bites of the apple:


> Judge Folsom: Okay. Then obviously we have a disagreement. And I am going to give you a chance to respond, Mr. Chu, to the injunction. Obviously, Mr. McElhinny takes the position we don't need to do this in two bits, so to speak. Why do you feel that you need two hearings, so to speak, or perhaps two hearings?
> 
> Chu: I actually think we can resolve the core injunction issue in one hearing. Echostar had about 4 million DVR's in an installed base. The order said disable them. They haven't been disabled. That's the issue that we are proposing for this motion we could file in ten days.
> 
> Judge Folsom: Then I think everyone would have more guidance if you could file your motion within ten days. Any reason why you would need more than twenty-five or thirty pages in the body of the --
> 
> Chu: No.


TiVo used Judge Folsom as a backstop on their team. TiVo wanted to make sure they didn't file motions prematurely. TiVo wants to make sure they receive any opinions or decisions in the order in which they decide.


James Long said:


> But they didn't even have the first motion available. DISH, however, had an entire case filing ready to go for Delaware. Who was prepared?


Just the information anyone would need to file a case.

But that is what everyone should have expected, to a point. DISH/SATS, by not being able to have the "new software" addressed concurrently with the disable order contempt hearing, had no choice but to act. The problem is that the Delaware action will most likely get moved to Texas because of the inconsistencies presented by DISH/SATS.

It is the same fight we have here. There was a decision in the judicial system that found DISH/SATS guilty of infringement on over four million DVR's. TiVo wants to know why those haven't been disabled; DISH/SATS is basically claiming they no longer exist and are not subject to an injunction.


----------



## Curtis52

jacmyoung said:


> *Tivo had their motions ready* coming into the 5/30 meeting, in fact three of them, the first was the prima facie violation, second discovery for enhanced damage assessment, the third discovery for the new software infringement (not colorable difference).
> 
> *Tivo was prepared*, and the judge granted 1 and 3, but denied 2. It took time to formally grant the motions but that is not to say Tivo was not prepared.


Chu 5-30-08:


> The order said disable them. They haven't been disabled. That's the issue we are proposing for this motion *we could file in ten days*.


----------



## Greg Bimson

jacmyoung said:


> Tivo had their motions ready coming into the 5/30 meeting, in fact three of them, the first was the prima facie violation, second discovery for enhanced damage assessment, the third discovery for the new software infringement (not colorable difference).





> Judge Folsom: Is your motion in place that tees up the first issue concerning the injunction?
> Mr. Chu: No. We were awaiting this hearing, your honor, and, as I said, that is something we could be here in two weeks. We could have an accelerated briefing schedule, whatever is convenient.


BZZZT.


----------



## Curtis52

Greg Bimson said:


> Ever notice how all of the cited case law is on a contempt hearing accusing the infringer of *selling* devices that infringe?
> 
> Notice how the subject of THIS hearing is TiVo's accusation that devices adjudged infringing and in customers' homes follow the disable order?


By law, infringement injunctions can only prevent further infringement. A prohibition against selling doesn't work for devices already installed. The only way to prevent further infringement of those devices is to modify them or recall them. Dish modified them. 


> 35 U.S.C. 283 Injunction.
> 
> The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to *prevent* the violation of any right secured by patent, on such terms as the court deems reasonable.


----------



## Greg Bimson

jacmyoung said:


> Now how in the world after the new software removes all three evidences, Tivo still think they have proven with clear and convincing evidence it still infringes? The evidences are not even there anymore.


What exactly did the new software "remove"?


> To the extent EchoStar actually addresses claims 31 and 61, its arguments ignore this court's claim construction and trial testimony - including testimony of EchoStar's own experts. First, EchoStar argues that its 50X and Broadcom units no longer "parse," i.e., analyze, before they "store" video and audio data. Opp. at 3-4. With respect to the 50X boxes, this is the only non-infringement argument, and it cannot survive scrutiny. "Parse" means "analyze." Dckt. No. 185, Claim Construction Order at 18 (Ex. D). It does not mean "index" or "separate." This claim construction is law of the case. AFG Indus., 375 F.3d at 1372 (prior claim construction is law of the case). EchoStar does not contend that the Adjudicated Receivers perform no analysis. In fact, the opinions of EchoStar's counsel admit that parsing is still performed by "PID filtering," which EchoStar's trial expert agreed meets the parsing limitation.
> 
> Second, with respect to the Broadcom boxes (but not the 50X boxes), EchoStar argues that its modified software does not have "automatic flow control" because it "does not and cannot stop the flow of incoming data to the buffer." Opp. at 5. Under the Court's claim construction, however, the term "automatic flow control" does not demand stopping the flow of incoming data. It means only "self-regulated." Claim Construction Order at 24. EchoStar does not dispute that its data pipelines are "self-regulated." Moreover, the opinions of its outside counsel demonstrate that the data flow continues to be self-regulated. 8/24/06 opinion letter at 23 (Dckt. No. 826 Ex. 1) ("The EchoStar software . . . must keep up with the incoming data . . . .").8 Thus, even the analysis of EchoStar's own counsel demonstrates that EchoStar's alleged design-around lacks substance. These units are not more than colorably different from the Adjudicated Receivers and they continue to infringe. The Court is well within its discretion to find EchoStar in contempt on this ground as well. Stryker Corp. v. Davol Inc., 234 F.3d 1252, 1260 (Fed. Cir. 2000) (decision to proceed via contempt reviewed for abuse of discretion).


The three points given by DISH/SATS as to why they no longer infringe actually prove they still infringe. They may as well stand up in the courtroom and say they killed Nicole Simpson.


----------



## Greg Bimson

Curtis52 said:


> By law, infringement injunctions can only prevent further infringement.


Correct. The order is for DISH/SATS to not even think about sending out a product that infringes. That is why future sales of the product found to infringe (those adjudicated) and those merely colorably different (any possible modification never before the court) are enjoined and restrained from sales.


Curtis52 said:


> A prohibition against selling doesn't work for devices already installed.


So another order is given to those devices, and that order is not only to prevent further infringement, but to rectify any illegal gains.


Curtis said:


> The only way to prevent further infringement of those devices is to modify them or recall them. Dish modified them.


But not in the manner ordered by the court, where a ruling still calls them adjudicated infringing devices and subject to this court for any legal actions on those receivers.


----------



## Curtis52

Greg Bimson said:


> But not in the manner ordered by the court.


By the time the injunction went into effect the DVRs were modified into a form that was ostensibly more than colorably different from the adjudicated DVRs. A device that is more than colorably different from the adjuddicated device is not legally the same device.


> 'As will be hereinafter shown, all subsequent constructions by a convicted infringer are not triable in contempt proceedings. Only where such constructions are merely 'colorably' different from the enjoined device or from the patent is the issue so triable. Such constructions may turn out to be infringements, but if they are more than 'colorably' different, the issue of infringement must be otherwise determined than by a contempt proceeding. Therefore, when the issue of infringement is presented in a contempt proceeding, the court must first determine whether it can properly entertain the issue in that proceeding.'


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## Greg Bimson

> 'As will be hereinafter shown, all subsequent constructions by a convicted infringer are not triable in contempt proceedings.


Sure. Subsequent to the date of the final judgment and injunction order.

You certainly cannot believe that "subsequent constructions" could relate to Joe Blow's four-year old 501, as it was already evaluated and found infringing.


----------



## TBoneit

Ergan's Toupe;1761888 said:


> Charlie got spanked! :kickbutt:
> 
> What a bunch of creeps. I can't figure out why anyone would willingly do business with these weasels.


Where were you when Direct V was having problems with not delivering Portable DVD players to customers that signed up during that promotion? It took a class action lawsuit to force them to deliver the players.

Where were you when DirecTV had to pay for violating the do not call list.

Who are the real Weasels here? The company that may have infringed in error or the company that appears to have deliberately sent tabletop players if at all in place of Portable players? The company that had to pay a fair amount of money for violating the do not call list?


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## Curtis0620

Curtis52 said:


> By the time the injunction went into effect the DVRs were modified into a form that was *ostensibly more than colorably different from the adjudicated DVRs.* A device that is more than colorably different from the adjuddicated device is not legally the same device.


There is absolutely no proof of this.

That is only an assumption.


----------



## Curtis52

Greg Bimson said:


> Sure. Subsequent to the date of the final judgment and injunction order.
> 
> You certainly cannot believe that "subsequent constructions" could relate to Joe Blow's four-year old 501, as it was already evaluated and found infringing.


A new device can't be made without subsequent construction. A modified device that is more than colorably different is a new device requiring a new trial.


----------



## Greg Bimson

Curtis52 said:


> A new device can't be made without subsequent construction.


A new device IS a subsequent construction.


Curtis52 said:


> A modified device that is more than colorably different is a new device requiring a new trial.


If it is a subsequent construction.

Besides, the law does not allow for the same device to be tried twice.


----------



## Curtis52

Greg Bimson said:


> the law does not allow for the same device to be tried twice.


That is the reason for the colorable differences test. If it is more than colorably different it is legally a different device and requires a new trial.



> Taking a narrow view of "same claim or cause of action" - the Federal Circuit held that in patent law, claim preclusion can only be found where the accused products in the two actions are "essentially the same."
> 
> '[C]laim preclusion does not apply unless the accused device in the action before the court is "essentially the same" as the accused device in a prior action between the parties that was resolved by a judgment on the merits&#8230; *Accused devices are "essentially the same" where the differences between them are merely "colorable*" or "unrelated to the limitations in the claim of the patent."&#8230;Finally, *the party asserting claim preclusion has the burden* of showing that the accused devices are essentially the same.'


----------



## Greg Bimson

Curtis52 said:


> That is the reason for the colorable differences test. If it is more than colorably different it is legally a different device and requires a new trial.


And the colorable difference test is only applied if an infringer is accused of selling an infringing product.

That is not the accusation for the 4 September hearing.


----------



## Curtis52

Greg Bimson said:


> And the colorable difference test is only applied if an infringer is accused of selling an infringing product.


Link?


----------



## jacmyoung

Curtis52 said:


> Link?


There is no link, it is his opinion.


----------



## Greg Bimson

Curtis52 said:


> Link?





jacmyoung said:


> There is no link, it is his opinion.


Why, every single injunction against infringements and every single case law dealing with "colorable difference", as it has only ever been used to defeat a contempt motion accusing ongoing sales of infringing product.

After all, we've yet to see a link proving colorable difference can be reviewed in the context of any other order outside of the injunction against infringements.


----------



## TBoneit

Mainer_ayah said:


> *I just posted this on the Investors Village board. I owe James Long an apology, and I want to make sure I retract anything negative I said about him regarding my mistake here today.*
> 
> _Boy do I feel like a jerk. I attempted to tag the PDF of the TiVo filing so that I could recognize it if it was lifted from my site and put on another without any links back to my site. Well, I saw that Lames Long over on the DBS forum had posted the document. I downloaded it and opened it, and sure enough there was my security tag. Well, of course I let him know what I thought in a PM. As ir turns out, the security tag appears on the document whenever I open it on my system, no matter where I get it from. He PM'd me back saying he downloaded it from PACER, but at the time I hadn't looked into the security issue, and of course in my best South Boston style called him about 20 different kinds of liar.
> 
> I was wrong, I admit it, and hopefully I'll be welcome back on the DBS forum._


Good For You! :righton: :balloons:


----------



## jacmyoung

Greg Bimson said:


> What exactly did the new software "remove"?The three points given by DISH/SATS as to why they no longer infringe actually prove they still infringe. They may as well stand up in the courtroom and say they killed Nicole Simpson.


The three arguments used above by Tivo were never used in the trial to prove infringement, rather those items specifically listed by DISH as being removed by the new software were used during the trial to prove infringement.

Tivo made up three new intepretations of the claim construction items that may be considered in a new trial to again find the new software infringe, so the most Tivo can say is they may again prove the new software still infringe in a new trial.

But as happened in the past cases, the infringer only needs to point out some of the items (such as the index file, the auto flow control, the Barton switch, etc.) that were used to prove infringement, now are no longer used, that is how to create the doubt, or to raise substantial open issues, to avoid a contempt.

What Tivo must prove is with clear and convincing evidence, that all the items used during the trial to obtain a conviction, must all still be there. Tivo cannot simple say yes they are gone but so what? There are other issues to keep DISH infringing. Prove with clear and convincing evidence means Tivo must prove all the above items are still there.

Removing the precise items that got DISH in trouble in the first place is sufficient to prove more than colorable differences. If Tivo wants to argue that while those items are removed, the new items that are used to replace them must still infringe, then such arguement has to be used in a new trial, because such new items were never before the court, never tried, and the differences are more than colorable.

When the Tivo method stores an index file before stream storage, and parse the data in the index file prior to A/V stream storage to collect info for later trick plays, and when the new DISH method does not store any index file, does not parse any data prior to storage, store the A/V streams first without any parsing, and only uses statistical analysis after the storage, and when the users perform the actual trick plays, to guess (parse) the data stream locations in order to perform trick plays.

You cannot possibly insist the two different methods above are "essentially the same", they have to be more than colorably different.


----------



## jacmyoung

Greg Bimson said:


> Why, every single injunction against infringements and every single case law dealing with "colorable difference", as it has only ever been used to defeat a contempt motion accusing ongoing sales of infringing product.
> 
> After all, we've yet to see a link proving colorable difference can be reviewed in the context of any other order outside of the injunction against infringements.


Not true again the Footprint 2.0 case was about a serivce already in place and in use. But of course you insisted it was a service not a product, but the nature of the issue is the same, Footprint 2.0 service, already in use, was ordered to stop, meaning the actual *products, such as the servers that used the infringing software, had to be disabled*. So when the DVRs on the list is ordered to be disabled, it is the same as saying the *DVR service* provided by those DVRs must stop.

Simply playing the word game is not going to fool the court. The standards apply to all products/devices/services/processes/operations/functions... that have been found to infringe, and the standards allow such products/devices/services/processes/operations/functions... to be modified, without any pre-conditions, the standards never intended to specify if the products/devices/services/processes/operations/functions.. must already be in use or not.

All the products/devices perform some kind of services, through some specific processes, by excuting certain functions, with specific operations designed together to allow the business to exist in the marketplace. You cannot pick and choose one word against the other, they are all integral parts of the businesses that all parties are involved in order to compete against one another.

No one can compete by infringing on the other's patent, and no one can stop the other from competing if the other does not infringe on the patent.


----------



## Greg Bimson

jacmyoung said:


> The three arguments used above by Tivo were never used in the trial to prove infringement, rather those items specifically listed by DISH as being removed by the new software were used during the trial to prove infringement.


And those three items were found infringing based upon the construction of the claims. Modifying the specific pieces and still being within the scope of the original claims construction could easily be qualfied as infringement.


jacmyoung said:


> Tivo made up three new intepretations of the claim construction items that may be considered in a new trial to again find the new software infringe, so the most Tivo can say is they may again prove the new software still infringe in a new trial.


There is no need of a new trial if DISH/SATS just impeached their own argument.


jacmyoung said:


> What Tivo must prove is with clear and convincing evidence, that all the items used during the trial to obtain a conviction, must all still be there.


Link, or are you making this one up as you go along?


jacmyoung said:


> Removing the precise items that got DISH in trouble in the first place is sufficient to prove more than colorable differences. If Tivo wants to argue that while those items are removed, the new items that are used to replace them must still infringe, then such arguement has to be used in a new trial, because such new items were never before the court, never tried, and the differences are more than colorable.


It isn't a new item. It is embodied in a device. That device and the adjudicated device are no more than colorably different from each other.


jacmyoung said:


> So when the DVRs on the list is ordered to be disabled, it is the same as saying the DVR service provided by those DVRs must stop.
> 
> Simply playing the word game is not going to fool the court.


Pot, meet kettle, since the DVR service provided by those DVR's has not stopped.


----------



## James Long

jacmyoung said:


> Tivo had their motions ready coming into the 5/30 meeting, in fact three of them, the first was the prima facie violation, second discovery for enhanced damage assessment, the third discovery for the new software infringement (not colorable difference).


Have you forgotten the transcript already?THE COURT: *IS YOUR MOTION IN PLACE THAT TEES UP THE FIRST ISSUE CONCERNING THE INJUNCTION?*
MR. CHU: *NO. WE WERE AWAITING THIS HEARING*, YOUR HONOR, AND, AS I SAID, THAT IS SOMETHING THAT WE COULD BE HERE IN TWO WEEKS.​The Motion for Contempt was NOT ready to file. Per Tivo's own lawyer. Clear?


> If we take what you are saying, DISH is also not prepared because DISH's motion in DE court is not granted yet, so you can say DISH is less prepared, if the preparedness is based on how soon the motion is granted.


What motion? DISH filed an entire case (it's called a complaint).


> DISH did do a good move in that they used the DE move to force Tivo to discuss the new software, a good move, but that is not to say Tivo wasn't prepared.


Walking into a court with an agenda but no motion to back it up is unprepared.

But what does it matter? Don't you want Tivo to be unprepared and have DISH win?


----------



## James Long

jacmyoung said:


> Not true again the Footprint 2.0 case was about a serivce already in place and in use.


The injunction only applied (specifically) to the service as configured ... a huge door that Footprint 2.0 could step through.

DISH wasn't ordered to disable the DVR functionality "as configured" ... they were ordered to disable the DVR functionality and not place any more receivers of those models with DVR functionality enabled. No door. (DISH is looking for the window.)


----------



## jacmyoung

Greg Bimson said:


> ...Pot, meet kettle, since the DVR service provided by those DVR's has not stopped.


Thank you, so an infringing service already in the field is no different than an infringing product already in the field.

If an infringing service (provided by the infringing devices) was ordered to be stopped, yet by a simple modification of a software, no more contempt, can you not see the infringing products, ordered to be disabled of its DVR service, once modified by a new software, no more contempt?


----------



## James Long

jacmyoung said:


> If an infringing service (provided by the infringing devices) was ordered to be stopped, yet by a simple modification of a software, no more contempt, can you not see the infringing products, ordered to be disabled of its DVR service, once modified by a new software, no more contempt?


DVR functionality. Not a service "as configured" but the functionality specifically described as "disable all storage to and playback from a hard disk drive of television data". Last I checked my 501 ruled infringing in 2006 was still storing and playing back television data from it's hard drive.


----------



## jacmyoung

James Long said:


> The injunction only applied (specifically) to the service as configured ... a huge door that Footprint 2.0 could step through.
> 
> DISH wasn't ordered to disable the DVR functionality "as configured" ... they were ordered to disable the DVR functionality and not place any more receivers of those models with DVR functionality enabled. No door. (DISH is looking for the window.)


As I have said already any specific product/acts to be disabled, stopped, enjoined, prohibited in an injunction, must fall in the two following categories:

1) Those as configured or described, as tried, at the trial, and adjudicated to be infringing;

2) or those not configured or described, as tried, at the trial, and adjudicated, but nevertheless only colorably different.

So even though there is no specifying in this order, the DVR functions to be disabled must be those configured, described, as tried, at the trial.

If not, then such DVR functions, as configured by the new software, must be tried in the contempt proceeding using the colorable difference test.

There cannot be another category to be prohibited in an injunction of patent infringement, only the two above. It is either one, or the other.

The fact in the Footprint 2.0 case the order specified "as configured, described at trial" was good, but not necessary. It goes without saying if a specific act named in the injunction to be prohibited, has to be the one as configured or described, as already tried, at the trial.

An injunction cannot possibly name a specific act to be prohibited if it is not already described at trial, anything not already described at trial must be covered by the colorable difference rule.

That is why DISH will prevail, because "the DVR functionalities" specifically named in the order to be disabled, must be the functions as configured and described at trial. If not, the colorable difference test must be used.


----------



## James Long

Thank you for you opinion ... Judge Folsom will rule next week. We'll see.


(I believe we have cleared up the "are you a lawyer issue" quite clearly. )


----------



## Guest

I think the injunction was written in the context that Dish was infringing on both the Hardware and Software elements of Tivo's patents. The injunction was not written to contemplate a reversal of the Hardware claims. Had the hardware claim not been remanded then this would not have been an issue (They would have had to make a modification to the hardware as well). What is surprising is that Dish never asked the Appeals court to review this.


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## Curtis52

The quarterly TiVo conference call and webcast starts at 5:00 Eastern time.


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## James Long

tomrogerssucks said:


> I think the injunction was written in the context that Dish was infringing on both the Hardware and Software elements of Tivo's patents. The injunction was not written to contemplate a reversal of the Hardware claims. Had the hardware claim not been remanded then this would not have been an issue (They would have had to make a modification to the hardware as well). What is surprising is that Dish never asked the Appeals court to review this.


DISH claims that their new software avoids infringement on BOTH the software and hardware claims - the infringing portion of the hardware is not used by the new software - so even if the hardware claims were not "reversed and remanded" we would be at the same point as we are today.


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## Curtis52

"In terms of our litigation with EchoStar and defending our intellectual property, we are now in the enforcement phase of the process. On September 4, 2008, there is a contempt hearing scheduled to determine whether EchoStar is in contempt of the injunction that has already been upheld by the U.S. Court of Appeals for the Federal Circuit, enjoining them from selling and operating infringing units as well as to determine further damages from EchoStar's continued infringement after September 2006. We remain confident in the outcome and look forward to final resolution in the near-future and to realizing the value of our intellectual property."

Link


----------



## nobody99

tomrogerssucks said:


> I think the injunction was written in the context that Dish was infringing on both the Hardware and Software elements of Tivo's patents. The injunction was not written to contemplate a reversal of the Hardware claims. Had the hardware claim not been remanded then this would not have been an issue (They would have had to make a modification to the hardware as well). What is surprising is that Dish never asked the Appeals court to review this.


I totally agree. And unfortunately for them, their neglect to ask for a review could be extremely costly.


----------



## nobody99

tomrogerssucks said:


> I think the injunction was written in the context that Dish was infringing on both the Hardware and Software elements of Tivo's patents. The injunction was not written to contemplate a reversal of the Hardware claims. Had the hardware claim not been remanded then this would not have been an issue (They would have had to make a modification to the hardware as well). What is surprising is that Dish never asked the Appeals court to review this.


By the way, there was not a "complete reversal" on the hardware claims. The jury was asked to find one type of infringement, but not the other. They could have found both.

The appeals court found:



> At several points, TiVo argues that even if this court were to overturn the jury's verdict of literal infringement, there would still be ample evidence of infringement under the doctrine of equivalents. There are two problems with upholding the judgment on the hardware claims on that basis. First, the jury was told that *if it found literal infringement it should not make a determination as to whether there was infringement under the doctrine of equivalents, so there was no verdict on the issue of equivalents with regard to the hardware claims.* Second, we have construed two of the claim limitations more restrictively than the trial court's instructions permitted. For that reason, even if the jury had reached a verdict with respect to the doctrine of equivalents we could not sustain that verdict merely upon finding that substantial evidence supported it. At this juncture, we could uphold the judgment on the basis of the doctrine of equivalents only if we were to conclude that no reasonable jury, given proper instructions, could reach any verdict other than to find infringement by equivalents. The parties, however, have not briefed that issue in any detail, and we therefore do not address it. *More generally, we do not decide what further proceedings, if any, are appropriate in the district court regarding the equivalents issue. Instead, we leave that issue for the district court to resolve in the event that, on remand, TiVo decides to continue to pursue the hardware claims in light of this decision.*


TiVo could ask the court to address this again.


----------



## Ergan's Toupe

nobody99 said:


> I totally agree. And unfortunately for them, their neglect to ask for a review could be extremely costly.


But since Tivo's lawyers weren't prepared with a motion on 5/13 it's all even, right?


----------



## Ergan's Toupe

nobody99 said:


> By the way, there was not a "complete reversal" on the hardware claims. The jury was asked to find one type of infringement, but not the other. They could have found both.
> 
> The appeals court found:
> 
> TiVo could ask the court to address this again.


Why did TIvo just let the hardware go? Can Tivo appeal that decision?


----------



## James Long

nobody99 said:


> tomrogerssucks said:
> 
> 
> 
> I think the injunction was written in the context that Dish was infringing on both the Hardware and Software elements of Tivo's patents. The injunction was not written to contemplate a reversal of the Hardware claims. Had the hardware claim not been remanded then this would not have been an issue (They would have had to make a modification to the hardware as well). What is surprising is that Dish never asked the Appeals court to review this.
> 
> 
> 
> By the way, there was not a "complete reversal" on the hardware claims.
Click to expand...

You might want to read what tom wrote again ... "contemplate a reversal" not "complete reversal" and the remand is noted.

I disagree with tom's conclusion (and have noted that in a previous post) but I believe you're misreading it.


----------



## jacmyoung

Curtis52 said:


> "In terms of our litigation with EchoStar and defending our intellectual property, we are now in the enforcement phase of the process. On September 4, 2008, there is a contempt hearing scheduled to determine whether EchoStar is in contempt of the injunction that has already been upheld by the U.S. Court of Appeals for the Federal Circuit, enjoining them from selling and operating infringing units as well as to determine further damages from EchoStar's continued infringement after September 2006. We remain confident in the outcome and look forward to final resolution in the near-future and to realizing the value of our intellectual property."
> 
> Link


Very interestingly in the above Tivo decided not to mention a word of disabling the DVR functionalities of those 4 million DVRs already in the hands of the end users, only they are confident at "enjoin them [DISH] from selling and *operating infringing units*..."

So in another word, if DISH is found not in contempt, because the judge says the new software has raised substantial open issues as whether the adjudicated DVRs are still *"infringing units" or not*, Tivo's above forward looking statement will still stand. So Tivo is covered.

It would have been good for our Tivo supporters to read that Tivo were confident the 4 million DVRs would be again ordered to be disabled on 9/4.


----------



## James Long

Ergan's Toupe;1764146 said:


> Why did TIvo just let the hardware go? Can Tivo appeal that decision?


Tivo can pursue the hardware claims at the district court level (as soon as they are finished with the current events). The appeals court remanded it to the district court for a decision - no appeal is needed ... I'm surprised it wasn't dealt with May 30th but as long as the injunction exists the hardware claims are not important. The injunction, with or without the hardware claims, was upheld by the appeals court.


----------



## jacmyoung

James Long said:


> Tivo can pursue the hardware claims at the district court level (as soon as they are finished with the current events). The appeals court remanded it to the district court for a decision - no appeal is needed ... I'm surprised it wasn't dealt with May 30th but as long as the injunction exists the hardware claims are not important. The injunction, with or without the hardware claims, was upheld by the appeals court.


That part I agree with James that the hardware claims are now not so important. If DISH is not in contempt, Tivo can't bring back the hardware issue because the new software no longer uses the hardware elements that was at issue of the hardware infringement. If the hardware wasn't even infringed by the old software that used those hardware elements, it will be even less likely now. This case will be practically over.

But if DISH is in contempt and the ruling may be upheld, Tivo needs no hardware verdicts for now, the end result is the same, DISH will have to disable the DVR functions on the 4 million DVRs. Tivo however can bring back the hardware issue in their subsequent contempt motion on all other DISH DVRs not on the list.


----------



## Ergan's Toupe

jacmyoung said:


> It would have been good for our Tivo supporters to read that Tivo were confident the 4 million DVRs would be again ordered to be disabled on 9/4.


Why? What difference would it make what Rogers says?


----------



## nobody99

James Long said:


> You might want to read what tom wrote again ... "contemplate a reversal" not "complete reversal" and the remand is noted.
> 
> I disagree with tom's conclusion (and have noted that in a previous post) but I believe you're misreading it.


Yep - you are right - I completely misread it (treats me right for doing this on the down-low at work ) Sorry Tom.


----------



## nobody99

James Long said:


> Tivo can pursue the hardware claims at the district court level (as soon as they are finished with the current events). The appeals court remanded it to the district court for a decision - no appeal is needed ... I'm surprised it wasn't dealt with May 30th but as long as the injunction exists the hardware claims are not important. The injunction, with or without the hardware claims, was upheld by the appeals court.


Exactly. And TiVo may be using a chess game here...turning the tables and using the slow and painful pace of court proceedings against DISH (as DISH did against TiVo).


----------



## jacmyoung

Ergan's Toupe;1764174 said:


> Why? What difference would it make what Rogers says?


I thought you were one of those so worked up by Charlie's lies, that naturally can also use some encouragement from Rogers?

And BTW, CEO's statements are regularly used as evidence in the court.

So now we have another term by Tivo, called "infringing units". First was this "Adjudicated Receivers", not "infringing Products", then some other terms like "workarounds", and then the "redesigns". But at least "infringing units" is much closer to "Infringing Products", if we follow this trend, maybe by 9/4 DISH, Tivo and the judge will finally end up using the same "Infringing Products" term


----------



## Ergan's Toupe

jacmyoung said:


> I thought you were one of those so worked up by Charlie's lies, that naturally can also use some encouragement from Rogers?


Nope. You thought wrong. Neither Charlie's lies nor Rogers comments are going to change Folsom's mind come 9/4.

It is irrelevant.


----------



## peak_reception

James Long said:


> I don't believe Tivo will win claiming the ViP series are only colorably different. Since the Texas case and injunction focus on the DVR models as products the comparison between products isn't limited to the software and potentially a tiny portion of the software ... there is too much difference between the two series to tie them together. But Tivo will make the attempt ... assuming they win the motion for contempt on September 4th and are not busy trying to get the new 501 etc software determined to be "only colorably different" and eventually infringing.


 I wasn't serious about being worried about my 622. Any attempt to get those newer receivers also shut off would be a looooooooooong, drawn out affair. I'd be long gone by then.  Also, the 'colorable difference' hearings for the Infringing Products would come first.

i don't think any DVRs will be disabled. The impending threat of it alone will force Dish to give in (if held in contempt and it holds up). Even Charlie isn't that insanely "stubborn" (ego-maniacal). If everything played to that point we'd probably looking at 2010. :nono2:


----------



## nobody99

peak_reception said:


> i don't think any DVRs will be disabled. The impending threat of it alone will force Dish to give in (if held in contempt and it holds up). Even Charlie isn't that insanely "stubborn" (ego-maniacal). If everything played to that point we'd probably looking at 2010. :nono2:


I think that's an important point - despite what Charlie has said that he wants to "prove" that he no longer infringes, this is a poker game. He's going to make TiVo think he's holding out to the end, letting TiVo question their case. It's a negotiation tool. If it saves him even 5 cents per receiver per month to wait until the very last second to settle, it's a smart strategy.

In the meantime, he's probably instructed his lawyers to obfuscate the issues as much as possible to wear down TiVo. But the bottom line is he's in contempt, and if that contempt hearing concludes with an actual decision, he held out too long. I don't think he'll let it get to that point.


----------



## peak_reception

nobody99 said:


> I think that's an important point - despite what Charlie has said that he wants to "prove" that he no longer infringes, this is a poker game. He's going to make TiVo think he's holding out to the end, letting TiVo question their case. It's a negotiation tool. If it saves him even 5 cents per receiver per month to wait until the very last second to settle, it's a smart strategy.


 Texas Hold 'Em. Or maybe a game of Chicken? (who blinks first). 


> In the meantime, he's probably instructed his lawyers to obfuscate the issues as much as possible to wear down TiVo.


 Yup, from the very start. Obfuscate, confuse, throw sand in the judicial gears. It's been pretty effective too one has to admit. 


> But the bottom line is he's in contempt, and if that contempt hearing concludes with an actual decision, he held out too long. I don't think he'll let it get to that point.


 Curtis52 thinks it will be bad for TiVo to win on 9-4 (Dish held In Contempt) and good for Dish to lose (Not In Contempt). Talk about confused! :lol:


----------



## peak_reception

James Long said:


> BTW: I'll be very surprised if Tivo is prepared in court for the next step ... whatever that may be. DISH showed their preparedness May 30th by immediately filing the case in Delaware to address the new product infringement issue (DVR software as a product) when they saw it would not be addressed in Texas. Tivo wasn't even ready to file the Motion for Contempt which was the first step of the process they wanted the Texas court to follow.


 I agree. Their May 13 agenda exhibited the same over-cautious, CYA, reactive posture. They had a golden opportunity to seize the initiative and drive with the ball. Instead they piddled around ineffectively with a clumsy, bloated, unfocused, (non)agenda which had "Tell Us What To Do Next Judge?" written all over it. And poorly written at that.

And then on May 30 they were like a blind man in a china shop gingerly tapping away on everything with their cane so that they didn't tip anything over and could feel out the Judge for how HE wanted to do things. Now maybe Judge Folsom IS that imposing that lawyers are intimidated by him and don't want to make a misstep. Could be. Or maybe it was just another missed opportunity. They did NOT have a motion ready (or more than one motion ready, for eventualities) and I thought it was a mistake at the time too.


----------



## peak_reception

Greg Bimson said:


> They may as well stand up in the courtroom and say they killed Nicole Simpson.


 "If the glove doesn't fit, you must acquit!" Repeat it often enough and common people start to believe you, like the O.J. jury.

Jac52's version is: Once *any* change has been made to an infringing device then you start all over again from square one, no matter what! Too bad it's not a jury but Judge Folsom they'll be feeding that line to.


----------



## James Long

Fortunately (for Tivo) this first hearing isn't infringement based ... they don't have to demonstrate anything other than that the products DVR functionality has not been disabled. DISH's politician's error of "disabling and then un-disabling" as part of a software update that was secretly done a year ago (or more) doesn't help them.

The judge put it accurately on June 5th what the issue is ... regardless of subsequent noise from both parties. Tivo should hope that they stuck to the issue enough to prove their point and DISH should do the same.

Judge Folsom has it right ... this is a question of law. A simple question of if the words in that injunction mean what is apparent to Tivo or can be construed to fit DISH's actions without contempt.


----------



## Greg Bimson

> *Posted by peak_reception:*
> Jac52's version is: Once *any* change has been made to an infringing device then you start all over again from square one, no matter what! Too bad it's not a jury but Judge Folsom they'll be feeding that line to.


And this is where the case should be precedential.

We are dealing with a device, an adjudged infringing device that can be modified. This device, once ruled infringing, is under the jurisdiction of the court. If it were to be considered non-infringing, that consideration must be addressed to the court. It cannot be rectified without the court's OK. It would be a mockery of justice to allow an adjudged infringer the latitude to wholly determine the status of an adjudged infringing device.

In other words, if a plaintiff takes the time to go to court and receive a ruling that a device is infringing, subject to an injunction, and always under the jurisdiction of the court, it should truly take a defendant time to go to court to somehow get that device removed from the injunction and the court.


----------



## scooper

Greg Bimson said:


> And this is where the case should be precedential.
> 
> We are dealing with a device, an adjudged infringing device that can be modified. This device, once ruled infringing, is under the jurisdiction of the court. If it were to be considered non-infringing, that consideration must be addressed to the court. It cannot be rectified without the court's OK. It would be a mockery of justice to allow an adjudged infringer the latitude to wholly determine the status of an adjudged infringing device.
> 
> In other words, if a plaintiff takes the time to go to court and receive a ruling that a device is infringing, subject to an injunction, and always under the jurisdiction of the court, it should truly take a defendant time to go to court to somehow get that device removed from the injunction and the court.


Perhaps - but it *WAS NOT* put in the injunction that way. Judge Folsom *has not added* any such provision to the injunction. Until such time, it should be treated like any other infringing device - the infringer can make (non-trivial) changes to make it non-infringing. *Agreed *, the court will have to decide if such changes are indeed more than colorably different.


----------



## jacmyoung

peak_reception said:


> ...Jac52's version is: Once *any* change has been made to an infringing device then you start all over again from square one, no matter what! Too bad it's not a jury but Judge Folsom they'll be feeding that line to.


Absolutely not true.

Once any change is made, the court must first look at the change, and determine if the change is only colorable. If the answer is yes, a contempt, if the answer is no, no contempt and to go further the patentee must file a new complaint (a new suit).


----------



## jacmyoung

Greg Bimson said:


> ...In other words, if a plaintiff takes the time to go to court and receive a ruling that a device is infringing, subject to an injunction, and always under the jurisdiction of the court, it should truly take a defendant time to go to court to somehow get that device removed from the injunction and the court.


And a good faith workaround the patent is the only way to do just that. The court will have to decide, once any evidence of modification surfaces, whether the workaround is more than colorable.

Again there have never been any products, adjudicated or not, infringing or not, in the field or on the shelves, in the wharehouse or still on the assembly line...ever been excluded from the modification process.


----------



## jacmyoung

scooper said:


> Perhaps - but it *WAS NOT* put in the injunction that way. Judge Folsom *has not added* any such provision to the injunction. Until such time, it should be treated like any other infringing device - the infringer can make (non-trivial) changes to make it non-infringing. *Agreed *, the court will have to decide if such changes are indeed more than colorably different.


Precisely, as required by the law, the injunction must spell out any requirement in detail with specificity, if the injunction does not say DISH may not modify those DVRs, or it does not say DISH must get an OK from the court to modify, then such prohibition or requirement are not there.

What Tivo people continue to fail to understand is, the 9/4 proceeding is a summary proceeding, if they go to find what a summary proceeding means, they will understand the heavy burden placed on the mover (Tivo) in such case. Tivo has no luxury to try to seek exception of the rules, or modify the terms used in the injunction to suit their needs, Tivo must prove with clear and convincing evidence the current DVRs still infringe.

DISH as a non-mover, will be given all the considerations by the court in this summary proceeding, meaning if there is any ambiguity, confusion, lack of prior cases to demonstrate an adjudicated device already with the end users may not be modified, then it must be assumed it may be modified. I know it is hard for the Tivo crowd to accept that. The court will show you the way.

Here in this forum, we are all equal debating parties, but on 9/4, DISH and Tivo will not be equal, they will be treated very differently. DISH only needs to create the doubt, point out ambiguity, raise substantial open issues, DISH does not have to prove anything, only to establish those uncertainty, and the evidence DISH uses does not even have to be substantial. Tivo on the other hand must prove with clear and convincing evidence, Tivo will not be able to enjoy many arguing rights the Tivo crowd enjoy here.

In another word, DISH's lawyers will be subject to a much lower standard of proof than Curtis and I had to prove here. Conversely, Tivo's lawyers will be subject to a much higher standard of proof than the Tivo crowd had to prove here.


----------



## Greg Bimson

jacmyoung said:


> Precisely, as required by the law, the injunction must spell out any requirement in detail with specificity, if the injunction does not say DISH may not modify those DVRs, or it does not say DISH must get an OK from the court to modify, then such prohibition or requirement are not there.





scooper said:


> Perhaps - but it *WAS NOT* put in the injunction that way. Judge Folsom *has not added* any such provision to the injunction. Until such time, it should be treated like any other infringing device - the infringer can make (non-trivial) changes to make it non-infringing. *Agreed* , the court will have to decide if such changes are indeed more than colorably different.


You two can read whatever meaning you want. Fine, the injunction does not prohibit a modification. So DISH/SATS can modify the adjudicated receivers until their eyes bleed.

However, the court ordered DISH/SATS to "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."

There is no option to modify and eliminate the above ORDER. The order still stands on the receivers which were adjudicated as infringements. The modification of those receivers does not take precedence.


----------



## Curtis52

Greg Bimson said:


> You two can read whatever meaning you want. Fine, the injunction does not prohibit a modification. So DISH/SATS can modify the adjudicated receivers until their eyes bleed.
> 
> However, the court ordered DISH/SATS to "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."
> 
> There is no option to modify and eliminate the above ORDER. The order still stands on the receivers which were adjudicated as infringements. The modification of those receivers does not take precedence.


The court ordered the Star-Brite company to stop selling Star-Brite. There was no option to modify it in the injunction. A contempt motion was filed for an alleged prima facie violation of the injunction. The court didn't find contempt because the company had modified the product. It's hardly precedential.


----------



## Greg Bimson

Curtis52 said:


> The court ordered the Star-Brite company to stop selling Star-Brite. There was no option to modify it in the injunction. A contempt motion was filed for an alleged prima facie violation of the injunction. The court didn't find contempt because the company had modified the product. It's hardly precedential.


Star-Brite did not modify the products sold and adjudicated as infringing. Case law allows a company to create subsequent constructions, and Joe Blow's four-year old 501 is not a subsequent construction. A subsequent construction is by nature an unadjudicated product, unless it infringes and is merely colorably different.

Star-Brite was also ordered to destroy the product adjudicated as infringing. Star-Brite did.

DISH/SATS was ordered to disable the product adjudicated as infringing. DISH/SATS has not.


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## Curtis52

Greg Bimson said:


> Star-Brite was also ordered to destroy the product adjudicated as infringing. Star-Brite did.


The injunction didn't say anything about destroying anything:



> "On August 4, 1987, this court entered a judgment in favor of plaintiff against third-party defendant Star Brite Corporation n/k/a Ocean BioChem, Inc.,1 in the amount of $214,850 plus prejudgment interest for the willful infringement of plaintiff's patent. The court also enjoined "Star Brite Corporation, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this Judgment by personal service or otherwise, including, but not limited to, Excelda Manufacturing Company, Boat US, and E & B Marine", from further infringing plaintiff's patent "including, but without limitation, by the *manufacture, use or sale* of Star Brite Instant Hull Cleaner, Star Brite Teak Brightener, Boat US Hull Cleaner, Boat US Teak Brightener, Bow and Stern Hull Cleaner, and Bow and Stern Teak Brightener.'"


----------



## James Long

scooper said:


> Perhaps - but it *WAS NOT* put in the injunction that way. Judge Folsom *has not added* any such provision to the injunction. Until such time, it should be treated like any other infringing device - the infringer can make (non-trivial) changes to make it non-infringing. *Agreed *, the court will have to decide if such changes are indeed more than colorably different.


So at what point does the product become "non-infringing"? At what point can the product be placed in homes and sold? At what point is the infringer not in contempt?

Ignoring the specific Motion for Contempt being dealt with next week, what is the proper process for redefining the status of a product already distributed?

DISH obviously wants to be 100% in control over the definition of their products. Tivo also wants to be 100% in control over the definition of the products ruled infringing. Somewhere in the middle is the truth.


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## James Long

jacmyoung said:


> Precisely, as required by the law, the injunction must spell out any requirement in detail with specificity, if the injunction does not say DISH may not modify those DVRs, or it does not say DISH must get an OK from the court to modify, then such prohibition or requirement are not there.


What isn't specific about "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data)" and "the DVR functionality ... shall not be enabled in any new placements"?

That is the focus of September 4th. The requirement seems absolute and clear.

The question of law is best said by the judge who will decide on the motion:*The Court will determine "whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."*​


----------



## scooper

Disclaimer - I'm not pretending to be Judge Folsom or any other judge/lawyer - my opinions (right or wrong) only



James Long said:


> So at what point does the product become "non-infringing"? At what point can the product be placed in homes and sold? At what point is the infringer not in contempt?


In this particular case - if / after the new software has been found to not infringe



James Long said:


> Ignoring the specific Motion for Contempt being dealt with next week, what is the proper process for redefining the status of a product already distributed?


When said non-infringing software has been distributed to the devices, or the date that said software was found to not be infringing_, whichever is LATER._ - I'm not sure what would be the "best" answer here, the italics is my original answer



James Long said:


> DISH obviously wants to be 100% in control over the definition of their products. Tivo also wants to be 100% in control over the definition of the products ruled infringing. Somewhere in the middle is the truth.


Agreed. This is something that should not be decided by either side (unless they both agree), but rather by the judge presiding over the case.


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## peak_reception

jacmyoung said:


> Absolutely not true.
> 
> Once any change is made, the court must first look at the change, and determine if the change is only colorable. If the answer is yes, a contempt, if the answer is no, no contempt and to go further the patentee must file a new complaint (a new suit).


 Ok jac, I did skip over the "colorable difference" step, that's true. Why? Because the threshhold for making a change to an infringing product that is more than just changing the color of that product (i.e. no change at all) is so minimal that it's a standard that any infringer with an ounce of creativity (and even less of ethics) can meet with laughable ease. Especially so in a technical field and/or where software is involved. That's why I ignored the colorable difference standard, because it's virtually no standard at all. Anyone can meet it.


----------



## jacmyoung

Greg Bimson said:


> ...However, the court ordered DISH/SATS to "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."...


Please if you care to quote the order, at least have the courage to quote it right, the order never said what you quoted above, what it says is:

To disable the DVR functionalities (i.e. all data storage and playback from the harddrive...)...

One of the interpretations as I have already stated is, "the DVR functionalities" cannot possibly be equal to "all DVR functionalities in the world those DVRs want to use". Anything in the form of the i.e. must be within the confine of the meaning of "the DVR functionalities", not "any DVR functionalities in the world those DVRs try to use."

DISH's above interpretation is totally logical, even though Tivo's interpretation may also be logical, though I don't think replacing "all DVR functions in the world those DVRs try to use" with "the DVR functions" is logical at all, but let's say it is also logical.

Guess what in the world of a legal setting, in a contempt proceeding, the defendant gets the benefit of his logical interpretation, the plaintiff does not get the benefit of his logical interpretation. Tough luck.


----------



## jacmyoung

peak_reception said:


> Ok jac, I did skip over the "colorable difference" step, that's true. Why? Because the threshhold for making a change to an infringing product that is more than just changing the color of that product (i.e. no change at all) is so minimal that it's a standard that any infringer with an ounce of creativity (and even less of ethics) can meet with laughable ease. Especially so in a technical field and/or where software is involved. That's why I ignored the colorable difference standard, because it's virtually no standard at all. Anyone can meet it.


Except that is all that matters so please do not skip it next time.

And if you are right that gives anyone a free ride when he simply does some minimal change and may get away with it, you are wrong, the patentee is free to file a new complaint, and if he can again prove the changed deivces still infringe, the infringer not only will face the damages throughout the time of the new trial, but may face treble damages and attorney fees incurred by the patentee.

So no there is no crying victim from Tivo at all.


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## James Long

scooper said:


> James Long said:
> 
> 
> 
> Ignoring the specific Motion for Contempt being dealt with next week, what is the proper process for redefining the status of a product already distributed?
> 
> 
> 
> When said non-infringing software has been distributed to the devices, or the date that said software was found to not be infringing_, whichever is LATER._ - I'm not sure what would be the "best" answer here, the italics is my original answer
Click to expand...

So what is the process?

Say I have sold four million imbedded routers that require an internet connection to function. Say that they have some sort of DNS cache feature, and in the design of that feature I infringed on a Cisco patent. My four million placed products are adjudicated infringing products.

In order to avoid a recall or complete shut down of my devices, I have convinced the court that I can disable the DNS cache functionality on my routers remotely and the court has allowed my routers to remain in place (instead of ordering them recalled). The court has specifically ordered that I "disable the DNS cache functionality (ie: all storage of name to IP relationships)" and "not enable DNS cache functionality" on new placements.

While working through the appeals process I have discovered a way to offer a DNS cache that does not infringe on Cisco's patent. Ignoring the process DISH followed (secretly sending new code to their product) what is the process I should follow?

Remember, these are placed products that the court has allowed to remain in place with a specific order to disable the specific functionality. What process should I follow?


----------



## peak_reception

jacmyoung said:


> ...if the injunction does not say DISH may not modify those DVRs, or it does not say DISH must get an OK from the court to modify, then such prohibition or requirement are not there.


 And yet you've said that no judge can make such stipulations in infringement cases (at least on the 1st, 2nd, 3rd, and 4th go rounds on the question of pre-approval). After a 4th still-infringing modification, after many more years of infringing, he can finally say to the serial infringer, "That's Enough! You need pre-approval now!" What a Joke! (if true).



> What Tivo people continue to fail to understand is, the 9/4 proceeding is a summary proceeding, if they go to find what a summary proceeding means, they will understand *the heavy burden placed on the mover* (Tivo) in such case. Tivo has no luxury to try to seek exception of the rules, or modify the terms used in the injunction to suit their needs, *Tivo must prove* with clear and convincing evidence the current DVRs still infringe.


 Jac, do you not see anything wrong with this formulation? I've highlighted two parts of your statement. Why is the "heavy burden" born by the victim? And why must the already vindicated victim (in this case TiVo) be again burdened with the responsibility to "prove" anything more? Shouldn't the convicted infringer be the one to have to "prove" that they no longer infringe? It's a crazy formulation. That may just be how it is, or maybe not...



> *DISH as a non-mover*, will be given all the considerations by the court in this summary proceeding, meaning if there is any ambiguity, confusion, lack of prior cases to demonstrate an adjudicated device already with the end users may not be modified, then it must be assumed it may be modified.


 DISH, *as a convicted infringer*, wil be given *all* the considerations and benefits. It just doesn't add up.



> Here in this forum, we are all equal debating parties, but on 9/4, DISH and Tivo will not be equal, they will be treated very differently. DISH only needs to create the doubt, point out ambiguity, raise substantial open issues, DISH does not have to prove anything, only to establish those uncertainty, and the evidence DISH uses does not even have to be substantial. Tivo on the other hand must prove with clear and convincing evidence, Tivo will not be able to enjoy many arguing rights the Tivo crowd enjoy here.


 Bizarre, if true, but I doubt you've got it right. We shall soon see, as the saying goes.


----------



## peak_reception

jacmyoung said:


> And a good faith workaround the patent is the only way to do just that. The court will have to decide, once any evidence of modification surfaces, whether the workaround is more than colorable.


 And also, whether or not it was done in good faith, right?


----------



## jacmyoung

James Long said:


> So what is the process?
> 
> Say I have sold four million imbedded routers that require an internet connection to function. Say that they have some sort of DNS cache feature, and in the design of that feature I infringed on a Cisco patent. My four million placed products are adjudicated infringing products.
> 
> In order to avoid a recall or complete shut down of my devices, I have convinced the court that I can disable the DNS cache functionality on my routers remotely and the court has allowed my routers to remain in place (instead of ordering them recalled). The court has specifically ordered that I "disable the DNS cache functionality (ie: all storage of name to IP relationships)" and "not enable DNS cache functionality" on new placements.
> 
> While working through the appeals process I have discovered a way to offer a DNS cache that does not infringe on Cisco's patent. Ignoring the process DISH followed (secretly sending new code to their product) what is the process I should follow?
> 
> Remember, these are placed products that the court has allowed to remain in place with a specific order to disable the specific functionality. What process should I follow?


Again, I know you don't believe because you think it is only my opinion, but let me say it one more time, any specific order to enjoin a specific item in the injunction must be refering to the item already tried, already described in the trial, not something yet in front of the court before, such as that new DNS cache. So the order cannot prohibit the use of that new DNS cache prima facie. Anything not already adjudicated must under go a colorable difference test, if the new DNS cache is only colorably different than the infringing DNS cache, a contempt, if not no contempt, the patentee is free to file a new complaint immediately against that new DNS cache for continued infringement.

If the patente may be successful in proving in the new trial that this new cache is still infringing, the infringer will be certainly faced with all the damages during the time of the new trial, plus possible treble damages and attorney fees by the patentee.

And here is the real catch that shows the logic of the rules, what if after the new trial the new DNS cache is found not infringing? The court says of course the infringer should be allowed to use it freely.

Now hopefully you can see the reason behind those uniform standards.


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## jacmyoung

peak_reception said:


> And also, whether or not it was done in good faith, right?


Of course, changes that are only colorable are in bad faith. Just another way the court tries to patiently explain their standards, because apparently most people need to be baby fed the concept, they refuse to deduce the meaning themselves, which is perfectly understandable, because in a heated dispute, of course people will argue on the literal meanings, so the court is left to try all kinds of ways to explain it for them.


----------



## jacmyoung

peak_reception said:


> ... DISH, *as a convicted infringer*, wil be given *all* the considerations and benefits. It just doesn't add up. ...


Please spend some time read the definition and rules for a "summary proceeding" and what the non-mover and the mover must do in such a proceeding, you will then understand.


----------



## peak_reception

jacmyoung said:


> Of course, changes that are only colorable are in bad faith. Just another way the court tries to patiently explain their standards, because apparently most people need to be baby fed the concept, they refuse to deduce the meaning themselves, which is perfectly understandable, because in a heated dispute, of course people will argue on the literal meanings, so the court is left to try all kinds of ways to explain it for them.


 Nice try. Not all changes that fail to meet a "colorable difference" standard need be in bad faith. Nor are all changes that meet the standard necessarily in good faith. Good Faith / Bad Faith has only to do with how Dish (in this case) has conducted themselves on the road to non-infringement. Most importantly, have they been responsive and obedient to the Court? *(and The Injunction!)*. Secondarily, have they shown transparency and honesty? Is there a pattern of shenanigans and evasion, both within this case and outside of it? is there forthright acknowledgement of the offense and how they are planning to correct themselves and their products? Those are the kinds of questions that "good faith" centers around. Of course the first one is most important.


----------



## James Long

jacmyoung said:


> Again, I know you don't believe because you think it is only my opinion, but let me say it one more time, any specific order to enjoin a specific item in the injunction must be refering to the item already tried, already described in the trial, not something yet in front of the court before, such as that new DNS cache. So the order cannot prohibit the use of that new DNS cache prima facie. Anything not already adjudicated must under go a colorable difference test, if the new DNS cache is only colorably different than the infringing DNS cache, a contempt, if not no contempt, the patentee is free to file a new complaint immediately against that new DNS cache for continued infringement.
> 
> If the patente may be successful in proving in the new trial that this new cache is still infringing, the infringer will be certainly faced with all the damages during the time of the new trial, plus possible treble damages and attorney fees by the patentee.
> 
> And here is the real catch that shows the logic of the rules, what if after the new trial the new DNS cache is found not infringing? The court says of course the infringer should be allowed to use it freely.
> 
> Now hopefully you can see the reason behind those uniform standards.


So what is your answer to my question? I have four million adjudicated infringing products placed in the field with a court ordering me to "disable the DNS cache functionality" on those products. I have new software developed that I believe can make those products non infringing. What is the process?

Are you suggesting I just send the software without telling anyone, ignore the court's specific order and wait for Cisco to complain? Is that the proper way to bring a modification of a placed existing product before the court? (That is what DISH did.)

My question is the process.


----------



## James Long

jacmyoung said:


> Please spend some time read the definition and rules for a "summary proceeding" and what the non-mover and the mover must do in such a proceeding, you will then understand.


Are you absolutely sure that this is a "summary proceeding"? You seem to keep wanting to redefine the hearing to match your current opinion.


----------



## scooper

James Long said:


> So what is the process?
> 
> While working through the appeals process I have discovered a way to offer a DNS cache that does not infringe on Cisco's patent. Ignoring the process DISH followed (secretly sending new code to their product) what is the process I should follow?
> 
> Remember, these are placed products that the court has allowed to remain in place with a specific order to disable the specific functionality. What process should I follow?


You replace your software and bring it to the court's attention that you have found a way around the Cisco patent. You would still be infringing until the court gave you the "More than colorably different" ruling or the "Not infringing" ruling (Perhaps done through a separate trial such as Dish's DE case).

I suppose you could notify the court first, but this is NOT required UNLESS such notification has been written into your specific injunction. It DOES NOT MATTER whether you are open or secret about changing it before or after notifying the court (again, unless it is required to get the court's permission first).


----------



## peak_reception

jacmyoung said:


> Please spend some time read the definition and rules for a "summary proceeding" and what the non-mover and the mover must do in such a proceeding, you will then understand.


 I know you've done a lot of reading about all this, and that's commendable. But if your reading is as careful and focused as your posting then it does leave open a sliver of doubt as to whether or not you've got things quite right. That being said, I don't doubt that you're making a good faith effort to get things right.


----------



## Greg Bimson

Curtis52 said:


> The injunction didn't say anything about destroying anything:
> 
> 
> 
> "On August 4, 1987, this court entered a judgment in favor of plaintiff against third-party defendant Star Brite Corporation n/k/a Ocean BioChem, Inc.,1 in the amount of $214,850 plus prejudgment interest for the willful infringement of plaintiff's patent. The court also enjoined "Star Brite Corporation, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this Judgment by personal service or otherwise, including, but not limited to, Excelda Manufacturing Company, Boat US, and E & B Marine", from further infringing plaintiff's patent "including, but without limitation, by the manufacture, use or sale of Star Brite Instant Hull Cleaner, Star Brite Teak Brightener, Boat US Hull Cleaner, Boat US Teak Brightener, Bow and Stern Hull Cleaner, and Bow and Stern Teak Brightener.'"
Click to expand...

How do you know that was the entire injunction?


> Star Brite Distrib., Inc. v. Gavin, 746 F. Supp. 633, 641 (N.D. Miss. 1990) (contempt proceeding applied only to new units; defendant destroyed existing stock of adjudicated products).


At least that is what TiVo is claiming. We haven't seen the final judgment and injunction order from the Star-Brite case; only the decision from the Court of Appeals. However, we have seen TiVo state the above in their brief.

Or is this simply the thread where we take everything DISH/SATS says as gospel, but TiVo must be lying to the court?

Either way, the adjudicated infringing product was destroyed, either by order or by Star-Brite's free will, as they could not sell it.


----------



## Curtis52

Greg Bimson said:


> Either way, the adjudicated infringing product was destroyed, by either order or by Star-Brite's free will, as they could not sell it.


Your whole point was that the court ordered the Star-Brite product destroyed and now you can't provide any support that the court ordered any such thing.


----------



## Greg Bimson

Good point. So the original product was destroyed, either by order or by Star-Brite's free will.

But that still doesn't address the fact there was most likely a second order in Star-Brite, either to recall product adjudicated infringing or to destroy said product.

I certainly cannot find the case, as the final judgment and injunction was handed down in 1987.


----------



## Curtis52

Greg Bimson said:


> Good point. So the original product was destroyed, either by order or by Star-Brite's free will.
> 
> But that still doesn't address the fact there was most likely a second order in Star-Brite, either to recall product adjudicated infringing or to destroy said product.


If the court had ordered such a thing and had Star-Brite complied with such an order TiVo would have made a big deal out of it for the same reason as you tried to do. They did not.


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## Greg Bimson

TiVo hasn't made any big deal over any of the orders; they are simply stating that adjudicated product does not receive the benefit of any "modification". That is why they did bring up Star-brite, where the adjudicated product was under the jurisdiction of the court, while the subsequent modifications aren't.


----------



## nobody99

Greg Bimson said:


> TiVo hasn't made any big deal over any of the orders; they are simply stating that adjudicated product does not receive the benefit of any "modification". That is why they did bring up Star-brite, where the adjudicated product was under the jurisdiction of the court, while the subsequent modifications aren't.


In other words, the are not falling for Charlie's attempt to obfuscate the facts. Throw out five or six worthless legal arguments that have no value, and hope one of them worries TiVo enough that they'll settle sooner and for less money.

But so far, TiVo's not falling for it.


----------



## jacmyoung

peak_reception said:


> Nice try. Not all changes that fail to meet a "colorable difference" standard need be in bad faith. Nor are all changes that meet the standard necessarily in good faith. Good Faith / Bad Faith has only to do with how Dish (in this case) has conducted themselves on the road to non-infringement. Most importantly, have they been responsive and obedient to the Court? *(and The Injunction!)*. Secondarily, have they shown transparency and honesty? Is there a pattern of shenanigans and evasion, both within this case and outside of it? is there forthright acknowledgement of the offense and how they are planning to correct themselves and their products? Those are the kinds of questions that "good faith" centers around. Of course the first one is most important.


But at the end of the day if their modification makes the difference more than colorable, they are not in contempt, because the difference will be the first thing the court must look at in a contempt proceeding, all the other shenanigans are secondary.

So if the answer to the more than colorable is a yes, DISH will not be in contempt, meaning the effort by DISH will be viewed by the court as a good faith one, all other shenanigans will be moot points at that time.


----------



## James Long

nobody99 said:


> In other words, the are not falling for Charlie's attempt to obfuscate the facts. Throw out five or six worthless legal arguments that have no value, and hope one of them worries TiVo enough that they'll settle sooner and for less money.


Each of DISH's references "prove" one point of their argument. Alone they do not help - but chipping away at the full argument ("we modify existing placed products to avoid contempt") they might have the right combination --- at least enough of a combination --- that Judge Folsom could agree that modifying placed products is acceptable.


----------



## jacmyoung

James Long said:


> Are you absolutely sure that this is a "summary proceeding"? You seem to keep wanting to redefine the hearing to match your current opinion.


Of course all contempt proceedings are summary in nature. The definition of a summary proceeding is it does not require a jury, nor a bench trial, is not subject to all the burden of evidentiary cross examinations and such. Just read those cases you will be absolutely sure yourselve.


----------



## jacmyoung

James Long said:


> So what is your answer to my question? I have four million adjudicated infringing products placed in the field with a court ordering me to "disable the DNS cache functionality" on those products. I have new software developed that I believe can make those products non infringing. What is the process?
> 
> Are you suggesting I just send the software without telling anyone, ignore the court's specific order and wait for Cisco to complain? Is that the proper way to bring a modification of a placed existing product before the court? (That is what DISH did.)
> 
> My question is the process.


The answer is a resounding yes! You got it my friend, finally, with one thing the order was not ignored. DISH is in compliance with the order, just wait till 9/4 you will get a confirmation.

The court always waits for "Cisco to complain", that is what the meaning of a "motion for show of cause why the infringer is not in contempt of the order". Without such motion, nothing happens, in a civil case that is.


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## nobody99

James Long said:


> Each of DISH's references "prove" one point of their argument. Alone they do not help - but chipping away at the full argument ("we modify existing placed products to avoid contempt") they might have the right combination --- at least enough of a combination --- that Judge Folsom could agree that modifying placed products is acceptable.


Oh, I think they are smarter than that. I've managed to convince myself lol that DISH knows they've lost with the already-placed DVRs, and they are just doing whatever they can to get the settlement as low as possible. Part of the "whatever they can" is to make TiVo think they have a case.

Disclaimer: It is very likely that I am dead wrong


----------



## Curtis52

peak_reception said:


> Nice try. Not all changes that fail to meet a "colorable difference" standard need be in bad faith. Nor are all changes that meet the standard necessarily in good faith. Good Faith / Bad Faith has only to do with how Dish (in this case) has conducted themselves on the road to non-infringement. Most importantly, have they been responsive and obedient to the Court? *(and The Injunction!)*. Secondarily, have they shown transparency and honesty? Is there a pattern of shenanigans and evasion, both within this case and outside of it? is there forthright acknowledgement of the offense and how they are planning to correct themselves and their products? Those are the kinds of questions that "good faith" centers around. Of course the first one is most important.


"Good faith" is in the context of willful infringement (or not).


> "(3) Limitations on Willfulness.---(A) A court may not find that an infringer has willfully infringed a patent under paragraph (2) for any period of time during which the infringer had an informed good faith belief that the patent was invalid or unenforceable, or would not be infringed by the conduct later shown to constitute infringement of the patent.  "(B) An informed good faith belief within the meaning of subparagraph (A) may be established by---
> "(i) *reasonable reliance on advice of counsel*;
> "(ii) evidence that the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or
> "(iii) other evidence a court may find sufficient to establish such good faith belief.


----------



## James Long

On the issue of how to modify an existing placed product:
Personally I would have liked to see an above the board presentation ...

DISH filing a "Motion for Clarification" asking if "the DVR functionality" ordered disabled applied solely to infinging software or if non-infringing software. I believe they didn't file this because they got their answer before the injunction was issued. They asked Judge Folsom to place the injunction allowing a software change to avoid infringement and he declined. (That is part of the case history here.)


----------



## nobody99

James Long said:


> On the issue of how to modify an existing placed product:
> Personally I would have liked to see an above the board presentation ...
> 
> DISH filing a "Motion for Clarification" asking if "the DVR functionality" ordered disabled applied solely to infinging software or if non-infringing software. I believe they didn't file this because they got their answer before the injunction was issued. They asked Judge Folsom to place the injunction allowing a software change to avoid infringement and he declined. (That is part of the case history here.)


They can't do that. If we agree that the injunction's language is pretty clear, and I think that the reasonable folk on this board can, DISH should have challenged it. They should have brought it up before the injunction issued. After they failed to do that, they should have brought it up on appeal. After they failed to do that they are out of luck. They are _legally_ out of options.

If DISH gets to ask for a clarification now, TiVo doesn't have access to the proper procedure for its objection. TiVo correctly proceeded in this case with the assumption that the language of the injunction would be enforced. DISH doesn't get to change the meaning, even if logic dictates that they should be allowed to bypass the injunction with a software download.

For example, if the court had accepted a DISH argument that the injunction should included a provision for already-placed devices, TiVo would have undoubtedly argued that it would have to be approved by the court first. And the court would have probably have agreed. That would have been procedure.

My opinion is that DISH screwed up royally not getting the wording of the injunction changed in a way that would allow modification.


----------



## nobody99

Curtis52 said:


> "Good faith" is in the context of willful infringement (or not).
> 
> 
> 
> "(3) Limitations on Willfulness.---(A) A court may not find that an infringer has willfully infringed a patent under paragraph (2) for any period of time during which the infringer had an informed good faith belief that the patent was invalid or unenforceable, or would not be infringed by the conduct later shown to constitute infringement of the patent. "(B) An informed good faith belief within the meaning of subparagraph (A) may be established by---
> "(i) reasonable reliance on advice of counsel;
> "(ii) evidence that the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or
> "(iii) other evidence a court may find sufficient to establish such good faith belief.
Click to expand...

You know, there's something related to this that I've been wondering about. DISH has gone out of their way to mention that they have legal opinion that their new software does not infringe.

TiVo is allowed discovery on this opinion; it is not covered by attorney-client privilege.

Question: does this same attorney believe they are in contempt? I don't remember reading anything one way or the other, but if your patent attorney (different from the trial attorney) believed that the software change got you out of contempt, wouldn't you bring it up?

I also wonder if that opinion about contempt would be discoverable by TiVo as part of the allowed discovery.


----------



## James Long

nobody99 said:


> James Long said:
> 
> 
> 
> DISH filing a "Motion for Clarification" asking if "the DVR functionality" ordered disabled applied solely to infinging software or if non-infringing software. I believe they didn't file this because they got their answer before the injunction was issued. They asked Judge Folsom to place the injunction allowing a software change to avoid infringement and he declined. (That is part of the case history here.)
> 
> 
> 
> They can't do that.
Click to expand...

Actually, they can and they DID in relation to placements of infringing products with DVR functionality enabled (the repair replacement program). DISH wanted to be able to replace any of the 192k exception receivers at any time, like for like - Tivo wanted no new placements. DISH dropped that motion when they decided replacing those older receivers with modern devices would be better than like for like. But they did file a "Motion for Clarification" on the issue and Tivo had a chance to respond. That process could have worked for any clarification DISH needed.



nobody99 said:


> TiVo is allowed discovery on this opinion; it is not covered by attorney-client privilege.
> 
> Question: does this same attorney believe they are in contempt?


The whole point of the opinion is that the "new software" would allow DISH to operate their existing DVRs without contempt ... so I'd have to say that the attorney believes DISH products using that software would not leave DISH in contempt.

Whether he would apply that to the "disable" order or is qualified to give a legal opinion beyond infringement is another question.


----------



## nobody99

James Long said:


> The whole point of the opinion is that the "new software" would allow DISH to operate their existing DVRs without contempt ... so I'd have to say that the attorney believes DISH products using that software would not leave DISH in contempt.


Oh, I disagree. This is a prime example of Charlie trying to muddy things up. Having an attorney who thinks the software no longer infringes is a huge way to avoid willful infringement.

The only ongoing risk they have with willful infringement is when TiVo files a contempt motion for ongoing sales. At that point, if the software is only colorably different, TiVo can cry "willful!" and ask for treble damages. Having a patent firm declare that it doesn't infringe goes about 90% of the way to avoiding that problem.

But Dish has conveniently thrown this in to documents for 9/4, even though it has no bearing on that decision. Again, trying to confuse things.

Nevertheless, I would be interested in knowing if this patent attorney has given them an actual opinion if they are in contempt for the already-with-customer DVRs. I suspect he has, and I suspect it's not the answer Charlie wanted to hear.


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## James Long

Throwing it in on 9/4 shows that DISH is discussing reality and not just a concept.

The legal question question for 9/4 is a concept ... does "disable" mean "disable" or can contempt on "disable" be avoided by changing software to something that doesn't infringe? It strengthens DISH's argument when they have a concrete example of software that apparently doesn't infringe instead of asking a hypothetical. Especially when the hypothetical was earlier rejected by the court. They need the concrete.


----------



## nobody99

James Long said:


> Throwing it in on 9/4 shows that DISH is discussing reality and not just a concept.
> 
> The legal question question for 9/4 is a concept ... does "disable" mean "disable" or can contempt on "disable" be avoided by changing software to something that doesn't infringe? It strengthens DISH's argument when they have a concrete example of software that apparently doesn't infringe instead of asking a hypothetical. Especially when the hypothetical was rejected by the court.


Ok, so you aren't one of the reasonable people who don't think that the language of the injunction is clear. My mistake.

Let me make it easy: do the 3+ million DVRs named in the injunction currently write to and read from the hard drive?

There are a ton of cases say if you get an opinion from a patent attorney (not from a trial attorney or from an "expert witness") you can avoid _willful _infringement. That's the only _real_ reason to have this opinion.

I would also guess that as soon as TiVo files a contempt motion for ongoing sales, they are going to subpoena lots of documents from this attorney (remember, attorney-client privilege is gone when you ask an opinion of non-infringement).

But my opinion still remains that DISH sought this advice for reasons other than the already-placed DVRs. They just threw it in for good measure.


----------



## Greg Bimson

nobody99 said:


> Nevertheless, I would be interested in knowing if this patent attorney has given them an actual opinion if they are in contempt for the already-with-customer DVRs. I suspect he has, and I suspect it's not the answer Charlie wanted to hear.


Are you talking about the chairman from the Fish and Richardson firm, who issued an opinion how to get around the infringement?

TiVo has also argued that if DISH/SATS followed that opinion, they are still infringing, because the DVR's still parse and they still self-regulate against the software claims, which were the only two points DISH/SATS supposedly changed with the new software.

Besides, DISH/SATS strategy here is to create precedent, and hope they can force the issue enough so that they never have to license technology from TiVo. As Mr. Ergen said, paraphrasing, we no longer infringe and we'd like to prove it. However, I am leaning to the side that the new software does infringe, if what DISH/SATS has stated in their briefs are true and the Fish and Richardson opinion letter is the basis of the modifications.


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## nobody99

Greg Bimson said:


> Are you talking about the chairman from the Fish and Richardson firm, who issued an opinion how to get around the infringement?
> 
> TiVo has also argued that if DISH/SATS followed that opinion, they are still infringing, because the DVR's still parse and they still self-regulate against the software claims, which were the only two points DISH/SATS supposedly changed with the new software.
> 
> Besides, DISH/SATS strategy here is to create precedent, and hope they can force the issue enough so that they never have to license technology from TiVo. As Mr. Ergen said, paraphrasing, we no longer infringe and we'd like to prove it. However, I am leaning to the side that the new software does infringe, if what DISH/SATS has stated in their briefs are true and the Fish and Richardson opinion letter is the basis of the modifications.


Yep, that's the one. I forgot the name and was too lazy to look it up.


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## James Long

nobody99 said:


> Ok, so you aren't one of the reasonable people who don't think that the language of the injunction is clear. My mistake.


I'll leave that decision to the court instead of calling people unreasonable. Suffice it to say if it was clear we wouldn't be seeing hundreds of pages of documents filed on the issue. We would have seen a summary judgment on May 30th.


> Let me make it easy: do the 3+ million DVRs named in the injunction currently write to and read from the hard drive?


Yes ... whether or not that is contempt is the question before the court, as clearly stated by Judge Folsom.


----------



## nobody99

James Long said:


> Suffice it to say if it was clear we wouldn't be seeing hundreds of pages of documents filed on the issue.


That hundreds of pages of documents have been filed on the issue has nothing to do with the clarity of the order. It has everything to do with a rather sizable amount of money that will be won or lost as a result of the decision.


----------



## peak_reception

James Long said:


> I'll leave that decision to the court instead of calling people unreasonable. Suffice it to say if it was clear we wouldn't be seeing hundreds of pages of documents filed on the issue. We would have seen a summary judgment on May 30th.


 May 30 was a Status Conference. Could Summary Judgment have been entered in a Status Conference? A summary judgment on what question? Contempt of the Injunction? That's what the Contempt Hearing is for. 


> Yes ... whether or not that is contempt is the question before the court, as clearly stated by Judge Folsom.


 You are right to focus things back on this statement by Judge Folsom issued in early June: The Court will determine


> *"whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."*


 It is, after all, the _Sine Qua Non_ of this case on September 4. Beyond 9-4 things again get messy and complicated. But if Judge Folsom finds Dish in Contempt for defying his Injunction by not disabling DVR functionality then things might not get very far beyond 9-4 (at least in Texas) depending on how the CAFC views things. If the DVR clause is enforced then that forces Dish to settle (if the fines for non-compliance are stiff enough) unless the CAFC accepts the appeal and stays enforcement of the Injunction.


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## James Long

peak_reception said:


> James Long said:
> 
> 
> 
> I'll leave that decision to the court instead of calling people unreasonable. Suffice it to say if it was clear we wouldn't be seeing hundreds of pages of documents filed on the issue. We would have seen a summary judgment on May 30th.
> 
> 
> 
> May 30 was a Status Conference. Could Summary Judgment have been entered in a Status Conference? A summary judgment on what question? Contempt of the Injunction? That's what the Contempt Hearing is for.
Click to expand...

Keep the context ... the reply was in reference to the idea that the injunction was perfectly clear ... and if it was Tivo could have written a Motion on a yellow legal pad while standing there May 30th, Judge Folsom could have signed it, given the finger to DISH's lawyers (literally extending the digit in their direction) and we wouldn't be talking about it.

But leaving the fantasy world of absolutely clear language ... the court has something to decide. Thanks for quoting it again.


----------



## nobody99

The more I think about it, the more I believe that this little nugget from TiVo sums up the problem for DISH:



> Having relied on the plain meaning of the injunction to obtain a stay, EchoStar should be held to the same position today, i.e., that the terms (and the spirit) of the injunction require disablement of the identified units.


DISH didn't want to address the language of the injunction because they knew that they didn't have enough time to get the new software out to all boxes. Yet, at the same time, they needed the injunction to be pretty stiff so they could get it stayed.

The don't get to have it both ways: if they had asked for the injunction to be worded in their favor, the stay wouldn't have been granted, and they would have been in contempt for awhile. But they gambled that the whole thing would be overturned, and when it wasn't, they lost the bet.

I have no problem with an already-manufactured, already-placed, already-adjudicated field-modifiable device being changed to avoid infringement, but only on one condition: that the court approves the changes, and the injured party gets to makes its case.

At the very least, if Judge Folsom rules that he new software avoids infringement, he should say, "in the meantime, let's calculate treble damages up to today."


----------



## James Long

nobody99 said:


> At the very least, if Judge Folsom rules that he new software avoids infringement, he should say, "in the meantime, let's calculate treble damages up to today."


You want treble damages on non-infringing software?

So are you a DISH fan or a Tivo fan?


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## scooper

nobody99 said:


> I have no problem with an already-manufactured, already-placed, already-adjudicated field-modifiable device being changed to avoid infringement, but only on one condition: that the court approves the changes, and the injured party gets to makes its case.


But the court DOES get to approve them (it has to pass the more than colorably different test before it can be decided if the S/W is infringing or not).

And if you're talking about the judge having to give approval for said software to be distributed - you missed yesterday's. Such a condition is NOT currently in the injunction, nor is Dish/Echostar prohibited from making such non-trivial changes (the language prohibiting that action is also not there).


----------



## peak_reception

Curtis52 said:


> "Good faith" is in the context of willful infringement (or not).





> "(3) Limitations on Willfulness.---(A) A court may not find that an infringer has willfully infringed a patent under paragraph (2) for any period of time during which the infringer had an informed good faith belief that the patent was invalid or unenforceable, or would not be infringed by the conduct later shown to constitute infringement of the patent. "(B) An informed good faith belief within the meaning of subparagraph (A) may be established by---
> "(i) *reasonable reliance on advice of counsel*;
> "(ii) evidence that the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or
> "(iii) other evidence a court may find sufficient to establish such good faith belief.


 So with the new questions of whether or not Dish is acting in good faith since the verdict they can simply blame Harold McElhinny et al (for giving bad advice) or Fish and Richardson (for submitting a finding that the new software no longer infringes) and weasel out of responsibility that way?

To me the key word is "reasonable" in subsection (i) that you put in bold. Torturing the very clear and explicit order to "Disable the DVR functionality in the Infringing Products" into its exact Opposite (i.e. modify the DVR functionality however you please. leave them fully functioning, and pretend you've complied) is *not* reasonable to most observers. Of course the only observer who really counts (for now) weighs in on 9-4.

Then there's also subsection (iii) above: "other evidence a court may find sufficient to establish such good faith belief." 
Or bad faith behavior. Seems pretty broad. Judge Folsom might not even make mention of good or bad faith in his decision, but still take it into consideration.

The legal definition of "willful" infringement is one area where bad faith matters. So is compliance or noncompliance with court orders! Thus the passage from Arbek Mfg., 55 F.3d at 1570: *



Contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders.

Click to expand...

* For without such protection there is exactly the kind of evasion and abuse shown in this case, and no way to put a stop to it. "Flagrant Disregard" is the behavior produced by "bad faith."

Less egregious but still notable examples of bad faith behavior by DISH in this case are such as I mentioned before. One being the misrepresentation to the Court of Appeals; Crying wolf about having to shut down all those DVRs, with such devastating impact, when there was no intention to follow the order in the first place, or at least certainly no mention of an alternate plan.

Other less direct examples of bad faith may also figure in, such as previous behavior in unrelated cases. TiVo figured this was worth quite a bit of ink to hash over at length in their Contempt motion. I'm not sure it matters in this case but it did have a certain sting to it.

And finally, general conduct such as; cooperation, honesty (with language especially), acknowledgement of offense, corrective action _with transparency and communication_, etc. None of it legal per-se. Just part and parcel of the bigger picture and more important issues cited above. In other words, a pattern of bad faith.


----------



## Ergan's Toupe

nobody99 said:


> The don't get to have it both ways: if they had asked for the injunction to be worded in their favor, the stay wouldn't have been granted, and they would have been in contempt for awhile. But they gambled that the whole thing would be overturned, and when it wasn't, they lost the bet.


Excellent point!. At least that would explain why Charlie sat on his hands regarding the wording of the injunction.


----------



## nobody99

James Long said:


> You want treble damages on non-infringing software?
> 
> So are you a DISH fan or a Tivo fan?


Violating a valid court order is subject to fines even if the offender has reason to believe they are no longer subject to the order.

Fines are payable to do the inured party.

What am I missing?


----------



## Greg Bimson

Curtis52 said:


> "Good faith" is in the context of willful infringement (or not).


I may be mistaken on this one...

Isn't the "Good faith"/"Bad faith" argument not only in the context of infringement? After all, Curtis52 quoted how it relates to willful infringement, which has already been determined on devices adjudged infringing.

Isn't there another term such as a "good faith"/"bad faith" ruling for violating the injunction?


nobody99 said:


> Violating a valid court order is subject to fines even if the offender has reason to believe they are no longer subject to the order.
> 
> Fines are payable to do the inured party.
> 
> What am I missing?


I don't think you are missing anything.

Most of my arguments have centered around procedure, with the first argument being a device cannot be tried twice for the same offense. Joe Blow's four year old 501 has been tagged as infringing by the court; it is the court's responisbility to determine what can be done with that device.

Arguing that the modifications made to the products adjudged infringing in customers' hands take precedence to the court's order to disable those products is disingenuous. For those that believe a change in the software changes the device: imagine what this fight would be if only one byte of software was changed.


----------



## scooper

Greg Bimson said:


> I may be mistaken on this one...
> 
> Isn't the "Good faith"/"Bad faith" argument not only in the context of infringement? After all, Curtis52 quoted how it relates to willful infringement, which has already been determined on devices adjudged infringing.
> 
> Isn't there another term such as a "good faith"/"bad faith" ruling for violating the injunction?I don't think you are missing anything.
> 
> Most of my arguments have centered around procedure, with the first argument being a device cannot be tried twice for the same offense. Joe Blow's four year old 501 has been tagged as infringing by the court; it is the court's responisbility to determine what can be done with that device.
> 
> Arguing that the modifications made to the products adjudged infringing in customers' hands take precedence to the court's order to disable those products is disingenuous. For those that believe a change in the software changes the device: imagine what this fight would be if only one byte of software was changed.


Not colorably different - doesn't meet the test of a good faith modification. Device would still be infringing.


----------



## Curtis52

Greg Bimson said:


> Joe Blow's four year old 501 has been tagged as infringing by the court; it is the court's responisbility to determine what can be done with that device.


It is the court's responsibility to determine whether that device still exists.


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## phrelin

Curtis52 said:


> It is the court's responsibility to determine whether that device still exists.


Quick dear, hide the 508s.


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## James Long

Greg Bimson said:


> Isn't the "Good faith"/"Bad faith" argument not only in the context of infringement? After all, Curtis52 quoted how it relates to willful infringement, which has already been determined on devices adjudged infringing.


The jury in this case found EchoStar's infringement to be willful, but the Court, finding that Echostar did not act in bad faith and that this is not an "exceptional case," has determined that there should be no enhancement of damages and no award of attorneys fees pursuant to 35 U.S.C. Sections 284 and 285.​Willful, but NOT in bad faith.


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## peak_reception

Greg Bimson said:


> Isn't the "Good faith"/"Bad faith" argument not only in the context of infringement? After all, Curtis52 quoted how it relates to willful infringement, which has already been determined on devices adjudged infringing.
> 
> Isn't there another term such as a "good faith"/"bad faith" ruling for violating the injunction?


 That's what I was getting at when I said:


> "Flagrant Disregard" (of The Injunction) is the behavior produced by "bad faith."


 But in this example the act of not obeying a court order (if that's how the Judge sees it) is already worse than any "bad faith" type considerations, so it doesn't really matter. But such behavior comes from bad faith.


----------



## peak_reception

Curtis52 said:


> It is the court's responsibility to determine whether that device still exists.


 More Alice in Wonderland fantasy. Might work on a jury. Make their heads spin... :roundandr But it won't work on Judge Folsom. Might work on the CAFC too though if they want to prove their sophisticated, post-constructionist bonafides... and on and on it goes....

Oh, by the way, while browsing for just the right icon for head-spinning word games :roundandr I came across the perfect one for the "good faith / bad faith" paradigm too: :goodandba


----------



## peak_reception

Speaking of icons... I had fun with them in this post from August 10:



peak_reception said:


> *Top Ten Reasons why Absolutely Nothing will be decided on Sept. 4th, 2008:*
> 
> 10) Dish's petition for Writ of Certiorari is accepted by the Supreme Court and the case is scheduled for 2012. :up:
> 
> 9) On September 3rd, Dish files a strategic countersuit in Ulan Bator, Mongolia, triggering an automatic 6 month extension in Texas. :icon_lame
> 
> 8) On the morning of September 4th it's found that he court stenographer is still not back from vacation yet so the hearing is rescheduled for late November. :sunsmile:
> 
> 7) On August 15th, TiVo offers to settle the case if Dish pays a $10 per DVR box / per month royalty licensing agreement. Dish declines the offer but does make a counter-offer of one penny per DVR box / per year. Such negotiations are seen as a positive sign that the two sides are talking and may arrive at a mutual agreement/settlement soon. :icon_peac Or maybe not.... :nono2:
> 
> 6) in late August, while reviewing the scope of his injunction, Judge Folsom is rushed to the hospital to undergo an emergency colonoscopy.  The case is reassigned to Judge Judy but she's not quite up-to-speed on it yet by the 4th. Due to Halloween, Thanksgiving, Christmas, and Hanukkah, the hearing is rescheduled for April 1st, 2009, where it belongs. :roundandr
> 
> 5) Dish's new Bronze, Silver, Gold, and Platinum tiers and channel counts are caught up in confusion with Summer Olympic metals and medal counts. On September 1st the lawyers unanimously agree to a 2 month extension to sort things out.
> 
> 4) On Labor Day Weekend Tropical Storm Gustav moves out of the Gulf of Mexico inland over Galveston Texas. A State of Emergency is declared and all government offices are closed, even in bone-dry Marshall Texas 180 miles to the north. There is unanimous agreement for a 3 month extension. !pride
> 
> 3) On August 22nd, Dish throws a wrench into the proceedings, declaring that the new "Turbo" software no longer infringes. The Appeals Court stays further action until Turbo is properly evaluated. Dissent is mufflered (sic). :scratch:
> 
> 2) In late August Charlie Ergen :money: is committed to The Colorado State Psychiatric Hospital suffering from a schizophrenic delusion that he is Hercules, Son of Zeus. :icon_stup He is declared incompetent to manage the affairs of EchoStar/Dish and the lawyers agree unanimously to a 6 month extension.
> 
> 1) Judge Folsom's Eastern District Court of Texas is still on DTV-Pal time come September and completely skips the hearing by mistake. :crying:


 No, not (just) a shameless re-post of my Top Ten Spoof on this trial [post 1300, page 65].

Look at Number 4 above and then look at this stormtracker link from CNN today:

http://www.cnn.com/2008/US/weather/08/27/gustav.nola/index.html#cnnSTCOther1

Proving once again that truth is stranger than fiction, Tropical Storm Gustav is headed straight for Marshall Texas (!) with a projected arrival date of September 4. My post is from August 10 with no edits. I hope my courtroom predictions fare as well


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## scooper

Noaa better hire you as a hurricane forecaster if you're that good


----------



## jacmyoung

peak_reception said:


> That's what I was getting at when I said: But in this example the act of not obeying a court order (if that's how the Judge sees it) is already worse than any "bad faith" type considerations, so it doesn't really matter. But such behavior comes from bad faith.


You see when you try to construct an argument, first check out all available evidence.

For example, we already have enough cases in which "disobeying the orders" were done, this is not the only one. So if the only issue you have with DISH is that they, according to you, disobeyed the order, then at least you must also think about why in those other cases where the infringers also had clearly "disobeyed the orders" but were not in violation.

Remember again, if your *only* beef is "disobeying the letter of the order" (i.e. prima facie violation) then you have to admit many prima facie disobeying the orders happened before but no violations were found.

That should sound alarm in you at least. Oh please don't try to find the excuses for the other infringers that got away with "prima facie violation", because again if your *only* beef is prima facie violation, then you cannot use any other excuses such as oh those products were not sold, oh that one was a service not a product.

Can't have it both ways. Look at the issue of "violation of the letter of the injunction" and look at it only, without any other preconditions, and think about all those other infringers who got away with prima facie violations, and then think about this case that a prima facie violation may end up not holding the water either.


----------



## nobody99

jacmyoung said:


> You see when you try to construct an argument, first check out all available evidence.
> 
> For example, we already have enough cases in which "disobeying the orders" were done, this is not the only one. So if the only issue you have with DISH is that they, according to you, disobeyed the order, then at least you must also think about why in those other cases where the infringers also had clearly "disobeyed the orders" but were not in violation.
> 
> Remember again, if your *only* beef is "disobeying the letter of the order" (i.e. prima facie violation) then you have to admit many prima facie disobeying the orders happened before but no violations were found.
> 
> That should sound alarm in you at least. Oh please don't try to find the excuses for the other infringers that got away with "prima facie violation", because again if your *only* beef is prima facie violation, then you cannot use any other excuses such as oh those products were not sold, oh that one was a service not a product.
> 
> Can't have it both ways. Look at the issue of "violation of the letter of the injunction" and look at it only, without any other preconditions, and think about all those other infringers who got away with prima facie violations, and then think about this case that a prima facie violation may end up not holding the water either.


Umm, what??


----------



## dfd

jacmyoung said:


> You see when you try to construct an argument, first check out all available evidence.
> 
> For example, we already have enough cases in which "disobeying the orders" were done, this is not the only one. So if the only issue you have with DISH is that they, according to you, disobeyed the order, then at least you must also think about why in those other cases where the infringers also had clearly "disobeyed the orders" but were not in violation.
> 
> Remember again, if your *only* beef is "disobeying the letter of the order" (i.e. prima facie violation) then you have to admit many prima facie disobeying the orders happened before but no violations were found.
> 
> That should sound alarm in you at least. Oh please don't try to find the excuses for the other infringers that got away with "prima facie violation", because again if your *only* beef is prima facie violation, then you cannot use any other excuses such as oh those products were not sold, oh that one was a service not a product.
> 
> Can't have it both ways. Look at the issue of "violation of the letter of the injunction" and look at it only, without any other preconditions, and think about all those other infringers who got away with prima facie violations, and then think about this case that a prima facie violation may end up not holding the water either.


Long time lurker here - 1st post.

jac,

Why are so many of your posts edited?

I have a hard time following your logic at all (seems like looking glass logic to me) but how are we supposed to know what others are replying to if you keep changing your posts?

I can see edits for spelling, grammar, or corrections (if cited) but going back to change posts, w/o detailing changes, really creates confusion for those that cannot watch this forum 24/7.

Mods,

Can posts be locked once quoted?

-dfd


----------



## James Long

dfd said:


> Long time lurker here - 1st post.


:welcome_s

We try to discuss the topics of the threads here, not the posters --- especially in first posts. 
The topic is Tivo vs Echostar not jacmyoung.


> Can posts be locked once quoted?


The admins have decided not to lock posts (until a thread is locked). Most of the time it isn't a problem and it allows for some special posts (such as the HD channel listing).

:backtotop Tivo vs Echostar


----------



## brettbolt

Only 1 week to go till the Sept. 4th hearing. I can't wait to hear the final fate of my 501 and my 508 DVRs. 

Dish sent my dad 2 new smart cards for his 301s (non-DVRs), but I haven't gotten them for my 501 and 508. My guess is that Dish is waiting till after the hearing before sending smart cards for the receivers subject to the lawsuit.

Anyway, the debate here about who will prevail has been beaten to death.

I'm wondering what they will do for their customers who own the receivers in question if they lose? 

Brett


----------



## dfd

James Long said:


> :welcome_s
> 
> We try to discuss the topics of the threads here, not the posters --- especially in first posts.
> The topic is Tivo vs Echostar not jacmyoung.
> The admins have decided not to lock posts (until a thread is locked). Most of the time it isn't a problem and it allows for some special posts (such as the HD channel listing).
> 
> :backtotop Tivo vs Echostar


mea culpa


----------



## Herdfan

dfd said:


> mea culpa


We have to give him a break. If he is a Red Sox fan he is having a bad day. 

Just a few more days to go. Until nothing substantial happens and we start this all over again.:eek2:


----------



## jacmyoung

brettbolt said:


> Only 1 week to go till the Sept. 4th hearing. I can't wait to hear the final fate of my 501 and my 508 DVRs.
> 
> Dish sent my dad 2 new smart cards for his 301s (non-DVRs), but I haven't gotten them for my 501 and 508. My guess is that Dish is waiting till after the hearing before sending smart cards for the receivers subject to the lawsuit.
> 
> Anyway, the debate here about who will prevail has been beaten to death.
> 
> I'm wondering what they will do for their customers who own the receivers in question if they lose?
> 
> Brett


As far as I have heard, the smart card change has two purposes, one is to stop the wide spread hacking, the other is for the new Eastern Arc MPEG4 service.

So if your dad got a new card for his 301, it is to prepare for the new encryption to kick in to stop the hacking, because the 301 is not a MPEG4 receiver, nor a DVR, which means it has nothing to do with this case at all. Only the 5xx DVRs are relevant in this case.



dfd said:


> Long time lurker here - 1st post.
> 
> jac,
> 
> Why are so many of your posts edited?
> 
> I have a hard time following your logic at all (seems like looking glass logic to me) but how are we supposed to know what others are replying to if you keep changing your posts?
> 
> I can see edits for spelling, grammar, or corrections (if cited) but going back to change posts, w/o detailing changes, really creates confusion for those that cannot watch this forum 24/7.
> 
> Mods,
> 
> Can posts be locked once quoted?
> 
> -dfd


As far as my editing, since more than a few had asked the question, it does not hurt to explain. I am terrible at typing, do not have patience to proof read before posting. So I ended up correcting typos over and over until a few rounds of correction.

Other times I came up with a new thought but decided not to start a new post, so you may find a post that had a second part added later. I have no problem if you ignore my posts as a result.

Back to the topic as noted.


----------



## jacmyoung

Curtis52 said:


> It is the court's responsibility to determine whether that device still exists.


I actually had no problem with that Greg's comment, of course he can say it will be the court's responsibility to determine what can be done to those adjudicated DVRs.

The only problem is he has already made that decisioin for the court that those adjudicated DVRs may not be modified so they no longer infringe, even though he said himself it is possible to modify those adjudicated DVRs to make them no longer infringe on the patent.

Just that the court won't allow such modification. But Greg never found any thing from the court past or present to support his opinion that modification are not allowed on certain adjudicated products. In fact we had found a few cases but he insisted in those cases the court pre-approved such modification.

So we will just have to wait to see if he is right that the court on 9/4 will make a historical decision or not that an infringer may not modify adjudicated products already with the end users without court pre-approval.


----------



## spear61

jacmyoung said:


> So we will just have to wait to see if he is right that the court on 9/4 will make a historical decision or not that an infringer may not modify adjudicated products already with the end users without court pre-approval.


Don't try to make it into something bigger than it is. It's just a simple decision regarding possible contempt, - Did Dish do what the judge told them to do? - -nothing else.


----------



## nobody99

jacmyoung said:


> So we will just have to wait to see if he is right that the court on 9/4 will make a historical decision or not that an infringer may not modify adjudicated products already with the end users without court pre-approval.


You say potato, I say, er, potato

So we will just have to wait to see if he is right that the court on 9/4 will make a historical decision or not that an infringer may [strike]not[/strike] modify adjudicated products already with the end users without court pre-approval.


----------



## brettbolt

jacmyoung said:


> As far as I have heard, the smart card change has two purposes, one is to stop the wide spread hacking, the other is for the new Eastern Arc MPEG4 service.
> 
> So if your dad got a new card for his 301, it is to prepare for the new encryption to kick in to stop the hacking, because the 301 is not a MPEG4 receiver, nor a DVR, which means it has nothing to do with this case at all. Only the 5xx DVRs are relevant in this case.


I realize they want to stop hacking. I think you misunderstood the point I was trying to make.

Sending cards to 301 owners, but not 501/508 owners is an indication of their uncertainty about the future of the listed DVRs. It would seem they are less than confident about the outcome of the contempt hearing.

Again I ask for anyone's speculation as to what Dish will do for 501/508 owners if they have to shut them off?

Brett


----------



## Ergan's Toupe

brettbolt said:


> I realize they want to stop hacking. I think you misunderstood the point I was trying to make.
> 
> Sending cards to 301 owners, but not 501/508 owners is an indication of their uncertainty about the future of the listed DVRs. It would seem they are less than confident about the outcome of the contempt hearing.
> 
> Again I ask for anyone's speculation as to what Dish will do for 501/508 owners if they have to shut them off?
> 
> Brett


Better question is what will YOU do if your 501/508 turns into a doorstop?


----------



## jacmyoung

brettbolt said:


> I realize they want to stop hacking. I think you misunderstood the point I was trying to make.
> 
> Sending cards to 301 owners, but not 501/508 owners is an indication of their uncertainty about the future of the listed DVRs. It would seem they are less than confident about the outcome of the contempt hearing.
> 
> Again I ask for anyone's speculation as to what Dish will do for 501/508 owners if they have to shut them off?
> 
> Brett


I see your point.

Of course it would be stupid to invest in the 5xx/6xx DVRs beyond bare minimum before the court makes a final ruling.

If DISH is in contempt, DISH has already indicated it will appeal, which will take a few months. I don't see any movement until the appeals court makes a ruling.

If the appeals court upholds the contempt ruling, DISH will likely try to replace those DVRs as many as they can. We have the prior distant signal case to give some indication as what DISH might do too, don't be surprised if Charlie pulls another odd solution to minimize the impact and avoid a second contempt.

But it is unlikely the first contempt will amount to much court sanctions at all because it will be hard to insist that DISH's modification effort was a "flagrant disregard of the order", given their interpretation of all the past case law that governs the modification issue.

So if you are really concerned about your 5xx/6xx DVRs, the selfish @#$%% in me says, I will like to see DISH forced to turn off my 625, that means I will be likely upgraded to a newer DVR for free, hopefully an HDDVR even.

Unfortunately I don't think I will have such luck because DISH will not be in contempt, I don't rely on my wishful thinking, but facts.


----------



## James Long

jacmyoung said:


> The only problem is he has already made that decisioin for the court ...


Haven't you? Isn't the purpose of all the court cases you have presented showing how the court MUST rule in DISH's favor? Have you not been trying to make the decision for the court?

Not that the practice isn't a bad thing - it is the expected thing. DISH's and Tivo's lawyers are also doing the exact same thing - demonstrating that the court MUST choose the option their side presents. Nothing wrong with that.

Don't complain about people presenting their opinion unless you're willing to stop presenting yours. 


> So we will just have to wait to see if he is right that the court on 9/4 will make a historical decision or not that an infringer may not modify adjudicated products already with the end users without court pre-approval.


Nahh, nothing that heavy will be decided next week. All that will be decided is whether DISH is in contempt for not disabling their DVRs.


brettbolt said:


> Sending cards to 301 owners, but not 501/508 owners is an indication of their uncertainty about the future of the listed DVRs.


The card distribution is just starting. It would be bad to pick a pattern based on very limited information. Cards are distributed by account, not by receiver model. Read it as coincidence until enough reports are in for a "pattern".


> Again I ask for anyone's speculation as to what Dish will do for 501/508 owners if they have to shut them off?


Send them ViP-612s. But that is a long way off ... even if found in contempt there will be appeals and delay.


----------



## scooper

And for 522/625 - probably a 622.

I'll wait and see what happens - if the 625 is shutoff - I better get a call / apointment within 24 hours for a working replacement.


----------



## jacmyoung

James Long said:


> Haven't you? Isn't the purpose of all the court cases you have presented showing how the court MUST rule in DISH's favor? Have you not been trying to make the decision for the court?...


It all depends on how you look at it.

Do I wish that DISH prevails? Believe it or not the answer is yes and no. As I said the selfish me don't mind if my 625 is ordered to be shut, and DISH will more likely to let me upgrade to a newer DVR or even an HDDVR for free, why not?

So I really do not have a high interest in making the decision for the court so DISH can prevail. What I have done in the past was I decided to spent a lot of time to read the court cases and to educate myself, and over time I have come to the conclusion, not based on what DISH is saying nor what Tivo is saying, but what the court has been saying all along, the likely path we may see into and beyond 9/4.

The other side insists all the prior cases do not matter, it is the "prima facie violation" that matters, that there is no need to rely on any case law. And I don't know if you can agree, but I happen to think the other side has much more self-interest vested in this case to see that Tivo prevails.

Maybe that is why our approaches are entirely different. One relies on courts' past opinions and statements, the other relies on one's own conviction mostly.


----------



## jacmyoung

It may be true that I am entirely wrong, that all the case law are irrelevant, that this case is one of the only kind, without precedence, no standard to go by.

But then if this is what you are truly thinking, please don’t turn around and say the Supreme Court will almost certain to set the DISH’s appeal aside, because this case is so ordinary.

Can’t have it both ways. If this case has a potential to set a record straight once and for all, to clarify what all the past court cases failed to touch on, that adjudicated devices already with the end users may not be modified unless in very few occasions where the court allows it.

Then such precedent setting ruling may indeed deserve the review of the highest court of this land. In that spirit, if I were Charlie and found in contempt, I would appeal all the way to the Supreme Court.

You never know, it may arouse the interest of the high court.


----------



## jclewter79

brettbolt said:


> I realize they want to stop hacking. I think you misunderstood the point I was trying to make.
> 
> Sending cards to 301 owners, but not 501/508 owners is an indication of their uncertainty about the future of the listed DVRs. It would seem they are less than confident about the outcome of the contempt hearing.
> 
> Again I ask for anyone's speculation as to what Dish will do for 501/508 owners if they have to shut them off?
> 
> Brett


If they do get shut off I fully expect to roll out 622s and 722s to everybody. Then we wait another couple years to see if the VIPs are colorably different or not.


----------



## brettbolt

James Long said:


> The card distribution is just starting. It would be bad to pick a pattern based on very limited information. Cards are distributed by account, not by receiver model. Read it as coincidence until enough reports are in for a "pattern".


Agreed, not enough data yet to establish a pattern. But it does seem logical to hold off from sending cards to listed DVRs. And, James, I would be shocked if I got my replacement smart cards before September 4th.

With this Tivo patent lawsuit, the timing of the card swap couldn't have come at a worse time for Dish. *Dish cannot cure the piracy problem until they either send owners of the listed DVRs new cards or replace their receivers.* In other words, they can't change the signal stream until all customers are equipped to receive it.

So if there is no resolution on September 4th and the case drags on for more months, what does Dish do? Do they hold off on their new piracy cure till its resolved, or do they send cards to the owners of the listed receivers?

Brett


----------



## jacmyoung

brettbolt said:


> Agreed, not enough data yet to establish a pattern. But it does seem logical to hold off from sending cards to listed DVRs. And, James, I would be shocked if I got my replacement smart cards before September 4th.
> 
> With this Tivo patent lawsuit, the timing of the card swap couldn't have come at a worse time for Dish. *Dish cannot cure the piracy problem until they either send owners of the listed DVRs new cards or replace their receivers.* In other words, they can't change the signal stream until all customers are equipped to receive it.
> 
> So if there is no resolution on September 4th and the case drags on for more months, what does Dish do? Do they hold off on their new piracy cure till its resolved, or do they send cards to the owners of the listed receivers?
> 
> Brett


The piracy issue has been going on long enough you are the first one I know of ever tried to make it an issue associated with this case.

Why are you so worried for DISH? If the piracy issue is so bad, maybe Charlie will settle with Tivo just so he can quickly send out the new smart cards to the 5xx and 6xx DVRs. If he is not doing it, then maybe he is not too concerned of the piracy issue so why should we care?

It is not like you will lose anything, or is it?


----------



## James Long

I'm surprised that we have not already all got our G3 smartcards ... but we will over time. It has to be a massive burden to manufacture, mail and administrate the changes. They won't mail out all the smart cards at once. 

Given that we're a week away from September 4th and the swap will likely last a few months the odds of you getting yours by next week are slim. But it is possible.

The smart card change is unrelated. It is just coincidence.


----------



## BNUMM

I installed a 625 Wednesday and it had a G3 card in it.


----------



## brettbolt

jacmyoung said:


> Why are you so worried for DISH? If the piracy issue is so bad, maybe Charlie will settle with Tivo just so he can quickly send out the new smart cards to the 5xx and 6xx DVRs. If he is not doing it, then maybe he is not too concerned of the piracy issue so why should we care?


I'm not worried. I just like to imagine myself being in the CEO's seat. At this point I'm trying to guess what Charlie will do with both the card swap and Tivo suit happening at the same time. (Settle with Tivo, send replacvement DVRs to owners of listed units, or send cards to everyone and continue to ignore the court order).



jacmyoung said:


> It is not like you will lose anything, or is it?


Of course I could lose. Worst case is I lose the ability to use my 501 and 508 and they erase all the recordings on it. I've been their customer for 11 years. Another unpleasant possibility is that they would send me leased units and I would have to pay extra monthly fees (lease and DVR fees). If that becomes my only option, I will cancel.

Anyway, I look forward to learning what happens on Thursday.


----------



## jacmyoung

brettbolt said:


> I'm not worried. I just like to imagine myself being in the CEO's seat. At this point I'm trying to guess what Charlie will do with both the card swap and Tivo suit happening at the same time. (Settle with Tivo, send replacvement DVRs to owners of listed units, or send cards to everyone and continue to ignore the court order).
> 
> Of course I could lose. Worst case is I lose the ability to use my 501 and 508 and they erase all the recordings on it. I've been their customer for 11 years. Another unpleasant possibility is that they would send me leased units and I would have to pay extra monthly fees (lease and DVR fees). If that becomes my only option, I will cancel.
> 
> Anyway, I look forward to learning what happens on Thursday.


I don't think there is anything one can do about the lost recordings, but if DISH has to disable your 501 and 508, I would make sure any DVR fees on the replacement DVRs be waived at least for a year.


----------



## jacmyoung

BNUMM said:


> I installed a 625 Wednesday and it had a G3 card in it.


How did you know? I don't think I even saw a card on my 625.


----------



## jclewter79

jacmyoung said:


> How did you know? I don't think I even saw a card on my 625.


It was most likely sticking in the card slot. The receivers that currently have the internal cards will now use the external slot for new cards.


----------



## BNUMM

jacmyoung said:


> How did you know? I don't think I even saw a card on my 625.


 The door popped open so I pulled it out and looked at it.


----------



## Greg Bimson

jacmyoung said:


> So I really do not have a high interest in making the decision for the court so DISH can prevail. What I have done in the past was I decided to spent a lot of time to read the court cases and to educate myself, and over time I have come to the conclusion, not based on what DISH is saying nor what Tivo is saying, but what the court has been saying all along, the likely path we may see into and beyond 9/4.
> 
> The other side insists all the prior cases do not matter, it is the "prima facie violation" that matters, that there is no need to rely on any case law. And I don't know if you can agree, but I happen to think the other side has much more self-interest vested in this case to see that Tivo prevails.


Responses in order of the sentences:

1) Neither do I, and it is a shame that you are pulling this tact out now when you are the one who has been stating with absolute certainty what will happen. I have simply been trying to counter some of your faulty arguments.

2) While I agree to an extent, again some of the components of your argument are based on cases that are not similar to this case. Just because DISH/SATS can modify the product found in end users hands does not give them the right to be judge and jury on their modification; the courts have ruled those devices infringing and the courts would have to modify or clarify their injunction in order to remove the adjudicated products from the injunction.

3) Oh, there is need to rely on case law. Don't get me wrong. I've spent entirely too much time countering the arguments presented on this thread instead of relying upon any of my own research. One of the facts that I'd still like to point out is that Joe Blow's four-year old 501 has been ruled infringing and is subject to a injunction. A contempt hearing is not the wisest place to get a ruling on that device, as the device has already been adjudicated. That fact is often overlooked.

4) BS. You have more of a vested interest than I. I have two DirecTV receivers with TiVo. That is the only connection I have to TiVo.

5) My third child was born on 29 August 2008 at 11:20AM. Welcome to the world my first daughter.


----------



## scooper

Greg Bimson said:


> 5) My third child was born on 29 August 2008 at 11:20AM. Welcome to the world my first daughter.


Congratulations 3rd time Father !!!


----------



## nobody99

Greg Bimson said:


> My third child was born on 29 August 2008 at 11:20AM. Welcome to the world my first daughter.


Greg, that's awesome!! Congratulations!!


----------



## brettbolt

Greg Bimson said:


> 5) My third child was born on 29 August 2008 at 11:20AM. Welcome to the world my first daughter.


Congratulations! I have two sons and my wife wanted a daughter, but we're 50 and its too late. 


Greg Bimson said:


> ... *Just because DISH/SATS can modify the product found in end users hands does not give them the right to be judge and jury on their modification;* the courts have ruled those devices infringing and the courts would have to modify or clarify their injunction in order to remove the adjudicated products from the injunction....


During most of this discussion I have sat on the sidelines, until recently. But this statement is a clear gem of truth that sums up the current status of this case. You can read the thousands of posts here, but I think the current case status is as simple as the statement in bold.

When Dish issued the statement months ago which effectively said 'We changed the software and it doesn't infringe', my immediate first reaction was 'Excuse me, but don't you have to prove that in court first?'

I find Dish's attitude about the modification as extremely arrogant. Even though I stand to lose the use of my 501 and 508, I hope they are forced to disable them on the 4th. I doubt if they will offer me an acceptable deal on the replacements. I just bought a new Harley Davidson motorcycle and riding it is much more fun than watching TV! I can live fine without TV for a while.


----------



## Curtis52

brettbolt said:


> When Dish issued the statement months ago which effectively said 'We changed the software and it doesn't infringe', my immediate first reaction was 'Excuse me, but don't you have to prove that in court first?'


No, they just run the risk of being found in contempt if the changes they made are only colorable.


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


----------



## peak_reception

I dropped by the TiVo board on Investment Village to see if anything was new (disclaimer: I don't post there and have no stock in TiVo) and I see that Mainer_Ayeh has corrected my information that the hearing would be in Marshall, TX. 

It will actually be in Texarkana, as he says, which is only 60 miles north of Marshall. Thanks Mainer. Texarkana is about 375 miles NW of New Orleans, still to receive quite a soaking from by-then Tropical Storm Gustav on Thursday, September 4th if the storm track projections hold true. Hopefully New Orleans won't be smashed again.


----------



## jclewter79

Their is no way that Gustav is going to shut down the courts for the 4th, expecially in Texarkana. That is funny


----------



## peak_reception

jclewter79 said:


> Their is no way that Gustav is going to shut down the courts for the 4th, expecially in Texarkana. That is funny


 It will shut down courts and everything else wherever it hits along the gulf coast. Anything 100 or more miles inland will just get drenched. Flooding could be a major problem in places though.

p.s. Congratulations on the birth of your baby girl Greg.


----------



## jacmyoung

Greg Bimson said:


> Responses in order of the sentences:
> 
> 1) Neither do I, and it is a shame that you are pulling this tact out now when you are the one who has been stating with absolute certainty what will happen. I have simply been trying to counter some of your faulty arguments.


As if you are not so sure of the outcome yourself. In fact anywhere you read me you will find my statement "if" and "on appeal" used over and over, because while I am confident of the outcome, I have always maintained anything can happen.



> 2) While I agree to an extent, again some of the components of your argument are based on cases that are not similar to this case. Just because DISH/SATS can modify the product found in end users hands does not give them the right to be judge and jury on their modification; the courts have ruled those devices infringing and the courts would have to modify or clarify their injunction in order to remove the adjudicated products from the injunction.


Again this will likely be the first lesson after 9/4, that any adjudicated products can be modifed to workaround the patent, that is what the court said: An infringer is allowed to modify *the adjudicated devices* to workaround the patent in order to remain in the marketplace.

The only way you can prevail is to prove those DVRs on the list are *not adjudicated devices* or as you tried to prove they are no longer in the marketplace. Good luck with that.



> there is need to rely on case law. Don't get me wrong. I've spent entirely too much time countering the arguments presented on this thread instead of relying upon any of my own research. One of the facts that I'd still like to point out is that Joe Blow's four-year old 501 has been ruled infringing and is subject to a injunction. A contempt hearing is not the wisest place to get a ruling on that device, as the device has already been adjudicated. That fact is often overlooked.


The truth is both you and a few others did spend some time on researching case law, at my urge BTW. And for the few you have discovered I have without exception proved that they actually supported my case. Of course after a few times there was no point of researching your cases anymore if they would end up proving my points anyway, wasn't it?

The only arugment you have left is the court will not allow an infringer to modify an adjudicated devices already with the end users without court's pre-approval. Not that you had a case law to prove such belief, only that you insist we have not found one case that was exactly the same situation as this one to prove you wrong. To that I have already said, the defendant needs no such scrutiny to search up and down to prove himself, it is the plaintiff that has a much higher standard of proof in a *summary contempt proceeding*. Again you will realize that after the court speaks.



> 4) BS. You have more of a vested interest than I. I have two DirecTV receivers with TiVo. That is the only connection I have to TiVo.


You missed my point, I said I would actually like to see my 625 ordered to be disabled, so E* may be forced to give me a free 622 or 722.

I have four D* HR21s, my TV service relies on D* entirely, my E* 625 is only for a foreign package ordered for the two exchange students live with us, they will be gone in a month or two, so after that I will have no need for E*. But I just added a 722 before 8/1 to get in on the $29.99 HD Absolute deal so I could compare E* HDs with D* HDs. Are you ready to give up your Tivo boxes as much as I am ready to give up E* in a few months? I can even point out a few good things on the HR21 to make the transition easier for you.

To claim the same, a Tivo sub would have to say that he wishes Tivo dies so he can get back the lifetime sub fees, or something like that. Please don't pretend you have no stake in Tivo, all Tivo supporters have a much higher stake in it to see Tivo win on 9/4 than any E* subs with the 5xx/6xx DVRs on the list. Why? Because in the worst case for E*, we will be given a new DVR as replacement for free.

So much so that you folks who have no business with E* feel so compelled to come into this E* forum to bad mouth E*. Did you see me going into your Tivo forum? I have absolutely no interest in doing so.

I am here as an E* sub, to express my view on the E* outcome, in the place righfully designed for such purpose. You are all here as Tivo subs, to bad mouth E*. That alone makes a big difference as who are more desperate.



> 5) My third child was born on 29 August 2008 at 11:20AM. Welcome to the world my first daughter.


Congrats!


----------



## Greg Bimson

Without going into the semantics of any other quote, because it is back to the hospital (bolded by me for emphasis):


jacmyoung said:


> Again this will likely be the first lesson after 9/4, that *any adjudicated products* can be modifed to workaround the patent, that is what the court said: An infringer is allowed to modify the adjudicated devices to workaround the patent in order to remain in the marketplace.


The context of every case law cited is when a patentee accuses an infringer of infringement with an unadjudicated device. Therefore, the context dictates it is not that *any adjudicated products* can be modified to workaround the patent. The context is for accusations that a new device never before the court is infringing. Meanwhile, there were four million devices already found infringing, and _in my opinion_ there is no way to get a second ruling for their infringement. That is specifically why DISH/SATS filed a suit for declaratory judgment in Delaware on their software, which is not a product. Something strange is going to happen in that suit.

For all the mistakes TiVo may have made during this suit, one of the larger ones will be what DISH/SATS did regarding the discovery for damages. DISH/SATS tried to argue the court did not order discovery for TiVo during the 30 May status hearing. Discovery was granted, and it didn't take very long in June (over the course of a weekend) for Judge Folsom to grant the discovery according to TiVo's schedule for the _Paice_ order.

I have a weird feeling the damages discovery will be DISH/SATS undoing during either or both of the 4 September contempt hearing and the 11 September status hearing. Because DISH/SATS tried to explain to Judge Folsom discovery wasn't granted for the damages, I think DISH/SATS did not want to answer any of the interrogatories, as it may impeach their position in eiher the Texas or Delaware cases.

THANK YOU to all for the congratulations. It is appreciated. Everyone will be home tomorrow.


----------



## jclewter79

peak_reception said:


> It will shut down courts and everything else wherever it hits along the gulf coast. Anything 100 or more miles inland will just get drenched. Flooding could be a major problem in places though.
> 
> p.s. Congratulations on the birth of your baby girl Greg.


Texarkana is a long way from the coast. They may get some rain maybe even some flash flooding in Texarkana but, I seriously doubt that any goverment offices will be shut down in Texarkana.


----------



## nobody99

jclewter79 said:


> Texarkana is a long way from the coast. They may get some rain maybe even some flash flooding in Texarkana but, I seriously doubt that any goverment offices will be shut down in Texarkana.


While notoriously inaccurate, here's the computerized model of what will happen in Marshall










and Texarkana










It looks like both places will get 6+ inches of rain and at least 40 mph winds.

Note: the above graphics are dynamically generated by the National Weather Service and will undoubtedly change dramatically between now and the time you read this message


----------



## jclewter79

That is interesting, I guess we will see what is going to happen. This Gustav is going to be a very powerful storm I just pray everybody gets out alright.


----------



## jacmyoung

Greg Bimson said:


> ...The context of every case law cited is when a patentee accuses an infringer of infringement with an *unadjudicated device*.


If so what the #$%^ is the court saying in their rules:

A contempt shall not be used as a sword to wound the infringer when he makes a good faith effort to modify the *adjudicated devices* to workaround the patent in order to remain in the marketplace.

Therefore, the injunction may *only prohibit acts of infringement by the adjudicated devices*, and acts of infringement by devices only colorably different than the adjudicated devices...and the injunction should proscribe *only those acts*.

What did you think the court was trying to say? I do not read the above as *unadjudicated devcies*, what was your reading, how did you come up with the idea that the above statements was about *unadjudicated devices*?

You continue to insist that all the cases we cited were about products not already with the end users, I continue to point out you are wrong, the Footprint 2.0 case was clearly about a service/product already with the end users, and adjudicated to infringe, and modified by a software patch update, while still in use with the end users, never stopped working in the field, and when the patentee motioned the court for a contempt ruling, the judge said no, the modification made it legal, no contempt.

And of course I will repeat what the defense you people made, that in that case the injunction specified the Footprint 2.0 to be enjoined was the one as configured and described at trial.

To which I said so what, all acts prohibited in an injunction must be one of two:

1) Either those as configured, described or adjudicated at trial (such as the DVR functions under the old software), or

2) those not as configured, described or adjudicated at trial (such as the DVR functions under the new software) but nevertheless only colorably different.

So either "the DVR functions" in this injunction speaks in the same context as the Footprint 2.0 injunction, or the DVR functions by the new software must be tested under the colorable difference rule, which is actually what the path both DISH and Tivo are taking, that is to debate the colorable difference of the new software.

I don't understand why when Tivo has also embarked on such effort, that you still insist it is irrelevant. Are you saying Tivo is stupid? Why go down the trap DISH set up if such route is irrelevant? Why even give such trap the attention it does not deserve?

Because Tivo understood the new software colorable difference issue cannot be avoided in a contempt proceeding, despite their initial effort to hide it.


----------



## Curtis52

Greg Bimson said:


> The context of every case law cited is when a patentee accuses an infringer of infringement with an unadjudicated device.


Gavin certainly didn't think Star-Brite was an unadjudicated product when they filed a contempt motion for continued sales in an alleged prima facie violation of an injunction. The manufactureer of Star-Brite was found not in contempt because they had modified the product.



> "Star Brite Corporation, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this Judgment by personal service or otherwise, including, but not limited to, Excelda Manufacturing Company, Boat US, and E & B Marine", from further infringing plaintiff's patent "including, but without limitation, by the manufacture, use or *sale of Star Brite* Instant Hull Cleaner, Star Brite Teak Brightener, Boat US Hull Cleaner, Boat US Teak Brightener, Bow and Stern Hull Cleaner, and Bow and Stern Teak Brightener.'"


----------



## peak_reception

Here is an interesting link to a number of different "spaghetti model" plots of where (soon-to-be) Tropical Storm Gustav will go next. All of them simply spell heavy rain midweek:

http://weather.myfoxtampabay.com/maps/WTVT/custom/storms/gustav_models.html

And for the masochists among us here's a National Hurricane Center explanation of all those models (scroll to bottom):

http://www.nhc.noaa.gov/modelsummary.shtml


----------



## peak_reception

MSNBC has a good Gustav storm track history and projection:

http://www.msnbc.msn.com/id/26295161/


----------



## TBoneit

jclewter79 said:


> If they do get shut off I fully expect to roll out 622s and 722s to everybody. Then we wait another couple years to see if the VIPs are colorably different or not.


I suspect that proving a MPEG4 HD DVR is the same as a MPEG2 SD DVR as far as firmware could be a tough row to hoe.

At best a VIP612 not a 622 or 722. A 612 for example would be a equivalent model for a 721 dual tuner single TV SD DVR.

However It wouldn't surprise me if they had a SD MPEG4 DVR waiting just in case. A SD MPEG4 DVR that can be authorized to become a HD DVR is also a possibility.

Whatever happens I suspect it could be interesting. For me with a 721, 622, 612 and a 7100 + two hdd equipped DVD recorders I'm most likely fine. one of the two DVD recorders tunes my SD & HD locals in QAM and records them in 720 by 480 resolution. Good enough when upscaled to a 32" HDTV.


----------



## jacmyoung

Curtis52 said:


> Gavin certainly didn't think Star-Brite was an unadjudicated product when they filed a contempt motion for continued sales in an alleged prima facie violation of an injunction. The manufactureer of Star-Brite was found not in contempt because they had modified the product.


I think what Greg meant was once a product is modified, it becomes an unadjudicated product.

The use of such "unadjudicated product" term is questionable, in that it serves to again distract from the issue at hand, that is whether an adjudicated product already with the end users may be modified.

Since Greg believes all the prior cases (though he continues to ignore the Foortprint 2.0 case) dealt with adjudicated products that were not already with the end users, therefore in his view could be modified to become unadjudicated devices, and

Since he also has determined an adjudicated product already with the end users may not be modified, therefore cannot ever become an unadjudicated product.

His conclusion then appeared a very solid one, that only when a product becomes unadjudicated, so can it be again looked at by the court, those already adjudicated and already with the end users notwithstanding.

You see this is the same kind of fallacy as asking the question: "Are you still beating your wife?" A fallacy in that it implies a condition first, in which the questioner seeks no evidence to support in the first place.

The notion that an adjudicated product already with the end users may not be modified to become non-infringing, has no evidence to be proven true, Greg has never been able to cite a single case to prove such rule even existed.

But in making the above argument he first implied it is true, then tried to use the term "unadjudicated products" to make his point, such argument is based on an implied condition that has no evidence for support.


----------



## James Long

TBoneit said:


> I suspect that proving a MPEG4 HD DVR is the same as a MPEG2 SD DVR as far as firmware could be a tough row to hoe.
> 
> At best a VIP612 not a 622 or 722. A 612 for example would be a equivalent model for a 721 dual tuner single TV SD DVR.


A 612 is closer to a 622 than a 721 ... The 612 is MPEG4 HD where the 721 is not.


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## Curtis52

TBoneit said:


> I suspect that proving a MPEG4 HD DVR is the same as a MPEG2 SD DVR as far as firmware could be a tough row to hoe.


Colorable difference/similarity is in the context of the infringed patent claim. The infringed patent claim makes no mention of SD, HD, MPEG2, or MPEG4. Those things are irrelevant.


----------



## TBoneit

Not having dove under the hood myself. 

There seem to more differences than similarities between the 50x and the 622/722/612 series.

OTOH as a end user I'm looking at the interface and the way the commands operate.

The thing I don't understand is why Tivo went after DVR functions and not the other facets of operation unless they felt that having the specific Broadcom chip in the unit made their case a slam dunk.


----------



## James Long

Curtis52 said:


> Colorable difference/similarity is in the context of the infringed patent claim. The infringed patent claim makes no mention of SD, HD, MPEG2, or MPEG4. Those things are irrelevant.


The injunction and judgement is against eight models of receivers. Anyone who believes that the new ViP series of receivers is "only colorably different" is probably wearing glasses that distort the colors.

Only colorably different would be easy to demonstrate on a 501 vs a 510 ... even a 522 vs a 625. Same user interface, software revisions, chipsets, form factor and manufacturer. But the ViP series is too different on too many levels.

In order for Tivo to call ViP series "only colorably different" they would have to rely solely on any software similarities and basically say hardware doesn't matter. That plays nicely into DISH's desire to replace the software and not the hardware in the named infringing receivers. If it is "dirty software" that makes the infringing products infringe then DISH should be allowed to change to other software and avoid infringement.

I know Tivo would like "DVR functionality" to become the key and not allow DISH (or any other party) to ever have DVR functionality without paying the license fees but that is unrealistic. And it isn't the case that they have won.


----------



## jacmyoung

TBoneit said:


> ...The thing I don't understand is why Tivo went after DVR functions and not the other facets of operation unless they felt that having the specific Broadcom chip in the unit made their case a slam dunk.


Because it was the DVR functions by DISH's old software that infringed on Tivo's patent. Tivo is about DVR functions, DVR functions is about Tivo.

The only problem is Tivo believes all DVR functions in the world infringe on its patent, even though it said during the trial no, only one specific DVR technology was at issue, not all DVR technologies.

Tivo knew during the trial they would not have secured a favorable verdict had they said they were after all DVR technologies, but yet during this contempt proceeding, the only way Tivo can prevail is precisely to accuse all DVR technologies infringe on its patent.

The DVR technology used by new DISH software is different than the DVR technology used by the old DISH software. Therefore the current DVR technology used by the DISH DVRs is not the same as the one as configured, or described, or tried, at the trial.

The only way to find DISH in contempt of using such different and new DVR technology, is to first look at the differences, and then determine that the differences are only colorable.

Yes it really has nothing to do with the 8 models, rather the tehchnology they use.

Remember what the court said in the StarBrite case, it really had nothing to do with the 6 products that were prohibited, rather the "internal formulation" they use, even though the injunction specifically named the 6 products to be banned, and did not mention anything about "internal formulation" at all.


----------



## nobody99

TBoneit said:


> The thing I don't understand is why Tivo went after DVR functions and not the other facets of operation unless they felt that having the specific Broadcom chip in the unit made their case a slam dunk.


You ask that question as if they are not going to "go after" other receivers. I think they just started with the low-hanging fruit. I am sure others will follow after this suit gets resolved - unless DISH settles. This could go on for years (new model, new lawsuit).


----------



## peak_reception

http://www.weather.com/weather/hourbyhour/USTX1347?begHour=12&begDay=247#Thu, Sep 4


----------



## CuriousMark

James Long said:


> I know Tivo would like "DVR functionality" to become the key and not allow DISH (or any other party) to ever have DVR functionality without paying the license fees but that is unrealistic. And it isn't the case that they have won.


How do you know this? They certainly haven't said that anywhere that I have ever seen. What they would like is to have their patent vetted, limits defined, and an enforceable precedent so that they can license going forward and recover damages from all those that violated it up to this point. But that is a far cry from the "world domination" that you seem to be imputing to TiVo.

See, it is easy to put words in others mouths that they never said nor meant. You have called others on that many times. I only ask you to be as intellectually honest on this as you demand of others.

For the record, you have never said that TiVo seeks "world domination", to the best of my knowledge.

If TiVo decides to go after the newer units, then I may grant your thesis, but not until then.

As of now and at most, the implied threat that they could try to go after those boxes really serves as nothing more than a bargaining chip to help get this thing settled.


----------



## Curtis52

The Sept. 11 scheduling conference in Delaware has been cancelled.


----------



## Herdfan

Curtis52 said:


> The Sept. 11 scheduling conference in Delaware has been cancelled.


A possible settlement in the works?


----------



## Curtis52

Herdfan said:


> A possible settlement in the works?


A scheduling conference would not prevent negotiations. Anyway, the judge canceled the hearing. TiVo has requested an oral argument on their motion to dismiss.


----------



## James Long

CuriousMark said:


> If TiVo decides to go after the newer units, then I may grant your thesis, but not until then.


Please see Tivo's filed agenda for the May 30th status conference. Their plan of attack (cut short by Judge Folsom) included going after the ViP series as "only colorably different".
To provide prompt resolution of these issues, TiVo requests:
A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and

Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (*and new EchoStar products that are only colorably different*).​​From exhibit C to that filing:*II. INTERROGATORIES*
1. Identify for each model of EchoStar product that has digital video recorder (DVR) functionality, *including, but not limited to, DP-501, DP-508, DP-510, DP-721, DP-921, DP-522, DP-625, DP-942, ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211* (new version that can be converted into a DVR with addition of an external hard disk drive): (1) whether all units at end-users' sites have software that EchoStar contends does not infringe the Barton patent and, if applicable, what date EchoStar first changed the software to a version that it currently contends is not infringing in those units and how the software was changed from the version adjudged to be infringing; (2) whether all units at EchoStar's distributors have software that EchoStar contends does not infringe the Barton patent and, if applicable, what date EchoStar first changed the software to a version that it currently contends is not infringing in those units and how the software was changed from the version adjudged to be infringing; and (3) whether all newly manufactured units have software that EchoStar contends does not infringe the Barton patent and, if applicable, what date EchoStar started incorporating a version of software that it currently contends is not infringing in those units and how the software was changed from the version adjudged to be infringing.

etc ... etc ... etc​


----------



## CuriousMark

Alright, granted. But not necessarily to the implied world domination of DVRs level. I see this more as at the level of trying to define the boundaries of the patent. Had Dish settled earlier, TiVo would be exploring those boundaries against someone else, probably TWC.


----------



## dgordo

Curtis52 said:


> A scheduling conference would not prevent negotiations. Anyway, the judge canceled the hearing. TiVo has requested an oral argument on their motion to dismiss.


See doc


----------



## Ergan's Toupe

Curtis52 said:


> The Sept. 11 scheduling conference in Delaware has been cancelled.


Looks like Charlie is running out of aces.


----------



## jacmyoung

CuriousMark said:


> Alright, granted. But not necessarily to the implied world domination of DVRs level. I see this more as at the level of trying to define the boundaries of the patent. Had Dish settled earlier, TiVo would be exploring those boundaries against someone else, probably TWC.


Maybe the term "world domination" is too much to take, but if Tivo has the chance to call all DVR technologies in the world (within the U.S. of course) infringing on its patent, do you seriously believe Tivo will let that chance pass them by? Be real.


----------



## jacmyoung

Curtis52 said:


> The Sept. 11 scheduling conference in Delaware has been cancelled.


Maybe DISH decided it has served its purpose?


----------



## Ergan's Toupe

jacmyoung said:


> Maybe the term "world domination" is too much to take, but if Tivo has the chance to call all DVR technologies in the world (within the U.S. of course) infringing on its patent, do you seriously believe Tivo will let that chance pass them by? Be real.


Why should they? I hope they go after everyone who they think is infringing. They would be stupid not too.


----------



## Ergan's Toupe

jacmyoung said:


> Maybe DISH decided it has served its purpose?


Doubt it, Charlie's smokescreen didn't delay anything long enough to matter. :grin:


----------



## Curtis52

jacmyoung said:


> Maybe DISH decided it has served its purpose?


Ummm. The lawsuit is still on. Dish had nothing to do with the hearing cancelation. It may be rescheduled.


----------



## nobody99

jacmyoung said:


> Maybe the term "world domination" is too much to take, but if Tivo has the chance to call all DVR technologies in the world (within the U.S. of course) infringing on its patent, do you seriously believe Tivo will let that chance pass them by? Be real.


Do you really believe that TiVo is attempting to call "all DVR technologies in the word" theirs and covered by their patents?

Be real.

Do you think DISH won't be found in contempt?

Be real.

Do you think the colorably different standard applies to already-adjudicated devices?

Be real.


----------



## nobody99

jacmyoung said:


> Maybe DISH decided it has served its purpose?


Jac, I see you you are already setting up your position that it will be a "win" for DISH if they case gets thrown out. I am hereby predicting that you will state, on these boards, that DISH wins if the DE suit gets thrown out for lack of jurisdiction.

Olympic-quality mental gymnastics. Mind-bending logic of epic proportions.


----------



## James Long

Curtis52 said:


> Ummm. The lawsuit is still on. Dish had nothing to do with the hearing cancelation. It may be rescheduled.


Yep. As noted in the document dgordo posted, last Thursday Tivo wanted to schedule oral arguments for their Motion to Dismiss on the same day as the scheduling conference since their California lawyers would already be in town. The next day (Friday) the judge canceled the scheduling conference.

No specific comment in the cancellation of why it was canceled.


----------



## James Long

jacmyoung said:


> Maybe DISH decided it has served its purpose?


Until DISH's new software is ruled to be not infringing DISH will have a date in court with Tivo. Where they will be meeting (what court) may vary but the issue won't be over until it's over.


----------



## jacmyoung

James Long said:


> Yep. As noted in the document dgordo posted, last Thursday Tivo wanted to schedule oral arguments for their Motion to Dismiss on the same day as the scheduling conference since their California lawyers would already be in town. The next day (Friday) the judge canceled the scheduling conference.
> 
> No specific comment in the cancellation of why it was canceled.


It is possible the court decided to reschedule so both parties can work out the oral argument request by the Tivo lawyer in DE, this request by Tivo is new and the court might have thought giving the deadlines DISH might not have enough time to respond.

But my initial comment of course was a bit tongue in cheek.

I have thought there was no real reason for DISH to file a complaint in DE to address their own new software infringement issue, except to force Tivo's hand so Tivo must address the new software on 9/4. Remember up to 5/30 Tivo refused to touch the new software colorable issue. By filing the suit in DE DISH has successfully forced Tivo to address this issue in the latest response going into 9/4 hearing.

DISH has no interest to initiate the new software suit, with only one exception, if they can get the DE court to accept the case then once DISH is cleared in the Texas court Tivo's case will be over.

Theoretically it is not advantageous to be the plaintiff, because being a plaintiff carries higher burden of proof. Being a defendant means one can wait for the plaintiff to move, then object to the motion, and delay if needed, and appeal if needed, and delay and so on.

In that context I made the initial comment about DISH might have made that move to end the DE case because their goal of the DE case had been achieved, that was to force Tivo to discuss the new software in the Texas court, in a contempt setting, which is a very challenging thing for Tivo (the mover) to do. Now you know why Tivo tried to avoid such discussion until it was forced to by the DISH filing in DE.

Despite all the appearance of convincing arguments from both sides, the summary contempt proceeding on 9/4 will heavily favor DISH the non-mover. That is the bottom line. Unless the mover can prove with clear and convincing evidence, the non-mover gets the benefit of the court.


----------



## Ergan's Toupe

jacmyoung said:


> Theoretically it is not advantageous to be the plaintiff, because being a plaintiff carries higher burden of proof. Being a defendant means one can wait for the plaintiff to move, then object to the motion, and delay if needed, and appeal if needed, and delay and so on.


I'll keep that in mind if I ever become a defendant in a murder case. :lol:


----------



## Ergan's Toupe

nobody99 said:


> Olympic-quality mental gymnastics. Mind-bending logic of epic proportions.


Don't forget how it's always better to be a defendant.


----------



## jacmyoung

Since you Tivo folks show no sign of ability to make any speculation, allow me to do it for you.

As the linked Tivo DE request showed, Tivo's DE lawyer made a last minute before the deadline request for an oral argument, giving DISH no time to respond, and they knew such request would likely cause the DE court to reschedule the 9/11 event.

In another word, Tivo's goal was to push the DE decision as much back as possible. To me it shows Tivo is preparing for an undesirable outcome from 9/4 hearing.

Because if Tivo is confident about the 9/4 outcome in their favor, the new software will be less of an issue, in fact it will be irrelevant. The contempt alone will be a big enough headline for Tivo to enjoy for some time while DISH will be under the microscope while they try to appeal. The appeal process will take quite some time before the new software issue will be necessarily on the table again.

But if Tivo is preparing for a no contempt, they must motion for a discovery of the new software as soon as possible, too much time has passed already. But to be succesful in doing so, they must be sure there is no outside interference such as the one from DE. The 9/11 event is too close to the 9/4 hearing to the point that it becomes a distraction, even though the outcome is unknown. DISH will sure use it to object to any Tivo's motion for discovery. So push the 9/11 event as back as possible will make it less of an issue to be used by DISH.

So Tivo waited for the last day of the deadline and intentionally made a request that they knew the court would not have been able to grant without input from DISH, yet there was no time to ask DISH for response, so a delay of the 9/11 meeting would be a sure thing for Tivo.

Again my speculation in keeping with the goal of this thread


----------



## jacmyoung

Ergan's Toupe;1773754 said:


> I'll keep that in mind if I ever become a defendant in a murder case. :lol:


What you should have said was, next time you kill someone, you better wish not getting caught, but if you get caught, better wish for a good defense as a defedant, rather try to file a complaint to the court (as a plaintiff) accusing that the dead person was at fault.

It is much easier to establish doubt to clear yourself of any guilt as a defedant accused of murder, than making yourself a plaintiff trying to accuse and prove the victim is the villain.

If you simply can't understand the above, it is not surprising, because you simply did not understand my previous comment, judging from your above laughable response.


----------



## Bidderman9

jacmyoung said:


> ....
> As the linked Tivo DE request showed, Tivo's DE lawyer made a last minute before the deadline request for an oral argument, giving DISH no time to respond, and they knew such request would likely cause the DE court to reschedule the 9/11 event. ....


:eek2: Wow, did you read the same document??? You must be one of those conspiracy theorist's.

E* had plenty of time to respond...

"We have requested the Plaintiffs' position on this issue but have not yet received their response, and in order to comply with today's deadline ..."

I think the judge is getting ready to dismiss.


----------



## peak_reception

Ok, here's my last weather report.  If you haven't clicked on this link yet it's a must see. The center of former Hurricane Gustav is directly over Texarkana Texas! Or it was when I linked to this page at 1am EST early this morning:

http://www.msnbc.msn.com/id/26295161/

Most all of the rain though was generated southeast to north of the eye so Texarkana is not even getting heavy rain from it. Nonetheless a Direct Hit on Texarkana, though from a drastically weakened storm and with no real impact.

Will Hurricane Folsom soon make an appearance? We'll soon see.


----------



## James Long

jacmyoung said:


> Since you Tivo folks show no sign of ability to make any speculation, allow me to do it for you.


You speculate enough for the entire forum.  What's another 200 words?  


> As the linked Tivo DE request showed, Tivo's DE lawyer made a last minute before the deadline request for an oral argument, giving DISH no time to respond, and they knew such request would likely cause the DE court to reschedule the 9/11 event.


As the linked request showed, Tivo attempted to get a response from DISH on the issue but was unable to. Tivo protected their rights by making the filing.


> Again my speculation in keeping with the goal of this thread


I suppose that is your goal for this thread ... I was actually enjoying the weather reports - they were breaking up the monotony. :lol:


----------



## James Long

Hmmm ... a crack in the secrecy (a small one) thanks to Tivo needing twelve pages to reply on the damages claim instead of ten. Tivo _is_ following the #836 Docket Control Order that had all of the "not agreed" markings (and the court's apparent error was Docket #837).

Nice to see something that isn't assumed or sealed to confirm the issue ...


----------



## Ergan's Toupe

jacmyoung said:


> Since you Tivo folks show no sign of ability to make any speculation, allow me to do it for you.


I speculate that it's game over for Charlie. Tivo should kick Charlie to the curb and NOT offer a license.

Read it and weep.

DIRECTV and TiVo to Launch New HD DIRECTV DVR with TiVo Service:

http://biz.yahoo.com/prnews/080903/aqw143.html?.v=1


----------



## Curtis52

TiVo and Directv have a new agreement for HD DVRs. I wonder whether TiVo has/will use higher royalty numbers in damages calculations.



> *DIRECTV will pay a substantially higher monthly fee* for households using the new high definition DIRECTV DVRs with TiVo than the fees for previously deployed DIRECTV DVRs with TiVo service. DIRECTV will continue to pay the current monthly fee for all households using only the previously deployed DIRECTV DVRs with TiVo service. The fees paid by DIRECTV are subject to monthly minimum payments that escalate during the term of the agreement starting in 2010 and those minimum payments are substantially higher than in the prior agreement.


----------



## nobody99

Curtis52 said:


> TiVo and Directv have a new agreement for HD DVRs. I wonder whether TiVo has/will use higher royalty numbers in damages calculations.


I might just drop cable again.


----------



## jacmyoung

Curtis52 said:


> TiVo and Directv have a new agreement for HD DVRs. I wonder whether TiVo has/will use higher royalty numbers in damages calculations.


I doubt so especially if DISH's new software is more than colorable, the damages will end at the point of the new software installations.

Tivo will need a new trial and be sucessful in that to recalculate the damages.

As far as the proposed new DirecTivo, it is something I will seriously consider, with one thing in mind, Tivo subs' privacy has become increasingly used for commercial gains. I will have to look at that aspect and compare it to other DVR services such as D*'s own DVRs, and E*'s DVRs.

The fact the fees will be much higher also tells us it will cost a lot more to use the new DirecTivo. I think a no contempt ruling will likely make it a none issue unless D* give up on its own DVR development.

D* does seem to have more difficulties to get its own DVRs improved, even though I like all the new features added, my HR21s still pale compared to the 722's ease of use.


----------



## jacmyoung

James Long said:


> You speculate enough for the entire forum.  What's another 200 words?
> As the linked request showed, Tivo attempted to get a response from DISH on the issue but was unable to. Tivo protected their rights by making the filing.
> I suppose that is your goal for this thread ... I was actually enjoying the weather reports - they were breaking up the monotony. :lol:


I always take what Tivo or DISH says with a grain of salt until proven, or supported by evidence. Just because Tivo said they contacted DISH for response, did not mean it was so as Tivo described. I don't see anything wrong with DISH not wanting to add another oral argument this close to the meeting with this new DE lawyer of Tivo's.

As I have said many times, the only good reason for DISH to raise the new software issue with the DE court was to force Tivo to discuss it in the Texas court, if such goal was achieved, I wouldn't further waste my legal dollars on the DE case either. Even a response costs money.

And as far as the weather report, sure enjoy it all you want, just don't forget to get back on the topic later


----------



## Bidderman9

Interesting announcement 1 day before TiVo and E* are due back in court

http://news.yahoo.com/s/nm/20080903/tc_nm/tivo_directv_dc_1


----------



## James Long

jacmyoung said:


> I always take what Tivo or DISH says with a grain of salt until proven, or supported by evidence. Just because Tivo said they contacted DISH for response, did not mean it was so as Tivo described.


Nice. Accuse Tivo of lying to the court.  


> As I have said many times, the only good reason for DISH to raise the new software issue with the DE court was to force Tivo to discuss it in the Texas court, if such goal was achieved, I wouldn't further waste my legal dollars on the DE case either. Even a response costs money.


Always looking for the deeper conspiracy? How about reading the complaint and taking it at face value? DISH made it very clear why they filed the case in Delaware ... to those who are actually paying attention to Tivo vs Echostar (TX) and Echostar vs Tivo (DE) instead of some fictional case made up of parts of a dozen cases neither Tivo nor DISH are part of.

In Delaware DISH claims to have created a new product, DVR software, that they wish to have adjudicated as non-infringing so they can offer this product to their customers without the constant threat of lawsuits.

In Texas the product is a group of eight models of DVRs. The court has ordered the DVR functionality (writing television data to a hard drive) to be disabled on all but 192k of those products placed with customers and no new placements of those products with DVR functionality enabled. Arguments on a motion for contempt on that issue (disabling) are scheduled to be heard tomorrow.


----------



## nobody99

jacmyoung said:


> As far as the proposed new DirecTivo, it is something I will seriously consider, with one thing in mind, Tivo subs' privacy has become increasingly used for commercial gains. I will have to look at that aspect and compare it to other DVR services such as D*'s own DVRs, and E*'s DVRs.


Laughably incorrect. When you can't win on facts, spread FUD. That's your new mantra, is it?


----------



## Ergan's Toupe

jacmyoung said:


> Just because Tivo said they contacted DISH for response, did not mean it was so as Tivo described.


Are you trying to say Tivo lied? :nono:


----------



## Ergan's Toupe

jacmyoung said:


> As far as the proposed new DirecTivo, it is something I will seriously consider, with one thing in mind, Tivo subs' privacy has become increasingly used for commercial gains.


You really don't know anything about Tivo, do you? :eek2:


----------



## jacmyoung

Ergan's Toupe;1774778 said:


> Are you trying to say Tivo lied? :nono:


As much as when Tivo now says all DVR technologies are infringing,

As much as when tivo said DISH so willfully infringed that they needed to pay treble damage and attorney fees,

As much as when the judge agreed with DISH that Tivo could not seek discovery for the new software infringement on 5/30, Tivo said oh but we did not mean to, it was for damage assessment,

You can go down the list of what Tivo claimed in their responses and filings and find DISH had refuted many of the claims, and you can do the same about DISH, and also find the judge himslef had refuted many claims from either parties.

The point? Don't take either party's saying as if this is what the court will rely on, rely on facts and evidence and case law.

Tivo did not lie, nor did DISH, it is just how the legal arguments go in a court setting, each try to exaggerate and argue on their own behalf.

If you cannot understand that, I am sorry.


----------



## jacmyoung

James Long said:


> Nice. Accuse Tivo of lying to the court.


James you should know better. I never accused either party lying in a court setting, only if the judge ruled it was a lie, even in such case it is not about lying, only arguing on one's behalf. So to use the word "lie" is usually not appropriate in legal sense. Instead parties simply have differecne in opinions and interpretations, and the court decides one way or the other, or both ways, or nothing at all, without accusing anyone of lying. Good enough?



> Always looking for the deeper conspiracy? How about reading the complaint and taking it at face value? DISH made it very clear why they filed the case in Delaware ... to those who are actually paying attention to Tivo vs Echostar (TX) and Echostar vs Tivo (DE) instead of some fictional case made up of parts of a dozen cases neither Tivo nor DISH are part of.
> 
> In Delaware DISH claims to have created a new product, DVR software, that they wish to have adjudicated as non-infringing so they can offer this product to their customers without the constant threat of lawsuits.
> 
> In Texas the product is a group of eight models of DVRs. The court has ordered the DVR functionality (writing television data to a hard drive) to be disabled on all but 192k of those products placed with customers and no new placements of those products with DVR functionality enabled. Arguments on a motion for contempt on that issue (disabling) are scheduled to be heard tomorrow.


Yes unfortunately after one reads many many prior similar cases one tends to analyze beyond the face value.

For one thing, while it is nice to try to have the DE court to take a case on a "new product", if you had cared to read many similar prior cases, you would have realized DISH had little chance (not that they don't have any chance), because while the new software is a new product, it is the result of the modification of the old infringing product, as such is usually adjudicated in the same court and by the same judge, even though it must be done in a separate trial, independent of the original trial.

It has nothing to do with conspiracy, rather understanding what is the usual court procedure in dealing with infringement and modification. DISH's lawyer should know they had little chance to have the new software tried else where, then why did they do it?

As I said before, DISH realized Tivo wanted to avoid discussing the new software on 9/4, so they devised a way to force Tivo to discuss it, by immediately filing a suit in DE. DISH knew it would be easy for Tivo to defeat the new filing at DE, by simply discussing the new software in the Texas court, not after 9/4 but before 9/4.

To do so is to lay the ground work for the end of this case all together, because on 9/4, the court will likely agree with both DISH and Tivo, to look at the new software colorable difference issue, and if the court agrees with DISH that the new software is more than colorable, not only DISH will not be in contmept, there will be no justification for another discovery of the new software, because the decision will be made already. The case should end.

To go any further Tivo will have to file a new suit, with the same court and the same judge of course, but separate from this case.

No conspiracy, no lies, only legal strategies. Each are pulling their own strategies.

I had hoped you would have sounded a little more professional than some of the other Tivo supporters.


----------



## jacmyoung

nobody99 said:


> Laughably incorrect. When you can't win on facts, spread FUD. That's your new mantra, is it?


You shoud realize your one liner offers no credibility, instead try to offer facts, such as why Tivo is not on the cutting edge of collecting users' viewing habit in order to sell to the companies for a buck, and the companies are using such user data to better target each sub group.

Yes offer us your facts in counter argument will be a good start, unless you have no idea what the facts are.


----------



## Ergan's Toupe

jacmyoung said:


> Tivo did not lie,


Of course they didn't. Why were you implying they did?

Why do you feel you need to write a thesis on a every, very simple question?


----------



## Ergan's Toupe

jacmyoung said:


> You shoud realize your one liner offers no credibility,


And you should realize writing small novels in response to simple questions offers even less credibility.

No offense, but I can't even make it half way through one of your posts without my eyes glazing over... :new_Eyecr


----------



## jacmyoung

Now giving the latest comments and news from DISH, Tivo and D*, I have this speculation:

1) DISH will likely not be in contempt, and the case could even be over, but even if not,

2) DISH and Tivo will likely reach an agreement after the no contempt, the agreement will likely have several main points:

a) DISH will license Tivo's patent for a fee based on negotiation,
b) DISH will end the use of "better than Tivo" campaign,
c) Tivo will forgive most of the damages, if not all,
d) DISH will stop the appeal to the Supreme Court, so some of the money can finally go to Tivo, and the rest DISH will keep.
e) Both E*, D* and Comcast will continue to develop their own DVRs, but will pay lip service to Tivo's involvement.
f) Tivo by securing agreements with all major providers, will begin to focus on developing new technologies.

I ask people to go back and find a very similar situation not very long ago, when Apple fought Microsoft for years about infringement of the OS and "look and feel" issues, only after Apple failed in the end, did they begin on the right track of renewed innovation and development.

Look what we have today, two successful major personal computer players, each offering users their own benefits.

I see this case go down with similar results.


----------



## jacmyoung

Ergan's Toupe;1774934 said:


> And you should realize writing small novels in response to simple questions offers even less credibility.
> 
> No offense, but I can't even make it half way through one of your posts without my eyes glazing over... :new_Eyecr


Again your usual rah rah without any substance. Even your occasional questions were borrowed from some one else.

I suggest you give your eyes some rest. It is for your own good.


----------



## James Long

jacmyoung said:


> As much as when Tivo now says all DVR technologies are infringing,


An opinion, overstated by you.


> As much as when tivo said DISH so willfully infringed that they needed to pay treble damage and attorney fees,


Willful infringement is a fact, as decided by the jury, upheld by Judge Folsom and the appeals court. The opinion that treble damages were needed is just that ... an opinion.


> As much as when the judge agreed with DISH that Tivo could not seek discovery for the new software infringement on 5/30, Tivo said oh but we did not mean to, it was for damage assessment,


Incorrect. Look at the agenda filed by Tivo prior to May 30th. They made it clear that they wanted data on all the "Infringing Products" and a list of products they consider only colorably different for the damages issue. They reraised the interrogatories again after Judge Folsom said no discovery (without leave of the court). I agree that Tivo is going beyond what they need for damages while the injunction was stayed ... but they made it clear up front what they wanted. There was no "oh, we did not mean to" as you state.


> The point? Don't take either party's saying as if this is what the court will rely on, rely on facts and evidence and case law.


You first. 



> Tivo did not lie, nor did DISH, it is just how the legal arguments go in a court setting, each try to exaggerate and argue on their own behalf.


You're the one making the accusation. Saying "we asked and DISH didn't respond" when it isn't true isn't an exaggeration. YOUR claim was that it wasn't true. If you're not calling Tivo liars then post what else your statement could mean. Plus post a source for your accusation, to keep it from being unfounded.


> Just because Tivo said they contacted DISH for response, did not mean it was so as Tivo described.


----------



## James Long

jacmyoung said:


> James you should know better. I never accused either party lying in a court setting,


See post above and explain yourself.


> I had hoped you would have sounded a little more professional than some of the other Tivo supporters.


I had hoped after all of these months you would have learned not to insult people when you lose an argument. When you post false information expect it to be challenged. You might also want to read my posts before labeling me a Tivo supporter. 

Keep it on topic, Tivo vs Echostar.


----------



## Ergan's Toupe

jacmyoung said:


> Again your usual rah rah without any substance. Even your occasional questions were borrowed from some one else.
> 
> I suggest you give your eyes some rest. It is for your own good.


Why did you imply that Tivo was lying. Simple question, how about a simple answer.

And please keep your condescending BS to yourself. Believe me, you don't want me to give it back to you.


----------



## nobody99

jacmyoung said:


> You shoud realize your one liner offers no credibility, instead try to offer facts, such as why Tivo is not on the cutting edge of collecting users' viewing habit in order to sell to the companies for a buck, and the companies are using such user data to better target each sub group.
> 
> Yes offer us your facts in counter argument will be a good start, unless you have no idea what the facts are.


Wow, seriously, just try to stop the fingers from typing for a few minutes a day. Please. Your ignorance (and I mean this in the dictionary sense of the word, as in "lack of knowledge about the subject at hand") is removing what little credibility you had left.



> Tivo subs' privacy has become increasingly used for commercial gains.


http://www3.tivo.com/abouttivo/policies/tivoprivacypolicy.html



> TiVo knows how important personal privacy is to you, so we have designed our system and established strict policies to help protect the privacy of your Personally Identifiable Viewing Information. In summary, we want you to know that:
> 
> 
> TiVo does not collect or access any Personally Identifiable Viewing Information (as defined below) from your TiVo DVR without your prior consent. Absent your consent, TiVo does not keep track of what shows you-as an individual or household- have watched, recorded, or rated with "Thumbs Up" or "Thumbs Down." NOTE: If your TiVo DVR is receiving the TiVo Basic service, you may not be able to consent to TiVo's collection of your Personally Identifiable Viewing Information from that TiVo DVR.
> TiVo does collect Anonymous Viewing Information; that is, information about viewing choices made while using your TiVo DVR, but that does not identify you as an individual or household. In other words, TiVo does not link any personally identifiable information with your Anonymous Viewing Information that TiVo could use to identify the Anonymous Viewing Information as coming from you or your household.


Seriously, jac, don't start claiming that TiVo is infringing on sub's privacy.

Must you claim to be an expert on *everything*?


----------



## nobody99

jacmyoung said:


> Now giving the latest comments and news from DISH, Tivo and D*, I have this speculation:


I'll chuckle at, er, address each individually.



> 1) DISH will likely not be in contempt, and the case could even be over, but even if not,


Not sure what you are predicting here. "Likely not in contempt" ain't much of a prediction. "case could even be over" - what??

Let me give you an example of a prediction (mine)

A decision on contempt will not be made on September 4th, but a date will set for a decision. Based on Judge Folsom's questions to each party will determine if DISH settles or not before the ruling. I predict a 60% chance of a settlement between September 4 - 11. A wild guess, yes.



> 2) DISH and Tivo will likely reach an agreement after the no contempt, the agreement will likely have several main points:
> 
> a) DISH will license Tivo's patent for a fee based on negotiation,


Um, isn't that what a settlement is?



> b) DISH will end the use of "better than Tivo" campaign,


Really not believable anyway



> c) Tivo will forgive most of the damages, if not all,


Hahahaha. Not a chance.



> d) DISH will stop the appeal to the Supreme Court, so some of the money can finally go to Tivo, and the rest DISH will keep.


Unlikely. As soon as the SC rejects the appeal, the money is TiVo's. It's already in escrow.



> e) Both E*, D* and Comcast will continue to develop their own DVRs, but will pay lip service to Tivo's involvement.


Define "lip service." Otherwise that's not much of a prediction.



> f) Tivo by securing agreements with all major providers, will begin to focus on developing new technologies.


"begin to focus" on new technology? What do new agreements have to do with this? They've never really lost focus on new technologies. If you mean that major providers will ask TiVo develop particular technologies, I agree with that, but that's kinda the opposite of lip service, isn't it?


----------



## Ergan's Toupe

jacmyoung said:


> c) Tivo will forgive most of the damages, if not all,


I'm sorry, but I can no longer take you seriously. !rolling


----------



## jacmyoung

nobody99 said:


> Wow, seriously, just try to stop the fingers from typing for a few minutes a day. Please. Your ignorance (and I mean this in the dictionary sense of the word, as in "lack of knowledge about the subject at hand") is removing what little credibility you had left.
> 
> http://www3.tivo.com/abouttivo/policies/tivoprivacypolicy.html
> 
> Seriously, jac, don't start claiming that TiVo is infringing on sub's privacy.
> 
> Must you claim to be an expert on *everything*?


Give it up, stop quoting what Tivo is saying as if Tivo is your God. Of course Tivo will say that, did Tivo tell you Tivo has signed several deals with the studios and networks to try to use the data Tivo boxes collected to get around the fact people are skipping the commercials?

Do you need me to post a few links for you or can you go search for youself? I am sure as an Tivo expert you already know, maybe you just again failed to understand what I meant by the viewers' viewing habit are increasingly sold to the companies, and Tivo is on the cutting edge of this.


----------



## Ergan's Toupe

jacmyoung said:


> Give it up, stop quoting what Tivo is saying as if Tivo is your God.


Are you trying to say Tivo is lying again? Dude, give it up. :nono:


----------



## jacmyoung

nobody99 said:


> I'll chuckle at, er, address each individually.
> 
> Not sure what you are predicting here. "Likely not in contempt" ain't much of a prediction. "case could even be over" - what??


If you can't understand, it is not the first time.



> Let me give you an example of a prediction (mine)
> 
> A decision on contempt will not be made on September 4th, ...


Good to see you already had a change of mind, I still remember your last prediction to come on 9/4 to gloat.



> Unlikely. As soon as the SC rejects the appeal, the money is TiVo's. It's already in escrow.


Again total lack of understanding how things work. It will take a very long time for the SC to even make a decision, meanwhile Tivo cannot have the money. A settlement after no contempt will allow Tivo the access to a portion of the money at least, in exchange of a licensing agreement with DISH.



> Define "lip service." Otherwise that's not much of a prediction.


As shown before you can hardly read between the lines so let me lay it out for you:

1) Tivo's agreement with Comcast started last year, has yet shown any acceptance by the Comcast subs, they keep pushing the date back now to the end of this year. Selecting Comcast was a bad move, Comcast is known not able to make the service work right.

2) Tivo has been losing D* accounts so fast they could hardly keep up with the counting. Last year Tivo had 4.2 million accounts, a year later today 3.6 million. D* is replacing DirecTivo boxes free of charge for its subs at an even faster pace now.

3) So now we have another agreement between D* and Tivo not going to start until the end of 2009, and by that it means some time in 1010. If I still have my 4 D* HR21s by then, I would imagine my HR21s will have improved a lot, so for me to even consider paying extra fees per month so I can upgrade my HR21s to this proposed new D*/Tivo box, the box will almost have to do the cooking for me.

I hope now you know what I mean by "lip service".



> "begin to focus" on new technology? What do new agreements have to do with this? They've never really lost focus on new technologies. If you mean that major providers will ask TiVo develop particular technologies, I agree with that, but that's kinda the opposite of lip service, isn't it?


They have lost focus in that they spent too much time on litigations in the last few years, allowing all the providers to develop their own DVRs to be as good as Tivo, to the point most people who are new to the DVR scene now simply don't see any reason to go Tivo anymore, rather the DVRs of all the TV providers' own making.

Which is why Tivo's sub base has been going down by 800k last year and this will continue unless they change their focus.


----------



## nobody99

jacmyoung said:


> Give it up, stop quoting what Tivo is saying as if Tivo is your God.


Uhmm, hmmm, no. Sorry, I'm going to keep calling you on your lies. Keep lying, and I'll keep exposing it. Think of me as that annoying little horsefly who keeps buzzing your ear. I'm not going away.



jacmyoung said:


> Of course Tivo will say that, did Tivo tell you Tivo has signed several deals with the studios and networks to try to use the data Tivo boxes collected to get around the fact people are skipping the commercials?


And this data contains private information how? Anonymous, aggregated user data, yes. Private data, no. I see no harm in it. While we're at it, can you show me the Dish Network privacy policy? Since they don't have one, I would assume that they are selling your information to whomever asks.



jacmyoung said:


> maybe you just again failed to understand what I meant by the viewers' viewing habit are increasingly sold to the companies, and Tivo is on the cutting edge of this.


Here is what you said:



jacmyoung said:


> Tivo subs' privacy has become increasingly used for commercial gains.


You lied (again). You were called on it (again). And you complain after being called on it (again).


----------



## Ergan's Toupe

jacmyoung said:


> If you can't understand, it is not the first time.
> It will take a very long time for the SC to even make a decision,


No it will not. Why do you keep making stuff up? If Tivo waives their right to answer Charlie's Hail Mary, the SCOTUS can dismiss this case as soon as the 2nd week of Oct.

A month and a half is hardly "a very long time".

One would think an expert on everything Tivo would know that.


----------



## nobody99

jacmyoung said:


> Good to see you already had a change of mind, I still remember your last prediction to come on 9/4 to gloat.


Actually, the prediction to gloat was on 5/30. I was wrong. My prediction for the 9/4 hearing is unchanged. Read carefully: I said a decision on contempt (either for or against) would not happen on 9/4.



jacmyoung said:


> nobody99 said:
> 
> 
> 
> Unlikely. As soon as the SC rejects the appeal, the money is TiVo's. It's already in escrow.
> 
> 
> 
> Again total lack of understanding how things work. It will take a very long time for the SC to even make a decision, meanwhile Tivo cannot have the money. A settlement after no contempt will allow Tivo the access to a portion of the money at least, in exchange of a licensing agreement with DISH.
Click to expand...

Total lack of understanding, huh? Uhm, ok. Let's look at a recent TIVO SEC filing:



> As of April 15, 2008, EchoStar has placed approximately $103.8 million in escrow during their appeal of the Company's trial court victory. *Pursuant to the terms of the escrow agreement between EchoStar and the Company, the Company shall receive payment of these escrowed funds if a writ of certiorari is not filed or is denied or if certiorari is granted but then the judgment in favor of the Company is affirmed in whole or in part by the Supreme Court.* The escrow funds encompass damages through September 8, 2006 and related interest through August 16, 2008 only, and do not reflect damages since that date.


What part am I misundertanding, specifically? There is a less than 1% chance the Supreme Court takes the case. As soon as they decline to take it, the money is released from escrow. Since I have a "total lack of understanding" and want to learn, can you tell me where my understanding is lacking?



> As shown before you can hardly read between the lines so let me lay it out for you


You are HILARIOUS!



> has yet shown any acceptance by the Comcast subs
> losing D* accounts so fast they could hardly keep up with the counting
> the box will almost have to do the cooking for me


Are you suggesting that when you use language like this you are somehow conveying facts of the situation? Honestly, I am having a good chuckle about this. Thanks for that.



> They have lost focus
> they spent too much time on litigations
> allowing all the providers to develop their own DVRs to be as good as Tivo
> most people who are new to the DVR scene now simply don't see any reason to go Tivo anymore


More facts from jacmyoung. Too funny :lol:



> Which is why Tivo's sub base has been going down by 800k last year and this will continue unless they change their focus


I can tell you exactly why. When Murdoch bought DirecTV he had his own platform (NDS) and kicked TiVo out. DirecTV went out of their way to make it favorable -- and necessary in the case of HD -- to replace TiVo equipment with NDS's equipment. They lost these subscriptions because they were not given the opportunity to keep them. A lot of people left DirecTV and went back to cable as a result. I am one of them.

Now that Murdoch has sold DirecTV to Malone, the relationship is back on.

This isn't about TiVo's lack of innovation. It's about a large customer base _not even having the choice_ to remain customers.


----------



## jacmyoung

nobody99 said:


> ...This isn't about TiVo's lack of innovation. It's about a large customer base _not even having the choice_ to remain customers.


Oh please, when I say lack of innovation, it also touched on the way Tivo tried to secure agreements, as compared to their effort in the court.

If your large customer base meant those D* subs, sorry did I tell you all the providers are favoring their own DVR technologies as supposed to Tivo's? Why is the fact D* decided not to let their own sub base to have Tivo as the first choice something surprised you? The fact D*'s HR21s now have virtually all the necessary DVR gigs, plus a few Tivo doesn't have, is a good enough proof that Tivo no longer has the advantage over anyone else's DVRs.

This is more true for people that consider Tivo as a standalone service, it used to be that a lot of people will seriously consider Tivo as standalones, now there is hardly any interest. In my local Costco I saw one HD Tivo box sat there for weeks without any taker, while the pile made of 20 or so HR21s got refilled every time I went back there. I guess you want to blame D* for lack of interest in that standalone Tivo box?

Even Tivo said themselves they are now not trying to gain new subs (because they can't), rather to cut cost so to make their profit numbers look good, and seek other revenue streams, such as selling the viewing data. The problem is how long can this last? If Tivo keeps the current pace, next year this time the sub count will be around 2.8 million, by the time the so called D* Tivo is available Tivo could have only a little over 2 million subs left. A far cry from 4.2 million a year ago.

All companies have the kind of sweet talk privacy policy as you quoted from Tivo, the difference is companies like E*, D* or Comcast are their own providers, so while they may also collect the sub data, they can use them internally, but with Tivo the only use of their sub data is to sell to an outside company for revenue. Yes your name may not be attached to a particular database, but the viewing habit of a group of subs to me is still a private information. I'd rather such information be kept within the company, not be accessable by many outside companies.


----------



## jacmyoung

James Long said:


> An opinion, overstated by you.


An opinon to say it was an overstatement. Tivo now says no DVR technologies can be used on those DVRs, when during the trial they said of course we were only talking about this one DVR technology used by those DVRs, not all DVR technologies.



> Willful infringement is a fact, as decided by the jury, upheld by Judge Folsom and the appeals court. The opinion that treble damages were needed is just that ... an opinion.


True, exactly my point, when Tivo argued that DISH was so bad that they needed to pay the maximum treble damages and attorney fees, did the judge agree? Did the judge say Tivo lied about calling DISH the worst thing ever as a result?



> Incorrect. Look at the agenda filed by Tivo prior to May 30th. They made it clear that they wanted data on all the "Infringing Products" and a list of products they consider only colorably different for the damages issue. They reraised the interrogatories again after Judge Folsom said no discovery (without leave of the court). I agree that Tivo is going beyond what they need for damages while the injunction was stayed ... but they made it clear up front what they wanted. There was no "oh, we did not mean to" as you state.


Incorrect, please focus on the single discovery issue we are discussing now, that is Tivo's request for further discovery of the new software "just to be sure" that they were correct the new software still infringed. This one discovery request was part three of the three-part contempt topic by Tivo, and when during the meeting the judge said no could not do that, the Tivo lawyer quickly said oh but that was actuall for the purpose of damage calculation. Did the judge say but Tivo you lied? No he simply ignored him.



> You first.


I think I did, by quoting most from the case law, rather what DISH is saying. To the contrary, the other side mostly can only quote what Tivo is saying.



> You're the one making the accusation. Saying "we asked and DISH didn't respond" when it isn't true isn't an exaggeration. YOUR claim was that it wasn't true. If you're not calling Tivo liars then post what else your statement could mean. Plus post a source for your accusation, to keep it from being unfounded.


No, first off I did not say Tivo lied, you thought so because you are debating outside of the court context, rather with some legal basis in mind.

Just because Tivo said they asked DISH, and DISH did not respond, is not proof what really happened. We only heard Tivo's story. It could be that was what happened, it could be something else entirely. Would Tivo have lied if it was something else? No, not in the legal sense.

I will give you an example, when Tivo in the 5/30 filing accused DISH of bad faith on the damages issue, with one evidence that DISH till at that time still refused to put up a bound to show good faith effort, DISH's response was hey Tivo you never even asked for such thing in the first place.

Remember what happened on 5/30? The first thing Tivo's lawyer said to the judge was we have good news for you. It turned out after Tivo raised that issue, they apparently talked to DISH, and DISH agreed to post a bound of about $200,000, only at 1/2 of what Tivo requested, and that made both sides happy.

Did Tivo lie? According to you yes, but according to the court no. It was resolved.

You see once you begin to see things in the context of a court setting, you begin to lose the habit of calling anyone a liar.


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## Curtis52

jacmyoung said:


> Just because Tivo said they asked DISH, and DISH did not respond, is not proof what really happened. We only heard Tivo's story. It could be that was what happened, it could be something else entirely.


You are the one that libeled TiVo. You have the burden of proof.


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## James Long

jacmyoung said:


> Give it up, stop quoting what Tivo is saying as if Tivo is your God. Of course Tivo will say that, did Tivo tell you Tivo has signed several deals with the studios and networks to try to use the data Tivo boxes collected to get around the fact people are skipping the commercials?


Did you even bother to READ what was referenced? "TiVo does not collect or access any Personally Identifiable Viewing Information " ... "TiVo does collect Anonymous Viewing Information; that is, information about viewing choices made while using your TiVo DVR, but that does not identify you as an individual or household."

The anonymous viewing data is enough to provide the information you are claiming Tivo shares.

Please read more.


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## jacmyoung

James Long said:


> Did you even bother to READ what was referenced? "TiVo does not collect or access any Personally Identifiable Viewing Information " ... "TiVo does collect Anonymous Viewing Information; that is, information about viewing choices made while using your TiVo DVR, but that does not identify you as an individual or household."
> 
> The anonymous viewing data is enough to provide the information you are claiming Tivo shares.
> 
> Please read more.


Yeah it was precisely those "anonymous" information got us into this kind of trouble of getting the sales calls, the junk mail, and all that people are so annoyed about.

Only this time it is on TV, are you prepared? I have already had several PPVs downloaded for me by DirecTV after they assessed my viewing habit, and accidentally ordered one of them because I had no idae it was already on my harddrive. A call to D* yielded no result, a $4.99 charge on my bill even though I had no desire to watch it.


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## Ergan's Toupe

Curtis52 said:


> You are the one that libeled TiVo. You have the burden of proof.


This is that whole "it's better to be a defendant" thing, isn't it? :lol:


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## James Long

jacmyoung said:


> This one discovery request was part three of the three-part contempt topic by Tivo, and when during the meeting the judge said no could not do that, the Tivo lawyer quickly said oh but that was actuall for the purpose of damage calculation.


The discovery request I quoted was IN WRITING back in May, before the status hearing. It was not part of a conversation at all. Your portrayal of the events as a conversation is false. Tivo's claimed reason for the discovery in conversation is the same as the claimed reason in the filing. There was no change of message by Tivo's lawyers.


> Just because Tivo said they asked DISH, and DISH did not respond, is not proof what really happened. We only heard Tivo's story. It could be that was what happened, it could be something else entirely.


What else could it have been other than Tivo lying? You have FAILED to answer that question.


> ... refused to put up a bound to show good faith effort ...


Put up a "bound"? Nonsense. Do you really expect us to understand what you are writing? I suppose it's all our fault. 

Slow down ... read ... think ... and then maybe post. OK?


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## jacmyoung

Curtis52 said:


> You are the one that libeled TiVo. You have the burden of proof.


What I said was I take what DISH and Tivo say with grain of salt, and I already listed many examples as why you should do so too.

Because there were those bought into Tivo's argument that DISH should have paid treble damages and legal fees and was disappointed,

There were those thought they could come after 5/30 to gloat according to what Tivo's filing, and was disappointed,

Tivo accused DISH of bad faith on the damage issue because they accused of DISH of not putting up a bond, did Tivo lie? No just a lack of memory really. Are you to totally rule out something else than what exactly Tivo said about DISH not responding to Tivo in DE?

Are you not willing to at least hear from DISH? Remember DISH pointed out Tivo never even asked for a bond before accusing DISH of bad faith for not putting up a bond?

Whose fault was that? No one, it was he said she said, and the truth is often some where in between without anyone being accused of lying.


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## James Long

FYI: Tivo's request to file a 12 page response instead of a 10 page response on the damages during the stay of the injunction issue has been granted.


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## spear61

This has to be like Xmas Eve. Tomorrow the presents get opened.


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## scooper

With any luck - we'll get to see the transcripts....


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## jclewter79

Ergan's Toupe;1774266 said:


> I speculate that it's game over for Charlie. Tivo should kick Charlie to the curb and NOT offer a license.
> 
> Read it and weep.
> 
> DIRECTV and TiVo to Launch New HD DIRECTV DVR with TiVo Service:
> 
> http://biz.yahoo.com/prnews/080903/aqw143.html?.v=1


I will admit when I am wrong. D* will go with tivo again. When the new software is found not infringing Charlie will not care in tivo wants to give them a license.


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## Ergan's Toupe

jclewter79 said:


> I will admit when I am wrong. D* will go with tivo again.


Way to go out on a limb.... :lol:


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## Ergan's Toupe

jclewter79 said:


> When the new software is found not infringing Charlie will not care in tivo wants to give them a license.


You guys better hope so. Otherwise it looks like DTV gets an easy 4 million subs. 

Unless of course the "stubborn" one wakes up and does what's right. 

I can't wait until Tivo tells Charlie it's going to cost him double of what they charged D*. :eek2:


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## Greg Bimson

jclewter79 said:


> I will admit when I am wrong. D* will go with tivo again. When the new software is found not infringing Charlie will not care in tivo wants to give them a license.


Here is the bad news, as Ergan's Toupe described...


> You guys better hope so. Otherwise it looks like DTV gets an easy 4 million subs.


Considering the fact that only one person on here is arguing about this, there will not be a ruling on the new software for some time. However, because some 3 million-plus adjudged infringing DVR's are supposed to be disabled by injunctive order, there may not be a lot of time for DISH/SATS if the contempt motion by TiVo is granted to prove the infringement status of the new software.

If there is a "settlement", you can bet that any suit regarding new software will be dismissed.

For some reason, I believe that TiVo may actually try to go after the DVR's running the new software in the contempt hearing tomorrow, either by filing a separate motion or by addressing those DVR's through TiVo's response to DISH/SATS opposition for contempt. That is my prediction.


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## Curtis52

Greg Bimson said:


> For some reason, I believe that TiVo may actually try to go after the DVR's running the new software in the contempt hearing tomorrow, either by filing a separate motion or by addressing those DVR's through TiVo's response to DISH/SATS opposition for contempt. That is my prediction.


This has been the situation all along. TiVo is going after DVRs that are running the new software.


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## James Long

Speculation (of course) but I expect nothing to happen in court other than discussion of the topic of disablement, possibly a ruling (but no guarantee - Judge Folsom may want to "sleep on it") and any attempt at getting into "the next step" (infringement) by either party will be shut down.

If Tivo amazes me and shows up with a Motion for Contempt in hand for "the next step" I wouldn't expect anything more than Judge Folsom telling them to file it with the court and expect a hearing date next year. Based on May 30th, Tivo will need 10 more days to prepare it.


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## Greg Bimson

Curtis52 said:


> This has been the situation all along. TiVo is going after DVRs that are running the new software.


Small correction:

TiVo is not going after ALL of the DVR's running new software. Only the subset of those receivers which have already been ruled as infringements.


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## Curtis52

Greg Bimson said:


> Small correction:
> 
> TiVo is not going after ALL of the DVR's running new software. Only the subset of those receivers which have already been ruled infringing.


This has been the situation all along. TiVo is going after DVRs that are running the new software.


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## James Long

Curtis52 said:


> This has been the situation all along. TiVo is going after DVRs that are running the new software.


Yes, Tivo is going after previously adjudicated DVRs placed with customers that DISH has claimed to have installed new software on.

They are currently going after those DVRs because their DVR functionality has not been disabled per the order of the court. But they have made it clear that they also want to go after the new software.


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## Greg Bimson

Curtis52 said:


> This has been the situation all along. TiVo is going after DVRs that are running the new software.


Deja vu.

TiVo is going after the receivers that were already ruled as infringements. The new software is very likely immaterial to the injunction, as the new software is not the receiver.


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## phrelin

Greg Bimson said:


> Deja vu.
> 
> TiVo is going after the receivers that were already ruled as infringements. The new software is very likely immaterial to the injunction, as the new software is not the receiver.


It's the box, not the contents. Still seems odd to me.


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## scooper

Yes - when it's the CONTENTS that's the problem...


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## Greg Bimson

phrelin said:


> It's the box, not the contents. Still seems odd to me.





scooper said:


> Yes - when it's the CONTENTS that's the problem...


It is easier if you think about it in this manner...

When this suit started, TiVo accused eight models of DVR, the entire receiver, of infringement on the Time Warp patent.

Just because the "hardware" claims were reversed and the "software" claims were upheld does not mean that the ruling only applies to the "software". An infringement on the software claims does not mean it is only the software that is infringing; the infringement could be built into the hardware.

The best explanation of this argument is here...


> To the extent EchoStar actually addresses claims 31 and 61, its arguments ignore this court's claim construction and trial testimony - including testimony of EchoStar's own experts. First, EchoStar argues that its 50X and Broadcom units no longer "parse," i.e., analyze, before they "store" video and audio data. Opp. at 3-4. With respect to the 50X boxes, this is the only non-infringement argument, and it cannot survive scrutiny. "Parse" means "analyze." Dckt. No. 185, Claim Construction Order at 18 (Ex. D). It does not mean "index" or "separate." This claim construction is law of the case. AFG Indus., 375 F.3d at 1372 (prior claim construction is law of the case). EchoStar does not contend that the Adjudicated Receivers perform no analysis. In fact, the opinions of EchoStar's counsel admit that parsing is still performed by "PID filtering," which EchoStar's trial expert agreed meets the parsing limitation.*7*





> *Footnote 7:*
> Compare 8/24/06 opinion letter at 28 (Dckt. No. 826 Ex. 2) ("A Broadcom chip performs packet identifier (PID) filtering . . . .") and 4/7/06 AM Trial Tr. 110:10-14 (Ex. E) ("Q: Okay. So you'll agree that the EchoStar products do actually parse the MPEG stream? A: Yes. The Court said analyze, and there are PID filters in those products that examine the MPEG transport stream and do a parsing."). See also id. at 111:8-13; 4/6/06 PM Trial Tr. 145:3-16 (Ex. F); 4/10/06 AM Trial Tr. 38:2-8 (Ex. G); 4/11/06 AM Trial Tr. 100:6-23 (Ex. H); 3/31/06 PM Trial Tr. 29:18-24 (Ex. I). EchoStar's products analyze the data at various stages. PID filtering is one such analysis, which is used to identify the type of packets that should be processed. The broadcast data is in packets, each of which has a "packet identifier" or PID. The components that performs the PID filtering are actually named "parsers." See, e.g., Trial Ex. 478, pp. 1-6, 1-23, fig 1-7 (Ex. J). EchoStar did not eliminate these components.


About the PID:

If I am not mistaken, it is how data from a given transponder is decoded and made into a "channel". So if there are twelve channels broadcast from a given transponder, the receiver must analyze the transponder stream and and recombine only the section of the transponder which corresponds to the "channel". The analysis is done right there. And a change in software will not change that.


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## Herdfan

So what time is the hearing?


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## scooper

Greg Bimson said:


> It is easier if you think about it in this manner...
> 
> When this suit started, TiVo accused eight models of DVR, the entire receiver, of infringement on the Time Warp patent.
> 
> Just because the "hardware" claims were reversed and the "software" claims were upheld does not mean that the ruling only applies to the "software". An infringement on the software claims does not mean it is only the software that is infringing; the infringement could be built into the hardware.
> 
> The best explanation of this argument is here...About the PID:
> 
> If I am not mistaken, it is how data from a given transponder is decoded and made into a "channel". So if there are twelve channels broadcast from a given transponder, the receiver must analyze the transponder stream and and recombine only the section of the transponder which corresponds to the "channel". The analysis is done right there. And a change in software will not change that.


You're stretching there - by that standard, Tivo should be collecting royalties from all set top box makers for all "digital tuners", not just DVRs. The Tivo process would start AFTER you have a single "channel" of content selected. Said "parsing" goes on that particular combination of streams (combination being defined as the set of audio, video, and closed captioning (and other services associated with) for a particular program).

And yes, it is the WHOLE BOX we are looking at, not just the hardware and not just the software. You don't have a DVR without both - if you change one component, it affects how the other part works. Consequently, if the hardware claims were reversed/remanded, the BOX cannot be infringing and the claim for damages should be adjusted accordingly.


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## Ergan's Toupe

Herdfan said:


> So what time is the hearing?


10 am central


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## Curtis52

scooper said:


> You're stretching there - by that standard, Tivo should be collecting royalties from all set top box makers for all "digital tuners", not just DVRs.


For there to be infringement, all of the steps of a patent claim must be performed. Doing only one of the steps is not infringement.


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## TBoneit

Greg Bimson said:


> It is easier if you think about it in this manner...
> 
> When this suit started, TiVo accused eight models of DVR, the entire receiver, of infringement on the Time Warp patent.
> 
> Just because the "hardware" claims were reversed and the "software" claims were upheld does not mean that the ruling only applies to the "software". An infringement on the software claims does not mean it is only the software that is infringing; the infringement could be built into the hardware.
> 
> The best explanation of this argument is here...About the PID:
> 
> If I am not mistaken, it is how data from a given transponder is decoded and made into a "channel". So if there are twelve channels broadcast from a given transponder, the receiver must analyze the transponder stream and and recombine only the section of the transponder which corresponds to the "channel". The analysis is done right there. And a change in software will not change that.


If Tivo were to take that explanation about the PID: then they'd be in trouble as that has been in use long before their patents. It is I believe used by E* and European DVB-T and DVB-S providers.

I know many knock Wikipedia but I believe it is accurate in many cases. 
So from here: http://en.wikipedia.org/wiki/Digital_Video_Broadcasting

"Digital Video Broadcasting (DVB) is a suite of internationally accepted open standards for digital television. DVB standards are maintained by the DVB Project, an industry consortium with more than 270 members, and they are published by a Joint Technical Committee (JTC) of European Telecommunications Standards Institute (ETSI), European Committee for Electrotechnical Standardization (CENELEC) and European Broadcasting Union (EBU). The interaction of the DVB sub-standards is described in the DVB Cookbook.[1] Many aspects of DVB are patented, including elements of the MPEG video coding and audio coding."

I know that many of my E* receivers and DVRs have the DVB marking on them.

Feel free to correct me. What the heck everybody else does.


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## Curtis52

TBoneit said:


> If Tivo were to take that explanation about the PID: then they'd be in trouble as that has been in use long before their patents.


If a patent involves drilling a piece of steel as one of the steps, the patent isn't invalid just because someone has drilled a piece of steel before.


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## Greg Bimson

Curtis52 said:


> For there to be infringement, all of the steps of a patent claim must be performed. Doing only one of the steps is not infringement.


And in reverse, performing all _but one_ of the claims of a patent is not infringement, unless the last step can be interpreted as an infringemnt by equivalents.

DISH/SATS argument on the 50X boxes is simply that the software was changed so that it no longer indexes, and it is the only change that was made to those boxes. However, if the only change still results in infringement, then it becomes relatively easy to prove "colorable difference", as it is the only change.


TBoneit said:


> If Tivo were to take that explanation about the PID: then they'd be in trouble as that has been in use long before their patents. It is I believe used by E* and European DVB-T and DVB-S providers.


The telephone was patented with much of the infrastructure already in use by the telegraph.

Just because DVB and MPEG are in the Time Warp patent does not mean that the patent is invalid; those are pieces (steps) used to execute the process (claim).

Patents *historically* have been improvements on other patents.


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## nobody99

Can I point out all of this would have mattered in two places: the patent review, and the appeal? It no longer matters today. The 4 million boxes can't have DVR services until and unless DISH licenses them from TiVo. Period.


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## James Long

Curtis52 said:


> If a patent involves drilling a piece of steel as one of the steps, the patent isn't invalid just because someone has drilled a piece of steel before.


The patent isn't on the compiler (the drill) but on the result (the DVR). Extending your example, Tivo would have a patent on the drilling process - and as long as DISH used that drilling process in their products their products would infringe.

And extending further to relate it to today's hearing, products that were found infringing because they used that drilling process were ordered to have their ability to drill disabled. The whole product was adjudicated infringing because of an infringement in how the product operated.


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## James Long

nobody99 said:


> The 4 million boxes can't have DVR services until and unless DISH licenses them from TiVo. Period.


Somewhere deep in the heart of Texas that question is before the court.

Can DISH avoid contempt by modifying placed products? I believe DISH can.
Did DISH go about the modification process the right way? I believe DISH didn't.

(Although the direct disobedience of not disabling the DVR functionality is the key problem today.)


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## nobody99

James Long said:


> Somewhere deep in the heart of Texas that question is before the court.
> 
> Can DISH avoid contempt by modifying placed products? I believe DISH can.
> Did DISH go about the modification process the right way? I believe DISH didn't.
> 
> (Although the direct disobedience of not disabling the DVR functionality is the key problem today.)


And judging by the stock price, it looks like you are correct :eek2:


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## Guest

Looks like someone knows something.


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## James Long

The ultimate in speculation ... stock markets! 10% down for Tivo isn't good.

Yesterday's news:


> SAN FRANCISCO -(Dow Jones)- The patent battle between Tivo Inc. (TIVO) and Dish Network Corp. (DISH) continues in court Thursday amid new factors that could push the two toward a deal.
> 
> Dish and Tivo are scheduled to argue what penalties Dish should suffer if found in contempt of an earlier decision in the case.
> 
> While the two companies deny that any licensing deal is in the works, Citi analyst Tony Wible on Wednesday noted some new factors: Tivo's willingness to strike non-exclusive deals, such as one with DirectTV Inc. (DTV) announced Wednesday, and a recent court decision strengthening Tivo's hold on key digital video recording patents this year.
> 
> source


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## Curtis52

Judge Folsom said today that he might not rule until October.


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## James Long

Curtis52 said:


> Judge Folsom said today that he might not rule until October.


:lol:

OK, the beat goes on ...


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## Guest

Curtis52 said:


> Judge Folsom said today that he might not rule until October.


Do you have a source you can share on that?


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## Ergan's Toupe

tomrogerssucks said:


> Do you have a source you can share on that?


A guy who posts here named Mainer is in contact with a stockholder who attended the hearing today.


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## scooper

I prefer someone without a dog in the fight, if you please.


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## Ergan's Toupe

scooper said:


> I prefer someone without a dog in the fight, if you please.


What does having a dog in the fight have to do with Folsom saying it might take until October for a ruling?


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## James Long

We'll get something "official" (press release / court report) eventually ...
Until then try to be nice to each other.

And after we get an "official" report try to be nice to each other.
(It is good to hear something of the case.)


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## Ergan's Toupe

James Long said:


> We'll get something "official" (press release / court report) eventually ...
> Until then try to be nice to each other.
> 
> And after we get an "official" report try to be nice to each other.
> (It is good to hear something of the case.)


Yes, Mr. Long...... :kisscheek


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## James Long

Based on posts at The Motley Fool ...
A key case cited by Tivo's lawyer today was "Walker vs Birmingham", which was a Supreme Court case back in 1967 where defendants were found guilty of violating an injunction despite the fact that the underlying action being prohibited was protected by the constitution. The Supreme Court upheld the lower court ruling against the defendants 5-4.
Walker v. Birmingham

*Decision*
Affirmed Alabama Supreme Court decision upholding the contempt convictions of Reverends Walker, King, and six others.

*Significance*
*In Walker v. Birmingham, the U.S. Supreme Court ruled that an individual may not deny an injunction, even if the injunction itself appears to be unconstitutional, without challenging the injunction's validity through the official mechanisms of judicial review.* The Court, on a vote of 5-4, upheld the1963 convictions of the Martin Luther King Jr. and seven other prominent black ministers, on charges that they inappropriately ignored an Alabama injunction aimed at stopping the group from demonstrating against discrimination in Birmingham. The demonstrations themselves were in violation of a Birmingham ordinance that required organizers to obtain a parade license. For a civil rights organizer in 1963, the very notion of obtaining such a license in Birmingham, Alabama, given its race relations climate, was absurd.
The demonstration that led to this case was part of a series of Birmingham protests organized by the Southern Christian Leadership Conference, led by Dr.King. After being refused a parade permit twice by Birmingham public safety commissioner Eugene Connor, the group decided to proceed with its planned demonstrations. Several African American protesters were arrested during marches on 6-7 April and 9-10 April for unlicensed parading. On the night of 10 April, an Alabama court issued an injunction enjoining King and his supporters from further unauthorized activity. The protesters chose to ignore the injunction, and proceeded with additional planned demonstrations on Good Friday, 12 April, and Easter Sunday, 14 April. Eight ministers, including King, were subsequently arrested, convicted of contempt, fined $50 each, and sentenced to five days in jail.
...
The prevailing opinion, as written by Justice Stewart, was that King and his associates had no right to take the law into their own hands. Had the group fought the injunction through the channels of legal appeal, noted Stewart, it is quite possible that they would have won the right to demonstrate in Birmingham. "*No man can be judge in his own case*," wrote Stewart, "*however exalted his station, however righteous his motives, and irrespective of his race, color, politics or religion.*"​The underlying ordinance was eventually ruled unconstitutional ... but the parallels are clear. Even IF DISH has the right to modify the products to make them non-infringing, if this decision applies they do not have the right to disobey the court.

Judge Folsom still has to rule on this. But this is now part of the equation.


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## James Long

Starting new thread ...
http://www.dbstalk.com/showthread.php?t=138621


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